Australia: Will IP Australia Move From A Passive To A Proactive Role In Post-Grant Patent Enforcement?

Last Updated: 22 September 2009

Article by Kerin Forstmanis and George Cameron

The ACIP Interim Report

The Australian Government's independent Advisory Council on Intellectual Property (ACIP) has recently published an Interim Report as part of its ongoing review into post-grant patent enforcement strategies1. ACIP has proposed a number of mechanisms aimed at addressing concerns that enforcement has become overly time consuming, expensive and complicated.

The most important proposals relate to the establishment of an IP Dispute Resolution Centre run by IP Australia. The centre may be modelled on WIPO's Arbitration and Mediation Centre, administering a number of different services including:

  • validity and infringement opinions;
  • expert assessment and mediation; and
  • a patent tribunal.

Additionally, proposals have been made in relation to custom seizures, other court jurisdiction and post-grant opposition proceedings.

All persons interested in expressing their views about the recommendations need to make written submission to ACIP by 30 September 2009.

Validity and infringement opinions

ACIP has recommended establishing a validity and infringement opinion service along the lines of the service provided by the UK Intellectual Property Office2. The process would be as follows:

  • a person seeking an opinion files a statement of facts;
  • the fact that an opinion is being sought is published; and
  • any interested person is given the opportunity to make observations.

Previously, a number of patent attorney representative bodies opposed this proposal because of concerns that IP Australia did not have the skills to provide the service. However, ACIP believes that the relatively small number of patent examiners needed to provide the service could be trained in infringement issues.

Small businesses may be exempt from paying fees in relation to this service.3

Expert assessment and mediation

ACIP supports the concepts of mediation and non-binding expert determination and believes that IP Australia could facilitate increased use of these alternate dispute mechanisms.4

ACIP proposes that IP Australia set up a register of external experts that could provide these services, and also provide support services such as:

  • training on IP issues;
  • procedural guidelines; and
  • accommodation.

Patent tribunal

ACIP believes that a patent tribunal has the potential to overcome some of the cost and delay issues in patent enforcement. However ACIP acknowledges that to be of real value, a patent tribunal would need to be set up with appropriate procedures and skilled tribunal members.5

It is proposed that patent tribunal determinations would not be formally binding and any subsequent litigation would be a de novo review. ACIP considers that a proportion of parties will accept the determination but recommends that mechanisms be introduced to encourage parties to do so, including taking a determination into account when deciding damages or costs in subsequent court proceedings.

A number of submissions to the review argued that it would be preferable to reform court case management processes if it was not possible to get an enforceable determination. The Australian Law Reform Commission also believed that the patent tribunal would just add another level of complexity which ACIP noted had been the subject of much discussion6.

In any case, ACIP proposes that IP Australia establish the patent tribunal within the IP Dispute Resolution Centre with the following general structure and procedures:

  • 3 members integrating legal and technical expertise;
  • members from IP Australia's register of experts;
  • patent attorneys have right to appear;
  • streamlined procedure and simplified evidence; and
  • proactive and inquisitorial tribunal role.

Additional strategies

Australian Customs has previously expressed significant concerns about its lack of technical expertise to identify and enforce patent rights. However, ACIP believes that these concerns would be addressed by empowering Australian Customs to make a seizure when notified of the likely importation of infringing product. The process could be based on the trade marks notification system.7

One strategy that has been recommended in previous and related reviews8 is that the Federal Magistrates Court be given jurisdiction in patent matters. Given the recent decision to restructure the Federal Court, ACIP proposes that the second tier be expressly granted such jurisdiction.9

Finally, ACIP has proposed that IP Australia continue to monitor and review opposition processes in Australia and overseas to see if there is any convincing reason to change to a post-grant opposition process. Although the majority of OECD countries employ a post-grant opposition process in some form, the ACIP found no compelling reason to justify any change to a similar process in Australia.10

What this may mean for you

If effectively established and adequately resourced, an IP dispute resolution centre with IP Australia as a single point of contact may provide less complicated, quicker and less expensive options for the enforcement of patents than traditional court proceedings. It is likely to be of particular benefit to small to medium size enterprises where those issues may significantly influence their ability to enforce patent rights.

On the other hand, questions remain whether these proposals will in reality lead to a more complicated process, and the undesirable outcome of merely inserting additional layers into the patent enforcement process.

A final report will be submitted by the ACIP to the Australian Government in late 2009.


1 Advisory Council on Intellectual Property, Review of post-grant patent enforcement strategies, Interim Report (2009).

2 Ibid 9.1.1

3 Ibid 9.1 at pg 31

4 Ibid

5 Ibid

6 Ibid 9.1.1

7 Ibid 9.3.2.

8 Intellectual Property and Competition Review Committee, Review of intellectual property legislation under the Competition Principles Agreement, Final Report (2000); Advisory Council on Intellectual Property, Should the jurisdiction of the Federal Magistrates Service be extended to include patent, trade mark and design matters?, Report (2003)

9 Ibid 9.3.1.

10 Ibid 9.3.4.

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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