Patents and designs – Public consultation on "for the services of the State"

The Australian Government recently released its response to the Productivity Commission’s Inquiry Report on Intellectual Property Arrangements which was published in September 2016.

The Productivity Commission’s report and the Government’s response can be found at: http://www.pc.gov.au/inquiries/completed/intellectual-property#report

IP Australia, the Australian Government agency that administers intellectual property (IP) rights and legislation relating to patents, designs and trade marks, has opened public consultation on five IP policy matters related to the Productivity Commission’s report and the Government’s response.

Of particular interest to agencies are proposed options for reforming the Crown use provisions for registered patents and designs under the Patents Act 1990 (Cth) and Designs Act 2003 (Cth).

Under each of those Acts, the Queensland Government receives the benefit of a statutory licence to use registered patents and designs “for the services of the State”, subject to a number of conditions regarding the terms of use and the payment of compensation. In effect, the statutory licences provide the Queensland Government with an exception from the usual rules about infringement of registered patents and designs, provided that the patents or designs are used “for the services of the State”.

The Productivity Commission’s report considered that the current provisions of the Acts are unclear on the purposes for which the Crown use provisions may be invoked. The uncertainty about the meaning of the phrase “for the services of the State” in the Acts has been a longstanding legal issue.

IP Australia has proposed a number of options for reform. The options include amending the Acts to list specified services or purposes for which Crown use may be invoked.

The options for reform also seek to address a number of other issues associated with the Crown use provisions in the Acts, including the potential ambiguity in the meaning of the term “the Crown”, particularly in the context of statutory authorities and corporations.

Agencies can respond to IP Australia’s proposed solution, including by indicating which of IP Australis’s options for reform they prefer and by drawing on their experience to highlight any issues with the proposed solution which may not have been identified.

IP Australia is requesting interested parties to make written submissions in response to their options paper by 17 November 2017. The options paper for the Crown use of patents and designs and instructions for making submission can be found at: https://www.ipaustralia.gov.au/about-us/public-consultations/public-consultation-several-intellectual-property-ip-matters