The Federal Government has released an exposure draft of the Intellectual Property Laws Amendment Bill 2014 (Bill) and a consultation paper seeking comments on the draft by 7 February 2014.
The draft of the Bill is based
on the Intellectual Property Laws
Amendment Bill 2013 (2013 Bill),
which was introduced into parliament in May 2013 but lapsed on the calling of
the September 2013 federal election.
However, several changes have been made to the 2013 Bill.
Crown use
Significantly, the provisions of
the 2013 Bill amending the Crown use provisions in the Patents Act 1990 (Cth) have been removed. These provisions had been intended to implement
one of the outcomes of the Productivity Commission Inquiry into Compulsory
Licensing of Patents, to make it clearer when the Crown use provisions can be
invoked. They would have provided that an
authority or authorised person may exploit a patented invention for the purposes
of providing a service that the Commonwealth, State and/or Territory governments
have the primary responsibility for providing or funding, as long as the Crown had
first attempted to negotiate with the patent owner, and then obtained the relevant
Minister's approval of the Crown use.
Due to concerns that were
raised about the potential breadth of these provisions, they will be the
subject of a further, separate consultation process.
Compulsory licensing of patented pharmaceuticals
for export
Some changes have also been
made from the 2013 Bill to the provisions allowing for the Federal Court to
grant compulsory licences to enable Australian organisations to manufacture generic
versions of patented pharmaceuticals and export them to countries experiencing
health crises. These provisions are
intended to implement the Protocol amending the World Trade Organization
Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement), which was accepted by
Australia in 2007.
As amended, these provisions of
the Bill allow the Federal Court to grant a compulsory licence to exploit (not
merely to 'work', as in the 2013 Bill) a patented invention where the Court is
satisfied that:
- the pharmaceutical product covered by that patent is to be imported to an 'eligible importing country' (which will be specified in regulations by reference to the list annexed to the TRIPS Agreement) by, or with the authorisation of, that country;
- the proposed use of the pharmaceutical product is to address a public health problem in the eligible importing country in circumstances of national emergency or other extreme urgency, or by the public non-commercial use of the product;
- except in circumstances of national emergency or extreme urgency, the applicant has attempted for a period of 30 days to obtain a licence from the owner of the invention; and
- the applicant, the eligible importing country and any importer will take reasonable measures to prevent the pharmaceutical product from being used for a purpose other than addressing the public health problem that the compulsory licence was granted to address.
The provision in the 2013 Bill that allowed for the Federal Court to order a further compulsory licence of any other patent (and the grant of a cross-licence) where the applicant would not be able to exploit the pharmaceutical product without infringing that other patent. Instead, the applicant for a compulsory licence will need to make separate applications in respect of the two inventions (which may, however, be heard together) and there is no provision for the granting of a cross-licence. These provisions had been criticised as being unclear and unnecessary.
Other amendments
The Bill also: - extends jurisdiction in plant breeder's rights matters to the Federal Circuit Court (formerly the Federal Magistrates Court);
- provides for a single trans-Tasman patent attorney regime and single patent application and examination processes for Australia and New Zealand; and
- makes other minor technical and administrative changes to the various intellectual property statutes.
