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Raising the Bar – Changes to IP Legislation

 

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“IPLA Act”) has made a significant change to the IP system. You need to be aware of and understand the changes made by this act, and update your IP strategies and procedures in line with the amendments by the time the Act comes into force on 15 April 2013.

Changes to Patent Law

In an attempt to bring Australian standards of patentability more into line with other major countries, the IPLA Act makes amendments in several ways to the Patents Act 1990 (Cth) primarily by raising the threshold required to be met for a patent to be granted.
The key changes are:

Firstly, the Act raises the Australian standard for ‘inventive step’ by lessening the restrictions on the types of information and background knowledge that examiners are able to rely on when considering whether or not an application has a sufficient ‘inventive step’ to justify a patent. Rather than just relevant prior art, all prior art will be able to be taken into account when determining ‘inventiveness’.

Second, in a bid to inhibit the grant of patents for speculative inventions that require too much further work before they can be put into practice 25, the amendments raise the threshold requirement for demonstrating the ‘usefulness’ of an invention. The more stringent test for the usefulness of a patent now requires the invention to possess a “specific, substantial and credible use” in the sense that “the invention works in the way that the patent says it does and that the specification explains how the invention works.”

Thirdly, the reforms now require a greater standard for disclosure of inventions, ensuring that granted patents are no broader than the invention that has been disclosed. Instead of just merely describing the invention, the amendments now require disclosure of the “invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.”

Exceptions to patent infringement: The Act will also introduce two sets of activities that will be exempted from patent infringement – acts solely for the purpose of obtaining regulatory approval and experimental acts relating to the subject matter of the patented invention.

Changes to Trade Mark Law

The Trade Marks Act 1995 (Cth) will be substantially amended following the enforcement of the IPLA Act.

The amendments primarily focus on the opposition process of a trade mark application. Currently, opponents in opposition proceedings are able to initially file an opposition without supplying any supporting evidence. Once filed, they opponents have three months to file supporting evidence; however, an extension of up to a further of nine months is easily obtainable. The IPLA Act seeks to prevent abuse of the opposition process by introducing a few changes, in particular:

Notification of opposition proceedings: After filing an opposition to a trade mark registration, opponents will no longer carry the burden of notifying the applicant owner of the mark of the opposition. This responsibility will be shifted to IP Australia.

Statement of grounds for opposition proceedings: The opponent must now lodge a Statement of Grounds and Particulars (SGP) in respect of each ground of opposition. The SGP must be lodged within 1 month from the Notice of Opposition as failure to do so may result in the opposition proceeding being dismissed.

Notice of intention to defend opposition proceedings: Within one month of service of the SGP, applicants will be required to file a notice confirming their intention to defend their mark against the opposition. If they refuse to do so, their applications for trade mark registration will lapse.

In addition, other key changes to the Trade Marks Act 1995 include:
Jurisdiction: The Act will allow for the Federal Magistrates Court to have jurisdiction to hear trade mark matters and disputes.
Customs Seizures: Trade mark owners will now be permitted to have access to seized goods and remove some samples for inspection to find out whether the goods infringe their trade mark or not. Also, the importer of the seized goods bears the burden of making a claim to Customs to release their seized goods. If no claim is made within a certain time period, the goods will be forfeited and disposed of.
Additional damages for trade mark infringement: In addition to raising the maximum penalties for indictable offences, the Act will allow for court to make an award for additional damages when taking into account new considerations such as the flagrancy of the infringement or the need to deter similar infringements amongst other matters.
Attorney-client privilege: Communications made for the dominant purpose of a registered trade marks attorney providing intellectual property advice to a client is privileged in the same way and to the same extent as a communication made for the dominant purpose of a lawyer providing legal advice to a client.

Changes to Copyright Law

The Act also amends the Copyright Act 1968 (Cth) by simplifying Customs seizures. The amendments will provide greater protection for IP owners against imported counterfeit goods.
In particular;
Copyright owners will have the ability to have access to seized goods and remove some samples for inspection to find out whether the goods infringe their copyright or not, and
The importer of the seized goods bears the burden of making a claim to Customs to release their seized goods. If no claim is made within a certain time period, the goods will be forfeited and disposed of.

Changes to Design law

The Act will allow for the Federal Magistrates Court to have jurisdiction to hear design matters and disputes.