On 28 March 2018, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and
Other Measures) Bill 2018 (the Bill) was introduced into the House of Representatives and reached second reading stage.
The Bill results from the a number of recommendations made by the Productivity Commission
in its report "Intellectual Property Arrangements". The Bill was expected to include the controversial plan to phase out the "innovation
patent system" as well as making other trade mark, plant breeder’s rights and technical
reforms. This did not happen and it is being suggested that "...the vocal opposition
to dismantling Australia’s second tier patent system may actually result in reform
to support SME innovation" leading possibly to the retaining of a second tier patent
About the Productivity Commission Report
The Productivity Commission’s final report was published in December 2016, and the
Minister for Industry, Innovation and Science and the Minister for Communications
announced the release of the Government’s response to the Productivity Commission’s
inquiry on 25 August 2017. The report is 19 chapters and 8 appendixes long and discusses
relevant background information and definitions, the broad framework applied to the
inquiry, and the basis for government involvement, see Chapter 1. In chapters 2 and
3 there is an outline of the framework for assessing Australia's Intellectual Property (IP) arrangements and consideration of how the system is working overall. Specific
forms of IP rights and options for reform are examined in chapters 4 - 14, while chapters
15 - 19 examine cross–cutting issues.
Some key points and recommendations made by the Productivity Commission in its report
- IP arrangements need to ensure that creators and inventors are rewarded for their
efforts, but in doing so they must:
- foster creative endeavour and investment in IP that would not otherwise occur
- only provide the incentive needed to induce that additional investment or endeavour
- resist impeding follow–on innovation, competition and access to goods and services.
- Australia's patent system grants exclusivity too readily, allowing a proliferation
of low quality patents,frustrating follow–on innovators and stymieing competition.
- To raise patent quality, the Australian Government should increase the degree of invention
required to receive a patent, abolish the failed innovation patent, reconfigure costly
extensions of term for pharmaceutical patents, and better structure patent fees.
- Copyright is broader in scope and longer in duration than needed - innovative firms,
universities and schools, and consumers bear the cost.
- Introducing a system of user rights, including the (well-established) principles–based
fair use exception, would go some way to redress this imbalance.
- Timely and cost effective access to copyright content is the best way to reduce infringement.
The Australian Government should make it easier for users to access legitimate content
- clarifying the law on geoblocking
- repealing parallel import restrictions on books. New analysis reveals that Australian
readers still pay more than those in the UK for a significant share of books.
- Commercial transactions involving IP rights should be subject to competition law.
The current exemption under the Competition and Consumer Act is based on outdated views and should be repealed.
- While Australia's enforcement system works relatively well, reform is needed to improve
access, especially for small– and medium–sized enterprises.
- Introducing (and resourcing) a specialist IP list within the Federal Circuit Court
(akin to the UK model) would provide a timely and low cost option for resolving IP
- The absence of an overarching objective, policy framework and reform champion has
contributed to Australia losing its way on IP policy.
- Better governance arrangements are needed for a more coherent and balanced approach
to IP policy development and implementation.
- International commitments substantially constrain Australia's IP policy flexibility.
- The Australian Government should focus its international IP engagement on reducing
transaction costs for parties using IP rights in multiple jurisdictions and encouraging
more balanced policy arrangements for patents and copyright.
- An overdue review of TRIPS (trade-related aspects of intellectual property rights)
by the WTO (World Trade Organization) would be a helpful first step.
You can read the whole report here.
About the Bill
In introducing the Bill the Minister said in his second reading speech that:
"The intellectual property (IP) system is an important element of the economy because
it promotes and incentivises investment in creativity, innovation, research and technology."
He went on to say that the purpose of the Bill was to make improvements to IP rights
legislation to better meet the objectives of promoting and incentivising investment
in creativity, innovation, research and technology.
The key reforms proposed by the Bill are:
- the repeal of Patents Act section 76A, which requires patentees to provide certain data relating to pharmaceutical
patents with an extended term (Productivity Commission Recommendation Recommendation 10.1);
- the reduction of the grace period for filing non-use applications under the Trade Marks Act (Productivity Commission Recommendation 12.1(a));
- the clearing up of when parallel importation of trade marked goods does not infringe
a registered trade mark (Productivity Commission Recommendation 12.1(c));
- the expansion of the scope of essentially derived variety declarations in the Plant Breeder’s Rights Act (PBRA) (Productivity Commission Recommendation 13.1);
- amendments to allow PBR exclusive licensees to take infringement actions, and for
the award of additional damages under the PBR Act; and
- streamlining of a number of processes for the handling of IP rights and some slight
technical amendments (writing, filing requirements, address for services, computerised
Implementation of Remaining Productivity Commission Reforms
The Bill does not implement all the Productivity Commissions recommendations and it is expected that there will be further legislation to come,
namely: an Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and
Other Measures) Bill 2018, which is to deal with inventive step reforms, introduce an objects clause into the
Patents Act 1990, make changes to Crown use, compulsory licensing of patents and designs and some
further technical issues. Any remaining proposed reforms from the draft Intellectual Property Laws Amendment Bill 2017 are to follow the outcome of the first two Bills.
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