The “glass half empty” headline: Innovation patent spends Christmas on death row.
The “glass half full” headline: Innovation patent lives to fight another day (year).
Notwithstanding, optimistic and the pessimistic angles will invariably converge early in the New Year, as the fate of Australia’s second-tier “innovation patent” is up there with death and taxes as one of life’s inevitabilities.
Has the innovation patent been abolished?
Not yet, although it is surely now inevitable that it will be. The legislation containing provisions to abolish the innovation patent (amongst other measures; the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019; “the Bill”) was passed in the Senate back in October 2019. It has spent the past two months awaiting effective “rubber stamping” in the House of Representatives in what is the final step in the legislative process prior to Royal Assent.
The House of Representatives had its final sitting for 2019 on 5 December. It does not reconvene until 4 February 2020. At the time of adjournment, the Bill was actually next in line to be read. Technically, and subject to the inevitability of it being passed by the House, the innovation patent indeed lives to fight another year.
Why is passage of the Bill considered inevitable?
The draft legislation has bipartisan support in the House and will easily obtain the numbers required (if not unanimity). When the Bill was before Senate, the Opposition’s support was garnered by extending the “sunset” period for the filing of new innovation patents from the original 12 months to 18 (and by guaranteeing that a Government review of small-to-medium enterprise (SME) innovation was to be undertaken within three months). The Government was seemingly happy to accede to these conditions. Death, taxes and the demise of the innovation patent.
When the Bill passes, what happens then?
Royal Assent generally follows within a month. In the context of the innovation patent, Applicants will then have 18 months within which to file new innovation patent applications (or to convert standard patent applications to innovation patents). Following this date, no new innovation patents can be filed, although existing rights will not be affected.
A summary of the transitional provisions can be found in our earlier article (although note that this earlier article was based upon the original 12-month sunset window; this will be extended to 18, as noted above).
It will be appreciated that upon eight years from the “sunset” date (i.e., itself, 18 months from the date of Royal Assent) all innovation patents will have expired. Ultimately, the innovation patent system is being phased out as opposed to abolished, per se.
As noted above, the next step in the legislative process is that the Bill is passed by the House of Representatives. The next sitting is scheduled for 4 February 2020, and in the absence of a complete reshuffle of the agenda in the interim, the Bill should be first up, or close to it.
What else was included in the legislation?
Although the phasing out of the innovation patent is unquestionably the headline act of the new legislation, it certainly isn’t the only feature. The Bill further purports to amend the Patents Act 1990 to: introduce an objects clause; replace the “reasonable requirements of the public” test in relation to applications for a compulsory licence with a public interest test; provide that only the patentee of a dependent patent can seek a compulsory licence over the use of the original patent; provide for omnibus claims in patent specifications to be removed at stages of consideration subsequent to examination; clarify the Commissioner of Patents’ power to redact sensitive information from patent documents; remove the requirement to file a certificate of verification for documents translated into English, unless required by the regulations; clarify that Crown use can be invoked for the provision of a service that any Commonwealth, state or territory government has the primary responsibility for providing or funding; require governments to seek negotiated outcomes with patent owners before invoking Crown use; and require ministerial authorisation for invoking Crown use if a negotiated outcome is unsuccessful or in emergency situations. The Bill amends the Designs Act 2003 to modify provisions relating to Crown use consistently with the changes to the Patents Act 2003; and Patents Act 1990 and Trade Marks Act 1995 to enable the Patent Office and Trade Mark Office to keep and use their official seal in electronic form when supplying electronic certified copies of documents to customers.
Despite several blog posts claiming the Bill has been passed, it hasn’t (yet). That said, it is literally just a matter of the House getting around to it – and this will surely happen in early February 2020. As always, we will keep readers apprised of progress.
Authored by Gareth Dixon, PhD