Is the government being tough enough on post-grant enforcement?

Following from our previous post, on 3 June 2011, the Federal Government released its responses to the Advisory Council on Intellectual Property (ACIP) report entitled Post-Grant Patent Enforcement Strategies.  In its report, ACIP made a number of recommendations to reduce the existing barriers to the enforcement of patent rights in Australia, especially for small and medium sized enterprises.  ACIP proposed a number of legislative and procedural changes to the Australian patent system, including:

  • the development of a IP dispute resolution centre and an associated panel of experts who could provide IP assessments, mediation and arbitration;
  • the creation of a Patents Tribunal, with the power to make binding decisions in relation to patent disputes;
  • providing more information regarding patent enforcement in Australia to patentees; and
  • providing customs and border officials with greater power to seize infringing goods before then enter Australia.

Of these recommendations, the Government’s response was that it would:

  • promote the use of alternative dispute resolution mechanisms for patent disputes, such as providing a register of accredited ADR providers on the IP Australia website.  However the Government did not consider it appropriate to increase the powers of IP Australia to act as a post-grant mediator for patent disputes;
  • provide greater information on the IP Australia website regarding the enforcement of patent rights;
  • provide information regarding court proceedings on the IP Australia website;
  • promote the continued interaction and co-operation between IP Australia and similar regulatory bodies worldwide (especially in the Asia Pacific region), although the Government was not prepared to provide additional budget to expand its advocacy programs with other countries; and
  • continue to monitor any changes in the pre-grant opposition process in other countries.

However, the Government would not:

  • create a separate Patents Tribunal for the determination of patent disputes, as such a tribunal would:
    • be unconstitutional; and
    • potentially increase the costs of patent enforcement by merely adding another layer of appeal, by creating uncertainty and by potentially wasting significant time and cost for patentees; or
  • expand the powers of customs and border officials to seize infringing goods as such officials do not have the required skills to make decisions regarding patent matters and as the Federal Court is able to make an order injuncting the entry of goods into Australia if necessary.

On this basis, it seems that the Government’s response is limited to bolstering the information available on the IP Australia website.  This is unlikely to meet the ACIP objectives of reducing barriers to enforcement.

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