ACIP details final reform proposals for patent enforcement

Late last year, the Advisory Council on Intellectual Property (ACIP) released its interim report on Post-Grant Patent Enforcement Strategies — our earlier post on that report can be found here. On 19 February 2010, ACIP’s final report was made public. Nine recommendations were made by the ACIP in the report, including, significantly, a proposal for the establishment of an “IP Dispute Resolution Centre” to be coordinated by IP Australia.
In summary, ACIP’s recommendations comprise:

  • IP Dispute Resolution Centre: this Centre would act as a referral point for IP enforcement information. ACIP envisages that the Centre would also facilitate enforcement services, including referrals for mediation, expert assessment and arbitration. The Centre is proposed to be modelled on the WIPO Arbitration and Mediation Centre. The Centre would also oversee a list of experts, for use in assessment and alternative dispute resolution.
  • Patent Tribunal: a Patent Tribunal would also be established (within the Centre) to act as the Centre’s mechanism for determining patent disputes. The recommendation proposes a Tribunal consisting of up to 3 people, drawn from the expert register and including legal and technical experts. The Tribunal would have streamlined procedures and fewer rules of evidence than a court, and would take a more inquisitorial role. However, its decisions would be non-binding. 
  • Patent enforcement resource: the recommendations envisage the establishment of a variety of resources that provide information for IP owners about enforcement mechanisms (to be administered by the Centre). There would also be a requirement that the Commissioner of Patents be provided with information about the outcome of all court actions concerning a patent, which would then be publicly available.
  • Regional support: IP Australia would further its support for the enforcement systems of other countries in the region and broaden its advocacy programs in such countries.
  • Seizure legislation: ACIP also recommends that customs officials be empowered to seize goods in the event a patent owner has notified them of an impending shipment of infringing products.
  • Oppositions: No specific changes to opposition procedures are proposed. Rather, ACIP recommends that IP Australia continue to review opposition processes to identify whether there are grounds for change.

Both the Ergas Review and a 2003 ACIP report recommended not a Patent Tribunal but an extension of the jurisdiction of the Federal Magistrates Court to encompass patent disputes. On both occasions the recommendations were not taken up. With the Federal Magistrates Court currently being wound down, ACIP’s new suggestion of a Dispute Resolution Centre and Patent Tribunal attempts to address the issue in another way. It remains to be seen whether the government will agree with the proposal on this occasion.

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