Australia: Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020

February 27, 2020

Australia: The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 received Royal Assent on February 26, 2020. The Act contains eight schedules and enters into force on different dates: February 27, 2020 (Schedule 1, Part 1 and Schedules 2 to 7), August 26, 2020 (Schedule 8) and August 26, 2021 (Schedule 1, Part 2).

The Act follows the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018, and amends the Designs Act 2003, the Patents Act 1990 and the Trade Marks Act 1995, which include, inter alia, the following elements:

(i) incorporating an objects clause (a statement of objectives) to the Patents Act (see Schedule 1, Part 1) to provide additional clarity and guidance on the purpose and application of the Act;

(ii) phasing out of the Australian innovation patent system, providing that new applications for innovation patents shall not be filed from August 26, 2021 (see Schedule 1, Part 2);

(iii) introducing measures to improve the Crown use provisions of patents and designs, which allow the Government to exploit certain patented inventions or designs to deal with an emergency or other public interest issue without authorization from the patentee or registered owner (see Schedules 2 and 3);

(vi) changing the test applied by courts to grant a compulsory license over a patent from a "reasonable requirement of the public" test to a "public interest" test (see Schedule 4); and

(v) making a number of minor amendments to the Patents and Trade Marks Acts, including: enabling the Patent Office and Trade Mark Office to keep and use their official seal in electronic form when supplying electronic certified copies of documents to customers; expanding consideration of restrictions on "omnibus claims" in patent specifications to additional stages of a patent's life cycle; clarifying the Commissioner of Patents' power to redact sensitive information from patent documents; and removing the requirement to file a certificate of verification for documents translated into English, unless required by the regulations (see Schedules 5 to 8).