New IP Act to Implement TRIPS Protocol and Set Up Trans-Tasman Patent Regime

The Intellectual Property Laws Amendment Act 2015 (Cth) (“the Act”) was finally assented on February 25, after having been introduced into Parliament early last year.  The Act makes a number of changes across Australia’s intellectual property system, amending the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003 and the Plant Breeder’s Rights Act 1994. The Act is designed to make some major changes, including implementing the World Trade Organization TRIPS Agreement (see below), allowing owners of plant breeder’s rights to pursue actions more quickly and informally through the Federal Circuit Court and introducing a joint patent application and examination process with New Zealand.

Bill History and Changes

TimeBase has previously written about the Act in its draft and Bill stages.  The Act itself was a revised version of the Intellectual Property Laws Amendment Bill 2013 (“the 2013 Bill”), which failed to pass the Senate and lapsed before the Federal Election was called in August 2013.  The Liberal National Party objected to a number of elements of the 2013 Bill, including amendments to Crown use provisions of the Patents Act 1990 and some of the changes relating to compulsory licensing provisions.  The version that was then introduced as the Intellectual Property Laws Amendment Bill 2014 omitted Schedule 1 of the 2013 which would have modified the Crown use provisions. 

The TRIPS Protocol Changes

Australia accepted the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Protocol) in 2007.  In his Second Reading Speech, Mr Bob Baldwin noted that “its implementation in Australia is well overdue”.  The TRIPS Protocol was designed to assisted developing countries that are experiencing serious epidemics to access patented drugs, and provides a compulsory license mechanism if the patent owner unreasonably refuses authorisation.

The 2013 Bill would have implemented the TRIPS Protocol by amending sections related to Crown use, which would have allowed governments to use a patented invention without the owner’s authorisation, when the use was in the public interest.

Instead, the Act introduces a new scheme where Australian laboratories may apply to the Federal Court for a compulsory licence to manufacture generic versions of patented medicines for export to developing countries.  As part of the scheme, “adequate compensation for the patent holder will be negotiated.”

The Australia and New Zealand Single Economic Market

The Act also introduces a bilateral patent application and examination process for Australia and New Zealand.  Parliamentary Secretary to the Minister for Industry and Science Karen Andrews told ZDNet that the reforms would:

For more on the changes to the Plant Breeder’s Rights Act 1994, see TimeBase’s earlier article.

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Intellectual Property Laws Amendment Bill 2014 (Cth), Explanatory Memorandum, Second Reading Speeches & Parliamentary Digest - available from TimeBase's LawOne Service

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