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At-a-glance: IP Australia Discovery House, 47 Bowes Street, Phillip ACT 2606 Mailing address: PO Box 200, Woden, ACT 2606 Tel: +61 2 6283 2999, Fax: +61 2 6283 7999 Email: assist@ipaustralia.gov.au Website: www.ipaustralia.gov.au Patent reforms... [more]

Patent reforms were shelved in the months preceding and following the federal election in August 2010, but 2011 is going to be a big year for patent reform in Australia.

A controversial private members bill to exclude human genes and biological materials from patentability has now been introduced in both the Senate and the House of Representatives. The Bill has been referred to the Senate Standing Committee on Legal and Constitutional Affairs for inquiry. Australia has a complicated coalition government and pharmaceutical companies are worried that the Bill could get the required number of votes to pass.

As the IP Handbook went to press IP Australia had introduced a separate bill proposing amendments to Australia's Patents and Trade Marks Acts. Changes to the Patents Act include amendments to raise patentability standards to increase certainty in the validity of granted patents.

Lawyers note that more IP owners are opting to file innovation patents, as several decisions in the last few years have shown that the possession of these lower level patents can be advantageous.

"More companies are starting to realise how powerful they can be," comments one IP practitioner. "It is a strategic benefit to the patentee to break an opposition deadlock on a standard patent by filing an innovation patent."

The introduction of legislation to make plain cigarette packaging mandatory has stirred opposition from tobacco companies who say the new rule will infringe on their trade mark rights. Several large tobacco companies have been at the forefront of a campaign to overturn the legislation, which is expected to take effect in 2012.

While domestic filings remain steady, inbound filings have slightly dropped owing to the fragile economies of the US and the UK. In addition, some lawyers find China is becoming a more popular destination for filings than Australia.

"Given the current economic climate, there have been more clients litigating their rights suing for infringement," says one lawyer. "Because the economy's been a bit down in Australia, rather than expand their rights, people have a tendency to consolidate and protect."

Other significant developments include the conclusion of E&J Gallo v Lion Nathan, which found that a trade mark is considered used even without the owner's knowledge or authority, as well as the unsuccessful appeal by Telstra and Sensis against a Federal Court ruling that found copyright does not subsist in its telephone directories. The latter case has prompted a push to introduce new legislation protecting database compilations. Telstra has filed an application for special leave to appeal to the High Court.