Intellectual property law changes should speed up disputes, but could increase costs for SMEs: Experts

Long-awaited amendments to Australia’s intellectual property laws might speed up the resolution of disputes but could also increase costs for small and medium-sized businesses, IP experts say.

Jack Dolphin, senior associate at Mills Oakley Lawyers, says while the industry doesn’t yet know how the amendments will play out, his preliminary view is that it may increase the initial costs of trademark dispute processes.

“The key benefit that I can see is that when there’s trademark opposition, they’ve shortened that process,” Dolphin says.

The three-month periods in which each side to a dispute can put in evidence has now been shortened to two months and applications for extensions will be more heavily scrutinised, he says.

It’s hoped that the amendments will reduce the delays in IP disputes, which can drag on for years.

But Dolphin says a potential negative for SMEs is the decision to require pre-trial negotiation.

Dolphin says the cost to a business will depend on the extent of documentation required by IP Australia, but it could easily run into the thousands of dollars.

“This step wasn’t previously required, so it will increase costs,” he says.

The Government says the changes, which passed yesterday, are designed to:

  • Move patent standards more in line with international standards
  • Deliver free access to patented inventions for regulatory approvals and research
  • Tighten up the procedures for patent and trade mark oppositions and patent divisional applications
  • Allows Australian patent and trademarks attorneys to incorporate
  • Increases the penalties for trade mark infringement, bringing the Australian system into line with our major trading partners
  • Gets rid of unnecessary hurdles and simplify the application process.

Mark Dreyfus, Parliamentary Secretary for Industry and Innovation, says the thousands of Australian business owners will benefit from the new anti-counterfeiting trade mark measures, and the ‘research exemption’ gives “clarity and certainty to our researchers so they focus on producing ground-breaking research.”

IP Australia says the hundreds of thousands of SMEs that are registered trademark owners will benefit from the harsher penalties for counterfeit activities.

It also says that any business with an R&D component will benefit from the research exemption, which allows researchers to undertake their research without the fear of infringing on somebody else’s patent.

IP Australia adds that drawing our patent standards in line with our major trading partners will give Australian exporters greater confidence.


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