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raising the Australian standard for inventive step to a level that is more consistent with Australia’s major trading partners by broadening the test for common general knowledge beyond the patent area (defined in Schedule 1 of the Patents Act to mean Australia);
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strengthening the requirement that a patented invention be useful such that the specification discloses a ‘specific, substantial and credible’ use to prevent the grant of patents for speculative inventions that require too much further work before they can be put into practice;
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raising the standards set for disclosure of an invention in a patent specification in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art to ensure that granted patents are no broader than the invention which has been disclosed;
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expanding the grounds the Commissioner of Patents can consider in deciding whether to grant a patent, or whether to revoke a patent after re-examination and applying a consistent standard of proof across all grounds, so that the Commissioner is not obliged to grant patents which would not pass judicial scrutiny;
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clarifying that research and experimental activities relating to patented inventions are exempt from infringement, whereas commercial activities are not;
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expanding the existing exemption for pharmaceutical inventions to all technologies, by introducing an exemption for activities undertaken solely for the purpose of gaining regulatory approval to market or manufacture a patented technology;
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removing the requirement that a person wishing to oppose a trade mark application be required to both file the notice of opposition with the Trade Marks Office and serve a copy of the notice on the applicant. Instead, a person wishing to oppose will simply be required to file the notice of opposition with the Trade Marks Office, which will send the notice to the applicant;
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requiring an opponent in trade mark opposition proceedings to file a statement of particulars of the grounds on which they intend to oppose registration of a trade mark application;
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inserting a new section into the Trade Marks Act requiring that a trade mark applicant file a notice stating their intention to defend their application in opposition proceedings. The penalty for not filing a notice will be the lapsing of the application;
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amending the Trade Marks Act to include a new broader power to make regulations in respect of opposition proceedings to allow greater flexibility to finetune the system and to respond to changing requirements while ensuring greater alignment between the Trade Marks and Patents Acts;
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reducing delays in resolving patent and trade mark opposition proceedings and tightening the timeframes within which divisional patent applications can be filed, thus reducing the opportunity for abuse use of these proceedings and applications;
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allowing attorneys to incorporate and extending client-attorney privilege to client communications with foreign attorneys and to some third party communications;
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improving mechanisms for trade mark and copyright enforcement by providing for stronger penalties, better tailored offence provisions and new provisions for additional damages in civil infringement actions to deter infringers;
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improving the system for confiscating imported counterfeit goods by revising the notice of objection scheme to restrict loopholes enabling importers of counterfeit or pirated goods to avoid prosecution and still retain the goods; and
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amending the Trade Marks and Designs Acts to provide the Federal Magistrates Court with jurisdiction to hear and decide trade mark and design matters.
Should you have any concerns regarding any of the proposed reforms or queries about how the proposed reforms are likely to affect your business please contact DibbsBarker’s IPT team.
