The IP Guide to...Australia

As well as possessing several robust IP regimes of its own, Australia has been quick to embrace the value of IP for global trade. Sprusons & Ferguson’s John Brass, reveals the history of IP legislation in the region and explains how the country is using the ideas and innovation of its people to make a place for itself on the world stage

Australian IP legislation first came into force over 100 years ago, with the introduction of the Patents Act 1903. Back in its early years, the country’s IP rules and regulations were very much based on their UK equivalents. Australia’s Trade Marks Act 1905 and Designs Act 1906, for example, took their lead from the UK’s 1883 Patents, Designs and Trade Marks Act. Similarly, the updated Patents Act 1952 and Trade Marks Act 1955 maintained a close correspondence with their UK counterparts. In recent years, however, Australia’s IP legislation has moved away from UK legislation, as the UK seeks to harmonise policy with the EU. Australia, meanwhile, has moved to bring its IP regimes into line with international agreements, such as the Berne and Paris Conventions, the Patent Law Treaty (PLT), the World Trade Organisation Agreement on Trade-Related Aspects of IP Rights (TRIPS), the Patent Cooperation Treaty (PCT) and the Madrid Protocol. Nonetheless, UK case law remains influential in areas where binding Australian case law has yet to develop fully.

Patent protection
IP legislation is ultimately governed by the Australian Constitution, which gives the Commonwealth Parliament the power to make laws with respect to copyrights, patents, designs, and trademarks.

Australia’s patent regime offers effective wide-ranging protection for inventions and patents, including computer software, business methods, medical techniques and biotechnology. It provides two forms of protection: ‘standard’ patents and ‘innovation’ patents. A standard patent is akin to a US utility patent or a European patent, while an innovation patent offers a lesser form of protection than a utility patent, but is more robust in the scope of its subject matter.

Standard patent applications are substantively examined by the Australian Patent Office (a division of IP Australia – the government agency responsible for administering patents, trademarks, designs and plant breeder’s rights). The current average delay between filing and examination of standard patent applications is approximately 18 months.

The Patents Act 1990 was amended in 2002, changing the prior art base from a ‘relative’ to an ‘absolute’ novelty standard. While information made publicly available around the world before the relevant priority date constituted prior art public use anywhere in the world, and not just Australia, may now be classified as prior art. The threshold for inventive step in Australia is generally considered to be lower than that in the US and Europe and the relevant test is based on whether the invention would have been obvious to a person skilled in the art, in light of the common general knowledge as it existed before the relevant priority date.

Pre-grant opposition is an effective mechanism by which a third party can mount a comprehensive attack on a patent application. Opposition proceedings must commence within three months of the date of publication of acceptance.

The trademark process
Australia has a strong trademark regime that offers examination on absolute and relative grounds with a pre-grant opposition procedure. Business confidence in the strength of the trademark registration system has been reflected in significant increases in the number of new trademark applications filed. Current legislation introduced a presumption of registrability, which has resulted in relatively fewer objections being raised at the examination stage.

An interesting ground of opposition requires the registrar to decide whether
use of a trademark applied for would be ‘contrary to law’. This requires a consideration of other laws such as copyright, passing off and the consumer protection provisions of the Trade Practices Act. For example, the Trade Practices Act provides a cause of action in cases where a corporation usurps another party’s mark that could lead to the public being misled or deceived in the course of trade or commerce. Recent amendments to the Trade Marks Act 1995 have also introduced a ‘bad faith’ grounds for opposition.

Australia’s IP legislation has moved away from UK legislation, as the UK seeks to harmonise policy with the EU. Australia, meanwhile, has moved to bring its IP regimes into line with international agreements.

Meanwhile on the web, Australia’s domain name administrator is auDA – a
government-backed regulator for the .au country-code Top Level Domain (ccTLD). The number of high-profile domain name disputes in the country has been relatively few, but businesses are well versed on the importance of having a strong online presence. An interesting peculiarity to this part of the world is that the ‘.au’ domain is not the only ccTLD assigned to Australia. For historical reasons, some Australian territories have been allocated ccTLDs, such as ‘.cx’ for the tiny Christmas Islands.

Acting on design
The Designs Act 2003 came into force in June 2004, paving the way for the introduction of significant changes to the protection of industrial designs. The maximum term for design protection is 10 years, although moves are afoot to alter this to the previously recommended term of 15 years. Indeed registrability requirements have been strengthened in the recent past – a registerable design must be new and distinctive and a ‘Statement of Newness and Distinctiveness’ can be used by the proprietor to identify features of design significance in the illustrated product. Newness is assessed against publications made anywhere in the world and products used locally, while distinctiveness is assessed based on substantial similarity in overall product appearances, by an ‘informed user’. A vacuum of case law and a raft of administrative changes in the application process has made it prudent for designs to be carefully considered prior to applications for registration being filed.

The Plant Breeder’s Rights (PBR) Act 1994 provides exclusive commercial rights for registered plant varieties. Rights are granted for 25 years for trees and vine varieties and 20 years for all other varieties. In September 2007 the government announced it would launch a comprehensive review of the Act, perhaps adding even stricter rules that could lead to farmers being subject to random property searches and tougher penalties for using unauthorized seeds. New plant variety developers are encouraged to think of PBR as an integral part of their overall business strategy, and the Australian government is encouraging the sector to think of IP in the same vein as finance, production and marketing. Filing an application is relatively inexpensive and includes a detailed assessment of whether or not the variety meets the registrability criteria. Since 1987, over 2,000 new varieties of plants have been given official protection to stimulate successful plant breeding in Australia.

Looking to the future
Australia’s IP regime has grown rapidly in recent years. It is viewed as a relatively ‘new’ country by some, yet it has a successful IP history and stands alongside other major nations in understanding the importance of implementing a robust IP Rights strategy.


Major Legislation:

Copyright Act 1968
Provides protection against unauthorised reproductions and public dissemination of an original work.

Trade Practices Act 1974
Consumer protection against unfair practices including misleading or deceptive conduct and false or misleading representations.

Circuit Layouts Act 1989
Provides protection for the three-dimensional configuration of electronic circuits in integrated circuit products or layout designs.

Patents Act 1990
Confers on a patentee a right to exclude others from commercially exploiting without authorisation a patented invention for the life of the patent.

Plant Breeder’s Rights Act 1994
Offers exclusive commercial rights to market a new variety of plant or its
reproductive material.

Trade Marks Act 1995
Protection of a registered trademark or sign to distinguish goods or services dealt with or provided in the course of trade.

Designs Act 2003
Protection of the shape and/or appearance of manufactured goods for industrial or commercial use.


This article first appeared in IP Review, issue 20