Alert

Who does this affect?

Patentees and those considering challenging the validity of a patent.

What do you need to do?

Make submissions to the ACIP before 30 September 2009.

Author
Suzy Groom  
Solicitor

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Kim O'Connell  
Partner
T +61 2 9296 2188

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Sydney
Kim O'Connell  

Melbourne
Robert Cooper  
Wayne McMaster  

Brisbane
John Swinson  

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Following calls from patent holders about the difficulties associated with enforcing patent rights, in November 2006 the Advisory Council on Intellectual Property published an Issues Paper to gather information and stimulate public discussion about patent enforcement issues. The Interim Report follows submissions and consultation with parties in Canberra, Sydney and Melbourne, and seeks further submissions on the reforms which are proposed in the Report.

Some of the proposals include:

Establishing an IP dispute resolution centre

The Council proposes the establishment of an IP dispute resolution centre, based on the World Intellectual Property Organisation’s Arbitration and Mediation Centre. The centre would provide a validity and infringement opinion service and a register of experts with suitable qualifications to provide mediation and non-binding expert assessment services. These experts would also serve as members of a Patent Tribunal which would provide non-binding determinations.

Opinion service

It is proposed that the validity and infringement service be provided along the lines of the service provided by the UK Intellectual Property Office, which is intended to provide a quick and simple opinion following the exchange of written submissions or observations. It is thought the service would promote settlement of disputes without having to resort to expensive and lengthy litigation.

Register of experts

The register of experts would include specialists from different fields who could provide mediation and expert assessment services to assist in narrowing the issues in dispute. The assessment would also provide parties an objective, non-binding view on the likely outcome of certain issues, the extent of the parties’ respective rights, and the strength and weaknesses of each of their cases.

Patent Tribunal

The proposed IP dispute resolution centre would also include a Patent Tribunal, comprising both legal and technical experts who would make non-binding determinations quickly and inexpensively. The Council also suggests that parties should be encouraged to accept and comply with determinations by requiring a Court, in any subsequent litigation about a matter which was the subject of a determination, to take the Tribunal’s determination into account when considering damages and costs.

Access to information about the outcome of court proceedings

The Council is also of the view that both the Patents Act and the relevant court rules should be amended to ensure that information about the outcome of legal proceedings is provided to the Commissioner of Patents. While the Commissioner must already be informed about the commencement of legal proceedings and the making of an order revoking or granting a compulsory licence over a patent, the Council was of the view that other orders, such as those relating to infringement, should also be provided, and that this information should be publicly available through searches of patent databases.

Streamlining of Court processes

The Council acknowledged that significant measures have been taken to improve the efficiency of patent litigation in the Courts, however that more needs to be done. The Council proposes, among other initiatives, that specialist judges be recruited to decide patent matters and that the discovery process be amended to reduce the associated cost and delay.

Foreign systems and border control

The Report also recommends that IP Australia should continue its efforts to assist other countries to improve their patent enforcement systems, as well as assisting Australian patent owners to enforce their patents overseas by providing information about foreign enforcement regimes. The Council also proposes that patent holders be given an opportunity to alert Customs about the imminent arrival of purportedly infringing products, and for Customs officials to be empowered to seize goods at the border. This however, is likely to be problematic due to the delay which may be associated with resolving the dispute and the competing priorities of Customs officials.