Table 1: Grace periods for renewal fees Current provisions IP Right Renewal fees due Renewal grace Period Status of right during grace period Infringement during the grace period Plant Breeder’s Rights 20 year term (25 for trees and vines). Renewals due on each anniversary of the grant of the right. No grace period. PBR ceases if renewal fee not paid on due date. N/A. Patents 20 year term (25 for some pharmaceuticals). Renewals due on 4 year anniversary, then annually. 6 months. Patent remains in force. Yes. Trademarks Unlimited term. Renewals due every 10 years from filing date. 6 months. Trade mark expires but remains on the Register during the grace period. No. Designs 10 year term. The renewal is due 5 years from the filing date, covers the remaining 5 years. 6 months. Uncertain. Uncertain. Table 2: Grace periods for renewal fees - Options Options IP Right
Plant Breeder’s Rights Patents Trademarks Designs Option A1 – no change No grace period. 6 month grace period and patent status undefined in the legislation. 6 month grace period with infringement exemption. 6 month grace period with design status undefined in the legislation. Option A2 – grace period for all rights, rights remain ‘live’ during grace period Amend legislation to: Introduce 6 month grace period Introduce a fee for late payment of renewal fee Clarify that the PBR remains ‘live’ during the grace period and ceases at the anniversary if the fee is not paid. Align the status terms with other rights where possible Amend legislation to clarify that: the patent remains ‘live’ during the grace period and ceases at the anniversary if the fee is not paid. Patent may be infringed during the grace period Status terms would be aligned across the rights where possible. No significant change. Trademark remains ‘live’ and infringement exemption applies during the grace period. Status terms would be aligned across the rights where possible. Amend legislation to clarify that: the design remains ‘live’ during the grace period and ceases at the anniversary if the fee is not paid. Design may be infringed during the grace period. Status terms would be aligned where possible. Option A3 – grace period for all rights, rights cease when renewal not paid on time but can be reinstated if fee is paid within grace period Amend legislation to: Introduce 6 month grace period with a late fee Clarify that the PBR ceases if renewal fee is not paid by due date. Provide means for reinstating PBR if renewal fee and late fee is paid before end of grace period. Provide exemption from infringement for acts done between renewal date and date fee paid. Amend legislation to: Clarify that the patent ceases if renewal fee is not paid by due date. Clarify that the patent can be reinstated if renewal fee and late fee is paid before end of grace period. Provide exemption from infringement for acts done between renewal date and date fee paid. Amend legislation to: Clarify that the trademark ceases if renewal fee is not paid by due date. Clarify that the trademark can be reinstated if renewal fee and late fee is paid before end of grace period. Amend legislation to: Clarify that the design ceases if renewal fee is not paid by due date. Clarify that the design can be reinstated if renewal fee and late fee is paid before end of grace period.
The requirement was useful before modern scanning devices were available. Photocopying of paper representations could reduce their quality to the detriment of examination, hence it was considered necessary that the applicant provide multiple copies. In the current digital environment, this is not a problem. Paper applications are routinely scanned, allowing for high quality digital reproduction where necessary. Furthermore, if the requirement is not met IP Australia should issue a deficiency notice and the applicant must respond and provide the additional copies, which slows the processing of the application. This wastes both applicant and IP Australia’s time. Options Option 1 – no change Design applicants filing in paper would continue to be required to file five copies of each representation. Option 2 – remove requirement to provide extra copies The requirement for the applicant to provide five copies of each representation could be repealed. Proposal At this stage, option 2 is preferred. This would remove an unnecessary administrative burden and uncertainty for design applicants and IP Australia. Supporting small business The following proposals aim to assist those dealing with the IP system, particularly small businesses, by clarifying elements of the law and providing protection against unjustified threats of infringement. Unjustified threats of infringement Background The patent, trade mark and design legislation provides protection for businesses that face an unjustified or groundless threat of infringement from an IP owner. Both the patent and design legislation provide that a person may sue a rights owner for threatening them with infringement proceedings that are ‘unjustified’. The remedies available include a declaration that the threats are unjustifiable, injunctions and damages (for example, for sales lost due to withdrawing the product from the market).