The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 proposes a wide range of amendments to patent and trade mark law. This article overviews some of them.

Patents Act Amendment

For patents, the aims of the Bill include to raise the quality of patents granted, require greater disclosure of details of the usefulness of inventions, and expand exemptions for non-commercial research of patented inventions.

Raising the quality of patents granted

"patent-and-trade-mark-acts-3"Working on the premise that presently in Australia, patents can be granted for inventions that are not sufficiently inventive, the Bill aims to raise the quality of patents granted to a level said to be more consistent with overseas trading partners.

This is proposed to be achieved by expanding the assessment of the inventiveness from the (limited base of) common general knowledge in Australia to a more global common general knowledge within the patent area.

Greater disclosure of details of the usefulness of inventions

"patent-law"It is said that currently details of inventions are not sufficiently disclosed to the public, in turn hampering competition and further and future innovation. The proposal is to raise the standard for disclosure of inventions to encourage further innovation and, once the patent has expired, enable the public to make and use the invention.

There is also a proposal to raise the standards for disclosure to prevent speculative patents. This is to be achieved by strengthening the standard of requirements explaining how the invention works and imposing the requirement that the invention actually works in the way described in the patent. It is proposed that the definition of “useful” include a requirement that a patent specification must include a “specific, substantial and credible” use for the invention.

Expand exemptions for non-commercial research of patented inventions

Research activities undertaken solely for the purpose of gaining regulatory approval for pharmaceutical inventions are exempted from infringement. The Bill proposes expansion of this to also exempt other technologies for the purposes of obtaining regulatory approval or for research.

This is to allow for non-commercial research and experimental activities on patented inventions. The exemptions are for activities undertaken solely for gaining regulatory approval. The predominant purpose must be that of gaining new knowledge, testing a principle or supposition about the invention, not where the main purpose of the research is to commercialise or manufacture the patented invention.

Trade Marks Act Amendment

"patent-trade-marks-acts-2"For trade marks law, there are many procedural changes proposed by the Bill. A theme is to create a stronger deterrence against trade mark infringement by increasing the severity and range of penalties under the Trade Marks Act.

The current penalties for trade mark counterfeiting are lower than for copyright infringement and are described as insufficient to deter infringers. It is said this makes Australia an “attractive target” for counterfeiters. For example, under the Copyright Act, the maximum term of imprisonment for making a device intended for making infringing copies of a work is 5 years, whereas the maximum imprisonment term for a similar offence under the Trade Marks Act is 2 years.

The Bill proposes raising the penalties for trade mark infringement to align them with similar penalties under the Copyright Act and to deter counterfeiters, imposing a higher pecuniary penalty for indictable offences.

The Bill proposes the introduction of additional (exemplary or punitive) damages for flagrant infringement of trade marks, as is already available under acts for copyright, registered designs and patents. It also proposes a tiered scheme of penalties (reflecting the Copyright Act), that includes a summary offence after each indictable offence, to allow for quicker resolution of less serious trade mark offences.

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Noric Dilanchian