On 10 May 2018, the Senate referred the provisions of the Intellectual
Property Laws Amendment (Productivity Commission Response Part 1 and Other
Measures) Bill 2018 (bill) to the Economics Legislation Committee (committee)
for inquiry and report by 22 June 2018.
In his second reading speech, the Assistant Minister for Finance, Mr
David Coleman MP, explained:
This bill delivers the first tranche of the Turnbull
government's commitment to review and reform [Australia's] intellectual
property arrangements, ensuring that they provide an appropriate balance
between access to ideas and products, and encouraging innovation, investment
and the production of creative works.
Conduct of the inquiry
The committee advertised the inquiry on its website and wrote to
relevant stakeholders and interested parties inviting submissions by 1 June
2018. The committee received nine submissions. Submissions are listed at Appendix 1.
The committee thanks all those who have assisted with the inquiry.
The bill is largely the result of two independent reviews, and feedback
received by IP Australia in response to public consultation on an exposure
draft of the bill. These processes are discussed below.
Intellectual Property Arrangements
The Productivity Commission (PC) recently completed a public and
overarching inquiry into Australia's Intellectual Property (IP) system. The PC's
final report was handed to the Australian Government on 23 September 2016
and published in December 2016. It made a number of key points, including:
- Australia's IP arrangements fall short in many ways and
improvement is needed across the spectrum of IP rights.
- IP arrangements need to ensure that creators and inventors are
rewarded for their efforts.
- Australia's patent system grants exclusivity too readily,
allowing a proliferation of low-quality patents, frustrating follow-on
innovators and stymieing competition.
- Copyright is broader in scope and longer in duration than
needed—innovative firms, universities and schools, and consumers bear the cost.
- Timely and cost effective access to copyright content is the best
way to reduce infringement.
- Commercial transactions involving IP rights should be subject to
- While Australia's enforcement system works relatively well,
reform is needed to improve access, especially for small and medium sized
- The absence of an overarching objective, policy framework and
reform champion has contributed to Australia losing its way on IP policy.
- International commitments substantially constrain Australia's IP
- Reform efforts have more often than not succumbed to
misinformation and scare campaigns. Steely resolve will be needed to pursue
better balanced IP arrangements.
The Minister for Industry, Innovation and Science and the Minister for
Communications released the government’s response to the PC's inquiry in
August 2017. The response supported a number of the PC's recommendations
and acknowledged the importance of further consultations with stakeholders in
respect of proposed changes to Australia's IP laws—including those changes
proposed in the bill.
Plant Breeder’s Rights
Intellectual property rights are granted for new varieties of plants in
Australia under the Plant Breeder's Rights Act 1994 (PBR Act). The PBR
Act gives to those who breed a new variety of plant the right to exclude others
from exploiting the plant variety without the breeder's consent, thereby controlling
how new plant varieties may be produced or reproduced.
In 2005, the Howard Government asked the Advisory Council on
Intellectual Property (ACIP), an independent body that advises the relevant
Minister on intellectual property matters, to:
...inquire, report and make recommendations to the Australian
Government on issues relating to the enforcement of plant breeder's rights in
Australia and to consider possible strategies to assist Australian plant
breeder's rights holders effectively enforce valid rights...
On 18 January 2010, the then Minister for Innovation, Industry, Science
and Research, Senator the Hon Kim Carr, released the ACIP report, A review
of enforcement of Plant Breeder's Rights.
ACIP's report identified a number of barriers to the effective
enforcement of PBR that discouraged the development of new plant varieties and
recommended legislative and procedural changes to the PBR Act. These included a
recommendation to introduce exemplary damages in situations of flagrant or
wilful infringement, based on similar arrangements that exist under the Patents
Act 1990 (Patents Act). This recommendation was subsequently accepted by the government in its response
to the ACIP's report, in which it indicated amendments to the PBR Act would be
sought to implement it.
Exposure draft process
Many of the recommendations made in the PC report and the recommendation
identified above from the ACIP report require amendments to legislation that
IP Australia is responsible for. IP Australia proposed to implement the
recommendations in a staged manner through two separate bills.
The first is this bill, which incorporates a number of accepted
recommendations from the PC report including phasing out of the innovation
patent system, the PBR recommendation and the majority of the trade mark
recommendations. It also addresses a number of other high priority trade mark and PBR issues,
and some measures from a draft Intellectual Property Laws Amendment Bill 2017,
which was also consulted on.
From 23 October to 4 December 2017 IP Australia released an exposure
draft of this bill for public consultation, to which it received 19
non-confidential submissions. Following this process, IP Australia issued a response summarising the matters
raised by submitters, and, where appropriate, proposed amendments to the
exposure draft legislation to address specific concerns which have ultimately been
incorporated in the bill.
The second is the IP Laws Amendment (Productivity Commission response
Part 2 and other measures) Bill (Part 2 bill), which will also include a number
of accepted recommendations from the PC report. These include the inventive
step reforms, introducing an objects clause into the Patents Act, and changes
to Crown use and compulsory licensing of patents and designs. In addition, it
is proposed that a number of technical fixes and red-tape reducing measures
will also be included in the Part 2 bill.
Consultation on a number of policy proposals planned to be included in the
Part 2 bill occurred from 30 August to 17 November 2017. Subject to Government
priorities, the Part 2 bill is intended for introduction to Parliament in 2018.
Further consultation on an exposure draft of the Part 2 bill is also
anticipated prior to introduction.
Overview of the bill
As stated above, the purpose of the bill is to make improvements to
Australia's IP rights legislation to ensure it better meets its objectives of
promoting and incentivising investment in creativity, innovation, research and
The bill makes amendments to several areas of Australia’s IP legislation
- Copyright Act 1968 (Copyright Act);
- Designs Act 2003 (Designs Act);
- Olympic Insignia Protection Act 1987 (the Olympic Insignia
- Patents Act;
- PBR Act; and the
- Trade Marks Act 1995 (the Trade Marks Act).
The bill is divided into two schedules. Schedule 1 consists of four
parts which give effect to some of the government's response to the PC's
Inquiry Report—Intellectual Property Arrangements. Specifically, schedule 1 of the bill implements the following four PC
- changes to essentially derived variety (EDV) declarations in the
Plant Breeder’s Rights Act (recommendation 13.1);
reducing the grace period for trade mark non-use actions
- clarifying the circumstances in which the parallel importation of
trade marked goods does not infringe a registered trade mark (recommendation
- reforming section 76A of the Patents Act, which requires
patentees to provide certain data relating to pharmaceutical patents with an
extended term (recommendation 10.1).
Schedule 2 consists of 21 parts which implement a number of measures to
streamline and align the administration of the Australian IP system, and will
implement a number of other IP law measures, mostly related to PBR enforcement.
Details of schedules 1 and 2 are set out below.
Schedule 1: Responses to the
Parallel imports are where genuine goods that are sold overseas are
brought into Australia and on-sold without the trade mark owner's consent. Part
1 repeals a provision in the Copyright Act and amends the Trade Marks Act to
clarify the circumstances in which the parallel importation of trade marked
goods does not infringe a registered trade mark.
The PBR Act extends protection of registered varieties to essentially
derived varieties (EDVs). EDVs share all the essential characteristics of a
registered plant variety but are clearly distinct and qualify for PBR
registration in their own right. Part 2 amends the PBR Act to allow an
application for an EDV declaration to be made in instances where the plant
variety subject of the EDV application is not a registered PBR or undergoing
application for PBR.
Unused trade marks on the trade marks register can be challenged by a
third party taking a non-use action against the trade mark. Part 3 amends the
Trade Marks Act to change the period that must elapse before certain actions of
non-use actions of trade mark can be taken.
Part 4 amends the Patents Act to remove a requirement for patentees to
provide the Secretary of the Department of Health with certain data relating to
pharmaceutical patents with an extended term.
Schedule 2: Other measures
Part 1 amends the Trade Marks Act to ensure that the Registrar of Trade
Marks can appropriately amend trade mark applications to comply with the legal
personality requirement for applicants.
Part 2 amends the Patents Act, Designs Act, PBR Act, and Trade Marks Act
to ensure that certain written actions by the Commissioner of Patents,
Registrar of Designs, Registrar of PBR and the Registrar of Trade Marks
(collectively 'the Commissioner and the Registrars') can be undertaken by any
means of communication, including electronic means.
Part 3 amends the Patents Act, Designs Act, PBR Act, and Trade Marks Act
to simplify how documents and evidence are filed, or fees are paid.
Part 4 amends the Patents Act to remove unnecessary signature
Part 5 amends the Patents Act, Designs Act, PBR Act, and Trade Marks Act
to enable the Commissioner and the Registrars to arrange for a computer program
under their control to make decisions, exercise powers and comply with
obligations under the legislation. To ensure that there are appropriate
protections in place it also gives the Commissioner and Registrars the power to
substitute any automated decision if they are satisfied that the decision is
Part 6 amends the PBR Act to simplify the requirement for an applicant
for PBR to provide an address for service of documents.
Part 7 amends the Patents Act to modernise and consolidate the
requirements for patent documents.
Part 8 amends the Patents Act, Designs Act, PBR Act, and Trade Marks Act
to align and improve protections against unjustified threats of infringement.
Part 9 amends the PBR Act to clarify that PBR can be granted to two or
more breeders jointly, and to ensure that the Registrar can correct errors in
the Register of Plant Varieties.
Part 10 amends the Trade Marks Act to clarify that the Trade Marks Registrar
may require a person to give security for the costs of a wider range of
Part 11 aligns the PBR Act with the other Acts by giving the courts the
power to award additional damages for infringement of PBR.
Part 12 amends the PBR Act to allow an exclusive licensee of PBR to
bring proceedings for infringement for the right they license.
Part 13 amends the Patents Act and the Trade Marks Act to provide for
the disclosure and publication of personal information about registered patent
and trade marks attorneys to assist the public in verifying an attorney’s
Part 14 amends the PBR Act to transfer the statutory powers and
obligations of the Secretary of the Department of Industry, Innovation and
Science with regard to the PBR to the Registrar of PBR.
Part 15 amends the Copyright Act, Olympic Insignia Protection Act and
Trade Marks Act to provide the Comptroller-General of Customs with more
flexibility in the method of issuing notices of seizure.
Part 16 amends the Patents Act and the Trade Marks Act to correct
oversights in the drafting of the Intellectual Property Laws Amendment
(Raising the Bar) Act 2012 to ensure that several offences committed
by companies can be prosecuted in the same five year timeframe as applies for
several offences committed by individuals.
Part 17 corrects references to the Designs Act in the Olympic Insignia
Part 18 repeals the provisions in the Patents Act that would have
provided for single application and examination processes for trans-Tasman
patents, which were not enacted by New Zealand.
Part 19 and item 353 in Part 20 amends the PBR Act to clarify alignment
with the International Convention for the Protection of New Varieties of
Part 20 relieves the Commissioner of Patents of the obligation to sell
copies of complete specifications (as they are now published online) and makes
consequential amendments to the Plant Breeder’s Rights Act following the
Statute Update (Smaller Government) Act 2018.
Part 21 repeals the whole of the Patents Amendment (Patent
Cooperation Treaty) Act 1979, as it is spent.
The Explanatory Memorandum (EM) states that the bill engages the
following human rights: the right to privacy, the right to enjoy the benefits
of scientific progress and its application; and the right to the protection of
interests resulting from one's scientific production. However, the EM also
states that the bill is compatible with the human rights and freedoms
recognised or declared in the international instruments listed in section 3 of
the Human Rights (Parliamentary Scrutiny) Act 2011. The Parliamentary Joint Committee on Human Rights considered the bill in its Report
4 of 2018 and made no comment.
The bill was also considered by the Senate Standing Committee for the
Scrutiny of Bills in its Scrutiny Digest 5 of 2018, and no comment was
The EM states that the bill is expected to have no financial impact on
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