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 requirements;
  • 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 rights;
  • to give IP rights owners more control to maintain and manage their IP, reducing the administrative backlog at IP Australia; and
  • to have more transparency in the regulation of IP attorneys.

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 6 months.

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 public.

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 individuals listed.