[The IPKat] IP Australia opens consultation for reforms – have your say!

[Claire Gregg]

IP Australia opens consultation for reforms – have your say!

 Dr Claire Gregg Tuesday, March 17, 2026 - Australia, Claire Gregg, designs, IP Australia, OzKat, patents, PBRs, proposed reforms, trade marks

On 3 March 2026, IP Australia (IPA) released a consultation paper identifying several areas it considers will streamline and simplify IP regulation in Australia. The consultation paper includes proposed reforms and policy issues for further investigation across patents, trade marks, designs and plant breeders' rights (PBRs). This article focuses on the patent aspects of the consultation, but a summary of the aspects relating to other IP rights is also provided (and can be explored further in the consultation paper).

The deadline for filing submissions in response is 2 April 2026.

Proposed patent reforms

Expanding the definition of exclusive licensees (Proposal 1)

Currently, only patentees and exclusive licensees can bring infringement proceedings in Australia. Under Australian law, where the patentee reserves any rights to exploit the invention under an "exclusive" licence, the license is not considered exclusive for the purposes of the Patents Act (Bristol-Myers Squibb Company v Apotex Pty Ltd [2015] FCAFC 2). According to IPA, this disadvantages so-called "partial" exclusive licensees, i.e., those having an "exclusive" license to only a portion of a patent (e.g., to sell, but not manufacture the invention) or to only a portion of the patent jurisdiction.

The proposal is to expand the definition of exclusive licensee to include partial exclusive licensees. Practically speaking, this could present major challenges during litigation, as presumably partial exclusive licensees would only be able to litigate in respect of the portions of the patent or the claims to which it has an exclusive license. The proposal also does not address how the jurisdictional aspects will work in practice, as patent proceedings are conducted at the federal level.

Shortening oppositions for pharmaceutical patent term extensions (PTEs) (Proposal 2)

Currently, the legislation treats oppositions to PTEs as substantive oppositions, as opposed to procedural oppositions that have truncated evidence timeframes (i.e., one month shorter for each evidentiary stage). Given that oppositions to PTEs are generally confined to questions of law and require limited evidence, the proposal is to shorten the evidence timeframes to reflect those of procedural oppositions.

Given the significant commercial importance of PTEs, it will be interesting to see whether pharmaceutical patentees welcome the expedited timeframe, or would prefer to have more time to prepare and adduce evidence. Perhaps a pragmatic solution could be shortened deadlines with one month extensions as of right at each evidentiary stage in the event parties require more time.

Introducing an examination report response system (Proposal 3)

Unjustified reform Kat

Currently, Australia does not deploy response deadlines during patent examination, and instead sets a 12 month period from issuance of the first examination report within which to gain acceptance. According to IPA, "Around 16% of patent applications with a first report issued lapse without any response, and there are currently around 12,700 pending patent applications awaiting a response", which it says creates uncertainty for third parties.

The proposal is to shift to shorter response-based deadlines, as is the case in most other jurisdictions. While this may not be inherently problematic, the proposed solution could well be: "Applicants would need to respond within set timeframes (e.g. 2 months) and would have a limit on the number of formal responses before rejection procedures commence (e.g. 3 responses)". In particular, a two month response deadline would be highly burdensome on applicants and their attorneys, and is not reflective of the reality of the amount of time it takes to process correspondence and obtain timely instructions. The quality of reporting and responses is also likely to suffer. If IP Australia were to move to a response deadline system, a 6 month response period would be more aligned with other jurisdictions.

IPA is also proposing to shift to a response deadline system for trade marks.

Expressly allowing virtual patent marking (Proposal 9)

Currently, physical product marking is required to indicate that a product is the subject of an active patent or application (or design or PBR). This requires manufacturers to alter the product or packaging whenever the IP right status changes, which can be costly and burdensome. IPA's proposal is to update the legislation to allow for virtual product marking (e.g., by provision of a QR code, barcode or URL that links to an up-to-date online webpage maintained by the right holder listing the status of the relevant IP). This is perhaps one of the more pragmatic proposals in the consultation paper that reflects modern commercial reality.

Closing the attorney re-registration loophole (Proposal 12)

Trans-Tasman patent attorneys and Australia trade marks attorneys are regulated by the Trans-Tasman IP Attorneys Board (TTIPAB), which has the authority to deal with complaints made against registered attorneys. Currently, there is a regulatory loophole by which a registered attorney can avoid disciplinary action by de-registering, and subsequently re-registering.

The proposal is to allow investigation of de-registered attorneys, and greater governance of how de-registered IP attorneys might be restored to the register. While both registration and re-registration require an attorney to establish good fame, integrity and character, which may act as a safeguard against re-registration in some circumstances, closing this loophole would nonetheless be preferable to provide greater confidence and accountability in the local attorney profession.

Removing office attendance requirement for patent attorneys (Proposal 13)

Currently, the legislation stipulates that a registered patent attorney commits an offence if the registered patent attorney practises, acts, or holds themself out as practising or acting, as a patent attorney, at an office or place of business where specifications or other documents are prepared for the purposes of this Act, where this isn't a registered patent attorney regularly in attendance and supervising work out of that office or place.

The proposal is to remove this requirement because it is no longer reflective of modern working practices. However, this provision does not appear to be overly problematic, because it simply prevents attorneys from representing that they work in an office or place where there is not regularly a registered patent attorney in attendance and overseeing the work.

In view of ongoing issues with unregulated agents acting before IP Australia, particularly in the trade mark space, any changes to these requirements should be carefully considered and pressure tested to ensure they do not open the door to further fraudulent activity before IP Australia.

Patent policy issues

Declaration requirements and time limits for extensions of time (EOTs)

It is currently necessary for EOT applicants to provide one or more declarations setting out the circumstances giving to the need for an EOT, and there is no limit on the duration of EOTs. According to IP Australia, the preparation of declarations may impose unnecessary costs on applicants, and the lack of limitation on EOT duration creates uncertainty for third parties.

IP Australia is seeking comment on whether these are significant issues that need to be addressed, and on two possible solutions:

1.                   permitting one automatic (paid) extension of time for short periods (e.g., up to 3 or 6 months) per action, before the relevant deadline has passed, without the need to file supporting declarations; and/or

2.                  imposing a time limit (e.g., 3 months) after the deadline has passed for filing EOT requests.

The EOT provisions are intentionally beneficial to applicants (and IP Australia), and the proposed changes would defeat that intention. Further, the Patents Act already mitigates against any third party uncertainty issue by exempting from infringement third parties who exploit an invention during the period between patent rights lapsing and restoration. In contrast, the proposed solutions would effectively remove the need for applicants to provide any justification for granting EOTs (e.g., on the basis of an error or omission) provided the extension is less than three months, while denying genuinely deserving applicants solely on the basis that more than three months has elapsed between any error omission and discovering it had occurred.

Reforming patent timeframes

The patent system includes various mechanisms by which applicants can prolong the pendency of their application. According to IPA, this can disadvantage third parties seeking freedom to operate certainty. IPA Australia suggests that mechanisms (which are yet to be specified) be installed whereby third parties can expedite examination and effectively prevent the filing of divisional applications for reasons other than to overcome a lack of unity objection.

Like many of the other proposals and policy issues raised in the consultation paper relating to patents, this suggested solution seems to disproportionately favour third parties over innovators. 

Other IP rights

Proposed reforms

A summary of all the proposed reforms for patents, trade marks, designs and PBRs, as provided in the consultation paper, is reproduced below.

Proposal No.	Issue	IPA's preferred solution
1	Expanding the definition of exclusive licensees for patents	Partial exclusive licensees can sue for infringement
2	Shortening oppositions for pharmaceutical patent extensions of term	Make oppositions to extensions of term procedural, meaning that the Commissioner can direct appropriate evidentiary periods
3	Introducing an examination report response system for patents and trade marks	Introduce a system where applicants have a set period (e.g. 2 months) to respond to each examination report, with a capped number of responses before refusal considered.
4	Awarding costs above the schedule in TM oppositions	Registrar can award costs outside of the schedule after oppositions
5	Updating references to the Madrid Protocol, Madrid Regulations and Nice Agreement	Allow the legislation to refer to those agreements as in force from time to time
6	Finalising TM oppositions that are not progressing	Permit the Registrar to finalise oppositions where both parties have lost interest and are not actively participating
7	Correcting TM ownership errors	Permit the Registrar to correct honest ownership errors before and after Registration, and clarify that courts do not have to cancel registration for honest ownership errors
8	Removing the requirement for certificates of verification for TMs and designs	Remove the requirement to provide a certificate of verification for translated documents (unless there are doubts about its veracity)
9	Expressly allowing virtual marking of products protected by patents, PBR and design	Permits patentees and design owners to use virtual markings to put competitors on notice that IP rights exist
10	Introducing a grace period for PBR renewals fees	Introduce a 6 month grace period, including late fees
11	Removing herbarium deposit requirements for PBR	Remove the mandatory requirement to make a deposit for certain species as part of the PBR process
12	Closing the attorney re-registration loophole	Deregistered attorneys could be disciplined and prevented from reregistering where a disciplinary issue is pending
13	Removing office attendance requirement for patent attorneys	Permit patent attorneys to virtually supervise the patents work of junior employees

 

Policy issues

A summary of all the policy for patents, trade marks, designs and PBRs, as provided in the consultation paper, is reproduced below.

Policy Issue No.	Issue	IPA's preferred solution
1	Removing the declaration requirement for initial short extensions of time and limiting the time patents can be revived with an extension of time	Preferred solution not yet identified
2	Reforming patent timeframes	Preferred solution not yet identified
3	Streamlining the treatment of applications in respect of more than one design	Preferred solution not yet identified
4	Increasing flexibility for filing excluded designs	Preferred solution not yet identified
5	Clarifying exhaustion in the PBR Act	Preferred solution not yet identified
6	Clarifying how rights apply where harvested material is also propagating material	Preferred solution not yet identified

Further details in relation to each of these issues can be found in the consultation paper.

Have your say

According to IPA, the proposed reforms "are intended to reduce compliance burden and provide greater flexibility for businesses, allowing them to spend less time on regulatory processes and more time delivering better and cheaper products and services". If you disagree, you can have your say by 2 April 2026. Details about how you can make a submission can be found here.

The Institute of Patent and Trade Mark Attorneys of Australia (IPTA), of which this OzKat is currently co-Vice President and co-convenor of the Patents and PBRs committee, is preparing a submission on behalf of its members. However, the views expressed in this article are my own and should not be taken to represent the views of IPTA or its members. That said, IPTA welcomes feedback from users of the Australian IP system in relation to the consultation paper – these can be sent to ma...@ipta.org.au.

 

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