Alert

Who does this affect?

Patent holders, trade mark users, start-up companies, generic companies, any company which uses or develops patentable technology, and any other person with an interest in the grant of patents and trade marks.

What do you need to do?

Read the discussion papers and make any submissions by 17 August 2009. Mallesons can assist with preparation of any submissions.

Author
Christina Taylor  
Solicitor

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Kim O'Connell  
Partner
T +61 2 9296 2188

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Scott Bouvier  
Partner
T +61 2 9296 2472

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Sydney
Maurice Gonsalves  

Melbourne
Robert Cooper  
Wayne McMaster  

Brisbane
John Swinson  

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IP Australia has released three further consultation papers outlining proposed reforms to the IP Rights System in Australia. Any organisation which has an interest in the processes subject to review may make a written submission to IP Australia by 17 August 2009.

The consultation papers are:

• Resolving divisional applications faster

• Resolving patent opposition proceedings faster

• Resolving trade mark opposition proceedings faster

These papers can be accessed via the IP Australia website.

IP Australia states that the proposed reforms are directed at reducing the period of uncertainty during which the public and third parties do not know where they have freedom to operate. A number of changes are proposed concerning timing, evidence and processes involved with divisional applications and opposition proceedings for patents and trade marks.

Of particular interest is the expansion of the Federal Court’s powers to amend patent applications during appeals from decisions of the Commissioner, and the introduction of a cooling-off period that can be invoked by parties involved in a trade mark opposition.

Federal Court to amend patent applications

Currently, it is not clear whether the Federal Court can direct amendment of a patent application during an appeal from a decision of the Commissioner made in opposition proceedings.

IP Australia has also identified that restricting the Federal Court to consideration of the unamended patent application is inefficient. The following changes are proposed:

• The Federal Court be given power to amend a patent application (where requested by the patent applicant) during an appeal of a decision of the Commissioner.

• The Federal Court be allowed to consider any amendments proposed or made to a patent application since the decision of the Commissioner.

• The Commissioner will not be able to amend a patent application whilst the decision is on appeal before the Federal Court. Such amendments are to be made by the Federal Court.

Introduction of a cooling-off period

Introduction of a cooling-off period which could be invoked during trade mark opposition proceedings has also been proposed. If the parties agree to the cooling-off period, the opposition proceedings will be suspended for six months to allow the parties to negotiate a settlement of the proceedings. If negotiations are unsuccessful, formal opposition proceedings would re-commence.

This has been proposed as other reform proposals would effectively reduce the possibility of using the general provisions in the Act to facilitate negotiations.

Any organisation which has an interest in the processes subject to review may make a written submission to IP Australia. Submissions are to be made by 17 August 2009.

(For further information on the other proposed reforms please refer to Mallesons’ previous alert dated 3 April 2009: Australia gets inventive: major changes to Patents Act proposed).