Most Read Contributor in Australia, September 2016
On 20 February 2015, a discussion paper was released by the
Federal Government detailing several new proposals that have been
put forward by IP Australia.
The primary aims of the proposed changes are:
to streamline and align registration and associated
administrative processes across all IP rights;
to remove certain burdensome legislative compliance
to speed up general day-to-day administrative processes
relating to the maintenance of IP rights;
to support small businesses in obtaining and managing IP
to give IP rights owners more control to maintain and manage
their IP, reducing the administrative backlog at IP Australia;
to have more transparency in the regulation of IP
The discussion paper, entitled "Proposals to streamline
IP processes and support small business", sets out 22 new
proposals from IP Australia.
Some of the proposals relating to aligning IP processes involve
the introduction of renewal grace periods during which time the IP
rights would remain live, and the removal of the option to make an
early payment of renewal fees. Importantly, IP Australia has
suggested removing the legislative requirement to issue trade mark
renewal reminder notices, and to issue these only to owners that
are unrepresented. For trade marks managed by firms or trade mark
attorneys, this would shift the sole responsibility for renewal to
them, which would further emphasise the importance of having
comprehensive internal trade mark registers that are monitored, and
timely reminder systems.
The proposals relating to extensions of time include suggestions
that there should be a more streamlined process for short
extensions of time, a limitation on the 'error or omission by
applicant/owner' extension to 12 months, and the introduction
of the 'despite due care' extension to be available for all
IP rights with an unlimited extension period.
One of the most significant proposals relating to trade marks
are the changes to acceptance timeframes, including the proposed
reduction to the trade mark acceptance timeframe from 15 months to
Intended to speed up day-to-day trade mark administrative
matters, one proposal is to allow applicants and IP owners to amend
certain administrative details themselves, for example, if the
address for service or address of the owner need to be updated. IP
Australia also suggest that they be given the ability to amend an
IP right in the case of an obvious error.
Some more general proposals include the removal of the
legislative requirement to issue certificates, and the removal of
the requirement to do things in writing, in order to align various
notification processes across all IP rights.
Intended to support small businesses and achieve a balance
between parties, one proposal is to allow additional damages to be
awarded where an IP rights holder has made unjustified threats of
infringement against another party. It has also been proposed that
personal information of all registered attorneys be published, to
ensure that IP attorneys can readily be identified by the
In addition to the above proposals relating to trade marks,
there were several other proposals in the discussion paper that
were more relevant for owners of patents and designs, and plant
breeder's rights holders.
A draft Bill reflecting the proposed changes is set to be
released by IP Australia in mid-2015 for public comment, with the
expectation that the Bill will be introduced to parliament in late
2015, to then commence in 2016.
This publication does not deal with every important topic or
change in law and is not intended to be relied upon as a substitute
for legal or other advice that may be relevant to the reader's
specific circumstances. If you have found this publication of
interest and would like to know more or wish to obtain legal advice
relevant to your circumstances please contact one of the named
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