Further amendment to Australian IP Laws

Australian IP laws are set for another shake up. Key changes originally proposed by the Productivity Commission have been supported by the government in a response released 25 August 2017. These changes include, abolishing the innovation patent, raising the standard of inventive step for patents, and altering the plant breeder’s rights system amongst others.

A copy of the Australian government’s response can be found here.

Key recommendations which are supported by the Australian Government are:


- Abolish the innovation patent

- Increase the standard of inventive step to a standard similar to that applied by the EPO

- Introduce an objects clause to the Patents Act 1990 as statement of clear legislative intent for the Courts.

- Introduce a requirement to identify the technical features of the invention in the set of claims.

Trade Marks

- Reduce the period before which new registrations cannot be challenged for non-use from 5 to 3 years.

- Amend the Trade Marks Act to more clearly allow for legitimate parallel importing of goods.

- Have IP Australia return to its former practice of routinely challenging trade mark applications that contain contemporary geographical references.

Plant Breeders Rights

- Enable essentially derived variety declarations to be made in respect of any variety.

Call for submissions

IP Australia has acted quickly to open public consultation on legislative change to implement several of the above recommendations. Five discussion papers have been released with a deadline for submissions of 17 November 2017. The five papers are:

Paper 1: Amending inventive step requirements for Australian patents

Paper 2: Introduce an objects clause into the Patents Act 1990

Paper 3: Crown use of Patents and Designs (in response to the 2013 Productivity Commission report on compulsory licensing)

Paper 4: Compulsory Licensing of Patents (in response to the 2013 Productivity Commission report on compulsory licensing)

Paper 5: Introducing divisional applications for international trade marks (unrelated to the Productivity Commission report)

Copies of these papers can be found here.

We will keep you informed of the progress of these reforms, including any important dates. Please let us know if you require any further information or assistance.

David Nowak - September 2017

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