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Department of Communications, IT & Arts Deparment of Education, Science & Training Department of Foreign Affairs & Trade Department
of Industry, Tourism & Resources Professional Standards Board for Patent and Trade Marks Attorneys Human Rights & Equal Opportunity Commission Parliamentary
Committees 1. Attorney-General's Department Review of new format shifting exceptions On 22 January 2008, the Attorney-General’s Department released an issues paper on the copying of films and photographs into a different format for private use. Public submissions were invited on the operation of two new copyright exceptions that permit such ‘format shifting’: sections 47J and 110AA of the Copyright Act 1968. The exceptions were introduced by the Copyright Amendment Act 2006, which also requires a review of the operation of these provisions by 31 March 2008. Submissions were due by 29 February 2008. To access the issues paper, click here Guidelines released for bodies seeking prescription as a key cultural institution On 25 January 2008 guidelines were published on the Attorney-General’s Department website to assist bodies seeking to be prescribed as ‘key cultural institutions’ under the Copyright Act 1968. The new provisions, introduced by the Copyright Amendment Act 2006, add to existing provisions which enable libraries and archives to make copies of materials in their collections for preservation and other purposes. Under sections 51B, 100BA and 112AA of the Copyright Act 1968, Australia’s key cultural institutions can now make up to three copies of items of historical or cultural significance in their collection for preservation. Libraries and archives with a statutory function to develop and maintain a collection, such as the National Library of Australia, are already considered to be key cultural institutions. To access the guidelines, click here Review of the extension of legal deposit On 3 December 2007, the Attorney-General's Department released its ‘Discussion Paper on the Extension of Legal Deposit’. The current legal deposit scheme requires Australian publishers of ‘library material’ (paper-based publications) to deposit copies of such material with the National Library of Australia. The department called for comments on the feasibility of extending the scheme to include audiovisual and electronic materials. Comments were due 11 January 2008. To access the Discussion Paper, click here Copyright infringement notice guidelines revised The Attorney-General's Department, in consultation with the Australian Federal Police and the Commonwealth Director of Public Prosecutions, has been developing guidelines to assist law enforcement with the administration of the Copyright Infringement Notice Scheme. Introduced by amendments to the criminal offence provisions of the Copyright Act 1968, which came into force in January 2007, the scheme creates alternatives to prosecution in relation to strict liability copyright offences. These include the issuing of an infringement notice, and forfeiture of infringing copies and devices. In response to submissions received in October 2007, it was reported in January 2008 that the draft guidelines have undergone further revision. It is anticipated that the guidelines will be finalised in the first half of 2008. To access the draft guidelines, click here Australian government to target cyber-crime On 19 July 2007, Attorney-General Philip Ruddock announced that the Australian Government has allocated $73.6 million in this year’s Budget for a range of E-Security initiatives under the E-Security National Agenda. According to Mr Ruddock: “With more government services online and more money being transacted over the Internet, we are seeing an increasing trend towards the professionalisation of cyber-crime.” The initiatives proposed include increased resources to help the Australian Federal Police combat cyber-crime and strengthening government systems to increase the security of information provided by the Australian public. Agencies involved in the E-Security National Agenda include the Attorney-General’s Department, Defence Signals Directorate, the Australian Federal Police, the Department of Communications, Information Technology and the Arts, and the Department of Finance and Administration’s Australian Government Information Management Office. For more information, click here Australia joins WIPO Internet Treaties Attorney-General Philip Ruddock announced that Australia marked World Intellectual Property Day (26 April 2007) by joining two international treaties aimed at protecting copyright and related rights on the Internet. The Attorney-General said the World Intellectual Property Organisation (WIPO) Copyright Treaty and the WIPO Performances and Phonograms Treaty, otherwise known as the WIPO Internet Treaties, would be acceded to in Geneva. The main feature of the treaties is the protection of copyright works, sound recordings and performances fixed in sound recordings within an online environment. The treaties were adopted at a WIPO diplomatic conference in 1996, at which Australia played an active role. Australia was one of the first countries to implement the treaties with the Digital Agenda reforms to the Copyright Act in 2000. For more information, click here Senate passes Copyright Amendment Bill 2006 On 12 December 2006, the Australian Attorney General, Phillip Ruddock, announced that the Senate had passed the Copyright Amendment Bill 2006. According to Mr Ruddock, Australian consumers will be able to use copyright material in a variety of ways under the new legislation. For details of the reforms, click here Copyright Amendment Bill 2006 introduced to Parliament On 19 October 2006, the Copyright Amendment Bill 2006 was introduced to Parliament. The Bill legalises ‘time shifting’, allowing people in their homes to copy a television or radio broadcast for personal use so that it may be played at a later time and ‘format shifting’, allowing owners of legitimate copies of specified copyright material to copy it (and the underlying content) in a different format for personal use – i.e. VHS to DVD, CD to MP3. In addition to these two exceptions for private copying, further new specific exceptions will be added to permit:
Criminal offence provisions in the Copyright Act 1968 will also be amended to create indictable, summary and strict liability offences with a range of available penalties. The Government has referred the Bill for consideration by the Senate Standing Committee on Legal and Constitutional Affairs. For more information, click here. Prior to the Bill’s introduction and referral to the Senate Committee, the Attorney General’s Department released five Exposure Drafts regarding various parts of the Bill. The Exposure Drafts concerned exceptions and other Digital Agenda review measures, enforcement provisions, unauthorised access to encoded broadcasts, Copyright Tribunal amendments, and Technological Protection Measures amendments and related Regulations. To access the Exposure Drafts, click here Attorney-General announces major copyright reforms On 14 May 2006, the Attorney-General Phillip Ruddock announced major copyright reforms. The reforms will:
A draft exposure Bill containing these and other reforms will be released in the near future. For more information, click here Management and administration of Commonwealth Copyright The Commonwealth Copyright Administration (CCA) moved to the Attorney-General’s Department from the Department of Communications, Information Technology and the Arts (DCITA) on 1 March 2005. The CCA responds to requests from the public to reproduce Commonwealth copyright material and provides administrative advice on the management of copyright materials to Commonwealth agencies. The CCA is located within the new Commonwealth Copyright section of the Copyright Law Branch. Review of unauthorised access to and use of subscription broadcasts On 27 May 2005 the Department released a discussion paper seeking submissions on whether certain unauthorised activities involving access to and use of subscription broadcasts should be made criminal offences under Commonwealth law. Protection for subscription (or ‘encoded’) broadcasts is currently found in Part VAA of the Copyright Act 1968 which was inserted into the Act in 2001 as part of the Digital Agenda amendments. The range of activities which constitute criminal offences and for which civil remedies are available was extended by amendments to the Act to implement Australia’s obligations under the Australia-United States Free Trade Agreement (AUSFTA). As part of the AUSFTA amendments, Australia criminalised the use of a broadcast decoding device where the subscription broadcast is then used in some commercial context. However, it is not a criminal offence under Commonwealth law to access a subscription broadcast without the broadcaster’s authorisation where the broadcast is only viewed or used in a private and domestic context. Following the conclusion of the AUSFTA late last year, the Government undertook to review its policy on the issue of personal use of a broadcast decoding device. The Government undertook to also consider other unauthorised activities carried out by subscribers to subscription broadcast services that are not currently dealt with under the Copyright Act. The discussion paper has sought submissions on whether these activities should be an offence under Commonwealth law. Government examines 'fair use' of copyright material The Attorney-General’s Department is currently reviewing options for including new exceptions in the Copyright Act. To begin the public consultation process, an issues paper was released on 5 May 2005. The review is examining whether an exception or specific exceptions to copyright based on principles of ‘fair use’ should be adopted to make copyright law more flexible and relevant in the digital age. The issues paper notes that as a result of digital technologies a large number of everyday acts involve infringing copyright. Attorney-General Philip Ruddock in announcing the review said ‘Many Australians believe quite reasonably they should be able to record a television program or format-shift music from their own CD to an iPod or MP3 player without infringing copyright law.’ While a major focus of the review is the adequacy of exceptions for private or domestic uses of copyright material, it will also consider submissions that address the need for new exceptions in other areas of the Act. The issues paper considers a number of possible options for reform. These include a 1998 recommendation by the Copyright Law Review Committee that the current ‘fair dealing’ exceptions should be consolidated into an expanded single provision. It also raises the option of adopting an open-ended US style ‘fair use’ provision. The closing date for submissions on this issue was July 1, 2005. Review of cap on royalties paid by radio broadcasters to copyright owners On 1 February 2005, the Government released a discussion paper requesting submissions on whether the one per cent cap on licence fees paid by commercial radio broadcasters for playing sound recordings should be repealed. The review was foreshadowed in the Government’s election policy “Strengthening Australian Arts”. Under the Copyright Act, a radio station that broadcasts a sound recording must generally pay a copyright royalty to the owner of the copyright in that recording. The amount payable by radio broadcasters is determined by negotiation between broadcasting industry associations and the licensing organisation representing copyright owners. If agreement cannot be reached, the Copyright Act provides a statutory licence that permits broadcasters to continue to play recordings. But the amount payable by the broadcaster to the copyright owners is set by the independent Copyright Tribunal. Section 152(8) of the Copyright Act currently prohibits the Copyright Tribunal from ordering a radio broadcaster to pay a licence fee that is more than one per cent of the broadcaster’s gross income. Submissions closed on 18 March 2005. Update: On 14 May 2006, the Attorney-General Phillip Ruddock announced major copyright reforms. One of the mentioned reforms will repeal the one per cent cap on copyright licence fees paid by radio broadcasters for playing sound recordings on the radio. A draft exposure Bill containing this and other reforms will be released in the near future. For more information, click here Copyright Amendment Regulations 2005 The Copyright Amendment Regulations 2005 (No 1) were signed by the Governor-General and lodged in the Federal Register of Instruments on 25 February 2005 (the day after the date on which the Instrument was lodged in that Register). The Regulations are minor, but ensure that recent amendments to the Copyright Act to include reference to the rights of performers in Part VA are also reflected in the Copyright Regulations 1969 relating to the administration of the statutory licence under Part VA. Copyright Amendment (Film Directors’ Rights) Act 2005 On 19 December 2005, the substantive provisions of the Copyright Amendment (Film Directors' Rights) Act 2005 (the Act) came into force by proclamation. The Act amends the Copyright Act 1968 to give, for the first time, film directors a copyright in the films they direct. The Act provides rights to directors to share, as copyright owners, in remuneration payable by pay-TV services for the retransmission of films included in free-to-air broadcasts. The amendments will apply to films that began production after the commencement of the amendments, but rights arising under contracts entered into before that date are preserved. Click here for the Act. The Copyright Amendment (Film Directors' Rights) Bill 2005 was assented to on 8 November 2005, and has come into force. Click here for the Bill and Explanatory Memorandum. Related: The Senate Legal and Constitutional Committee's report on Provisions of the Copyright Amendment (Film Directors' Rights) Bill 2005 has decided in favour of extending copyright ownership rights in films to directors and screenwriters. The Committee came to the conclusion that while there were some concerns raised in respect of the Bill, the rejection of it was not warranted. The Committee made several recommendations, the first being that the Copyright Act 1968 should be amended to provide for screenwriters to be joint copyright owners of films, along with producers and directors. Click here for further information. Also related: Capital allowance treatment of film copyright to be amended The Australian government has announced that the capital allowance treatment of film copyright, which does not currently qualify for concessional treatment under Divisions 10B and 10BA of the Income Tax Assessment Act 1936, will be amended. A media release dated 10 May 2005 from the Treasurer, Peter Costello, notes that the change will see film copyright now included in the effective life depreciation regime. According to the government, "By bringing film copyright under the effective life depreciation regime, the Commissioner of Taxation may make a determination specifying a 'safe harbour' effective life. Further, taxpayers may choose to self-assess the effective life or choose the Commissioner's safe harbour effective life determination." Click here for more information. 2.
Copyright Law Review Committee (CLRC)
The CLRC was originally established in 1983 by the Attorney-General as a specialist advisory board to consider and report to the Australian Government on specific
copyright law issues referred to it for consideration. Government Ownership of Copyright Material The Minister for Justice and Customs released the Copyright Law Review Committee's report, Crown Copyright, in April 2005. This is the final report of the Committee following its inquiry into Crown copyright The report has recommended that there should be the widest possible access to government-owned materials, and suggests the repeal of those sections of the Copyright Act that grant the Commonwealth, States and Territories ownership of copyright in a variety of instances. According to the report, "Not only do these provisions give government a negotiating advantage, but the Committee also heard evidence that many creators have been unaware that in the absence of a written contractual provision with government, they have lost copyright in their creations." In addition, the Committee concluded that the "government should, as far as possible, be on the same footing as other parties, and that there should be the widest possible access to government-owned materials." The Australian government says that it will consider the Committee's recommendations. In launching Crown Copyright, the Minister noted that this report represented "a significant contribution to the Government’s ongoing process of copyright law reform". Click here to see the Minister’s media release. 3.
Intellectual Property and Competition Review Committee
(IPCRC) Click here for archived material ALRC inquiry into client legal privilege In November 2006, the Attorney-General of Australia asked the Australian Law Reform Commission (ALRC) to inquire into the application of legal professional privilege to the coercive information-gathering powers of Commonwealth bodies—such as the Australian Federal Police, the Australian Crime Commission, the Australian Securities and Investments Commission and federal Royal Commissions. The ALRC has since released an Issues Paper – Client Legal Privilege and Federal Investigatory Bodies (Issues Paper 33). The closing date for submissions to Issues Paper 33 was 4 June 2007. A more detailed Discussion Paper, which will contain preliminary proposals for reform is planned for release in late August/early September 2007. The final report to the Attorney General, containing recommendations for reform, is due on 3 December 2007 and will be publicly available after its tabling in federal parliament. For more information, click here Update: ALRC releases report on client legal privilege in federal investigations On 13 February 2008, the Australian Law Reform Commission (ALRC) released Report 107, ‘Privilege in Perspective: Client Legal Privilege in Federal Investigations’. The report is the culmination of a year-long public inquiry into the area. Included were references to patent attorney privilege as it is a privilege related to client legal privilege. The ALRC identified over 40 federal investigatory bodies with coercive information-gathering powers, as well as Royal Commissions, and highlighted the need for clarification of the application of privilege in light of the various pieces of legislation that address these powers. The key recommendations in the report include:
No specific recommendation was made about patent attorney privilege. To access the ALRC Report, click here Overview of responses to the Consultation Paper on ACIP Report ‘ Patents and Experimental Use’ On 8 November 2006, IP Australia released a paper which provides an overview of the submissions received in response to the questions raised in the Consultation Paper on the Advisory Council of Intellectual Property (ACIP) Report, ‘Patents and Experimental Use’. The Consultation Paper invited interested parties to comment on the different experimental use exemption provisions recommended by ACIP and the Australian Law Reform Commission (ALRC), and whether the interested party’s industry had been impacted by the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval. For more information, click here ALRC releases Issues Paper ‘Review of Privacy’ For more information and to access the Issues Paper, click here Update: ALRC privacy inquiry In January 2006, the Australian Law Reform Commission (ALRC) was asked by the Australian Attorney-General to inquire into the extent to which the Privacy Act 1998 (Cth) and related laws continue to provide an effective framework for the protection of privacy in Australia. Submissions regarding the Issues Paper ‘Review of Piracy’ (IP 31) were due by 15 January 2007. Submissions regarding the Issues Paper ‘Review of Privacy – Credit Reporting Provisions’ (IP 32) closed 9 March 2007. The ALRC produced an overview of both Issues Papers, ‘Reviewing Australia’s Privacy Laws: Is Privacy Passé?’ in December 2006. A more detailed Discussion Paper – which will contain preliminary proposals for reform for community discussion – is planned for release in May 2007. In the mean time, a series of public meetings regarding the inquiry have been scheduled for Melbourne, Sydney and Coffs Harbour in February, March and April 2007. For more information, click here Further update: ALRC releases Discussion Paper on privacy On 12 September 2007, the Australian Law Reform Commission (ALRC) released Discussion Paper 72, ‘Review of Australian Privacy Law’, as part of its inquiry into privacy. The Discussion Paper puts forward numerous proposals for amendments to privacy laws and highlights the impact that changing technologies and social practices are having on privacy. The Discussion Paper also contains other proposals, including the development of a statutory tort of privacy, removal of certain exceptions from the Privacy Act 1988 and the development of a comprehensive credit reporting system. The Discussion Paper contains 301 proposals for reform and 46 questions about aspects of the inquiry. The deadline for submissions or comment was 7 December 2007. For more information about the ALRC privacy inquiry, click here Protection of human genetic
information The ALRC and AHEC released a two-volume report in relation to the protection of human genetic information on 29 May 2003. The report, Essentially Yours: The Protection of Human Genetic Information in Australia, makes 144 recommendations with respect to the ethical, legal and social implications of the 'New Genetics'. Click here for further information regarding the report Update: On 9 December 2005, the Commonwealth Government released its response to the Australian Law Reform Commission and Australian Health Ethics Committee report Essentially Yours: The Protection of Human Genetic Information in Australia. The Government’s response to the report addresses how privacy and discrimination law manage the rapid advances in human genetic technology. The response also discusses clinical practice, ethical standards in medical and scientific research, and the use and collection of genetic databases. The Government is establishing a new principal committee of the National Health and Medical Research Council to advise Australian governments on the complex issues raised by developments in human genetic information and technologies. To access the Government's response, click here Click here for archived material
Department of Communications, IT & Arts
Ambush marketing legislation review IP Australia and the Department of Communications, Information Technology and the Arts is undertaking a review of ambush marketing legislation enacted for the purposes of the Olympic Games movement and the Melbourne 2006 Commonwealth Games. The Review is being conducted by Frontier Economics and IPRIA. The Review seeks to evaluate the effectiveness and impacts of:
An Issues Paper setting out the background to the review, the aims and content of the ambush marketing legislation being considered, and the types of questions for which submissions are requested is electronically available. Public submissions closed 13 April 2007. For more information, click here Review of the .au internet domain by DCITA The Department for Communications, Information Technology and the Arts (DCITA) has released a Discussion Paper as part of a review of the .au internet domain. Public comment is sought on various issues including the administrative structure of the .au internet domain, naming structures, policy development, competitiveness and cost effectiveness, international participation and emerging technical issues. Submissions were due by 28 November 2006. For more information, click here Review of Australian Government Film Funding Support The Minister for the Arts and Sport, Senator Rod Kemp, has called for submissions to the July 2006 Issues Paper for the Review of Australian Government Film Funding Support. The review, which was announced in the 2006-07 Federal Budget, will outline the government’s policy objectives for the Australian film industry, analyse the state of the industry and examine the support measures for film funding in Australia. A major focus of the review will be very low and declining level of private sector investment in the film industry and the development of possible solutions for improving the effectiveness of government direct and indirect support, including tax incentives. The closing date for submissions to the Review of Australian Government Film Funding Support was Friday 11 August 2006. To view the Issues Paper for the Review of the Australian Government Film Funding Support, click here Launch of Digital Rights Management Guide
Commonwealth Copyright The CCA is now located within the new Commonwealth Copyright section of the Copyright Law Branch. Click here for archived material Department of Education, Science and Training The Department of Education, Science and Training (DEST) supports the Government’s objectives in education, training and science, working jointly with the state and territory governments, industry, other agencies and the general community. The Department covers the Commonwealth’s
contribution to: The Department is also responsible for coordinating research policy and promoting collaboration in research and innovation. National Survey of Research Commercialisation 2003-2004 report released On 31 August 2007 , theNational Survey of Research Commercialisation (NSRC) 2003-2004 report was released by the Department of Education, Science and Training. The NSRC collects data and information on commercialisation activity in Australian publicly funded research institutions including the CSIRO, other publicly funded research institutions, universities, and medical research institutes. The report provides new data for the years 2003 and 2004, as well as incorporating trends from 2000 to 2004. Over the five years that data has been collected, the results include:
For more information, click here Federal government funding for six new e-research projects On 31 July 2006, the Minister for Education, Science and Training, the Hon Julie Bishop MP, announced that the federal government will allocate $15 million under the Systematic Infrastructure Initiative for six new e-research projects. The projects will ‘support greater collaboration between researchers, both domestically and internationally’. The six new initiatives are:
For more information, click here For archived material, click here
Australia to be a third party in WTO dispute on IP between US and China On 7 October 2007, the Minister for Trade, Warren Truss, announced that Australia has decided to participate as a third party in the World Trade Organisation (WTO) dispute brought by the United States against China on the protection and enforcement of IP rights. Several other WTO members – including Mexico, Japan and the European Communities – have also decided to become third parties. According to Mr Truss, the case raises important commercial and systematic issues in relation to WTO rules on IP protection, including the meaning of counterfeiting or piracy ‘on a commercial scale’. ‘Participation as a third party does not mean we are taking sides in the case’, Mr Truss said. ‘It does, however, allow us to register our views on the legal issues raised in the dispute.’ To view Mr Truss’ media release, click here To view a WTO summary of the dispute as at 20 August 2007, click here Comment regarding acceptance by Australia of Protocol Amending TRIPS Agreement The Department of Foreign Affairs and Trade (DFAT) recently sought views on acceptance by Australia of the Protocol Amending the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). The proposed amendment is to allow WTO Members with insufficient manufacturing capacity to import patented pharmaceuticals made under compulsory license in certain circumstances. Acceptance of the Protocol by Australia would not require any change to Australia’s patent laws. Comments were due to DFAT by 16 March 2007. For more information, click here Developments regarding Free Trade Agreements (FTAs) In the wake of the final stages of the negotiations for the AUSFTA, intellectual property has increasingly become recognised as an important factor as the Australian Government seeks further trade liberalisation through its free trade agreements. Since completing the AUSFTA, Australia has been taking steps towards other free trade agreements within the region. Negotiations have commenced for an FTA between Australia, the ASEAN and New Zealand, as well as the United Arab Emirates, Malaysia and China, Japan, and Chile. The Government has also announced it will pursue a Trade and Economic Framework with India, as well as begin FTA negotiations with the Gulf Cooperation Council, and conduct joint feasibility studies on a possible FTA with Korea, a possible FTA with Indonesia, and a possible FTA with India. Australia-Korea FTA feasibility study On 6 December 2006, the Minister for Trade, Warren Truss, announced that Australia and Korea have agreed to conduct a joint study on a possible Free Trade Agreement (FTA). The study will be conducted by private research institutions in both countries. Government officials will then review its findings and make recommendations. For more information, click here Australia-Gulf Cooperation Council FTA negotiations On 13 December 2006, Mr Truss announced that the Australian Government would be seeking FTA negotiations with the Gulf Cooperation Council (GCCC) as soon as possible. The GCCC comprises Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. For more information, click here First substantive round of Australia-Gulf Cooperation Council FTA negotiations The first substantive round of the Australia-Gulf Cooperation Council FTAwas held in Canberra from 31 July to 1 August 2007. The Gulf Cooperation Council ( GCC) comprises Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. The GCC has agreed that the FTA will cover IP rights protection but Australia will need to do more work to ensure that commitments in this area are ‘commercially meaningful’. DFAT continues to welcome written comments regarding the Australia-GCC FTA negotiations. For more information, click here Australia-Japan FTA negotiations Australia-Japan Free Trade and Economic Framework On 20 April 2005, Prime Minister Howard and Japanese Prime Minister Junichiro Koizumi announced that both countries had agreed to commence an FTA feasibility study. The study will examine the pros and cons of a bilateral Free Trade Agreement, as part of measures to advance economic relations between the two countries. The decision to start the study reflects Japan's vital importance to Australia as an economic partner- our largest trading partner in 2004, and Australia's number one export market for almost forty years. The FTA study will analyse the possible implications of a comprehensive FTA to enable both countries to consider whether they will proceed to formal FTA negotiations. It will also build on a recently completed joint study into the costs and benefits of liberalisation, undertaken as part of the Trade and Economic Framework (TEF) signed in July 2003. This earlier study did not explicitly consider a bilateral FTA and contained no policy recommendations. The TEF joint study used two models to estimate the gains from liberalisation:
To view the Prime Minister's Press Release, click here. Fourth meeting of Australia-Japan FTA feasibility study group The fourth meeting of the Australia-Japan Free Trade Agreement (FTA) feasibility study group was held in Canberra on 18–21 July 2006. The study group continued its discussion on the feasibility of a bilateral FTA that not only covers specific sectors such as goods, services, energy and minerals but also IP and competition policy issues. With the study group having agreed to begin work on its final report, it is entering the final stages of its work. The next study group meeting was expected to take place in Tokyo on 20-22 September 2006. For more information, click here Australia-Japan FTA negotations to commence early in 2007 In December 2006, Prime Minister John Howard and the Japanese Prime Minister Shinzo Abe agreed to commence FTA negotiations early in 2007. Submissions on issues relevant to the negotiation of an Australia-Japan FTA were due to the Department of Foreign Affairs and Trade (DFAT) by 15 January 2007. For more information, click here Second round of Australia-Japan FTA negotations The second round of the Australia-Japan FTA negotiations took place in Tokyo from 6 to 10 August 2007. The round began intensive discussion on the comprehensive list of issues to be discussed as part of the FTA, which were agreed at the first round. This involved eighteen sessions over five days, including a session on IP. The Department of Foreign Affairs and Trade (DFAT) continues to welcome submissions on issues relevant to the negotiation of an Australia-Japan FTA. For more information, click here Third round of Australia-Japan FTA negotiations The third round of FTA negotiations between Australia and Japan took place in Canberra from 5 to 8 November 2007. Discussions on IP focussed on a detailed examination of Japan’s draft text, and produced a better understanding of each side’s regulatory regime. Additional information has been exchanged ahead of further detailed consideration of the draft text at the next round. For more information, click here Australia-Chile FTA negotiations Public submissions sought regarding Australia-Chile FTA DFAT sought public submissions until 23 February 2007 regarding an Australia-Chile FTA. DFAT seeks assistance in identifying particular market access issues and/or any other trade and investment impediments affecting Australia’s exports and investments in Chile. For more information, click here First substantive round of Australia-Chile FTA negotiations The first substantive round of Australia-Chile FTA negotiations was held in Canberra from 7 to 9 August 2007. As expected by the parties, discussions on IP were ‘challenging’ but Australia used the opportunity ‘to reiterate to Chile the importance … of including substantive, high quality IP provisions in our FTA’. For more information, click here Second round of Australia-Chile FTA negotiations The second round of FTA negotiations between Australia and Chile took place in Santiago from 8 to 12 October 2007. IP was identified as a key area of divergence between the two sides and discussions have continued intersessionally with exchanges of information. Negotiations on IP will take place at the next round. For more information, click here Australia-Malaysia FTA negotiations Fourth round of Australia-Malaysia FTA negotiations The fourth round of the Australia-Malaysia Free Trade Agreement negotiations were held in Kuala Lumpur on 3-7 July 2006. There was ‘pleasing progress’ on IP and e-commerce issues where discussion focused on draft text. Australia and Malaysia tabled text covering most areas of the negotiations. This follows advances made at inter-sessional meetings on investment, telecommunications, e-commerce, financial services and dispute settlement since the last negotiating session held in Canberra in March 2006. Both parties were expected to advance text in the lead up to the next negotiating session scheduled for Canberra on 11-15 September 2006. For more information, click here Australia-China FTA negotiations Australia-China Trade and Economic Framework On 18 April 2005, Prime Minister John Howard and Premier Wen Jiabao of China agreed that Australia and China will commence negotiations on a Free Trade Agreement (FTA) following consideration of the joint FTA Feasibility Study. The FTA Feasibility Study was completed in March 2005, and concluded that there would be significant economic benefits for both Australia and China through the negotiation of an FTA. The Department of Foreign Affairs and Trade (DFAT) invited public submissions on issues relevant to the negotiation of a free trade agreement (FTA) between Australia and China. Interested parties were encouraged to lodge submissions by Friday 17 June 2005. All submissions are made publicly available on the DFAT website unless the author specifies otherwise. To view the press release about public submissions, click here. To view the FTA Feasibility Study in full, click here. Fifth round of negotiations for Australia-China FTA The fifth round of the Australia-China Free Trade Agreement (FTA) negotiations took place in Beijing on 22-24 May 2006. At the meeting, Australia tabled texts for an initial 15 proposed chapters of a FTA which were considered closely. Australia also put forward a draft text for a chapter on IP which reflected industry concerns identified in submissions and consultations. Though negotiations regarding IP can be expected to be ‘long, complex and challenging’, the Chinese side was ‘engaged well’ in the discussions. Preliminary but useful discussions were also held on Australia's draft texts on competition policy, dispute settlement and some of the key institutional and framework provisions for the agreement. Both parties agreed to exchange market access offers on goods, including agriculture, at the next round tentatively scheduled to be held in Beijing the week starting 4 September 2006. Services and investment market access negotiations were expected to follow before the end of 2006. For more information, click here Discussion of IP issues at ninth round of negotiations for Australia-China FTA The ninth round of the Australia-China Free Trade Agreement (FTA) negotiations was held from 18 to 22 June 2007 in Beijing. The draft text of the proposed FTA was discussed. Regarding IP, Australia tabled additional draft text covering two issues that have been raised by Australian industry: the establishment of a possible bilateral consultative mechanism on IP issues and the protection of confidential information provided by enterprises when applying for tenders or regulatory approval. China used a significant part of the meeting to reiterate its strong concerns regarding the scope and content of Australia’s draft IP chapter. While there are signs of convergence on a few of the draft provisions, the IP negotiations remain characterised by two strongly divergent competing visions for what constitutes an appropriate IP chapter. The tenth negotiating round is tentatively scheduled for late October 2007 in Canberra. For more information, click here Tenth round of Australia-China FTA negotiations The tenth round of the Australia-China FTA negotiations were held in Canberra from 22 to 26 October 2007. While the parties narrowed their differences on some issues and made changes to the proposed text of the agreement, overall progress in the negotiations continued to be slow. At China’s request, talks on IP were put on hold until the next round. For more information, click here To view archived information, click here ASEAN-Australia-New Zealand FTA negotiations These negotiations will be particularly complex as they involve twelve countries at different stages of development. The countries involved are Burma, Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, Philippines, Singapore, Thailand, Vietnam, New Zealand and Australia. ASEAN, Australia and New Zealand trade officials met for the third round of FTA negotiations in Auckland from 29 June - 1 July 2005. Having established a structure for the negotiations in the initial meetings, this meeting began substantive discussions on key areas of the FTA negotiations, with four issue-specific working groups (on rules of origin, services, investment and legal issues) meeting for the first time. At this stage in the negotiations, all sides are focused on gaining a detailed understanding of each others’ trade regimes and their respective FTA negotiating experiences. The next round of negotiations is scheduled to be held in Chiang Mai, Thailand from 18-20 August 2005. Negotiators will meet in Expert and Working Group meetings on goods, economic cooperation, rules of origin, services, legal and institutional issues, and intellectual property and will agree on work plans and timeframes to progress the negotiations. Eleventh round of ASEAN-Australia-New Zealand FTA negotiations The eleventh round of the Association of Southeast Asian Nations (ASEAN)- Australia-New ZealandFTA negotiations took place in Kuala Lumpur from 24 to 28 September 2007. AESAN confirmed their agreement to the inclusion of a separate chapter on IP. For more information, click here Twelfth Round of ASEAN-Australia-New Zealand FTA negotiations The twelfth round of the Association of Southeast Asian Nations (ASEAN)- Australia-New-Zealand FTA negotiations took place in Siem Reap, Cambodia, from 10 to 14 December 2007. The Experts Group on IP met for the first time and made progress towards achieving agreement on a framework for taking IP issues forward. A consolidated draft text on IP was developed with a number of articles agreed in principle, including substantive articles on national treatment and government use of software. For more information, click here Australia-Indonesia FTA feasibility study DFAT is calling for submissions and comments on issues relevant to a joint feasibility study regarding the merits of an FTA between Australia and Indonesia. The feasibility study commenced in August 2007 and is expected to be completed by the middle of 2008. For more information, click here Australia-India FTA feasibility study On 31 August 2007, the Minister for Trade, Warren Truss, announced that Australia and India have agreed to undertake a joint feasibility study into the merits of a FTA between the two countries. The Australian Government will consult widely in Australia, including with the States and Territories, relevant industry bodies and other stakeholders during the feasibility study. For more information, click here Australia-United States Free Trade Agreement On 18 May 2004, in Washington D.C., Trade Minister the Hon Mark Vaile MP and his US counterpart Trade Representative Robert Zoellick signed the Australia United States Free Trade Agreement (AUSFTA). The final text of the AUSFTA was released on 27 May 2004. Generally, the intellectual property provisions of the AUSFTA will commence on the later of 1 January 2005 and the day on which the AUSFTA comes into force. The AUSFTA will come into force 60 days after the parties exchange notifications certifying that they have completed respective necessary internal requirements. Clcik here for more information on the AUSFTA US Free Trade Agreement Implementation Act 2004 On 18 November 2004, Mr Vaile announced that the Australian and United States governments had exchanged diplomatic notes certifying that each had made the necessary domestic arrangements to allow the AUSFTA to be implemented on 1 January 2005. The notes and associated letters that were exchanged between Mr Vaile and Mr Zoellick, can be accessed here.
The USFTAI Act passed Parliament on 13 August 2004 and received assent on 16 Australia-United Arab Emirates FTA At the fourth meeting of the Australia-UAE Joint Ministerial Commission (JMC) in Canberra on 15 March 2005, Australia's Trade Minister Mr Mark Vaile and the United Arab Emirates’ Economy and Planning Minister, Sheikha Lubna Al Qassimi announced that the two countries would commence negotiations on a bilateral Free Trade Agreement (FTA). At the fourth JMC, the Ministers agreed to work towards concluding a comprehensive and liberalising FTA in 2006. As part of the negotiations process the Department of Foreign Affairs and Trade called for public submissions or comment in April 2005 on issues relevant to the possible FTA. A number of submissions have so far been received from nterested parties. DFAT will continue to accept public submissions and comment throughout the negotiations process. More information on DFAT and international, IP related issues can be found on the IP symposium hosted by the Australian Government and APEC A symposium titled ‘Trading Ideas - The Future of IP in Asia Pacific’ was held in Sydney on 28-30 January 2007. It was hosted by the Australian Government in collaboration with the Asia Pacific Economic Cooperation (APEC). Session topics included: ‘International IP Asset Management’ , ‘IP and Regional Trade Agreements’ and ‘Copyright and the Challenges Posed by Digital Technologies’. For more information, click here Consultation Papers regarding the Intellectual Property Laws Amendment Act 2006 IP Australia has released two Consultation Papers on the Intellectual Property Laws Amendment Act 2006 (Amendment Act) which received Royal Assent on 27 September 2006. The first Consultation Paper, “New close down provisions”, is on Schedule 12 to the Amendment Act. The changes are to clarify the effect of the Designs Office, the Patent Office, the Plant Breeder’s Rights Office and the Trade Marks Office, and any of their State sub-offices, not being open for business. The second Consultation Paper, “New system for accessing trade mark documents”, is on Schedule 4 to the Amendment Act which will amend the Trade Marks Act 1995 to make prescribed documents relating to trade marks available for public inspection at an early stage in the trade mark application process. Written comments regarding the Consultation Papers were due by 27 October 2006. For more information and to access the Consultation Papers, click here On 26 September 2006, IP Australia completed a review of its fees and charges for designs, patents, plant breeder’s rights and trade marks. IP Australia seeks to introduce the draft changes through amendments to regulations, for a target implementation date of February 2007. Written comments on the review were due by 25 October 2006. For more information and to access the draft fee changes, click here Update: Fee changes at IP Australia Following the introduction of the Intellectual Property Legislation (Fees) Amendment Regulations 2006, IP Australia announced that new charges commenced from 1 March 2007. They apply mainly across patent and trade mark transactions but some non-cost recovery changes also apply to designs and plant breeder’s rights. The amendments arise from a recent review of IP Australia’s fees as part of its Cost Recovery Impact Statement, in compliance with the Government’s cost recovery policy. For more information, click here Australia signs World Wine Trade Group Agreement on Requirements for Wine Labelling On 23 January 2007, the World Wine Trading Group (WWTG) Agreement on Requirements for Wine Labelling was signed by the Australian Government Minister for Trade, Warren Truss, and by representatives from ‘new world’ wine producing countries including the USA, Chile, Argentina, New Zealand and Canada. These countries, whose common goal is to boost international trade in wine, make up the WWTG which recently met in Canberra. The WWTG Agreement standardises the presentation of certain information on wine labels such as product designation, content volume, percentage of alcohol and country of origin. In future, when a product is to be sold in several markets, winemakers and exporters will no longer have to attach a different front label for each destination. For more information, click here Click here for archived material
Department of Industry, Tourism & Resources $80 million to be granted under Federal Government’s Innovation Investment Fund On 21 June 2007, Australian Industry Minister Ian Macfarlane announced that $80 million is to be put towards Australian innovation under the Federal Government’s Innovation Investment Fund (IIF3). The investment will be made through four $20 million funds provided to new venture capital managers to invest in innovations ranging from clean energy to communications technology. IIF3 is a $200 million program to promote the commercialisation of Australian R&D through the development of new fund managers in early stage investing. A further six fund managers will be licensed over the next four years. Each will be provided with $20 million of Australian Government funding. This will be matched by a minimum dollar-for-dollar investment by the private sector. According to Mr Macfarlane, the passage of the Early Stage Venture Capital Limited Partnerships legislation in June 2007 will further stimulate the venture capital industry by exempting domestic and foreign investors in early stage venture capital limited partnerships from income and capital gains tax. For more information, click here IP enforcement budget increase On 12 June 2007, Parliamentary Secretary to the Minister for Industry, Tourism and Resources Bob Baldwin announced that the Australian Government would fund more than $12.4 million over the next two years to enable the Australian Federal Police and the Commonwealth Director of Public Prosecutions to more effectively target trade mark and copyright crime. For more information, click here Innovation and R&D boosted in Industry Statement On 1 May 2007,the Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Bob Baldwin, announced the release of the Government’s Industry Statement. Mr Baldwin noted that research and development had been given a boost with innovative micro businesses and public research spin-offs targeted by a new streamlined grants program under the Government’s business innovation scheme, Commercial Ready. The program will provide dollar-for-dollar support of up to $250,000 to fund R&D, proof of concept and early stage commercialisation. For more information, click here Proposed ‘Australian Grown’ label On 7 March 2007, the Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Bob Baldwin, announced a proposed extension of the ‘Australian Made’ label to identify produce grown in Australia. Mr Baldwin stated: “An application to extend the rules for the ‘ Australian Made’ logo has been submitted to the ACCC. If it is successful, the ‘ Australian Made’ logo will be able to be used with Australian grown produce as well as Australian manufactured products. This will assist consumers to differentiate between local and imported produce and allow them to make relative judgements about the freshness or suitability of what they are buying.” Under the proposed changes, the ‘ Australian Grown’ logo can be used where all the significant ingredients have been grown in Australia and all the production processes occurred in Australia. It could also be used on products with a high proportion of Australian content to highlight those ingredients that are 100 per cent Australian grown. For more information, click here Department of Industry, Tourism and Resources releases its ‘Intellectual Property Scorecard 2000-2004’ On 18 October 2006, the Department of Industry, Tourism and Resources released its ‘Intellectual Property Scorecard 2000-2004’. The Scorecard shows a comparison of intellectual property protection activity in Australia, the USA and the EU in 2000-2004. For more information and to access the Scorecard, click here New website on plant breeder’s rights launched On 13 April 2006, a new website on plant breeder’s rights (PBR) was launched by Bob Baldwin, Parliamentary Secretary to the Minister for Industry, Tourism and Resources. The website was developed by the Australian Centre for Intellectual Property in Agriculture (ACIPA) and the PBR Office in IP Australia. It provides comprehensive information on case law, commercialisation, enforcement and the relationship of PBR to other intellectual property rights. To access the Understanding Plant Breeder’s Rights website, click here The R&D Tax Concession - impact on the firm In October 2005, the Department of Industry, Tourism and Resources released a report regarding the Commonwealth Government’s R&D Tax Concession and its impact on Australian firms. The report’s major findings were that the R&D Tax Concession increases the size of investment in individual R&D projects, brings forward R&D expenditure on projects to enable faster completion with higher commercial results, and encourages investment in projects that otherwise would not be undertaken. The report found that 80% of participating companies had an “intellectual property strategy”, with most companies using more than one mechanism to protect their IP. Smaller businesses and/or businesses operating in markets with short product cycles and low entry barriers were most likely to cite “industrial secrecy” or “speed to market”. Larger businesses, operating in sectors with slower product cycles or in markets with high entry barriers, were more likely to use patents. Click here for the report Patenting and commercialisation activities of Australian Universities The Department of Industry, Tourism and Resources recently conducted a study dated April 2005 of patenting activities by Australian universities from 1995 to 2002 to identify factors that impede commercialisation and to gain a better understanding of the commercialisation processes employed by universities in Australia. The study was based on university surveys and face-to-face interviews with university commercialisation officials. The survey group accounts for 99% of the patents granted to Australian universities. The study examined whether there was a significant volume of unused patents held by universities in Australia. In brief, the study found that the Go8 universities (Australia's eight leading universities) accounted for 89% of the total number of patents granted to all Australian universities and 90% of commercialisation activity. The study also found that 70% of patents were commercialised. The study did not quantify the extent to which there is significant, unrealised potential in university R&D that is not being patented, much less commercialised. Click here to access the study. Click here for archived material regarding the Department of Industry, Tourism and Resources 1. IP Australia
IP Australia incorporates the Patent, Designs
and Trade Marks Offices. It is a division National seminar series on IP protection for businesses engaged in the export of goods and services launched On 13 February 2008, the Minister for Innovation, Industry, Science and Research, Kim Carr, launched a national seminar series titled ‘IP Passport – Helping Your Business Take Off Overseas’. The seminars, featuring speakers from IP Australia and IP lawyers, were a joint venture between IP Australia, the Australian Chamber of Commerce and Industry, and the State and Territory Chambers of Commerce and Industry. The aim was to encourage small and medium sized Australian businesses to consider IP protection before exporting their goods and services overseas. Seminars ran from 18 February to 29 February 2008. For more information, click here Stage one of IP Australia-IPONZ comparative examination project complete On 9 November 2007, it was reported that the first stage of a project exploring the potential for alignment of trade marks examination practices between IP Australia and the Intellectual Property Office of New Zealand (IPONZ) has been completed. Stage 1 of the project included a comparison of 200 applications examined during 2005, practice guidelines from each office, and the cross-class search lists of both countries. The findings resulted in the alignment of a number of practice differences and both offices have agreed to go ahead with Stage 2 of the project. The second stage, expected to be completed by April 2008, will include:
For more information, click here Consultation Paper on companies acting as patent or trade mark attorneys On 17 October 2007, IP Australia released a Consultation Paper which considers a scheme that removes the current bar on a company carrying on business as a patent attorney. The proposed model provides for individual patent attorneys to retain personal responsibility for discipline and complaints; a Code of Conduct to apply to all individual attorneys within a company; and an incorporated patent attorney company must have at least one director who is a registered patent attorney. In addition, there is a compulsory requirement for all patent attorneys whether they are incorporated or not to have professional indemnity insurance. The Consultation Paper also sets out the amendments required to put the model in place to allow companies to describe themselves as trade marks attorneys. Written comments on the Consultation Paper were sought by 30 November 2007. To access the Consultation Paper, click here Update: Position paper on incorporation of patent and trade marks attorneys released On 16 January 2008, IP Australia released a Position Paper in response to feedback received regarding its consultation paper ‘Incorporation of Patent and Trade Marks Attorneys’. The consultation paper was released to the public on 17 October 2007 with comments due on 30 November 2007. The Position Paper provides an overview of the nine submissions received, which focussed largely on the issue of professional indemnity insurance. According to IP Australia, the submissions ‘indicated that there was a uniform level of support to the proposal to legislate to allow for the incorporation of patent and trade marks attorneys.’ IP Australia will now seek the Australian government's consideration of this proposal and its approval to amend the relevant legislation. To access the Position Paper, click here On 10 September 2007, IP Australia announced that it is seeking comment from trade mark owners and their representatives on issues relating to the operation of the Madrid Protocol in the context of ongoing international consideration of the future development of the Madrid system. Comments were due by 9 November 2007 in order for them to be considered when IP Australia contributes to a WIPO Secretariat paper at the end of 2007. However, as some of the issues will be discussed later in 2008, input at a later time would also be very useful. For more information, click here Consultation Paper released regarding exchange of patent documents with WIPO and IP offices On 19 September 2007, IP Australia released a Consultation Paper titled ‘Exchanging Information on Patent Applications’. The purpose of the Consultation Paper is to inform stakeholders of the amendments IP Australia is proposing to introduce to the Patents Regulations 1991 to:
Submissions regarding the Consultation Paper were due by 17 October 2007. Amended legislation and examination practice in relation to divisional trade mark applications New provisions for divisional trade mark applications came into effect on 27 March 2007. According to an IP Australia Official Notice dated 26 July 2007, the intent of the amended legislation was for the goods/services of the divisional application to be clearly divided from those of the parent application and to avoid duplication. A number of divisional applications filed on or after 27 March 2007 have been invalid. To avoid submitting an invalid divisional application, applicants must:
To view the IP Australia Official Notice, click here Designs Examiners’ Manual - updates available The Australian Designs Office Manual of Practice and Procedure ( Designs Act 2003) is under construction. On 31 July 2007, IP Australia announced thatmaterial is presently available on formalities in Part 1, and further content has been added to Part 2 (Examination) including searching, examination and some other practices. Further information is under development and will be published when available. For more information, click here Trade Marks Office Manual of Practice and Procedure - revision of Parts 22 and 28 On 9 July 2007, IP Australia announced that Parts 22 and 28 of the Trade Marks Office Manual of Practice and Procedure have been amended. The amendments reflect revised office practice in relation to the application of section 41 (capable of distinguishing) and the provisions relating to honest concurrent use, prior use or other circumstances. To view the IP Australia Official Notice, click here Update: Patents Amendment Regulations 2007 (No. 1) enter into force On 16 May 2007, IP Australia published a Consultation Paper seeking views on proposed changes to the Patents Regulations 1991 under subsection 45(3) and section 101D of the Patents Act 1990. As a result of the generally favourable feedback received, the Patents Regulations 1991 have been amended to remove the requirement to inform the Commissioner of Patents of the results of documentary searches by, or on behalf of, foreign patent offices. The amending legislation, the Patents Amendment Regulations 2007 (No. 1) entered into force on 22 October 2007. Also amended is the time for lodging notices to the Commissioner of matters affecting the validity of patents under section 27(1) of the Patents Act 1990. Notices may be filed up to three months from the date of advertisement of acceptance, rather than up to the date of acceptance, as was previously the case. To access the Official Notice by IP Australia, click here To access the Position Paper by IP Australia, ‘Overview of responses to the public consultation paper Removal of the obligation to lodge search results under subsection 45(3) and section 101D of the Patents Act 1990’, click here Public consultation: patent, trade marks & WIPO treaties On 22 May 2007, IP Australia announced it was seeking comments on whether Australia should ratify the Singapore Treaty on the Law of Trademarks (Singapore Treaty), accede to the Patent Law Treaty (PLT) and formally accept amendments designed to streamline the administrative provisions of several other World Intellectual Property Organization (WIPO) treaties. The Singapore Treaty and the PLT harmonise many formality and procedural requirements relating to the administration of patents and trade marks. As a result of a process of constitutional reform, the WIPO General Assemblies in 2003 agreed to amend the administrative provisions of a number of other treaties, including seven to which Australia is a party. The amendments introduce no substantive changes to Australia’s current obligations under these treaties. The amendments include the abolition of the WIPO Conference and a change in the frequency of the ordinary sessions of the WIPO General Assembly and the other Assemblies of the Unions administered by WIPO from every two years to once a year. Comments were due to IP Australia by 30 June 2007. For more information, click here Consultation Paper released on the patent search result disclosure regime On 16 May 2007, IP Australia released a Consultation Paper proposing amendments to the search result disclosure regime set out in regulations made under subsection 45(3) and section 101D of the Patents Act 1990. Developments in the availability of foreign patent office search and examination results over the Internet have lead IP Australia to consider whether further simplifications to the search result disclosure regime are now possible. The Consultation Paper sought views on whether it is appropriate to remove the obligation for applicants and patentees to inform the patent office of the results of documentary searches. Comments were due by 13 June 2007. To access the Consultation Paper, click here United States and Australia to extend cooperation on patent search and examination services The U.S. Patent and Trademark Office (USPTO) and IP Australia recently agreed to extend a project under which IP Australia provides search and examination services on international patent applications filed with the USPTO under provisions of the Patent Cooperation Treaty (PCT). This agreement is a continuation of the project launched between the two offices in 2005. The extension commenced on 1 March 2007 and will run for 12 months. In this phase of the project, IP Australia will process up to 1,200 PCT applications over the course of the year, covering a range of technologies. The USPTO will continue to review IP Australia’s work to ensure that it meets USPTO standards. Cooperation with IP Australia will allow the USPTO to dedicate more resources to examining the over 800,000 U.S. national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality. For more information, click here Request for comment on the operation of the Madrid Protocol The Trade Marks Office announced that it is seeking comment from trade mark owners and their representatives on the operation of the Madrid Protocol in the context of international consideration by the World Intellectual Property Organisation (WIPO) of the future development of the Madrid system. Comments were due before 25 December 2006, however, as it is envisaged that the international discussions will be ongoing, input at a later time would also be very useful. There will also be opportunities for further comment as the WIPO process continues. For more information, click here Changes to trade mark classification for retailing or wholesaling of utilities On 21 November 2006, IP Australia announced that advice received from the World Intellectual Property Organisation (WIPO) has stated that the retailing and/or wholesaling of utilities includes the retailing and/or wholesaling of electricity, energy, gas supply, water supply, telecommunications network access and the like do not fall under the definition of retailing and wholesaling services in class 35. Class 39 (provision of electricity, energy, gas supply, water supply etc) and class 38 (provision of telecommunications network access etc) were deemed to be more appropriate for these services. In light of this advice, applications containing these claims will not be accepted in class 35 and owners will need to agree to transfer to class 38 or 39 as appropriate. Retrospective changes will not be made to existing trade mark registrations in class 35. For more information, click here IP Australia Patent Search Strategy Project On 15 January 2007, IP Australia announced that it has initiated a new program that will provide better access to patent data for inventors, researchers and IP professionals in Australia and overseas. Currently, patent data in Australia is held in a variety of different systems. The Patent Search Strategy Project will deliver a new search facility that will ultimately provide electronic access to all Australian patent data. For those interested, IP Australia is establishing a customer reference group that is specifically tasked with guiding development of the new search system. For more information, click here Review of innovation patent system On 15 August 2006, the Australian Government released a Report ‘Review of the Innovation Patent’. The Report concludes that the innovation patent system meets its objectives and that changes are not presently warranted. The Report finds that the innovation patent is predominately being used by Australian individuals and small-to-medium enterprises (SMEs) for less-knowledge intensive innovations. However, preliminary evidence also suggests that a significant proportion of innovation patents are being used to obtain a form of quick protection for higher-level inventions while a standard patent is being pursued. Therefore, one of the Report’s recommendations is that IP Australia routinely assess the proportion of innovation patent applications that appear to be used for ‘tactical reasons’ regarding higher-level inventions. Owing to the inadequate knowledge of the system by both applicants and other parties, IP Australia will be conducting awareness-raising programs in the future. For more information and to access the Report, click here Consultation Paper on ACIP Report ‘Patents and Experimental Use’ On 4 September 2006, IP Australia announced that an Interdepartmental Committee (IDC) has been established to draft a response to the Advisory Council on Intellectual Property (ACIP) Report ‘Patents and Experimental Use’ for consideration by the Government. As the recommendations in the ACIP Report differ slightly to the options proposed in the ACIP ‘Patents and Experimental Use’ Options Paper (published December 2004), the IDC has developed a Consultation Paper which provides a brief overview of the ACIP Report and its recommendations. Written comments regarding the Consultation Paper were due by 29 September 2006. For more information and to assess the IDC Consultation Paper and the ACIP Report, click here Update: Overview of responses to the Consultation Paper on ACIP Report 'Patents and Experimental Use' On 8 November 2006, IP Australia released a paper which provides an overview of the submissions received in response to the questions raised in the Consultation Paper on the Advisory Council of Intellectual Property (ACIP) Report, ‘Patents and Experimental Use’. The Consultation Paper invited interested parties to comment on the different experimental use exemption provisions recommended by ACIP and the Australian Law Reform Commission (ALRC), and whether the interested party’s industry had been impacted by the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval. For more information, click here Consultation Paper regarding amendments to the Regulations under the PCT On 20 September 2006, IP Australia released a Consultation Paper regarding amendments to the Regulations under the Patent Cooperation Treaty (PCT) which are due to come into force on 1 April 2007. The more significant amendments |
