More patent changes on the way: compulsory licensing and a trans-Tasman regime

In what has already been a big year for changes to IP legislation in Australia (especially for patent law), more changes are on the way. Not to be confused with the reforms made under the Intellectual Property Law Amendment (Raising the Bar) Act 2012 (Cth), a new Intellectual Property Laws Amendment Bill 2013 (Cth) (‘the Bill’) was introduced into the Australian Parliament on 30 May 2013.

The changes may not be as extensive as the Raising the Bar amendments, however important changes to patent law are proposed by the Bill:

1. ‘Crown use’ of patents

The Bill clarifies the scope of ‘crown use’, which involves the Commonwealth or a State exploiting an invention without needing the authorisation of the patent holder or applicant. (For further detailed analysis on these proposed changes, see our previous post here.)

2. TRIPS Protocol amendments for compulsory licensing of pharmaceutical patents

The World Trade Organisation Agreement on Trade Related Aspects of Intellectual Property Protocol (‘the TRIPS Protocol’) aims, amongst other things, to permit least-developed and developing countries to manufacture or access important patented medicines for treating public health problems such as HIV/AIDS, tuberculosis and malaria.

Australia accepted the TRIPS Protocol in 2007 and the amendments contemplated by the Bill would comply with Australia’s obligations. The proposed scheme enables Australian pharmaceutical manufacturers to apply to the Federal Court for compulsory licenses to manufacture and export patented pharmaceutical inventions (“PPIs”) for the purpose of providing these medicines to eligible developing countries. It is contemplated that patentees will be compensated with an amount either agreed between the patentee and the applicant, or determined by the Federal Court to be adequate remuneration, taking into account the economic value to the eligible importing country of the use authorised by the compulsory license. (See our previous post on the Bill’s 2012 exposure draft here.)

3. Federal Circuit Court given jurisdiction over Plant Breeders’ Rights

Proposed amendments to the Plant Breeders’ Rights Act 1994 (Cth) under the Bill allow owners of plant breeders’ rights to take action in the Federal Circuit Court (formerly the Federal Magistrate’s Court), in addition to the Federal Court. The FCC is generally a cheaper, quicker and less formal forum, and the amendments acknowledge that plant breeders’ rights disputes are generally less complex than other IP matters, and often involve small businesses with more limited resources.

4. Unified patent applications and examinations and patent attorney regimes in Australia and New Zealand

The Bill further provides for streamlined patent application and examination procedures across Australia and New Zealand, acknowledging the fact that many patent applications are filed in both countries. Under the new single examination model, patent applications for the same invention would be examined by a single examiner in either country. Different national laws would still be applied and separate patents granted, however the amendments aim to reduce unnecessary administrative duplication.

The Bill also introduces a trans-Tasman patent attorney regime, again acknowledging that many Australian and New Zealander patent attorneys are registered in both countries. Common qualifications for registration as a patent attorney, a trans-Tasman IP Attorneys’ Board and a single trans-Tasman IP Attorneys Disciplinary Board are all proposed.

Lapsing of the Bill

Since the Bill was before the Senate when Parliament was prorogued on 5 August 2013 in anticipation of this week’s Federal election, it will be deemed to lapse immediately before the commencement of the next Parliament. Where there has been prorogation followed by a dissolution and a general election, the Bill may not be revived. Instead it will need to be reintroduced when Parliament sits again.