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Submissions
One of IPRIA's goals is to contribute to policy
debate in Australia. IPRIA has been actively involved in the formation
of public policy with regular submissions to the Advisory Council
on Intellectual Property, as well as reports for departments of
the Commonwealth government on Intellectual Property related issues.
IP Australia
IP Australia is the Australian Government agency responsible for administering patents, trade marks, designs and Plant Breeder’s Rights.By granting these rights, and contributing to the improvement of Australian and international IP systems, IP Australia is supporting Australia's economic development.IP Australia is a prescribed agency within the Department of Innovation, Industry, Science and Research (DIISR) but operates independently and reports directly to the Minister.
Patent and Trade Mark Attorney Privilege
In 2005, IP Australia sought comments on a number of issues surrounding the
operation of patent and trade marks attorney privilege in Australia. Its Issues Paper
focused on the narrow construction of the patent attorney privilege, particularly with
respect to communications with foreign patent attorneys. It also referred to the
privilege’s lack of application to third parties. This submission addresses both of
those matters.
IPRIA’s submission, which can be downloaded here, is based on its Report ‘Patent Attorney Privilege in Australia:Rationale, Current Concerns and Avenues for Reform’ prepared by Elizabeth Hall, Chris Dent and Andrew Christie, and published this month. The structure of this submission is as follows: first, the questions raised in IP Australia’s Issues Paper will be addressed generally; and secondly, the submission will identify possible reform avenues at both the domestic and transnational level. It will conclude that attempts to alleviate the inconsistencies in, and uncertainty regarding, the recognition and scope of the patent and trade mark attorney privileges should be initiated at the local level. However, in order to more fully address the concerns, action at a global level may also be necessary. Reference will be made to relevant material in the IPRIA Report in support of the submission.
The Department of Foreign Affairs and Trade
The department's role is to advance Australia's national interest which involves working to strengthen Australia's security and enhance Australia's prosperity. The department provides foreign and trade policy advice to the government and works with other government agencies to ensure that Australia's pursuit of its global, regional and bilateral interests is coordinated effectively.
International Proposal for a Plurilateral Anti-Counterfeiting Trade Agreement
This submission was prepared by Chris Dent in response to the Department of Foreign Affairs and Trade Discussion Paper on an International Proposal for a Plurilateral Anti-Counterfeiting Trade Agreement. The Paper arose from international discussions into the possibility of a new treaty aimed at combating transnational counterfeiting and piracy through the establishment of a new standard of intellectual property rights (IPRs) enforcement. Counterfeiting and piracy are seen as major impediments to firms maximising the benefits gained through the pursuit, and maintenance, of intellectual property rights.
IPRIA’s submission takes the form of a summary of the research (some published and some yet to be published) that the Institute has conducted in relation to intellectual property enforcement in Australia and by Australian firms in China. The research of relevance to the Department’s inquiry relates to the civil enforcement of copyright and trade mark rights. The Institute has not, to date, explored the criminal enforcement of IPRs. The submission, then, is aimed at providing background data upon which the Department may draw during future negotiations with respect to the proposed treaty.
You can download this submission here.
The Productivity Commission
The Productivity Commission is the Australian Government's principal review and advisory body on microeconomic policy and regulation. It conducts public inquiries and research into a broad range of economic and social issues affecting the welfare of Australians, including: competition policy, productivity, the environment, economic infrastructure, labour markets, trade and assistance, structural adjustment and microeconomic reform.
The Economic Case for Public Support of Science and Innovation
This submission was made to the Productivity Commission’s study on “Public Support for Science and Innovation” by Joshua S Gans in July 2006. Below is an extract from the submission or you can access the full document by clicking here.
This submission examines economic arguments in favour of the public support of science and innovation. It emphasises three important points that I believe that the Productivity Commission should take into account in its study.
First, arguments of the public support of science based on the idea that basic research’s economic benefits are derived from spillovers into applied research are based on a false premise of that relationship. Instead, there are strong incentives to provide use-inspired basic research that are preserved by recognising the distinct roles of pure science and commercial research as mechanisms to allocate resources to knowledge creation activities. Second, I refute the empirical findings in a recent PC working paper on the relationship between R&D and multi-factor productivity. Empirical work is presented using data from a cross section of OECD countries that shows that the Australian domestic R&D stock has a positive and significant impact on multi-factor productivity. Finally, I present results of the continuing study of the drivers of national innovative capacity that shows econometrically what factors – including government policy variables – impact on the domestic rate of innovation.
Submission to the Productivity Commission Review of: Public Support for Science and Innovation
Submitted by Paul Jensen, Alfons Palangkaraya and Elizabeth Webster, July 2006.
The following is in response to the Productivity Commmission’s call for submissions. As part of our research programme at the Melbourne Institute of Applied Economic and Social Research (which is a major stakeholder in the Intellectual Property Research Institute of Australia, IPRIA,along with the Melbourne Business School and the Melbourne Law School), we have conducted research which has an important bearing on the study of public funding of science and innovation. This submission is a summary of the key findings of this research.
Download the submission here.
Attorney-General's Department
In August, 2005, the Attorney-General's Department sought responses to the issue of whether the Safe Harbours provided by Part V Div 2AA, introduced as a result of the Australia-US Free Trade Agreement, should be extended beyond 'Carriage Service Providers' as defined under the Telecommunications Act 1997.
In particular, the Copyright Law Branch was exmaining the scope of the definition of "carriage service provider". At present, the term covers entities that are primarily Internet service providers. Those which are not Internet service providers, but provide network access or online service do not fall within the scope of the definition, and therefore cannot take advantage of the protection afforded by the scheme.
In her response to this proposal, Kimberlee Weatherall makes three main points:
- Using definitions from the Telecommunications Act 1997 is not a sensible approach to defining the group of entities and people who can take advantage of the Safe Harbours
- The availability of the Safe Harbours should be extended
- The way in which the extension is effected is important
Click here to view Kimberlee Weatherall's response in full.
In May, 2005, the Attorney-General's Department released an issues paper entitled Fair Use and Other Copyright Exceptions: An examination of fair use, fair dealing and other copyright exceptions in the Digital Age. The paper discusses the effect of digital technologies on both owners and users of copyright, and whether a balance can be achieved between these competing sets of rights. The paper seeks submissions on ways of addressing this balance.
This submission, by Kimberlee Weatherall and Emily Hudson, considers several issues, including the operation of the existing law, whether an open-ended fair use exception would be a desirable addition to Australian law, and the issue of orphan works.
Advisory Council on Intellectual Property
The Advisory Council on Intellectual Property
(ACIP) is an independent body appointed by the government, and advises
the Federal Minister for Industry, Tourism and Resources on intellectual
property matters and the strategic administration of IP Australia.
Review of Post-Grant Enforcement Strategies
This submission was prepared by Chris Dent in response to ACIP’s Issues Paper regarding the manner in which patentees enforce their rights after a patent has been granted. The Council’s review has been prompted by concerns that the enforcement of patent rights, through the courts, is prohibitively expensive and time consuming. In particular, the Paper raised the prospects of alternative means both of reducing the cost of individual actions through mechanisms such as tax reform and patent insurance; and of resolving disputes through the use of a patent tribunal and mediation.
IPRIA’s submission takes the form of a summary of the empirical work that the Institute has conducted in this area of the settlement of patent disputes under Australian law. In brief, the work includes the analysis of court filings in patent disputes in the Federal Court; a questionnaire mailed out to all lawyers who practised in the area of patent law; and in-depth interviews with a number of the lawyers who participated in the second phase. As the purpose of the ACIP Paper was to raise the issues around the enforcement of patent rights, there were no specific proposals for IPRIA to comment upon. The submission, then, is aimed at providing background data upon which the Council may draw during subsequent stages of its review.
Review of Crown Use Provisions
in Patents and Designs Legislation
This
submission was prepared by IPRIA’s Kimberlee Weatherall
and Katerina Gaita in response to ACIP’s Discussion Paper
regarding Crown use provisions in patents and designs legislation.
The Discussion Paper was primarily concerned with how to ensure
that the Crown use provisions provide for an appropriate balance
between the rights of patent owners and the needs of the Australian
public and the Government.
IPRIA’s submission takes the form
of a review of provisions relating to Government use in jurisdictions
comparable to Australia.
Since the submission does not seek to advise ACIP on what Australian
law regarding Government use is and should be, it does not directly
answer the questions posed by ACIP in its Discussion Paper. Instead,
it addresses related questions concerning other jurisdictions,
an approach which reflects the main concerns and questions raised
in the Discussion Paper.
Review of Enforcement of Trade Marks
In 1999, the Hon Warren Entsch MP, Parliamentary
Secretary to the Minister for Industry, Tourism and Resources,
asked ACIP to conduct
a review into trade mark enforcement. In February 2002, ACIP
released the Review of Enforcement of Trade Marks: Issues Paper.
IPRIA in response to the Issues
Paper in June 2002.
In April 2004, ACIP delivered its final
report, Review of Trade Mark Enforcement. The Australian Government
is currently considering
its response to the recommendations made in the final ACIP Review
and has sought comments from IPRIA to assist in preparing its response.
In February 2005, IPRIA’s Kimberlee Weatherall and Jason
Bosland prepared a commenting on two of the recommendations
made in the Review; namely, the recommendation regarding the registration
of ‘new’ types of trade marks (ie, shape, colour, scent,
sound, and aspects of packaging) and the recommendation that further
research be conducted into extending the protection afforded to ‘well
known’ trade marks.
Extension of the Jurisdiction
of the Federal Magistrates Service to Patent, Trade Mark and Designs
Matters
This review stems from a call from some sectors
of industry for a quicker, more cost effective mechanism to deal
with IP disputes. In particular, over the past ten years there have
been suggestions to have IP matters heard by a Federal 'inferior'
court structure. In response to these calls and the recent introduction
of the Federal Magistrates Service, Parliamentary Secretary Entsch
requested that ACIP examine and report on the possibility of the
jurisdiction of the Federal Magistrates Service being extended to
hear intellectual property matters.
IPRIA provided a written
submission in October 2002, in response to the ACIP
Issues Paper. Part One of the submission provides a comparative
survey of specialist patent courts in existence overseas. Part Two
looks at the use of Alternative Dispute Resolution (ADR) mechanisms
for patent, trade mark and design disputes.
Consideration of Excluding
Plant and Animal Subject Material from the Innovation Patent
In May 2001, a new protection option, the innovation
patent, became available. The innovation patent provides industry
with a relatively inexpensive patent right, which is quick and easy
to obtain. The new form of patent provides a similar scope of protection
as a standard patent, however it involves a lower inventive threshold
than that required for a standard patent. Australian innovation
patents are not currently available for plants, animals or biological
processes for the generation of plants and animals. The ACIP Issues
Paper has sought submissions about the implications
of the exclusion and whether the exclusion is in the national interest.
IPRIA provided a written
submission in October 2002, in response to the ACIP Issues
Paper. IPRIA's submission examines the justification for second
tier patent protection in other countries, the subject matter for
which such protection is commonly accorded, and the place of exclusions
in these systems. This submission also examines the international
practice of granting or excluding intellectual property rights for
plant and animal subject matter. In our view, these analyses provide
indirect assistance to answering the fundamental question of whether
the Australian innovation patent should exclude plant and animal
subject matter.
Consideration of a Position
on the Patenting of Business Systems
The rapid increase in patenting of business systems,
such as e-commerce models, in recent years has raised issues relating
to what is patentable matter and the impacts on business. ACIP is
embarking on an examination of what approach Australia should take
on the patenting of business systems. Written comments on matters
raised in the issues paper were due by 10 September 2002. The final
report is expected soon.
IPRIA assisted ACIP in drafting the definition
of a 'business system' for the Issues
Paper.
Professor Andrew Christie is a member of the ACIP
working group on Business Systems.
Australian Law Reform Commission
The Australian Law Reform Commission conducts
inquiries into areas of law reform at the request of the Attorney-General
of Australia.
Client Legal Privilege and Federal Investigatory Bodies
In November 2006, the federal Attorney-General asked the Australian Law Reform Commission (ALRC) to inquire into the operation of client legal privilege (otherwise known as legal professional privilege) in the context of the coercive information-gathering powers of federal investigatory bodies; for example, the Australian Federal Police and the Australian Securities and Investments Commission. The focus of the inquiry is on the challenges to the privilege posed by the investigative powers of such bodies; there is, however, a consideration of the extension of a similar privilege to advice given by professionals in other contexts. In response to the ALRC’s Discussion Paper 73, IPRIA has prepared a submission (available here) relating to the existing, statutory, patent attorney privilege and the proposed “tax agent” privilege. In particular, the submission raises, for the Commission’s consideration, concerns over the application of any non-lawyer privilege attaching to communications with attorneys (or tax agents) in other jurisdictions. These concerns arise, in the patent attorney context, from a Federal Court decision holding that the privilege applies only to communications with attorneys registered in Australia. The concerns, therefore, may be relevant to the proposed tax agent privilege – depending on the statutory definition of such a privilege.
Inquiry into Gene Patenting
In December 2002, the federal Attorney-General
asked the Australian Law Reform Commission (ALRC) to examine the
challenges posed by the rapid advances in human genome research
and genetic technologies and the sometimes competing issues of
protection
of intellectual property rights and the public interest in maximising
access to beneficial technologies. The final report is due to be
completed by June 2004.
Click here to
see the terms of reference for the Inquiry.
In response to the ALRC’s Discussion Paper
68, IPRIA has prepared a
submission to the ALRC on Gene Patenting
and Human Health. This paper is part of a broader inquiry of
the ALRC on the challenges posed by the rapid advances in human
genome
research and genetic technologies, and the issues of protection
of intellectual property rights and the public interest in maximising
access to beneficial technologies.
The submission addresses the following
six ALRC proposals:
•
Written guidelines for patent examiners when applying the ‘usefulness’ criterion;
• The
addition of a criterion of ‘usefulness’ for
assessment in patent applications;
• Appointment of a panel
of experts to advise patent examiners in assessing patent applications;
• Need
for the panel of experts to reflect a balance of independent
scientific and legal expertise;
• The development of a searchable
online database containing information about Australian patents,
including details of court proceedings; and
• The proposal that
the research exception contained in the Act not be characterised
as a
defence.
Joint Standing Committee
on Treaties
The Treaties Committee has been appointed by
the Commonwealth Parliament to review and report on all treaty
actions proposed by the Government before action is taken which
binds Australia to the terms of the treaty.
Hearing on the Australia-United
States Free Trade Agreement
In March 2004, the Minister for Trade,
the Hon Mark Vaile MP, referred the proposed Free Trade Agreement
between Australia and
the United States to the Joint Standing Committee on Treaties
for inquiry and report.
JSCOT invited interested individuals and
organisations to make a submission to the inquiry. In an
independent submission, Kimberlee
Weatherall addressed important issues raised by the IP-related
chapter of the Treaty (Chapter 17).
Kimberlee addressed the following
issues:
• The process of negotiation of the IP Chapter
• The detailed and highly prescriptive nature of the IP Chapter
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The “balance” struck by the agreement
• The anti-circumvention provisions
• The exceptions to the anti-circumvention provisions
• The ISP liability provisions
All of these contain important ramifications
should they be implemented, including a comprehensive overhaul of Australia’s
copyright laws.
Senate Select Committee on the Australia-US Free
Trade Agreement
On 13 May 2004, the Senate resolved that the
Select Committee on the Australia-US Free Trade Agreement table
an interim report on 21 June 2004, and a final report by 12 August
2004.
The Committee invited individuals and organisations
with knowledge and information relevant to the inquiry's terms
of reference to
lodge submissions. In another independent
submission,
Kimberlee Weatherall highlighted some important issues arising
from the IP Chapter of the Agreement.
Kimberlee strongly recommended that the IP provisions be rejected,
citing the unnecessarily detailed nature of the agreement, the
considerable costs to libraries, cultural institutions and the
public, and the undesirability of locking Australia in to a particular
IP regime.
This submission has been supplemented in
light of the recent release of the Digital Agenda Review Report
and Recommendations, and some
of the submissions to JSCOT. In this supplementary
submission,
Kimberlee draws particular attention to the anti-circumvention
provisions in the Agreement.
Proposed Resale Royalty Arrangement Submission
A droit de suite entitles visual artists
and their heirs to receive a royalty from the resale of certain
works of art. Recently, there
have been calls for Australia to introduce a resale royalty right
into the Copyright Act. However, academic commentary and empirical
research question whether resale royalties achieve their stated
aims. In particular, evidence demonstrates that resale royalties
tend to accrue to established artists and their heirs, providing
little or no financial benefit to the vast majority of artists.
This Paper, prepared by Emily Hudson and Sophie Waller, discusses whether Australia should introduce a droit
de suite and considers other alternatives to such a scheme. Click here to
read the submission. The Working paper is available on the website
in the publications section.
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