Aiming high: Raising the Bar in Australia
After the sometimes tortuous efforts to reform US and European patent law over the last few years, Australia’s Intellectual Property Laws Amendment Bill 2011 (popularly known as the ‘Raising the Bar’ bill) has been notable for the generally positive reception it has garnered from practitioners across IP disciplines.
The bill was passed by the Australian Senate on February 27, and should come into effect in 2013 after passing through the House of Representatives. It instigates wide-ranging changes aimed at improving patent quality, speeding up trademark proceedings and strengthening the sanctions available against infringement.
Maurice Gonsalves, partner at Mallesons Stephen Jaques in Sydney, says that overall, “the changes are very beneficial”. The patent law changes “do raise the bar on patentability but in a way which is desirable having regard to the patent law regimes in major advanced economies such as Europe and the US”.
“For example, it is logical that in determining inventiveness, overseas common general knowledge should be taken into account, and not just common general knowledge in Australia, which is presently the case,” he says.
The trademark law amendments may be even more significant. Richard Gough, partner at Baker & McKenzie in Sydney, highlights changes to the rules governing how companies can tackle counterfeiting as particularly significant. In the past, IP owners have been very frustrated by importers who simply ignore seizure notices or are not contactable.
“For IP owners it will be a most welcome change for the onus finally to be on the importer to make a positive claim for seized goods to be released.”
“In those circumstances the onus has been on the IP rights owner to start proceedings to stop the goods reaching the market,” Gough says. “For IP owners whose rights are frequently infringed by importers of shipments of varying quantities of counterfeit goods, it will be a most welcome change for the onus finally to be on the importer to make a positive claim for seized goods to be released, as well as for more comprehensive information to be available from customs.”
He adds: “These apparently small incremental improvements in the seizure regime are expected to make a large practical difference in the ability of IP rights owners to stop pirated goods coming into Australia.”
Gonsalves underlines changes to opposition procedures as particularly significant, “because it will be necessary for the first time to specify, in the Notice of Opposition, the grounds of opposition and give particulars”. This will add to the upfront cost, and while speeding up timelines has many advantages, attorneys will need to get used to the new streamlined system.
Additionally, he says, “I would highlight the new provisions enabling the court to award additional damages for trademark infringement, especially for flagrancy.”
“These will provide trademark owners with a powerful weapon against counterfeiters,” he says. “It will also substantially increase the risk for businesses who adopt new trademarks without doing proper trademark clearances.”
Copyright matters
While the Raising the Bar bill will certainly bring significant changes to the business of IP in Australia, the courts are already working on two crucial copyright cases that should bring muchneeded clarity to a tricky and evolving area of law.
The recent case of AFL, NRL and Telstra v Optus concerns a claim by two sports organisations and a TV operator, Telstra, against Optus. The companies claimed that Optus had infringed copyright by providing Optus TV Now cloudbased services in relation to NRL (rugby league) and AFL (Australian rules football) matches broadcast on free-to-air television.
The first instance court found no infringement, on the basis that it was the users, and not Optus, who had made the recordings, and they could rely on the private and domestic use replay defence. The appeal court’s judgment is expected imminently, but if the ruling stands, it could have a significant impact on the value of television rights for live sport.
“The government is determined to get the balance right, providing incentives for creators and innovators.”
Perhaps even more significant is Roadshow Films Pty Ltd v iiNet, another copyright case currently awaiting judgment on appeal at the High Court. The case concerns the liability of internet service providers (ISPs) for peer-to-peer copyright infringement on the Internet. The Federal Court found that iiNet did not authorise its users’ copyright infringement, and that copyright owners would have to provide iiNet with unequivocal evidence of infringement before the ISP could act on it.
In response to these two cases (and following hard on the heels of the first instance Optus decision), Australia’s then attorney general, Robert McLelland, in January commissioned the Australian Law Reform Commission to look into copyright law.
He said in a statement: “The inquiry will seek a review of whether the exceptions in the Copyright Act are adequate and appropriate in the digital environment ... in a fast changing, technologically driven world it is vital for us to see whether existing statute is appropriate and whether it can be improved.”
University of Technology Sydney dean of law, Professor Jill McKeough, will lead the review. Commenting on her appointment, the current attorney general Nicola Roxon said McKeough’s “expertise in IP, consumer protection and commercial law, makes her eminently qualified to lead this in-depth review of the Copyright Act”.
She added: “The government is determined to get the balance right between providing incentives for creators and innovators and encouraging new opportunities within a digital economy, including via the national broadband network.”
Australia is moving forward in all areas of IP law. This looks likely to pose some challenges over the next couple of years for practitioners and businesses that will take time to adjust to the changing landscape. But it seems certain that short-term pain will result in long-term gain, and Australia will emerge stronger and more competitive as a result.
