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Patents Act 1990
No. 83, 1990
Compilation No. 42
Compilation date: 25 August 2018
Includes amendments up to: Act No. 77, 2018
Registered: 13 September 2018
Prepared by the Office of Parliamentary Counsel, Canberra
About this compilation
This compilation
This is a compilation of the Patents Act 1990 that shows the text of the law as
amended and in force on 25 August 2018 (the compilation date).
The notes at the end of this compilation (the endnotes) include information
about amending laws and the amendment history of provisions of the compiled
law.
Uncommenced amendments
The effect of uncommenced amendments is not shown in the text of the
compiled law. Any uncommenced amendments affecting the law are accessible
on the Legislation Register (www.legislation.gov.au). The details of
amendments made up to, but not commenced at, the compilation date are
underlined in the endnotes. For more information on any uncommenced
amendments, see the series page on the Legislation Register for the compiled
law.
Application, saving and transitional provisions for provisions and
amendments
If the operation of a provision or amendment of the compiled law is affected by
an application, saving or transitional provision that is not included in this
compilation, details are included in the endnotes.
Editorial changes
For more information about any editorial changes made in this compilation, see
the endnotes.
Modifications
If the compiled law is modified by another law, the compiled law operates as
modified but the modification does not amend the text of the law. Accordingly,
this compilation does not show the text of the compiled law as modified. For
more information on any modifications, see the series page on the Legislation
Register for the compiled law.
Self-repealing provisions
If a provision of the compiled law has been repealed in accordance with a
provision of the law, details are included in the endnotes.
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Contents
Chapter 1—Introductory 1 Short title...........................................................................1
2 Commencement.................................................................1
3 Definitions.........................................................................1
5 Associated applications .....................................................4
6 Deposit requirements.........................................................4
7 Novelty, inventive step and innovative step ......................5
7A Meaning of useful..............................................................6
9 Secret use ..........................................................................7
10 Certain international applications to be taken to
have been given an international filing date ......................8
11 Act binds the Crown..........................................................8
12 Application of Act .............................................................8
12A Application of the Criminal Code .....................................9
Chapter 2—Patent rights, ownership and validity 10
Part 1—Patent rights 10 13 Exclusive rights given by patent......................................10
14 Assignment of patent.......................................................10
Part 2—Ownership 11 15 Who may be granted a patent? ........................................11
16 Co-ownership of patents..................................................11
17 Directions to co-owners...................................................12
Part 3—Validity 13
Division 1—Validity 13
18 Patentable inventions.......................................................13
19 Certificate of validity.......................................................14
20 Validity of patent not guaranteed ....................................15
21 Validity not implied by making or refusal of
non-infringement declaration ..........................................15
Division 2—Matters not affecting validity 16
22A Validity not affected by who patent is granted to ............16
22 Invalidity in relation to one claim not to affect
validity in relation to other claims ...................................16
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23 Validity not affected by publication etc. after
priority date .....................................................................16
24 Validity not affected by making information
available in certain circumstances ...................................16
25 Validity: patents of addition ............................................17
26 Validity not affected in certain cases involving
amendments.....................................................................17
Division 3—Notice of matters affecting validity 19
27 Notice of matters affecting validity of standard
patents .............................................................................19
28 Notice of matters affecting validity of innovation
patents .............................................................................19
Chapter 3—From application to acceptance 21
Part 1—Patent applications 21
Division 1—Applications 21
29 Application for patent—general rules .............................21
29A Applications for patents—special rules for PCT
applications .....................................................................21
29B Applications for patents—special rules for
Convention applications ..................................................22
30 Filing date........................................................................23
31 Joint applicants................................................................23
32 Disputes between applicants etc. .....................................24
33 Applications by opponents etc.........................................24
34 Applications by eligible persons arising out of
Court proceedings ...........................................................26
35 Applications by eligible persons following
revocation by Commissioner ...........................................27
36 Other applications by eligible persons.............................28
37 Complete application may be treated as
provisional.......................................................................29
38 Time for making complete application............................29
Division 2—Specifications 31
40 Specifications ..................................................................31
41 Specifications: micro-organisms .....................................31
42 Micro-organisms ceasing to be reasonably
available ..........................................................................33
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Division 3—Priority dates 35
43 Priority dates ...................................................................35
43AA Disclosure in basic applications ......................................36
Part 2—Examination of standard patent requests and
specifications 38
Division 1A—Preliminary search and opinion 38
43A Preliminary search and opinion .......................................38
Division 1—Examination 39
44 Request for examination..................................................39
45 Examination ....................................................................39
Part 3—Acceptance 41
Division 1—Acceptance of standard patents 41
49 Acceptance of patent request: standard patent.................41
49A Postponing acceptance of patent request: standard
patent...............................................................................42
50 Application or grant may be refused in certain
cases ................................................................................42
50A Revocation of acceptance ................................................43
51 Appeal .............................................................................44
Division 2—Acceptance of innovation patents 45
52 Formalities check and acceptance of innovation
patents .............................................................................45
Chapter 4—Publication 46 53 Publication of certain information about applicants
etc. ...................................................................................46
54 Notice of publication .......................................................46
55 Documents open to public inspection..............................48
56 Certain documents not to be published............................49
56A Publication and inspection of PCT applications ..............49
57 Effect of publication of complete specification ...............49
58 Result of search may be disclosed ...................................50
Chapter 5—Opposition to grant of standard patent 51 59 Opposition to grant of standard patent.............................51
60 Hearing and decision by Commissioner ..........................51
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Chapter 6—Grant and term of patents 53
Part 1—Grant 53 61 Grant of standard patent ..................................................53
62 Grant and publication of innovation patent .....................53
63 Joint patentees .................................................................54
64 Grant: multiple applications ............................................54
65 Date of patent ..................................................................54
Part 2—Term 56 67 Term of standard patent...................................................56
68 Term of innovation patent ...............................................56
Part 3—Extension of term of standard patents relating to
pharmaceutical substances 57 70 Applications for extension of patent................................57
71 Form and timing of an application ..................................58
72 Notification and public inspection of application ............59
73 Withdrawal of application ...............................................59
74 Acceptance or refusal of application ...............................60
75 Opposition to grant of extension .....................................60
76 Grant of extension ...........................................................61
77 Calculation of term of extension .....................................61
78 Exclusive rights of patentee are limited if
extension granted.............................................................62
79 Rights of patentee if extension granted after patent
expires .............................................................................62
79A Commissioner not to make decision if court
proceedings pending........................................................63
Chapter 6A—Divisional applications 64 79B Divisional applications prior to grant of patent ...............64
79C Divisional applications for innovation patents may
be made after grant of an innovation patent ....................65
Chapter 7—Patents of addition 66 80 Chapter does not apply to innovation patents ..................66
81 Grant of patent of addition ..............................................66
82 Revocation of patent and grant of patent of
addition instead ...............................................................66
83 Term of patent of addition...............................................67
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85 Revocation of patent for main invention .........................68
86 Renewal fees not payable ................................................68
87 Fees payable where patent of addition becomes an
independent patent...........................................................68
Chapter 9—Re-examination of standard patents 69 96A Chapter does not apply to innovation patents ..................69
97 Re-examination of complete specifications .....................69
98 Report on re-examination ................................................70
99 Statement by applicant or patentee ..................................70
100 Copies of report to be given to court ...............................70
100A Refusal to grant patent—re-examination before
grant ................................................................................70
101 Revocation of patent—re-examination after grant ..........71
Chapter 9A—Examination, re-examination and
opposition-innovation patents 73
Part 1—Examination of innovation patents 73 101A Examination may be requested or Commissioner
may decide to examine ....................................................73
101B Examination of an innovation patent ...............................73
101C How and when examination to be carried out .................74
101E Certificate of examination ...............................................74
101EA Revocation of certificate of examination.........................75
101F Revocation of innovation patents following
examination under section 101B .....................................76
Part 2—Re-examination of innovation patents 78 101G Re-examination of complete specifications of
innovation patents ...........................................................78
101H Patentee statements..........................................................79
101J Revocation of innovation patent following
re-examination.................................................................79
101K Relevant proceedings and re-examination.......................80
101L Copies of report to be given to court ...............................80
Part 3—Opposition to innovation patents 81 101M Opposition to innovation patent ......................................81
101N Hearing and decision by the Commissioner ....................81
101P Relevant proceedings and opposition ..............................82
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Chapter 10—Amendments 83
Part 1—Amendments that are not allowable 83 102 What amendments are not allowable? .............................83
103 Consent of mortgagee or exclusive licensee
needed .............................................................................84
Part 2—Amendments of patent requests, specifications and
other filed documents 86 104 Amendments by applicants and patentees .......................86
105 Amendments directed by court........................................86
106 Amendments directed by Commissioner: patents............87
107 Amendments directed by Commissioner:
applications for standard patents .....................................88
109 Appeal .............................................................................89
Part 3—Miscellaneous 90 110 Advertisement of amendment of complete
specification ....................................................................90
112 Pending proceedings........................................................90
112A Decisions on appeal.........................................................90
113 Persons claiming under assignment or agreement ...........90
114 Priority date of claims of certain amended
specifications...................................................................91
114A Objection cannot be taken to certain amended
specifications...................................................................91
115 Restriction on recovery of damages etc. ..........................92
116 Interpretation of amended specifications.........................92
Chapter 11—Infringement 93
Part 1—Infringement and infringement proceedings 93 117 Infringement by supply of products.................................93
118 Infringement exemptions: use in or on foreign
vessels, aircraft or vehicles..............................................93
119 Infringement exemptions: prior use.................................94
119A Infringement exemptions: acts for obtaining
regulatory approval of pharmaceuticals...........................96
119B Infringement exemptions: acts for obtaining
regulatory approval (non-pharmaceuticals) .....................97
119C Infringement exemptions: acts for experimental
purposes ..........................................................................97
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120 Infringement proceedings................................................98
121 Counter-claim for revocation of patent............................98
121A Burden of proof—infringement of patent for a
process.............................................................................99
122 Relief for infringement of patent .....................................99
123 Innocent infringement ...................................................100
Part 2—Non-infringement declarations 101 124 Interpretation .................................................................101
125 Application for non-infringement declaration ...............101
126 Proceedings for non-infringement declarations .............101
127 Effect of non-infringement declarations........................102
Part 3—Unjustified threats of infringement proceedings 103 128 Application for relief from unjustified threats ...............103
129 Court’s power to grant relief if threats related to a
standard patent or standard patent application...............103
129A Threats related to an innovation patent application
or innovation patent and court’s power to grant
relief ..............................................................................104
130 Counter-claim for infringement.....................................105
131 Notification of patent not a threat..................................105
132 Liability of legal practitioner or patent attorney ............105
Chapter 12—Compulsory licences and revocation of
patents 106
Part 1—Introduction 106 132A Simplified outline of this Chapter .................................106
Part 2—Compulsory licences (general) 107 132B Simplified outline of this Part........................................107
133 Compulsory licences—general......................................107
134 Revocation of patent after grant of compulsory
licence under section 133 ..............................................110
135 Reasonable requirements of the public..........................110
136 Orders to be consistent with international
agreements.....................................................................111
136A Dealing with allegation of contravention of
application law ..............................................................111
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Part 3—Patented pharmaceutical invention compulsory
licences (for manufacture and export to eligible
importing countries) 112
Division 1—Introduction 112
136B Simplified outline of this Part........................................112
136C Relationship between Parts 2 and 3...............................112
Division 2—Patented pharmaceutical invention compulsory
licences 113
136D PPI compulsory licences—applications for orders ........113
136E PPI compulsory licences—orders..................................114
136F PPI compulsory licences—terms...................................115
136G PPI compulsory licences—amendment .........................117
136H PPI compulsory licences—revocation...........................118
Division 3—Remuneration 119
136J PPI compulsory licences—remuneration.......................119
Division 4—General 121
136K PPI compulsory licences—nature of orders...................121
136L PPI compulsory licences—consistency of orders
with international agreements........................................121
136M PPI compulsory licences—applications heard
together..........................................................................121
Part 4—Surrender and revocation of patents 122 136N Simplified outline of this Part........................................122
137 Revocation on surrender of patent.................................122
138 Revocation of patents in other circumstances................123
Part 5—Other matters 124 138A Simplified outline of this Part........................................124
139 Parties to proceedings....................................................124
140 Commissioner to be given copies of orders...................124
Chapter 13—Withdrawal and lapsing of applications
and ceasing of patents 125 141 Withdrawal of applications............................................125
142 Lapsing of applications .................................................125
143 Ceasing of patents .........................................................126
143A Ceasing of innovation patents .......................................126
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143B Payment of fees .............................................................127
Chapter 14—Contracts 128 144 Void conditions .............................................................128
145 Termination of contract after patent ceases to be in
force ..............................................................................129
146 Effect of Chapter ...........................................................129
Chapter 15—Special provisions relating to associated
technology 131 147 Certificate by Director as to associated technology.......131
148 Lapsing etc. of applications...........................................132
149 Revocation of direction .................................................132
150 Restoration of lapsed application ..................................132
151 Reinstatement of application as an international
application .....................................................................133
152 Notice of prohibitions or restrictions on
publication.....................................................................134
153 Effect of order ...............................................................135
Chapter 16—Jurisdiction and powers of courts 136 154 Jurisdiction of Federal Court .........................................136
155 Jurisdiction of other prescribed courts...........................136
156 Exercise of jurisdiction..................................................137
157 Transfer of proceedings.................................................137
158 Appeals..........................................................................137
159 Commissioner may appear in appeals ...........................138
160 Powers of Federal Court................................................138
Chapter 17—The Crown 139
Part 1—Introductory 139 161 Nominated persons and patentees..................................139
162 Commonwealth and State authorities ............................139
Part 2—Exploitation by the Crown 140 163 Exploitation of inventions by Crown.............................140
164 Nominated person or patentee to be informed of
exploitation....................................................................140
165 Remuneration and terms for exploitation ......................141
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165A Exploitation of invention to cease under court
order ..............................................................................141
166 Previous agreements inoperative ...................................141
167 Sale of products.............................................................142
168 Supply of products by Commonwealth to foreign
countries ........................................................................142
169 Declarations that inventions have been exploited..........143
170 Sale of forfeited articles ................................................143
Part 3—Acquisitions by and assignments to the Crown 144 171 Acquisition of inventions or patents by
Commonwealth .............................................................144
172 Assignment of invention to Commonwealth .................144
Part 4—Prohibition orders 145 173 Prohibition of publication of information about
inventions ......................................................................145
174 Effect of prohibition orders ...........................................145
175 Disclosure of information to Commonwealth
authority ........................................................................146
176 International applications treated as applications
under this Act ................................................................146
Chapter 18—Miscellaneous offences 147 177 False representations about the Patent Office................147
178 False representations about patents or patented
articles ...........................................................................147
182 Officers not to traffic in inventions ...............................148
183 Unauthorised disclosure of information by
employees etc. ...............................................................149
184 Other unauthorised disclosures of information..............149
185 Commissioner etc. not to prepare documents or
search records................................................................150
Chapter 19—The Register and official documents 151 186 Register of Patents.........................................................151
187 Registration of particulars of patents etc. ......................151
188 Trusts not registrable .....................................................152
189 Power of patentee to deal with patent............................152
190 Inspection of Register....................................................152
191 False entries in Register ................................................153
191A Commissioner’s power to rectify register......................153
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192 Orders for rectification of Register................................154
193 Inspection of documents................................................155
194 Information obtainable from Commissioner..................155
195 Evidence—the Register .................................................155
196 Evidence—unregistered particulars...............................156
197 Evidence—certificate and copies of documents ............156
197AA Evidence of matters arising under PCT .........................157
Chapter 20—Patent Attorneys 158
Part 1—Registration, privileges and professional conduct 158 198 Registration of patent attorneys .....................................158
199 Deregistration ................................................................160
200 Privileges.......................................................................160
200A Designated Manager......................................................161
Part 2—Offences 162 201 Acting or holding out without being registered .............162
201A When a person carries on business, practises or
acts as a patent attorney.................................................164
201B Incorporated patent attorney must have a patent
attorney director ............................................................165
202 Documents prepared by legal practitioners ...................166
202A Documents prepared by a member of a partnership ......167
202B Documents prepared by incorporated patent
attorneys and incorporated legal practices.....................167
203 Attendance at patent attorney’s office ...........................167
204 Time for starting prosecutions.......................................168
Chapter 21—Administration 169 205 Patent Office and sub-offices ........................................169
206 Patent Office seal ..........................................................169
207 Commissioner of Patents...............................................169
208 Deputy Commissioner of Patents ..................................169
209 Delegation of Commissioner’s powers and
functions........................................................................170
210 Commissioner’s powers ................................................170
210A Sanctions for non-compliance with
Commissioner’s requirements .......................................172
211 Recovery of costs awarded by Commissioner ...............173
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174Chapter 22—Miscellaneous 212 Copies of examination reports to be communicated ......174
213 Making and signing applications etc. ............................174
214 Filing of documents.......................................................174
215 Death of applicant or nominated person........................174
216 Exercise of discretionary power by Commissioner .......175
217 Assessors .......................................................................175
218 Costs where patent invalid in part .................................175
219 Security for costs ...........................................................175
220 Costs of attendance of patent attorney...........................176
221 Service of documents ....................................................176
222 Publication of Official Journal etc. ...............................176
222A Doing act when Patent Office reopens after end of
period otherwise provided for doing act ........................177
223 Extensions of time .........................................................178
223A Computerised decision-making .....................................181
224 Review of decisions.......................................................181
225 Conduct of employees and agents of natural
persons ..........................................................................183
226 Documents open to public inspection do not
infringe copyright ..........................................................184
227 Fees payable under this Act...........................................184
227AB Application of administrative law regime to
decisions made in New Zealand ....................................185
227A Trans-Tasman IP Attorneys Board ................................186
227B Publishing personal information of registered
patent attorneys .............................................................190
228 Regulations....................................................................191
Chapter 23—Transitional and savings provisions 231 Application of Part III of 1989 Amending Act..............197
233 Patents granted under 1952 Act.....................................197
234 Applications under 1952 Act.........................................197
235 Other applications and proceedings under 1952
Act.................................................................................199
236 Micro-organisms ...........................................................199
237 Orders, directions etc. under 1952 Act ..........................199
238 The Commissioner and Deputy Commissioner .............199
239 The Register of Patents and Register of Patent
Attorneys .......................................................................199
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240 Registered patent attorneys............................................200
Schedule 1—Dictionary 201
Endnotes 214
Endnote 1—About the endnotes 214
Endnote 2—Abbreviation key 216
Endnote 3—Legislation history 217
Endnote 4—Amendment history 223
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Introductory Chapter 1
Section 1
An Act relating to patents of inventions
Chapter 1—Introductory
1 Short title
This Act may be cited as the Patents Act 1990.
2 Commencement
(1) Subject to subsection (2), this Act commences on a day to be fixed
by Proclamation.
(2) If this Act does not commence under subsection (1) within the
period of 6 months beginning on the day on which it receives the
Royal Assent, it commences on the first day after the end of that
period.
3 Definitions
The following expressions are defined, for the purposes of this Act
or of a particular Chapter of this Act, in the dictionary in
Schedule 1:
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Chapter 1 Introductory
Section 3
application
approved form
associated
technology
Australia
Australian
continental shelf
Australian Register
of Therapeutic
Goods
authority
basic application
Board
Budapest Treaty
certified
claim
commencing day
Commissioner
company
compensable person
complete
specification
Convention applicant
Convention
application
Convention country
deposit requirements
depositary institution
Deputy
Commissioner
Designated Manager
Director
director
Director-General of
IP Australia
eligible importing
country
eligible person
employee
examination
exclusive licensee
exploit
Federal Court
file
foreign aircraft
foreign land vehicle
foreign vessel
formalities check
incorporated legal
practice
incorporated patent
attorney
infringement
proceedings
innovation patent
intellectual property
advice
interested party
international
application
international
depositary
authority
international filing
date
invention
legal practitioner
legal representative
licence
main invention
New Zealand
Commissioner of
Patents
New Zealand Patents
Minister
New Zealand patents
official
nominated person
non-infringement
declaration
Official Journal
patent
patent application
patent area
patent attorney
director
patent of addition
Patent Office
patent request
patentable invention
patented
pharmaceutical
invention
patented process
patented product
patentee
patents work
PCT
PCT application
permit
pharmaceutical
product
pharmaceutical
substance
PPI
PPI compulsory
licence
PPI order
PPI order applicant
PPSA security
interest
preliminary search
and opinion
prescribed court
prescribed depositary
institution
prior art base
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Introductory Chapter 1
Section 3
prior art information
prohibition order
provisional
specification
receiving Office
re-examination
Register
registered
registered patent
attorney
Registrar of
Companies of
New Zealand
related company
group
relevant authority
relevant international
application
relevant proceedings
rules relating to
micro-organisms
Safeguards Act
specification
standard patent
State
Statute of
Monopolies
supply
Territory
therapeutic use
this Act
TRIPS Agreement
work
1952 Act
1989 Amending Act
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Chapter 1 Introductory
Section 5
5 Associated applications
For the purposes of this Act, a complete application is to be taken
to be associated with a provisional application if, and only if, the
patent request filed in respect of the complete application identifies
the provisional application and contains a statement to the effect
that the applications are associated.
[Note: see sections 29 and 38]
6 Deposit requirements
For the purposes of this Act, the deposit requirements are to be
taken to be satisfied in relation to a micro-organism to which a
specification relates if, and only if:
(a) the micro-organism was, on or before the date of filing of the
specification, deposited with a prescribed depositary
institution in accordance with the rules relating to
micro-organisms; and
(b) the specification includes, at that date, such relevant
information on the characteristics of the micro-organism as is
known to the applicant; and
(c) at all times since the end of the prescribed period, the
specification has included:
(i) the name of a prescribed depositary institution from
which samples of the micro-organism are obtainable as
provided by the rules relating to micro-organisms; and
(iii) the file, accession or registration number of the deposit
given by the institution; and
(d) at all times since the date of filing of the specification,
samples of the micro-organism have been obtainable from a
prescribed depositary institution as provided by those rules.
[Note: see sections 41 and 42]
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Introductory Chapter 1
Section 7
7 Novelty, inventive step and innovative step
Novelty
(1) For the purposes of this Act, an invention is to be taken to be novel
when compared with the prior art base unless it is not novel in the
light of any one of the following kinds of information, each of
which must be considered separately:
(a) prior art information (other than that mentioned in
paragraph (c)) made publicly available in a single document
or through doing a single act;
(b) prior art information (other than that mentioned in
paragraph (c)) made publicly available in 2 or more related
documents, or through doing 2 or more related acts, if the
relationship between the documents or acts is such that a
person skilled in the relevant art would treat them as a single
source of that information;
(c) prior art information contained in a single specification of the
kind mentioned in subparagraph (b)(ii) of the definition of
prior art base in Schedule 1.
Inventive step
(2) For the purposes of this Act, an invention is to be taken to involve
an inventive step when compared with the prior art base unless the
invention would have been obvious to a person skilled in the
relevant art in the light of the common general knowledge as it
existed (whether in or out of the patent area) before the priority
date of the relevant claim, whether that knowledge is considered
separately or together with the information mentioned in
subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art
information that the skilled person mentioned in
subsection (2) could, before the priority date of the relevant
claim, be reasonably expected to have combined.
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Chapter 1 Introductory
Section 7A
Innovative step
(4) For the purposes of this Act, an invention is to be taken to involve
an innovative step when compared with the prior art base unless
the invention would, to a person skilled in the relevant art, in the
light of the common general knowledge as it existed (whether in or
out of the patent area) before the priority date of the relevant claim,
only vary from the kinds of information set out in subsection (5) in
ways that make no substantial contribution to the working of the
invention.
(5) For the purposes of subsection (4), the information is of the
following kinds:
(a) prior art information made publicly available in a single
document or through doing a single act;
(b) prior art information made publicly available in 2 or more
related documents, or through doing 2 or more related acts, if
the relationship between the documents or acts is such that a
person skilled in the relevant art would treat them as a single
source of that information.
(6) For the purposes of subsection (4), each kind of information set out
in subsection (5) must be considered separately.
[Notes: (1) For the meaning of document see section 2B of the
Acts Interpretation Act 1901.
(2) See also the definitions of prior art base and prior
art information in Schedule 1: see also
paragraph 18(1)(b) and section 98.]
7A Meaning of useful
(1) For the purposes of this Act, an invention is taken not to be useful
unless a specific, substantial and credible use for the invention (so
far as claimed) is disclosed in the complete specification.
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(2) The disclosure in the complete specification must be sufficient for
that specific, substantial and credible use to be appreciated by a
person skilled in the relevant art.
(3) Subsection (1) does not otherwise affect the meaning of the word
useful in this Act.
9 Secret use
For the purposes of this Act, the following acts are not to be taken
to be secret use of an invention in the patent area:
(a) any use of the invention by or on behalf of, or with the
authority of, the patentee or nominated person, or his or her
predecessor in title to the invention, for the purpose of
reasonable trial or experiment only;
(b) any use of the invention by or on behalf of, or with the
authority of, the patentee or nominated person, or his or her
predecessor in title to the invention, being use occurring
solely in the course of a confidential disclosure of the
invention by or on behalf of, or with the authority of, the
patentee, nominated person, or predecessor in title;
(c) any other use of the invention by or on behalf of, or with the
authority of, the patentee or nominated person, or his or her
predecessor in title to the invention, for any purpose other
than the purpose of trade or commerce;
(d) any use of the invention by or on behalf of the
Commonwealth, a State, or a Territory where the patentee or
nominated person, or his or her predecessor in title to the
invention, has disclosed the invention, so far as claimed, to
the Commonwealth, State or Territory;
(e) any use of the invention by or on behalf of, or with the
authority of, the patentee or nominated person, or his or her
predecessor in title to the invention, for any purpose, if a
complete application is made for the invention within the
prescribed period.
[Note: See also paragraph 18(1)(d)]
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10 Certain international applications to be taken to have been given
an international filing date
(1) Where:
(a) an international application specifies Australia as a
designated State under Article 4(1)(ii) of the PCT; and
(b) the receiving Office does not give the application an
international filing date; and
(c) the Commissioner is satisfied, on the balance of probabilities,
that the application should, under Article 25(2)(a) of the
PCT, be treated as if it had been given an international filing
date;
the application is to be taken, for the purposes of this Act, to have
been given an international filing date under Article 11 of the PCT.
(2) This section does not apply to an international application that was
not filed in the receiving Office in English unless a translation of
the application into English, verified in accordance with the
regulations, has been filed.
(3) Where this section applies, the international filing date of the
application is to be taken to be the date that, in the opinion of the
Commissioner, should have been given to the application as its
international filing date under the PCT.
[Note: international filing date is defined in Schedule 1.]
11 Act binds the Crown
(1) This Act binds the Crown in right of the Commonwealth, of each
of the States, of the Australian Capital Territory and of the
Northern Territory.
(2) Nothing in this Act makes the Crown liable to be prosecuted for an
offence.
12 Application of Act
This Act extends to:
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(a) each external Territory; and
(b) the Australian continental shelf; and
(c) the waters above the Australian continental shelf; and
(d) the airspace above Australia, each external Territory and the
Australian continental shelf.
12A Application of the Criminal Code
Chapter 2 of the Criminal Code applies to all offences created by
this Act.
Note: Chapter 2 of the Criminal Code sets out the general principles of
criminal responsibility.
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Part 1 Patent rights
Section 13
Chapter 2—Patent rights, ownership and
validity
Part 1—Patent rights
13 Exclusive rights given by patent
(1) Subject to this Act, a patent gives the patentee the exclusive rights,
during the term of the patent, to exploit the invention and to
authorise another person to exploit the invention.
(2) The exclusive rights are personal property and are capable of
assignment and of devolution by law.
(3) A patent has effect throughout the patent area.
14 Assignment of patent
(1) An assignment of a patent must be in writing signed by or on
behalf of the assignor and assignee.
(2) A patent may be assigned for a place in, or part of, the patent area.
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Section 15
Part 2—Ownership
15 Who may be granted a patent?
(1) Subject to this Act, a patent for an invention may only be granted
to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled
to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person
mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in
paragraph (a), (b) or (c).
(2) A patent may be granted to a person whether or not he or she is an
Australian citizen.
16 Co-ownership of patents
(1) Subject to any agreement to the contrary, where there are 2 or more
patentees:
(a) each of them is entitled to an equal undivided share in the
patent; and
(b) each of them is entitled to exercise the exclusive rights given
by the patent for his or her own benefit without accounting to
the others; and
(c) none of them can grant a licence under the patent, or assign
an interest in it, without the consent of the others.
(2) Where a patented product, or a product of a patented method or
process, is sold by any of 2 or more patentees, the buyer, and a
person claiming through the buyer, may deal with the product as if
it had been sold by all the patentees.
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(3) This section does not affect the rights or obligations of a trustee or
of the legal representative of a deceased person, or rights or
obligations arising out of either of those relationships.
17 Directions to co-owners
(1) Where there are 2 or more patentees, the Commissioner may, on
the application of any of them, give such directions in accordance
with the application as the Commissioner thinks fit, being
directions about:
(a) a dealing with the patent or an interest in it; or
(b) the grant of licences under the patent; or
(c) the exercise of a right under section 16 in relation to the
patent.
(2) If a patentee fails to do anything necessary to carry out a direction
under subsection (1) within 14 days after being asked in writing to
do so by one of the other patentees, the Commissioner may, on the
application of one of those other patentees, direct a person to do it
in the name and on behalf of the defaulting patentee.
(3) Before giving a direction, the Commissioner must give an
opportunity to be heard:
(a) in the case of an application by a patentee or patentees under
subsection (1)—to the other patentee or patentees; and
(b) in the case of an application under subsection (2)—to the
defaulting patentee.
(4) The Commissioner must not give a direction that:
(a) affects the rights or obligations of a trustee or of the legal
representative of a deceased person, or rights or obligations
arising out of either of those relationships; or
(b) is inconsistent with the terms of an agreement between the
patentees.
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Validity Division 1
Section 18
Part 3—Validity
Division 1—Validity
18 Patentable inventions
Patentable inventions for the purposes of a standard patent
(1) Subject to subsection (2), an invention is a patentable invention for
the purposes of a standard patent if the invention, so far as claimed
in any claim:
(a) is a manner of manufacture within the meaning of section 6
of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the
priority date of that claim:
(i) is novel; and
(ii) involves an inventive step; and
(c) is useful; and
(d) was not secretly used in the patent area before the priority
date of that claim by, or on behalf of, or with the authority of,
the patentee or nominated person or the patentee’s or
nominated person’s predecessor in title to the invention.
Patentable inventions for the purposes of an innovation patent
(1A) Subject to subsections (2) and (3), an invention is a patentable
invention for the purposes of an innovation patent if the invention,
so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6
of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the
priority date of that claim:
(i) is novel; and
(ii) involves an innovative step; and
(c) is useful; and
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(d) was not secretly used in the patent area before the priority
date of that claim by, or on behalf of, or with the authority of,
the patentee or nominated person or the patentee’s or
nominated person’s predecessor in title to the invention.
(2) Human beings, and the biological processes for their generation,
are not patentable inventions.
Certain inventions not patentable inventions for the purposes of an
innovation patent
(3) For the purposes of an innovation patent, plants and animals, and
the biological processes for the generation of plants and animals,
are not patentable inventions.
(4) Subsection (3) does not apply if the invention is a microbiological
process or a product of such a process.
[Note: see also sections 7 and 9.]
19 Certificate of validity
(1) In any proceedings in a court in which the validity of a patent, or of
a claim, is disputed, the court may certify that the validity of a
specified claim was questioned.
(2) If a court issues a certificate, then, in any subsequent proceedings
for infringement of the claim concerned, or for the revocation of
the patent so far as it relates to that claim, the patentee, or any other
person supporting the validity of the claim is, on obtaining a final
order or judgment in his or her favour, entitled to full costs,
charges and expenses as between solicitor and client, so far as that
claim is concerned.
(3) Subsection (2) has effect subject to any direction by the court
trying the proceedings.
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Section 20
20 Validity of patent not guaranteed
(1) Nothing done under this Act or the PCT guarantees the granting of
a patent, or that a patent is valid, in Australia or anywhere else.
(2) The Commonwealth, the Commissioner, a Deputy Commissioner,
or an employee, is not liable because of, or in connection with,
doing any act under this Act or the PCT, or any proceedings
consequent on doing any such act.
21 Validity not implied by making or refusal of non-infringement
declaration
The making of, or refusal to make, a non-infringement declaration
in respect of a claim of a patent does not imply that the claim is
valid.
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Division 2 Matters not affecting validity
Section 22A
Division 2—Matters not affecting validity
22A Validity not affected by who patent is granted to
A patent is not invalid merely because:
(a) the patent, or a share in the patent, was granted to a person
who was not entitled to it; or
(b) the patent, or a share in the patent, was not granted to a
person who was entitled to it.
22 Invalidity in relation to one claim not to affect validity in relation
to other claims
The invalidity of a patent in relation to a claim does not affect its
validity in relation to any other claim.
23 Validity not affected by publication etc. after priority date
A patent is not invalid, so far as the invention is claimed in any
claim, merely because of:
(a) the publication or use of the invention, so far as claimed in
that claim, on or after the priority date of that claim; or
(b) the grant of another patent which claims the invention, so far
as claimed in the first-mentioned claim, in a claim of the
same or a later priority date.
24 Validity not affected by making information available in certain
circumstances
(1) For the purpose of deciding whether an invention is novel or
involves an inventive step or an innovative step, the person making
the decision must disregard:
(a) any information made publicly available in the prescribed
circumstances, by or with the consent of the nominated
person or patentee, or the predecessor in title of the
nominated person or patentee; and
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(b) any information made publicly available without the consent
of the nominated person or patentee, through any publication
or use of the invention by another person who derived the
information from the nominated person or patentee or from
the predecessor in title of the nominated person or patentee;
but only if a complete application for the invention is made within
the prescribed period.
(2) For the purpose of deciding whether an invention is novel or
involves an inventive step or an innovative step, the person making
the decision must disregard:
(a) any information given by, or with the consent of, the
nominated person or the patentee, or his or her predecessor in
title, to any of the following, but to no other person or
organisation:
(i) the Commonwealth or a State or Territory, or an
authority of the Commonwealth or a State or Territory;
(ii) a person authorised by the Commonwealth or a State or
Territory to investigate the invention; and
(b) anything done for the purpose of an investigation mentioned
in subparagraph (a)(ii).
25 Validity: patents of addition
Objection cannot be taken to a patent request or complete
specification in respect of an application for a patent of addition,
and a patent of addition is not invalid, merely because the
invention, so far as claimed, does not involve an inventive step,
having regard to the publication or use of the main invention
during the prescribed period.
26 Validity not affected in certain cases involving amendments
(1) Objection cannot be taken to a patent request and specification that
have been accepted, and a patent is not invalid, merely because the
specification claims an invention that was not the subject of the
request, or that was not described or claimed in the specification as
filed.
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(2) Except in the case of an amendment made in contravention of
section 112 or 112A, objection cannot be taken to a patent request
and specification that have been accepted, and a patent is not
invalid, merely because an amendment of the specification has
been made that was not allowable.
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Section 27
Division 3—Notice of matters affecting validity
27 Notice of matters affecting validity of standard patents
(1) A person may, within the prescribed period after a complete
specification filed in relation to an application for a standard patent
becomes open to public inspection, notify the Commissioner, in
accordance with the regulations, that the person asserts, for reasons
stated in the notice, that the invention concerned is not a patentable
invention because it does not comply with paragraph 18(1)(b).
(2) The Commissioner must inform the applicant for the patent in
writing of any matter of which the Commissioner is notified and
send the applicant a copy of any document accompanying the
notice.
(3) The Commissioner must otherwise consider and deal with a notice
in accordance with the regulations.
(4) A notice and any document accompanying it are open to public
inspection.
28 Notice of matters affecting validity of innovation patents
Person may give notice of invalidity of an innovation patent
(1) A person may notify the Commissioner that the person asserts, for
reasons stated in the notice, that an innovation patent is invalid
because the invention concerned does not comply with
paragraph 18(1A)(b).
When notice may be given
(2) A notice may only be given to the Commissioner under
subsection (1) in respect of an innovation patent within the
prescribed period after an innovation patent has been granted.
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How notice must be given
(3) Notice must be given in accordance with the regulations.
Commissioner must inform patentee of notice given
(4) If the Commissioner receives a notice in respect of an innovation
patent, the Commissioner must inform the patentee, in writing, of
any matter of which the Commissioner is notified and send the
patentee a copy of any document accompanying the notice.
Commissioner to deal with notice in accordance with regulations
(5) The Commissioner must otherwise consider and deal with a notice
in accordance with the regulations.
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Patent applications Part 1
Applications Division 1
Section 29
Chapter 3—From application to acceptance
Part 1—Patent applications
Division 1—Applications
29 Application for patent—general rules
(1) A person may apply for a patent for an invention by filing, in
accordance with the regulations, a patent request and such other
documents as are prescribed.
(2) An application may be a provisional application or a complete
application.
(3) A patent request in relation to a provisional application must be in
the approved form and accompanied by a provisional specification.
(4) A patent request in relation to a complete application must be in
the approved form and accompanied by a complete specification.
(5) In this section:
person includes a body of persons, whether incorporated or not.
[Note: see also section 5 for requirements relating to associated
applications.]
29A Applications for patents—special rules for PCT applications
(1) A PCT application is to be treated as a complete application under
this Act for a standard patent.
(2) The description, drawings and claims contained in a PCT
application are to be treated as a complete specification filed in
respect of the application.
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Section 29B
(3) The specification of a PCT application is to be taken to be
amended in the circumstances, on the day and in the manner as
prescribed by the regulations.
(4) A PCT application is to be taken to comply with the prescribed
requirements of this Act that relate to applications for standard
patents, but is not to be taken, merely because of subsection (1) or
(2), to comply with any other requirements of this Act.
(5) An applicant of a PCT application must do the following within the
prescribed period:
(a) if the application was not filed in the receiving Office in
English—file a translation of the application into English;
(b) in any case—file the prescribed documents and pay the
prescribed fees.
(6) An applicant is not entitled to ask that any action be taken, or that
he or she be allowed to take any action, under this Act in relation
to a PCT application unless the following requirements of
subsection (5) have been met (if applicable):
(a) a translation of the application into English has been filed;
(b) the prescribed documents have been filed;
(c) the prescribed fees have been paid.
Note: A failure to comply with subsection (5) may also result in the PCT
application lapsing: see paragraph 142(2)(f).
29B Applications for patents—special rules for Convention
applications
Making Convention applications
(1) A Convention applicant in relation to a basic application may make
a Convention application, or 2 or more such applicants may make a
joint Convention application.
(2) If 2 or more basic applications for protection in respect of
inventions have been made in one or more Convention countries,
one Convention application may be made by a Convention
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applicant in relation to those basic applications, or by 2 or more
such entitled applicants jointly, in respect of the inventions
disclosed in the basic applications.
(3) Subject to subsections (4) and (5), a Convention application must
be made and dealt with in the same way as any other patent
application.
(4) A patent request relating to a Convention application must:
(a) include the prescribed particulars relating to the relevant
basic application; and
(b) be accompanied by a complete specification.
Meaning of Convention country
(5) Convention country means a foreign country or region of a kind
prescribed by the regulations.
(6) Despite subsection 14(2) of the Legislation Act 2003, regulations
made for the purposes of the definition of Convention country in
subsection (5) may make provision in relation to a matter by
applying, adopting or incorporating, with or without modification,
any matter contained in any other instrument or other writing as in
force or existing from time to time.
30 Filing date
A patent application (including a PCT application) is to be taken to
have been made on the filing date determined under the
regulations.
31 Joint applicants
2 or more persons (within the meaning of section 29) may make a
joint patent application.
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32 Disputes between applicants etc.
(1) If a dispute arises between any 2 or more joint applicants in
relation to a patent application whether, or in what manner, the
application should proceed, the Commissioner may, on a request
made in accordance with the regulations by any of those
applicants, make any determinations the Commissioner thinks fit
for enabling the application to proceed in the name of one or more
of the applicants alone, or for regulating the manner in which it is
to proceed, or both, as the case requires.
(2) The Commissioner may make a determination under subsection (1)
whether or not the application has lapsed.
(3) The Commissioner must not make a determination under
subsection (1) without first giving each joint applicant a reasonable
opportunity to be heard.
33 Applications by opponents etc.
Opposition to standard patent if a person other than nominated
person eligible for grant of patent
(1) If:
(a) an application has been made for a standard patent; and
(b) the grant of the standard patent is opposed under section 59
by one or more persons; and
(c) the Commissioner decides, under section 60, that:
(i) one or more opponents are eligible persons in relation to
the invention, so far as claimed in any claim of the
opposed patent application (the original claim); and
(ii) the nominated person in respect of the application is not
an eligible person in relation to the invention; and
(iii) there is no other reason that a patent should not be
granted; and
(d) a complete application is made under section 29 by one or
more of the eligible persons for a patent in relation to the
invention;
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the Commissioner may grant those eligible persons a patent jointly
for the invention, so far as so claimed.
Opposition to standard patent if nominated person eligible for
grant of patent with other persons
(2) If:
(a) an application has been made for a standard patent; and
(b) the grant of the patent is opposed under section 59 by one or
more persons; and
(c) the Commissioner decides, under section 60:
(i) that both the nominated person and one or more of the
opponents are eligible persons in relation to the
invention, so far as claimed in any claim of the opposed
patent application (the original claim); and
(ii) that there is no other reason that a patent should not be
granted; and
(d) a complete application is made by one or more of the eligible
persons under section 29 for a patent in relation to the
invention;
the Commissioner may grant a patent for the invention, so far as so
claimed, to those eligible persons jointly.
Opposition to innovation patent if patentee not entitled to grant of
patent but another person is
(3) If:
(a) an innovation patent is opposed under section 101M by one
or more persons;
(b) the Commissioner decides, under section 101N, that the
patentee is not entitled to the grant of the patent; and
(c) the Commissioner decides that one or more of the opponents
are eligible persons in relation to the invention the subject of
the patent, so far as claimed in any claim of the patent (the
original claim); and
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(d) a complete application is made by one or more of the eligible
persons under section 29 for a patent in relation to the
invention;
the Commissioner may grant an innovation patent for the
invention, so far as so claimed, to those eligible persons.
Opposition to innovation patent if patentee entitled to grant of
patent with other person
(4) If:
(a) an innovation patent is opposed under section 101M by one
or more persons; and
(b) the Commissioner decides that one or more of the opponents
and the original patentee are eligible persons in relation to the
invention the subject of the patent, so far as claimed in any
claim of the patent (the original claim); and
(c) a complete application is made by one or more of the eligible
persons under section 29 for a patent in relation to the
invention;
the Commissioner may grant an innovation patent for the
invention, so far as so claimed, to those eligible persons jointly.
(5) If the Commissioner grants a patent under subsection (1), (2), (3)
or (4), the claims of that patent granted have the same priority date
as that of the original claim referred to in the respective subsection.
34 Applications by eligible persons arising out of Court proceedings
(1) If, in any proceedings in a court relating to a patent (the first
patent), the court is satisfied either:
(a) that one or more persons are eligible persons in relation to an
invention so far as claimed in any claim of the patent (the
original claim) but that the patentee is not an eligible person;
or
(b) that the patentee and another person or persons are eligible
persons in relation to an invention so far as claimed in any
claim of the first patent (the original claim);
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the court, in addition to any other order it may make in the
proceedings, may, by order, declare that the persons who it is
satisfied are eligible persons are eligible persons in relation to that
invention so far as so claimed.
(2) Subject to subsection (3), if a complete application is made under
section 29 by one or more declared persons, the Commissioner
may grant a patent for the invention, so far as claimed in the
original claim, to those declared persons jointly.
(3) If the Commissioner grants a patent under subsection (2), the
claims of that patent have the same priority date as that of the
original claim.
35 Applications by eligible persons following revocation by
Commissioner
(1) If the Commissioner:
(a) revokes a patent under section 137; and
(b) is satisfied, on the balance of probabilities:
(i) on application made by one or more persons in
accordance with the regulations, that the persons are
eligible persons in relation to the invention concerned,
so far as so claimed in any claim of the revoked patent
(the original claim) and that the former patentee is not
such an eligible person; or
(ii) on application made by one or more persons in
accordance with the regulations, that the persons and the
former patentee are eligible persons in relation to the
invention concerned, so far as is claimed in any claim of
the revoked patent (the original claim);
the Commissioner may declare in writing that the eligible persons
are such eligible persons.
(1A) If a complete application is made under section 29 by one or more
of the declared persons, the Commissioner may grant a patent for
the invention, so far as so claimed, to those declared persons
jointly.
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Section 36
(1B) If the Commissioner grants a patent under subsection (1A), the
claims of that patent have the same priority date as that of the
original claim as referred to in subsection (1).
(2) The Commissioner must not make a declaration without first
giving the former patentee a reasonable opportunity to be heard.
(3) An appeal lies to the Federal Court against a decision of the
Commissioner making, or refusing to make, a declaration.
36 Other applications by eligible persons
(1) If:
(a) a patent application has been made and, in the case of a
complete application, the patent has not been granted; and
(b) an application for a declaration by the Commissioner is made
by one or more persons (the section 36 applicants) in
accordance with the regulations; and
(c) the Commissioner is satisfied on the balance of probabilities,
in relation to an invention disclosed in the specification filed
in relation to the application for the patent:
(i) that the nominated person is not an eligible person, but
that the section 36 applicants are eligible persons; or
(ii) that the nominated person is an eligible person, but that
the section 36 applicants are also eligible persons;
the Commissioner may declare in writing that the persons who the
Commissioner is satisfied are eligible persons are eligible persons
in relation to the invention as so disclosed.
(2) The Commissioner may make a declaration under subsection (1)
whether or not the patent application lapses or is withdrawn.
(3) The Commissioner must not make a declaration under
subsection (1) without first giving the nominated person a
reasonable opportunity to be heard.
(3A) The Commissioner may, after making a declaration under
subsection (1), make any determination the Commissioner thinks
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Section 37
fit for enabling the application to proceed in the name of one or
more of the declared persons.
(4) If a complete application is made under section 29 by one or more
of the declared persons, the priority date of the claims of a patent
for the invention granted to the person, or persons, as the case may
be, must be determined under the regulations.
(5) An appeal lies to the Federal Court against a decision by the
Commissioner under this section.
37 Complete application may be treated as provisional
(1) Where a complete application is made, the applicant may, at any
time during the prescribed period, by written request, ask the
Commissioner to direct that the application be treated as a
provisional application.
(2) A person is not entitled to make a request if the patent request and
specification filed in respect of the application have been accepted
or have become open to public inspection.
(3) On receiving a request, the Commissioner must give a direction as
asked.
(4) Where the Commissioner gives a direction, the complete
application is to be taken, for the purposes of this Act, to be, and to
have always been, a provisional application.
38 Time for making complete application
(1) If an applicant makes a provisional application, the applicant may
make one or more complete applications associated with the
provisional application at any time within the prescribed period.
(1A) A Convention application must be made within the prescribed
period.
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Division 1 Applications
Section 38
(2) In this section:
applicant includes a person entitled to make a request under
section 113 in relation to the relevant patent application.
[Note: see also section 5 for requirements relating to associated
applications.]
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Patent applications Part 1
Specifications Division 2
Section 40
Division 2—Specifications
40 Specifications
Requirements relating to provisional specifications
(1) A provisional specification must disclose the invention in a manner
which is clear enough and complete enough for the invention to be
performed by a person skilled in the relevant art.
Requirements relating to complete specifications
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and
complete enough for the invention to be performed by a
person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of
performing the invention; and
(b) where it relates to an application for a standard patent—end
with a claim or claims defining the invention; and
(c) where it relates to an application for an innovation patent—
end with at least one and no more than 5 claims defining the
invention.
(3) The claim or claims must be clear and succinct and supported by
matter disclosed in the specification.
(3A) The claim or claims must not rely on references to descriptions or
drawings unless absolutely necessary to define the invention.
(4) The claim or claims must relate to one invention only.
41 Specifications: micro-organisms
Provisional specifications
(1A) A specification is taken to comply with subsection 40(1), so far as
it requires a description of a micro-organism, if:
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Section 41
(a) the micro-organism is deposited with a prescribed depository
institution in accordance with such provisions of the
Budapest Treaty as are applicable; and
(b) the prescribed circumstances apply.
Complete specifications
(1) To the extent that an invention is a micro-organism, the complete
specification is to be taken to comply with paragraph 40(2)(a), so
far as it requires a description of the micro-organism, if the deposit
requirements are satisfied in relation to the micro-organism.
(2) Where:
(a) an invention involves the use, modification or cultivation of a
micro-organism, other than the micro-organism mentioned in
subsection (1); and
(b) a person skilled in the relevant art in the patent area could not
reasonably be expected to perform the invention without
having a sample of the micro-organism before starting to
perform the invention; and
(c) the micro-organism is not reasonably available to a person
skilled in the relevant art in the patent area;
the specification is to be taken to comply with paragraph 40(2)(a),
so far as it requires a description of the micro-organism, if, and
only if, the deposit requirements are satisfied in relation to the
micro-organism.
(3) For the purposes of this section, a micro-organism may be taken to
be reasonably available to a person even if it is not so available in
the patent area.
(4) Where:
(a) the requirements specified in paragraph 6(c) or (d) cease to
be satisfied in relation to a micro-organism; and
(b) steps are taken at a later time within the prescribed period in
accordance with such provisions (if any) of the regulations as
are applicable; and
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Section 42
(c) as a result of those steps, if the period during which those
requirements are not satisfied is disregarded, those
requirements would be satisfied at that later time;
those requirements are to be taken to have been satisfied during the
period mentioned in paragraph (c), and such provisions as are
prescribed have effect for the protection or compensation of
persons who availed themselves, or took definite steps by way of
contract or otherwise to avail themselves, of the invention during
that period.
[Note: see also section 6 in relation to satisfaction of deposit
requirements.]
42 Micro-organisms ceasing to be reasonably available
(1) Where:
(a) a complete application has been made for a patent, or a patent
has been granted for an invention of a kind mentioned in
paragraph 41(2)(a); and
(b) the relevant micro-organism was, at the date of filing of the
complete specification, reasonably available (within the
meaning of section 41) to a skilled person working in the
relevant art in the patent area; and
(c) the micro-organism has ceased to be so available;
a prescribed court or the Commissioner, on application made in
accordance with the regulations, or the Commissioner, on his or
her own motion, may declare that the specification does not
comply with section 40 unless the deposit requirements are
satisfied in relation to the micro-organism.
(2) Where a declaration is made under subsection (1):
(a) this Act has effect in relation to the specification accordingly;
and
(b) section 6 applies as if the references in that section to the date
of filing of the specification were references to a date
specified in the declaration for the purposes of this
subsection.
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Section 42
(3) Subsection (2) does not limit the operation of section 223.
(4) Where:
(a) an application is made under subsection (1); or
(b) the Commissioner proposes to make a declaration under that
subsection on his or her own motion;
the applicant for the patent, or the patentee, as the case may be,
must be notified, in accordance with the regulations, of the
application or proposal and is entitled to appear and be heard.
(5) A declaration by the Commissioner must be made in accordance
with the regulations.
(6) An office copy of a declaration by a prescribed court must be
served on the Commissioner by the Registrar or other appropriate
officer of the court.
(7) An appeal lies to the Federal Court against a decision of the
Commissioner under subsection (1).
[Note: see also section 6 in relation to satisfaction of deposit
requirements.]
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Patent applications Part 1
Priority dates Division 3
Section 43
Division 3—Priority dates
43 Priority dates
(1) Each claim of a specification must have a priority date.
(2) The priority date of a claim is:
(a) if subsection (2A) applies to the claim—the date determined
under the regulations; or
(b) otherwise—the date of the filing of the specification.
(2A) This subsection applies to a claim if:
(a) prescribed circumstances apply in relation to the invention
defined in the claim; and
(b) a prescribed document discloses, or a prescribed set of
prescribed documents considered together disclose, the
invention in the claim in a manner that is clear enough and
complete enough for the invention to be performed by a
person skilled in the relevant art.
(2B) A prescribed document, or a prescribed set of prescribed
documents considered together, is taken to disclose the invention in
a claim as mentioned in paragraph (2A)(b) so far as such disclosure
requires a description of a micro-organism, if:
(a) the micro-organism is deposited with a prescribed depository
institution in accordance with such provisions of the
Budapest Treaty as are applicable; and
(b) the prescribed circumstances apply.
(3) Where a claim defines more than one form of an invention, then,
for the purposes of determining the priority date of the claim, it
must be treated as if it were a separate claim for each form of the
invention that is defined.
(4) The priority date of a claim of a specification may be different
from the priority date of any other claim of the specification.
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Section 43AA
(5) If, at the time when a Convention application or a PCT application
is made in respect of an invention:
(a) an application (the earlier application) has been made for
protection in respect of the invention in a Convention
country; and
(b) the earlier application was made in the prescribed period; and
(c) the earlier application has been withdrawn, abandoned or
refused without becoming open to public inspection; and
(d) the earlier application has not been used as the basis of
claiming a right of priority in a Convention country under a
law of that country; and
(e) a later application has been made by the same applicant for
protection in respect of the invention in a Convention
country;
the earlier application is taken, for the purposes of this Act, to have
never been made.
Note: For the purposes of paragraph (e), the later application need not have
been made in the same Convention country as the earlier application.
43AA Disclosure in basic applications
Prescribed documents relating to basic applications
(1) The regulations may prescribe documents that relate to a basic
application.
Disclosures in prescribed documents may generally be taken into
account
(2) Without limiting the documents or disclosures that may be taken
into account for the purposes of this Act in relation to a basic
application, account may be taken of a disclosure in a prescribed
document that relates to a basic application.
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Section 43AA
Disclosures in prescribed documents must not be taken into
account if Commissioner’s requirement not complied with
(3) However, if the Commissioner makes a requirement under
subsection (4) in relation to a prescribed document, account must
not be taken, for the purposes of this Act, of a disclosure in the
prescribed document unless the document has been made available
by the prescribed means and within the prescribed period.
Commissioner may require prescribed documents be made
available
(4) The Commissioner may require that a prescribed document relating
to a basic application be made available to the Commissioner by
the prescribed means and within the prescribed period.
(5) The Commissioner may make a requirement under subsection (4)
more than once in relation to the same prescribed document.
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Part 2 Examination of standard patent requests and specifications
Division 1A Preliminary search and opinion
Section 43A
Part 2—Examination of standard patent requests
and specifications
Division 1A—Preliminary search and opinion
43A Preliminary search and opinion
(1) If a complete application for a standard patent has been made, the
Commissioner may conduct a preliminary search and opinion in
relation to the patent request and specification relating to the
application.
(2) The preliminary search and opinion must be conducted in
accordance with the regulations.
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Examination Division 1
Section 44
Division 1—Examination
44 Request for examination
(1) Where a complete application for a standard patent has been made,
the applicant may, within the prescribed period and in accordance
with the regulations, ask for an examination of the patent request
and specification relating to the application.
(2) Where a complete application has been made for a standard patent,
the Commissioner may, on one or more of the prescribed grounds
and in accordance with the regulations, direct the applicant to ask,
within the prescribed period, for an examination of the patent
request and complete specification relating to the application.
(3) Where the patent request and specification relating to a complete
application for a standard patent are open to public inspection, a
person may, in accordance with the regulations, require the
Commissioner to direct the applicant to ask, within the prescribed
period, for an examination of the request and specification.
(4) Where required under subsection (3), the Commissioner must give
a direction accordingly, unless the applicant has already asked, or
been directed to ask, for an examination of the patent request and
specification.
45 Examination
(1) Subject to subsection (1A), if an applicant asks for an examination
of a patent request and complete specification relating to an
application for a standard patent, the Commissioner must examine
the request and specification and report on:
(a) whether the specification complies with subsections 40(2) to
(4); and
(b) whether, to the best of his or her knowledge, the invention, so
far as claimed, satisfies the criteria mentioned in paragraphs
18(1)(a), (b) and (c); and
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Division 1 Examination
Section 45
(c) whether the invention is a patentable invention under
subsection 18(2); and
(d) such other matters (if any) as are prescribed.
(1A) If a PCT application has been made and the prescribed
requirements have not been met, the Commissioner may decline to
examine the request and specification under subsection (1) until the
requirements have been met.
(2) The examination must be carried out in accordance with the
regulations.
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Acceptance Part 3
Acceptance of standard patents Division 1
Section 49
Part 3—Acceptance
Division 1—Acceptance of standard patents
49 Acceptance of patent request: standard patent
(1) Subject to section 50, the Commissioner must accept a patent
request and complete specification relating to an application for a
standard patent if the Commissioner is satisfied, on the balance of
probabilities:
(a) that the specification complies with subsections 40(2) to (4);
and
(b) that the invention, so far as claimed, satisfies the criteria
mentioned in paragraphs 18(1)(a), (b) and (c); and
(c) that the invention is a patentable invention under
subsection 18(2); and
(d) as to the matters (if any) prescribed under
paragraph 45(1)(d).
(2) If subsection (1) does not apply, the Commissioner may refuse to
accept the request and specification.
(5) Where the Commissioner accepts a patent request and complete
specification relating to an application for a standard patent, the
Commissioner must:
(a) notify the applicant in writing of the acceptance; and
(b) publish a notice of the acceptance in the Official Journal.
(6) If the patent request and complete specification have not already
become open to public inspection, the notice mentioned in
paragraph (5)(b) must include a statement to the effect that the
patent request and specification are open to public inspection.
(7) Where the Commissioner refuses to accept a patent request and
complete specification relating to an application for a standard
patent, the Commissioner must notify the applicant in writing of
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Part 3 Acceptance
Division 1 Acceptance of standard patents
Section 49A
the reasons for the refusal and publish a notice of the refusal in the
Official Journal.
49A Postponing acceptance of patent request: standard patent
(1) The Commissioner may postpone acceptance of a patent request
and complete specification:
(a) on his or her own initiative; or
(b) if requested to do so in writing by the applicant.
(2) If the Commissioner postpones acceptance on his or her own
initiative, he or she must specify a day to which acceptance is
postponed.
(3) If the Commissioner postpones acceptance following a request by
the applicant, the Commissioner may specify a day to which
acceptance is postponed.
(4) The day specified under subsection (2) or (3) cannot be a day that
is after the end of the period prescribed for the purposes of
paragraph 142(2)(e).
(5) If:
(a) acceptance is postponed under subsection (1) following a
request by the applicant; and
(b) the Commissioner has not specified a day to which
acceptance is postponed;
the Commissioner is not required to accept the patent request and
complete specification unless the applicant withdraws the request
in writing.
Note: If the applicant does not withdraw the request before the day
prescribed by the regulations, the application lapses: see
paragraph 142(2)(e).
50 Application or grant may be refused in certain cases
(1) The Commissioner may refuse to accept a request and specification
relating to a standard patent, or to grant a standard patent:
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Acceptance of standard patents Division 1
Section 50A
(a) for an invention the use of which would be contrary to law;
or
(b) on the ground that the specification claims as an invention:
(i) a substance that is capable of being used as food or
medicine (whether for human beings or animals and
whether for internal or external use) and is a mere
mixture of known ingredients; or
(ii) a process producing such a substance by mere
admixture.
(2) The Commissioner may refuse to accept a specification relating to
a standard patent containing a claim that includes the name of a
person as the name, or part of the name, of the invention so far as
claimed in that claim.
50A Revocation of acceptance
(1) The Commissioner may revoke the acceptance of a patent request
and complete specification relating to an application for a standard
patent if the Commissioner is satisfied, on the balance of
probabilities, that:
(a) a patent has not been granted on the application; and
(b) the request and specification should not have been accepted,
taking account of all the circumstances that existed when the
request and specification were accepted (whether or not the
Commissioner knew then of their existence); and
(c) it is reasonable to revoke the acceptance, taking account of
all the circumstances.
(2) If the Commissioner revokes the acceptance:
(a) the patent request and complete specification are taken to
have never been accepted; and
(b) the Commissioner must continue to examine, and report on,
the application under section 45; and
(c) sections 49 and 50 continue to apply in relation to the request
and specification.
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Part 3 Acceptance
Division 1 Acceptance of standard patents
Section 51
51 Appeal
An appeal lies to the Federal Court against a decision of the
Commissioner under this Division (other than a decision under
section 50A).
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Acceptance Part 3
Acceptance of innovation patents Division 2
Section 52
Division 2—Acceptance of innovation patents
52 Formalities check and acceptance of innovation patents
(1) If a complete application for an innovation patent is made, the
Commissioner must undertake a formalities check in respect of the
application.
(2) If satisfied, on the balance of probabilities, that the application
passes the formalities check, the Commissioner must accept the
patent request and complete specification.
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Chapter 4 Publication
Section 53
Chapter 4—Publication
53 Publication of certain information about applicants etc.
(1) If a patent application (other than a PCT application) is made, the
Commissioner must publish in the Official Journal the prescribed
information about the applicant and the application.
(2) The regulations may make provision for and in relation to the
publication of information relating to PCT applications.
54 Notice of publication
(1) Where a complete specification filed in respect of an application
for a standard patent (other than a PCT application) has not
become open to public inspection, the Commissioner must, if
asked to do so by the applicant, publish, in accordance with the
regulations, a notice in the Official Journal that the complete
specification is open to public inspection.
(2) If subsection 41(2) applies to a specification, the applicant cannot
make a request under subsection (1) in relation to the specification
unless the specification includes the particulars mentioned in
paragraph 6(c).
(3) Where:
(a) a complete specification has been filed in respect of an
application for a standard patent (other than a PCT
application); and
(b) the prescribed period has ended; and
(c) the specification is not open to public inspection;
the Commissioner must publish a notice in the Official Journal that
the specification is open to public inspection, unless the application
has lapsed or been refused or withdrawn.
(4) Where:
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Section 54
(a) a divisional application for a standard patent provided for in
section 79B (other than a PCT application) is made in respect
of an original application, whether a PCT application or not;
and
(b) the complete specification filed in respect of the original
application was open to public inspection when the divisional
application was made;
the Commissioner must publish a notice in the Official Journal that
the complete specification filed in respect of the divisional
application is open to public inspection.
(5) Where a divisional application for a standard patent provided for in
section 79B (other than a PCT application) is made in respect of an
original application that is not a PCT application and:
(a) a notice is published in the Official Journal that the complete
specification filed in respect of the original application is
open to public inspection; or
(b) a notice is published in the Official Journal that the complete
specification filed in respect of the divisional application is
open to public inspection;
the Commissioner must also publish in the Official Journal a
notice that:
(c) where paragraph (a) applies—the complete specification filed
in respect of the divisional application is open to public
inspection; or
(d) where paragraph (b) applies—the complete specification
filed in respect of the original application is open to public
inspection.
(6) Where:
(a) a divisional application for a standard patent provided for in
section 79B (other than a PCT application) is made in respect
of an original application that is a PCT application; and
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Section 55
(b) a notice is published in the Official Journal that the complete
specification filed in respect of the original application is
open to public inspection;
the Commissioner must also publish in the Official Journal a
notice that the complete specification filed in respect of the
divisional application is open to public inspection.
55 Documents open to public inspection
(1) Where a notice is published under section 54 or under
subsection 62(3), the specification concerned, and such other
documents (if any) as are prescribed, are open to public inspection.
(2) Where a notice is published under paragraph 49(5)(b) in relation to
an application for a standard patent, or under subsection 62(2) in
relation to the grant of an innovation patent, the following
documents are open to public inspection:
(a) all documents (other than prescribed documents) filed in
relation to the application or the patent, whether before or
after the acceptance or grant;
(b) all documents (other than prescribed documents) filed, after
the patent ceases, expires or is revoked, in relation to the
former patent;
(c) copies of all documents relating to the application or patent
(other than prescribed documents) given by the
Commissioner to the applicant or patentee, or the former
applicant or patentee;
being documents that have not already become open to public
inspection.
(3) Subject to section 56A, a specification, or other document, is to be
taken to have been published on the day on which it becomes open
to public inspection unless it has been published otherwise before
that day.
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Section 56
56 Certain documents not to be published
(1) Except as otherwise provided by this Act, documents of the kind
mentioned in section 55:
(a) must not be published or be open to public inspection; and
(b) are not liable to be inspected or produced before the
Commissioner or in a legal proceeding unless the
Commissioner, court, or any person having power to order
inspection or production, directs that the inspection or
production be allowed.
(2) Notice of an application for the production in legal proceedings of
a document of the kind mentioned in section 55 must be given to
the Commissioner, who is entitled to be heard on the application.
56A Publication and inspection of PCT applications
(1) The regulations may make provision for and in relation to the
public inspection of PCT applications.
(2) Without limiting subsection (1), the regulations may make
provision for and in relation to:
(a) notices regarding the opening of complete specifications
relating to PCT applications to public inspection; and
(b) the circumstances in which PCT applications become open to
public inspection.
57 Effect of publication of complete specification
(1) After a complete specification relating to an application for a
standard patent has become open to public inspection and until a
patent is granted on the application, the applicant has the same
rights as he or she would have had if a patent for the invention had
been granted on the day when the specification became open to
public inspection.
(3) Subsection (1) does not give the applicant a right to start
proceedings in respect of the doing of an act unless:
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Section 58
(a) a patent is granted on the application; and
(b) the act would, if done after the grant of the patent, have
constituted an infringement of a claim of the specification.
(4) It is a defence to proceedings under subsection (1) in respect of an
act done:
(a) after the complete specification became open to public
inspection; and
(b) before the patent request was accepted:
if the defendant proves that a patent could not validly have been
granted to the applicant in respect of the claims (as framed when
the act was done) that are alleged to have been infringed by the
doing of the act.
(5) For the purposes of applying this section to a PCT application,
references to the complete specification becoming open to public
inspection are references to the PCT application becoming open to
public inspection in accordance with regulations made for the
purposes of section 56A.
58 Result of search may be disclosed
The Commissioner may disclose the result of any search made for
the purpose of making a report under this Act.
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Opposition to grant of standard patent Chapter 5
Section 59
Chapter 5—Opposition to grant of standard
patent
59 Opposition to grant of standard patent
The Minister or any other person may, in accordance with the
regulations, oppose the grant of a standard patent on one or more
of the following grounds, but on no other ground:
(a) that the nominated person is either:
(i) not entitled to a grant of a patent for the invention; or
(ii) entitled to a grant of a patent for the invention but only
in conjunction with some other person;
(b) that the invention is not a patentable invention;
(c) that the specification filed in respect of the complete
application does not comply with subsection 40(2) or (3).
60 Hearing and decision by Commissioner
(1) Where the grant of a standard patent is opposed, the Commissioner
must decide the case in accordance with the regulations.
(2) The Commissioner must give the applicant and the opponent a
reasonable opportunity to be heard before deciding a case.
(3) The Commissioner may, in deciding a case, take into account any
ground on which the grant of a standard patent may be opposed,
whether relied upon by the opponent or not.
(3A) If the Commissioner is satisfied, on the balance of probabilities,
that a ground of opposition to the grant of the standard patent
exists, the Commissioner may refuse the application.
(3B) The Commissioner must not refuse an application under this
section unless the Commissioner has, where appropriate, given the
applicant a reasonable opportunity to amend the relevant
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Chapter 5 Opposition to grant of standard patent
Section 60
specification for the purpose of removing any ground of opposition
and the applicant has failed to do so.
(4) The applicant, and any opponent, may appeal to the Federal Court
against a decision of the Commissioner under this section.
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Grant and term of patents Chapter 6
Grant Part 1
Section 61
Chapter 6—Grant and term of patents
Part 1—Grant
61 Grant of standard patent
(1) Subject to section 100A and paragraph 210A(2)(a), the
Commissioner must grant a standard patent, by registering
prescribed particulars of the patent in the Register, if:
(a) there is no opposition to the grant; or
(b) in spite of opposition, the Commissioner’s decision, or the
decision on appeal, is that a standard patent should be
granted.
(2) A standard patent must be granted within the prescribed period.
(3) The Commissioner must notify the patentee that the standard
patent has been granted.
62 Grant and publication of innovation patent
(1) If:
(a) the Commissioner accepts a patent request and complete
specification filed in respect of an application for an
innovation patent; and
(b) a prohibition order is not in force under subsection 152(3) or
173(1) in relation to the application;
the Commissioner must grant the innovation patent by registering
prescribed particulars of the patent in the Register.
(2) If an innovation patent is granted, the Commissioner must publish
a notice in the Official Journal stating that:
(a) the innovation patent has been granted; and
(b) the patent request and complete specification are open to
public inspection.
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Part 1 Grant
Section 63
(3) If:
(a) a divisional application provided for in section 79B is made
for an innovation patent; and
(b) a notice is published in the Official Journal that the complete
specification filed in respect of the divisional application is
open to public inspection;
the Commissioner must also publish in the Official Journal a
notice that the complete specification filed in respect of the original
application on which the divisional application is based is open to
public inspection.
(4) The Commissioner must notify the patentee that the innovation
patent has been granted.
63 Joint patentees
A patent may be granted to 2 or more nominated persons jointly.
64 Grant: multiple applications
(1) Subject to this section, where there are 2 or more applications for
patents for identical, or substantially identical, inventions, the
granting of a patent on one of those applications does not prevent
the granting of a patent on any of the other applications.
(2) Where:
(a) an application for a standard patent claims an invention that
is the same as an invention that is the subject of a patent and
is made by the same inventor; and
(b) the relevant claim or claims in each of the complete
specifications have the same priority date or dates;
a standard patent cannot be granted on the application.
65 Date of patent
The date of a patent is:
(a) the date of filing of the relevant complete specification; or
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Section 65
(b) where the regulations provide for the determination of a
different date as the date of a patent—the date determined
under the regulations.
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Chapter 6 Grant and term of patents
Part 2 Term
Section 67
Part 2—Term
67 Term of standard patent
The term of a standard patent is 20 years from the date of the
patent.
68 Term of innovation patent
The term of an innovation patent is 8 years from the date of the
patent.
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Grant and term of patents Chapter 6
Extension of term of standard patents relating to pharmaceutical substances Part 3
Section 70
Part 3—Extension of term of standard patents
relating to pharmaceutical substances
70 Applications for extension of patent
(1) The patentee of a standard patent may apply to the Commissioner
for an extension of the term of the patent if the requirements set out
in subsections (2), (3) and (4) are satisfied.
(2) Either or both of the following conditions must be satisfied:
(a) one or more pharmaceutical substances per se must in
substance be disclosed in the complete specification of the
patent and in substance fall within the scope of the claim or
claims of that specification;
(b) one or more pharmaceutical substances when produced by a
process that involves the use of recombinant DNA
technology, must in substance be disclosed in the complete
specification of the patent and in substance fall within the
scope of the claim or claims of that specification.
(3) Both of the following conditions must be satisfied in relation to at
least one of those pharmaceutical substances:
(a) goods containing, or consisting of, the substance must be
included in the Australian Register of Therapeutic Goods;
(b) the period beginning on the date of the patent and ending on
the first regulatory approval date for the substance must be at
least 5 years.
Note: Section 65 sets out the date of a patent.
(4) The term of the patent must not have been previously extended
under this Part.
Meaning of first regulatory approval date
(5) For the purposes of this section, the first regulatory approval date,
in relation to a pharmaceutical substance, is:
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Section 71
(a) if no pre-TGA marketing approval was given in relation to
the substance—the date of commencement of the first
inclusion in the Australian Register of Therapeutic Goods of
goods that contain, or consist of, the substance; or
(b) if pre-TGA marketing approval was given in relation to the
substance—the date of the first approval.
(5A) For the purposes of paragraph (5)(a), disregard an inclusion in the
Australian Register of Therapeutic Goods of goods that contain, or
consist of, a pharmaceutical substance if the inclusion was sought
for the sole purpose of exporting the goods from Australia to
address a public health problem in an eligible importing country:
(a) in circumstances of national emergency or other
circumstances of extreme urgency; or
(b) by the public non-commercial use of the goods.
Note: This subsection also applies in relation to an application for an
extension of the term of a standard patent (see paragraph 71(2)(b)).
Meaning of pre-TGA marketing approval
(6) For the purposes of this section, pre-TGA marketing approval, in
relation to a pharmaceutical substance, is an approval (however
described) by a Minister, or a Secretary of a Department, to:
(a) market the substance, or a product containing the substance,
in Australia; or
(b) import into Australia, for general marketing, the substance or
a product containing the substance.
71 Form and timing of an application
Form of application
(1) An application for an extension of the term of a standard patent
must:
(a) be in the approved form; and
(b) be accompanied by such documents (if any) as are
ascertained in accordance with the regulations; and
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(c) be accompanied by such information (if any) as is ascertained
in accordance with the regulations.
For this purpose, document includes a copy of a document.
Timing of application
(2) An application for an extension of the term of a standard patent
must be made during the term of the patent and within 6 months
after the latest of the following dates:
(a) the date the patent was granted;
(b) the date of commencement of the first inclusion in the
Australian Register of Therapeutic Goods of goods that
contain, or consist of, any of the pharmaceutical substances
referred to in subsection 70(3), as worked out under
subsection 70(5A) (if applicable);
(c) the date of commencement of this section.
72 Notification and public inspection of application
If a patentee makes an application for an extension of the term of a
standard patent, the Commissioner must publish in the Official
Journal a notice that the application has been made and is open to
public inspection.
73 Withdrawal of application
(1) A patentee who has applied for an extension of the term of a
standard patent may, by notice in writing to the Commissioner,
withdraw the application.
(2) If an application for an extension of the term of a standard patent is
withdrawn, the Commissioner must publish in the Official Journal
a notice stating that the application has been withdrawn.
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Part 3 Extension of term of standard patents relating to pharmaceutical substances
Section 74
74 Acceptance or refusal of application
Acceptance
(1) If a patentee of a standard patent makes an application for an
extension of the term of the patent, the Commissioner must accept
the application if the Commissioner is satisfied, on the balance of
probabilities, that the requirements of sections 70 and 71 are
satisfied in relation to the application.
(2) If the Commissioner accepts the application, the Commissioner
must:
(a) notify the applicant in writing of the acceptance; and
(b) publish a notice of the acceptance in the Official Journal.
Refusal
(3) The Commissioner must refuse to accept the application if the
Commissioner is not satisfied, on the balance of probabilities, that
the requirements of sections 70 and 71 are satisfied in relation to
the application.
(4) If the Commissioner refuses to accept the application, the
Commissioner must:
(a) notify the applicant in writing of the reasons for the refusal;
and
(b) publish a notice of the refusal in the Official Journal.
75 Opposition to grant of extension
(1) The Minister or any other person may, in accordance with the
regulations, oppose the grant of an extension of the term of a
standard patent on the ground that one or more of the requirements
of sections 70 and 71 are not satisfied in relation to the application
for the extension. The Minister or other person may not oppose the
grant of the extension on any other ground.
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(2) If the grant of an extension of the term of a standard patent is
opposed, the Commissioner must decide the case in accordance
with the regulations.
(3) The Commissioner must give the applicant and the opponent a
reasonable opportunity to be heard before deciding a case.
(4) The applicant, and any opponent, may appeal to the Federal Court
against a decision of the Commissioner under this section.
76 Grant of extension
(1) The Commissioner must grant an extension of the term of a
standard patent if:
(a) there is no opposition to the grant; or
(b) in spite of opposition, the Commissioner’s decision, or the
decision on appeal, is that the extension should be granted.
(2) If the Commissioner grants an extension, the Commissioner must
notify the applicant in writing of the grant and publish a notice of
the grant in the Official Journal.
77 Calculation of term of extension
(1) If the Commissioner grants an extension of the term of a standard
patent, the term of the extension is equal to:
(a) the period beginning on the date of the patent and ending on
the earliest first regulatory approval date (as defined by
section 70) in relation to any of the pharmaceutical
substances referred to in subsection 70(2);
reduced (but not below zero) by:
(b) 5 years.
Note: Section 65 sets out the date of a patent.
(2) However, the term of the extension cannot be longer than 5 years.
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Part 3 Extension of term of standard patents relating to pharmaceutical substances
Section 78
78 Exclusive rights of patentee are limited if extension granted
If the Commissioner grants an extension of the term of a standard
patent, the exclusive rights of the patentee during the term of the
extension are not infringed:
(a) by a person exploiting:
(i) a pharmaceutical substance per se that is in substance
disclosed in the complete specification of the patent and
in substance falls within the scope of the claim or claims
of that specification; or
(ii) a pharmaceutical substance when produced by a process
that involves the use of recombinant DNA technology,
that is in substance disclosed in the complete
specification of the patent and in substance falls within
the scope of the claim or claims of that specification;
for a purpose other than therapeutic use; or
(b) by a person exploiting any form of the invention other than:
(i) a pharmaceutical substance per se that is in substance
disclosed in the complete specification of the patent and
in substance falls within the scope of the claim or claims
of that specification; or
(ii) a pharmaceutical substance when produced by a process
that involves the use of recombinant DNA technology,
that is in substance disclosed in the complete
specification of the patent and in substance falls within
the scope of the claim or claims of that specification.
79 Rights of patentee if extension granted after patent expires
If:
(a) a patentee applies for an extension of the term of a standard
patent; and
(b) the term of the patent expires before the application is
determined; and
(c) the extension is granted;
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Section 79A
the patentee has, after the extension is granted, the same rights to
start proceedings in respect of the doing of an act during the
period:
(d) commencing on the expiration of the term of the patent; and
(e) ending on the day on which the extension was granted;
as if the extension had been granted at the time when the act was
done.
79A Commissioner not to make decision if court proceedings
pending
If:
(a) a patentee of a standard patent applies for an extension of the
term of the patent; and
(b) relevant proceedings in relation to the patent are pending;
the Commissioner must not make any decision under this Part in
relation to the patent without the leave of the court.
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Chapter 6A Divisional applications
Section 79B
Chapter 6A—Divisional applications
79B Divisional applications prior to grant of patent
(1) If:
(a) a complete application (the first application) for a patent is
made; and
(b) the first application is not a divisional application for an
innovation patent provided for in section 79C;
the applicant may make a further complete application for a patent
for an invention disclosed in the specification filed in relation to
the first application.
(2) The further complete application:
(a) must be made in accordance with the regulations made for
the purposes of this subsection; and
(b) must include the prescribed particulars.
(3) The further complete application can only be made during the
period:
(a) starting on the day the first application is made; and
(b) ending when any of the following happens:
(i) the first application lapses;
(ii) the first application is refused;
(iii) the first application is withdrawn;
(iv) a period prescribed by the regulations for the purposes
of this subparagraph ends.
(4) In this section:
applicant has the same meaning as in section 38.
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Divisional applications Chapter 6A
Section 79C
79C Divisional applications for innovation patents may be made
after grant of an innovation patent
Applications may be made
(1) A patentee of an innovation patent (the first patent) may make a
complete application for another innovation patent for a further
invention disclosed in the first patent if the invention was disclosed
in the complete specification filed in respect of the application on
which the first patent was granted.
(1A) The further complete application:
(a) must be made in accordance with the regulations made for
the purposes of this subsection; and
(b) must include the prescribed particulars.
(2) The patentee may make the further complete application only
during the period:
(a) starting when an examination of the first patent begins; and
(b) ending when any of the following happens:
(i) the term of the first patent ends;
(ii) the first patent is revoked;
(iii) the first patent ceases;
(iv) a period prescribed by the regulations for the purposes
of this subparagraph ends.
When does an examination begin?
(3) For the purposes of subsection (2), an examination of the patent
begins:
(a) if the examination has been requested under
paragraph 101A(b)—on the day the request was made; or
(b) if the Commissioner decided to examine the patent under
paragraph 101A(a)—on the day the Commissioner made that
decision.
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Chapter 7 Patents of addition
Section 80
Chapter 7—Patents of addition
80 Chapter does not apply to innovation patents
This Chapter does not apply in relation to innovation patents.
81 Grant of patent of addition
(1) Where:
(a) a patent for an invention (in this Chapter called the main
invention) has been applied for or granted; and
(b) the applicant or patentee (or a person authorised by the
applicant or patentee) applies for a further patent for an
improvement in, or modification of, the main invention; and
(c) the application for that further patent is made in accordance
with the regulations;
the Commissioner may, subject to this Act and the regulations,
grant a patent of addition for the improvement or modification.
(2) A patent request and complete specification relating to an
application for a patent of addition must not be examined before a
request is made for the examination of the patent request and
complete specification relating to the application for the patent for
the main invention.
(3) A patent of addition must not be granted before the patent for the
main invention is granted.
(4) An appeal lies to the Federal Court against a decision of the
Commissioner under this section.
82 Revocation of patent and grant of patent of addition instead
(1) Where:
(a) an invention that is an improvement in, or modification of, a
main invention is the subject of an independent patent; and
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Section 83
(b) the patentee of the independent patent is also the patentee of
the patent for the main invention;
the Commissioner may, on an application made by the patentee,
revoke the independent patent and grant a patent of addition for the
improvement or modification.
(2) A patent of addition granted under this section must be given the
same date as the date of the independent patent that is revoked.
(3) An appeal lies to the Federal Court against a decision of the
Commissioner refusing an application under this section.
83 Term of patent of addition
Usual term
(1) The general rule is that a patent of addition remains in force for so
long as the patent for the main invention remains in force.
However, this rule is subject to the exceptions set out in
subsections (3) and (4).
(2) The term of a patent of addition may be extended under Part 3 of
Chapter 6, even though the patent for the main invention is not
extended under that Part.
Patent of addition extended
(3) If the term of a patent of addition is extended under Part 3 of
Chapter 6:
(a) the extension begins at the end of the unextended term of the
patent for the main invention; and
(b) when the extension begins, the patent of addition becomes an
independent patent.
Patent for main invention extended
(4) If:
(a) the term of the patent for the main invention is extended
under Part 3 of Chapter 6; and
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Chapter 7 Patents of addition
Section 85
(b) the term of the patent of addition is not extended under that
Part;
the term of the patent of addition expires at the end of the
unextended term of the patent for the main invention.
85 Revocation of patent for main invention
(1) If the patent for the main invention is revoked by a prescribed
court, or by the Commissioner under section 101 or 137, the patent
of addition becomes an independent patent unless otherwise
ordered by:
(a) where the patent is revoked by a prescribed court—that court;
or
(b) in any other case—the Commissioner.
(2) Where a patent of addition becomes an independent patent under
this section, its term cannot be more than the unexpired part of the
term of the patent for the main invention.
86 Renewal fees not payable
A fee is not payable for the renewal of a patent of addition.
87 Fees payable where patent of addition becomes an independent
patent
The fees payable after a patent of addition becomes an independent
patent, and the dates when they become payable, are to be
determined by reference to the date of the independent patent.
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Re-examination of standard patents Chapter 9
Section 96A
Chapter 9—Re-examination of standard
patents
96A Chapter does not apply to innovation patents
This Chapter does not apply in relation to innovation patents.
97 Re-examination of complete specifications
(1) Subject to this section and the regulations, if:
(a) a request and complete specification relating to an
application for a patent has been accepted; and
(b) the patent has not been granted;
the Commissioner may re-examine the complete specification.
(2) Subject to this section and the regulations, where a patent has been
granted, the Commissioner may, and must if asked to do so by the
patentee or any other person, re-examine the complete
specification.
(3) Where the validity of a patent is disputed in any proceedings
before a prescribed court under this Act, the court may direct the
Commissioner to re-examine the complete specification and the
Commissioner must re-examine the specification accordingly.
(3A) The re-examination must be carried out in accordance with the
regulations.
(4) Where relevant proceedings in relation to a patent are pending, the
Commissioner must not re-examine the complete specification
relating to the patent under subsection (2).
(5) Where:
(a) the Commissioner has started to re-examine a complete
specification relating to a patent under subsection (2); and
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Chapter 9 Re-examination of standard patents
Section 98
(b) relevant proceedings in relation to the patent are started;
the Commissioner must not continue the re-examination.
98 Report on re-examination
On re-examining a complete specification, the Commissioner must
ascertain and report on:
(a) whether the specification does not comply with
subsection 40(2) or (3); and
(b) whether, to the best of his or her knowledge, the invention, so
far as claimed, does not satisfy the criteria mentioned in
paragraph 18(1)(a), (b) or (c); and
(c) whether the invention is not a patentable invention under
subsection 18(2).
99 Statement by applicant or patentee
(1) Where the Commissioner reports adversely on a complete
specification, the applicant or patentee may, within the prescribed
period, file a statement, in accordance with the regulations,
disputing the whole or any part of the report.
(2) The applicant or patentee may file a statement whether or not the
applicant or patentee takes steps to amend the complete
specification, or files a statement of amendments in accordance
with a direction under section 106 or 107.
100 Copies of report to be given to court
A copy of a report under section 98, and of any statement filed
under section 99 in relation to the report, must, where the
re-examination was directed under subsection 97(3), be given to
the court that gave the direction.
100A Refusal to grant patent—re-examination before grant
(1) The Commissioner may refuse to grant a patent if the
Commissioner:
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Section 101
(a) makes an adverse report on a re-examination of the relevant
specification under subsection 97(1); and
(b) is satisfied, on the balance of probabilities, that there is a
lawful ground of objection to the specification.
(2) The Commissioner cannot refuse to grant a patent under this
section unless the Commissioner:
(a) has given the applicant a reasonable opportunity to be heard;
and
(b) has, where appropriate, given the applicant a reasonable
opportunity to amend the relevant specification for the
purpose of removing any lawful ground of objection and the
applicant has failed to do so.
(3) The applicant may appeal to the Federal Court against a decision of
the Commissioner under this section.
101 Revocation of patent—re-examination after grant
(1) The Commissioner may, by notice in writing, revoke a patent,
either wholly or so far as it relates to a particular claim, if the
Commissioner:
(a) makes an adverse report on a re-examination of the relevant
specification under subsection 97(2); and
(b) is satisfied, on the balance of probabilities, that there is a
lawful ground of objection to the relevant specification.
(2) The Commissioner must not revoke a patent under this section
unless the Commissioner:
(a) has given the patentee a reasonable opportunity to be heard;
and
(b) has, where appropriate, given the patentee a reasonable
opportunity to amend the relevant specification for the
purpose of removing any lawful ground of objection and the
patentee has failed to do so.
(3) The Commissioner must not revoke a patent under this section
while relevant proceedings in relation to that patent are pending.
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Section 101
(4) The patentee may appeal to the Federal Court against a decision of
the Commissioner under this section.
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Section 101A
Chapter 9A—Examination, re-examination
and opposition-innovation patents
Part 1—Examination of innovation patents
101A Examination may be requested or Commissioner may decide
to examine
After the grant of an innovation patent, the Commissioner:
(a) may, if the Commissioner decides to do so; and
(b) must, if asked to do so, in writing, by the patentee or any
other person;
examine the complete specification relating to an innovation
patent.
101B Examination of an innovation patent
What the Commissioner must do in examining a patent
(1) If the Commissioner decides, or is asked, to examine an innovation
patent under section 101A, the Commissioner must:
(a) examine the complete specification relating to the patent to
ascertain the matters set out in subsection (2); and
(b) report on those matters.
Matters for examination and report
(2) The matters in this subsection are whether:
(a) the specification complies with subsections 40(2) to (4); and
(b) the invention, so far as claimed, complies with paragraphs
18(1A)(a), (b) and (c); and
(c) the invention is a patentable invention under
subsections 18(2) and (3); and
(d) the use of the invention would not be contrary to law; and
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(e) the patent does not claim as an invention a substance that is
capable of being used as food or medicine (whether for
human beings or animals and whether for internal or external
use) and is a mere mixture of known ingredients; and
(f) the patent does not claim as an invention a process producing
such a substance by mere admixture; and
(g) the patent does not contain a claim that includes the name of
a person as the name, or part of the name, of the invention so
far as it is claimed in that claim; and
(h) the patent does not claim an invention that is the same as an
invention that is the subject of a patent and is made by the
same inventor, where the relevant claim or claims in respect
of each patent have the same priority date or dates; and
(i) the complete specification complies with such other matters
(if any) as are prescribed for the purpose of this paragraph.
101C How and when examination to be carried out
The examination under section 101B must be carried out:
(a) in accordance with the regulations; and
(b) within the period prescribed.
101E Certificate of examination
(1) This section applies to an innovation patent if:
(a) after examining the patent under section 101B, the
Commissioner decides in writing that he or she is satisfied,
on the balance of probabilities, as to the following:
(i) the specification complies with subsections 40(2) to (4);
(ii) the invention, so far as claimed, complies with
paragraphs 18(1A)(a), (b) and (c);
(iii) the invention is a patentable invention under
subsections 18(2) and (3);
(iv) the use of the invention would not be contrary to law;
(v) the patent does not claim as an invention a substance
that is capable of being used as food or medicine
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(whether for human beings or animals and whether for
internal or external use) and is a mere mixture of known
ingredients;
(vi) the patent does not claim as an invention a process
producing such a substance by mere admixture;
(vii) the patent does not contain a claim that includes the
name of a person as the name, or part of the name, of
the invention so far as it is claimed in that claim;
(viii) the patent does not claim an invention that is the same
as an invention that is the subject of a patent and is
made by the same inventor, where the relevant claim or
claims in respect of each patent have the same priority
date or dates;
(ix) the complete specification complies with such other
matters (if any) as are prescribed for the purpose of
paragraph 101B(2)(i); and
(b) the patent has not ceased under section 143A.
(2) If this section applies, the Commissioner must:
(a) notify the patentee and the person who requested the
examination (if that person is not the patentee) that the patent
has been examined and that a certificate of examination is to
be issued; and
(b) publish a notice of the examination having occurred in the
Official Journal; and
(c) issue a certificate of examination to the patentee in the
approved form; and
(d) register the issue of the certificate.
(3) A decision under subsection (1) is not a legislative instrument.
101EA Revocation of certificate of examination
(1) The Commissioner may revoke a certificate of examination issued
in relation to an innovation patent if the Commissioner is satisfied,
on the balance of probabilities, that:
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Section 101F
(a) the certificate of examination should not have been issued,
taking account of all the circumstances that existed when the
certificate was issued (whether or not the Commissioner
knew then of their existence); and
(b) it is reasonable to revoke the certificate, taking account of all
the circumstances; and
(c) there are no relevant proceedings pending.
(2) If the Commissioner revokes the certificate:
(a) all of the provisions of section 101E are taken, after
revocation, to have never operated in relation to the patent;
and
(b) the Commissioner must continue to examine and report on
the patent under section 101B; and
(c) sections 101E and 101F continue to apply in relation to the
patent.
101F Revocation of innovation patents following examination under
section 101B
(1) The Commissioner must revoke a patent if:
(a) the patent has been examined under section 101B; and
(b) section 101E does not apply to the patent; and
(c) the patent has not ceased under section 143A.
(2) If the Commissioner revokes the patent:
(a) the Commissioner must notify the patentee and the person
who requested the examination (if that person is not the
patentee) of the revocation; and
(b) register the revocation of the patent.
(3) The Commissioner must not revoke a patent under this section
unless the Commissioner:
(a) has given the patentee a reasonable opportunity to be heard;
and
(b) has, if appropriate, given the patentee a reasonable
opportunity to amend the relevant specification for the
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purposes of removing a ground for the revocation of the
patent and the patentee has failed to do so.
(4) An appeal lies to the Federal Court against a decision of the
Commissioner revoking a patent.
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Chapter 9A Examination, re-examination and opposition-innovation patents
Part 2 Re-examination of innovation patents
Section 101G
Part 2—Re-examination of innovation patents
101G Re-examination of complete specifications of innovation
patents
(1) Subject to subsections 101K(2) and (3) and the regulations, after an
innovation patent has been certified, the Commissioner:
(a) may, if the Commissioner decides to do so; and
(b) must, if asked to do so, in writing, by the patentee or any
other person;
re-examine the complete specification relating to the patent.
(1A) The re-examination must be carried out in accordance with the
regulations.
(2) If the Commissioner re-examines an innovation patent under
subsection (1):
(a) the Commissioner must re-examine the complete
specification relating to the patent to determine if the patent
is invalid and should be revoked because a ground set out in
subsection (3) is made out; and
(b) the Commissioner must report on the grounds set out in
subsection (3).
(3) The grounds for the revocation of the patent under subsection (2)
are as follows:
(a) that the specification filed in respect of the complete
application does not comply with subsection 40(2) or (3);
(b) that the invention, so far as claimed, does not comply with
paragraph 18(1A)(a), (b) or (c);
(c) that the invention is not a patentable invention under
subsection 18(2) or (3).
(4) There are no other grounds for the revocation of a patent under
subsection (2).
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Section 101H
101H Patentee statements
(1) If the Commissioner reports that, after re-examining a patent under
section 101G, a ground for the revocation of the patent has been
made out, the patentee may, within the prescribed period, file a
statement, in accordance with the regulations, disputing the whole
or any part of the report.
(2) The patentee may file a statement whether or not the patentee takes
steps to amend the complete specification, or files a statement of
amendments in accordance with a direction under section 106.
101J Revocation of innovation patent following re-examination
(1) The Commissioner may, by notice in writing, revoke a patent,
either wholly or so far as it relates to a particular claim, if the
Commissioner:
(a) makes an adverse report on a re-examination of the relevant
specification under section 101G; and
(b) is satisfied, on the balance of probabilities, that there is a
ground of revocation of the patent.
(2) If the Commissioner revokes the patent:
(a) the Commissioner must notify the patentee and the person
who requested the examination (if that person is not the
patentee) of the revocation; and
(b) register the revocation of the patent.
(3) The Commissioner must not revoke a patent under this section
unless:
(a) the Commissioner has given the patentee a reasonable
opportunity to be heard; and
(b) the Commissioner has considered the statement made by the
patentee under section 101H (if any); and
(c) the Commissioner has, if appropriate, given the patentee a
reasonable opportunity to amend the relevant specification
for the purpose of removing any ground for revocation and
the patentee has failed to do so.
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Section 101K
(4) The Commissioner must not revoke a patent under this section
while relevant proceedings in relation to that patent are pending.
(5) The patentee may appeal to the Federal Court against a decision of
the Commissioner under this section.
101K Relevant proceedings and re-examination
(1) If the validity of an innovation patent is disputed in any
proceedings before a prescribed court under this Act, the court may
direct the Commissioner to re-examine the complete specification
relating to the patent. If so directed, the Commissioner must
re-examine the specification accordingly.
(2) If relevant proceedings in relation to an innovation patent are
pending, the Commissioner must not re-examine the complete
specification relating to the patent.
(3) If:
(a) the Commissioner has started to re-examine a complete
specification relating to an innovation patent; and
(b) relevant proceedings in relation to the patent are started;
the Commissioner must not continue the re-examination.
101L Copies of report to be given to court
A copy of a report under paragraph 101G(2)(b), and of any
statement filed under section 101H in relation to the report, must, if
the re-examination was directed under subsection 101K(1), be
given to the court that gave the direction.
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Opposition to innovation patents Part 3
Section 101M
Part 3—Opposition to innovation patents
101M Opposition to innovation patent
The Minister, or any other person, may, in accordance with the
regulations, oppose an innovation patent that has been certified and
seek the revocation of it, on one or more of the following grounds
of invalidity, but on no other:
(a) that the patentee is either:
(i) not entitled to the patent; or
(ii) entitled to the patent but only in conjunction with some
other person;
(b) that the complete specification does not comply with
subsection 40(2) or (3);
(c) that the invention is not a patentable invention because it
does not comply with paragraph 18(1A)(a), (b) or (c);
(d) that the invention is not a patentable invention under
subsection 18(2) or (3).
101N Hearing and decision by the Commissioner
(1) If an innovation patent has been opposed under section 101M, the
Commissioner must decide the case in accordance with the
regulations.
(2) The Commissioner must give the opponent and the patentee a
reasonable opportunity to be heard before deciding the case.
(3) The Commissioner may, in deciding whether to revoke the patent,
take into account any ground on which the grant of an innovation
patent may be opposed, whether relied upon by the opponent or
not.
(4) Subject to subsection (6), if the Commissioner is satisfied, on the
balance of probabilities, that a ground exists for the revocation of
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Section 101P
an innovation patent, the Commissioner may revoke the patent in
writing either wholly or so far as it relates to a particular claim.
(5) If the Commissioner revokes the patent:
(a) the Commissioner must notify the patentee and the opponent
of the revocation; and
(b) register the revocation of the patent.
(6) The Commissioner must not revoke a patent under this section
unless the Commissioner has, where appropriate, given the
patentee a reasonable opportunity to amend the relevant
specification for the purpose of removing any ground for
revocation and the patentee has failed to do so.
(7) The patentee, and any opponent, may appeal to the Federal Court
against a decision of the Commissioner under this section.
101P Relevant proceedings and opposition
If relevant proceedings in relation to an innovation patent are
pending, the Commissioner must not make a decision under this
Part in relation to the patent without the leave of the court.
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Amendments Chapter 10
Amendments that are not allowable Part 1
Section 102
Chapter 10—Amendments
Part 1—Amendments that are not allowable
102 What amendments are not allowable?
Amendment of complete specification not allowable if amended
specification claims or discloses matter extending beyond that
disclosed in certain documents
(1) An amendment of a complete specification is not allowable if, as a
result of the amendment, the specification would claim or disclose
matter that extends beyond that disclosed in the following
documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).
Certain amendments of complete specification are not allowable
after relevant time
(2) An amendment of a complete specification is not allowable after
the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within
the scope of the claims of the specification before
amendment; or
(b) the specification would not comply with subsection 40(2) or
(3).
Meaning of relevant time1
(2A) For the purposes of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete
specification relating to a standard patent—after the
specification has been accepted; or
1 This heading has been placed in the correct position.
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Part 1 Amendments that are not allowable
Section 103
(b) in relation to an amendment proposed to a complete
specification relating to an innovation patent—after the
Commissioner has made a decision under
paragraph 101E(1)(a) in respect of the patent.
Amendment of innovation patent request not allowable in certain
circumstances
(2B) An amendment to a patent request relating to an innovation patent
application is not allowable if:
(a) the patent application was provided for in section 79C; and
(b) the effect of the proposed amendment would be to convert
the application from an application for an innovation patent
to an application for a standard patent.
Amendments of a kind prescribed by regulations not allowable
(2D) An amendment of a patent request or a complete specification is
not allowable if it is of a kind prescribed by regulations made for
the purposes of this section.
Section does not apply in certain cases
(3) This section does not apply to an amendment for the purposes of:
(a) correcting a clerical error or an obvious mistake made in, or
in relation to, a complete specification; or
(b) complying with paragraph 6(c) (about deposit requirements).
103 Consent of mortgagee or exclusive licensee needed
(1) Where a person is registered as the mortgagee or exclusive licensee
of a patent, an amendment of the complete specification is not
allowable unless the mortgagee or licensee has consented, in
writing, to the amendment.
(2) If a mortgagee or licensee refuses to consent to a proposed
amendment, the Commissioner may, on the application of the
applicant or patentee, if satisfied on the balance of probabilities
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Amendments that are not allowable Part 1
Section 103
that the consent has been unreasonably refused, direct that the
consent of the mortgagee or licensee is not necessary.
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Chapter 10 Amendments
Part 2 Amendments of patent requests, specifications and other filed documents
Section 104
Part 2—Amendments of patent requests,
specifications and other filed documents
104 Amendments by applicants and patentees
(1) An applicant for a patent or a patentee, may, subject to this Act,
and subject to and in accordance with the regulations, ask the
Commissioner for leave to amend the relevant patent request or
complete specification, or any other filed document, for any
purpose including either or both of the following:
(a) removing a lawful ground of objection to the request or
specification, whether that objection is raised in the course of
an examination or re-examination or otherwise;
(b) correcting a clerical error or an obvious mistake.
(2) Where an applicant or patentee asks for leave to amend a patent
request or complete specification, or any other filed document, the
Commissioner must consider and deal with the request in
accordance with the regulations.
(4) The Minister or any other person may, subject to and in accordance
with the regulations, oppose allowing an amendment.
(5) The Commissioner must not allow an amendment that is not
allowable under section 102.
(6) On the allowance of an amendment, the amendment is to be taken
to have been made.
(7) An appeal lies to the Federal Court, against a decision of the
Commissioner allowing, or refusing to allow, a requested
amendment, other than a prescribed decision.
105 Amendments directed by court
Order for amendment during relevant proceedings
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Amendments of patent requests, specifications and other filed documents Part 2
Section 106
(1) In any relevant proceedings in relation to a patent, the court may,
on the application of the patentee, by order direct the amendment
of the patent request or the complete specification in the manner
specified in the order.
Order for amendment during an appeal
(1A) If an appeal is made to the Federal Court against a decision or
direction of the Commissioner in relation to a patent application,
the Federal Court may, on the application of the applicant for the
patent, by order direct the amendment of the patent request or the
complete specification in the manner specified in the order.
Orders for amendment generally
(2) An order under subsection (1) or (1A) may be made subject to such
terms (if any) as to costs, advertisements or otherwise, as the court
thinks fit.
(3) The applicant for an order under subsection (1) or (1A) must give
notice of an application for an order to the Commissioner, who is
entitled to appear and be heard, and must appear if the court
directs.
(4) A court is not to direct an amendment that is not allowable under
section 102.
(5) The applicant must file a copy of an order within the prescribed
period.
(6) On the filing of a copy of an order, the patent request or complete
specification is to be taken to have been amended in the manner
specified in the order.
106 Amendments directed by Commissioner: patents
(1) Where:
(a) a patent has been granted; and
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Section 107
(b) the Commissioner is satisfied, on the balance of probabilities,
that the patent is invalid on grounds that could be removed
by appropriate amendments of the specification following:
(i) in the case of a standard patent—re-examination of the
patent; or
(ii) in the case of an innovation patent—examination of,
re-examination of, or opposition to, the patent;
the Commissioner may, in accordance with the regulations, direct
the patentee to file, within such time as the Commissioner allows, a
statement of proposed amendments of the specification for the
purpose of removing those grounds.
(2) The Commissioner must not give a direction without first giving
the patentee a reasonable opportunity to be heard.
(3) A patentee may, in accordance with the regulations, amend a
statement of amendments.
(4) If the Commissioner is satisfied, on the balance of probabilities,
that the amendments set out in a statement (or an amended
statement) are allowable and would, if made, remove the grounds
on which the patent is invalid, the Commissioner must allow the
amendments.
(5) On the allowance of an amendment, the amendment is to be taken
to have been made.
107 Amendments directed by Commissioner: applications for
standard patents
(1) Where:
(a) a complete application for a standard patent has been made;
and
(b) the Commissioner is satisfied, on the balance of probabilities,
that there are lawful grounds of objection to the patent
request or complete specification, but that those grounds of
objection could be removed by appropriate amendments of
the request or specification; and
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Section 109
(c) the applicant has not taken action to amend the request or
specification so as to remove those grounds of objection;
the Commissioner may, in accordance with the regulations, direct
the applicant to file, within such time as the Commissioner allows,
a statement of proposed amendments of the request or specification
for the purpose of removing those grounds of objection.
(2) The Commissioner must not give a direction without first giving
the applicant a reasonable opportunity to be heard.
(3) An applicant may, in accordance with the regulations, amend a
statement of amendments.
(4) If the Commissioner is satisfied, on the balance of probabilities,
that the amendments set out in a statement (or an amended
statement) are allowable and would, if made, remove all lawful
grounds of objection to the patent request and complete
specification, the Commissioner must allow the amendments.
(5) On the allowance of an amendment, the amendment is to be taken
to have been made.
109 Appeal
An appeal lies to the Federal Court against a direction of the
Commissioner under section 106 or 107.
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Chapter 10 Amendments
Part 3 Miscellaneous
Section 110
Part 3—Miscellaneous
110 Advertisement of amendment of complete specification
An amendment of a complete specification that is open to public
inspection must be notified in the Official Journal.
112 Pending proceedings
A complete specification relating to a patent must not be amended,
except under section 105, while relevant proceedings in relation to
the patent are pending.
112A Decisions on appeal
A complete specification relating to a patent application must not
be amended, except under section 105, if:
(a) an appeal against a decision or direction of the Commissioner
has been made to the Federal Court in relation to the
specification; and
(b) the appeal, and any proceedings resulting from it, have not
been finally determined, withdrawn or otherwise disposed of.
113 Persons claiming under assignment or agreement
(1) Where, before a patent is granted, a person would, if the patent
were then granted, be entitled under an assignment or agreement,
or by operation of law, to:
(a) the patent or an interest in it; or
(b) an undivided share in the patent or in such an interest;
the Commissioner may, on a request made by the person in
accordance with the regulations, direct that the application proceed
in the name of the person, or in the name of the person and the
applicant or the other joint applicant or applicants, as the case
requires.
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Miscellaneous Part 3
Section 114
(2) Where the Commissioner gives a direction:
(a) the person is to be taken to be the applicant, or a joint
applicant, as the case requires; and
(b) the patent request is to be taken to have been amended so as
to request the grant of a patent to the person, either alone or
as a joint patentee, as the case requires.
114 Priority date of claims of certain amended specifications
(1) This section applies if:
(a) a complete specification has been amended; and
(b) the amendment was not allowable under subsection 102(1);
and
(c) as a result of the amendment, a claim of the amended
specification claims an invention that:
(i) was not disclosed by the complete specification as filed
in a manner that was clear enough and complete enough
for the invention to be performed by a person skilled in
the relevant art; but
(ii) is disclosed in that manner by the amended
specification.
(2) If this section applies, the priority date of the claim must be
determined under the regulations.
114A Objection cannot be taken to certain amended specifications
(1) This section applies if:
(a) a complete specification (the original specification) has been
amended; and
(b) the amendment was not allowable under subsection 102(1);
and
(ba) as a result of the amendment, a claim of the amended
specification claims an invention that was not disclosed by
the original specification as filed in a manner that was clear
enough and complete enough for the invention to be
performed by a person skilled in the relevant art; and
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Part 3 Miscellaneous
Section 115
(c) after the filing date of the original specification there is a
publication or use of the invention as described in the
original specification.
(2) If this section applies, objection cannot be taken to the amended
specification, and a patent is not invalid, on the ground that the
invention, so far as claimed in the amended specification and
having regard to the publication or the use of the invention
described in the original specification, does not involve:
(a) in the case of a standard patent—an inventive step; or
(b) in the case of an innovation patent—an innovative step.
115 Restriction on recovery of damages etc.
(1) Where a complete specification is amended after becoming open to
public inspection, damages shall not be awarded, and an order shall
not be made for an account of profits, in respect of any
infringement of the patent before the date of the decision or order
allowing or directing the amendment:
(a) unless the court is satisfied that the specification without the
amendment was framed in good faith and with reasonable
skill and knowledge; or
(b) if the claim of the specification that was infringed is a claim
mentioned under subsection 114(1).
(2) Subsection (1) has effect subject to subsections 57(3) and (4).
116 Interpretation of amended specifications
The Commissioner or a court may, in interpreting a complete
specification as amended, refer to the specification without
amendment.
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Infringement Chapter 11
Infringement and infringement proceedings Part 1
Section 117
Chapter 11—Infringement
Part 1—Infringement and infringement
proceedings
117 Infringement by supply of products
(1) If the use of a product by a person would infringe a patent, the
supply of that product by one person to another is an infringement
of the patent by the supplier unless the supplier is the patentee or
licensee of the patent.
(2) A reference in subsection (1) to the use of a product by a person is
a reference to:
(a) if the product is capable of only one reasonable use, having
regard to its nature or design—that use; or
(b) if the product is not a staple commercial product—any use of
the product, if the supplier had reason to believe that the
person would put it to that use; or
(c) in any case—the use of the product in accordance with any
instructions for the use of the product, or any inducement to
use the product, given to the person by the supplier or
contained in an advertisement published by or with the
authority of the supplier.
118 Infringement exemptions: use in or on foreign vessels, aircraft
or vehicles
The rights of a patentee are not infringed:
(a) by using the patented invention on board a foreign vessel, in
the body of the vessel, or in the machinery, tackle, apparatus
or other accessories of the vessel, if the vessel comes into the
patent area only temporarily or accidentally and the invention
is used exclusively for the needs of the vessel; or
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(b) by using the patented invention in the construction or
working of a foreign aircraft or foreign land vehicle, or in the
accessories of the aircraft or vehicle, if the aircraft or vehicle
comes into the patent area only temporarily or accidentally.
119 Infringement exemptions: prior use
(1) A person may, without infringing a patent, do an act that exploits a
product, method or process and would infringe the patent apart
from this subsection, if immediately before the priority date of the
relevant claim the person:
(a) was exploiting the product, method or process in the patent
area; or
(b) had taken definite steps (contractually or otherwise) to
exploit the product, method or process in the patent area.
Note 1: This section applies in relation to a patent granted as a result of an
application filed on or after the commencement of Schedule 6 to the
Intellectual Property Laws Amendment Act 2006 (which repealed and
substituted this section).
Note 2: Section 119 of this Act as in force before the commencement of that
Schedule continues to apply in relation to patents granted as a result of
earlier applications.
(2) Subsection (1) does not apply if, before the priority date, the
person:
(a) had stopped (except temporarily) exploiting the product,
method or process in the patent area; or
(b) had abandoned (except temporarily) the steps to exploit the
product, method or process in the patent area.
Limit for product, method or process derived from patentee
(3) Subsection (1) does not apply to a product, method or process the
person derived from the patentee or the patentee’s predecessor in
title in the patented invention unless the person derived the
product, method or process from information that was made
publicly available:
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(a) by or with the consent of the patentee or the patentee’s
predecessor in title; and
(b) in the prescribed circumstances mentioned in
paragraph 24(1)(a).
Exemption for successors in title
(4) A person (the disposer) may dispose of the whole of the disposer’s
entitlement under subsection (1) to do an act without infringing a
patent to another person (the recipient). If the disposer does so, this
section applies in relation to the recipient as if the references in
subsections (1), (2) and (3) to the person were references to:
(a) the disposer; or
(b) if the disposer’s entitlement arose because of one or more
previous applications of this subsection—the first person:
(i) who was entitled under subsection (1) (applying of its
own force) to do an act without infringing the patent;
and
(ii) to whom the disposer’s entitlement is directly or
indirectly attributable.
Definition
(5) In this section:
exploit includes:
(a) in relation to a product:
(i) make, hire, sell or otherwise dispose of the product; and
(ii) offer to make, hire, sell or otherwise dispose of the
product; and
(iii) use or import the product; and
(iv) keep the product for the purpose of doing an act
described in subparagraph (i), (ii) or (iii); and
(b) in relation to a method or process:
(i) use the method or process; and
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(ii) do an act described in subparagraph (a)(i), (ii), (iii) or
(iv) with a product resulting from the use of the method
or process.
119A Infringement exemptions: acts for obtaining regulatory
approval of pharmaceuticals
(1) The rights of a patentee of a pharmaceutical patent are not
infringed by a person exploiting an invention claimed in the patent
if the exploitation is solely for:
(a) purposes connected with obtaining the inclusion in the
Australian Register of Therapeutic Goods of goods that:
(i) are intended for therapeutic use; and
(ii) are not medical devices, or therapeutic devices, as
defined in the Therapeutic Goods Act 1989; or
(b) purposes connected with obtaining similar regulatory
approval under a law of a foreign country or of a part of a
foreign country.
(2) Subsection (1) does not apply to the export from Australia of goods
for purposes described in paragraph (1)(b) unless the term of the
patent has been extended under Part 3 of Chapter 6 and the goods
consist of or contain:
(a) a pharmaceutical substance per se that is in substance
disclosed in the complete specification of the patent and in
substance falls within the scope of the claim or claims of that
specification; or
(b) a pharmaceutical substance when produced by a process that
involves the use of recombinant DNA technology, that is in
substance disclosed in the complete specification of the
patent and in substance falls within the scope of the claim or
claims of that specification.
Note: Part 3 of Chapter 6 provides for the extension of the term of standard
patents claiming pharmaceutical substances.
(3) In this section:
pharmaceutical patent means a patent claiming:
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(a) a pharmaceutical substance; or
(b) a method, use or product relating to a pharmaceutical
substance, including any of the following:
(i) a method for producing a raw material needed to
produce the substance;
(ii) a product that is a raw material needed to produce the
substance;
(iii) a product that is a pro-drug, metabolite or derivative of
the substance.
119B Infringement exemptions: acts for obtaining regulatory
approval (non-pharmaceuticals)
(1) A person may, without infringing a patent, do an act that would
infringe the patent apart from this subsection, if the act is done
solely for:
(a) purposes connected with obtaining an approval required by a
law of the Commonwealth or of a State or Territory to
exploit a product, method or process; or
(b) purposes connected with obtaining a similar approval under a
law of another country or region.
(2) This section does not apply in relation to a pharmaceutical patent
within the meaning of subsection 119A(3).
119C Infringement exemptions: acts for experimental purposes
(1) A person may, without infringing a patent for an invention, do an
act that would infringe the patent apart from this subsection, if the
act is done for experimental purposes relating to the subject matter
of the invention.
(2) For the purposes of this section, experimental purposes relating to
the subject matter of the invention include, but are not limited to,
the following:
(a) determining the properties of the invention;
(b) determining the scope of a claim relating to the invention;
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(c) improving or modifying the invention;
(d) determining the validity of the patent or of a claim relating to
the invention;
(e) determining whether the patent for the invention would be, or
has been, infringed by the doing of an act.
120 Infringement proceedings
(1) Subject to subsection (1A), infringement proceedings may be
started in a prescribed court, or in another court having jurisdiction
to hear and determine the matter, by the patentee or an exclusive
licensee.
(1A) Infringement proceedings in respect of an innovation patent cannot
be started unless the patent has been certified.
(2) If an exclusive licensee starts infringement proceedings, the
patentee must be joined as a defendant unless joined as a plaintiff.
(3) A patentee joined as a defendant is not liable for costs unless the
patentee enters an appearance and takes part in the proceedings.
(4) Infringement proceedings must be started within:
(a) 3 years from the day on which the relevant patent is granted;
or
(b) 6 years from the day on which the infringing act was done;
whichever period ends later.
121 Counter-claim for revocation of patent
(1) A defendant in infringement proceedings may apply by way of
counter-claim in the proceedings for the revocation of the patent.
(2) The provisions of this Act relating to proceedings for the
revocation of a patent apply, with the necessary changes, to a
counter-claim.
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121A Burden of proof—infringement of patent for a process
(1) This section applies only to a patent for a process for obtaining a
product.
(2) If, in proceedings for infringement of a patent started by the
patentee or the exclusive licensee:
(a) the defendant alleges that he or she has used a process
different from the patented process to obtain a product
(defendant’s product) identical to the product obtained by
the patented process; and
(b) the court is satisfied that:
(i) it is very likely that the defendant’s product was made
by the patented process; and
(ii) the patentee or exclusive licensee has taken reasonable
steps to find out the process actually used by the
defendant but has not been able to do so;
then, in the absence of proof to the contrary the onus for
which is on the defendant, the defendant’s product is to be
taken to have been obtained by the patented process.
(3) In deciding how the defendant is to adduce evidence for the
purposes of subsection (2), the court is to take into account the
defendant’s legitimate interests in having business and
manufacturing secrets protected.
122 Relief for infringement of patent
(1) The relief which a court may grant for infringement of a patent
includes an injunction (subject to such terms, if any, as the court
thinks fit) and, at the option of the plaintiff, either damages or an
account of profits.
(1A) A court may include an additional amount in an assessment of
damages for an infringement of a patent, if the court considers it
appropriate to do so having regard to:
(a) the flagrancy of the infringement; and
(b) the need to deter similar infringements of patents; and
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(c) the conduct of the party that infringed the patent that
occurred:
(i) after the act constituting the infringement; or
(ii) after that party was informed that it had allegedly
infringed the patent; and
(d) any benefit shown to have accrued to that party because of
the infringement; and
(e) all other relevant matters.
(2) On the application of either party, the court may make such order
for the inspection of any thing in or on any vehicle, vessel, aircraft
or premises, and may impose such terms and give such directions
about the inspection, as the court thinks fit.
123 Innocent infringement
(1) A court may refuse to award damages, or to make an order for an
account of profits, in respect of an infringement of a patent if the
defendant satisfies the court that, at the date of the infringement,
the defendant was not aware, and had no reason to believe, that a
patent for the invention existed.
(2) If patented products, marked so as to indicate that they are patented
in Australia, were sold or used in the patent area to a substantial
extent before the date of the infringement, the defendant is to be
taken to have been aware of the existence of the patent unless the
contrary is established.
(3) Nothing in this section affects a court’s power to grant relief by
way of an injunction.
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Part 2—Non-infringement declarations
124 Interpretation
In this Part:
patentee includes an exclusive licensee.
125 Application for non-infringement declaration
(1) A person who has done, is doing, or is intending to do an act may
apply to a prescribed court for a declaration that the doing of the
act does not, or would not, infringe a patent.
(2) An application may be made:
(a) for a declaration in relation to an invention claimed in a
standard patent—at any time after the patent has been
granted; and
(b) for a declaration in relation to an innovation patent—at any
time after the patent has been certified; and
(c) whether or not the patentee has made any assertion to the
effect that the doing of the act has or would infringe the
claim.
(3) The patentee must be joined as a respondent in the proceedings.
126 Proceedings for non-infringement declarations
(1) A prescribed court must not make a non-infringement declaration
unless:
(a) the applicant for the declaration:
(i) has asked the patentee in writing for a written admission
that the doing of the act has not infringed, or would not
infringe, the patent; and
(ii) has given the patentee full written particulars of the act
done, or proposed to be done; and
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(iii) has undertaken to pay a reasonable sum for the
patentee’s expenses in obtaining advice about whether
the act has infringed or would infringe the claim; and
(b) the patentee has refused or failed to make the admission.
(2) The court may make orders as to costs as the court thinks fit.
127 Effect of non-infringement declarations
If:
(a) a patentee has given a person a written admission that the
doing of an act has not infringed, or would not infringe, a
claim, or a prescribed court has made a non-infringement
declaration in respect of an invention; and
(b) the patentee later gets an injunction restraining the person
from doing the act as specified in the admission, or the
declaration is revoked;
the person is not liable:
(c) to account to the patentee for any profits, made by the person
before the date on which the injunction was granted or the
declaration was revoked, from the doing of the act as
specified in the admission or declaration; or
(d) to pay damages for any loss suffered by the patentee before
that date as a result of the doing of that act.
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Section 128
Part 3—Unjustified threats of infringement
proceedings
128 Application for relief from unjustified threats
(1) Where a person, by means of circulars, advertisements or
otherwise, threatens a person with infringement proceedings, or
other similar proceedings, a person aggrieved may apply to a
prescribed court, or to another court having jurisdiction to hear and
determine the application, for:
(a) a declaration that the threats are unjustifiable; and
(b) an injunction against the continuance of the threats; and
(c) the recovery of any damages sustained by the applicant as a
result of the threats.
(2) Subsection (1) applies whether or not the person who made the
threats is entitled to, or interested in, the patent or a patent
application.
129 Court’s power to grant relief if threats related to a standard
patent or standard patent application
If an application under section 128 for relief relates to threats made
in respect of a standard patent or an application for a standard
patent, the court may grant the applicant the relief applied for
unless the respondent satisfies the court that the acts about which
the threats were made infringed, or would infringe:
(a) a claim that is not shown by the applicant to be invalid; or
(b) rights under section 57 in respect of a claim that is not shown
by the applicant to be a claim that would be invalid if the
patent had been granted.
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129A Threats related to an innovation patent application or
innovation patent and court’s power to grant relief
Certain threats of infringement proceedings are always
unjustifiable
(1) If:
(a) a person:
(i) has applied for an innovation patent, but the application
has not been determined; or
(ii) has an innovation patent that has not been certified; and
(b) the person, by means of circulars, advertisements or
otherwise, threatens a person with infringement proceedings
or other similar proceedings in respect of the patent applied
for, or the patent, as the case may be;
then, for the purposes of an application for relief under section 128
by the person threatened, the threats are unjustifiable.
Courts power to grant relief in respect of threats made by the
applicant for an innovation patent or the patentee of an uncertified
innovation patent
(2) If an application under section 128 for relief relates to threats made
in respect of an innovation patent that has not been certified or an
application for an innovation patent, the court may grant the
applicant the relief applied for.
Courts power to grant relief in respect of threats made by the
patentee of a certified innovation patent
(3) If an application under section 128 for relief relates to threats made
in respect of a certified innovation patent, the court may grant the
applicant the relief applied for unless the respondent satisfies the
court that the acts about which the threats were made infringed, or
would infringe, a claim that is not shown by the applicant to be
invalid.
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130 Counter-claim for infringement
(1) The respondent in proceedings under section 128 may apply, by
way of counter-claim, for relief to which the respondent would be
entitled in separate proceedings for an infringement by the
applicant of the patent to which the threats relate.
(2) Where the respondent applies by way of counter-claim, the
applicant may, without making a separate application under
Chapter 12, apply in the proceedings for the revocation of the
patent.
(3) The provisions of this Act relating to infringement proceedings
apply, with the necessary changes, to a counter-claim.
Note: Infringement proceedings cannot be commenced in respect of an
innovation patent unless the patent has first been certified (see
subsection 120(1A)).
(4) The provisions of this Act relating to proceedings under
section 138 for the revocation of a patent apply, with the necessary
changes, to an application under subsection (2).
Note: Revocation proceedings under section 138 cannot be commenced in
respect of an innovation patent unless the patent has first been
certified (see subsection 138(1A)).
131 Notification of patent not a threat
The mere notification of the existence of a patent, or an application
for a patent, does not constitute a threat of proceedings for the
purposes of section 128.
132 Liability of legal practitioner or patent attorney
A legal practitioner or a registered patent attorney is not liable to
proceedings under section 128 in respect of an act done in a
professional capacity on behalf of a client.
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Section 132A
Chapter 12—Compulsory licences and
revocation of patents
Part 1—Introduction
132A Simplified outline of this Chapter
This Chapter provides for court orders requiring the grant of
compulsory licences in respect of patented inventions.
Special provision is made for compulsory licences to exploit
patented pharmaceutical inventions. This is to enable the
manufacture of a pharmaceutical product in Australia for export to
an eligible importing country, to address public health problems in
that country.
This Chapter also provides generally for the surrender of patents,
and for court orders revoking patents.
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Part 2—Compulsory licences (general)
132B Simplified outline of this Part
The Federal Court may make an order under this Part requiring the
grant of a compulsory licence to work a patented invention.
The court may order a compulsory licence to be granted if the
reasonable requirements of the public are not being met with
respect to a patented invention.
The reasonable requirements of the public relate, broadly speaking,
to whether Australian trade or industry is unreasonably affected by
the actions of the patentee in relation to the manufacture or
licensing of the invention (or the carrying on of a patented
process).
The court may also order a compulsory licence to be granted if the
patentee has engaged in restrictive trade practices in connection
with the patent under the Competition and Consumer Act 2010 or
under an application law (within the meaning of that Act).
The court may order a patent to be revoked after an order for a
compulsory licence has been made (on the same grounds that apply
to an order for a compulsory licence).
The patentee must be paid an agreed amount of remuneration, or an
amount of remuneration determined by the court.
133 Compulsory licences—general
(1) Subject to subsection (1A), a person may apply to the Federal
Court, after the end of the prescribed period, for an order requiring
the patentee to grant the applicant a licence to work the patented
invention.
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Note: For compulsory licences for the manufacture and export of patented
pharmaceutical inventions to eligible importing countries, see Part 3.
However, Part 3 does not prevent a compulsory licence from being
ordered under this Part in relation to such an invention (see
section 136C).
(1A) A person cannot apply for an order in respect of an innovation
patent unless the patent has been certified.
(2) After hearing the application, the court may, subject to this section,
make the order if satisfied that:
(a) all the following conditions exist:
(i) the applicant has tried for a reasonable period, but
without success, to obtain from the patentee an
authorisation to work the invention on reasonable terms
and conditions;
(ii) the reasonable requirements of the public with respect to
the patented invention have not been satisfied;
(iii) the patentee has given no satisfactory reason for failing
to exploit the patent; or
(b) the patentee has contravened, or is contravening, Part IV of
the Competition and Consumer Act 2010 or an application
law (as defined in section 150A of that Act) in connection
with the patent.
(3) An order must direct that the licence:
(a) is not to give the licensee, or a person authorised by the
licensee, the exclusive right to work the patented invention;
and
(b) is to be assignable only in connection with an enterprise or
goodwill in connection with which the licence is used;
and may direct that the licence is to be granted on any other terms
specified in the order.
(3B) If the patented invention cannot be worked by the applicant
without his or her infringing another patent:
(a) the court is to make the order only if the court is further
satisfied that the patented invention involves an important
technical advance of considerable economic significance on
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the invention (other invention) to which the other patent
relates; and
(b) the court must further order that the patentee of the other
invention:
(i) must grant to the applicant a licence to work the other
invention insofar as is necessary to work the patented
invention; and
(ii) is to be granted, if he or she so requires, a cross-licence
on reasonable terms to work the patented invention; and
(c) the court must direct that the licence granted by the patentee
of the other invention may be assigned by the applicant:
(i) only if he or she assigns the licence granted in respect of
the patented invention; and
(ii) only to the assignee of that licence.
(4) An order operates, without prejudice to any other method of
enforcement, as if it were embodied in a deed granting a licence
and executed by the patentee and all other necessary parties.
(5) The patentee is to be paid in respect of a licence granted to the
applicant under an order:
(a) such amount as is agreed between the patentee and the
applicant; or
(b) if paragraph (a) does not apply—such amount as is
determined by the Federal Court to be just and reasonable
having regard to the economic value of the licence and the
desirability of discouraging contraventions of Part IV of the
Competition and Consumer Act 2010 or an application law
(as defined in section 150A of that Act).
(6) The patentee or the Federal Court may revoke the licence if:
(a) the patentee and the licensee are agreed, or the court on
application made by either party finds, that the circumstances
that justified the grant of the licence have ceased to exist and
are unlikely to recur; and
(b) the legitimate interests of the licensee are not likely to be
adversely affected by the revocation.
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134 Revocation of patent after grant of compulsory licence under
section 133
(1) Where a compulsory licence ordered under section 133 relating to
a patent is granted, an interested person may apply to the Federal
Court, after the end of the prescribed period, for an order revoking
the patent.
(2) After hearing the application, the court may make the order if
satisfied that:
(a) both:
(i) the reasonable requirements of the public with respect to
the patented invention have not been satisfied; and
(ii) the patentee has given no satisfactory reason for failing
to exploit the patent; or
(b) the patentee is contravening Part IV of the Competition and
Consumer Act 2010 or an application law (as defined in
section 150A of that Act) in connection with the patent.
135 Reasonable requirements of the public
(1) For the purposes of sections 133 and 134, the reasonable
requirements of the public with respect to a patented invention are
to be taken not to have been satisfied if:
(a) an existing trade or industry in Australia, or the establishment
of a new trade or industry in Australia, is unfairly prejudiced,
or the demand in Australia for the patented product, or for a
product resulting from the patented process, is not reasonably
met, because of the patentee’s failure:
(i) to manufacture the patented product to an adequate
extent, and supply it on reasonable terms; or
(ii) to manufacture, to an adequate extent, a part of the
patented product that is necessary for the efficient
working of the product, and supply the part on
reasonable terms; or
(iii) to carry on the patented process to a reasonable extent;
or
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(iv) to grant licences on reasonable terms; or
(b) a trade or industry in Australia is unfairly prejudiced by the
conditions attached by the patentee (whether before or after
the commencing day) to the purchase, hire or use of the
patented product, the use or working of the patented process;
or
(c) if the patented invention is not being worked in Australia on
a commercial scale, but is capable of being worked in
Australia.
(2) If, where paragraph (1)(c) applies, the court is satisfied that the
time that has elapsed since the patent was granted has, because of
the nature of the invention or some other cause, been insufficient to
enable the invention to be worked in Australia on a commercial
scale, the court may adjourn the hearing of the application for the
period that the court thinks sufficient for that purpose.
136 Orders to be consistent with international agreements
An order must not be made under section 133 or 134 that is
inconsistent with a treaty between the Commonwealth and a
foreign country.
136A Dealing with allegation of contravention of application law
Proceedings under section 133 or 134 involving an allegation of
contravention of an application law that is a law of a State must be
dealt with as if the law were a law of the Commonwealth.
Note: Those proceedings are in the Federal Court, which can only exercise
the judicial power of the Commonwealth. This section lets the court
deal comprehensively with the proceedings without the need for a
court of the State to determine whether the application law has been
contravened.
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Division 1 Introduction
Section 136B
Part 3—Patented pharmaceutical invention
compulsory licences (for manufacture and
export to eligible importing countries)
Division 1—Introduction
136B Simplified outline of this Part
The Federal Court may make an order under this Part requiring the
grant of a compulsory licence to exploit a patented pharmaceutical
invention for manufacture and export to an eligible importing
country.
The court may order a compulsory licence to be granted if the
proposed use of the pharmaceutical product is to address a public
health issue in the eligible importing country:
(a) in a national emergency (or other extremely urgent
circumstances); or
(b) by the public non-commercial use of the product.
The order may be amended or revoked by another order of the
court.
The patentee must be paid an agreed amount of remuneration, or an
amount of remuneration determined by the court.
136C Relationship between Parts 2 and 3
This Part does not prevent a compulsory licence from being
ordered under Part 2 in relation to a patented pharmaceutical
invention.
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Section 136D
Division 2—Patented pharmaceutical invention
compulsory licences
136D PPI compulsory licences—applications for orders
Application for order
(1) A person (the PPI order applicant) may apply to the Federal Court
for an order (the PPI order) under section 136E requiring the
patentee of a patented pharmaceutical invention to grant the PPI
order applicant a licence (a PPI compulsory licence) to exploit the
invention to the extent necessary for the purposes of manufacturing
a pharmaceutical product in Australia for export to an eligible
importing country.
Note 1: A patented pharmaceutical invention may be a patented product or a
patented process: see the definition of patented pharmaceutical
invention in Schedule 1.
Note 2: For remuneration in respect of a licence, see section 136J.
(2) However, a person cannot apply for an order in respect of an
innovation patent unless the patent has been certified.
Statement—eligible importing country
(3) An application must include a copy of a statement made by or on
behalf of, and with the authorisation of, the eligible importing
country to the effect that it will take reasonable measures within its
means, proportionate to its administrative capacities and to the risk
of trade diversion, to prevent re-exportation from its territory of a
pharmaceutical product imported into its territory in accordance
with a PPI compulsory licence.
Statement—importer
(4) If the pharmaceutical product is to be imported on behalf of, and
with the authorisation of, the eligible importing country, an
application must also include a copy of a statement made by the
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importer to the effect that it will take reasonable measures within
its means to prevent the pharmaceutical product from being used
other than in accordance with a PPI compulsory licence.
Parties
(5) The following are parties to proceedings on an application under
this section:
(a) the PPI order applicant;
(b) the patentee;
(c) any person claiming an interest in the patent as exclusive
licensee or otherwise;
(d) at the option of the eligible importing country—that country.
136E PPI compulsory licences—orders
(1) After hearing an application for a PPI order under section 136D,
the Federal Court may, subject to this Part, make the order sought
if the court is satisfied of all of the following matters:
(a) the application is made in good faith;
(b) the pharmaceutical product is to be imported:
(i) by the eligible importing country; or
(ii) by a person (the third party importer) on behalf of, and
with the authorisation of, the eligible importing country;
(c) the proposed use of the pharmaceutical product is to address
a public health problem in the eligible importing country:
(i) in circumstances of national emergency or other
circumstances of extreme urgency; or
(ii) in other circumstances—by the public non-commercial
use of the pharmaceutical product;
(d) exploiting the patented pharmaceutical invention is necessary
to enable the import and proposed use of the pharmaceutical
product as mentioned in paragraphs (b) and (c);
(e) if subparagraph (c)(ii) applies:
(i) the PPI order applicant has given the patentee a notice
in the approved form seeking from the patentee an
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Section 136F
authorisation to exploit the patented pharmaceutical
invention for public non-commercial use; and
(ii) during the 30 days beginning when the notice was
given, the PPI order applicant has tried, without success,
to obtain such an authorisation from the patentee on
reasonable terms and conditions;
(f) the notification requirements prescribed by regulation in
relation to the importation of the pharmaceutical product into
the eligible importing country have been complied with;
(g) the PPI order applicant, the eligible importing country and, if
there is a third party importer, that importer, will take
reasonable measures to prevent a pharmaceutical product that
is exported from Australia in accordance with a PPI
compulsory licence from being used for a purpose other than
the purpose of addressing the public health problem
mentioned in paragraph (c).
(2) Without limiting the matters that the court may take into account in
deciding whether it is satisfied of a matter mentioned in
subsection (1), the court must take into account any matters
prescribed by regulation.
(3) A regulation made for the purposes of paragraph (1)(f) may:
(a) without limiting subsection 33(3A) of the Acts Interpretation
Act 1901, prescribe different notification requirements for the
importation of pharmaceutical products into eligible
importing countries of different kinds; and
(b) despite subsection 14(2) of the Legislation Act 2003, refer to
eligible importing countries (or different kinds of eligible
importing countries) by applying, adopting or incorporating,
with or without modification, any matter contained in any
other instrument or other writing as in force or existing from
time to time.
136F PPI compulsory licences—terms
(1) A PPI order must direct that the PPI compulsory licence is granted
on the following terms:
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(a) no more than the quantity of the pharmaceutical product that
is determined by the Federal Court to be necessary to meet
the needs of the eligible importing country is manufactured;
(b) the entirety of the pharmaceutical product manufactured for
that purpose is exported to that country;
(c) the pharmaceutical product is labelled and marked in
accordance with the regulations;
(d) before shipment of the pharmaceutical product begins, the
shipment information prescribed by regulation is made
available on a website by, or on behalf of, the licensee for a
minimum period prescribed by regulation;
(e) the duration of the licence is only for the period of time
determined by the Federal Court to be necessary to address
the public health problem concerned;
(f) the licence does not give the licensee, or a person authorised
by the licensee, the exclusive right to exploit the patented
pharmaceutical invention;
(g) the licence is to be assignable only in connection with an
enterprise or goodwill in connection with which the licence is
used;
(h) the licensee must give the Commissioner the information
prescribed by regulation in relation to the licence in
accordance with the regulations.
(2) A PPI order may also direct that the licence is to be granted on any
other terms specified in the order, including terms covering:
(a) other requirements relating to the labelling and marking of
the pharmaceutical product; and
(b) other information to be made available by the licensee and
the way in which it is to be made available.
(3) However, a term specified in a PPI order must not be inconsistent
with any regulations prescribed for the purposes of
paragraph (1)(c), (d) or (h).
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Section 136G
136G PPI compulsory licences—amendment
Application for order
(1) A person may apply to the Federal Court for an order amending
any of the following terms of a PPI compulsory licence:
(a) the quantity of the pharmaceutical product concerned;
(b) how the pharmaceutical product is labelled and marked;
(c) the duration of the licence;
(d) the information that is to be made available by the licensee
and the way it is to be made available.
Note: For remuneration in respect of the licence as amended, see
section 136J.
Order
(2) The court may make the order sought in relation to a term if it is
satisfied that:
(a) it is just to do so in all the circumstances; and
(b) the legitimate interests of the following are not likely to be
adversely affected by the amendment of the term:
(i) the patentee;
(ii) any person claiming an interest in the patent as
exclusive licensee or otherwise;
(iii) the licensee;
(iv) the eligible importing country.
(3) However, an amended term must not be inconsistent with any
regulations prescribed for the purposes of paragraph 136F(1)(c),
(d) or (h).
Parties
(4) The following are parties to any proceedings under this section:
(a) the applicant under subsection (1);
(b) the patentee;
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(c) any person claiming an interest in the patent as exclusive
licensee or otherwise;
(d) the licensee;
(e) at the option of the eligible importing country—that country.
136H PPI compulsory licences—revocation
Application
(1) A person may apply to the Federal Court for an order revoking a
PPI compulsory licence.
Note: For remuneration in respect of the use of a PPI compulsory licence
while it is in force, see section 136J.
Federal Court may revoke licence
(2) The Federal Court may make the order sought if the court is
satisfied that:
(a) one or more of the following applies:
(i) the substantive circumstances that justified the grant of
the licence have ceased to exist and are unlikely to
recur;
(ii) the licensee has not complied with the terms of the
licence;
(iii) if an amount of remuneration has been agreed or
determined under section 136J—the amount has not
been paid within the time agreed or determined; and
(b) the legitimate interests of the licensee or the eligible
importing country are not likely to be adversely affected by
the revocation.
Parties
(3) The following are parties to any proceedings under this section:
(a) the applicant for revocation;
(b) the licensee;
(c) at the option of the eligible importing country—that country.
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Remuneration Division 3
Section 136J
Division 3—Remuneration
136J PPI compulsory licences—remuneration
Working out amount of remuneration
(1) The patentee is to be paid an amount agreed or determined under
subsection (3) in respect of the use of a patented pharmaceutical
invention authorised by a PPI compulsory licence.
(2) For the purposes of subsection (1), the use of a patented
pharmaceutical invention authorised by the PPI compulsory licence
is:
(a) while it is in force—the use authorised by the licence as
granted and as amended (from time to time) under
section 136G; or
(b) if it has ceased to be in force (whether because it was
revoked or otherwise)—the actual use of the patented
pharmaceutical invention under the licence while it was in
force.
(3) For the purposes of subsection (1), the amount is:
(a) an amount agreed between the patentee and the PPI order
applicant, licensee or former licensee (as the case requires);
or
(b) if paragraph (a) does not apply—an amount determined by
the Federal Court to be adequate remuneration taking into
account the economic value to the eligible importing country
of the use of the patented pharmaceutical invention
authorised by the PPI compulsory licence.
Application to make or amend a determination
(4) A person may apply to the Federal Court:
(a) to make a determination under paragraph (3)(b); or
(b) to amend a determination made under that paragraph.
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Section 136J
Note: Grounds for an application under paragraph (b) may include the fact
that the terms of the PPI compulsory licence have been amended, or
the licence has been revoked.
Parties
(5) The following are parties to any proceedings under this section:
(a) the applicant for the determination or the amendment of the
determination;
(b) the PPI order applicant;
(c) the licensee;
(d) the patentee of the patented pharmaceutical invention;
(e) any person claiming an interest in the patent as exclusive
licensee or otherwise.
Can PPI be exploited if remuneration is not agreed or determined?
(6) To avoid doubt, if the proposed use of the pharmaceutical product
is to address a public health problem in the eligible importing
country in circumstances of national emergency or other
circumstances of extreme urgency, the licensee may exploit a
patented pharmaceutical invention under a PPI compulsory licence,
as granted or amended (as the case may be), whether or not an
amount has been agreed or determined under this section.
(7) However, if the proposed use of the pharmaceutical product is to
address a public health problem in the eligible importing country in
other circumstances, by the public non-commercial use of the
pharmaceutical product, the licensee must not exploit a patented
pharmaceutical invention under a PPI compulsory licence unless an
amount has been agreed or determined under this section.
Can PPI compulsory licence be revoked if remuneration is not
agreed or determined?
(8) To avoid doubt, a PPI compulsory licence may be revoked whether
or not an amount has been agreed or determined under this section.
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General Division 4
Section 136K
Division 4—General
136K PPI compulsory licences—nature of orders
Without prejudice to any other method of enforcement, a PPI order
operates as if it were embodied in a deed granting or amending a
licence and executed by the patentee and all other necessary
parties.
136L PPI compulsory licences—consistency of orders with
international agreements
A PPI order must not be made that is inconsistent with a treaty
between the Commonwealth and a foreign country.
136M PPI compulsory licences—applications heard together
Nothing in this Part prevents the Federal Court from dealing with
the following applications together:
(a) applications for different PPI orders, or for the amendment or
revocation of such orders;
(b) applications for determinations under paragraph 136J(3)(b)
for remuneration in relation to different PPI compulsory
licences, or for the amendment of such determinations.
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Part 4 Surrender and revocation of patents
Section 136N
Part 4—Surrender and revocation of patents
136N Simplified outline of this Part
A patentee may offer to surrender a patent by giving the
Commissioner written notice.
The Commissioner may accept the offer of surrender, and revoke
the patent, after hearing all interested parties. If court proceedings
are pending in relation to the patent, leave of the court, or the
consent of the parties, is required. The Commissioner must not
accept the offer if a compulsory licence ordered under Part 2 is in
force in relation to the patent.
In addition, a court may revoke a patent on the following grounds:
(a) the patentee is not entitled to the patent;
(b) the invention is not a patentable invention;
(c) the patent was (broadly speaking) improperly obtained;
(d) the patent was (broadly speaking) obtained on the basis
of a non-compliant specification.
137 Revocation on surrender of patent
(1) A patentee may, at any time, by written notice to the
Commissioner, offer to surrender the patent.
(2) The Commissioner must give notice of an offer in accordance with
the regulations.
(3) After hearing all interested persons who notify the Commissioner
in accordance with the regulations of their wish to be heard, the
Commissioner may accept the offer and revoke the patent.
(4) Where relevant proceedings in relation to a patent are pending, the
Commissioner must not accept an offer to surrender the patent
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without either the leave of the court or the consent of the parties to
the proceedings.
(5) Where a licence ordered under Part 2 is in force in relation to a
patent, the Commissioner must not accept an offer to surrender the
patent.
138 Revocation of patents in other circumstances
(1) Subject to subsection (1A), the Minister or any other person may
apply to a prescribed court for an order revoking a patent.
(1A) A person cannot apply for an order in respect of an innovation
patent unless the patent has been certified.
(2) At the hearing of the application, the respondent is entitled to begin
and give evidence in support of the patent and, if the applicant
gives evidence disputing the validity of the patent, the respondent
is entitled to reply.
(3) After hearing the application, the court may, by order, revoke the
patent, either wholly or so far as it relates to a claim, on one or
more of the following grounds, but on no other ground:
(a) that the patentee is not entitled to the patent;
(b) that the invention is not a patentable invention;
(d) that the patent was obtained by fraud, false suggestion or
misrepresentation;
(e) that an amendment of the patent request or the complete
specification was made or obtained by fraud, false suggestion
or misrepresentation;
(f) that the specification does not comply with subsection 40(2)
or (3).
(4) A court must not make an order under subsection (3) on the ground
that the patentee is not entitled to the patent unless the court is
satisfied that, in all the circumstances, it is just and equitable to do
so.
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Part 5 Other matters
Section 138A
Part 5—Other matters
138A Simplified outline of this Part
This Part deals with the parties to proceedings under this Chapter
(other than proceedings under Part 3).
This Part also enables the Commissioner to appear and be heard in
all proceedings under this Chapter.
139 Parties to proceedings
(1) The patentee, and any person claiming an interest in the patent as
exclusive licensee or otherwise, are parties to any proceedings
under section 133, 134 or 138.
Note: See Part 3 for details of parties to proceedings under that Part.
(2) In any proceedings under this Chapter:
(a) the applicant must serve a copy of the application on the
Commissioner; and
(b) the Commissioner may appear and be heard in the
proceedings.
140 Commissioner to be given copies of orders
An office copy of an order made under this Chapter must be served
on the Commissioner by the Registrar or other appropriate officer
of the court that made the order.
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Withdrawal and lapsing of applications and ceasing of patents Chapter 13
Section 141
Chapter 13—Withdrawal and lapsing of
applications and ceasing of patents
141 Withdrawal of applications
(1) A patent application, other than a PCT application, may be
withdrawn if all of the following conditions are met:
(a) the applicant lodges a written notice of withdrawal signed by
the applicant;
(b) if the application has been opposed under section 59—the
Commissioner has consented to the withdrawal;
(c) if the regulations prescribe a period within which an
application must not be withdrawn—the withdrawal will not
occur within the prescribed period.
(2) The regulations may prescribe circumstances in which PCT
applications may be withdrawn, or are to be taken to be withdrawn.
142 Lapsing of applications
(1) A provisional application for a patent lapses at the end of the
period prescribed for the purpose of section 38 or, if that period is
extended, at the end of the period as so extended.
(2) A complete application for a standard patent lapses if:
(a) the applicant does not ask for an examination of the patent
request and complete specification within the relevant period
prescribed for the purposes of subsection 44(1), (2) or (3), as
the case requires; or
(d) the applicant does not pay a continuation fee for the
application within the period prescribed for the purposes of
this paragraph; or
(e) the patent request and complete specification are not
accepted within the period prescribed for the purposes of this
paragraph; or
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(f) if the application is a PCT application—prescribed
circumstances apply to the application.
(3) A complete application for a standard patent lapses if the applicant
does not comply with a direction of the Commissioner under
section 107 within the time allowed by the Commissioner under
that section.
143 Ceasing of patents
A standard patent ceases if the patentee:
(a) does not pay a renewal fee for the patent within the
prescribed period; or
(b) does not file the prescribed documents (if any) within the
prescribed period.
143A Ceasing of innovation patents
An innovation patent ceases if:
(a) the fee for filing the request and accompanying specification
relating to an application for an innovation patent is not paid
in accordance with the regulations; or
(b) after an examination of the patent has been requested under
paragraph 101A(b), the patentee does not pay the prescribed
fee for the examination within the prescribed period; or
(c) the Commissioner does not make a decision under
paragraph 101E(1)(a) within the period prescribed for the
purposes of this paragraph; or
(d) the patentee does not pay a renewal fee for the patent within
the prescribed period; or
(e) the patentee does not comply with a direction of the
Commissioner under section 106 within the time allowed by
the Commissioner under that section.
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Section 143B
143B Payment of fees
To avoid doubt, a reference in this Chapter to the payment of a
continuation fee or renewal fee by the applicant or patentee is
taken to include a reference to the payment of that fee by a person
other than the applicant or patentee.
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Chapter 14 Contracts
Section 144
Chapter 14—Contracts
144 Void conditions
(1) A condition in a contract relating to the sale or lease of, or a
licence to exploit, a patented invention is void if the effect of the
condition would be:
(a) to prohibit or restrict the buyer, lessee or licensee from using
a product or process (whether patented or not) supplied or
owned by a person other than the seller, lessor or licensor, or
a nominee of the seller, lessor or licensor; or
(b) to require the buyer, lessee or licensee to acquire a product
not protected by the patent from the seller, lessor or licensor,
or a nominee of the seller, lessor or licensor.
(1A) A condition in a contract relating to the sale or lease of, or a
licence to exploit, an invention the subject of an innovation patent
is void if the effect of the condition would be to:
(a) prohibit the buyer, lessee or licensee from applying for
examination of the patent; or
(b) impose restrictions on the circumstances in which the buyer,
lessee or licensee may apply for examination of the patent.
(2) Subsection (1) does not apply if:
(a) the seller, lessor or licensor proves that, at the time the
contract was made, the buyer, lessee or licensee had the
option of buying the product, or obtaining a lease or licence,
on reasonable terms without the condition; and
(b) the contract entitles the buyer, lessee or licensee to be
relieved of the liability to comply with the condition on
giving the other party 3 months’ notice in writing and paying,
in compensation for the relief:
(i) in the case of a sale—such sum as is fixed by an
arbitrator appointed by the Minister; or
(ii) in the case of a lease or licence—such rent or royalty as
is so fixed for the rest of the term of the contract.
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Section 145
(3) A person is not stopped from applying for or obtaining relief in any
proceedings under this Act merely because of an admission made
by the person about the reasonableness of terms offered to the
person as mentioned in paragraph (2)(a).
(4) It is a defence to proceedings for infringement of a patent that the
patented invention is, or was when the proceedings were started,
the subject of a contract containing a provision, inserted by the
patentee, that is void under this section.
(5) If the patentee offers the other parties to a contract mentioned in
subsection (4) a new contract that does not contain the void
condition but that otherwise gives the parties the same rights as the
existing contract, then, whether or not the other parties accept the
new contract in place of the existing contract, subsection (4) ceases
to apply, but the patentee is not entitled to damages or an account
of profit for an infringement of the patent committed before the
offer of the new contract.
145 Termination of contract after patent ceases to be in force
(1) A contract relating to the lease of, or a licence to exploit, a
patented invention may be terminated by either party, on giving 3
months’ notice in writing to the other party, at any time after the
patent, or all the patents, by which the invention was protected at
the time the contract was made, have ceased to be in force.
(2) Subsection (1) applies despite anything to the contrary in that
contract or in any other contract.
146 Effect of Chapter
Nothing in this Chapter:
(a) affects a condition in a contract that prohibits a person from
selling products other than those of a particular person; or
(b) validates a contract that would otherwise be invalid; or
(c) affects a right to terminate a contract, or to terminate a
condition of a contract, being a condition exercisable
independently of this section; or
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Chapter 14 Contracts
Section 146
(d) affects a condition in a contract for the lease of, or a licence
to exploit, a patented product, that reserves to the lessor or
licensor the right to supply new parts of the patented product
that are required to put or keep it in repair.
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Special provisions relating to associated technology Chapter 15
Section 147
Chapter 15—Special provisions relating to
associated technology
147 Certificate by Director as to associated technology
(1) Where the Commissioner considers that a specification in respect
of an application may contain information of a kind referred to in
the definition of associated technology in subsection 4(1) of the
Safeguards Act, the Commissioner must give the Director written
notice to that effect together with a copy of the patent request and
specification.
(2) On receiving a notice, the Director may, if satisfied that the
specification contains information of that kind, issue a certificate to
that effect.
(3) Where the Director is satisfied that:
(a) the possession by the applicant or the nominated person of
the associated technology containing the information was not
in accordance with a permit; or
(b) the communication of the information involved in making the
application was not in accordance with an authority;
the Director may include in the certificate:
(c) if the application is not a relevant international application—
a direction that the application should lapse; or
(d) if the application is a relevant international application—a
direction that the application should not be treated as an
international application.
(4) Where the Director issues a certificate, the Director must give a
copy of it to the Commissioner who must give a copy to the
applicant.
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Section 148
148 Lapsing etc. of applications
(1) Where:
(a) the Commissioner receives a copy of a certificate under
subsection 147(2) in relation to an application; and
(b) the certificate includes a direction under subsection 147(3);
then, upon receipt by the Commissioner of that copy:
(c) if the application is not a relevant international application—
the application lapses; or
(d) if the application is a relevant international application—the
application must cease to be treated as an international
application.
(2) Where an application has lapsed under this section, the
Commissioner must publish a notice to that effect in the Official
Journal.
149 Revocation of direction
Where under section 148 an application has lapsed, or has ceased
to be treated as an international application, because of a direction
by the Director under section 147, the applicant may apply in
writing to the Director for the revocation of the direction and the
Director may revoke the direction.
150 Restoration of lapsed application
(1) Where an application has lapsed under section 148, the applicant
may, in writing, ask the Commissioner to restore it.
(2) On receiving a request, the Commissioner must restore the
application if satisfied, on the balance of probabilities, that:
(a) the relevant direction of the Director is no longer in force;
and
(b) there is no other reason not to do so.
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Section 151
(3) Where the Commissioner restores an application, the
Commissioner must publish a notice to that effect in the Official
Journal.
(4) Where an application is restored under this section, such provisions
as are prescribed have effect for the protection or compensation of
persons who exploited (or took definite steps by contract or
otherwise to exploit) the relevant invention after the lapse of the
application and before the day on which its restoration was notified
in the Official Journal.
(5) Proceedings cannot be started under section 57 in respect of
anything done during the period from and including the day on
which the application lapsed to and including the day on which its
restoration was notified in the Official Journal.
151 Reinstatement of application as an international application
(1) Where a relevant international application has ceased to be treated
as an international application under section 148, the applicant may
ask the Commissioner in writing to reinstate it.
(2) On receiving a request, the Commissioner must reinstate the
application as an international application if satisfied, on the
balance of probabilities, that:
(a) the relevant direction of the Director is no longer in force;
and
(b) there is no other reason not to do so.
(3) Where the Commissioner reinstates an application as an
international application, the application must be treated as an
international application.
(4) Where:
(a) the relevant international application specifies Australia as a
designated State; and
(b) the Commissioner cannot reinstate the application merely
because, under the PCT, it is to be considered as having been
withdrawn; and
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Section 152
(c) the applicant files, within the prescribed period, a written
request that the application be treated as an application under
this Act for a standard patent; and
(d) the applicant files any prescribed documents and pays the
prescribed fee;
then, except as otherwise prescribed:
(e) the application must be treated as requested; and
(f) the description, claims and drawings in the application must
be treated as a complete specification filed in respect of the
application; and
(g) the application and complete specification must be treated as
having been filed on the date on which the relevant
international application was filed.
152 Notice of prohibitions or restrictions on publication
(1) Where the Director issues a certificate under section 147 in relation
to an application, the Director may give written notice to the
Commissioner of any prohibitions or restrictions on the publication
or communication of the information in the specification, or in a
relevant abstract, that the Director considers appropriate.
(2) On receiving a notice, the Commissioner must take such steps as
are necessary or expedient to give effect to it.
(3) Without limiting the generality of subsection (2), the
Commissioner may, by written order, prohibit or restrict the
publication or communication of information about the
subject-matter of the application, whether generally or in relation
to a particular person or class of persons.
(4) A person must not, except in accordance with the written consent
of the Commissioner, publish or communicate information in
contravention of an order.
Penalty: Imprisonment for 2 years.
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Section 153
153 Effect of order
(1) Where an order is in force in relation to an application for a
standard patent, the application may proceed up to the acceptance
of the patent request and complete specification, but the complete
specification must not be made open to public inspection, the
acceptance must not be notified in the Official Journal and a patent
must not be granted on the application.
(2) While an order is in force in relation to an application for an
innovation patent, the application may proceed up to the
acceptance of the patent request and complete specification but a
patent must not be granted on the application.
(3) Where an order in relation to an application for a standard patent
has been revoked after the acceptance of the patent request and
complete specification, the acceptance must be notified in the
Official Journal within the prescribed period.
(4) Nothing in this Act prevents disclosing information about an
invention to the Director for the purpose of obtaining advice on
whether an order should be made, amended or revoked.
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Chapter 16 Jurisdiction and powers of courts
Section 154
Chapter 16—Jurisdiction and powers of
courts
154 Jurisdiction of Federal Court
(1) The Federal Court has jurisdiction with respect to matters arising
under this Act.
(2) The jurisdiction of the Federal Court to hear and determine appeals
against decisions or directions of the Commissioner is exclusive of
the jurisdiction of any other court except the jurisdiction of the
High Court under section 75 of the Constitution.
(3) A prosecution for an offence against this Act must not be started in
the Federal Court.
155 Jurisdiction of other prescribed courts
(1) Each prescribed court (other than the Federal Court) has
jurisdiction with respect to matters arising under this Act in respect
of which proceedings may, under this Act, be started in a
prescribed court.
(2) The jurisdiction conferred by subsection (1) on the Supreme Court
of a Territory is conferred:
(a) in the case of proceedings for the infringement of a patent or
proceedings under subsection 125(1) or section 128, or a
matter arising under this Act that may be heard and
determined in the course of such proceedings—to the extent
that the Constitution permits; and
(b) in any other case—only in relation to proceedings instituted
by a natural person who is resident in the Territory, or a
corporation that has its principal place of business in the
Territory, at the time the proceedings are started.
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Jurisdiction and powers of courts Chapter 16
Section 156
156 Exercise of jurisdiction
The jurisdiction of a prescribed court under section 154 or 155 is to
be exercised by a single judge.
157 Transfer of proceedings
(1) A prescribed court in which proceedings under this Act have been
started may, on the application of a party made at any stage in the
proceedings, by order, transfer the proceedings to another
prescribed court having jurisdiction to hear and determine the
proceedings.
(2) Where a court transfers proceedings to another court:
(a) all documents of record relevant to those proceedings filed in
the transferring court shall be sent to the other court by the
Registrar or other appropriate officer of the transferring
court; and
(b) the other court shall proceed as if the proceedings had been
started in the other court and as if the same steps in the
proceedings had been taken there as had been taken in the
transferring court.
158 Appeals
(1) An appeal lies to the Federal Court against a judgment or order of:
(a) another prescribed court exercising jurisdiction under this
Act; or
(b) any other court in proceedings under subsection 120(1) or
section 128.
(2) Except with the leave of the Federal Court, an appeal does not lie
to the Full Court of the Federal Court against a judgment or order
of a single judge of the Federal Court in the exercise of its
jurisdiction to hear and determine appeals from decisions or
directions of the Commissioner.
(3) With the special leave of the High Court, an appeal lies to the High
Court against a judgment or order referred to in subsection (1).
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Section 159
(4) Except as otherwise provided by this section, an appeal does not lie
against a judgment or order referred to in subsection (1).
159 Commissioner may appear in appeals
The Commissioner may appear and be heard at the hearing of an
appeal to the Federal Court against a decision or direction of the
Commissioner even if the Commissioner is not a party to the
appeal.
160 Powers of Federal Court
On hearing an appeal against a decision or direction of the
Commissioner, the Federal Court may do any one or more of the
following:
(a) admit further evidence orally, or on affidavit or otherwise;
(b) permit the examination and cross-examination of witnesses,
including witnesses who gave evidence before the
Commissioner;
(c) order an issue of fact to be tried as it directs;
(d) affirm, reverse or vary the Commissioner’s decision or
direction;
(e) give any judgment, or make any order, that, in all the
circumstances, it thinks fit;
(f) order a party to pay costs to another party.
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The Crown Chapter 17
Introductory Part 1
Section 161
Chapter 17—The Crown
Part 1—Introductory
161 Nominated persons and patentees
A reference in this Chapter to a nominated person or to a patentee
includes a reference to the successor in title of the nominated
person or patentee or an exclusive licensee of the nominated person
or patentee.
162 Commonwealth and State authorities
A reference in this Chapter to the Commonwealth includes a
reference to an authority of the Commonwealth and a reference to
a State includes a reference to an authority of a State.
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Chapter 17 The Crown
Part 2 Exploitation by the Crown
Section 163
Part 2—Exploitation by the Crown
163 Exploitation of inventions by Crown
(1) Where, at any time after a patent application has been made, the
invention concerned is exploited by the Commonwealth or a State
(or by a person authorised in writing by the Commonwealth or a
State) for the services of the Commonwealth or the State, the
exploitation is not an infringement:
(a) if the application is pending—of the nominated person’s
rights in the invention; or
(b) if a patent has been granted for the invention—of the patent.
(2) A person may be authorised for the purposes of subsection (1):
(a) before or after any act for which the authorisation is given
has been done; and
(b) before or after a patent has been granted for the invention;
and
(c) even if the person is directly or indirectly authorised by the
nominated person or patentee to exploit the invention.
(3) Subject to section 168, an invention is taken for the purposes of
this Part to be exploited for services of the Commonwealth or of a
State if the exploitation of the invention is necessary for the proper
provision of those services within Australia.
164 Nominated person or patentee to be informed of exploitation
As soon as practicable after an invention has been exploited under
subsection 163(1), the relevant authority must inform the applicant
and the nominated person, or the patentee, of the exploitation and
give him or her any information about the exploitation that he or
she from time to time reasonably requires, unless it appears to the
relevant authority that it would be contrary to the public interest to
do so.
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Exploitation by the Crown Part 2
Section 165
165 Remuneration and terms for exploitation
(2) The terms for the exploitation of the invention (including terms
concerning the remuneration payable to the nominated person or
the patentee) are such terms as are agreed, or determined by a
method agreed, between the relevant authority and the nominated
person or the patentee or, in the absence of agreement, as are
determined by a prescribed court on the application of either party.
(3) For the purposes of subsection (2), the terms, or the method, may
be agreed before, during or after the exploitation.
(4) When fixing the terms, the court may take into account any
compensation that a person interested in the invention or the patent
has received, directly or indirectly, for the invention from the
relevant authority.
165A Exploitation of invention to cease under court order
(1) A prescribed court may, on the application of the nominated person
or the patentee, declare that the exploitation of the invention by the
Commonwealth or the State is not, or is no longer, necessary for
the proper provision of services of the Commonwealth or of the
State if the court is satisfied that, in all the circumstances of the
case, it is fair and reasonable to make the declaration.
(2) The court may further order that the Commonwealth or the State is
to cease to exploit the invention:
(a) on and from the day specified in the order; and
(b) subject to any conditions specified in the order.
In making the order, the court is to ensure that the legitimate
interests of the Commonwealth or of the State are not adversely
affected by the order.
166 Previous agreements inoperative
An agreement or licence (whether made or given before or after the
commencement of this Act) fixing the terms on which a person
other than the Commonwealth or a State may exploit an invention
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Part 2 Exploitation by the Crown
Section 167
is inoperative with respect to the exploitation, after the
commencement of this Act, of the invention under
subsection 163(1), unless the agreement or licence has been
approved:
(a) if the relevant authority is the Commonwealth—by the
Minister; or
(b) if the relevant authority is a State—by the Attorney-General
of the State.
167 Sale of products
(1) The right to exploit an invention under subsection 163(1) includes
the right to sell products made in exercise of that right.
(2) Where under subsection 163(1) the sale of products is not an
infringement of:
(a) a patent; or
(b) a nominated person’s rights in the products;
the buyer, and any person claiming through the buyer, is entitled to
deal with the products as if the relevant authority were the patentee
or the nominated person.
168 Supply of products by Commonwealth to foreign countries
Where the Commonwealth has made an agreement with a foreign
country to supply to that country products required for the defence
of the country:
(a) the use of a product or process by the Commonwealth, or by
a person authorised in writing by the Commonwealth, for the
supply of that product is to be taken, for the purposes of this
Chapter, to be use of the product or process by the
Commonwealth for the services of the Commonwealth; and
(b) the Commonwealth or the authorised person may sell those
products to the country under the agreement; and
(c) the Commonwealth or the authorised person may sell to any
person any of the products that are not required for the
purpose for which they were made.
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Section 169
169 Declarations that inventions have been exploited
(1) Subject to subsection (4), a patentee who considers that the
patented invention has been exploited under subsection 163(1) may
apply to a prescribed court for a declaration to that effect.
(2) In proceedings under subsection (1):
(a) the alleged relevant authority is the defendant; and
(b) the alleged relevant authority may apply by way of
counter-claim in the proceedings, for the revocation of the
patent.
(3) The provisions of this Act relating to the revocation of patents
apply, with the necessary changes, to a counter-claim.
(4) An application under subsection (1) in respect of an innovation
patent cannot be made unless the patent has been certified.
170 Sale of forfeited articles
Nothing in this Chapter affects the right of the Commonwealth or a
State, or of a person deriving title directly or indirectly from the
Commonwealth or a State, to sell or use an article forfeited under a
law of the Commonwealth or the State.
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Chapter 17 The Crown
Part 3 Acquisitions by and assignments to the Crown
Section 171
Part 3—Acquisitions by and assignments to the
Crown
171 Acquisition of inventions or patents by Commonwealth
(1) The Governor-General may direct that a patent, or an invention
that is the subject of a patent application, be acquired by the
Commonwealth.
(2) When a direction is given, all rights in respect of the patent or the
invention are, by force of this subsection, transferred to and vested
in the Commonwealth.
(3) Notice of the acquisition must be:
(a) given to the applicant and the nominated person, or the
patentee; and
(b) published in the Official Journal and the Gazette unless, in
the case of the acquisition of an invention that is the subject
of an application for a patent, a prohibition order, or an order
under section 152, is in force in respect of the application.
(4) The Commonwealth must pay a compensable person such
compensation as is agreed between the Commonwealth and the
person or, in the absence of agreement, as is determined by a
prescribed court on the application of either of them.
172 Assignment of invention to Commonwealth
(1) An inventor, or an inventor’s successor in title, may assign the
invention, and any patent granted or to be granted for the
invention, to the Commonwealth.
(2) The assignment and all covenants and agreements in the
assignment are valid and effectual, even if valuable consideration
has not been given for the assignment, and may be enforced by
proceedings in the name of the Minister.
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The Crown Chapter 17
Prohibition orders Part 4
Section 173
Part 4—Prohibition orders
173 Prohibition of publication of information about inventions
(1) Subject to any directions of the Minister, the Commissioner may, if
it appears to the Commissioner to be necessary or expedient to do
so in the interests of the defence of the Commonwealth, by written
order:
(a) prohibit or restrict the publication of information about the
subject-matter of an application for a patent (including an
international application); or
(b) prohibit or restrict access to a micro-organism deposited for
the purposes of section 41 with a prescribed depositary
institution situated in Australia.
(2) A person must not contravene a prohibition order except in
accordance with the written consent of the Commissioner.
Penalty: Imprisonment for 2 years.
(3) A reference in subsection (1) to giving access to a micro-organism
includes a reference to giving a sample of the micro-organism.
174 Effect of prohibition orders
(1) While a prohibition order is in force in relation to an application
for a standard patent, the application may proceed up to the
acceptance of the patent request and complete specification, but the
complete specification must not be made open to public inspection,
the acceptance must not be notified in the Official Journal and a
patent must not be granted on the application.
(2) Where a prohibition order in relation to an application for a
standard patent is revoked after the acceptance of the patent request
and complete specification, the acceptance must be notified in the
Official Journal within the prescribed period.
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Chapter 17 The Crown
Part 4 Prohibition orders
Section 175
(3) While a prohibition order is in force in relation to an application
for an innovation patent, the application may proceed up to the
acceptance of the patent request and complete specification, but a
patent must not be granted on the application.
175 Disclosure of information to Commonwealth authority
Nothing in this Act prevents disclosing information about an
invention, or giving access to, or a sample of, a micro-organism to
a department or authority of the Commonwealth for the purpose of
obtaining advice on whether a prohibition order should be made,
amended or revoked.
176 International applications treated as applications under this Act
Where:
(a) an international application specifies Australia as a
designated State; and
(b) as a result of a prohibition order or of anything done in
reliance on section 175, the application is, under the PCT, to
be considered as having been withdrawn; and
(c) the applicant files, within the prescribed period, a written
request that the application be treated as an application under
this Act for a standard patent; and
(d) the applicant files any prescribed documents and pays the
prescribed fee;
then, except as otherwise prescribed:
(e) the application must be treated as requested; and
(f) the description, claims and drawings in the application must
be treated as a complete specification filed in respect of the
application; and
(g) the application and specification must be treated as having
been filed on the date on which the international application
was filed.
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Miscellaneous offences Chapter 18
Section 177
Chapter 18—Miscellaneous offences
177 False representations about the Patent Office
(1) A person must not use, in connection with his or her business,
words that would reasonably lead to the belief that his or her office
is, or is officially connected with, the Patent Office.
Penalty: 30 penalty units.
(2) Without limiting subsection (1), a person who:
(a) places, or allows to be placed, on the building in which his or
her office is situated; or
(b) uses when advertising his or her office or business; or
(c) places on a document, as a description of his or her office or
business;
the words “Patent Office” or “Office for obtaining patents”, or
words of similar import, whether alone or together with other
words, commits an offence against that subsection.
178 False representations about patents or patented articles
(1) A person must not falsely represent that he or she, or another
person, is the patentee of an invention.
Penalty: 60 penalty units.
(1A) A person must not falsely represent that he or she, or another
person, is the patentee of an innovation patent that has been
certified.
Penalty: 60 penalty units.
(2) A person must not falsely represent that an article sold by him or
her is patented in Australia, or is the subject of an application for a
patent in Australia.
Penalty: 60 penalty units.
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Section 182
(3) Without limiting subsection (2):
(a) a person is to be taken to represent that an article is patented
in Australia if the word “patent” or “patented”, the words
“provisional patent”, or any other word or words implying
that a patent for the article has been obtained in Australia, are
stamped, engraved or impressed on, or otherwise applied to,
the article; and
(b) a person is to be taken to represent that an article is the
subject of an application for a patent in Australia if the words
“patent applied for” or “patent pending”, or any other word
or words implying that an application for a patent for the
article has been made in Australia, are stamped, engraved or
impressed on, or otherwise applied to, the article.
(4) A prosecution must not be started for an offence against this
section without the consent of the Minister, or a person authorised
by the Minister.
182 Officers not to traffic in inventions
(1) The Commissioner, a Deputy Commissioner or an employee must
not buy, sell, acquire or traffic in:
(a) an invention or patent, whether granted in Australia or
anywhere else; or
(b) a right to, or licence under, a patent, whether granted in
Australia or anywhere else.
Penalty: 60 penalty units.
(2) A purchase, sale, acquisition, assignment or transfer made or
entered into in contravention of this section is void.
(3) This section does not apply to the inventor or to an acquisition by
bequest or devolution by law.
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Section 183
183 Unauthorised disclosure of information by employees etc.
(1) The Commissioner, each Deputy Commissioner and each
employee must not disclose information about a matter that has
been or is being dealt with under this Act or the 1952 Act unless
required or authorised to do so by this Act, a written direction of
the Commissioner or an order of a court.
(1A) The Designated Manager may disclose to the Board personal
information (within the meaning of the Privacy Act 1988):
(a) that is about a registered patent attorney; and
(b) that the Designated Manager considers to be relevant to the
Board’s functions.
(2) The Designated Manager may disclose to the Australian Securities
and Investments Commission information (including personal
information within the meaning of the Privacy Act 1988) that is:
(a) relevant to the functions of the Commission; and
(b) obtained by the Designated Manager as a result of the
performance of functions and duties, or the exercise of
powers, in relation to incorporated patent attorneys.
(3) The Designated Manager may disclose to the Registrar of
Companies of New Zealand information (including personal
information within the meaning of the Privacy Act 1988) that is:
(a) relevant to the functions conferred on the Registrar of
Companies of New Zealand by or under the Companies Act
1993 of New Zealand; and
(b) obtained by the Designated Manager as a result of the
performance of functions and duties, or the exercise of
powers, in relation to incorporated patent attorneys.
(4) For the purposes of subsection (3), it is immaterial whether the
disclosure takes place in New Zealand.
184 Other unauthorised disclosures of information
A person to whom section 71 of the Safeguards Act applies must
not disclose information about a matter that has been or is being
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Section 185
dealt with under this Act or the 1952 Act unless required or
authorised to do so by the Safeguards Act, this Act, a written
direction of the Director or an order of a court.
Penalty: Imprisonment for 2 years.
185 Commissioner etc. not to prepare documents or search records
The Commissioner, a Deputy Commissioner or an employee must
not:
(a) prepare, or help to prepare:
(i) a specification; or
(ii) any other document relating to a specification (other
than a document which is in an approved form);
unless the Commissioner, Deputy Commissioner or the
employee is the inventor in respect of the specification; or
(b) search the records of the Patent Office otherwise than in his
or her official capacity.
Penalty: 10 penalty units.
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The Register and official documents Chapter 19
Section 186
Chapter 19—The Register and official
documents
186 Register of Patents
(1) A Register of Patents is to be kept at the Patent Office. The
Register is to contain 2 parts as follows:
(a) a part dealing with standard patents; and
(b) a part dealing with innovation patents.
(2) The Register may be kept wholly or partly by use of a computer.
(3) If the Register is kept wholly or partly by use of a computer:
(a) references in this Act to an entry in the Register are to be
read as including references to a record of particulars kept by
use of the computer and comprising the Register or part of
the Register; and
(b) references in this Act to particulars being registered, or
entered in the Register, are to be read as including references
to the keeping of a record of those particulars as part of the
Register by use of the computer; and
(c) references in this Act to the rectification of the Register are to
be read as including references to the rectification of the
record of particulars kept by use of the computer and
comprising the Register or part of the Register.
187 Registration of particulars of patents etc.
(1) Particulars of standards patents in force, and other prescribed
particulars relating to standard patents (if any), must be registered
in that part of the Register dealing with standard patents.
(2) Particulars of innovation patents in force, and other prescribed
particulars relating to innovation patents (if any), must be
registered in that part of the Register dealing with innovation
patents.
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Section 188
188 Trusts not registrable
Notice of any kind of trust relating to a patent or licence is not
receivable by the Commissioner and must not be registered.
189 Power of patentee to deal with patent
(1) A patentee may, subject only to any rights appearing in the
Register to be vested in another person, deal with the patent as the
absolute owner of it and give good discharges for any
consideration for any such dealing.
(2) This section does not protect a person who deals with a patentee
otherwise than as a purchaser in good faith for value and without
notice of any fraud on the part of the patentee.
(2A) Despite subsection (1), the recording in the Register of a right that
is a PPSA security interest does not affect a dealing with a patent.
(3) Equities in relation to a patent may be enforced against the
patentee except to the prejudice of a purchaser in good faith for
value.
(4) Subsection (3) does not apply in relation to an equity that is a
PPSA security interest.
Note: The Personal Property Securities Act 2009 deals with the rights of
purchasers of personal property (including intellectual property such
as patents) that is subject to PPSA security interests. That Act also
provides for the priority and enforcement of PPSA security interests.
See the following provisions of that Act:
(a) Part 2.5 (taking personal property free of security interests);
(b) Part 2.6 (priority between security interests);
(c) Chapter 4 (enforcement of security interests).
190 Inspection of Register
(1) The Register must be available for inspection at the Patent Office
by any person during the hours that it is open for business.
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(2) If a record of particulars is kept by use of a computer, subsection (1)
is to be taken to be complied with, to the extent that the Register
consists of those particulars, by giving members of the public access
to a computer terminal which they can use to inspect the particulars,
either on a screen or in the form of a computer printout.
191 False entries in Register
A person must not:
(a) make a false entry in the Register; or
(b) cause a false entry to be made in the Register; or
(c) tender in evidence a document that falsely purports to be a
copy of or extract from an entry in the Register.
Penalty: Imprisonment for 2 years.
191A Commissioner’s power to rectify register
(1) The Commissioner may rectify the Register if the Commissioner is
satisfied, on the balance of probabilities, whether on application or
otherwise, of any of the following:
(a) the omission of an entry from the Register;
(b) an entry made in the Register without sufficient cause;
(c) an entry wrongly existing in the Register;
(d) an error or defect in an entry in the Register.
(2) The Commissioner must, on application, make a declaration as to a
person’s entitlement to a patent, or a share in a patent, if the
Commissioner is satisfied, on the balance of probabilities, that the
Register does not properly record a person’s entitlement to a
patent, or a share in a patent:
(a) because the patent, or a share in the patent, was granted to a
person who was not entitled to it; or
(b) because the patent, or a share in the patent, was not granted
to a person who was entitled to it; or
(c) for any other reason.
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(3) If the Commissioner makes a declaration under subsection (2), the
Commissioner must rectify the Register accordingly.
(4) The Commissioner must not make a declaration under
subsection (2), or rectify the Register under subsection (3), without
first giving the following persons a reasonable opportunity to be
heard:
(a) the person whose entitlement is not properly recorded by the
Register;
(b) any person whose entitlement to the patent, or a share in the
patent, is recorded in the Register.
(5) The Commissioner must not make a declaration or rectify the
Register under this section while relevant proceedings in relation to
the patent are pending.
(6) An appeal lies to the Federal Court against a decision of the
Commissioner:
(a) to make, or refuse to make, a declaration; or
(b) to rectify, or not rectify, the Register;
under this section.
192 Orders for rectification of Register
(1) A person aggrieved by:
(a) the omission of an entry from the Register; or
(b) an entry made in the Register without sufficient cause; or
(c) an entry wrongly existing in the Register; or
(d) an error or defect in an entry in the Register;
may apply to a prescribed court for an order to rectify the Register.
(2) On hearing an application, the court may:
(a) decide any question which it is necessary or expedient to
decide in connection with the rectification of the Register;
and
(b) make any order it thinks fit for the rectification of the
Register.
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(3) The Commissioner:
(a) must be given notice of an application; and
(b) may appear and be heard in the proceedings; and
(c) must appear if directed to do so by the court.
(4) An office copy of an order must be served on the Commissioner by
the Registrar or other appropriate officer of the court.
(5) On receiving an office copy of an order, the Commissioner must
rectify the Register accordingly.
193 Inspection of documents
All documents filed in connection with the registration of
prescribed particulars under section 187 must be available for
inspection at the Patent Office by any person during the hours
when it is open for business.
194 Information obtainable from Commissioner
The Commissioner may give any person information about:
(a) a patent; or
(b) an application for a patent that is open to public inspection;
or
(c) any prescribed document or matter.
195 Evidence—the Register
(1) The Register is prima facie evidence of any particulars registered
in it.
(2) If the Register is wholly or partly kept by use of a computer, a
document signed by the Commissioner reproducing in writing all
or any of the particulars comprising the Register, or that part of it,
is admissible in any proceedings as prima facie evidence of those
particulars.
(3) This section does not apply in relation to any particulars registered
in the Register in relation to a PPSA security interest.
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Section 196
Note: Certain particulars relating to registrations in respect of PPSA security
interests under the Personal Property Securities Act 2009 are
admissible in evidence: see section 174 of that Act.
196 Evidence—unregistered particulars
(1) A document in respect of which particulars have not been entered
in the Register is not admissible in any proceedings in proof of the
title to a patent or to an interest in a patent unless:
(a) the court or tribunal before which the proceedings are
brought otherwise directs; or
(b) the proceedings are:
(i) for an order under section 192; or
(ii) to enforce equities in relation to a patent or licence.
(2) However, subsection (1) does not restrict the admissibility in any
proceedings of a document in relation to a PPSA security interest.
Note: Certain particulars relating to registrations in respect of PPSA security
interests under the Personal Property Securities Act 2009 are
admissible in evidence: see section 174 of that Act.
197 Evidence—certificate and copies of documents
(1) A signed certificate to the effect that:
(a) anything required or permitted by this Act or the 1952 Act to
be done or not to be done had or had not been done on a date
specified in the certificate; or
(b) a document in the Patent Office or its library was available
for public inspection on a date specified in the certificate;
is prima facie evidence of the matters in the certificate.
(2) A signed copy of or signed extract from the Register is admissible
in any proceedings as if it were the original.
(3) A signed copy of or signed extract from a document in the Patent
Office or its library is admissible in any proceedings as if it were
the original.
(4) In this section:
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Section 197AA
signed means signed by the Commissioner.
197AA Evidence of matters arising under PCT
A certificate signed by the Commissioner in relation to an
international application, certifying that:
(a) any matter or thing required or permitted by or under this Act
or the PCT to be made or done has been made or done; or
(b) any matter or thing required by or under this Act or the PCT
not to be made or done has not been made or done;
is prima facie evidence of the matters contained in the certificate.
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Chapter 20 Patent Attorneys
Part 1 Registration, privileges and professional conduct
Section 198
Chapter 20—Patent Attorneys
Part 1—Registration, privileges and professional
conduct
198 Registration of patent attorneys
(1) A Register of Patent Attorneys is to be kept by the Designated
Manager.
Note: Designated Manager is defined by section 200A.
(2) The Register of Patent Attorneys may be kept wholly or partly by
use of a computer.
(3) If the Register of Patent Attorneys is kept wholly or partly by use
of a computer, references in this Act to an entry in the Register of
Patent Attorneys are to be read as including references to a record
of particulars kept by use of the computer and comprising the
Register of Patent Attorneys or part of the Register of Patent
Attorneys.
Registration of individuals
(4) The Designated Manager must register as a patent attorney an
individual who:
(b) holds such qualifications as are specified in, or ascertained in
accordance with, the regulations; and
(c) has been employed as prescribed for not less than the
prescribed period; and
(d) is of good fame, integrity and character; and
(e) has not been convicted of a prescribed offence during the
previous 5 years; and
(f) is not under sentence of imprisonment for a prescribed
offence; and
(g) meets any other requirements prescribed by the regulations.
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The registration is to consist of entering the individual’s name in
the Register of Patent Attorneys.
(5) A qualification specified in, or ascertained in accordance with,
regulations made for the purposes of paragraph (4)(b) may consist
of passing an examination conducted by the Board. This subsection
does not limit paragraph (4)(b).
(6) Paragraphs (4)(e) and (f) do not limit paragraph (4)(d).
(7) A reference in this section to conviction of an offence includes a
reference to:
(a) the making of an order under section 19B of the Crimes Act
1914 in relation to the offence; or
(b) the making of an order under a corresponding provision of a
law of:
(i) a State; or
(ii) a Territory; or
(iii) New Zealand;
in relation to the offence.
Registration of companies
(9) The Designated Manager must register as a patent attorney a
company that:
(a) has at least one patent attorney director; and
(b) has given the Designated Manager written notice in the
approved form of its intention to act as a patent attorney; and
(c) meets the requirements (if any) prescribed by the regulations.
The registration is to consist of entering the company’s name in the
Register of Patent Attorneys.
(10) A company registered as a patent attorney is an incorporated
patent attorney.
(11) A patent attorney director of a company is an individual who is
both:
(a) a registered patent attorney; and
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Section 199
(b) a validly appointed director of the company.
New Zealand
(12) It is immaterial whether a matter mentioned in:
(a) paragraph (4)(b), (c), (d), (e), (f) or (g); or
(b) subsection (5); or
(c) paragraph (9)(a), (b) or (c); or
(d) paragraph (11)(b);
concerns something that happened in New Zealand.
199 Deregistration
(1) The name of a person registered as a patent attorney may be
removed from the Register of Patent Attorneys in the prescribed
manner and on the prescribed grounds.
(2) It is immaterial whether the prescribed grounds concern something
that happened in New Zealand.
200 Privileges
(1) A registered patent attorney:
(a) is entitled to prepare all documents, transact all business and
conduct all proceedings for the purposes of this Act; and
(b) has such other rights and privileges as are prescribed.
(2) A communication made for the dominant purpose of a registered
patent attorney providing intellectual property advice to a client is
privileged in the same way, and to the same extent, as a
communication made for the dominant purpose of a legal
practitioner providing legal advice to a client.
(2A) A record or document made for the dominant purpose of a
registered patent attorney providing intellectual property advice to
a client is privileged in the same way, and to the same extent, as a
record or document made for the dominant purpose of a legal
practitioner providing legal advice to a client.
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(2B) A reference in subsection (2) or (2A) to a registered patent attorney
includes a reference to an individual authorised to do patents work
under a law of another country or region, to the extent to which the
individual is authorised to provide intellectual property advice of
the kind provided.
(2C) Intellectual property advice means advice in relation to:
(a) patents; or
(b) trade marks; or
(c) designs; or
(d) plant breeder’s rights; or
(e) any related matters.
(3) Nothing in this section authorises a registered patent attorney to
prepare a document to be issued from or filed in a court or to
transact business, or conduct proceedings, in a court.
200A Designated Manager
For the purposes of this Act, a person is the Designated Manager if
the person occupies, or is acting in, a position that:
(a) is usually occupied by an SES employee; and
(b) has been declared by the Secretary of the Department, in
writing, to be the position of Designated Manager.
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Part 2 Offences
Section 201
Part 2—Offences
201 Acting or holding out without being registered
Individuals
(1) An individual commits an offence if:
(a) the individual carries on business, practises or acts as a patent
attorney; and
(b) the individual is not a registered patent attorney or a legal
practitioner.
Penalty: 30 penalty units.
(2) An individual commits an offence if:
(a) the individual describes himself or herself, or holds himself
or herself out, or permits himself or herself to be described or
held out, as a patent attorney or agent for obtaining patents;
and
(b) the individual is not a registered patent attorney.
Penalty: 30 penalty units.
Partnerships
(3) A member of a partnership commits an offence if:
(a) the member carries on business, practises or acts as a patent
attorney; and
(b) none of the members of the partnership is a registered patent
attorney or a legal practitioner.
Penalty: 30 penalty units.
(4) A member of a partnership commits an offence if:
(a) the member describes the partnership, or holds the
partnership out, or permits the partnership to be described or
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held out, as a patent attorney, or agent for obtaining patents;
and
(b) none of the members of the partnership is a registered patent
attorney.
Penalty: 30 penalty units.
Companies
(5) A company commits an offence if:
(a) the company carries on business, practises or acts as a patent
attorney; and
(b) the company is not a registered patent attorney or
incorporated legal practice.
Penalty: 150 penalty units.
(6) A company commits an offence if:
(a) the company describes itself, or holds itself out, or permits
itself to be described or held out, as a patent attorney, or
agent for obtaining patents; and
(b) the company is not a registered patent attorney.
Penalty: 150 penalty units.
Exception—legal representatives
(7) Subsections (1), (3) and (5) do not apply in relation to the business
of a registered patent attorney who is deceased if the business:
(a) is carried on, within 3 years of the death of the patent
attorney, or such further time allowed by a prescribed court,
by the legal representative of the deceased registered patent
attorney; and
(b) is managed by a registered patent attorney on behalf of the
legal representative.
Note: The defendant bears an evidential burden in relation to the matters in
subsection (7). See subsection 13.3(3) of the Criminal Code.
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Section 201A
Exception—employees
(8) Subsections (1) and (2) do not apply in relation to anything done
by a person, as an employee, for:
(a) his or her employer; or
(b) if the person’s employer is a member of a related company
group—another member of the group.
Note: The defendant bears an evidential burden in relation to the matters in
subsection (8). See subsection 13.3(3) of the Criminal Code.
Exception—related company groups
(9) Subsections (5) and (6) do not apply in relation to anything done
by a member of a related company group for another member of
the group.
Note: The defendant bears an evidential burden in relation to the matter in
subsection (9). See subsection 13.3(3) of the Criminal Code.
Whether a company is related to another company
(10) For the purposes of this section, the question of whether a company
is related to another company is to be determined in the same
manner as that question is determined under the Corporations Act
2001.
201A When a person carries on business, practises or acts as a
patent attorney
(1) For the purposes of section 201, a person is taken to carry on
business, practise or act as a patent attorney if, and only if, the
person does, or undertakes to do, patents work in Australia.
(2) Patents work means one or more of the following done, on behalf
of someone else, for gain:
(a) applying for or obtaining patents in Australia or anywhere
else;
(b) preparing specifications or other documents for the purposes
of this Act or the patent law of another country;
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Section 201B
(c) giving advice (other than advice of a scientific or technical
nature) about the validity, or infringement, of patents.
201B Incorporated patent attorney must have a patent attorney
director
Offence—failing to notify lack of patent attorney director
(1) An incorporated patent attorney commits an offence if the
incorporated patent attorney:
(a) does not have a patent attorney director; and
(b) does not notify the Designated Manager of that within 7
days.
Penalty: 150 penalty units.
Offence—acting after 7 days without patent attorney director
(2) An incorporated patent attorney commits an offence if the
incorporated patent attorney:
(a) does not have a patent attorney director; and
(b) has not had a patent attorney director during the previous 7
days; and
(c) carries on business, practises or acts as a patent attorney.
Penalty: 150 penalty units.
Designated Manager may appoint a registered patent attorney
(3) If an incorporated patent attorney does not have a patent attorney
director, the Designated Manager may, by writing, appoint another
registered patent attorney to take charge of the patents work of the
incorporated patent attorney.
(4) The appointment may be made only with the consent of the other
registered patent attorney.
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Section 202
Effect of appointment
(5) A registered patent attorney holding an appointment under
subsection (3) (the appointed attorney) is taken, for the purposes
of this Act, to be a patent attorney director of the incorporated
patent attorney.
(6) However, for the purposes of the Corporations Act 2001:
(a) the appointed attorney is not a director of the incorporated
patent attorney only because:
(i) the appointed attorney takes charge of the patents work
of the incorporated patent attorney; and
(ii) the appointed attorney is taken, for the purposes of this
Act, to be a patent attorney director of the incorporated
patent attorney; and
(b) the Designated Manager is not a director of the incorporated
patent attorney only because the Designated Manager
appointed the appointed attorney.
Designated Manager may remove incorporated patent attorney
from Register
(7) If an incorporated patent attorney does not have a patent attorney
director, the Designated Manager may remove the incorporated
patent attorney from the Register.
202 Documents prepared by legal practitioners
A legal practitioner must not prepare a specification, or a document
relating to an amendment of a specification, unless:
(a) the practitioner is acting under the instructions of a registered
patent attorney; or
(b) the amendment has been directed by an order under
section 105.
Penalty: 30 penalty units.
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202A Documents prepared by a member of a partnership
A person who is:
(a) a member of a partnership; and
(b) not a registered patent attorney;
must not prepare a specification, or a document relating to an
amendment of a specification, unless:
(c) the person is acting under the instructions or supervision of a
registered patent attorney; or
(d) the amendment has been directed by an order under
section 105.
Penalty: 30 penalty units.
202B Documents prepared by incorporated patent attorneys and
incorporated legal practices
An incorporated patent attorney or an incorporated legal practice
commits an offence if:
(a) an employee or member of the incorporated patent attorney
or incorporated legal practice prepares a specification, or a
document relating to an amendment of a specification; and
(b) the employee or member is not a registered patent attorney;
and
(c) the specification or document is not prepared:
(i) under the instructions or supervision of an individual
who is a registered patent attorney; or
(ii) as directed by an order under section 105.
Penalty: 150 penalty units.
203 Attendance at patent attorney’s office
A registered patent attorney commits an offence if:
(a) the registered patent attorney practises, acts, or holds himself,
herself or itself out as practising or acting, as a patent
attorney, at an office or place of business where
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Section 204
specifications or other documents are prepared for the
purposes of this Act; and
(b) there is not an individual who is a registered patent attorney:
(i) in regular attendance at that office or place; and
(ii) in continuous charge of the patents work done at that
office or place.
Penalty: 30 penalty units.
204 Time for starting prosecutions
Despite section 15B of the Crimes Act 1914, a prosecution for an
offence against subsection 201(1), (2), (3), (4), (5) or (6) or
201B(1) or (2), or section 202, 202A, 202B or 203, may be started
at any time within 5 years after the offence was committed.
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Section 205
Chapter 21—Administration
205 Patent Office and sub-offices
(1) For the purposes of this Act, there is to be an office called the
Patent Office.
(2) The Commissioner may establish one or more sub-offices of the
Patent Office as the Commissioner considers appropriate.
(3) The Commissioner may abolish any such sub-offices.
206 Patent Office seal
There is to be a seal of the Patent Office and impressions of the
seal must be judicially noticed.
207 Commissioner of Patents
(1) There is to be a Commissioner of Patents.
(2) The Commissioner has such powers and functions as are conferred
on him or her under this Act or any other Act.
208 Deputy Commissioner of Patents
(1) There is to be at least one Deputy Commissioner of Patents.
(2) Subject to any direction by the Commissioner, a Deputy
Commissioner has all the powers and functions of the
Commissioner under this Act or any other Act, except the
Commissioner’s powers of delegation under section 209.
(3) A power or function of the Commissioner under this Act or any
other Act, when exercised by a Deputy Commissioner, is to be
taken, for the purposes of this Act or any other Act, to have been
exercised by the Commissioner.
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Section 209
(4) The exercise of a power or function of the Commissioner under
this Act or any other Act by a Deputy Commissioner does not
prevent the exercise of the power or function by the Commissioner.
(5) Where, under this Act or any other Act, the exercise of a power or
function by the Commissioner, or the operation of a provision of
this Act or any other Act, is dependent on the opinion, belief or
state of mind of the Commissioner in relation to a matter, that
power or function may be exercised by a Deputy Commissioner,
and that provision may operate, as the case may be, on the opinion,
belief or state of mind of the Deputy Commissioner in relation to
that matter.
209 Delegation of Commissioner’s powers and functions
Delegation to employees
(1) The Commissioner may, by instrument, signed by him or her,
delegate all or any of the Commissioner’s powers or functions
under this Act or any other Act to a prescribed employee, or a
prescribed class of employees.
Direction or supervision
(2) A delegate must, if so required by the instrument of delegation,
exercise or perform a delegated power or function under the
direction or supervision of the Commissioner or an employee
specified in the instrument.
210 Commissioner’s powers
Commissioner’s powers
(1) The Commissioner may, for the purposes of this Act:
(a) summon witnesses; and
(b) receive written or oral evidence on oath or affirmation; and
(c) require the production of documents or articles; and
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(d) award costs against a party to proceedings before the
Commissioner.
Exercise of power to summon witnesses
(2) The Commissioner must not summon a witness under
paragraph (1)(a) unless:
(a) the Commissioner is satisfied, on the balance of probabilities,
of the following matters:
(i) the witness has a substantial interest in the proceedings
before the Commissioner;
(ii) the witness is likely to provide oral evidence of
substantial relevance to a matter before the
Commissioner;
(iii) receiving oral evidence from the witness is necessary or
desirable in all the circumstances; and
(b) the Commissioner notifies the witness of the actions the
Commissioner may take under section 210A if the witness
fails or refuses to comply with the summons.
(3) The Commissioner may summon a witness under paragraph (1)(a)
whether the witness is in or out of the patent area.
Exercise of power to require production of document or article
(4) The Commissioner must not require a person to produce a
document or article under paragraph (1)(c) unless:
(a) the Commissioner is satisfied, on the balance of probabilities,
of the following matters:
(i) the person has a substantial interest in the proceedings
before the Commissioner;
(ii) the document or article is likely to be of substantial
relevance to a matter before the Commissioner; and
(b) the Commissioner notifies the person of the actions the
Commissioner may take under section 210A if the person
fails or refuses to comply with the requirement.
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(5) The Commissioner may require a person to produce a document or
article under paragraph (1)(c) whether the person is in or out of the
patent area.
Exercise of powers in relation to bodies corporate
(6) The Commissioner’s powers in subsection (1) to make a
requirement of a person extend, if the person is a body corporate,
to making that requirement of any person who is an officer, agent
or employee of the body corporate.
210A Sanctions for non-compliance with Commissioner’s
requirements
(1) The Commissioner may take one or more of the actions listed in
subsection (2) in relation to a person if:
(a) the Commissioner summons the person to appear as a
witness under paragraph 210(1)(a) or requires the person to
produce a document or article under paragraph 210(1)(c); and
(b) the person refuses or fails to comply with the summons or
requirement; and
(c) the Commissioner is satisfied, on the balance of probabilities,
that it is appropriate in the circumstances to take the action.
(2) The actions the Commissioner may take are:
(a) if the person is an applicant for a patent—a refusal to grant
the patent (see subsection 61(1); and
(b) the drawing of an inference unfavourable to the person’s
interest in proceedings before the Commissioner; and
(c) actions of a kind that are prescribed by the regulations.
(3) In deciding whether it is appropriate to take the action, the
Commissioner must consider the following:
(a) whether the person has a reasonable excuse for refusing or
failing to comply with the summons or requirement;
(b) whether the person has been offered payment of reasonable
expenses associated with complying with the summons or
requirement;
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(c) any other matter the Commissioner considers to be relevant.
211 Recovery of costs awarded by Commissioner
Costs awarded by the Commissioner against a party are
recoverable as a debt.
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212 Copies of examination reports to be communicated
A copy of each report relating to an examination or a re-examination
under this Act must, subject to Chapters 15 and 17, be given to the
applicant or patentee, as the case requires.
213 Making and signing applications etc.
An application, notice or request required or permitted under this
Act to be made or signed by a person may be made or signed, on
behalf of that person, by a registered patent attorney.
214 Filing of documents
A document may be filed with the Patent Office by:
(a) delivering the document to the Patent Office or a sub-office
of the Patent Office (if any) either personally or by post; or
(b) any other prescribed means.
215 Death of applicant or nominated person
(1) If an applicant dies before a patent is granted on the application,
his or her legal representative may proceed with the application.
(2) If a nominated person dies before a patent is granted on the
application, the patent may be granted to his or her legal
representative.
(3) Where, at any time after a patent is granted, the Commissioner is
satisfied, on the balance of probabilities, that the patentee had died
(or, in the case of a body corporate, had ceased to exist) before the
patent was granted, the Commissioner may amend the Register by
substituting for the name of the patentee the name of the person to
whom the patent should have been granted.
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(4) An amendment by the Commissioner has effect, and is to be taken
always to have had effect, accordingly.
216 Exercise of discretionary power by Commissioner
(1) The Commissioner must not exercise a discretionary power under
this Act adversely to any person applying for the exercise of that
power without first giving that person a reasonable opportunity to
be heard.
(2) Subsection (1) does not apply in relation to the Commissioner’s
power to direct an applicant to request an examination.
217 Assessors
A prescribed court may, if it thinks fit, call in the aid of an assessor
to assist it in the hearing and trial or determination of any
proceedings under this Act.
218 Costs where patent invalid in part
In any proceedings in which the validity of a patent is disputed, the
court may, if it is satisfied that some of the claims in the complete
specification which are alleged to be invalid are not invalid but that
other claims are invalid, apportion the costs between the parties to
the proceedings as it thinks just.
219 Security for costs
If a person who neither resides nor carries on business in Australia:
(a) gives notice of opposition under this Act; or
(b) appeals to the Federal Court;
the Commissioner or the Federal Court, as the case may be, may
require the person to give security for the costs of the proceeding
or appeal and, where such security is not given to the satisfaction
of the Commissioner or the Federal Court, as the case may be, may
dismiss the proceeding or appeal.
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220 Costs of attendance of patent attorney
Where, at the hearing of proceedings under this Act, a registered
patent attorney attends in court for the purpose of assisting a party
in the conduct of the hearing and an order is made for payment of
the costs of that party, those costs may include an allowance for
that attendance.
221 Service of documents
(1) Where this Act provides for a document to be served on, or given
or sent to, a person and the person has given the Commissioner an
address in Australia or New Zealand for service of documents, the
document may be served on, or given or sent to, the person by a
prescribed means to that address.
(2) After the time specified in the regulations, a reference in this
section to an address includes a reference to an electronic address.
(3) The time specified under subsection (2) must be later than the day
on which the regulations are registered under the Legislation Act
2003.
(4) For the purposes of this section, the question of whether an
electronic address is in Australia is to be determined in accordance
with the regulations.
(5) For the purposes of this section, the question of whether an
electronic address is in New Zealand is to be determined in
accordance with the regulations.
222 Publication of Official Journal etc.
(1) The Commissioner shall issue periodically an official journal
containing such matters as are prescribed and such other matters (if
any) as the Commissioner thinks fit.
(2) The Commissioner must make arrangements for selling copies of
the Official Journal.
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(3) The Commissioner may prepare, publish and sell such documents
relating to inventions and patents as the Commissioner thinks fit.
222A Doing act when Patent Office reopens after end of period
otherwise provided for doing act
(1) If the last day of a period provided by this Act (except this section)
for doing an act is a day when the Patent Office, or a sub-office of
the Patent Office (if any), is not open for business, the act may be
done in prescribed circumstances on the next day when the office
or sub-office is open for business.
(2) For the purposes of this section, the Patent Office, or a sub-office
of the Patent Office, is taken not to be open for business on a day:
(a) declared by regulations to be a day on which the office or
sub-office is not open for business; or
(b) declared, by a prescribed person in writing published in the
prescribed way, to be a day on which the office or sub-office
is not open for business.
Declarations
(3) A declaration mentioned in paragraph (2)(a) or (b) may identify the
day by reference to its being declared a public holiday by or under
a law of a State or Territory. This does not limit the way the
declaration may identify the day.
(4) A declaration mentioned in paragraph (2)(b):
(a) may be made before, on or after the day; and
(b) is not a legislative instrument.
Relationship with other law
(5) This section has effect despite the rest of this Act.
(6) Subsection 36(2) of the Acts Interpretation Act 1901 does not
apply in relation to the act mentioned in subsection (1) of this
section.
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Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a
prescribed act.
223 Extensions of time
(1) The Commissioner must extend the time for doing a relevant act
that is required to be done within a certain time if the act is not, or
cannot be, done within that time because of an error or omission
by:
(a) the Commissioner or a Deputy Commissioner; or
(b) an employee; or
(c) a person providing, or proposing to provide, services for the
benefit of the Patent Office; or
(d) the receiving Office; or
(e) the International Bureau of the World Intellectual Property
Organization.
(2) Where, because of:
(a) an error or omission by the person concerned or by his or her
agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is
not, or cannot be, done within that time, the Commissioner may, on
application made by the person concerned in accordance with the
regulations, extend the time for doing the act.
(2A) If:
(a) a relevant act that is required to be done within a certain time
is not done within that time; and
(b) the Commissioner is satisfied, on the balance of probabilities,
that the person concerned took due care, as required in the
circumstances, to ensure the doing of the act within that time;
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the Commissioner must, on application made by the person
concerned in accordance with the regulations and within the
prescribed period, extend the time for doing the act.
(2B) An extension of time under subsection (2A) cannot exceed the
period prescribed for the purposes of this subsection.
(3) The time allowed for doing a relevant act may be extended,
whether before or after that time has expired.
(3A) Despite subsection (3), the time allowed for doing a relevant act
may be extended under subsection (2A) only after that time has
expired.
(4) The Commissioner must advertise in the Official Journal:
(a) an application made for an extension of time for more than 3
months; or
(b) an application made for an extension of time for doing a
prescribed relevant act in prescribed circumstances.
(6) Subject to subsection (6A), a person may, as prescribed, oppose the
granting under subsection (2) or (2A) of the application.
(6A) If the Commissioner is satisfied, on the balance of probabilities,
that an application under subsection (2) or (2A) would not be
granted even in the absence of opposition under subsection (6):
(a) the Commissioner need not advertise the application in
accordance with subsection (4); and
(b) the application cannot be opposed, despite subsection (6);
and
(c) the Commissioner must refuse to grant the application.
(7) Where:
(a) a patent application lapses, or a patent ceases, because of a
failure to do one or more relevant acts within the time
allowed; and
(b) the time for doing that act or those acts is extended;
the application or patent must be treated as having been restored.
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(8) Where:
(a) a provisional patent application lapses under subsection 142(1)
at the end of the period prescribed for the purposes of
section 38; and
(b) that period is extended;
the application must be treated as if it had not lapsed.
(9) Where the Commissioner grants:
(a) an extension of more than 3 months for doing a relevant act;
or
(b) an extension of time for doing a prescribed relevant act in
prescribed circumstances;
the prescribed provisions have effect for the protection or
compensation of persons who, before the day on which the
application for extension of time is advertised under subsection (4),
exploited (or took definite steps by way of contract or otherwise to
exploit) the invention concerned because of the failure to do the
relevant act within the time allowed, the lapsing of the patent
application or the ceasing of the patent, as the case may be.
(10) Infringement proceedings cannot be brought in respect of an
infringement committed:
(a) between the day on which the patent application lapses and
the day on which it is restored; or
(b) between the day on which the patent ceases and the day on
which it is restored.
(11) In this section:
relevant act means an action (other than a prescribed action) in
relation to a patent, a patent application, or any proceedings under
this Act (other than court proceedings), and includes the making of
a Convention application within the time allowed for making such
applications.
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223A Computerised decision-making
(1) The Commissioner may arrange for the use, under the
Commissioner’s control, of computer programs for any purposes
for which the Commissioner may, or must, under this Act:
(a) make a decision; or
(b) exercise any power or comply with any obligation; or
(c) do anything else related to making a decision to which
paragraph (a) applies or related to exercising a power, or
complying with an obligation, to which paragraph (b)
applies.
Note: A reference to this Act includes the regulations (see Schedule 1).
(2) For the purposes of this Act, the Commissioner is taken to have:
(a) made a decision; or
(b) exercised a power or complied with an obligation; or
(c) done something else related to the making of a decision or
the exercise of a power or the compliance with an obligation;
that was made, exercised, complied with or done by the operation
of a computer program under an arrangement made under
subsection (1).
Substituted decisions
(3) The Commissioner may substitute a decision for a decision the
Commissioner is taken to have made under paragraph (2)(a) if the
Commissioner is satisfied that the decision made by the operation
of the computer program is incorrect.
224 Review of decisions
(1) Application may be made to the Administrative Appeals Tribunal
for review of:
(a) a decision of the Commissioner under section 10, 17, 32, 33
or 52, subsection 56(1)(b), 74(3) or 103(2), section 113,
subsection 137(3), paragraph 141(1)(b), subsection 150(2),
151(2), 152(2) or 152(3), or section 173, 215 or 223; or
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(b) a decision of the Designated Manager under section 198 not
to register a person as a patent attorney; or
(c) a decision of the Director under subsection 147(2) or (3),
section 149 or subsection 152(1).
(1A) If:
(a) the Commissioner is taken to have made a decision (the
initial decision) under paragraph 223A(2)(a); and
(b) under subsection (1) of this section, application may be made
to the Administrative Appeals Tribunal for review of the
initial decision; and
(c) the Commissioner, under subsection 223A(3), substitutes a
decision for the initial decision;
application may be made to the Administrative Appeals Tribunal
for review of the substituted decision.
(2) If, under subsection (1) or (1A), application may be made to the
Administrative Appeals Tribunal for review of a decision and a
written notice of the decision is given to a person whose interests
are affected by the decision, the notice must include a statement to
the effect that, subject to the Administrative Appeals Tribunal Act
1975, application may be made to the Administrative Appeals
Tribunal for review of the decision to which the notice relates by or
on behalf of the person or persons whose interests are affected by
the decision.
(3) Failure to comply with subsection (2) in relation to a decision does
not affect the validity of the decision.
(4) In this section:
decision has the same meaning as in the Administrative Appeals
Tribunal Act 1975.
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225 Conduct of employees and agents of natural persons
(3) Where it is necessary to establish, for the purposes of a prosecution
for an offence under this Act, the state of mind of a person other
than a company in relation to particular conduct, it is sufficient to
show:
(a) that the conduct was engaged in by a servant or agent of the
person within the scope of his or her actual or apparent
authority; and
(b) that the servant or agent had the state of mind.
(4) Any conduct engaged in on behalf of a person other than a
company by the person’s servant or agent within the scope of his or
her actual or apparent authority is to be taken, for the purposes of a
prosecution for an offence under this Act, to have been engaged in
also by the person, unless the person establishes that he or she took
reasonable precautions and exercised due diligence to avoid the
conduct.
(5) A reference in this section to an offence under this Act includes a
reference to an offence created by:
(a) section 6 of the Crimes Act 1914 that relates to this Act or the
regulations; or
(b) section 11.1, 11.2, 11.2A, 11.4 or 11.5 of the Criminal Code
that relates to this Act or the regulations.
(6) Where:
(a) a person other than a company is convicted of an offence
under this Act; and
(b) the person would not have been convicted of the offence but
for subsections (3) and (4);
the person is not liable to be punished by imprisonment for that
offence.
(7) A reference in subsection (3) to the state of mind of a person
includes a reference to:
(a) the knowledge, intention, opinion, belief or purpose of the
person; and
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(b) the person’s reasons for the intention, opinion, belief or
purpose.
(9) A reference in this section to engaging in conduct includes a
reference to failing or refusing to engage in conduct.
Note: For provisions relating to proof of offences by bodies corporate, see
Part 2.5 of the Criminal Code.
226 Documents open to public inspection do not infringe copyright
(1) If a document mentioned in subsection (2) is open to public
inspection, doing any of the following in relation to the whole or
part of the document does not constitute an infringement of any
copyright subsisting under the Copyright Act 1968 in any literary
or artistic work:
(a) reproducing the document in two-dimensional form;
(b) communicating (within the meaning of that Act) the
document to the public;
(c) translating (within the meaning of that Act) the document.
(2) The documents are:
(a) a provisional specification; and
(b) a complete specification; and
(c) a prescribed document.
(3) If a reproduction of an unpublished work is made as a result of a
document being open to public inspection, the supply or
communication of the reproduction does not constitute the
publication of the work for the purposes of the Copyright Act 1968.
227 Fees payable under this Act
(1) The prescribed fees are payable in accordance with the regulations.
(2) Without limiting subsection (1), different fees may be prescribed in
respect of the doing of an act according to the time when the act is
done.
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(3) The regulations may provide for the consequences (for the
purposes of this Act) of failing to pay a fee in accordance with the
regulations.
Note: Some provisions of this Act provide expressly or implicitly for the
consequences of failing to pay a fee (for example, see
subsections 29A(5) and 142(2), section 143, subsection 151(4) and
section 176). Regulations cannot provide for consequences
inconsistent with those provisions.
(4) In particular, the regulations may provide that, for the purposes of
this Act:
(a) an act is not to be done, or is taken not to have been done, if
the fee for doing the act is not paid in accordance with the
regulations; or
(b) a document is not filed, or is taken not to have been filed, if
the fee for filing the document is not paid in accordance with
the regulations; or
(c) a patent application lapses, or is taken to have lapsed, if the
fee for filing the request and accompanying specification is
not paid in accordance with the regulations.
(5) Subsection (4) does not limit subsection (3).
227AB Application of administrative law regime to decisions made
in New Zealand
Judicial review
(1) For the purposes of the application of the Administrative Decisions
(Judicial Review) Act 1977 to a decision under this Act, it is
immaterial whether the decision was made in New Zealand.
Note: See also the Trans-Tasman Proceedings Act 2010.
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(2) For the purposes of subsection (1), decision has the same meaning
as in the Administrative Decisions (Judicial Review) Act 1977.
Merits review
(3) For the purposes of the application of the Administrative Appeals
Tribunal Act 1975 to a decision under this Act, it is immaterial
whether the decision was made in New Zealand.
Note: See also the Trans-Tasman Proceedings Act 2010.
(4) For the purposes of subsection (3), decision has the same meaning
as in the Administrative Appeals Tribunal Act 1975.
227A Trans-Tasman IP Attorneys Board
(1) The body known immediately before the commencement of this
subsection as the Professional Standards Board for Patent and
Trade Marks Attorneys is continued in existence as the
Trans-Tasman IP Attorneys Board.
Note 1: In this Act, Board means the Trans-Tasman IP Attorneys Board—see
Schedule 1.
Note 2: See also section 25B of the Acts Interpretation Act 1901.
(2) The Board has the following functions:
(a) such functions as are conferred on the Board by this Act or
the Trade Marks Act 1995;
(b) such functions as are conferred on the Board by regulations
made for the purposes of any of the following provisions:
(i) paragraph 198(4)(b) of this Act (which deals with the
qualifications of patent attorneys);
(ii) section 199 of this Act (which deals with the
deregistration of patent attorneys);
(iii) paragraph 228(2)(r) of this Act (which deals with the
professional conduct of patent attorneys);
(iv) paragraph 228A(4)(a) of the Trade Marks Act 1995
(which deals with the qualifications of trade marks
attorneys);
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(v) section 228B of the Trade Marks Act 1995 (which deals
with the deregistration of trade marks attorneys);
(vi) paragraph 231(2)(ha) of the Trade Marks Act 1995
(which deals with the professional conduct of trade
marks attorneys);
(c) to do anything incidental to or conducive to the performance
of any of the above functions.
Membership of the Board
(2A) The Board consists of the following members:
(a) a Chair;
(b) the Director-General of IP Australia;
(c) the New Zealand Commissioner of Patents;
(d) at least 2 members nominated by the New Zealand Patents
Minister to represent the New Zealand patent attorney
profession;
(e) at least 2 other members.
(2B) The total number of members of the Board must not exceed 10.
Appointment of members of the Board
(2C) Each member of the Board mentioned in paragraph (2A)(a), (d) or
(e) is to be appointed by the Minister by written instrument.
Note: For reappointment, see the Acts Interpretation Act 1901.
(2D) A person is not eligible for appointment as a member of the Board
mentioned in paragraph (2A)(a), (d) or (e) unless the Minister is
satisfied that the person has:
(a) substantial experience or knowledge; and
(b) significant standing;
in at least one of the following fields:
(c) Australian patent attorney practice;
(d) New Zealand patent attorney practice;
(e) Australian trade mark attorney practice;
(f) the regulation of persons engaged in a prescribed occupation;
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(g) public administration;
(h) academia.
(2E) A member of the Board holds office on a part-time basis.
Period of appointment for members of the Board
(2F) A member of the Board mentioned in paragraph (2A)(a), (d) or (e)
holds office for the period specified in the instrument of
appointment. The period must not exceed:
(a) in the case of the member mentioned in paragraph (2A)(a)—
3 years; or
(b) otherwise—5 years.
Note: For reappointment, see the Acts Interpretation Act 1901.
Appointment of deputy of Director-General of IP Australia
(2G) The Director-General of IP Australia may appoint an APS
employee to be his or her deputy for the purpose of attendance at
one or more specified meetings of the Board.
(2H) If:
(a) a person is the deputy of the Director-General of IP Australia
for the purpose of attendance at a particular meeting of the
Board; and
(b) the Director-General of IP Australia is absent from the
meeting;
the person is entitled to attend the meeting and, when so attending,
is taken to be a member of the Board.
(2J) A deputy of the Director-General of IP Australia is not entitled to
any remuneration or allowances for attending a meeting of the
Board (other than remuneration or allowances payable to the
deputy in his or her capacity as an APS employee).
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Appointment of deputy of New Zealand Commissioner of Patents
(2K) The New Zealand Commissioner of Patents may appoint a New
Zealand patents official to be his or her deputy for the purpose of
attendance at one or more specified meetings of the Board.
(2L) If:
(a) a person is the deputy of the New Zealand Commissioner of
Patents for the purpose of attendance at a particular meeting
of the Board; and
(b) the New Zealand Commissioner of Patents is absent from the
meeting;
the person is entitled to attend the meeting and, when so attending,
is taken to be a member of the Board.
(2M) A deputy of the New Zealand Commissioner of Patents is not
entitled to any remuneration or allowances for attending a meeting
of the Board (other than remuneration or allowances payable to the
deputy in his or her capacity as a New Zealand patents official).
(3) The regulations may make provision for and in relation to:
(a) the terms and conditions on which members of the Board
mentioned in paragraph (2A)(a), (d) or (e) hold office; and
(aa) the manner in which members of the Board mentioned in
paragraph (2A)(a), (d) or (e) may resign their appointments;
and
(ab) the termination of the appointment of members of the Board
mentioned in paragraph (2A)(a), (d) or (e); and
(b) the manner in which the Board is to perform its functions;
and
(c) the procedure to be followed at or in relation to meetings of
the Board, including (but not limited to) matters with respect
to:
(i) the convening of meetings of the Board; and
(ii) the number of members of the Board who are to
constitute a quorum; and
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(iii) the selection of a member of the Board to preside at a
meeting of the Board; and
(iv) the manner in which questions arising at a meeting of
the Board are to be decided.
(4) A member of the Board is to be paid such remuneration as is
determined by the Remuneration Tribunal. If no determination of
that remuneration by the Tribunal is in operation, the member is to
be paid such remuneration as is prescribed.
(5) A member of the Board is to be paid such allowances as are
prescribed.
(6) Subsections (4) and (5) have effect subject to the Remuneration
Tribunal Act 1973.
(7) The Board may perform its functions in Australia or New Zealand.
227B Publishing personal information of registered patent attorneys
(1) The Board may publish on its website any or all of the following
personal information (within the meaning of the Privacy Act 1988)
that is about a registered patent attorney:
(a) the name of the attorney;
(b) the country in which the attorney’s work address is located;
(c) if the attorney’s work address is located in Australia—the
State or Territory in which the attorney’s work address is
located;
(d) if the attorney’s work address is located in a foreign
country—the state, territory, province, region or other
political subdivision (however described) of that country in
which the attorney’s work address is located;
(e) the attorney’s work email address.
(2) Subsection (1) does not prevent the Board from publishing on its
website other personal information (within the meaning of the
Privacy Act 1988) that is about a registered patent attorney with the
attorney’s written consent.
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228 Regulations
(1) The Governor-General may make regulations, not inconsistent with
this Act:
(a) prescribing matters required or permitted by this Act to be
prescribed; and
(b) prescribing matters necessary or convenient to be prescribed
for carrying out or giving effect to this Act; and
(c) prescribing matters necessary or convenient to be prescribed
for the conduct of any business relating to the Patent Office;
and
(d) for the purpose of carrying out or giving effect to the
Budapest Treaty; and
(e) for the purpose of carrying out or giving effect to the PCT,
whether in relation to PCT applications or otherwise; and
(f) for the purpose of carrying out or giving effect to the TRIPS
Agreement.
(2) Without limiting subsection (1), that subsection includes the power
to make regulations:
(aa) making provision for and in relation to:
(i) the procedures for conducting a preliminary search and
opinion in relation to a patent request and complete
specification; and
(ii) the reports to be made in relation to the preliminary
search and opinion; and
(a) making provision for and in relation to the procedures for the
examination of a patent request and complete specification
and the re-examination of a complete specification; and
(b) making provision for and in relation to the reports to be made
in relation to an examination and a re-examination; and
(c) making provision for and in relation to the amendment of
patent requests, provisional and complete specifications, and
other filed documents:
(i) to correct a clerical error or obvious mistake; or
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(ii) to remove a lawful ground of objection, whether the
objection is raised in the course of examination or
re-examination or otherwise; or
(iii) for any other purpose; and
(e) making provision for and in relation to the amendment of an
entry in the Register to correct a clerical error or an obvious
mistake, or for any other purpose; and
(g) making provision for and in relation to the preparation, filing
and publication of abstracts of complete specifications; and
(h) making provision for and in relation to opposition
proceedings; and
(ha) setting out the formalities checking process for innovation
patents including, in particular, the following matters:
(i) specifying the formalities requirements (including
compliance with the requirements of subsections 18(2)
and (3)) that must be met in respect of an application for
an innovation patent; and
(ii) empowering the Commissioner to direct an applicant for
an innovation patent to do such things as are necessary
to ensure that the application is in accordance with the
requirements of the regulations relating to the
preparation of documents for filing; and
(iii) providing for the lapsing of the application if such a
direction is not complied with within a time specified in
the regulations; and
(iv) providing for the restoration of an application that has
so lapsed; and
(i) setting out the checking process for PCT applications
including, in particular, the following matters:
(i) specifying the requirements that must be met in respect
of a PCT application, once the requirements of
subsection 29A(5) have been met;
(ii) empowering the Commissioner to direct an applicant to
do such things as are necessary to ensure that the PCT
application is in accordance with those requirements;
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(iii) providing for the lapsing of the PCT application if such
a direction is not complied with within a time specified
in the regulations;
(j) empowering the Commissioner to direct an applicant for a
standard patent to do such things as are necessary to ensure
that the complete specification is in accordance with the
requirements of the regulations relating to the preparation of
documents for filing and:
(i) providing for the lapsing of the application if such a
direction is not complied with within a time specified in
the regulations; and
(ii) providing for the restoration of an application that has
so lapsed; and
(k) empowering the Commissioner to hear and determine the
question whether a person is an interested person for the
purpose of doing any act permitted to be done under this Act
by an interested person; and
(m) providing for appeals against decisions of the Commissioner
made under the regulations; and
(n) making provision for and in relation to the practice and
procedure of prescribed courts in proceedings under this Act,
including provision prescribing the time within which any
proceeding may be started or anything else may be done, and
providing for the extension of any such time; and
(p) requiring persons to make statutory declarations in relation to
patent applications or patents or in proceedings under this
Act (not being court proceedings); and
(q) making provision for and in relation to the making of a
declaration, or the doing of an act, under this Act on behalf of
a person who, because of infancy or physical or mental
disability, is unable to make the declaration or do the act; and
(r) for the control of the professional conduct of registered
patent attorneys and the practice of the profession and, for
that purpose, making provision for and in relation to all or
any of the following:
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(i) making complaints, and hearing charges, against
registered patent attorneys about their professional
conduct;
(ia) assessing the professional conduct of registered patent
attorneys by reference to standards of practice
established by the Board from time to time;
(ii) imposing penalties on registered patent attorneys,
including issuing a reprimand and suspending or
cancelling registration;
(iii) summoning witnesses;
(iv) requiring persons to give evidence on oath (whether
orally or otherwise);
(v) administering oaths to persons giving evidence (whether
orally or otherwise);
(vi) requiring persons to produce documents or articles; and
(s) making provision for and in relation to:
(i) the deposit for the purposes of this Act, the Budapest
Treaty, or both, of micro-organisms with prescribed
depositary institutions and the storage and testing of,
and furnishing of samples of, micro-organisms by those
institutions; and
(ii) the charging of fees by prescribed depositary
institutions situated in Australia in relation to the
matters described in subparagraph (i); and
(iii) the making of reports by prescribed depositary
institutions situated in Australia in relation to those
matters; and
(iv) the powers and functions of the Commissioner in
relation to prescribed depositary institutions with
respect to those matters; and
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(t) modifying the operation of this Act in relation to PCT
applications that are treated as patent applications under this
Act by excluding, varying, or substituting different
provisions for, specified provisions of this Act; and
(w) making provision for and in relation to the refund, in
specified circumstances, of the whole or part of a fee paid in
respect of the filing of a document; and
(y) making provision for and in relation to the remission of, or
the exemption of specified classes of persons from the
payment of, the whole or part of a fee; and
(z) prescribing penalties for offences against the regulations not
exceeding a fine of 10 penalty units; and
(za) making such transitional and savings provisions as are
necessary or convenient as a result of the repeal of the 1952
Act and the enactment of this Act.
(3) The regulations may make provision for matters referred to in
paragraph (2)(s) by empowering the Commissioner, on behalf of
the Commonwealth, to enter into agreements with prescribed
depositary institutions with respect to those matters.
(4) Regulations made under paragraph (2)(s) and subsection (3) may
make different provision with respect to different matters dealt
with by or under those regulations, but this subsection shall not be
taken to limit a power to make regulations conferred by any other
provision of this Act.
(4A) If the regulations confer a function on a person or body, the
regulations may provide that the function may be performed in
Australia or New Zealand.
(4B) If the regulations confer a power on a person or body, the
regulations may provide that the power may be exercised in
Australia or New Zealand.
(4C) If the regulations provide that application may be made to the
Administrative Appeals Tribunal for review of a decision, the
regulations may provide that it is immaterial whether the decision
was made in New Zealand.
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(4D) The regulations may provide that it is immaterial whether an act or
omission mentioned in the regulations took place in New Zealand.
(4E) The regulations may provide that it is immaterial whether a matter
mentioned in the regulations concerns something that took place in
New Zealand.
(5) Despite subsection 14(2) of the Legislation Act 2003, regulations
made for the purposes of the definition of eligible importing
country in Schedule 1 may make provision in relation to a matter
by applying, adopting or incorporating, with or without
modification, any matter contained in any other instrument or other
writing as in force or existing from time to time.
(7) Despite the repeal of the 1952 Act by this Act, regulations made
under paragraph (2)(za) may provide for the continued operation of
specified provisions of the 1952 Act in relation to prescribed
persons or matters, or in prescribed circumstances.
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Section 231
Chapter 23—Transitional and savings
provisions
231 Application of Part III of 1989 Amending Act
Nothing in this Act affects the continued operation of Part III of the
1989 Amending Act.
233 Patents granted under 1952 Act
(1) Subject to this Chapter and the regulations, this Act applies in
relation to a standard patent or a petty patent granted under the
1952 Act as if the patent had been granted under this Act.
(2) A patent mentioned in subsection (1) does not have effect in any
place in which it did not have effect immediately before the
commencing day.
(3) Chapter 9 of this Act does not apply in relation to a patent
mentioned in subsection (1).
(4) Objection cannot be taken to a patent mentioned in subsection (1),
and such a patent is not invalid, so far as the invention is claimed
in any claim, on any ground that would not have been available
against the patent under the 1952 Act.
234 Applications under 1952 Act
(1) Where, before the commencing day:
(a) a patent application and provisional specification had been
lodged under the 1952 Act; and
(b) a complete specification had not been lodged under that Act
in respect of the application; and
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(c) the application had not been withdrawn;
then, subject to this Chapter and the regulations, this Act applies in
relation to the application on and after that day as if it were a
provisional application under this Act.
(2) Where, before the commencing day:
(a) a patent application had been lodged under the 1952 Act; and
(b) a complete specification, or a petty patent specification, had
been lodged under that Act in respect of the application; and
(c) the application had not been withdrawn or finally dealt with;
then, subject to this Chapter and the regulations, this Act applies on
and after that day:
(d) in relation to the application as if it were a complete
application made under this Act; and
(e) in relation to the petty patent specification as if it were a
complete specification filed under this Act in respect of the
application.
(3) Chapter 5 of this Act does not apply in relation to an application
mentioned in subsection (2), but Part V of the 1952 Act, as in force
immediately before the commencing day, continues to apply in
relation to such an application.
(4) Chapter 9 of this Act does not apply in relation to:
(a) an application mentioned in subsection (2); or
(b) a patent granted on such an application.
(5) Objection cannot be taken to:
(a) an application mentioned in subsection (2); or
(b) a patent granted on such an application;
and such a patent is not invalid, so far as the invention is claimed
in any claim, on any ground that would not have been available
against the application or patent, as the case may be, under the
1952 Act.
(6) A petty patent specification to which subsection (2) applies cannot
be amended under this Act so as to include more than one claim.
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235 Other applications and proceedings under 1952 Act
(1) Subject to this Chapter and the regulations, this Act applies, on and
after the commencing day, to any application, request, action or
proceeding made or started under the 1952 Act and not finally
dealt with or determined under that Act before that day as if the
application, request, action or proceeding had been made or started
under a corresponding provision of this Act.
(2) Subsection (1) does not apply in relation to an application covered
by section 234 of this Act.
236 Micro-organisms
Sections 41 and 42 of this Act do not apply in relation to a
specification lodged before 7 July 1987.
237 Orders, directions etc. under 1952 Act
Any report, order or direction made or given under the 1952 Act
and in force immediately before the commencing day continues to
have effect on and after that day as if it had been made or given
under a corresponding provision of this Act.
238 The Commissioner and Deputy Commissioner
The persons holding office as Commissioner of Patents and Deputy
Commissioner of Patents immediately before the commencing day
continue to hold those respective offices on and after that day.
239 The Register of Patents and Register of Patent Attorneys
(1) On and after the commencing day, the Register of Patents under
the 1952 Act is to be taken to form part of the Register of Patents
under this Act.
(2) On and after the commencing day, the Register of Patent Attorneys
under the 1952 Act is to be taken to form part of the Register of
Patent Attorneys under this Act.
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240 Registered patent attorneys
This Act applies, on and after the commencing day, in relation to a
person who was, immediately before that day, a registered patent
attorney under the 1952 Act as if the person had been registered as
a patent attorney under this Act.
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Schedule 1—Dictionary Section 3
In this Act, unless the contrary intention appears:
application, in Chapter 15, means a patent application, and
includes a relevant international application.
approved form means a form approved by the Commissioner for
the purposes of the provision in which the expression appears.
associated technology has the same meaning as in the Safeguards
Act.
Australia includes each external Territory.
Australian continental shelf means the continental shelf adjacent
to the coast of Australia (including the coast of any island forming
part of a State or Territory).
Australian Register of Therapeutic Goods means the register
maintained under section 9A of the Therapeutic Goods Act 1989.
authority, in Chapter 15, has the same meaning as in the
Safeguards Act.
basic application means an application for protection in respect of
an invention, being an application made in a Convention country.
Board means the Trans-Tasman IP Attorneys Board continued in
existence by section 227A.
Budapest Treaty means the Budapest Treaty on the International
Recognition of the Deposit of Microorganisms for the Purposes of
Patent Procedure signed at Budapest on 28 April 1977, as that
treaty is in force for Australia from time to time, together with the
Regulations annexed to that treaty, as those Regulations are in
force for Australia from time to time.
Note: The text of the Treaty is set out in Australian Treaty Series 1987 No. 9
([1987] ATS 9). In 2011, the text of a Treaty in the Australian Treaty
Series was accessible through the Australian Treaties Library on the
AustLII website (www.austlii.edu.au).
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certified, in respect of an innovation patent other than in
section 19, means a certificate of examination issued by the
Commissioner under paragraph 101E(2)(c) in respect of the patent.
claim means:
(a) when used as a noun in relation to a patent—a claim
(including a dependent claim) of the specification relating to
the complete application on which the patent was granted;
and
(b) when used as a noun otherwise than in relation to a patent—a
claim (including a dependent claim) of a complete
specification; and
(c) when used as a verb—to claim in a claim (including a
dependent claim) of a complete specification.
commencing day means the day on which this Act commences.
Commissioner means the Commissioner of Patents.
company means:
(a) a company registered under the Corporations Act 2001; or
(b) a company registered under the Companies Act 1993 of New
Zealand.
compensable person means:
(a) in relation to a patent acquired by the Commonwealth—the
patentee and any person recorded in the Register as having an
interest in the patent; and
(b) in relation to an invention that is the subject of a patent
application and is so acquired—the nominated person in
relation to the application.
complete specification means (other than in section 116) a
specification filed in respect of a complete patent application or, if
the specification has been amended, the complete specification as
amended.
Convention applicant, in relation to a basic application, means a
person (or a body of persons, whether incorporated or not) who:
(a) has made the basic application; or
(b) is the assignee of that applicant; or
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(c) would, on the grant of a patent on that application, be entitled
to have the patent assigned to the person; or
(d) is the legal representative of a person mentioned in
paragraph (a), (b) or (c); or
(e) has the consent of a person mentioned in paragraph (a), (b),
(c) or (d) to make a Convention application based on that
basic application.
Convention application means a patent application made under
Part 1 of Chapter 3.
Convention country has the meaning given by section 29B.
deposit requirements means the requirements specified in
paragraphs 6(a) to (d), inclusive.
depositary institution means a body or institution that receives,
accepts and stores micro-organisms and furnishes samples of
micro-organisms.
Deputy Commissioner means a Deputy Commissioner of Patents.
Designated Manager has the meaning given by section 200A.
Director means the Director of Safeguards.
director of a company has the same meaning as in the
Corporations Act 2001.
Director-General of IP Australia means the SES employee who
holds or performs the duties of the position of Director-General of
IP Australia.
eligible importing country means a foreign country of a kind
prescribed by regulation.
Note: A regulation made for the purposes of this definition may make
provision in relation to a matter by applying, adopting or
incorporating, with or without modification, any matter contained in
any other instrument or other writing as in force or existing from time
to time (see subsection 228(5)).
eligible person, in relation to an invention, means a person to
whom a patent for the invention may be granted under section 15.
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employee means a person, other than the Commissioner or a
Deputy Commissioner, who:
(a) is a person engaged under the Public Service Act 1999 and is
employed in the Patent Office; or
(b) is not such a person but performs services, in the Patent
Office, for or on behalf of the Commonwealth.
examination means:
(a) in relation to a patent request and a complete specification
relating to a standard patent—an examination of the request
and specification under section 45; or
(b) in relation to an innovation patent—an examination of the
complete specification relating to the patent under
section 101B.
exclusive licensee means a licensee under a licence granted by the
patentee and conferring on the licensee, or on the licensee and
persons authorised by the licensee, the right to exploit the patented
invention throughout the patent area to the exclusion of the
patentee and all other persons.
exploit, in relation to an invention, includes:
(a) where the invention is a product—make, hire, sell or
otherwise dispose of the product, offer to make, sell, hire or
otherwise dispose of it, use or import it, or keep it for the
purpose of doing any of those things; or
(b) where the invention is a method or process—use the method
or process or do any act mentioned in paragraph (a) in respect
of a product resulting from such use.
Federal Court means the Federal Court of Australia.
file means file with the Patent Office.
Note: See also section 214.
foreign aircraft means an aircraft registered in a prescribed foreign
country.
foreign land vehicle means a land vehicle owned by a person
ordinarily resident in a prescribed foreign country.
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foreign vessel means a vessel registered in a prescribed foreign
country.
formalities check means, in respect of an application for an
innovation patent, the checking process undertaken under
section 52 using the process set out in the regulations.
incorporated legal practice means a body corporate recognised
under a law of the Commonwealth, a State or a Territory as an
incorporated legal practice (however described).
incorporated patent attorney has the meaning given by
subsection 198(10).
infringement proceedings means proceedings for infringement of
a patent.
innovation patent means letters patent for an invention granted
under section 62.
intellectual property advice has the meaning given by
subsection 200(2C).
interested party, in relation to a patent application, means the
applicant or a joint applicant, or a person who claims to be entitled
to the grant of a patent on the application, either alone or jointly
with another person.
international application has the same meaning as in the PCT.
international depositary authority has the same meaning as in the
Budapest Treaty.
international filing date, in relation to an international application,
means the date given to the international application as its
international filing date under the PCT.
invention means any manner of new manufacture the subject of
letters patent and grant of privilege within section 6 of the Statute
of Monopolies, and includes an alleged invention.
legal practitioner means a barrister or solicitor of the High Court
or of the Supreme Court of a State or Territory.
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legal representative, in relation to a deceased person, means a
person to whom probate of the will of the deceased person, letters
of administration of the estate of the deceased person, or any other
similar grant, has been granted, whether in Australia or anywhere
else, but does not include such a person who, under the terms of
the grant, is not entitled to do an act in relation to which the
expression is used.
licence means a licence to exploit, or to authorise the exploitation
of, a patented invention.
main invention has the meaning given in section 81.
New Zealand Commissioner of Patents means the person who
holds or performs the duties of the office or position of
Commissioner of Patents under or in accordance with a law of
New Zealand.
New Zealand Patents Minister means the Minister of New
Zealand who:
(a) under the authority of a warrant; or
(b) with the authority of the Prime Minister of New Zealand;
is responsible for the administration of a law of New Zealand
relating to the regulation of patent attorneys.
New Zealand patents official means a person:
(a) who is an employee in any part of the State services of New
Zealand; and
(b) whose functions or duties relate to the administration of a law
of New Zealand relating to patents for inventions.
nominated person means the person identified in a patent request
as the person to whom the patent is to be granted.
non-infringement declaration means a declaration mentioned in
subsection 125(1).
Official Journal means the official journal mentioned in
section 222.
patent means a standard patent or an innovation patent.
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patent application means an application for a standard patent or an
application for an innovation patent.
patent area means:
(a) Australia; and
(b) the Australian continental shelf; and
(c) the waters above the Australian continental shelf; and
(d) the airspace above Australia and the Australian continental
shelf.
patent attorney director has the meaning given by
subsection 198(11).
patent of addition means letters patent for an invention granted
under Chapter 7 and includes, for the purposes of section 25, a
patent of addition that has become an independent patent under
section 83.
Patent Office means the Patent Office established under this Act.
patent request means a request for the grant of a patent to a
nominated person.
patentable invention means an invention of the kind mentioned in
section 18.
patented pharmaceutical invention, in relation to a pharmaceutical
product, means:
(a) if the product is a patented product—the patented product; or
(b) if the product results from the use of a patented process—the
patented process.
patented process means a process in respect of which a patent has
been granted and is in force.
patented product means a product in respect of which a patent has
been granted and is in force.
patentee means the person for the time being entered in the
Register as the grantee or proprietor of a patent.
patents work has the meaning given by subsection 201A(2).
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PCT means the Patent Cooperation Treaty signed at Washington
on 19 June 1970, as that treaty is in force for Australia from time to
time, together with the Regulations annexed to that treaty, as those
Regulations are in force for Australia from time to time.
Note: The text of the Treaty is set out in Australian Treaty Series 1980 No. 6
([1980] ATS 6). In 2011, the text of a Treaty in the Australian Treaty
Series was accessible through the Australian Treaties Library on the
AustLII website (www.austlii.edu.au).
PCT application means an international application in which
Australia is specified as a designated State under Article 4(1)(ii) of
the PCT.
permit, in Chapter 15, has the same meaning as in the Safeguards
Act.
pharmaceutical product means any patented product, or product
manufactured through a patented process, of the pharmaceutical
sector.
Example: Examples of a pharmaceutical product include:
(a) active ingredients necessary for manufacturing such a product; and
(b) diagnostic kits needed for using such a product.
pharmaceutical substance means a substance (including a mixture
or compound of substances) for therapeutic use whose application
(or one of whose applications) involves:
(a) a chemical interaction, or physico-chemical interaction, with
a human physiological system; or
(b) action on an infectious agent, or on a toxin or other poison, in
a human body;
but does not include a substance that is solely for use in in vitro
diagnosis or in vitro testing.
PPI is short for patented pharmaceutical invention.
PPI compulsory licence has the meaning given by section 136D.
PPI order has the meaning given by section 136D.
PPI order applicant has the meaning given by section 136D.
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PPSA security interest (short for Personal Property Securities Act
security interest) means a security interest within the meaning of
the Personal Property Securities Act 2009 and to which that Act
applies, other than a transitional security interest within the
meaning of that Act.
Note 1: The Personal Property Securities Act 2009 applies to certain security
interests in personal property. See the following provisions of that
Act:
(a)
(b)
(c)
section 8 (interests to which the Act does not apply);
section 12 (meaning of security interest);
Chapter 9 (transitional provisions).
Note 2: For the meaning of transitional security interest, see section 308 of
the Personal Property Securities Act 2009.
preliminary search and opinion, in relation to a patent request and
complete specification relating to an application for a standard
patent, means search and opinion under section 43A.
prescribed court means the Federal Court, the Supreme Court of a
State, the Supreme Court of the Australian Capital Territory, the
Supreme Court of the Northern Territory or the Supreme Court of
Norfolk Island.
prescribed depositary institution means:
(a) an international depositary authority, whether in or outside
Australia; or
(b) any other depositary institution in Australia that is prescribed
for the purposes of this paragraph.
prior art base means:
(a) in relation to deciding whether an invention does or does not
involve an inventive step or an innovative step:
(i) information in a document that is publicly available,
whether in or out of the patent area; and
(ii) information made publicly available through doing an
act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed
in respect of a complete application where:
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(A) if the information is, or were to be, the subject
of a claim of the specification, the claim has, or
would have, a priority date earlier than that of
the claim under consideration; and
(B) the specification was published on or after the
priority date of the claim under consideration;
and
(C) the information was contained in the
specification on its filing date.
[Note: For the meaning of document see section 2B of the Acts
Interpretation Act 1901.]
prior art information means:
(a) for the purposes of subsection 7(1)—information that is part
of the prior art base in relation to deciding whether an
invention is or is not novel; and
(b) for the purposes of subsection 7(3)—information that is part
of the prior art base in relation to deciding whether an
invention does or does not involve an inventive step; and
(c) for the purposes of subsection 7(5)—information that is part
of the prior art base in relation to deciding whether an
invention does or does not involve an innovative step.
prohibition order means an order under section 173.
provisional specification means a specification filed in respect of a
provisional patent application.
receiving Office has the same meaning as in the PCT.
re-examination means:
(a) in relation to a complete specification relating to an
application for a standard patent—the re-examination of the
complete specification under Chapter 9; and
(b) in relation to an innovation patent—the re-examination of the
innovation patent under Part 2 of Chapter 9A.
Register means the Register of Patents mentioned in section 186.
registered, in relation to a patent, means entered in the Register of
Patents.
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registered patent attorney means a person registered as a patent
attorney under this Act.
Registrar of Companies of New Zealand means the person who
holds or performs the duties of the office or position of Registrar of
Companies under or in accordance with the Companies Act 1993
of New Zealand.
related company group means a group of 2 or more companies,
where each member of the group is related to each other member
of the group.
relevant authority means:
(a) in relation to the exploitation of an invention by or for the
Commonwealth—the Commonwealth; and
(b) in relation to the exploitation of an invention by or for a
State—that State.
relevant international application, in Chapter 15, means an
international application in relation to which the Patent Office is
the receiving Office (even if Australia is not specified in the
application as a designated State under Article 4(1)(ii) of the PCT).
relevant proceedings, in relation to a patent, means court
proceedings:
(a) for infringement of the patent; or
(b) for revocation of the patent; or
(c) in which the validity of the patent, or of a claim, is in dispute.
rules relating to micro-organisms means such provisions of the
Budapest Treaty, and such provisions made by or under regulations
made under section 228, as are applicable.
Safeguards Act means the Nuclear Non-Proliferation (Safeguards)
Act 1987.
specification, in relation to an international application, means the
description, claims and drawings contained in the application.
standard patent means letters patent for an invention granted under
section 61.
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State, in Chapter 17, includes the Australian Capital Territory, the
Northern Territory and Norfolk Island.
Statute of Monopolies means the Imperial Act known as The
Statute of Monopolies.
supply includes:
(a) supply by way of sale, exchange, lease, hire or hire-purchase;
and
(b) offer to supply (including supply by way of sale, exchange,
lease, hire or hire-purchase).
Territory means a Territory in which this Act applies or to which
this Act extends.
therapeutic use means use for the purpose of:
(a) preventing, diagnosing, curing or alleviating a disease,
ailment, defect or injury in persons; or
(b) influencing, inhibiting or modifying a physiological process
in persons; or
(c) testing the susceptibility of persons to a disease or ailment.
this Act includes the regulations.
TRIPS Agreement means the Agreement on Trade-Related
Aspects of Intellectual Property Rights set out in Annex 1C to the
Marrakesh Agreement establishing the World Trade Organization,
done at Marrakesh on 15 April 1994, as Annex 1C is in force for
Australia from time to time.
Note: The WTO Agreement is in Australian Treaty Series 1995 No. 8
([1995] ATS 8) and could in 2015 be viewed in the Australian
Treaties Library on the AustLII website (http://www.austlii.edu.au).
work, in relation to a patented invention, means:
(a) where the invention is a product—make or import the
product; or
(b) where the invention is a method or process—use the method
or process or do any act mentioned in paragraph (a) in respect
of a product resulting from such use.
1952 Act means the Patents Act 1952.
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1989 Amending Act means the Patents Amendment Act 1989.
Patents Act 1990
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Endnotes
Endnote 1—About the endnotes
Endnotes
Endnote 1—About the endnotes
The endnotes provide information about this compilation and the compiled law.
The following endnotes are included in every compilation:
Endnote 1—About the endnotes
Endnote 2—Abbreviation key
Endnote 3—Legislation history
Endnote 4—Amendment history
Abbreviation key—Endnote 2
The abbreviation key sets out abbreviations that may be used in the endnotes.
Legislation history and amendment history—Endnotes 3 and 4
Amending laws are annotated in the legislation history and amendment history.
The legislation history in endnote 3 provides information about each law that
has amended (or will amend) the compiled law. The information includes
commencement details for amending laws and details of any application, saving
or transitional provisions that are not included in this compilation.
The amendment history in endnote 4 provides information about amendments at
the provision (generally section or equivalent) level. It also includes information
about any provision of the compiled law that has been repealed in accordance
with a provision of the law.
Editorial changes
The Legislation Act 2003 authorises First Parliamentary Counsel to make
editorial and presentational changes to a compiled law in preparing a
compilation of the law for registration. The changes must not change the effect
of the law. Editorial changes take effect from the compilation registration date.
If the compilation includes editorial changes, the endnotes include a brief
outline of the changes in general terms. Full details of any changes can be
obtained from the Office of Parliamentary Counsel.
Misdescribed amendments
A misdescribed amendment is an amendment that does not accurately describe
the amendment to be made. If, despite the misdescription, the amendment can
be given effect as intended, the amendment is incorporated into the compiled
Patents Act 1990
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Endnote 1—About the endnotes
law and the abbreviation “(md)” added to the details of the amendment included
in the amendment history.
If a misdescribed amendment cannot be given effect as intended, the
abbreviation “(md not incorp)” is added to the details of the amendment
included in the amendment history.
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Endnote 2—Abbreviation key
Endnote 2—Abbreviation key
ad = added or inserted o = order(s)
am = amended Ord = Ordinance
amdt = amendment orig = original
c = clause(s) par = paragraph(s)/subparagraph(s)
/sub-subparagraph(s)C[x] = Compilation No. x
Ch = Chapter(s) pres = present
def = definition(s) prev = previous
Dict = Dictionary (prev…) = previously
disallowed = disallowed by Parliament Pt = Part(s)
Div = Division(s) r = regulation(s)/rule(s)
ed = editorial change reloc = relocated
exp = expires/expired or ceases/ceased to have renum = renumbered
effect rep = repealed
F = Federal Register of Legislation rs = repealed and substituted
gaz = gazette s = section(s)/subsection(s)
LA = Legislation Act 2003 Sch = Schedule(s)
LIA = Legislative Instruments Act 2003 Sdiv = Subdivision(s)
(md) = misdescribed amendment can be given SLI = Select Legislative Instrument
effect SR = Statutory Rules
(md not incorp) = misdescribed amendment Sub-Ch = Sub-Chapter(s)
cannot be given effect SubPt = Subpart(s)
mod = modified/modification underlining = whole or part not
commenced or to be commencedNo. = Number(s)
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Endnote 3—Legislation history
Endnote 3—Legislation history
Act Number Assent Commencement Application,
and year saving and
transitional
provisions
Patents Act 1990 83, 1990 30 Oct 30 Apr 1991 (s 2(2))
1990
Industry, Technology
and Commerce
Legislation Amendment
Act 1991
66, 1991 15 June
1991
s 26: 30 Apr 1991
(s 2(4))
—
Industry, Technology
and Regional
Development Legislation
Amendment Act 1994
58, 1994 9 Apr 1994 Sch: 29 June 1994 (s 2
and gaz 1994, No S211)
—
Industry, Science and
Technology Legislation
Amendment Act 1994
108, 1994 12 July
1994
s 16–19: 12 July 1994
(s 2(1))
—
Patents (World Trade
Organization
Amendments) Act 1994
154, 1994 13 Dec
1994
s 4–7 and 12: 1 July
1995 (s 2)
Remainder: 10 Jan 1995
(s 2)
s 3, 7, 8, 10, 12,
13, 17
Intellectual Property
Laws Amendment Act
1998
100, 1998 27 July
1998
Sch 1 and 2 (items 10–
32): 27 Jan 1999 (s 2(3),
(5))
Sch 3: 27 July 1998
(s 2(1))
Sch 1 (item 8),
Sch 2 (items 31,
32) and Sch 3
(item 4)
Public Employment 146, 1999 11 Nov Sch 1 (items 728–730): 5 —
(Consequential and 1999 Dec 1999 (s 2(1), (2) and
Transitional) gaz 1999, No S584)
Amendment Act 1999
Patents Amendment 140, 2000 24 Nov Sch 1 and 2: 24 May Sch 2
(Innovation Patents) Act 2000 2001 (s 2(2))
2000
Patents Act 1990
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Endnote 3—Legislation history
Act Number Assent Commencement Application,
and year saving and
transitional
provisions
as amended by
Trade Marks and
Other Legislation
Amendment Act 2001
99, 2001 22 Aug
2001
Sch 2: 24 May 2001
(s 2(3))
—
Intellectual Property
Laws Amendment Act
2003
48, 2003 26 June
2003
Sch 2 (item 8): 24 May
2001 (s 2(1) item 5)
—
Corporations (Repeals, 55, 2001 28 June s 4–14 and Sch 3 s 4–14
Consequentials and 2001 (item 401): 15 July 2001
Transitionals) Act 2001 (s 2(1) and gaz 2001, No
S285)
Industry, Science and 140, 2001 1 Oct 2001 s 4 and Sch 1 (items 86– s 4
Resources Legislation 98): 2 Oct 2001 (s 2)
Amendment
(Application of Criminal
Code) Act 2001
Patents Amendment Act 160, 2001 1 Oct 2001 Sch 1: 1 Apr 2002 Sch 1 (items 13,
2001 (s 2(3)) 32, 33)
Sch 2: 24 May 2001
(s 2(4))
Intellectual Property
Laws Amendment Act
2003
48, 2003 26 June
2003
Sch 1 (item 2): 24 July
2003 (s 2(2))
Sch 2 (items 1–5): 26
Aug 2003 (s 2(3))
Sch 2 (item 5)
US Free Trade
Agreement
Implementation Act
2004
120, 2004 16 Aug
2004
Sch 8: 16 Aug 2004
(s 2(1) item 8)
Sch 8 (item 3)
Statute Law Revision 100, 2005 6 July 2005 Sch 1 (items 31–37): —
Act 2005 24 May 2001 (s 2(1)
item 20)
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Endnotes
Endnote 3—Legislation history
Act Number
and year
Assent Commencement Application,
saving and
transitional
provisions
Intellectual Property
Laws Amendment Act
2006
106, 2006 27 Sept
2006
Sch 5, 6, 8 and 9: 28
Sept 2006 (s 2(1)
items 7, 9)
Sch 7: 25 Oct 2006
(s 2(1) item 8)
Sch 10 and 12 (item 4):
27 Mar 2007 (s 2(1)
items 10, 12)
Sch 16 (item 1): 4 Oct
2002 (s 2(1) item 14)
Sch 5 (item 2),
Sch 6 (item 2),
Sch 7 (item 4),
Sch 8 (item 9),
Sch 9 (item 2) and
Sch 10 (item 3)
Personal Property 131, 2009 14 Dec Sch 2 (items 8–15): 30 Sch 2 (item 15)
Securities 2009 Jan 2012 (s 2(1) item 1)
(Consequential
Amendments) Act 2009
Crimes Legislation 4, 2010 19 Feb Sch 10 (item 22): 20 Feb —
Amendment (Serious 2010 2010 (s 2(1) item 13)
and Organised Crime)
Act (No. 2) 2010
Statute Law Revision 8, 2010 1 Mar 2010 Sch 1 (item 39): 1 Mar —
Act 2010 2010 (s 2(1) item 4)
Personal Property
Securities (Corporations
and Other Amendments)
Act 2010
96, 2010 6 July 2010 Sch 3 (item 16): 30 Jan
2012 (s 2(1) item 13)
—
Trade Practices
Amendment (Australian
Consumer Law) Act
(No. 2) 2010
103, 2010 13 July
2010
Sch 6 (items 1, 82):
1 Jan 2011 (s 2(1)
items 3, 5)
—
Statute Law Revision
Act 2011
5, 2011 22 Mar
2011
Sch 7 (items 108, 109):
19 Apr 2011 (s 2(1)
item 18)
—
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Endnotes
Endnote 3—Legislation history
Act Number Assent Commencement Application,
and year saving and
transitional
provisions
Acts Interpretation
Amendment Act 2011
46, 2011 27 June
2011
Sch 2 (items 905–907)
and Sch 3 (items 10, 11):
27 Dec 2011 (s 2(1)
items 7, 12)
Sch 3 (items 10,
11)
Intellectual Property
Laws Amendment
(Raising the Bar) Act
2012
35, 2012 15 Apr
2012
Sch 1, Sch 3 (items 1–
16, 32(1)–(6), 33), Sch 4
(items 1–36) and Sch 6
(items 23–86, 88–103,
133, 134): 15 Apr 2013
(s 2(1) items 2, 4, 5, 7)
Sch 2 and Sch 6
Sch 1 (items 55,
56), Sch 2
(item 2), Sch 3
(items 32(1)–(6),
33) and Sch 6
(items 133, 134)
(item 87): 16 Apr 2012
(s 2(1) items 3, 6)
Statute Law Revision
Act 2013
103, 2013 29 June
2013
Sch 4 (items 17, 18):
29 June 2013 (s 2(1)
item 16)
—
Statute Law Revision
Act (No. 1) 2014
31, 2014 27 May
2014
Sch 1 (items 53, 54):
24 June 2014 (s 2(1)
item 2)
—
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Endnotes
Endnote 3—Legislation history
Act
Intellectual Property
Laws Amendment Act
2015
Number
and year
8, 2015
Assent
25 Feb
2015
Commencement
Sch 1 and Sch 5
(items 9–17, 19–21):
25 Aug 2015 (s 2(1)
items 2, 8, 10)
Sch 2: 23 Jan 2017
(s 2(1) item 3)
Sch 4 (items 5–58, 81–
83): 24 Feb 2017 (s 2(1)
item 5)
Sch 5 (items 5, 7):
26 Feb 2015 (s 2(1)
item 6)
Sch 5 (item 8, 18): 15
Apr 2013 (s 2(1) items 7,
9)
Sch 5 (item 22): 25 Feb
2015 (s 2(1) item 11)
Application,
saving and
transitional
provisions
Sch 1 (item 36),
Sch 4 (items 81–
83) and Sch 5
(items 7, 22)
Norfolk Island
Legislation Amendment
Act 2015
as amended by
Territories Legislation
Amendment Act 2016
59, 2015
33, 2016
26 May
2015
23 Mar
2016
Sch 2 (item 298): 1 July
2016 (s 2(1) item 5)
Sch 2 (items 356–396):
18 June 2015 (s 2(1)
item 6)
Sch 2: 24 Mar 2016
(s 2(1) item 2)
Sch 2 (items 356–
396)
—
Acts and Instruments 126, 2015 10 Sept Sch 1 (items 472–474): 5 —
(Framework Reform) 2015 Mar 2016 (s 2(1) item 2)
(Consequential Sch 1 (item 673): 24 Feb
Provisions) Act 2015 2017 (s 2(1) item 3)
Statute Law Revision 4, 2016 11 Feb Sch 4 (items 1, 228): 10 —
Act (No. 1) 2016 2016 Mar 2016 (s 2(1) item 6)
Statute Update Act 2016 61, 2016 23 Sept Sch 1 (item 361): 21 Oct —
2016 2016 (s 2(1) item 1)
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Endnote 3—Legislation history
Act Number
and year
Assent Commencement Application,
saving and
transitional
provisions
Intellectual Property
Laws Amendment
(Productivity
Commission Response
Part 1 and Other
Measures) Act 2018
77, 2018 24 Aug
2018
Sch 1 (item 47) and Sch
2 (items 154–156, 161–
163, 238, 239, 242, 307,
308, 312, 323–336, 351):
25 Aug 2018 (s 2(1)
items 4, 7, 9, 11)
Sch 2 (items 34–42, 111,
121–128, 151, 180–194,
Sch 2 (items 156,
242, 312)
Sch 2 (items 111,
151, 194, 209)
200, 209): awaiting
commencement (s 2(1)
items 6, 8)
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Endnotes
Endnote 4—Amendment history
Endnote 4—Amendment history
Provision affected How affected
Chapter 1
s 3.................................................. am No 108, 1994; No 154, 1994; No 100, 1998; No 140, 2000;
No 48, 2003; No 131, 2009; No 35, 2012; No 8, 2015; No 77, 2018
(Sch 2 item 121)
s 4.................................................. rs No 140, 2000
rep No 35, 2012
s 6.................................................. am No 100, 1998
s 7.................................................. am No 140, 2000; No 160, 2001; No 46, 2011; No 35, 2012
s 7A............................................... ad No 35, 2012
s 8.................................................. rep No 35, 2012
s 9.................................................. am No 35, 2012
s 10................................................ am No 35, 2012
s 11................................................ am No 59, 2015
s 12A............................................. ad No 140, 2001
Chapter 2
Part 3
Division 1
s 18................................................ am No 140, 2000
s 20................................................ am No 8, 2015; No 77, 2018
Division 2
s 22A............................................. ad No 35, 2012
s 24................................................ am No 140, 2000; No 8, 2010; No 35, 2012, No 8, 2015
s 26................................................ am No 35, 2012
Division 3
s 27................................................ am No 77, 2018
s 28................................................ rs No 140, 2000
am No 77, 2018
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Endnotes
Endnote 4—Amendment history
Provision affected How affected
Chapter 3
Part 1
Division 1
s 29................................................ am No 35, 2012; No 77, 2018
s 29A............................................. ad No 35, 2012
am No 8, 2015; No 77, 2018
s 29B ............................................. ad No 35, 2012
am No 8, 2015; No 126, 2015
s 30................................................ am No 35, 2012
s 32................................................ am No 35, 2012
s 33................................................ rs No 140, 2000
s 34................................................ rs No 140, 2000
s 35................................................ am No 140, 2000; No 35, 2012
s 36................................................ rs No 140, 2000
am No 35, 2012; No 31, 2014
s 38................................................ am No 35, 2012
s 39................................................ rep No 140, 2000
Division 2
s 40................................................ am No 140, 2000; No 106, 2006; No 35, 2012; No 8, 2015; No 77,
2018
s 41................................................ am No 8, 2015
Division 3
s 43................................................ am No 140, 2000; No 35, 2012; No 8, 2015
s 43AA .......................................... ad No 35, 2012
Part 2
Part 2 heading................................ rs No 140, 2000
Division 1A
Division 1A................................... ad No 35, 2012
s 43A............................................. ad No 35, 2012
Division 1
s 45................................................ am No 140, 2000; No 160, 2001; No 48, 2003; No 35, 2012
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Endnote 4—Amendment history
Provision affected How affected
s 46................................................ rep No 35, 2012
Division 2...................................... rep No 35, 2012
s 47................................................ rep No 35, 2012
s 48................................................ am No 140, 2000; No 160, 2001
rep No 35, 2012
Part 3
Division 1
Division 1 heading ........................ ad No 140, 2000
s 49................................................ am No 140, 2000; No 160, 2001; No 35, 2012; No 77, 2018
s 49A............................................. ad No 35, 2012
s 50................................................ rs No 140, 2000
s 50A............................................. ad No 35, 2012
s 51................................................ rs No 140, 2000
am No 35, 2012
Division 2
Division 2 heading ........................ ad No 140, 2000
s 52................................................ rs No 140, 2000
am No 35, 2012
Chapter 4
s 53................................................ rs No 35, 2012
s 54................................................ am No 140, 2000
s 55................................................ am No 140, 2000; No 35, 2012
s 56................................................ am No 66, 1991
s 56A............................................. ad No 35, 2012
s 57................................................ am No 140, 2000; No 35, 2012; No 31, 2014
Chapter 5
Chapter 5 heading ......................... rs No 140, 2000
s 59................................................ am No 140, 2000; No 120, 2004
s 60................................................ am No 35, 2012
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Endnote 4—Amendment history
Provision affected How affected
Chapter 6
Part 1
s 61................................................ am No 160, 2001; No 35, 2012
s 62................................................ rs No 140, 2000
am No 35, 2012
s 64................................................ am No 140, 2000
s 66................................................ am No 140, 2000
rep No 35, 2012
Part 2
s 67................................................ am No 154, 1994
s 68................................................ rs No 140, 2000
Part 3
Part 3 heading................................ rs No 140, 2000
Division 1 heading ........................ rep No 154, 1994
ad No 100, 1998
rep No 140, 2000
Division 1...................................... rep No 140, 2000
s 69................................................ rep No 140, 2000
Division 2 heading ........................ rep No 140, 2000
Division 2...................................... rep No 154, 1994
ad No 100, 1998
s 70................................................ rep No 154, 1994
ad No 100, 1998
am No 100, 2005: No 5, 2011; No 8, 2015
s 71................................................ rep No 154, 1994
ad No 100, 1998
am No 8, 2015
s 72................................................ rep No 154, 1994
ad No 100, 1998
s 73................................................ rep No 154, 1994
ad No 100, 1998
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Endnotes
Endnote 4—Amendment history
Provision affected How affected
s 74................................................ rep No 154, 1994
ad No 100, 1998
am No 35, 2012; No 77, 2018
s 75................................................ rep No 154, 1994
ad No 100, 1998
s 76................................................ rep No 154, 1994
ad No 100, 1998
am No 77, 2018
s 76A............................................. ad No 100, 1998
rep No 77, 2018
s 77................................................ rep No 154, 1994
ad No 100, 1998
s 78................................................ rep No 154, 1994
ad No 100, 1998
am No 106, 2006
s 79................................................ rep No 154, 1994
ad No 100, 1998
s 79A............................................. ad No 100, 1998
am No 100, 2005
Chapter 6A
Chapter 6A.................................... ad No 140, 2000
s 79B ............................................. ad No 140, 2000
rs No 35, 2012
s 79C ............................................. ad No 140, 2000
am No 106, 2006; No 35, 2012
Chapter 7
s 80................................................ rs No 140, 2000
s 81................................................ am No 35, 2012
s 83................................................ am No 154, 1994
rs No 100, 1998
am No 100, 2005
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Endnotes
Endnote 4—Amendment history
Provision affected How affected
s 84................................................ rep No 154, 1994
Chapter 8....................................... rep No 35, 2012
s 88................................................ am No 140, 2000
rep No 35, 2012
s 89................................................ am No 140, 2000
rep No 35, 2012
s 90................................................ rep No 35, 2012
s 91................................................ rep No 35, 2012
s 92................................................ rep No 35, 2012
s 93................................................ rep No 35, 2012
s 94................................................ rep No 35, 2012
s 95................................................ rep No 35, 2012
s 96................................................ rep No 35, 2012
Chapter 9
Chapter 9 heading ......................... rs No 140, 2000
s 96A............................................. ad No 140, 2000
s 97................................................ am No 66, 1991; No 160, 2001; No 35, 2012
s 98................................................ am No 140, 2000; No 160, 2001
rs No 35, 2012
s 99................................................ am No 140, 2000
s 100.............................................. am No 66, 1991
s 100A........................................... ad No 160, 2001
am No 35, 2012
s 101.............................................. am No 66, 1991; No 160, 2001; No 35, 2012
Chapter 9A
Chapter 9A.................................... ad No 140, 2000
Part 1
s 101A........................................... ad No 140, 2000
s 101B ........................................... ad No 140, 2000
am No 160, 2001
rs No 35, 2012
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Endnote 4—Amendment history
Provision affected How affected
s 101C ........................................... ad No 140, 2000
s 101D........................................... ad No 140, 2000
rs No 160, 2001; No 48, 2003
rep No 35, 2012
s 101E ........................................... ad No 140, 2000
am No 160, 2001; No 8, 2015
rs No 35, 2012
am No 77, 2018
s 101EA......................................... ad No 35, 2012
s 101F............................................ ad No 140, 2000
am No 35, 2012
Part 2
s 101G........................................... ad No 140, 2000
am No 160, 2001; No 35, 2012
s 101H........................................... ad No 140, 2000
s 101J ............................................ ad No 140, 2000
am No 35, 2012
s 101K........................................... ad No 140, 2000
s 101L ........................................... ad No 140, 2000
Part 3
s 101M .......................................... ad No 140, 2000
rs No 35, 2012
s 101N........................................... ad No 140, 2000
am No 35, 2012
s 101P............................................ ad No 140, 2000
Chapter 10
Part 1
s 102.............................................. am No 140, 2000; No 160, 2001; No 35, 2012
s 103.............................................. am No 35, 2012
Part 2
s 104.............................................. am No 120, 2004
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Endnote 4—Amendment history
Provision affected How affected
s 105.............................................. am No 35, 2012
s 106.............................................. am No 140, 2000; No 35, 2012
s 107.............................................. am No 140, 2000; No 35, 2012
s 108.............................................. rep No 140, 2000
s 109.............................................. am No 140, 2000
Part 3
s 111.............................................. rep No 140, 2000
s 112A........................................... ad No 35, 2012
s 114.............................................. am No 140, 2000
rs No 35, 2012
s 114A........................................... ad No 140, 2000
am No 35, 2012
Chapter 11
Part 1
s 119.............................................. am No 160, 2001
rs No 106, 2006
am No 8, 2015
s 119A........................................... ad No 106, 2006
s 119B ........................................... ad No 35, 2012
s 119C ........................................... ad No 35, 2012
s 120.............................................. am No 140, 2000
s 121A........................................... ad No 154, 1994
s 122.............................................. am No 106, 2006
Part 2
s 125.............................................. rs No 35, 2012
s 126.............................................. am No 140, 2000
rs No 35, 2012
s 127.............................................. rs No 35, 2012
Part 3
s 128.............................................. am No 77, 2018
s 129.............................................. rs No 140, 2000
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Endnote 4—Amendment history
Provision affected How affected
s 129A........................................... ad No 140, 2000
s 130.............................................. am No 140, 2000
s 132.............................................. am No 35, 2012
Chapter 12
Part 1
Part 1............................................. ad No 8, 2015
s 132A........................................... ad No 8, 2015
Part 2
Part 2 heading................................ ad No 8, 2015
s 132B ........................................... ad No 8, 2015
s 133.............................................. am No 154, 1994; No 140, 2000; No 106, 2006; No 103, 2010; No 8,
2015
s 134.............................................. am No 140, 2000; No 106, 2006; No 103, 2010; No 8, 2015
s 135.............................................. am No 35, 2012
s 136A........................................... ad No 106, 2006
Part 3
Part 3............................................. ad No 8, 2015
Division 1
Division 1...................................... ad No 8, 2015
s 136B ........................................... ad No 8, 2015
s 136C ........................................... ad No 8, 2015
Division 2
Division 2...................................... ad No 8, 2015
s 136D........................................... ad No 8, 2015
s 136E ........................................... ad No 8, 2015
am No 126, 2015
s 136F............................................ ad No 8, 2015
s 136G........................................... ad No 8, 2015
s 136H........................................... ad No 8, 2015
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Endnote 4—Amendment history
Provision affected How affected
Division 3
Division 3...................................... ad No 8, 2015
s 136J ............................................ ad No 8, 2015
Division 4
Division 4...................................... ad No 8, 2015
s 136K........................................... ad No 8, 2015
s 136L ........................................... ad No 8, 2015
s 136M .......................................... ad No 8, 2015
Part 4
Part 4 heading................................ ad No 8, 2015
s 136N........................................... ad No 8, 2015
s 137.............................................. am No 8, 2015
s 138.............................................. am No 140, 2000; No 120, 2004; No 35, 2012
Part 5
Part 5 heading................................ ad No 8, 2015
s 138A........................................... ad No 8, 2015
s 139.............................................. am No 8, 2015
Chapter 13
s 141.............................................. rs No 140, 2000
am No 35, 2012
s 142.............................................. am No 140, 2000; No 160, 2001; No 35, 2012
s 143A........................................... ad No 140, 2000
am No 160, 2001; No 35, 2012
s 143B ........................................... ad No 160, 2001
Chapter 14
s 144.............................................. am No 140, 2000
Chapter 15
s 150.............................................. am No 35, 2012
s 151.............................................. am No 140, 2000; No 35, 2012; No 77, 2018 (Sch 2 item 183)
s 153.............................................. am No 140, 2000
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Endnotes
Endnote 4—Amendment history
Provision affected How affected
Chapter 17
Part 2
s 163.............................................. am No 154, 1994
s 165.............................................. am No 154, 1994
s 165A........................................... ad No 154, 1994
s 169.............................................. am No 140, 2000
Part 4
s 174.............................................. am No 140, 2000
s 176.............................................. am No 140, 2000; No 77, 2018 (Sch 2 item 184)
Chapter 18
s 177.............................................. am No 35, 2012; No 4, 2016
s 178.............................................. am No 140, 2000; No 35, 2012; No 8, 2015
s 179.............................................. am No 140, 2001
rep No 35, 2012
s 180.............................................. am No 140, 2001
rep No 35, 2012
s 181.............................................. am No 140, 2001
rep No 35, 2012
s 182.............................................. am No 35, 2012
s 183.............................................. am No 35, 2012; No 8, 2015; No 77, 2018
s 185.............................................. rs No 100, 1998
Chapter 19
s 186.............................................. am No 140, 2000
s 187.............................................. rs No 140, 2000
s 189.............................................. am No 131, 2009
s 191.............................................. am No 140, 2001
s 191A........................................... ad No 35, 2012; No 8, 2015
s 195.............................................. am No 131, 2009
s 196.............................................. am No 131, 2009
s 197AA ........................................ ad No 35, 2012
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Endnotes
Endnote 4—Amendment history
Provision affected How affected
Chapter 20
Part 1
s 198.............................................. rs No 100, 1998
am No 35, 2012; No 8, 2015
s 199.............................................. am No 8, 2015
s 200.............................................. am No 100, 1998; No 35, 2012
s 200A........................................... ad No 100, 1998
rs No 146, 1999
am No 5, 2011
Part 2
s 201.............................................. am No 100, 1998; No 55, 2001
rs No 35, 2012
s 201A........................................... ad No 35, 2012
s 201B ........................................... ad No 35, 2012
s 202.............................................. am No 35, 2012
s 202A........................................... ad No 100, 1998
s 202B ........................................... ad No 35, 2012
s 203.............................................. rs No 35, 2012
s 204.............................................. am No 100, 1998; No 140, 2000; No 77, 2018
Chapter 21
s 205.............................................. am No 35, 2012
s 207.............................................. am No 58, 1994
s 208.............................................. am No 58, 1994
s 209.............................................. am No 58, 1994; No 8, 2015; No 77, 2018
s 210.............................................. am No 35, 2012
s 210A........................................... ad No 35, 2012
Chapter 22
s 213.............................................. am No 100, 1998
s 214.............................................. rs No 35, 2012
am No 8, 2015; No 77, 2018
rs No 77, 2018
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Endnotes
Endnote 4—Amendment history
Provision affected How affected
s 214A........................................... ad No 77, 2018
s 214B ........................................... ad No 77, 2018
s 214C ........................................... ad No 77, 2018
s 215.............................................. am No 35, 2012
s 220.............................................. am No 100, 1998
s 220A........................................... ad No 77, 2018
s 221.............................................. am No 8, 2015; No 126, 2015
s 222.............................................. am No 77, 2018
s 222A........................................... ad No 106, 2006
am No 35, 2012
s 223.............................................. am No 66, 1991; No 154, 1994; No 140, 2000; No 160, 2001; No 48,
2003; No 35, 2012; No 8, 2015; No 77, 2018
s 223A........................................... ad No 77, 2018
s 224.............................................. am No 100, 1998; No 140, 2000; No 35, 2012; No 8, 2015; No 77,
2018
s 225.............................................. am No 140, 2001; No 4, 2010
s 226.............................................. rs No 35, 2012
s 227.............................................. am No 100, 1998; No 140, 2000; No 35, 2012; No 8, 2015; No 77,
2018 (Sch 2 item 125)
s 227AAA ..................................... ad No 77, 2018
s 227AA ........................................ ad No 8, 2015
rep No 77, 2018
s 227AB ........................................ ad No 8, 2015
s 227A........................................... ad No 100, 1998
am No 8, 2015
s 227B ........................................... ad No 77, 2018
s 228.............................................. am No 140, 2000; No 35, 2012; No 8, 2015; No 126, 2015; No 61,
2016; No 77, 2018 (Sch 2 items 127, 185–191)
s 229.............................................. rep No 103, 2013
ad No 77, 2018
s 230.............................................. rep No 103, 2013
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Endnotes
Endnote 4—Amendment history
Provision affected How affected
Chapter 23
s 232.............................................. rep No 154, 1994
s 233.............................................. am No 66, 1991
Schedule 1
Schedule 1..................................... am No 66, 1991; No 58, 1994; No 108, 1994; No 154, 1994; No 100,
1998; No 146, 1999; No 140, 2000; No 160, 2001; No 48, 2003;
No 106, 2006; No 131, 2009; No 96, 2010; No 46, 2011; No 35,
2012; No 8, 2015; No 77, 2018 (Sch 2 items 128, 193)
Schedule 2..................................... rep No 103, 2013
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