IP Australia Consults On Access To Patent Information

by Mary Swire, for LawAndTax-News.com, Hong Kong

25 January 2006

Australia's IP Office announced recently that it is seeking comment on a proposed new system under which documents on trade mark files can be accessed, to replace the current system of access under the 1982 Freedom of Information Act.

According to IP Australia, the proposals have been put forward because access to trade marks documents under the FOI Act is complicated and costly for its customers.

The IP authority explained that:

"The procedures set out in the FOI Act are rigid and inflexible, and can delay the release of requested documents for a substantial period. This is inconvenient for parties requesting information, and can cause difficulties in matters such as oppositions, where extensions of time are frequently required while FOI requests are being finalised."

IP Australia went on to reveal that the fees and charges for access to documents under the FOI legislation are set well below the cost to the IP Office of providing access to trade marks documents. As IP Australia is required to recover the costs of its operations, the bulk of the cost of the existing FOI regime for accessing trade marks documents is being borne by all users of the IP system, including the substantial majority who have never used the existing FOI access regime, and not just by those who request access to documents.

Under the proposed new system, access to almost all documents on a trade mark file will be available without an application having to be made under the FOI Act. To protect the interests of trade mark applicants and others providing information to the Trade Marks Office, the proposed system would allow the Registrar of Trade Marks (the Registrar) to accept some documents on an explicit understanding of confidentiality, and to give a direction that such documents are to be treated as confidential.

Under the proposed system, all documents on a trade mark file would be made available, on a cost recovery basis, to any person who requests access, apart from the following documents:

(a) any document that the Registrar has directed should be treated as confidential;
(b) any document that contains confidential information taken from another document that is the subject of confidentiality direction (e.g. an evidence summary restating material subject to a direction);
(c) any document that is subject to a current request for a confidentiality direction that has not been finalised;
(d) any document that it is subject to an order of a court or a tribunal that prohibits disclosure of the document or information in the document; and
(e) any document that would be privileged from production in legal proceedings on the ground of legal professional privilege.

As IP Australia operates on a cost-recovery basis, documents would be made available for a charge under the proposed system, the charge being set at a level that recovers IP Australia’s costs in administering the proposed system.

Issues on which interested parties are being asked to comment include:

(a) What difficulties, if any, do you see with the proposal?
(b) How would the proposed system be inferior or superior to the existing FOI access regime?
(c) Would you want the Registrar to publish guidelines on giving confidentiality directions?
(d) Do you agree that the proposed system should apply only to documents relating to trade marks applied for after its commencement?
(e) Do you have any other comments?

The consultation period ends on February 3.

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