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2002
THE
PARLIAMENT OF THE COMMONWEALTH OF
AUSTRALIA
HOUSE OF
REPRESENTATIVES
INTELLECTUAL
PROPERTY LAWS AMENDMENT BILL
2002
EXPLANATORY
MEMORANDUM
(Circulated by authority of
the Parliamentary Secretary to the Minister for Industry, Tourism and Resources,
the Hon Warren Entsch MP)
INTELLECTUAL PROPERTY LAWS AMENDMENT BILL 2002
OUTLINE
This Bill amends the Patents Act 1990, the Trade Marks Act 1995 and the Designs Act 1906 to clarify that errors or omissions by persons such as independent contractors are encompassed by the existing extension of time provisions. Currently, these Acts provide that a person must be granted an extension of time if a relevant time period was not complied with because of an error or omission by the Commissioner of Patents, the Registrar of Trade Marks, the Registrar of Designs or an employee of the relevant office.
The Patent, Trade Marks and Designs Offices often use the services of independent contractors or consultants during the processing of applications, such as the use of a courier service to transport documents from a sub-office to the central office in Canberra, or a private company for maintenance of information systems or storage of data. These amendments will make it clear that the extension of time provisions encompass errors and omissions by these parties.
As a consequence of these changes, the term ‘trade marks officer’ has been removed from the Trade Marks Act and the concepts that were encompassed by this term have been moved to the definition of ‘employee’.
The Bill also amends subsection 45(3) and section 101D of the Patents Act, which deal with the disclosure of information to the Commissioner of Patents that is relevant to the patentability of an invention.
These provisions were previously amended by the Patents Amendment Act 2001 as part of the Backing Australia’s Ability initiatives. However, based on initial experience with the new provisions, it has recently become apparent that those amendments will not achieve the Government’s policy objectives because they lack certainty and impose an undue burden on applicants and patentees. The amendments in this Bill narrow the scope of the information covered by these provisions to provide an effective disclosure regime that reduces the burden on applicants and patentees while still ensuring that relevant information is disclosed.
This Bill also makes a minor, technical amendment to correct a drafting error in the Patents Amendment (Innovation Patents) Act 2000.
No additional cost to the Government or to any other person is expected to directly result from these amendments. The amendments to subsection 45(3) and section 101D of the Patents Act should reduce the costs to patent applicants.
NOTES ON INDIVIDUAL CLAUSES
1. This clause provides for the Act to be cited as the Intellectual Property Laws Amendment Act 2002.
2. This clause provides for the commencement of each Schedule to this Bill.
Clause 3 — Schedule(s)
3. This clause provides that each Act specified in a Schedule to this Bill is to be amended or repealed according to the relevant provisions of that Schedule. Any item in a Schedule has effect according to its terms.
Item 1 — Subsection 27B(1)
4. This item amends subsection 27B(1) of the Designs Act 1906 to clarify that an extension of time for doing a relevant act must be granted if a relevant time period was not complied with because of an error or omission by a person, such as an independent contractor or consultant, who is providing, or proposing to provide, services for the benefit of the Designs Office. For the purposes of this provision, the person does not need to be directly contracted with the Designs Office — it is sufficient if they are providing, or proposing to provide, any service for that Office.
Item 2 — Subsection 223(1)
5. This item amends subsection 223(1) of the Patents Act 1990 to clarify that an extension of time for doing a relevant act must be granted if a relevant time period was not complied with because of an error or omission by a person, such as an independent contractor or consultant, who is providing, or proposing to provide, services for the benefit of the Patent Office. For the purposes of this provision, the person does not need to be directly contracted with the Patent Office — it is sufficient if they are providing, or proposing to provide, any service for that Office.
Item 3 — Reader’s Guide (List of terms defined in section 6)
6. This item deletes the term ‘trade marks officer’ from the list of terms defined in section 6 of the Trade Marks Act 1995.
Item 4 — Section 6 (definition of trade marks officer)
7. This item deletes the definition of the term ‘trade marks officer’ from section 6 of the Trade Marks Act. This amendment is a consequence of the amendment to subsection 224(1) made by item 5 of this Schedule.
Item 5 — Subsection 224(1) (including the note)
8. This item amends subsection 224(1) of the Trade Marks Act to clarify that an extension of time for doing a relevant act must be granted if a relevant time period was not complied with because of an error or omission by a person, such as an independent contractor or consultant, who is providing, or proposing to provide, services for the benefit of the Trade Marks Office. For the purposes of this provision, the person does not need to be directly contracted with the Trade Marks Office — it is sufficient if they are providing, or proposing to provide, any service for that Office.
Item 1 — Section 3 (list of definitions)
9. This item inserts the term ‘foreign patent office’ into the list of definitions in section 3 of the Patents Act.
Item 2 — Subsection 45(3)
10. This item amends subsection 45(3) of the Patents Act to require that an applicant for a standard patent must provide the Commissioner of Patents with the results of any searches conducted by, or on behalf of, a foreign patent office and any prescribed searches. The required searches are limited to those carried out for the purposes of assessing the patentability of an invention disclosed in the complete specification or in a corresponding application filed overseas. In each case, the searches required are limited to those completed before the grant of the Australian patent.
11. This item amends section 101D of the Patents Act to require that a patentee must provide the Commissioner with the results of any searches conducted by, or on behalf of, a foreign patent office and any prescribed searches. The required searches are limited to those carried out for the purposes of assessing the patentability of an invention disclosed in the complete specification or in a corresponding application filed overseas. In each case, the searches required are limited to those completed before the issue of a certificate of examination on the patent.
Item 4 — Schedule 1 (Dictionary)
12. This item adds the term ‘foreign patent office’ to the definitions in Schedule 1 to the Patents Act. This term is intended to cover all overseas patent offices, including regional offices which grant patents in respect of more than one country.
13. This item provides for the application of the amendments to subsection 45(3) and section 101D of the Patents Act. The amendment to subsection 45(3) applies to any standard patent application that had not been accepted before 1 April 2002. The amendment to section 101D applies to any innovation patent that the Commissioner had not begun to examine before 1 April 2002.
14. These amendments will therefore apply to the same applications and patents as the previous amendments to these provisions, which were made by the Patents Amendment Act 2001. This will mean that the new disclosure arrangements will completely replace the old and any obligation on an applicant or patentee to comply with the old provisions will be replaced by an obligation to comply with the new provisions. In addition, subitems (3) and (4) provide that any information provided under the old provisions is taken to have been provided under the new provisions and therefore does not need to be submitted again.
Item 6 — Section 6 (definition of employee)
15. This item amends the definition of the term ‘employee’ to refer to a person, other than the Registrar of Trade Marks or a Deputy Registrar, who is a person employed under the Public Service Act 1999 and is employed in the Trade Marks Office, or is not such a person but performs services in that Office for, or on behalf of, the Commonwealth.
Item 7 — Subsection 206(1)
16. This item amends subsection 206(1) of the Trade Marks Act as a consequence of the amendment made by item 6 of this Schedule.
Part 3 ¾ Technical amendment
Patents Amendment (Innovation Patents) Act 2000
Item 8 ¾ Item 3 of Schedule 1
17. This item corrects a drafting error in the Patents Amendment (Innovation Patents) Act 2000.