Australia: Landmark Changes To Australian IP Law: (Bolar, Wilful Infringement, And Compulsory License For Anti-Competitive Behaviour)

Last Updated: 24 September 2006
Article by Duncan Bucknell

Take home

The Intellectual Property Laws Amendment Bill (2006) was passed by the Upper House of the Australian Federal Parliament on 14 September 2006.

The major amendments are:

  • Exemplary damages for patent infringement based on the behaviour of the infringer (or any other related matter);
  • Broader non-infringement rights to prior secret users of an invention;
  • A Bolar-type provision – allowing ‘any patent’ springboarding;
  • Grant of a compulsory license to a patent as a remedy for anti-competitive behaviour; and
  • Wider powers for the Registrar to revoke Trade Marks after acceptance or after registration.

My two most recent articles were:


The newly passed Bill is 45 pages long and makes many amendments to the intellectual property legislation relating to Patents, Trade Marks, Registered Designs and Plant Breeders Rights in Australia. Links to copies of the Bill and Explanatory Memorandum can be found in my earlier article ‘Spring-boarding to catch up with the rest of the world’.

The following table provides a summary of the most important changes. (The changes to the Designs and Plant Breeders Rights deal only with formalities and are not included.)


New Section


s 122(1A)

Provides for exemplary damages for patent infringement in relation to:

(a) flagrant infringement;

(b) the need to deter similar infringements;

(c) the conduct of the infringing party after infringement or after being informed of the allegation of infringement;

(d) the benefit accrued to the infringing party; and

(e) any other relevant matter.

Exemplary damages may be sought in relation to any infringement which occurs after this section comes into force. So, it will not apply to currently pending court proceedings unless further acts of infringement occur.

s 119

Clarification of the exemption to patent infringement for prior secret use of an invention by a third party. (Prior public use does not require the exemption as it would destroy validity.)

Amongst other things, the section extends the prior user right to all acts of exploitation, (not just those which had been undertaken prior to the priority date of the patent). It also allows transfer of the prior user right to another.

The exemption will only apply to patents granted after the section comes into force.

s 119A

A Bolar-type provision.

This section which is long-awaited by generic drug manufacturers, provides an exemption from infringement of a ‘pharmaceutical patent’ if the acts done are solely for obtaining regulatory approval in Australia or elsewhere. (A ‘pharmaceutical patent’ is defined as one which claims a pharmaceutical substance or a method, use or product relating to one).

While the exemption applies to export for Australian regulatory purposes, it does not apply to export of goods from Australia, unless the term of the patent has been extended and the goods contain a pharmaceutical substance per se (or produced by a process that involves the use of a recombinant DNA technology).

Previously, springboarding was only allowed in relation to patents which had been extended.

s 133
s 134
s 136A

Contravention of Australian competition law in connection with the patent as a ground for grant of a compulsory license. Specifically relates to contraventions of Part IV of the Trade Practices Act (restrictive trade practices).

This applies to any conduct which occurs after commencement of these sections.

s 40(2)(c)

Clarifies that the claims of Innovation Patents must define the invention. (The same requirement applies to Standard Patents.)

s 79C

Clarifies timing for making a divisional application for an innovation patent.

Trade Marks

New Section


s 38(1)

The Registrar of Trade Marks now has the power to revoke acceptance of a Trade Mark prior to registration.

s 84A-D

After giving the trade mark owner and other interested parties sufficient notice, the Registrar of Trade Marks may revoke a Trade Mark after registration. Grounds for revocation under this section are quite broad, and include merely that it is reasonable to do so, taking account of all the circumstances.

s 173(2)
s 175(2)

Registration process for certification trade marks (CTM – a trade mark used to distinguish goods or services which have met specified certification requirements).

s 217A
s 226A

Establish a regime for availability and confidentiality of documents filed at the Trade Marks Office.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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