Introductory Info
Date introduced: 25 July 2019
House: Senate
Portfolio: Industry, Innovation and Science
Commencement: Schedule 1, Part 1, and Schedules 2 to 7 will commence the day after Royal Assent. Schedule 1, Part 2 commences 12 months after Royal Assent. Schedule 8 commences six months after Royal Assent. The other Parts of the Bill will commence the day of Royal Assent.
The Bills Digest at a glance
The Intellectual Property Laws
Amendment (Productivity Commission Response Part 2 and Other Measures) Bill
2019 (the Bill) contains eight Schedules to amend the Patents Act 1990.
It implements the second part of the Government response to the recommendations
of the Productivity Commission in 2016 following a broad-ranging review into
the intellectual property system, as well as making some further amendments to
the Patents Act and the Designs Act 2003.
The Bill also includes a minor technical amendment to the Trade Marks Act
1995.
The substantive reforms are found in Schedules 1 to 4:
- Schedule
1 contains the Government’s responses to the Productivity Commission’s 2016 report
regarding the Patents Act. It is in two parts:
- Part
1 introduces an objects clause for the Act
- Part
2 phases out the innovation patent system
- Schedules
2, 3 and 4 amend Crown use and compulsory licensing provisions, in response to
recommendations in an earlier 2013 Productivity Commission Report:
- Schedule
2 amends the Crown use provisions in the Patents Act
- Schedule
3 amends the Crown use provisions in the Designs Act and
- Schedule
4 amends the compulsory licensing provisions in the Patents Act.
There have been some objections from stakeholders to the
above reforms, particularly regarding the phase out of the innovation patent
system and the proposed objects clause. However, other stakeholders have
expressed support and most submissions could be considered to be representing
the particular interests of the stakeholders involved in an area of law that
necessarily seeks to balance competing interests. The major reforms were originally
proposed following independent reviews and have been subject to lengthy
consultations over several years.
Purpose of
the Bill
The purpose of the Intellectual Property Laws Amendment
(Productivity Commission Response Part 2 and Other Measures) Bill 2019 (the
Bill) is to amend the Patents Act 1990
to implement the second part of the Government response to recommendations of
the Productivity Commission following a broad-ranging review into the
intellectual property system, as well as making some further amendments to the Patents
Act and the Designs
Act 2003.
The Bill also includes a minor technical amendment to the Trade Marks Act
1995.
Structure of
the Bill
The Bill contains eight Schedules.
Schedule 1 contains the Government’s responses to the
Productivity Commission’s 2016 report recommendations regarding the Patents
Act. It is in two parts:
- Part
1 – introduces an objects clause for the Patents Act
- Part
2 – phases out the innovation patent system.
Schedule 2 amends the Crown use provisions in the Patents
Act.
Schedule 3 amends the Crown use provisions in the Designs
Act.
Schedule 4 amends the compulsory licences provisions in
the Patents Act.
Schedule 5 amends the provisions dealing with seals in the
Patents Act and Trade Marks Act.
Schedule 6 amends the requirements for patent specifications
set out in the Patents Act.
Schedule 7 amends the protection of information provisions
under the Patents Act.
Schedule 8 amends the requirements for verified
translations of international applications under the Patents Act.
Background
Intellectual Property (IP) rights are a complex legal area
and IP protection can take a variety of forms. In general terms, IP protection
grants the creators or users of IP (such as inventors, designers, authors,
trade mark owners and plant breeders) limited exclusive rights in order to
encourage innovation and competition.
Many reforms of various aspects of Australia’s IP system
have been proposed or implemented over the course of recent decades, and many
of these reforms have been contested, with competing views being expressed by
interested stakeholders.[1]
As the IP system acts to balance the competing rights and interests of
different users and the public, views on the desirability of reforms are often
representative of the competing interests of different users of the IP system.
A comprehensive summary of the many reviews, inquiries and
consultations that have led to the reforms introduced in this Bill is provided
in IP Australia’s submission to the Senate Economics Legislation Committee
inquiry into the Bill.[2]
IP Australia is the government agency responsible for administering the Acts
amended by the Bill. Table 1 provides more information on the IP rights
administered by IP Australia and dealt with in the Bill.
Productivity
Commission report 2016
On 18 August 2015, the then Treasurer, Joe Hockey,
requested that the Productivity Commission undertake a 12 month inquiry into
Australia's IP arrangements, including their effect on investment, competition,
trade, innovation and consumer welfare. In the terms of reference for the inquiry,
he stated:
The Australian Government wishes to ensure that the
intellectual property system provides appropriate incentives for innovation,
investment and the production of creative works while ensuring it does not
unreasonably impede further innovation, competition, investment and access to
goods and services.[3]
The Productivity Commission’s final report, titled Intellectual
Property Arrangements, (the 2016 PC Report) was handed to the Australian
Government on 23 September 2016.[4]
The Government’s response to the report’s recommendations was mixed.[5]
Some recommendations were supported, some supported in principle and a number
of recommendations were not supported. For example, the report’s recommendation
that the Government implement a fair use copyright exception in Australia was
noted but not supported. Instead the Government indicated it would ‘further
consult’.[6]
Government
response
On 21 November 2017, IP Australia announced its intention
to implement the supported recommendations in a staged manner through two
separate pieces of proposed legislation.[7]
The first part, the Intellectual Property
Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act
2018 (the Part 1 Act) was introduced and passed in 2018. The Part
1 Act contained the initial stage of the Government’s response to the 2016
PC Report, as well as other measures to reform intellectual property laws. It
introduced amendments to the Copyright Act 1968,
Designs Act, Olympic
Insignia Protection Act 1987, Patents Act, Plant Breeder’s
Rights Act 1994 and Trade Marks Act.[8]
The second part of the Government’s response is contained
in Schedule 1 of the Bill. The outstanding recommendations from the 2016 PC
Report that are addressed in the present Bill are:
- the
inclusion of an objects clause in the Patents Act[9]
and
- the
abolition of the innovation patents system.[10]
As part of the Government’s response to the 2016 PC Report,
the Government noted that it would consult further on the recommendation
relating to the objects clause.[11]
The proposed amendments to the innovation patent system were not included in
the Part 1 Act. The Explanatory Memorandum states that the provisions of
Schedule 1 of the Bill—which deal with both these recommendations—have now been
drafted in light of public consultation conducted by IP Australia between 2017
and 2018.[12]
Productivity
Commission report 2013
The Productivity Commission also produced an earlier
report into aspects of the patent system following an inquiry in 2013, Compulsory
Licensing of Patents (the 2013 PC Report),[13]
which contained recommendations relating to the compulsory licensing and crown
use provisions of the Patents Act.
The relevant recommendations from the 2013 PC Report are:
- Recommendation
6.2: Amend the compulsory licensing provisions of the Patents Act to
replace the ‘reasonable requirements of the public’ test with a new public
interest test
- Recommendation
7.1: Amend the Crown use provisions of the Patents Act to clearly
include use for provision of a service that the Commonwealth, a state or
territory has primary responsibility for providing or funding and
- Recommendation
7.2: Amend the Crown use provisions of the Patents Act to require the
Crown to better recognise the rights of the patentee, in particular to attempt
to negotiate use, to provide a statement of reasons, the use to be approved by
a Minister and for remuneration to be determined on the same basis as that for
a compulsory licence.[14]
Government
response
The Government’s response to the 2016 PC Report stated
that the Government would consult further on those recommendations from the
2013 PC Report during the implementation of the response to the 2016 PC Report,
as the earlier recommendations were directed to the same aim of ‘ensuring that
there is an appropriate balance in the patents system’.[15]
The response to the earlier recommendations has resulted in the amendments in
Schedules 2 to 4 of the Bill.
Innovation
Patents
The innovation patent was introduced in 2001 to provide a
lower cost, lower inventive threshold, shorter term patent to encourage
incremental innovation and to be more accessible to small and medium businesses
and private inventors.[16]
The innovation patent system was developed to replace an earlier shorter term
patent system, the petty patent system, in response to recommendations of the 1995
Advisory Council on Industrial Property (ACIP) report on the Review of the
Petty Patent System.[17]
As noted above, the 2016 PC Report considered the
innovation patent system at some length, including its overall impact on the
economy and innovation in Australia. Although the 2016 PC Report recommended that
the system be abolished,[18]
submissions to the Exposure Draft of the Intellectual Property Laws Amendment
(Productivity Commission Response Part 1 and Other Measures) Bill 2017, which
included measures to bring this about,[19]
indicated that some stakeholders opposed this,[20]
and the measures were not included in the 2018 Bill as introduced.[21]
Further consultation was undertaken through the exposure draft of the current
Bill.[22]
Innovation patents can have a term of up to eight years as
opposed to 20 years for a standard patent (or up to 25 years for a pharmaceutical
patent), only require an ‘innovative step’ which is a lower threshold than the
‘inventive step’ which a standard patent requires, and are limited to five
claims.[23]
Perhaps most importantly, they can be granted following a formalities check with
no examination necessary. This means that no assessment of the validity of the
subject matter has been undertaken. However, to be used in an enforcement
action an innovation patent must first be examined and ‘certified’. This step
incurs additional cost and the risk that the patent will be found not to be
valid and be revoked. Importantly, prior to certification the innovation patent,
while still technically a granted patent, does not possess the legal force of a
standard patent.[24]
Certain aspects of the system, such as granting without
examination and the lower ‘innovative’ threshold, were contentious when the
system was introduced in 2001 and led to criticism from various commentators as
well as members of the patent attorney profession. Criticisms included suggestions
that an innovation patent would be worthless, particularly compared to a standard
patent or to the petty patent system which it replaced.[25]
The responses to the system included, for example, a patent attorney applying
for an innovation patent for a ‘circular transportation facilitation device’,
in other words a wheel, apparently to highlight the potential for the system to
be no more than a ‘rubber stamp’.[26]
Despite this initial resistance, the innovation patent system
has attracted applicants looking to protect lower level innovations[27]
and has been defended by the patent attorney profession and some small to
medium sized enterprises (SMEs) over the course of several subsequent inquiries,
although many larger companies remained opposed to it.[28]
These inquiries, leading up to the 2016 PC Report, have found, however, that on
balance the system is of little economic benefit to industry or the Australian
economy and should be abolished.[29]
Further, the 2016 PC Report pointed out the following specific problems with
innovation patents, highlighting in particular the ways in which they may cause
problems for other innovators and for competition in general:
- The innovative step is lower than the threshold for standard patents,
which itself is too low. This contributes to a multitude of low value
innovation patents, creating uncertainty for other innovators and financiers,
and increasing the likelihood that patent thickets will develop.
- Innovation patents are used strategically, either to target alleged infringers
of standard patents or to increase uncertainty over the scope of rights for
competitors.[30]
Crown Use and
Compulsory Licensing
Crown use provisions in the Patents Act and Designs
Act allow Australian governments (or another party authorised by them) to
use patented technology and registered designs for the purposes of government
or a government agency, without the authorisation of the patentee or registered
owner. It is a seldom used mechanism.[31]
In general, use is considered to be Crown use or ‘use for
the services of the Commonwealth or a State’ where the use of the patent or design
is necessary for the proper provision of those services within Australia.[32]
The terms of use and remuneration or compensation of the owner are to be agreed
between the Crown and owner or may be determined by a court if no agreement is
reached.[33]
Compulsory licensing provisions in the Patents Act provide
another mechanism that permits a patented invention to be used without the
authorisation of the patentee. Under compulsory licensing the owners of a
patent may be compelled to allow others to use their patented invention under a
licence in certain circumstances such as where a patent that could benefit the
community is being underutilised.[34]
The current compulsory licence provisions in the Patents Act allow the
Federal Court to ‘order a compulsory licence to be granted if the reasonable
requirements of the public are not being met with respect to a patented
invention’, or ‘if the patentee has engaged in restrictive trade practices in
connection with the patent under the Competition and Consumer Act 2010’
and, as it is a licence, ‘the patentee must be paid an agreed amount of
remuneration, or an amount of remuneration determined by the court’.[35]
The provisions in the Patents Act relating to Crown
use and compulsory licensing have been the subject of commentary, consultation
and recommendations in various reports over many years including an Australian
Law Reform Commission (ALRC) report in 2004 and ACIP reviews in 2005 and 2010,
as well as the 2013 PC Report.[36]
These reports have highlighted shortcomings in both mechanisms. The Crown use provisions
have been found to lack certainty as to their scope and which government
agencies may be able to utilise them, as well as needing better protections for
the patentee or owner.[37]
The compulsory licensing provisions were considered to be less efficient or
effective than they could be, particularly the ‘reasonable requirements of the
public’ test which was not consistent with comparable provisions in other laws
and which conflates the reasonable requirements of the public with the
interests of Australian industry.[38]
As discussed above, the 2013 PC Report made specific
recommendations for the reform of the Crown use provisions (Recommendations 7.1
and 7.2) and the compulsory licensing provisions (Recommendation 6.2) in the Patents
Act. The amendments in the present Bill implement these recommendations.
Committee
consideration
Economics
Legislation Committee
The Bill was referred to the Economics Legislation
Committee for inquiry and report on 1 August 2019. The report was
released on 4 September 2019.[39]
Details of the inquiry are at the inquiry
homepage.
The Committee recommended that the Bill be passed.[40]
Additional comments from Australian Labor Party (Labor) and Centre Alliance
Senators are discussed below.
Senate
Standing Committee for the Scrutiny of Bills
The Senate Standing Committee for the Scrutiny of Bills
made no comment on the Bill.[41]
Policy
position of non-government parties/independents
In additional comments to the Report of the Economics
Legislation Committee, Labor Senators noted their concerns, based on a number
of submissions, that the abolition of the innovation patent system without any
alternative system being introduced could create a situation where SMEs lacked the
assistance necessary to access the patent system.[42]
The Labor Senators called on the Government to:
... immediately address the need for greater support for
Australian SMEs in protecting their intellectual property through the standard
patent when the innovation patent is abolished...[and] immediately make public
the 'targeted assistance' that will stimulate innovation for Australian SMEs.[43]
Senator Patrick of Centre Alliance also provided
additional comments in the Committee Report, noting the concerns of SMEs
regarding the value of innovation patents to them, and recommending that the
provisions repealing the innovation patent system be removed from the Bill.[44]
Senator Patrick has circulated amendments to achieve this and to remove the
proposed objects provision.[45]
Position of
major interest groups
IP Australia conducted a public consultation on an
Exposure Draft of the Bill and associated Regulations during 2018. [46]
The bulk of submissions to this consultation that have been published by IP
Australia were concerned with the objects clause and the proposed abolition of
the innovation patent system.[47]
Further submissions were received in response to the Economics
Legislation Committee inquiry into the Bill. These submissions also raised concerns
with the objects clause, the abolition of the innovation patent system, and the
crown use and compulsory licensing amendments, and are discussed below in the appropriate
areas of the ‘Key issues and provisions’ section of the digest.[48]
Financial
implications
The Government stated in the Explanatory Memorandum that
it expected the Bill to have no financial implications for the Commonwealth.[49]
Statement of Compatibility with Human Rights
As required under Part 3 of the Human Rights
(Parliamentary Scrutiny) Act 2011 (Cth), the Government has assessed
the Bill’s compatibility with the human rights and freedoms recognised or
declared in the international instruments listed in section 3 of that Act. The
Government considers that the Bill is compatible.[50]
Parliamentary
Joint Committee on Human Rights
The Parliamentary Joint Committee on Human Rights had no
concerns with the Bill.[51]
Key issues
and provisions
Objects
clause
Part 1 of Schedule 1 introduces an objects clause
into the Patents Act.
Item 1 inserts proposed section 2A which
provides that the object of the Act ‘is to provide a patent system that
promotes economic wellbeing through technological innovation and the transfer
and dissemination of technology’.
The object clause goes on to note that ‘the patent system
balances over time the interests of producers, owners and users of technology
and the public’.
This object clause is very similar to that called for in Recommendation
7.1 of the 2016 PC Report,[52]
with the addition only of the term ‘economic’ to qualify ‘wellbeing’, and ‘the
public’ being added to the list of interested parties.
The issue of an objects clause has however been contested
for several years, with some commentators claiming that it is necessary to
legislatively clarify the objects of the system in order to better guide
judicial decisions on patentable subject matter, while others believe that it
could unduly restrict the scope of what would be considered to be patentable
subject matter. IP Australia stated that the objects clause:
... will clarify the underlying purpose of the Patents Act and
reduce uncertainty about the operation of the patent system. Courts will also
be able to rely on the objects clause to assist in the interpretation of the
provisions of the Patents Act, where the meaning of a provision is unclear.[53]
In a submission to the Committee, the Intellectual
Property Committee of the Business Law Section of the Law Council of Australia (Law
Council) expressed the view that the Act should be drafted clearly enough that
an objects clause is not necessary and considered that an objects clause may
cause uncertainty. The Law Council submitted that if the objects clause
proposed by the Bill was to be inserted in the Act, ‘(t)he words “and the
transfer and dissemination of technology” should be deleted’ and that the ‘clause
should include a reference to a purpose of the Act being to comply with
Australia’s international obligations’.[54]
The Institute of Patent and Trade Mark Attorneys of
Australia (IPTA) also oppose the introduction of an objects clause, claiming:
... despite comments suggesting the contrary in the Explanatory
Memorandum, it is clearly intended to significantly change the manner in which
judicial patent decisions are made in relation to many aspects of patent
validity, including the assessment of patent eligible subject matter and
inventive step. In particular, the introduction of the word ‘technological’ to
qualify the term "innovation" has the potential to cause significant
misunderstandings and significant harm.[55]
The Australian Chamber of Commerce and Industry also
submitted that Schedule 1 should not proceed and that ‘the term ‘technological
innovation’ in the object clause should be abandoned as it will add confusion,
costs and may act to exclude certain types of inventions’.[56]
As set out above, Senator Patrick of Centre Alliance has
circulated amendments that would remove the proposed objects provision.[57]
Innovation
Patents
Part 2 of Schedule 1 introduces amendments to the Patents
Act that will abolish the innovation patent system by setting a cut-off
date beyond which no new innovation patents will be accepted.
Innovation patents with a priority date before the
amendments come into force (12 months from Royal Assent) will still be accepted
and can be examined and/or maintained for their full term as at present, but no
further innovation patents will be able to be lodged or granted after that date.[58]
Standard patents will be unaffected, and these amendments
do not introduce any alternative form of lower-tier patent system.
These amendments implement Recommendation 8.1 of the 2016
PC Report, discussed above.
Section 52 of the Patents Act provides that a
formalities check must be undertaken for applications for innovation patents,
and states that if the application passes the formalities check it must be
accepted by the Commissioner. Item 4 inserts proposed subsection
52(3) which provides that the formalities check for an innovation patent
will only be complied with if the date of the patent (if granted) would be
before the commencement date of the proposed subsection. This date will be 12
months from the day of Royal Assent. The impact of this amendment is to allow
innovation patents to continue to be lodged for 12 months from the day of
Assent.
Section 101B of the Patents Act prescribes the
matters which must be considered during an examination of an innovation patent.
Item 5 of Schedule 1 inserts proposed paragraph 101B(2)(ha) which
provides that one of the matters which must be examined is whether each claim
in the specification of the patent has a priority date before the date of
commencement of the subsection. That date will be 12 months after Royal Assent.
Section 101E sets out the requirements and procedure for
issuing a certificate of examination for an innovation patent. Item 7
inserts proposed subparagraph 101E(1)(a)(viiia) which adds the
requirement that an innovation patent may only be issued a certificate of
examination if ‘each claim in the complete specification has a priority date
that is before the day paragraph 101B(2)(ha) commences’.
Together these amendments mean that examination will
consider if innovation patents have been filed within 12 months of the date of
assent or earlier and will only allow innovation patents to be certified if
that is the case.
The Australian Chamber of Commerce and Industry (ACCI) submitted
that Schedule 1 should not proceed and that the Government should ‘maintain and
amend the innovation patent through the addition of mandatory examination and
increasing the inventive step threshold, but to a lower level than the current
inventive step threshold of the standard patent system’, and called on the
Government to ‘consider implementing concurrent measures to pursue the primary
objectives of the innovation patent system, in particular the objective aimed
to encourage and support SMEs to innovate and commercialise novel ideas’. [59]
The submission explained the ACCI’s concerns as follows:
Without a second-tier system, applicants will need to exhaust
significantly more resources in applying for, maintaining and defending their
intellectual property rights... Over 50 countries possess a second-tier patent
system and Australia has had such a system since the late 1970s. While there
have been obvious issues with the Innovation Patent system, it has not been
given a chance to succeed as there have not been any constructive changes since
its introduction in 2001. Recommendations made by IPTA and the Productivity
Commission to include mandatory examination and the inventive step may address
this issue.[60]
Bodies such as IPTA and the Law Council also opposed the abolition
of the innovation patent system in submissions to the Senate Inquiry. The Law
Council did however acknowledge some failings with the system, but felt they
could be dealt with through reform, rather than abolition.[61]
While many other SMEs also provided submissions opposing
the abolition of the innovation patent system,[62]
larger enterprises Cochlear and ResMed expressed support for the abolition, but
considered that the Bill should be amended to more quickly end any patents
relying on the innovation patent system, such as by prohibiting filing and
examination of innovation patents immediately upon commencement of the Act.[63]
As set out above, Senator Patrick of Centre Alliance has
circulated amendments that would remove Part 2 of Schedule 1 from the Bill.[64]
Crown Use
Schedule 2 contains amendments to the Crown use
provisions of the Patents Act.
These amendments implement Recommendations 7.1 and 7.2 of
the 2013 PC Report.[65]
As discussed above, those recommendations called for amendments ‘to make it
clear that Crown use can be invoked for the provision of a service that the
Australian, State and/or Territory Governments have the primary responsibility
for providing or funding’;[66]
and to require:
- the Crown to attempt to negotiate use of the patented invention prior to
invoking Crown use
- the Crown to provide the patentee with a statement of reasons no less
than 14 days before such use occurs
- Crown use to be approved by a Minister (the relevant Federal Minister or
State Attorneys-General)
- that in instances of Crown use, the patentee is entitled to remuneration
determined on the same basis as that for a compulsory licence.
The first two requirements should be able to be waived in
emergencies. However, in all cases patentees should be provided with immediate
notice that their patents have been used, and a statement of reasons as soon as
practical thereafter.[67]
Item 5 of Schedule 2 to the Bill inserts proposed
section 160A into the Patents Act to provide a definition of when an
invention is exploited for Crown purposes. A definition is
currently found in subsection 163(3) which provides that ‘an invention is taken
for the purposes of this Part to be exploited for services of the Commonwealth
or of a State if the exploitation of the invention is necessary for the proper
provision of those services within Australia’. Proposed subsection 160A(1)
provides that an invention is exploited for Crown purposes where it is
exploited for the services of a relevant authority, by the authority or a
person authorised by the authority. Proposed subsection 160A(3)
substantially maintains the existing definition of exploitation, but defines
exploitation for the services of ‘a relevant authority’ rather than of ‘the
Commonwealth or of a State’. Item 25 of Schedule 2 repeals and replaces
the definition of ‘relevant authority’ in the Dictionary at Schedule 1 to the Patents
Act, to provide that in relation to the exploitation of an invention by or
for the Commonwealth, a state or a territory (or an authority of the
Commonwealth a state or territory), the relevant authority is the
Commonwealth, the state or the territory, as the case may be. Currently,
‘State’ is defined (for the purposes of Chapter 17 of the Patents Act)
to include the Australian Capital Territory, the Northern Territory and Norfolk
Island. That definition will be repealed by item 27 of Schedule 2 to the
Bill, with territories instead being covered in the definition of relevant
authority.
Proposed subsection 160A(4) then further expands on
the meaning of services of a relevant authority, defining them,
as recommended by the PC, as services that are primarily provided or funded by
the Commonwealth, a state or territory, or services that are primarily provided
or funded by two or more of the Commonwealth, states or territories.
Proposed subsection 160A(1) establishes that an
invention is exploited for Crown purposes if it is exploited for the services
of a relevant authority and the exploitation is either by the authority or a
person authorised in writing by the authority. Proposed subsection 160A(2)
provides that such a person may be so authorised before or after the grant of
the patent, and even if they are authorised by the patentee or nominated person
to exploit the invention. This replaces existing subsection 163(2) which
includes the additional ability for a person to be authorised before or after the
exploitation of the invention.
Item 7 will repeal and substitute section 163. The
provisions of section 163 are then effectively replaced by those of both proposed
sections 160A and 163. Subsections 163(2) and (3) are replaced by
provisions of proposed section 160A as discussed above.
The existing subsection 163(1) provides that the
exploitation of an invention (either a patent or a pending application) is not
an infringement of the patent or nominated person’s rights if the exploitation
is for the services of the Commonwealth or a State, and the exploitation is by the
Commonwealth or a State or a person authorised by them in writing. Proposed
subsection 160A(1), discussed above, will now provide the ability for the
exploitation to be by the relevant authority or a person
authorised by them in writing.
Proposed subsections 163(1), (2) and (3) will replace
the provisions of subsection 163(1) with an expanded set of requirements that
must be satisfied for the exploitation of a patent or application for Crown
purposes to not be an infringement. Proposed subsection 163(1) adds the
requirement that the exploitation must be in the following circumstances
mentioned in proposed subsection 163(3):
- the
relevant Minister considers that the relevant authority has tried for a
reasonable period, but without success, to obtain from the applicant and the
nominated person, or the patentee, an authorisation to exploit the invention on
reasonable terms;
- the relevant Minister approves, in writing, the
exploitation;
- the invention is exploited for Crown purposes;
- if the
exploitation is by a person authorised by a relevant authority for the purposes
of subparagraph 160A(1)(b)(ii)—the person is authorised by the relevant
authority before the exploitation starts;
- at
least 14 days before the exploitation starts, the relevant authority gives the
applicant and the nominated person, or the patentee:
- a copy of the approval referred to in
paragraph (b); and
- a written statement of reasons for
approving the exploitation.
Proposed subsection 163(2) adds the requirement
that if terms relating to the exploitation have been agreed or determined under
section 165, then they must be complied with or the exploitation will be an
infringement.
Proposed subsection 163(5) provides that relevant
minister means the Commonwealth Minister who has responsibility for the
Patents Act, or a state or territory Attorney-General, depending upon
which government the exploitation is by or for.
Proposed section 163A deals with Crown exploitation
in emergencies. Proposed subsection 163A(3) provides that the
circumstances that are required to be met for an emergency exploitation to not
be an infringement are:
- the relevant Minister considers that the exploitation
is required because of an emergency,
- the invention is exploited for Crown purposes, and
- approval is given in writing before the exploitation
begins, as is any authorisation if needed.
Proposed subsection 163(4) provides that the
exploitation of an invention in circumstances of an emergency requires the
relevant Minister to provide the patentee (or applicant and nominated person)
with a copy of the approval and written reasons as soon as practicable after
the approval. This is in contrast to the requirement in proposed subsection
163(3) for written notice in other, non-emergency situations, to be
provided at least 14 days prior to the exploitation.
Item 11 repeals and substitutes subsection 165(2),
which deals with remuneration and terms for crown exploitation. Currently subsection
165(2) provides that the terms for the exploitation of an invention, including
remuneration, are as are agreed, or determined by a method agreed, between the
relevant authority and the nominated person or the patentee or, in the absence
of agreement as are determined by a prescribed court on the application of
either party. Proposed subsection 165(1) provides similarly for the
terms, including remuneration, to be as agreed or determined between the
relevant authority and the nominated person or the patentee, or as determined by
a court. Proposed subsection 165(2) elaborates that the court must
determine an amount that is just and reasonable, having regard to the economic
value of the exploitation and any other matters the court considers relevant.
Item 19 repeals and replaces section 166 which
provides that agreements or licences fixing terms on which a person other than
the Commonwealth or a State may exploit an invention are inoperative unless
approved by the Commonwealth Minister or relevant State Attorney-General. Proposed
section 166 provides that such agreements or licences are inoperative with
respect to the exploitation of the invention in the circumstances mentioned in
subsection 163(3) or 163A(3) unless approved by the relevant Minister.
The Law Council noted its support for the amendments in
Schedule 2, with the reservations that ‘in some circumstances it may not be
apparent what (if any) patent rights may potentially apply to a proposed
exploitation of an invention by a relevant authority, and consequently which
party is to be approached for authorisation’ and that in relation to the
provisions dealing with remuneration for exploitation, ‘the term “reasonable”
may be inconsistent with [the] requirement under section 51(xxxi) of the Commonwealth
Constitution that any acquisition of property by the Commonwealth should
be on “just terms” alone’.[68]
Dr Dimitrios Eliades, a barrister with a longstanding
interest in the Crown use provisions,[69]
submitted that he considered the requirement for the court to determine
remuneration that is just and reasonable to be an improvement, but suggested
other additions to the amendments including a note to make clear that certain
matters are relevant, and for additional damages against the Crown to be
available in the case of infringement or unsuccessful challenge to the validity
of the patent.[70]
Schedule 3 contains amendments to the Crown use
provisions of the Designs Act which are analogous to the Schedule 2 amendments
to the Crown use provisions of the Patents Act, discussed above.
Compulsory
Licences
Schedule 4 contains amendments to the compulsory
licensing provisions of the Patents Act.
These amendments implement Recommendation 6.2 of the 2013
PC Report.[71]
As discussed above, that recommendation called for the amendment of the
compulsory licensing provisions of the Patents Act to replace the
‘reasonable requirements of the public’ test with a new public interest test.
Recommendation 6.2 specifically called for a compulsory licence to be available
where:
- Australian demand for a product or service is not being met on
reasonable terms, and access to the patented invention is essential for meeting
this demand.
- The applicant has tried for a reasonable period, but without success, to
obtain access from the patentee on reasonable terms and conditions.
- There is a substantial public interest in providing access to the
applicant, having regard to:
- benefits to the community from meeting the
relevant unmet demand
- commercial
costs and benefits to the patent holder and licensee from granting access to
the patented invention
- other
impacts on community wellbeing, including those resulting from greater
competition and from the overall effect on innovation.[72]
Recommendation 6.2 also called for the Federal Court to
set the terms of the licence, including, where the parties could not reach
agreement, ‘any remuneration, consistent with the public interest, having
regard to the rights of:
- the
patentee to obtain a return on investment commensurate with the regulatory and
commercial risks involved
- the
public to the efficient exploitation of the invention’.[73]
Item 2 of Schedule 4 omits the section of
text in section 132B, the simplified outline of the Part, dealing with court
orders based on the reasonable requirements of the public, and replaces it with
text reflecting the new conditions in accordance with proposed amendments to
section 133.
Section 133 provides the general requirements for applying
to the Federal Court for an order requiring the grant of a licence to work a patented
invention. It contains the conditions that the court must be satisfied of
before making an order, and certain conditions that an order may impose on the
patentee and licensee.
Item 5 amends subsection 133(1) to insert “(the original
invention)” after the existing reference to the “patented invention”.
This additional term is to clarify which invention is being referred to later
in proposed paragraph 133(3)(f) which deals with interactions with
another patented invention (therein referred to as the dependent
invention) if that requires exploitation of the original invention in
order for the dependent invention to be exploited.
Item 6 repeals subsections 133(2), (3) and (3B) and
replaces them with proposed subsections 133(2), (3), (3A), (3B) and (3C).
Subsections 133(2), (3) and (3B) respectively deal with:
- the
conditions that the court must be satisfied of before making an order
- the
directions that the order must give to the licensee and
- the
details required in the order if the working of the patented invention requires
the infringing of another patent.
Proposed subsections 133(2) and (3) together
replace the conditions found in existing subsection 133(2) with an expanded set
of conditions based on those in Recommendation 6.2 of the 2013 PC Report.
Specifically, proposed subsection 133(3) lists the following conditions that
a court must be satisfied of before making a compulsory licence order:
- demand in Australia for the original invention is not
being met on reasonable terms; and
- authorisation to exploit the original invention is
essential to meet that demand; and
- the
applicant has tried for a reasonable period, but without success, to obtain
authority from the patentee to exploit the original invention on reasonable
terms and conditions; and
- the
patentee has given no satisfactory reason for failing to exploit the patent to
the extent necessary to meet the demand for the original invention in
Australia; and
- it is
in the public interest to provide the applicant with authorisation to exploit
the original invention, having regard to the following:
- the
benefits to the public from meeting the demand for the original invention;
- the
commercial costs and benefits to the patentee and the applicant from providing
authorisation to exploit the original invention;
- any
other matters the court considers relevant, including matters relating to
greater competition and any impact on innovation; and
- if the
applicant is the patentee of another invention (the dependent invention)
and is seeking the authorisation for the purposes of exploiting the dependent
invention:
- the
dependent invention cannot be exploited by the applicant without exploiting the
original invention; and
- the
dependent invention involves an important technical advance of considerable
economic significance on the original invention.[74]
Proposed paragraphs (a) to (e) substantially
mirror the conditions proposed by Recommendation 6.2, with the notable
difference in paragraph (e) that the authorisation to exploit the invention
need only be ‘in the public interest’, rather than the requirement for ‘a
substantial public interest’ as recommended by the PC.
Proposed paragraph 133(3)(f) and proposed
subsection 133(3A), which deal with licensing an original invention
where necessary to work a dependent invention, replace existing
subsection 133(3B) using revised language to clarify the intent.
Item 7 repeals and substitutes paragraph 133(5)(b),
dealing with the determination of remuneration in respect of a licence by the
Federal Court, where the parties cannot agree on an amount. Proposed
subsection 133(5)(b) provides that the amount to be determined by the Court
is to be ‘just and reasonable’, having regard to:
- the
economic value of the licence; and
- if the
order is made because the court is satisfied that the patentee has contravened,
or is contravening, Part IV of the Competition and Consumer Act 2010
or an application law (as defined in section 150A of that Act) in
connection with the patent—the desirability of discouraging contraventions of
that Part or an application law; and
- the
right of the patentee to obtain a return on investment commensurate with the
regulatory and commercial risks involved in developing the invention; and
- the
public interest in ensuring that demand in Australia for the original invention
is met on reasonable terms.
Proposed subparagraphs 133(5)(b)(iii) and (iv),
although couched in slightly altered language, appear to address the last two
points of Recommendation 6.2 from the 2013 PC Report.[75]
Items 11 and 12 of Schedule 4 to the Bill make
consequential amendments to section 134 of the Patents Act which deals
with the revocation of patents subject to a compulsory licence order after the
end of the period prescribed. The amendments would bring the matters to be
considered at revocation into line with the matters to be considered when
making an order, as introduced by item 6 of Schedule 4.
The Law Council stated that it ‘does not support replacing
the “reasonable requirements of the public” test for the grant of a compulsory
licence with a “public interest” test’, and that the proposed grounds for
making a compulsory licence order may extend beyond those permitted by Article
17.9.7 of the Australia-United States Free Trade Agreement (AUSFTA).[76]
The Law Council also expressed concerns over the difficulties that the proposed
amendments could present to a court in balancing interests when considering
whether or not to make an order, as well as when setting remuneration.[77]
On the subject of the public interest test, the Law Council remarked:
... there will be significant uncertainty for parties as to how
the competing interests will be balanced in a particular case. This highlights
the difficulties of a “public interest” test: even leaving to one side the
rights of the patentee, there is a distinction between the interests of the
public in the short term (which might include a desire for immediate and
widespread access to patented technology at a low price) and the interests of
the public in the long run (which would take into account the public interest
in encouraging innovation by appropriately rewarding innovative activity). This
potential for uncertainty is a further reason why the Committee considers that
the inclusion of “substantial” as a qualifier to “public interest” is
important.[78]
Other provisions
Schedules 5—8 contain further minor amendments to
the Patents Act and the Trade Marks Act.
Schedule 5
Schedule 5 amends both the Patents Act and
the Trade Marks Act to permit the respective official seals used under
those acts to be kept and used in electronic form. Items 1 and 2
insert the ability to use the seal in electronic form into the Patents Act,
while items 3 and 4 do the same for the Trade Marks Act.
Schedule 6
Schedule 6 amends the Patents Act to expand
the requirements for patent specifications that are able to be taken into
consideration when a patent is undergoing several stages of assessment.
The Explanatory Memorandum states that this is due to a
drafting oversight in the Intellectual
Property Laws Amendment (Raising the Bar) Act 2012.[79]
That Act amended the Patents Act by, among other things, amending
section 40 of the Patents Act which deals with the requirements for
patent specifications. That amending act introduced a new requirement at
examination by inserting a new subsection 40(3A):
(3A) The
claim or claims must not rely on references to descriptions or drawings unless
absolutely necessary to define the invention.[80]
Subsection 40(3A) has since been amended, and now refers
to ‘references to descriptions, drawings, graphics or photographs’.[81]
However, while the provision in the Act dealing with
examination of a patent (section 45) requires a determination of whether the ‘the
specification complies with subsections 40(2) to (4)’, thus including the newer
subsection (3A), other provisions currently refer to ‘subsection 40(2) or (3)’,
thus inadvertently omitting the newer requirement. The provisions of the Patents
Act to be amended to include a reference to subsection 40(3A) by items 1
to 6 are:
- paragraph
59(c) dealing with the opposition to standard patents
- paragraph
98(a) dealing with the re-examination of patents
- paragraph
101G(3)(a) dealing with the re-examination of innovation patents
- paragraph
101M(b) dealing with the opposition to innovation patents
- paragraph
102(2)(b) dealing with the amendment of patent specifications
- paragraph
138(3)(f) dealing with the revocation of patents.
Item 7 of Schedule 6 ensures that the amendments
will only apply to patents that had to satisfy the requirement of subsection
40(3A) when they were originally examined.
Schedule 7
Schedule 7 of the Bill introduces amendments to
sections 55 and 56 of the Patents Act to permit the Commissioner to
redact certain information from patent related documents that would otherwise
be published. Section 55 provides that patent related documents are to be
published on the acceptance or grant of the patent, and section 56 provides
that such documents must not be published except as provided for by the Act.
Proposed subsection 56(3) will permit the
Commissioner to redact certain information from a copy of a document to be
published ‘(i)f the Commissioner reasonably believes that information contained
in a document of a kind mentioned in section 55 should not be published or be
open to public inspection’.
The Explanatory Memorandum explains that this is due to
the fact that while there is a public benefit from access to the information on
the patented invention, some patent documents also contain sensitive
information of a commercial or personal nature, not related to the invention.
The Explanatory Memorandum also notes that the Commissioner currently protects
such information from publication by using a broad power under the Regulations,
but that this applies to ‘documents’ rather than ‘information’, so at the
moment there is no clear power to redact parts of a document rather than whole
documents.[82]
Schedule 8
Schedule 8 of the Bill contains a minor amendment
to the Patents Act to align better with the modern situation regarding
translations of foreign language specifications. Subsection 10(2) currently
requires international applications that were filed in a receiving office in a
language other than English to also file a verified English translation, if an
international filing date needs to be given to them by Australia.
Item 1 of Schedule 8 repeals and replaces
subsection 10(2). Proposed subsection 10(2) amends this requirement to
be a requirement for a translation into English and, if required by the Regulations,
a certificate of verification of the translation. This will enable the
Regulations to be amended so that the requirement for a certificate of
verification can be waived where appropriate.
Concluding comments
While some of the reforms to the IP system that this Bill
implements are not supported by all stakeholders, they were proposed by
independent reviews and have been subject to lengthy consultations.