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Completed Reviews
TABLE 1: Completed ACIP reviews
These 14 reviews covered 150 recommendations (including sub-recommendations) with the Government accepting 108 (72 percent) of these. Only 28 recommendations (19 percent) were not accepted by the Government. Figure 1 (below) graphically depicts the numbers of ACIP recommendations that have been responded to by the Government. The Government is yet to respond to the 6 recommendations contained in ACIP’s most recently completed Review.
Figure 1: Recommendations in completed ACIP Reviews
Of note are the 8 recommendations (5 percent) that were ineffective. Some of these recommendations were directed to matters that were outside the Australian Government’s jurisdiction and hence could not be changed by the Government. The remaining ineffective recommendations were directed to matters that were already dealt with in existing legislation, and hence, no changes to existing practices/processes were required.
Implementation of ACIP’s Recommendations
Of the 108 recommendations (including sub-recommendations) that the Government has accepted, 47 have been implemented as of 1 October 2012. The implementation of another 48 recommendations is pending either the final implementation of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012—scheduled for April 2013—or the introduction and passing of later amending legislation. One accepted recommendation from the Review of enforcement of Plant Breeder's Rights requires further consultation to determine its feasibility prior to any possible implementation.
The Government is not planning to implement 12 of the accepted recommendations. This is largely due to the accepted changes being inconsistent with current policies and practices. Figure 2 (below) graphically depicts the implementation of ACIP’s recommendations.
Figure 2: Implementation of Accepted Recommendations
Collaborations between the Public and Private Sectors: The Role of Intellectual Property
Responding to concerns raised about the low level of collaborations between business, universities and other publicly-funded research organisations (PFROs), the Australian Government asked ACIP to conduct a review these collaborations. This Report identifies important factors that affect the formation and operation of collaborations, and includes recommendations on how these can be improved. Specifically, it looks at the role of IP and how it acts as an enabler or disabler. Consistent with the terms of reference, ACIP also sought to identify other important factors. In preparing this report ACIP benefited from consultations with industry, universities, public research agencies, representatives of the Government and other relevant organisations and research bodies. The Australian Government released ACIP's Final Report on 8 November 2012.
The Government is presently considering its response to this Report.
Review of Patentable Subject Matter
In its broad ranging 2004 review of gene patenting and human health, the Australian Law Reform Commission (ALRC) found that the ‘manner of manufacture’ test used in Australia to determine patentability was ambiguous and obscure. As a result, the Australian Government asked ACIP to conduct a review of patentable subject matter, including the appropriateness and adequacy of the ‘manner of manufacture’ test. During 2008-09, ACIP released an Issues Paper, conducted a number of public forums and then released an Options Paper setting out a number of possible options for reforming the law. ACIP’s Final Report was released on 16 February 2011. The Australian Government responded to ACIP’s Report on 23 November 2011 as part of its response to the Senate Community Affairs References Committee’s Gene Patents Report.
Review of enforcement of Plant Breeder's Rights (PBR)
Responding to concerns raised about difficulties in enforcing plant breeder's rights, the Australian Government asked ACIP to conduct a review of the enforcement of plant breeder's rights. The Review included consideration of whether the jurisdiction of the Federal Magistrates Court should be extended to include PBR matters. ACIP released an Issues Paper in March 2007 to seek the views of interested parties and forums were held in June and July 2007. ACIP released an Options Paper in June 2008 which identified options with potential to assist the enforcement of PBR. The Australian Government released ACIP's Final Report on 18 January 2010 and the Government response was issued on 3 June 2011.
Review of post-grant Patent Enforcement Strategies
Responding to concerns raised about difficulties in enforcing patent rights, the Australian Government asked ACIP to conduct a review of post-grant patent enforcement strategies. ACIP released an Issues Paper in November 2006 to seek the views of interested parties and a number of forums were held in October 2007. On 21 August 2009, ACIP released an Interim Report reflecting ACIP’s current views and outlining a number of proposals to address the enforcement concerns of patent rights holders. The Australian Government released ACIP's Final Report on 19 February 2010 and the Government response was issued on 3 June 2011.
Review of the relationship between trade marks and business names, company names and domain names
The Australian Government asked ACIP to examine and report on the relationship between trade marks and business names, company names and domain names as a result of concerns raised about the confusion created by these identifiers. ACIP released an Issues Paper in January 2004. ACIP also commissioned market research to test the level of understanding by the business community of the legal standing of business names. The Australian Government released ACIP's Final Report on 13 April 2006.
The Australian Government did not issue a response to ACIP’s report. Rather, on 3 July 2008, the Council of Australian Governments (COAG) approved the establishment of a national business name registration system as part of CAOG’s reform agenda to deliver a Seamless National Economy. This registration system is scheduled to commence operation in mid-2012 and addresses a majority of ACIP’s recommendations.
Consideration of Crown Use provisions for patents and designs
Following concerns raised about the misuse of Crown use provisions, the Australian Government asked ACIP to review whether these provisions in patents and designs legislation continue to reflect their intended purpose—particularly in light of the widespread corporatisation of government organisations. ACIP released a Discussion Paper in December 2003 and forums were held during 2004. The Australian Government released ACIP's Final Report on 7 December 2005.
The Australian Government did not issue a response to ACIP’s report as there was no substantial evidence that the Crown use provisions were being misused. Rather, letters were sent to Commonwealth Ministers, and to State and Territory innovation and local government Ministers, outlining their government’s obligations when exercising their rights to Crown use of patents and designs.
Consideration of patents and experimental use
In the early 2000s, there was increasing concern, both in Australia and overseas, that patent rights might be inhibiting research and development, particularly in biotechnology. Following on from these concerns, the Australian Government asked ACIP to examine whether some types of patents were inhibiting research and development in Australia and whether there would be benefits from introducing an experimental use exception provision into Australia’s patent legislation. ACIP has released an Issues Paper in February 2004 and forums were held during June 2004. An Options Paper was released in December 2004. The Australian Government released ACIP's Final Report on 9 November 2005 and the Government response was issued on 6 August 2007.
Consideration of a position on the patenting of business systems
In the late 1990s – early 2000s there was a rapid increase in the patenting of business systems such as e-commerce models. This increased patenting activity raised issues regarding patentable subject matter and the impacts that these patents have on business. Responding to these concerns, the Australian Government asked ACIP to undertake an examination of what approach Australia should take on the patenting of business systems. ACIP released an Issues Paper in July 2002 to seek the views of interested parties and public forums were held in late 2002. The Australian Government released ACIP’s Final Report on 25 February 2004 and the Government response was released on 26 May 2005.
Consideration of excluding plant and animal subject material from the innovation patent
The innovation patent system commenced in May 2001 for the same type of subject matter as inventions covered by standard patents, except that they were not available for plants and animals, or biological processes for the generation of plants and animals. This exclusion does not apply if the invention is a microbiological process or a product of such a process. Following on from this, the Australian Government asked ACIP to assess the implications of the exclusion and to determine whether the exclusion is in the national interest. ACIP released an Issues Paper in mid-2002 and held a round-table discussion with interested parties to explore the diverse issues raised. The Australian Government released ACIP’s Final Report and its response on 27 November 2004.
Review of the protection of national icons
The Australian Government had been repeatedly approached by organisations and individuals asking for special trade mark protection for symbols and identifiers which they believe to be ‘national icons’. There are a number of mechanisms in intellectual property, corporations statutes and the common law that could be used (or adapted for use) to protect some icons in particular ways. Consequently, the Government asked ACIP to review the protection of national icons. The Australian Government released the ACIP’s Final Report and the Government response on 2 May 2005.
Consideration of extending the jurisdiction of the Federal Magistrates Service to patent, trade marks and designs matters
In the mid-late 1990s, some sectors of industry lobbied the Australian Government for a quicker, more cost effective mechanism to deal with IP disputes. Following this lobbying, and the introduction of the Federal Magistrates Service (FMS), the Australian Government asked ACIP to examine and report on the possibility of the FMS jurisdiction being extended to hear IP matters. ACIP released an Issues Paper in July 2001 to seek the views of interested parties and forums were also held with interested parties. A Discussion Paper was released in July 2002. The Government released ACIP’s Final Report on 19 February 2004 and the Government Response was issued on 5 April 2007.
Review of the enforcement of trade marks
This wide ranging review examined issues affecting the enforcement of trade marks in Australia and followed on from ACIP’s earlier Review of the Enforcement of Industrial Property Rights. ACIP conducted a series of discussions with the business community (including both small and large businesses) in all capital cities, and subsequently developed an Issues Paper. ACIP also held public seminars in April 2002 in a number of State capitals to consult with stakeholders on the Issues Paper. The Australian Government released ACIP’s Final Report on 25 May 2004 and the Government response was issued on 7 December 2005.
Review of the Enforcement of Industrial Property Rights (patent enforcement)
Following a request from the Australian Government, ACIP reviewed the enforcement of industrial property rights in Australia. During the course of the review, ACIP concluded that there were fundamental differences between the enforcement of patents and trade marks. Consequently, ACIP restricted this review to patent enforcement matters and the enforcement of trade mark matters was made the subject of a later ACIP review. The Australian Government released ACIP’s Final Report in March 1999. The Australian Government responded to ACIP’s report in August 2001 as part of its response to the Intellectual Property and Competition (IPCR) Committee’s review on the interaction and appropriate balance between competition policy and intellectual property legislation.
Review of the Petty Patent System
The Australian Government asked ACIP to review the petty patent system in response to recommendations made in a report (The Role of Intellectual Property in Innovation) to the Prime Minister’s Science and Engineering Council. ACIP released an Issues Paper in October 2004 and held a number of public forums. A Draft Report was released in March 1995 and further consultations followed. ACIP’s Final Report was released in August 1995 and the Australian Government response was released in February 1997.
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