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Key recommendations

1. The Office of the Privacy Commissioner (the Office) welcomes IP Australia's proposals to strengthen privacy protections available to individuals participating in patent processes. The Office offers some suggestions on how these proposals may be enhanced in a way that protects privacy while maintaining the transparency of the patent application and approval process. In particular, the Office recommends:

• (i) Power to restrict public access to patent information
  The Office suggests the proposed clause be narrowed to ensure clarity as to its intended application to personal information. This could be achieved by revising the clause to allow the Commissioner of Patents to restrict public access to a document where its disclosure under the Patents Act would involve an unreasonable disclosure of personal information about any person.
• (ii) Power to provide confidential access to restricted documents
  The Office suggests that it may be useful to provide further details on how this clause would operate in practice. For example, the Commissioner of Patents could be required to publish information about how he or she decides when it is appropriate to provide access to restricted documents. In explaining the Commissioner of Patents' general decision making process, it could also explain what options are available to individuals or organisations wishing to challenge a decision.
• (iii) Conditions applying to the granting of access to restricted documents
  The Office suggests that a confidentiality undertaking be a mandatory condition of access to restricted personal information.
• (iv) Guidance material on the new clauses
  The Office suggests that IP Australia develop guidance material on the new clauses once they have commenced operation.

About the Office of the Privacy Commissioner

2. The Office is an independent statutory body whose purpose is to promote and protect privacy in Australia. The Office, established under the Privacy Act 1988 (Cth), has responsibilities for the protection of individuals' personal information that is handled by Australian and ACT Government agencies, and personal information held by all large private sector organisations, health service providers and some small businesses.

Overview

3. The Office welcomes IP Australia's proposals to strengthen privacy protections available to individuals participating in patent processes. The Office offers comments below on how these proposals (outlined at 2.4 of the December 2009 Consultation Paper[1]) may be enhanced in a way that protects privacy while maintaining the transparency of the patent application and approval process.

Power to restrict public access to patent information

4. IP Australia proposes that some types of information submitted to it during patent application processes should not be open for public inspection. To allow this, it proposes an amendment to the Patents Act 1990 which would allow the Commissioner of Patents to restrict public access where the Commissioner has ‘reasonable grounds for believing that a document or part of a document should not be open for public inspection'.[2]

5. The Office suggests that the proposed clause could be narrowed to ensure clarity as to its intended application. Introducing a more specific clause may also encourage confidence in the fairness of a power that would be largely discretionary. In specifying reasonable limits on the exercise of this power, IP Australia may clarify its scope and purpose.

6. As the Office understands it, much of the information submitted to the Commissioner of Patents automatically becomes open for public inspection at certain points during the application and approval process. IP Australia notes that there are some circumstances where patent applicants supply sensitive information about themselves or others that is not appropriate to disclose. The primary example that IP Australia gives is where an applicant supplies health information about themselves to support a request for an extension.[3] In an earlier consultation paper, IP Australia gave the example of a person supplying information about marital difficulties and resulting depression to justify an extension of time.[4]

7. The Office notes that these examples all relate to protecting the personal information of individuals. For this reason the Office suggests that the proposed clause be narrowed to deal explicitly with the protection of individual privacy. For example, the clause could be revised to allow the Commissioner of Patents to restrict public access to a document where its disclosure under the Patents Act would involve an unreasonable disclosure of personal information about any person.[5] If there are other specific types of information that IP Australia believes justify triggering this provision, they could also be specified in the amendments.

Power to provide confidential access to restricted documents

8. IP Australia proposes that a party with a legitimate interest in a document that has been made not open for public inspection under the new provision may seek access to the document. IP Australia says that the Commissioner of Patents could decide to grant access to the party requesting inspection, their legal representatives or an independent third party.

9. The Office suggests that it may be useful to provide further details on how this process might operate in practice. For example, the Commissioner of Patents could be required to publish information about how they decide when it is appropriate to provide access to restricted documents. In explaining the Commissioner's general decision making process, this information could also explain what options are available to individuals or organisations wishing to challenge a decision (for example, options to be heard before the Administrative Appeals Tribunal).

Conditions applying to the granting of access to restricted documents

10. IP Australia proposes that the Commissioner of Patents would be able to grant inspection to restricted information subject to any conditions or undertakings they thought fit (including requiring a confidentiality undertaking).[6]

11. The Office suggests that a confidentiality undertaking be a mandatory condition of access to restricted personal information. If information is restricted from access under the proposed new clause due to its sensitivity, then this assessment of sensitivity should be adequate to support, in all cases, the need for a confidentiality undertaking. The Office suggests that there is unlikely to be any situation where a confidentiality undertaking is not appropriate in these circumstances.

Guidance material for individuals lodging documents with IP Australia

12. The Office suggests that IP Australia develop guidance material on the new provisions once they have commenced operation.

13. Guidance material could be in the form of an information sheet or frequently asked questions. The Office suggests that application forms that are likely to elicit sensitive information such as the Application for an Extension of Time could direct people to guidance material on privacy.[7] This could be achieved by expanding the privacy notice at the beginning of the form to include a cross-reference to a privacy information sheet.

[1] IP Australia, Toward a Stronger and More Efficient IP Rights System: Consultation Paper, December 2009, p 12.

[2] IP Australia, Drafting Instructions - Part II: Intellectual property Laws Amendment Bill, paragraph 193, p 29.

[3] IP Australia, Drafting Instructions - Part II: Intellectual property Laws Amendment Bill, paragraph 188, p28.

[4] IP Australia, Streamlining the patent process: Towards a stronger and more efficient IP rights system, Consultation Paper, August 2009, paragraph 43, p 10.

[5] For a similar provision in another Act, see Freedom of Information Act 1982, s 41(1).

[6] IP Australia, Toward a Stronger and More Efficient IP Rights System: Consultation Paper, December 2009, p 12.

[7] Application for an Extension of Time, http://www.ipaustralia.gov.au/pdfs/patents/applications/p00013.pdf