Tony Conaghan

Raising the bar part 10: Concluding comments

Tony Conaghan

29 May 2013

Patents Trade marks

Thomsons’ ‘Raising the Bar’ series has outlined over the course of the preceding few months, the key features of this legislation’s introduction into our IP system, some of which include:

Trade Marks

  • streamlined opposition processes;
  • heavier onus in preparing evidence and seeking extensions of time;
  • a¬†crack-down on disingenuous use of dispute mechanisms;
  • assigning Courts / governing bodies more flexibility through increased delegation to Regulations instruments;
  • increased facility to enforce trade mark infringements, particularly in relation to Customs processes and the introduction of punitive damages as well as the Federal Circuit Court of Australia’s broadened jurisdiction over all Trade Marks Act matters;
  • improving professional services eg. by extension of client privilege to overseas IP professionals; and
  • a simplified, two-fold test for a mark’s inherent adaptation to distinguish.


  • more rigorous thresholds for application processes, particularly relating to inventiveness, innovative steps and usefulness;
  • stricter specification requirements and examination processes;
  • introduction of the preliminary search and opinion (PSO);
  • streamlining processes (focusing particularly on opposition proceedings and divisional patent applications as sources of delay);
  • improving professional services eg. by extension of client privilege to overseas IP professionals;
  • introduction of the ‘regulatory use exception’ to allow generic producers to seek approvals;
  • introduction of the ‘experimental use exception’ to foster innovation and research; and
  • increased injection of notions of fairness and equitability, eg. new requirements for patent revocations.


Given that an overhaul of the law in these two major-playing areas of Intellectual Property law has been due for just under and just over two decades in relation to trade marks and patents respectively, it is with much anticipation that legal practitioners look to witnessing the effects of these amendments in their intellectual property practices, these hopefully implementing a more manageable, streamlined and innovation-friendly system which fosters further developments in the industries in relation to which our clients seek to protect the value of the developments their intellectual creations bring to their relevant markets.