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Thursday, February 19, 2015

New IP laws coming soon

By Clare Young, Managing Associate

The Intellectual Property Law Amendment Bill 2014 has finally passed both houses and is awaiting royal assent (expected shortly). We say 'finally' as the content of the Bill was introduced back in 2013 and appeared to be passing through Federal Parliament without much objection when the general election was called, causing the Bill to lapse. The Bill was re-introduced in 2014 under the current government.

The Parliamentary Secretary for Industry has said that the Bill will 'reduce red tape for those wishing to obtain or enforce their intellectual property rights and will provide more support for other countries facing health emergencies'. So what will change and who will be affected?

The main changes will be:
  • An amendment to the Patents Act 1990 (Cth) to enable a person to apply to the Federal Court for a compulsory licence to manufacture a generic version of a patented medicine and export it to an 'eligible importing country' to address public health problems. This implements one of Australia's obligations under the TRIPS Agreement, which was agreed to by WTO members in 2003. Unlike the existing procedure for compulsory licensing, if there is a public health problem in the eligible importing country in circumstances of a national emergency or other extreme urgency, the applicant does not have to have sought a licence from the patentee first. It remains to be seen how many applications will be made under this new compulsory licensing regime as it seems unlikely that Australia would be considered a cheap and convenient place to manufacture medicine to export overseas.
  • The Federal Circuit Court will have jurisdiction to hear matters arising from the Plant Breeder's Rights Act 1994 (Cth). It is expected that this will be a cheaper forum than the Federal Court for relatively small claims. 
  • The streamlining of examination of patent applications for the same invention filed in both Australia and New Zealand into a single process in either the Australian Patent Office or the New Zealand Patent Office. An (Australian or New Zealand) examiner will examine both applications under the respective national laws in an aim to reduce duplication of effort between the two patent offices. Given that the current regime allows for an Australian attorney to file New Zealand patent applications, Allens has always recommended to its clients to engage the one firm to deal with applications filed in both countries to ensure consistency during the prosecution and granting process. Now that the examination of applications filed in both countries will be dealt with by one examiner, this is a further reason to use the same attorney firm to act in both Australia and New Zealand.
  • Introduce a single trans-Tasman patent attorney regime as part of the broader Single Economic Market (SEM) agenda. There will be a single register of Australian and New Zealand attorneys and one governing body called the Trans-Tasman IP Attorneys Board responsible for registration and overseeing conduct of attorneys.
There are currently no Regulations available which will set out how this many of these changes will work in practice, but we expect the Regulations to be available shortly.

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