Ray Marshall

Draft Report on Intellectual Property Arrangements proposes major changes to intellectual property and competition laws

Ray Marshall

26 May 2016

Legislation Updates

The Productivity Commission released a draft report on intellectual property arrangements on 29 April 2016. This report, which spans 600 pages in total, considers the current state of intellectual property creation, use, and protection in Australia, and proposes drastic and wide ranging changes to current intellectual property laws.


For instance, the draft recommendations by the Commission propose the following amendments to the Copyright Act 1968 (Cth):

  1. implementation of prior recommendations to make clear that it is not an infringement for consumers to circumvent geoblocking technology;
  2. repeal of parallel import restrictions for books, effective no later than the end of 2017;
  3. replacement of the current fair dealing exceptions with a broad and open-ended exception for fair use, based on a non-exhaustive list of factors including:
    1. the effect of the use on the market for the copyright protected work at the time of the use;
    2. the amount, substantiality or proportion of the work used, and the degree of transformation applied to the work;
    3. the commercial availability of the work at the time of the infringement; and
    4. the purpose and character of the use, including whether the use is commercial or private.
  4. expansion of the safe harbour scheme to cover the broader set of online service providers; and
  5. applying the current terms of copyright protection to unpublished works.

The draft report findings are that there has been little evidence to support the ongoing historical extension of copyright terms (currently 70 years after the death of the author) and suggests that a more reasonable optimal copyright term would be 15 to 25 years after creation. However, the draft report does not go so far as to make this a recommendation.


As to patents, the draft recommendations by the Commission propose the following amendments to the Patents Act 1990 (Cth):

  1. defining “inventive step” to mean that, having regard to the prior art base, it is not obvious to a person skilled in the relevant art;
  2. when making a decision in relation to a patent application or an existing patent, the Commissioner of Patents and the Courts must have regard to the wellbeing of Australians by providing protection to socially valuable innovations that would not have otherwise occurred and by promoting the dissemination of technology;
  3. abolishing the innovation patent system;
  4. excluding business methods and software from being patentable subject matter;
  5. reforming extensions of patent terms for pharmaceuticals;
  6. providing for a system which explicitly allows for manufacture for export in an extension period; and
  7. excluding extensions of the period of data protection (including biologics).

The Commission further recommends that the Australian Government explore the costs and benefits of:

  1. using higher and more pronounced renewal fees later in the life of a standard patent; and
  2. increase the cost of filing and registering patents on a per-claim basis to limit the breadth of patent protection and to reduce strategic use of patents.

Trade marks

The draft recommendations by the Commission propose the following amendments to the Trade Marks Act 1995 (Cth):

  1. the power for the trade mark registrar to apply mandatory disclaimers to trade mark applications should be restored;
  2. parallel imports of marked goods do not infringe an Australian registered trade mark provided that the marked good has been brought to market elsewhere by the owner of the mark or its licensee; and
  3. repeal of Part 17 of the Act (defensive trade marks).

The Commission further recommends that the Trade Marks Office also:

  1. amend the schedule of fees for trade mark registrations so that higher fees apply for marks that register in multiple classes and/or entire classes of goods and services.
  2. require the Trade Marks Office to return to its previous practice of routinely challenging trade mark applications that contain contemporary geographical references;
  3. in conjunction with the Australian Securities and Investments Commission, link the Australian Trade Mark On-line Search System database with the business registration portal, including to ensure a warning if a registration may infringe an existing trade mark, and to allow for searches of disclaimers and endorsements.


The Australian Government should repeal s. 51(3) of the Competition and Consumer Act 2010 (Cth) excluding agreements in respect of intellectual property rights from being subject matter relevant to restrictive trade practices.

Public institutions

All Australian, and State and Territory Governments should implement an open access policy for publicly-funded research. The policy should provide free access through an open access repository for all publications funded by governments, directly or through university funding, within 12 months of publication. The policy should minimise exemptions.

Written submissions are open until Friday 3 June 2016 with the final report expected to be given to the Australian Government in August 2016. Further information is available here.

Written by:

Ray Marshall | Lawyer | +61 7 3338 7535 | rmarshall@tglaw.com.au