05 November 2017

New Online Register Exposes IP Australia’s Policy Concerns

Online engagementA few weeks ago, following the release of the Government’s response to the Productivity Commission inquiry into Australia’s intellectual property arrangements, IP Australia published a beta version of its ‘policy issues register’ online.  Publication of the register is an initiative by IP Australia under the Open Government National Action Plan, and is intended to enhance public participation in government decision-making.

While many interested stakeholders in the Australian IP system would be aware of active enquiries, consultations, and legislative reform – such as the ongoing consultations into various matters, including raising the standard of inventive step under the Australian patent law, and on the proposed draft Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill and Regulations 2017 – up until now there has been little insight available into other issues and concerns that may have been occupying the policy wonks at IP Australia.

This is changed by the new online register, which is a list of issues that IP Australia is considering or working on for policy action or legislative amendment.  The issues may relate to any of the IP rights administered by IP Australia, i.e. patents, trade marks, designs and plant breeder’s rights (but, notably, not copyright, which falls within the responsibilities of the Department of Communications and the Arts). 

Issues listed in the register may come to the attention of IP Australia as a result of:
  1. government priorities;
  2. recommendations from IP related reviews;
  3. stakeholder suggestions;
  4. international developments; or
  5. internal proposals.
The current beta release of the online policy issues register will run until 16 March 2018, after which IP Australia plans to conduct a review in response to any input from the public.  In the meantime, it is possible to provide feedback on each individual issue via an accompanying form, to submit new policy issues for consideration, and to submit comments on the beta policy issues register itself.

Below, I highlight just a few of the patent-related areas in which IP Australia’s ongoing policy concerns are revealed by the online register.

A Selection of Policy Issues in IP Australia’s Sights

Amending pharmaceutical extensions of term (policy ID 13).  In its review of Australia’s IP arrangements, the Productivity Commission was critical of the regime which provides extensions of patent term of up to five years for certain pharmaceutical substances, finding that the system does not appear to encourage R&D, and has a limited effect on return on investment for bringing pharmaceuticals to Australia, while costing the government a considerable amount through patient drug subsidies.  The Commission thus recommended that term extensions be substantially curtailed.  The government did not, however, immediately accept this recommendation.  The status of this issue is ‘policy development’ (i.e. IP Australia is working on policy options), and its priority is ‘high’ (i.e. action will be taken by IP Australia at the next available opportunity).

Avoiding ‘poisonous priority’ (policy ID 18).  So-called ‘poisonous priority’, or ‘self-collision’, of patent applications arose as an issue in Europe a few years ago.  The term describes a (rare) situation in which a claim may be found to be invalid for lack of novelty over the applicant’s own disclosure in an earlier application from which priority has been claimed.  This can happen a claim is broadened in the later application, such that at least part of the subject matter falling within the scope of the claim is not entitled to the earliest priority date.  The problem was solved in Europe by a 2016 decision of the European Patent Office’s Enlarged Board of Appeal.  It was long-believed not to exist in Australia, as a result of section 43 of the Patents Act 1990, which provides for a single claim covering multiple forms of an invention to have multiple priority dates.  However, the effectiveness of section 43 was cast into doubt by a 2014 decision of a Full Bench of the Federal Court of Australian (AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99), and thus IP Australia is looking into whether any legislative changes are necessary.  The status of this issue is ‘policy development’ (i.e. IP Australia is working on policy options), and its priority is ‘medium’ (i.e. desirable for action by IP Australia in the medium term, but will not be addressed immediately).

Translations – certificates of verification for patent applications (policy ID 22), and translations of amendments upon national phase entry of PCT applications (policy ID 74).  Surprising as it may seem to some Australians, applicants for other countries do not always file their initial applications in English.  As a result, they have to file various translations when subsequently filing in Australia.  Currently, translations must be accompanied by a certificate of verification, which is a signed statement by the translator undertaking that each document is a true and complete translation of the original.  There is, however, rarely any cause to question a translation, so in most cases the requirement is nothing more than an unnecessary burden on the applicant.  For PCT applications entering the national phase in Australia, the translation must include any pre-existing amendments, although in some other jurisdictions a translation of the original specification will suffice.  IP Australia is therefore considering amendments to the Act and Regulations that would reduce these burdens on applicants.  Both have a status of ‘policy development’, and ‘high’ priority, with indications of progress towards implementation in 2018.

Reform of ‘unjustified threats’ provisions (policy ID 69).  Under the ‘unjustified threats’ provisions of the Patents Act, a person or company that has been unjustifiably threatened with patent infringement proceedings may seek an injunction to prevent the threats from continuing, and the recovery of any damages sustained as a result of the threats.  I have criticised Australia’s unjustified threats provisions on a number of occasions (see, e.g. The Meteoric Rise and Spectacular Fall of Damages for Unjustified Threats of Patent Infringement) because they are too easily invoked – even in genuinely contested cases of alleged infringement – and can result in proceedings becoming significantly more protracted, complex, and costly, than they might otherwise have been, without any ultimate benefit to either party.  It is therefore pleasing to see that this issue is, at least, on IP Australia’s radar.  The issue currently has a status of ‘on hold’, however its priority is ‘medium’ (i.e. desirable for action by IP Australia in the medium term, but will not be addressed immediately), with other matters of higher priority to be considered first.

Conclusion – Celebrating Transparency!

There are currently 70 open issues listed in the policy issues register.  A number of these are currently the subject of ongoing consultations and/or legislative drafting, and of course many relate to rights other than patents (i.e. trade marks, designs and plant breeder’s rights).

I encourage all interested readers to have a look through the online register – you may find that your pet issue is there, and ripe for further comment, or perhaps that it is not, in which case you have the option of submitting it as a new issue.

As with a number of other recent initiatives to improve transparency and public engagement, I applaud IP Australia for publication of its policy issues register online.  In the early days of this blog, its commitment to transparency sometimes seemed questionable, but it certainly appears that those less-illuminating days (if that is indeed what they were) are behind us!


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