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
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.
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
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
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.
- 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
- 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
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
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
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
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
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
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
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
-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
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
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
9.5 Notification of Intention to Market during the Patent Term (Article
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
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
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
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,
- 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
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
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
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