Completed Reviews

Review of the relationship between trade marks and business names, company names and domain names
Consideration of Crown Use provisions for patents and designs
Consideration of patents and experimental use
Review of the enforcement of trade marks
Consideration of extending the jurisdiction of the Federal Magistrates Service to patent, trade marks and designs matters
Consideration of a position on the patenting of business systems
Consideration of excluding plant and animal subject material from the innovation patent
Review of the protection of national icons
Review of the Enforcement of Industrial Property Rights (patent enforcement)
Review of the Petty Patent System

Review of the relationship between trade marks and business names, company names and domain names

As a result of concern about confusion created by the interface between trade marks and business names, company names and domain names, the government asked ACIP to examine and report on the relationship between these identifiers.

ACIP released an issues paper and received written submissions. The Council also commissioned market research to test the level of understanding by the business community of the legal standing of business names.

The Federal Government released ACIP's report and media release on 13 April 2006.

Consideration of Crown Use provisions for patents and designs

Various provisions of the patents and designs legislation allow the Crown to use, for its purposes, patents and designs owned by other parties, including the use of such IP without first obtaining the authorisation of the owner. The owner must be notified and compensated, but if the owner considers the proposed compensation is inadequate, they need to apply to a court for a decision on adequate compensation. The underlying purpose of these provisions is that the Crown should not be impeded by patents or designs, (which are Crown grants) from acting in the public interest, particularly in national emergencies. The Crown has also historically been engaged exclusively in public service, rather than commercial activities.

ACIP considered whether these provisions continue to reflect their intended purpose, particularly in light of the widespread corporatisation of government organisations. Other factors ACIP considered include the bargaining power of IP rights owners, particularly small businesses, relative to that of government.

ACIP released a discussion paper and received a number of written submissions. Consultations were held with interested parties in Canberra, Melbourne and Brisbane.

The Federal Government released ACIP's final report and media release on 7 December 2005.

Consideration of patents and experimental use

In recent years, there has been increasing concern, both in Australia and overseas, that patent rights may be inhibiting research and development, particularly in biotechnology.

Australia spends, through public and private sources, considerable funds on research and development. There has also been concern that there has been insufficient return on this investment through commercialisation of research and development in Australia and that inadequate use of the patent system by researchers may play a part in this.

ACIP examined whether some types of patents are inhibiting research and development in Australia and assessed whether both Australian researchers and business would benefit from introducing an experimental use exception provision (or some other provision) into the Australian patent legislation. In examining this question, ACIP considered whether an experimental use exemption would help researchers more effectively use the patent system to commercialise their research and development.

ACIP has released an issues paper (download Acrobat Reader for PDF files) in February 2004 and received a number of written submissions. Consultations were held during June 2004 and an options paper was released in December 2004. A number of written submissions to the options paper were received and considered.

The Federal Government released ACIP's final report and media release on 9 November 2005.

The Government response and a media release were issued on 6 August 2007.

Review of the enforcement of trade marks

ACIP's wide ranging review examined issues effecting the enforcement of trade marks in Australia. 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 Perth, Sydney and Melbourne in April 2002 to consult with stakeholders on the issues paper. ACIP received written comments.

The Federal Government released the report and a media release on 25 May 2004. The Government response and a media release were issued on 7 December 2005.

Consideration of extending the jurisdiction of the Federal Magistrates Service to patent, trade marks and designs matters

The review stemmed from a call from some sectors of industry for a quicker, more cost effective mechanism to deal with IP disputes.

ACIP released an issues paper and a discussion paper (download Acrobat Reader for PDF files) to seek the views of interested parties. The Council received a number of written comments and submissions regarding the review. Consultations were also held with interested parties.

The Government released the report and media release on 19 February 2004. A subsequent media release announcing the Government Response to the report was issued by the Minister for Industry, Tourism and Resources on 5 April 2007.

Consideration of a position on the patenting of business systems

The rapid increase in patenting of business systems such as e-commerce models raised issues relating to what is patentable matter and the impacts on business. ACIP undertook an examination of what approach Australia should take on the patenting of business systems.

ACIP released an issues paper (download Acrobat Reader for PDF files) in July 2002 to seek the views of interested parties. ACIP received a number of written comments, and consultations were held in Melbourne and Sydney in late 2002.

The Federal Government released the report on 25 February 2004, and the Government response to the report and a media release on 26 May 2005.

Consideration of excluding plant and animal subject material from the innovation patent

In May 2001, a new protection option, the innovation patent, became available. The innovation patent provides industry with a relatively inexpensive patent right, which is quick and easy to obtain. The new form of patent provides a similar scope of protection as a standard patent, however it involves a lower inventive threshold than that required for a standard patent.

Immediately prior to the innovation patent legislation going before parliament, concerns were raised over the potential implications of innovation patents to cover innovations relating to plant and animal subject matter. To enable Australians to have timely access to the new patent system, the Government chose to proceed with the legislation, but to exclude plant and animal subject matter.

As a consequence, innovation patents are now available for the same type of subject matter as inventions currently covered by standard patents, but with the exception that they are 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.)

The Parliamentary Secretary to the Minister for Industry, Tourism and Resources, the Hon Warren Entsch MP asked ACIP to examine the matter to assess the implications of the exclusion and to determine whether the exclusion is in the national interest.

ACIP released an issues paper (download Acrobat Reader for PDF files) and sought written comments from interested parties. The written comments/submissions received by ACIP covered a diverse range of views. After analysis of the submissions/comments, the Council concluded that further exploration of the issues is required. ACIP held a round-table discussion with interested parties for this purpose. A summary of the round-table discussions, and overheads used on the day (download Acrobat Reader for PDF files) are available.

Federal Industry Parliamentary Secretary, Warren Entsch released the report on 27 November 2004. The report and media release are now available (download Acrobat Reader for PDF files) or hard copies may be obtained by contacting the ACIP Secretariat kay.collins@ipaustralia.gov.au

Review of the protection of national icons

Following a request from the Government, ACIP reviewed the protection of national icons.

The Federal Government released the ACIP report , along with a media release and the Government response on 2 May 2005.

Review of the Enforcement of Industrial Property Rights (patent enforcement)

Following a request from the Government, ACIP reviewed the enforcement of patents and presented its report to the Minister in March 1999.

The Government responded to both the ACIP report and the Intellectual Property and Competition Review in August 2001.

Review of the Petty Patent System

ACIP's first review was to examine the petty patent system. The recommendations of the report resulted in the Government introducing the innovation patent system, which replaced the petty patent system.