Peter Hallett and Lucy Hartland of Spruson & Ferguson provide answers to some questions about the impact of COVID-19 on IP law and practice in Australia.
(1) Did your government invoke any existing provision in law that is likely to affect IP holders and their rights?
The Australian federal and state governments have responded to the COVID-19 pandemic with a wide range of extraordinary economic and social measures, but to date none of the measures implemented by governments specifically concern IP. However, a number of government authorities (of particular relevance to IP owners) have actively responded to the pandemic crisis.
The Australian Competition and Consumer Commission (ACCC) has exercised its power to authorise certain conduct or actions that would otherwise be unlawful under competition law. For example, the ACCC can permit supermarkets to co-operate and coordinate with each other when working with manufacturers, suppliers, and transport and logistics providers, with the aim of ensuring “the supply and the fair and equitable distribution of fresh food, groceries, and other household items to Australian consumers”.
According to the information on its website, the Therapeutic Goods Administration (TGA), Australia’s regulator for pharmaceuticals and medical devices, is “giving activities relating to the COVID-19 pandemic the highest priority”. The activities include:
Australia’s Patents Act contains provisions permitting the government to exploit a patented invention in emergency situations, or where the patent owner is unwilling to exploit the relevant invention on reasonable terms (“Crown use”). In March 2020, the federal opposition asked whether the government had ‘explored how Crown use of patents may be invoked, particularly for urgent manufacturing of supplies such as facial masks’. However, to date there is no indication that the government proposes to invoke the Crown use provisions of the Patents Act, or indeed that there is any need to do so.
(2) Did the government introduce or change any IP-related law or has the government announced plans to do so?
No changes to IP laws have been announced as a consequence of COVID-19. Measures taken to date by the ACCC, TGA and other bodies have been within the scope of existing regulatory frameworks.
(3) How has the pandemic affected IP litigation and enforcement in your jurisdiction?
Australian courts generally remain open, and IP litigation and enforcement action continues, although there are some delays.
The Federal Court of Australia, which hears the majority of IP cases in Australia, has moved to “minimise in person attendance on Court premises”, notably by conducting hearings and appeals by way of video conferencing, using technologies such as Microsoft Teams. The Court has issued practice notes for hearings and appeals that provide for:
Our early experience with Federal Court hearings conducted by means of Microsoft Teams, including hearings involving the cross-examination of witnesses, is that these are capable of being run reasonably well. Some changes to the way proceedings are traditionally conducted are necessary, one example being that documents to be used in cross examination and/or tendered must be provided to the court, the other parties and to the relevant witness in advance rather than at the moment they are needed. A key limiting factor is the performance of the technology and the internet connection of each person whose attendance is required (whether counsel, witnesses or court personnel).
(4) Has the pandemic affected the operations of the IP Office?
IP Australia, which is responsible for trade marks, patents, designs and plant breeder's rights (PBR), remains operational, though most of its staff are working from home. It has been possible to attend IP Australia hearings by way of video conference for many years, but all hearings are now conducted by video and in-person hearings are not permitted.
From April 22, users affected by the pandemic can request for an extension of time of up to three months free of charge through the Office's eServices portal without providing 'any additional written explantion'. The relief applies to patent, trade mark and design matters (excluding payment of renewal fees), and it will be in place until May 31.
Applications for PBR have been particularly affected by the COVID-19 restrictions, and the Office has adopted a more flexible arrangements for this. The Office said that its PBR examination services "are currently unaffected", apart from on-site field trial examinations. It has suspended examination of field trials that involve domestic flights or overnight stays, and the Australian Cultivar Registration Authority is no longer receiving plant specimens. The Office can also exercise discretion on a number of matters on a case-by-case basis, including payment of renewal fees.
(5) Are there regulatory and/or IP infringement risks that manufacturers (companies or individuals) and IP owners should be aware of?
Ordinarily, a prudent manufacturer would undertake IP due diligence before manufacturing new products to minimise the risk of infringing third party IP rights. Australian businesses, like their counterparts around the world, have been quickly changing their manufacturing lines to produce high demand items such as hand sanitiser and face masks, in part in response to calls from the Department of Industry, Science, Energy and Resources. There may be IP risks associated with the manufacture of such products that businesses have not adequately investigated. Such manufacturing would not fall under the Crown use provisions of the Patents Act or the provisions concerning compulsory licensing.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, any other of its practitioners, its clients, or any of its or their respective affiliates. This article is for general information purposes only and is not intended to be and should not be taken as legal advice. Please contact the author(s) if you have any questions about this article.
Peter Hallett (Principal)
Lucy Hartland (Senior associate)