IP AUSTRALIA
Intellectual property reform is a hot issue in the new decade. The US signed its patent reform into law in 2011 and European patent reform is almost a reality. Now it is Australia’s turn. WIPR talks to IP Australia director general Philip Noonan about renovating an entire IP system.
Australia’s Intellectual Property Laws Amendment Bill 2012 has been dubbed the ‘Raising the Bar’ bill. Branding the bill in this way highlights what legislators hope it will achieve for intellectual property and innovation in Australia. T e bill is aimed at raising IP standards in Australia and aligning them with those in other major IP markets, so that Australia can maintain high skilled and high paying jobs in a knowledge economy that innovation of all kinds can sustain.
T e Raising the Bar bill is a “comprehensive renovation” of Australia’s IP laws, says Philip Noonan, director general of IP Australia, which administers rights, including patents and trademarks, in Australia. T is renovation was necessary because Australia’s IP system has, as does any regulatory system, developed weaknesses.
“T ese come about through quirks in the legislative draſt ing, or surprising court decisions, or the system-players get used to the rules and learn how to use some of the procedures to their advantage, but in a way that’s unfair to others,” Noonan explains. “T e bill fi xes a whole range of problems of this nature.”
Signifi cantly, aspects of Australia’s patent law do not match international standards. T e bill borrows wording from similar legislation in Europe and the US to address this problem. Noonan says: “T e benefi t for Australian applicants is that once they achieve an Australian patent, they should be more confi dent that they’ll be able to get the same general level of protection in major export markets.
“T e other thing that the bill does more generally is reduce costs for all applicants, not only through aligning the standards, but also in other areas where we’re making processes faster and easier and eliminating a whole lot of little traps that can catch people out. T e overall aim is to enable everyone to spend less time and money on their IP applications and more on actually innovating.”
A trap that has ensnared patent applicants in the past is additional limitations on prior art that can be cited in a patent application, which goes
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above and beyond the typical ‘publicly available’ requirement. “T e prior art had to be ascertained and understood, as well as publicly available,” says Noonan. “T e new bill has taken away those extra glosses which can, arguably, lead applicants to think there’s an extra test in the application process, or even less prior art that’s applicable in Australia. Instead, it’s similar to other national standards. Nowadays, if it’s publicly available, then it’s prior art.”
T e bill’s main provisions will come into eff ect 12 months aſt er the Governor General gives assent to the bill, which is expected to be soon. Once the bill passes this stage, a new research exemption that grants free access to patented inventions for regulatory approvals and research will come into immediate eff ect.
“T e common law allows a certain amount of experimentation on a patented product without the patent being infringed, but the scope of that is quite unclear and we’ve had a couple of awful cases where researchers have been intimidated and prevented from carrying out their research by a cease and desist letter from a patent owner,” explains Noonan.
“Ministers have said that we need to ‘set our researchers free’, allowing them to do their research without having to look over their shoulder and worry about infringing a patent. This should help generic drug manufacturers to do the preparatory work they need to do before coming to market with their products.”
T e exemption has received praise from both Medicines Australia, which represents pharmaceutical originators, and the Generic Medicines Industry Association. Noonan says: “We’ve tried to achieve a balance between the need for researchers to go about their business without fear of litigation and the needs of patent owners. T e exemption applies only to research, so that once an improved invention has been found and is about to be commercialised, the researcher, or whoever has done the research, must enter into a licensing agreement with the original patent owner. So both the researcher and the patent owner have their legitimate interests protected.”
World Intellectual Property Review March/April 2012 29
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