Australia-United States Free Trade Agreement - Guide to the Agreement
17. Intellectual Property Rights
1. Purpose and Structure
The Chapter on Intellectual Property (IP) consists of 29 Articles, and 3 Exchanges of Letters: one on ISP Liability; one on various aspects of intellectual property that apply to Australia; and another on national treatment in respect of phonograms.
The subject matter of the IP Chapter covers: copyright and related rights, including encrypted program-carrying satellite signals; trade marks, including geographical indications; domain names; industrial designs; patents; regulated products; and intellectual property enforcement.
While many aspects of the Chapter are drafted to take account of Australia's existing intellectual property regime, some legislative change will be required to implement Australia's obligations. The Government is in the process of assessing exactly what those changes will be. This outline seeks to identify what are likely to be the main areas where changes can be expected.
2. General Provisions (Article 17.1)
2.1 Key international Intellectual Property agreements
(Article 17.1.2, 17.1.3 and 17.1.4)
Australia and the US have:
reaffirmed their membership of a number of key international treaties, including the TRIPS Agreement. (Article 17.1.2)
agreed to ratify or accede to the 'World Intellectual Property Organization Internet Treaties' (the WIPO Copyright Treaty (1996) and the WIPO Performances and Phonograms Treaty (1996) by the date of entry into force of the Agreement. (Article 17.1.3)
agreed to make their best efforts to comply with the Hague Agreement Concerning the International Registration of Industrial Designs (1999) and the Patent Law Treaty (2000). (Article 17.1.4)
2.2 National Treatment (Article 17.1.6, 17.1.7 and 17.1.8)
The Article requires that the Parties provide national treatment, subject to certain exceptions. These exceptions are contained in Articles 17.1.6, 17.1.7, 17.1.8 and the third Exchange of Letters.
2.3 What subject matter do the obligations apply to?
(Article 17.1.9 and 17.1.10)
The obligations in the Chapter apply to all subject matter that exists when the Agreement comes into force and which is protected on that date, or which later becomes entitled to protection under the Agreement. The obligations do not apply to subject matter that has fallen into the public domain at the time the Agreement comes into force. While these provisions are stated to be subject to a contrary intention including a specific reference to Article 17.4.5, there is no contrary intention expressed either in the agreement generally or in the provision referenced in Article 17.4.5.
2.4 Transparency (Article 17.1.12)
The Chapter also contains a provision that requires the Parties to ensure transparency of laws and procedures that deal with the protection and enforcement of intellectual property rights.
3. Trade marks, including Geographical Indications (Article 17.2)
This Article reaffirms both Parties' commitment to providing world class trademark services. Australia already largely complies with this Article, and it is therefore, in most instances, a reaffirmation of current legislative requirements, policy and/or practice. In Australia's case there may be a need for some minor legislative change in relation to cancellation procedures and grounds for refusing an application for a geographical indication to codify current practice.
3.1 Agreed Features of Trade Mark System (Article 17.2.1-17.2.12)
- Confirmation of the types of trade marks that are available for protection. (Article 17.2.1)
- Agreement that trade marks can extend beyond things that are visible to the eye; for example, in certain circumstances, scents and sounds can be registered. (Article 17.2.2)
- Statement of the exclusive rights of trade mark owners. (Article 17.2.4)
- Limited exceptions to the trade marks owners' exclusive rights, including fair use of descriptive terms. (Article 17.2.5)
Agreement that each Party's trade mark system include key features such as relevant notifications and appropriate opportunities to appeal both administratively and using the courts, giving the opportunity to apply for trade marks on-line and provision of public access to the trade mark database. (Article 17.2.7 and Article 17.2.8)
- Minimum 10 year term of registration and renewal of a trade mark. (Article 17.2.9)
- No requirement to record licenses for trade marks. (Article 17.2.10)
- Where a Party has a system for the registration of geographical indications, that system should have certain characteristics, including: opposition procedures; minimal formalities; and transparency. The grounds for refusal to grant an application shall include that the geographical indication is likely to cause confusion with a trade mark that is the subject of a pending application or registration or the rights to which have been acquired in good faith in that Party. (Article 17.2.12)
3.2 Further Work to Reduce Differences (Article 17.2.11)
Recognising a flow on benefit to users, especially where costs are involved, both Parties have also agreed to work together to reduce differences in their respective systems and in international fora such as the World Intellectual Property Organization.
4. Domain Names (Article 17.3)
The Domain Names Article recognises the importance of procedures to settle "cybersquatting" disputes in order to deter trade mark "cybersquatting". It also requires an online database of contact information for domain name registrants. These obligations only apply in the country-code top-level domain (ie ".au" domain names). Australia already fully complies with this Article.
4.1 Dispute Settlement for Cybersquatting (Article 17.3.1)
Under this Article, a Party is required to ensure a procedure to settle so-called "cybersquatting" disputes is provided as part of the management of its country-code top-level domain (ie ".au" domain names). Australia provides a procedure to resolve cybersquatting disputes through the .au Dispute Resolution Policy, the auDRP, which is operated by .au Domain Administration Ltd. The procedure based on the Uniform-Domain-Name Dispute Resolution Policy.
4.2 Provision of an On-line Database (Article 17.3.2)
Each Party is also required to provide online public access to a database of contact information for domain-name registrants in its country-code top-level domain (i.e. ".au" domain names). Australia already has such a database maintained by AusRegistry under auDA's policy guidance at: http://www.ausregistry.com.au/.
5. Copyright (Article 17.4)
5.1 Reproductions (Article 17.4.1)
Under this Article the Parties agree that they will provide authors, performers and producers of phonograms, with the right to authorise or prohibit the reproduction of their works, performances and phonograms in any manner or form. Under the Agreement, the Parties may provide exceptions and limitations to the right of reproduction consistent with international standards (see further Article 5.7).
5.2 Term of Copyright Protection (Article 17.4.4)
Australia has agreed that it will extend its term of copyright protection. In summary, the term of copyright protection for works (e.g. books, artwork and sheet music), films and sound recordings (phonograms) will need to be extended by an extra 20 years: so that the term of protection for works will move from the life of the author + 50 years, to life +70. The term of protection for sound recordings and films will need to be extended from the current 50 years, to 70 years after publication.
The effect of the application of Article 18 of the Berne Convention, referenced in Article 17.4.5, is that there is no obligation on Australia to enact retrospective protection of copyright material that has already fallen into the public domain.
5.3 Transfer of Rights (Article 17.4.6)
In Article 17.4.6 the Parties confirm that there is to be no impediment upon the free transfer of economic rights. This is consistent with the provisions of the Copyright Act already. Section 196 of the Copyright Act provides that copyright is personal property and is transmissible by assignment, by will and by devolution by operation of law.
Article 17.4.6(b) makes it clear, however, and regardless of the operation of Article 17.4.6(a), both Australia and the US may establish measures to give effect to the measures provided for in Article 14ter of the Berne Convention.
5.4 Effective Technological Measures (Article 17.4.7)
This Article has obligations regarding the circumvention of effective technological measures; in other words it addresses certain types of technology associated with copyright material. There are restrictions in relation to the manufacture and provision of devices or services used to circumvent effective technological measures, and restrictions on the use of such devices or services. The Agreement also provides for a review mechanism. The review mechanism will allow the Government to make or introduce new exceptions in addition to those specifically provided for in the Article. An example of an agreed exception is to allow for certain types of reverse engineering for the interoperability of computer software.
Implementation of this Article will require legislative change. The nature and extent of those changes need to be carefully explored. Article 17.12 provides that Australia has a two year period from the date of entry into force of the Agreement to implement its obligations under this provision.
Note: The Copyright Amendment Act 2006 (Schedule 12) implements a new technological protection measures scheme from 1 January 2007
5.5 Rights Management Information (Article 17.4.8)
This Article obligates parties to provide adequate legal remedies to protect electronic rights management information (RMI). The requirements of this Article largely mirror those already found in the Australian Copyright Act.
5.6 Government use of Software (Article 17.4.9)
This Article recognises, and provides obligations, that Federal government agencies have provisions in place for use of legitimate software. Australian government agencies are already required to be exemplars of appropriate behaviour in this area, as in others.
5.7 Flexibility to make limitations and exceptions (Article 17. 4.10)
This Article provides both parties with the ability to make exceptions and limitations in accordance with the flexibilities contained in the "three-step" test. This test is also contained in Article 13 of the TRIPS Agreement and, in similar terms, in other international copyright treaties. Article 17.4.10(c) provides a clarification, if it is needed, that the application of the Article unless otherwise specifically provided in the Chapter, neither reduces nor extends the scope of applicability of the limitations and exceptions permitted under the agreements referenced in Articles 17.1.2 and 17.1.3.
In relation to the retransmission of television signals over the Internet dealt with in Article 17.4.10(b), the requirements of which reflects current Australian law, a procedure is set out in paragraph 2 to the Exchange of Letters to the IP Chapter which is triggered when a Party wishes to make exceptions in this regard.
6. Protection of encrypted program carrying Satellite Signals (Article 17.7)
The Parties have agreed that certain activities undertaken in relation devices or systems that decode an encrypted satellite signal without permission are to be subject to criminal and civil penalties. These include: receiving and making use of, or further distributing, a satellite signal knowing that it has been decoded without authorisation. The provision also provides that any person with an interest that is injured by these activities can seek a civil remedy. Australia will need to make legislative change to implement this Article.
7. Designs (Article 17.8)
This Article obligates the Parties to maintain an industrial design system and, to further work to reduce differences in laws and practice and to participate in relevant international fora.
8. Patents (Article 17.9)
8.1 Scope of Patentability (Article 17.9.1 and 17.9.2)
The Agreement provides that, in general, patents will be available for all inventions. This is consistent with current Australian law. The text also includes the flexibility to exclude from patentability inventions that fall within the terms of Articles 27.2 and 27.3(a) of the TRIPS Agreement that is:
-methods of treatment - diagnostic, therapeutic and surgical methods for the treatment of humans or animals
-morality grounds - where necessary to protect ordre public or morality, including human, animal or plant life or health or to avoid serious injury to the environment.
8.2 Flexibility to make Exceptions and Limitations (Article 17.9.3 and 17.9.6)
Under this Article Australia is free to adopt exceptions and limitation to patent rights in accordance with the flexibilities available under Article 30 of the TRIPS Agreement.
A specific instance of an exception falling within the Article above is provided in Article 17.9.6 and paragraph 1 of the second Exchange of Letters. Under this provision, where an extension of a pharmaceutical patent term has been granted, a generic manufacturer can use the patent and export the product for the purposes of obtaining marketing approval overseas while the patent is still in force.
8.3 A Cooperative Framework and Further Work (Article 17.9.4 and 17.9.5)
These Articles provide for cooperation and best endeavours to reduce certain differences in the patent laws and practices of Australia and the US and in international fora. In addition, they encourage work towards the mutual exploitation of search and examination work. This will benefit users of each system.
8.4 Other Provisions
Article 17.9 also contains a number of provisions relating to the procedure for obtaining a patent, the grant of patent extensions for delays in grant caused by the Patent Office, grounds for revocation and compulsory licensing which generally reflect current Australian law.
9. Measures Related to Certain Regulated Products (Article 17.10)
Article 17.10 contains provisions relating to the protection of test data submitted to a regulatory authority when an application for a pharmaceutical or agricultural chemical product is made. It also contain provisions relating to patents and marketing approval for pharmaceutical products. The Article does not require Australia to make changes to its regime for the protection of test data for pharmaceutical products or its existing pharmaceutical patent extension regime.
Legislative changes will be required to our regime for agricultural chemical test data protection, but these changes are in line with a scheme already under consideration. Changes to the Therapeutic Goods Administration (TGA) marketing approval process will also be necessary to implement some obligations.
9.1 Test Data Protection - Pharmaceutical Products (Article 17.10.1(a))
The obligation to provide five years of protection for test data for new pharmaceutical products contained in Article 17.10.1(a) reflects Australia's current regime. Article 17.10.2 contains an obligation to provide three years of protection to new clinical information, however this refers to the US system and the footnote to this paragraph recognises that Australia's existing data protection system meets our obligations under this provision.
9.2 Test Data Protection - New Agricultural Chemical Products (Article 17.10.1(b))
The Parties have agreed to provide a period of 10 years protection to undisclosed data that is submitted when a person makes an application for marketing approval of a new agricultural product, when that approval is given in combination with the marketing approval of certain additional uses of the same product. This is consistent with the reforms already being developed by the Department of Agriculture, Fisheries and Forestry in consultation with State and Territory partners involved in the National Registration Scheme for Agricultural and Veterinary Chemicals, and with industry and other stakeholders.
9.3 Patent Extension due to Marketing Approval (Article 17.10.2)
Consistent with Australia's Patents Act 1990, the Agreement requires that an extension to a pharmaceutical patent be available to compensate an owner for unreasonable delays in the marketing approval process
9.4 Marketing of a Generic version of a patented medicine to be prevented during the Patent Term (Article 17.10.5(a))
The Agreement requires that Australia provide measures in the marketing approval process to prevent a person from entering the market with a generic version of a patented medicine before a patent covering that product has expired. It will be necessary to make some legislative change to provide for this.
9.5 Notification of Intention to Market during the Patent Term (Article 17.10.5(b))
The Agreement requires that a patent owner be notified of an application for marketing approval in the limited cases in which the person seeking the approval considers the patent invalid and intends to market a generic version of a patented product before the patent expires. This will require legislative change.
10. Enforcement (Article 17.11)
The obligations in this Article cover a range of enforcement activities, including: civil and administrative procedures and remedies; provisional measures; border measures; criminal procedures and procedures in relation to Internet Service Provider liability. The text is largely drafted to take into account the existing legal systems in both the US and Australia. Australia will need to make some legislative change to implement aspects of this Article, including in relation to Internet Service Provider liability and providing that a broader range of activities will be subject to criminal sanctions.
10.1 Transparency (Article 17.11.2 and Article 17.11.3)
The enforcement Article of the Chapter contains further provisions relating to transparency requiring publication of judicial decisions and informing the public of efforts in enforcement of intellectual property rights. This obligation is consistent with present Australian practice.
10.2 Civil Remedies and Procedures and Provisional Measures (Article 17.11.4 - 18)
The Article relating to civil remedies is not expected to require legislative change. It includes agreement on presumptions in relation to copyright (Article 17.11.4) and the availability of judicial procedures (Article 17.11.5).
There is also agreement on the availability of certain forms of compensation, including a requirement to have either a system of pre-established damages or an additional damages system for copyright (Article 17.11.6 and Article 17.11.7). In relation to Article 17.11.6 it has been agreed that the obligation does not require a change to existing measures that provide for the availability of different remedies and this will be set out in the second Exchange of Letters to the IP Chapter. Australia provides a system of additional damages which satisfied the requirement of Article 17.11.7.
The other measures for civil and administrative enforcement, including the powers of courts, are also understood to be consistent with Australian practice.
10.3 Border Measures (Articles 17.11.19 - 17.11.25)
The Border Measures Article will not give rise to any legislative change for Australia. Key provisions are:
- a requirement for transparent procedures when dealing with Custom authorities in relation to the suspension and release of suspected counterfeit or pirated copyright goods (Article 17.11.19)
- the ability for Customs to act without the need for a specific formal complaint (Article 17.11.22)
- provisions for the destruction of infringing goods when they have been forfeited as pirated or counterfeit (Article 17.11.23)
- agreement to provide advice on the enforcement of intellectual property rights at the border and to promote bilateral and regional cooperation (Article 17.11.25)
10.4 Criminal Penalties and Procedures (Articles 17.11.26 - 17.11.28)
The obligations in relation to criminal penalties and procedures will require some legislative change for Australia. Key provisions include:
- Presumptions in relation to copyright (Article 17.11.4),
- criminal procedures and penalties in relation to wilful importation or exportation of copyright and trademark infringements on a commercial scale, and
- provision of penalties (including fines and imprisonment), providing courts with the ability to seize suspected infringing goods and related materials and, in certain circumstances, to order the forfeiture of assets (Article 17.11.27).
11. ISP Liability (Article 17.11.29 and Side Letter 1)
The Internet Service Provider (ISP) liability obligations establish a system for dealing with allegedly infringing material on an ISP's systems or networks. Put simply, the ISP qualifies for "safe harbour" immunity when dealing with alleged copyright infringements on their system or networks provided they comply with certain conditions. The Parties have also committed to using an expeditious judicial or administrative procedure for supplying subscriber details.
The first Exchange of Letters contains obligations in relation to:
- a model for an effective notice, by a copyright owner or person authorised to act on behalf of the owner to an ISP, and
- a model for an effective counter-notice by a subscriber.
Copyright protects the original expression of ideas, not the ideas themselves. It does not require registration in Australia and automatically applies to original writing, works of art, plays, music, film, television and radio broadcasts, and computer programs. The owner of the copyright in a work generally has the right to publish, reproduce, communicate (e.g. broadcast, email, publish online) and adapt it, and to perform it in public. It also provides public interest exceptions to allow reasonable access to such material (e.g. for research and study).
Generally refers to the practice of buying up domain names that use the names of existing or likely businesses with the intent to sell the names for a profit to those businesses.
see industrial design
A domain name is the unique name that corresponds with an Internet Protocol address. It is both easy and intuitive to remember. For example, IP Australia's domain name is www.ipaustralia.gov.au (.gov = government, .au = Australia).
Indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
Design refers to the features of shape, configuration, pattern or ornamentation which can be judged by the eye in finished products. In other words, registered designs protect the way products look.
Industrial property is a subset of intellectual property, referring to those types of intellectual property that have an industrial application. It includes patents, trade marks and designs.
Infringement occurs when someone copies or uses your intellectual property without your permission and where the use is not permitted by law.
Intellectual property (IP) represents the property of your mind or intellect. Types of intellectual property include patents, trade marks, designs, confidential information/trade secrets, copyright, circuit layout rights, plant breeder's rights etc.
see intellectual property
A patent is a right granted for any device, substance, method or process, which is new, inventive and useful.
A trade mark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or any combination of these, which is used to distinguish goods and services of one trader from those of another.
World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights. See http://www.wto.org
March 6, 2004