Site icon Duncan Bucknell

Landmark changes to Australian IP law:

The
Intellectual Property Laws Amendment Bill (2006) was passed by the Upper
House of the Australian Federal Parliament on 14 September 2006.

The major
amendments are:

Exemplary damages for patent
infringement based on the behaviour of the infringer (or any other related
matter);

Broader non-infringement rights to
prior secret users of an invention;

A Bolar-type provision —
allowing ‘any patent’ springboarding;

Grant of a compulsory license to a
patent as a remedy for anti-competitive behaviour; and

Wider powers for the Registrar to
revoke Trade Marks after acceptance or after registration.

Comment

The newly
passed Bill is 45 pages long and makes many amendments to the intellectual
property legislation relating to Patents, Trade Marks, Registered Designs and
Plant Breeders Rights in Australia. Links to copies of the Bill and
Explanatory Memorandum can be found in my earlier article ‘Spring-boarding
to catch up with the rest of the world’.

The
following table provides a summary of the most important changes. (The changes to the Designs and Plant
Breeders Rights deal only with formalities and are not included.)

Patents

New Section

Comment

s 122(1A)

Provides
for exemplary damages for patent infringement in relation to:

(a)
flagrant infringement;

(b) the
need to deter similar infringements;

(c) the
conduct of the infringing party after infringement or after being informed
of the allegation of infringement;

(d) the
benefit accrued to the infringing party; and

(e) any
other relevant matter.

Exemplary
damages may be sought in relation to any infringement which occurs after
this section comes into force. So,
it will not apply to currently pending court proceedings unless further
acts of infringement occur.

s 119

Clarification
of the exemption to patent infringement for prior secret use of an
invention by a third party. (Prior
public use does not require the exemption as it would destroy validity.)

Amongst
other things, the section extends the prior user right to all acts of
exploitation, (not just those which had been undertaken prior to the
priority date of the patent). It
also allows transfer of the prior user right to another.

The
exemption will only apply to patents granted after the section comes into
force.

s 119A

A Bolar-type
provision.

This
section which is long-awaited by generic drug manufacturers, provides an
exemption from infringement of a ‘pharmaceutical patent’ if the
acts done are solely for obtaining regulatory approval in Australia or elsewhere. (A ‘pharmaceutical patent’ is
defined as one which claims a pharmaceutical substance or a method, use or
product relating to one).

While the
exemption applies to export for Australian regulatory purposes, it does not
apply to export of goods from Australia, unless the term of the patent has
been extended and the goods contain a pharmaceutical substance per se (or produced by a process
that involves the use of a recombinant DNA technology).

Previously,
springboarding was only allowed in relation to patents which had been
extended.

s 133

s 134

s 136A

Contravention
of Australian competition law in connection with the patent as a ground for
grant of a compulsory license.
Specifically relates to contraventions of Part IV of the Trade Practices Act (restrictive trade practices).

This
applies to any conduct which occurs after commencement of these sections.

s
40(2)(c)

Clarifies
that the claims of Innovation Patents must define the invention. (The same requirement applies to Standard
Patents.)

s 79C

Clarifies
timing for making a divisional application for an innovation patent.

Trade Marks

New Section

Comment

s 38(1)

The
Registrar of Trade Marks now has the power to revoke acceptance of a Trade
Mark prior to registration.

s 84A-D

After giving
the trade mark owner and other interested parties sufficient notice, the
Registrar of Trade Marks may revoke a Trade Mark after registration. Grounds for revocation under this section
are quite broad, and include merely that it is reasonable to do so, taking
account of all the circumstances.

s 173(2)

s 175(2)

Registration
process for certification trade marks (CTM — a trade mark used to
distinguish goods or services which have met specified certification
requirements).

s 217A

s 226A

Establish
a regime for availability and confidentiality of documents filed at the
Trade Marks Office.

Exit mobile version