With the incoming of Intellectual Property Amendment (Productivity Commission Response Part 2 and other measures) Act 2020, it provides multiple amendments to the Design Act 2003, Patents Act 1990, and the Trade Marks Act 1995 to phase out the innovation patent system. Due to the act, the applicant will no longer be permitted to file the innovation patent application. This whole issue of phasing out the filing of the innovation patent ensures that the need of Australian small and medium enterprises (SME) be met which is a major part of the Government’s commitment. The IP office does provide resources that will help the SMEs to work in the IP domain, which ranges from providing the SME case management service to the fast track service and also a dedicated outreach program. All resources and another program will be launched as the innovation patent is phased out over the next 18 months.

[Image Source: https://www.ipaustralia.gov.au/patents]

The particular Act has been divided into four categories which provide us eight schedules-

• Schedule 1 – Responses to the Productivity Commission
• Schedules 2 and 3 – Crown use of patents and designs
• Schedule 4 – Compulsory licensing of patents
• Schedules 5 - 8 – Other measures

Schedule 1

There was much question being asked concerning the current IP arrangement. Whether the IP regime does provides any such encouraging innovation and investment and to this, the productivity commission was asked to consider the same. With the government responding to the inquiry, it brings with the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and other measures) Act 2018 to implement Part 1 of the response. This 2020 Act implements Part 2 of the government response. Part 2 specifies a couple of things to implement. The first one is the introduction of the object clause into the Patent Act and the second is the phasing out of the innovation system.  

Through the introduction of the object clause into the Patents Act, it tries to reduce few uncertainties which will help the patent system to remain adaptable. The intent is to clearly articulate the goal which further helps the court to interpret the Patents Act for any such ambiguity. But this object clause does not, in any case, overturn the ordinary structure of the legislation.

For the phasing out of the innovation system few regulatory approaches that the Act undertook:

• No innovation patents will be able to be filed from 26 August 2021 (AEST). The last day you can file an innovation patent will be 25 August 2021.
• Existing innovation patents that were filed on or before 25 August 2021 (AEST) will continue in force until their expiry. This will ensure current rights holders are not disadvantaged.
• You will still be able to file a divisional innovation patent application after 25 August 2021 (AEST), provided that the patent application for the divisional was filed on or before 25 August 2021.
• You will still be able to convert a standard patent application to an innovation patent application provided the standard patent application was filed on or before 25 August 2021 (AEST).  
• No extensions of time will be available for late filings of innovation patents.

These regulatory approaches, in any case, will not affect the SMEs where the government will provide the services to support.

Schedule 2 & 3

This Act tries to bring more transparency in the use of Crown use. Since the applicability of Crown use is at times during the emergency, such act tries to structure the situations in which the Crown use can be used. Bringing few changes, it initiated the process of ministerial oversight and trying to provide better guidance to the courts. Such measures help both the applicant and government on each side. The rights of the applicant and the community’s access to technology must be balanced in a way so that there should not be any dispute.

Schedule 4

Changing the way that compulsory licensing must be granted, it amended the ‘reasonable requirement of the public’ test and replaces it with a 'public interest' test.

Schedule 5 allows that the applicant to use the official seal of the Patent and Trade Mark Office in electronic form while providing any copies of the document to customers. This includes a certified copy of a patent specification to establish a priority date for overseas filings, certificates for trademarks, or as evidence for legal or other proceedings.  Similarly, Schedule 6 allows the applicant to refer to the features of the invention disclosed in the description in various other stages including amendment and acceptance of patent application in Australia. Previously, only those claims were allowed which are necessary to define the invention.  Schedule 7 will help in improving the handling of sensitive information. Schedule 8 removed any such requirement to file any certificate of verification for restoring the priority date to an international application. 

Author: Saransh Chaturvedi an associate at Global Patent Filing,  in case of any queries please contact/write back us at support@globalpatentfiling.com.