Government’s response to ACIP’s ‘Review of Post-Grant Enforcement Strategies’ report

In recent years, the Advisory Council on Intellectual Property (ACIP) has been conducting a number of reviews and issued corresponding papers on IP reform in Australia.

A report issued on 19 February 2010 by ACIP entitled Post-Grant Patent Enforcement Strategies, made a number of quite radical proposals intended to address perceived prohibitive issues of effectiveness and cost faced by SMEs when considering enforcing their granted patent rights.

On 3 June 2011, the Government issued a response to the report’s recommendations. Despite the hype, the Government’s response is quite deflating on the more radical recommendations and only the ‘soft’ recommendations have been accepted.

Of the interesting recommendations was a general push for better access to alternative dispute resolution with a patent focus. Within this framework was a recommendation that IP Australia host an IP dispute resolution centre. The Government, while condoning the use of alternative dispute resolution (ADR) mechanisms, rejected the idea that IP Australia hosts such a centre. Similarly, the proposal of the formation of a specific Patent Tribunal for patent disputes was rejected on the question of value, given that such a tribunal would be inevitably limited to issuing non-legally binding recommendations as opposed to binding decisions.

Another interesting proposal was to empower Australian Customs to seize goods which potentially infringe an Australian patent right. Australian Customs currently have such powers in regards to Australian Trade Mark and Copyright owners. Again, the Government response was to reject this proposal on practicality. The question of patent infringement is not an easy question to determine and hence, should Australian Customs be burdened with a question it is not readily equipped to answer.

While some may see the Government’s response as deflating, the reality is that the Government’s response is quite grounded from a practicality viewpoint. What will be the spin generated by this non-event?

by Simon Ellis