Draft IP Laws Amendment Bill and Regulations 2017 - proposals that will be progressed in 2017/2018

Issue summary

• Part 4 - Written requirements - would make a number of amendments to give IP Australia the flexibility to take actions or give information by any means of communication, including by electronic means.
• Part 5 - Filing requirements - would make various amendments to streamline how documents are filed with IP Australia including how fees are paid across all IP rights. A key change is empowering the Commissioner and Registrars to determine the preferred means for filing and fee payments.
• Part 8 - Signatures - would remove the unnecessary requirement for an applicant to provide a signature in relation to the Patent Cooperation Treaty (PCT) and international patent requests.
• Part 9 - Computerised decision-making - would make various amendments to the IP Acts to enable the Commissioner and the Registrars to arrange for the use of a computer program to make a decision, exercise any power or comply with any obligation of the Commissioner or Registrar. Computerised decision-making is proposed to be used for simple administrative decisions only, and approval to use computers for these decisions could only be approved by the Commissioner or Registrars. Further public consultation will be undertaken prior to implementation.
• Part 10 - Address for service of documents (& Part 9 of the draft Regulations) - would amend the Plant Breeder's Rights (PBR) Act to clarify and simplify the address requirements by moving some requirements to the approved form for applying for Plant Breeder's Rights.
• Part 12 - Requirements for patent documents (& Part 11 of the draft Regulations) - would consolidate the requirements for patent applications and specifications and requires complete applications to comply with the formality requirements outlined in an instrument made by the Commissioner.
• Part 14 (Regulations) - would replace the outdated requirement to file multiple copies of each design disclosed in an application.
• Part 15 - Unjustified threats - would introduce protection against unjustified threats in the Plant Breeder's Rights legislation and introduce additional damages for patents, trade marks and designs.
• Part 16 - Ownership of Plant Breeder's Rights and entries in the Register - would clarify that Plant Breeder's Rights may be granted to two or more breeders jointly and provide the Registrar with the power to rectify the Register of a number of errors.
• Part 17 - Trade mark oppositions (& Part 15 of the draft Regulations) - Trade Mark Regulations do not set out in the regulations the procedures to be followed for oppositions under section 83A. Amendments would enable such regulations to be made to correct this oversight.
• Part 18 - Seizure notices - would provide the Comptroller-General with flexibility on how seizure notices are provided and whether personal information is excluded for confidentiality reasons.
• Part 19 - Publishing personal information of registered patent or trade marks attorneys - would introduce new provisions to ensure that the Trans-Tasman IP Attorneys Board (the Board) can publish certain personal information of registered patent and/or trade marks attorneys.
• Part 20 - Prosecutions - would align the time frame to prosecute offences committed by incorporated attorneys with the five year time frame to prosecute offences committed by individual attorneys.
• Part 21 - Secretary's role in the Plant Breeder's Rights Act (& Part 16 of the draft Regulations) - would transfer the powers and obligations of the Secretary of the Department of Industry, Innovation and Science to the Registrar of Plant Breeder's Rights to reflect existing practice and ensure alignment with the other IP rights legislation.
• Part 22 - Updating references to the Designs Act - would amend the Olympic Insignia Protection Act 1987 to update references to the correct provisions in the Designs Act 2003. Currently, references are to the Designs Act 1906.
• Additional part - Repealing single application and examination provisions - would repeal the provisions introduced by the IP Laws Amendment Act 2015 that would have allowed the single application and examination processes for patents to take place. These processes are no longer going ahead, and as a result the provisions are unnecessary.

Comments

This item is included in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 which received Royal Assent on 24 August.

The Plant Breeder’s Rights Advisory Committee (PBRAC) has formally been abolished under the Statute Update (Smaller Government) Act 2018.