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专利法1990(2019年2月24日合并本), 澳大利亚

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主要文本 主要文本 英语 Patents Act 1990 (consolidated as of February 24, 2019)        
 Patents Act 1990 (consolidated as of February 24, 2019)

Authorised Version C2019C00088 registered 25/02/2019

Patents Act 1990

No. 83, 1990

Compilation No. 43

Compilation date: 24 February 2019

Includes amendments up to: Act No. 77, 2018

Registered: 25 February 2019

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 24 February 2019 (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If a provision of the compiled law has been repealed in accordance with a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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1

Contents

Chapter 1—Introductory 1 Short title...........................................................................1

2 Commencement.................................................................1

3 Definitions.........................................................................1

5 Associated applications .....................................................3

6 Deposit requirements.........................................................3

7 Novelty, inventive step and innovative step ......................4

7A Meaning of useful..............................................................5

9 Secret use ..........................................................................6

10 Certain international applications to be taken to

have been given an international filing date ......................7

11 Act binds the Crown..........................................................7

12 Application of Act .............................................................7

12A Application of the Criminal Code .....................................8

Chapter 2—Patent rights, ownership and validity 9

Part 1—Patent rights 9 13 Exclusive rights given by patent........................................9

14 Assignment of patent.........................................................9

Part 2—Ownership 10 15 Who may be granted a patent? ........................................10

16 Co-ownership of patents..................................................10

17 Directions to co-owners...................................................11

Part 3—Validity 12

Division 1—Validity 12

18 Patentable inventions.......................................................12

19 Certificate of validity.......................................................13

20 Validity of patent not guaranteed ....................................14

21 Validity not implied by making or refusal of

non-infringement declaration ..........................................14

Division 2—Matters not affecting validity 15

22A Validity not affected by who patent is granted to ............15

22 Invalidity in relation to one claim not to affect

validity in relation to other claims ...................................15

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23 Validity not affected by publication etc. after

priority date .....................................................................15

24 Validity not affected by making information

available in certain circumstances ...................................15

25 Validity: patents of addition ............................................16

26 Validity not affected in certain cases involving

amendments.....................................................................16

Division 3—Notice of matters affecting validity 18

27 Notice of matters affecting validity of standard

patents .............................................................................18

28 Notice of matters affecting validity of innovation

patents .............................................................................18

Chapter 3—From application to acceptance 20

Part 1—Patent applications 20

Division 1—Applications 20

29 Application for patent—general rules .............................20

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. .....................................23

33 Applications by opponents etc.........................................23

34 Applications by eligible persons arising out of

Court proceedings ...........................................................26

35 Applications by eligible persons following

revocation by Commissioner ...........................................26

36 Other applications by eligible persons.............................27

37 Complete application may be treated as

provisional.......................................................................28

38 Time for making complete application............................29

Division 2—Specifications 30

40 Specifications ..................................................................30

41 Specifications: micro-organisms .....................................31

42 Micro-organisms ceasing to be reasonably

available ..........................................................................32

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Division 3—Priority dates 34

43 Priority dates ...................................................................34

43AA Disclosure in basic applications ......................................35

Part 2—Examination of standard patent requests and

specifications 37

Division 1A—Preliminary search and opinion 37

43A Preliminary search and opinion .......................................37

Division 1—Examination 38

44 Request for examination..................................................38

45 Examination ....................................................................38

Part 3—Acceptance 40

Division 1—Acceptance of standard patents 40

49 Acceptance of patent request: standard patent.................40

49A Postponing acceptance of patent request: standard

patent...............................................................................41

50 Application or grant may be refused in certain

cases ................................................................................41

50A Revocation of acceptance ................................................42

51 Appeal .............................................................................43

Division 2—Acceptance of innovation patents 44

52 Formalities check and acceptance of innovation

patents .............................................................................44

Chapter 4—Publication 45 53 Publication of certain information about applicants

etc. ...................................................................................45

54 Notice of publication .......................................................45

55 Documents open to public inspection..............................47

56 Certain documents not to be published............................47

56A Publication and inspection of PCT applications ..............48

57 Effect of publication of complete specification ...............48

58 Result of search may be disclosed ...................................49

Chapter 5—Opposition to grant of standard patent 50 59 Opposition to grant of standard patent.............................50

60 Hearing and decision by Commissioner ..........................50

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Chapter 6—Grant and term of patents 52

Part 1—Grant 52 61 Grant of standard patent ..................................................52

62 Grant and publication of innovation patent .....................52

63 Joint patentees .................................................................53

64 Grant: multiple applications ............................................53

65 Date of patent ..................................................................53

Part 2—Term 55 67 Term of standard patent...................................................55

68 Term of innovation patent ...............................................55

Part 3—Extension of term of standard patents relating to

pharmaceutical substances 56 70 Applications for extension of patent................................56

71 Form and timing of an application ..................................57

72 Notification and public inspection of application ............58

73 Withdrawal of application ...............................................58

74 Acceptance or refusal of application ...............................59

75 Opposition to grant of extension .....................................59

76 Grant of extension ...........................................................60

77 Calculation of term of extension .....................................60

78 Exclusive rights of patentee are limited if

extension granted.............................................................60

79 Rights of patentee if extension granted after patent

expires .............................................................................61

79A Commissioner not to make decision if court

proceedings pending........................................................62

Chapter 6A—Divisional applications 63 79B Divisional applications prior to grant of patent ...............63

79C Divisional applications for innovation patents may

be made after grant of an innovation patent ....................64

Chapter 7—Patents of addition 65 80 Chapter does not apply to innovation patents ..................65

81 Grant of patent of addition ..............................................65

82 Revocation of patent and grant of patent of

addition instead ...............................................................65

83 Term of patent of addition...............................................66

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85 Revocation of patent for main invention .........................67

86 Renewal fees not payable ................................................67

87 Fees payable where patent of addition becomes an

independent patent...........................................................67

Chapter 9—Re-examination of standard patents 68 96A Chapter does not apply to innovation patents ..................68

97 Re-examination of complete specifications .....................68

98 Report on re-examination ................................................69

99 Statement by applicant or patentee ..................................69

100 Copies of report to be given to court ...............................69

100A Refusal to grant patent—re-examination before

grant ................................................................................69

101 Revocation of patent—re-examination after grant ..........70

Chapter 9A—Examination, re-examination and

opposition-innovation patents 72

Part 1—Examination of innovation patents 72 101A Examination may be requested or Commissioner

may decide to examine ....................................................72

101B Examination of an innovation patent ...............................72

101C How and when examination to be carried out .................73

101E Certificate of examination ...............................................73

101EA Revocation of certificate of examination.........................74

101F Revocation of innovation patents following

examination under section 101B .....................................75

Part 2—Re-examination of innovation patents 77 101G Re-examination of complete specifications of

innovation patents ...........................................................77

101H Patentee statements..........................................................78

101J Revocation of innovation patent following

re-examination.................................................................78

101K Relevant proceedings and re-examination.......................79

101L Copies of report to be given to court ...............................79

Part 3—Opposition to innovation patents 80 101M Opposition to innovation patent ......................................80

101N Hearing and decision by the Commissioner ....................80

101P Relevant proceedings and opposition ..............................81

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Chapter 10—Amendments 82

Part 1—Amendments that are not allowable 82 102 What amendments are not allowable? .............................82

103 Consent of mortgagee or exclusive licensee

needed .............................................................................83

Part 2—Amendments of patent requests, specifications and

other filed documents 85 104 Amendments by applicants and patentees .......................85

105 Amendments directed by court........................................85

106 Amendments directed by Commissioner: patents............86

107 Amendments directed by Commissioner:

applications for standard patents .....................................87

109 Appeal .............................................................................88

Part 3—Miscellaneous 89 110 Advertisement of amendment of complete

specification ....................................................................89

112 Pending proceedings........................................................89

112A Decisions on appeal.........................................................89

113 Persons claiming under assignment or agreement ...........89

114 Priority date of claims of certain amended

specifications...................................................................90

114A Objection cannot be taken to certain amended

specifications...................................................................90

115 Restriction on recovery of damages etc...........................91

116 Interpretation of amended specifications.........................91

Chapter 11—Infringement 92

Part 1—Infringement and infringement proceedings 92 117 Infringement by supply of products.................................92

118 Infringement exemptions: use in or on foreign

vessels, aircraft or vehicles..............................................92

119 Infringement exemptions: prior use.................................93

119A Infringement exemptions: acts for obtaining

regulatory approval of pharmaceuticals...........................95

119B Infringement exemptions: acts for obtaining

regulatory approval (non-pharmaceuticals) .....................96

119C Infringement exemptions: acts for experimental

purposes ..........................................................................96

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120 Infringement proceedings................................................97

121 Counter-claim for revocation of patent............................97

121A Burden of proof—infringement of patent for a

process.............................................................................98

122 Relief for infringement of patent .....................................98

123 Innocent infringement .....................................................99

Part 2—Non-infringement declarations 100 124 Interpretation .................................................................100

125 Application for non-infringement declaration ...............100

126 Proceedings for non-infringement declarations .............100

127 Effect of non-infringement declarations........................101

Part 3—Unjustified threats of infringement proceedings 102 128 Application for relief from unjustified threats ...............102

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 ..............................................................................103

130 Counter-claim for infringement.....................................104

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

214A Approved means of filing documents............................174

214B Directions by Commissioner for filing of

documents .....................................................................175

214C Directions by Commissioner for filing of evidence.......175

215 Death of applicant or nominated person ........................176

216 Exercise of discretionary power by Commissioner .......176

217 Assessors .......................................................................176

218 Costs where patent invalid in part .................................177

219 Security for costs ...........................................................177

220 Costs of attendance of patent attorney...........................177

220A Notifications by Commissioner under this Act..............177

221 Service of documents ....................................................178

222 Publication of Official Journal etc. ...............................178

222A Doing act when Patent Office reopens after end of

period otherwise provided for doing act ........................179

223 Extensions of time .........................................................180

223A Computerised decision-making .....................................182

224 Review of decisions.......................................................183

225 Conduct of employees and agents of natural

persons ..........................................................................184

226 Documents open to public inspection do not

infringe copyright ..........................................................185

227 Fees payable under this Act...........................................186

227AAA Approved means of paying a fee ...................................187

227AB Application of administrative law regime to

decisions made in New Zealand ....................................188

227A Trans-Tasman IP Attorneys Board ................................188

227B Publishing personal information of registered

patent attorneys .............................................................192

228 Regulations....................................................................193

229 Instrument determining formalities requirements

for patent documents .....................................................199

Chapter 23—Transitional and savings provisions 231 Application of Part III of 1989 Amending Act..............200

233 Patents granted under 1952 Act.....................................200

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234 Applications under 1952 Act.........................................200

235 Other applications and proceedings under 1952

Act.................................................................................202

236 Micro-organisms ...........................................................202

237 Orders, directions etc. under 1952 Act ..........................202

238 The Commissioner and Deputy Commissioner .............202

239 The Register of Patents and Register of Patent

Attorneys .......................................................................202

240 Registered patent attorneys............................................203

Schedule 1—Dictionary 204

Endnotes 217

Endnote 1—About the endnotes 217

Endnote 2—Abbreviation key 219

Endnote 3—Legislation history 220

Endnote 4—Amendment history 226

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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:

application Board Convention

approved form Budapest Treaty application

associated certified Convention country

technology claim deposit requirements

Australia commencing day depositary institution

Australian Commissioner Deputy

continental shelf company Commissioner

Australian Register compensable person Designated Manager

of Therapeutic complete Director

Goods specification director

authority Convention applicant Director-General of

basic application IP Australia

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Section 3

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

preferred means

preliminary search

and opinion

prescribed court

prescribed depositary

institution

prior art base

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

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Section 5

Statute of therapeutic use 1952 Act

Monopolies this Act 1989 Amending Act

supply TRIPS Agreement

Territory work

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.

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Section 7

[Note: see sections 41 and 42]

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

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Section 7A

subsection (2) could, before the priority date of the relevant

claim, be reasonably expected to have combined.

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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Section 10

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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Patent rights, ownership and validity Chapter 2

Patent rights Part 1

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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Chapter 2 Patent rights, ownership and validity

Part 2 Ownership

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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Section 17

(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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Chapter 2 Patent rights, ownership and validity

Part 3 Validity

Division 1 Validity

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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Validity Division 1

Section 19

(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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Chapter 2 Patent rights, ownership and validity

Part 3 Validity

Division 1 Validity

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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Validity Part 3

Matters not affecting validity Division 2

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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Part 3 Validity

Division 2 Matters not affecting validity

Section 25

(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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Matters not affecting validity Division 2

Section 26

(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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Chapter 2 Patent rights, ownership and validity

Part 3 Validity

Division 3 Notice of matters affecting validity

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:

(a) notify the applicant for the patent of any matter of which the

Commissioner is notified under subsection (1); and

(b) give the applicant for the patent a copy of any document

accompanying the notice under subsection (1).

(2A) Without limiting paragraph (2)(b), the Commissioner may give the

copy by:

(a) making the copy available to the applicant for the patent in

an electronic form; and

(b) notifying the applicant for the patent that the copy is

available.

(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).

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Section 28

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.

How notice must be given

(3) Notice must be given in accordance with the regulations.

Commissioner must notify patentee of notice given

(4) The Commissioner must:

(a) notify the patentee of any matter of which the Commissioner

is notified under subsection (1); and

(b) give the patentee a copy of any document accompanying the

notice under subsection (1).

(4A) Without limiting paragraph (4)(b), the Commissioner may give the

copy by:

(a) making the copy available to the patentee in an electronic

form; and

(b) notifying the patentee that the copy is available.

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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Chapter 3 From application to acceptance

Part 1 Patent applications

Division 1 Applications

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:

(a) be in the approved form; and

(b) be in English; and

(c) be accompanied by a provisional specification.

(4) The provisional specification referred to in paragraph (3)(c) must:

(a) be in the approved form; and

(b) be in English.

(4A) A patent request in relation to a complete application must:

(a) be in the approved form; and

(b) be in English; and

(c) be accompanied by a complete specification; and

(d) comply with the formalities requirements determined in an

instrument under section 229.

(4B) The complete specification referred to in paragraph (4A)(c) must:

(a) be in the approved form; and

(b) be in English; and

(c) comply with the formalities requirements determined in an

instrument under section 229.

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Section 29A

(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, graphics, photographs and claims

contained in a PCT application are to be treated as a complete

specification filed in respect of the application.

(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.

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Part 1 Patent applications

Division 1 Applications

Section 29B

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

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.

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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.

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:

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(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;

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:

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(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

(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.

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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);

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

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(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.

(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;

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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

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.

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(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.

(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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Division 2 Specifications

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,

drawings, graphics or photographs unless absolutely necessary to

define the invention.

(4) The claim or claims must relate to one invention only.

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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:

(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:

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(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

(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.

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(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.

(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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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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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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Preliminary search and opinion Division 1A

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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Division 1 Examination

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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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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Part 3 Acceptance

Division 1 Acceptance of standard patents

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 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 of the reasons

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Acceptance of standard patents Division 1

Section 49A

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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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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From application to acceptance Chapter 3

Acceptance Part 3

Acceptance of standard patents Division 1

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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Chapter 3 From application to acceptance

Part 3 Acceptance

Division 2 Acceptance of innovation patents

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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Publication Chapter 4

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

(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;

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Publication Chapter 4

Section 55

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.

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

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Chapter 4 Publication

Section 56A

(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:

(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:

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Section 58

(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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Chapter 5 Opposition to grant of standard patent

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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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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Chapter 6 Grant and term of patents

Part 1 Grant

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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Grant Part 1

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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Part 1 Grant

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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Grant and term of patents Chapter 6

Term Part 2

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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Chapter 6 Grant and term of patents

Part 3 Extension of term of standard patents relating to pharmaceutical substances

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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(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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Section 72

(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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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 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 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.

(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.

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(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 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.

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:

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(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;

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.

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Section 79A

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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Divisional applications Chapter 6A

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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Chapter 6A Divisional applications

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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Patents of addition Chapter 7

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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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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Chapter 9 Re-examination of standard patents

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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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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Chapter 9A Examination, re-examination and opposition-innovation patents

Part 1 Examination of innovation patents

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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Section 101C

(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 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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Section 101EA

(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.

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:

(a) the certificate of examination should not have been issued,

taking account of all the circumstances that existed when the

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Examination of innovation patents Part 1

Section 101F

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

purposes of removing a ground for the revocation of the

patent and the patentee has failed to do so.

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Section 101F

(4) An appeal lies to the Federal Court against a decision of the

Commissioner revoking a patent.

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Re-examination of innovation patents Part 2

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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Chapter 9A Examination, re-examination and opposition-innovation patents

Part 3 Opposition to innovation patents

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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Chapter 10 Amendments

Part 1 Amendments that are not allowable

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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Amendments that are not allowable Part 1

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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Part 1 Amendments that are not allowable

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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Amendments Chapter 10

Amendments of patent requests, specifications and other filed documents Part 2

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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Part 2 Amendments of patent requests, specifications and other filed documents

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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(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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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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(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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(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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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

Section 124

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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Part 3 Unjustified threats of infringement proceedings

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.

(1A) The court may include an additional amount in an assessment of

damages sustained by the applicant as a result of the unjustifiable

threats, if the court considers it appropriate to do so having regard

to:

(a) the flagrancy of the threats; and

(b) the need to deter similar threats; and

(c) the conduct of the person who made the threats, being

conduct that occurred after the person made the threats; and

(d) any benefit shown to have accrued to the person who made

the threats because of the threats; and

(e) all other relevant matters.

(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.

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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.

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

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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.

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)).

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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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Part 1 Introduction

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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Section 132B

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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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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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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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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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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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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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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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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Section 143

(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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Contracts Chapter 14

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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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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Chapter 15 Special provisions relating to associated technology

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, drawings, graphics and photographs

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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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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Exploitation by the Crown Part 2

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, drawings, graphics and photographs

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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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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(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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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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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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Section 192

(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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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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(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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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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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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(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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Chapter 22—Miscellaneous

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

For the purposes of this Act, a document may be filed with the

Patent Office by a means determined in an instrument under

subsection 214A(1).

214A Approved means of filing documents

(1) For the purposes of section 214, the Commissioner may, by

writing, determine one or more means for filing a document with

the Patent Office.

(2) The means may be an electronic means or any other means.

(3) The Commissioner must publish a notice in the Official Journal

setting out the determination.

(4) The Commissioner may, in a determination under subsection (1),

specify that one or more means for filing a document with the

Patent Office are preferred means.

Note: Under the regulations, reduced fees may be payable for filing a

document by preferred means.

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(5) A determination under subsection (1) is not a legislative

instrument.

214B Directions by Commissioner for filing of documents

(1) The Commissioner may, by writing, give a direction specifying the

form in which a document is to be filed under this Act.

Note 1: A reference to this Act includes the regulations (see Schedule 1).

Note 2: See also paragraph 228(2)(ba) (about regulations).

(2) Subsection (1) does not apply in relation to a document that is

required to be in an approved form.

(3) The Commissioner must publish a notice in the Official Journal

setting out the direction.

(4) A direction under subsection (1) is not a legislative instrument.

214C Directions by Commissioner for filing of evidence

(1) The Commissioner may, by writing, give a direction in relation to

the filing of evidence in connection with a matter arising under this

Act.

Note 1: A reference to this Act includes the regulations (see Schedule 1).

Note 2: See also paragraph 228(2)(bb) (about regulations).

(2) Without limiting subsection (1), a direction under that subsection

may relate to the following:

(a) the number of copies of evidence to be filed;

(b) the form in which evidence is to be filed (including the

circumstances in which physical articles, other than

documents, are or are not permitted to be filed);

(c) the means by which evidence is to be filed.

(3) Without limiting paragraph (2)(b), a direction under subsection (1)

may require that evidence in writing be in the form of a

declaration.

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(4) The Commissioner must publish a notice in the Official Journal

setting out a direction under subsection (1).

(5) A direction under subsection (1) is not a legislative instrument.

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.

(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.

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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.

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.

220A Notifications by Commissioner under this Act

(1) If under this Act the Commissioner is required or permitted:

(a) to notify a person of a matter; or

(b) to notify a person that the person is required to do a thing;

the Commissioner may so notify the person by any means of

communication (including by electronic means).

Note 1: A reference to this Act includes the regulations (see Schedule 1).

Note 2: Section 221 deals with the service etc. of documents on a person.

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(2) However, the notification must be by a means of communication

such that the content of the notification is readily accessible so as

to be usable for subsequent reference.

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.

(3) The Commissioner may prepare, publish and sell such documents

relating to inventions and patents as the Commissioner thinks fit.

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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.

Exception for prescribed act

(7) This section does not apply to a prescribed act.

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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;

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.

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(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.

(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.

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(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.

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

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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

(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

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(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.

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

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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

(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

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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.

(2A) Without limiting subsection (1), different fees may be prescribed

for filing a document with the Patent Office according to the means

by which the document is filed.

(2B) Without limiting subsection (1), different amounts of a fee may be

prescribed according to the means by which the fee is paid.

(2C) A fee must be paid by a means determined in an instrument under

subsection 227AAA(1).

(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.

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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).

227AAA Approved means of paying a fee

(1) For the purposes of subsection 227(2C), the Commissioner may,

by writing, determine one or more means for paying a fee.

(2) The means may be an electronic means or any other means.

(3) The Commissioner must publish a notice in the Official Journal

setting out the determination.

(4) The Commissioner may, in a determination under subsection (1),

specify that one or more means for paying a fee are preferred

means.

Note: Under the regulations, the amount of a fee may be reduced for paying

the fee by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

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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.

(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:

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(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);

(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.

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(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;

(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;

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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).

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

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(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

(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;

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(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.

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

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(b) making provision for and in relation to the reports to be made

in relation to an examination and a re-examination; and

(ba) making provision for and in relation to the following:

(i) the requirements for filing a document under this Act

(including the requirement that the document must be in

the form (if any) specified in a direction under

section 214B);

(ii) the consequences of a document not being in

accordance with an approved form or not complying

with the requirements referred to in subparagraph (i);

and

(bb) making provision for and in relation to the consequences of

not complying with a direction under section 214C; 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

(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) and 29(4A) and (4B)) 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

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to ensure that those formalities requirements are met;

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 applicant has complied

with subsection 29A(5);

(ii) empowering the Commissioner to direct an applicant to

do such things as are necessary to ensure that those

requirements are met;

(iii) providing for the lapsing of the PCT application if such

a direction is not complied with within a time specified

in the regulations;

(ia) making provision for and in relation to:

(i) empowering the Commissioner, in relation to a

provisional patent application, to direct the applicant to

do such things as are necessary to ensure that the

provisional specification complies with the

requirements of subsection 29(4); and

(ii) the provisional specification being taken not to have

been filed if such a direction is not complied with within

a time specified in the regulations; and

(j) empowering the Commissioner to direct an applicant for a

standard patent to do such things as are necessary to ensure

that the patent request or complete specification is in

accordance with the requirements of subsection 29(4A) or

(4B) 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

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(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:

(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);

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(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

(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

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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.

(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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229 Instrument determining formalities requirements for patent

documents

(1) The Commissioner may, by written instrument, determine

formalities requirements for the purposes of the following:

(a) paragraphs 29(4A)(d) and (4B)(c);

(b) a provision of the regulations, if that provision refers to this

section.

(2) The Commissioner must publish a notice in the Official Journal

setting out the determination.

(3) A determination under subsection (1) is not a legislative

instrument.

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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

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.

preferred means:

(a) in relation to filing a document with the Patent Office—

means the means specified under subsection 214A(4); or

(b) in relation to paying a fee—means the means specified under

subsection 227AAA(4).

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

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(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:

(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

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(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.

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.

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Safeguards Act means the Nuclear Non-Proliferation (Safeguards)

Act 1987.

specification, in relation to an international application, means the

description, claims, drawings, graphics and photographs contained

in the application.

standard patent means letters patent for an invention granted under

section 61.

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).

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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.

1989 Amending Act means the Patents Amendment Act 1989.

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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

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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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Endnotes

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

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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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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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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 (items 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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Endnotes

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 111,

151, 156, 194,

209, 242, 312)

200, 209): 24 Feb 2019

(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

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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Endnotes

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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Endnotes

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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Endnotes

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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Endnotes

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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Endnotes

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

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

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

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

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

Schedule 2..................................... rep No 103, 2013

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其他文本 世贸组织通知首页 (3 文本) 世贸组织通知首页 (3 文本) 英语 Patents Act 1990 (consolidated as of February 24, 2019) 法语 Loi de 1990 sur les brevets (version consolidée du 24 février 2019) 西班牙语 Ley de 1990 sobre las Patentes (versión consolidada de 24 de febrero de 2019)
 Patents Act 1990 (consolidated as of February 24, 2019)

Authorised Version C2019C00088 registered 25/02/2019

Patents Act 1990

No. 83, 1990

Compilation No. 43

Compilation date: 24 February 2019

Includes amendments up to: Act No. 77, 2018

Registered: 25 February 2019

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 24 February 2019 (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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1

Contents

Chapter 1—Introductory 1 Short title...........................................................................1

2 Commencement.................................................................1

3 Definitions.........................................................................1

5 Associated applications .....................................................3

6 Deposit requirements.........................................................3

7 Novelty, inventive step and innovative step ......................4

7A Meaning of useful..............................................................5

9 Secret use ..........................................................................6

10 Certain international applications to be taken to

have been given an international filing date ......................7

11 Act binds the Crown..........................................................7

12 Application of Act .............................................................7

12A Application of the Criminal Code .....................................8

Chapter 2—Patent rights, ownership and validity 9

Part 1—Patent rights 9 13 Exclusive rights given by patent........................................9

14 Assignment of patent.........................................................9

Part 2—Ownership 10 15 Who may be granted a patent? ........................................10

16 Co-ownership of patents..................................................10

17 Directions to co-owners...................................................11

Part 3—Validity 12

Division 1—Validity 12

18 Patentable inventions.......................................................12

19 Certificate of validity.......................................................13

20 Validity of patent not guaranteed ....................................14

21 Validity not implied by making or refusal of

non-infringement declaration ..........................................14

Division 2—Matters not affecting validity 15

22A Validity not affected by who patent is granted to ............15

22 Invalidity in relation to one claim not to affect

validity in relation to other claims ...................................15

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23 Validity not affected by publication etc. after

priority date .....................................................................15

24 Validity not affected by making information

available in certain circumstances ...................................15

25 Validity: patents of addition ............................................16

26 Validity not affected in certain cases involving

amendments.....................................................................16

Division 3—Notice of matters affecting validity 18

27 Notice of matters affecting validity of standard

patents .............................................................................18

28 Notice of matters affecting validity of innovation

patents .............................................................................18

Chapter 3—From application to acceptance 20

Part 1—Patent applications 20

Division 1—Applications 20

29 Application for patent—general rules .............................20

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. .....................................23

33 Applications by opponents etc.........................................23

34 Applications by eligible persons arising out of

Court proceedings ...........................................................26

35 Applications by eligible persons following

revocation by Commissioner ...........................................26

36 Other applications by eligible persons.............................27

37 Complete application may be treated as

provisional.......................................................................28

38 Time for making complete application............................29

Division 2—Specifications 30

40 Specifications ..................................................................30

41 Specifications: micro-organisms .....................................31

42 Micro-organisms ceasing to be reasonably

available ..........................................................................32

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Division 3—Priority dates 34

43 Priority dates ...................................................................34

43AA Disclosure in basic applications ......................................35

Part 2—Examination of standard patent requests and

specifications 37

Division 1A—Preliminary search and opinion 37

43A Preliminary search and opinion .......................................37

Division 1—Examination 38

44 Request for examination..................................................38

45 Examination ....................................................................38

Part 3—Acceptance 40

Division 1—Acceptance of standard patents 40

49 Acceptance of patent request: standard patent.................40

49A Postponing acceptance of patent request: standard

patent...............................................................................41

50 Application or grant may be refused in certain

cases ................................................................................41

50A Revocation of acceptance ................................................42

51 Appeal .............................................................................43

Division 2—Acceptance of innovation patents 44

52 Formalities check and acceptance of innovation

patents .............................................................................44

Chapter 4—Publication 45 53 Publication of certain information about applicants

etc. ...................................................................................45

54 Notice of publication .......................................................45

55 Documents open to public inspection..............................47

56 Certain documents not to be published............................47

56A Publication and inspection of PCT applications ..............48

57 Effect of publication of complete specification ...............48

58 Result of search may be disclosed ...................................49

Chapter 5—Opposition to grant of standard patent 50 59 Opposition to grant of standard patent.............................50

60 Hearing and decision by Commissioner ..........................50

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Chapter 6—Grant and term of patents 52

Part 1—Grant 52 61 Grant of standard patent ..................................................52

62 Grant and publication of innovation patent .....................52

63 Joint patentees .................................................................53

64 Grant: multiple applications ............................................53

65 Date of patent ..................................................................53

Part 2—Term 55 67 Term of standard patent...................................................55

68 Term of innovation patent ...............................................55

Part 3—Extension of term of standard patents relating to

pharmaceutical substances 56 70 Applications for extension of patent................................56

71 Form and timing of an application ..................................57

72 Notification and public inspection of application ............58

73 Withdrawal of application ...............................................58

74 Acceptance or refusal of application ...............................59

75 Opposition to grant of extension .....................................59

76 Grant of extension ...........................................................60

77 Calculation of term of extension .....................................60

78 Exclusive rights of patentee are limited if

extension granted.............................................................60

79 Rights of patentee if extension granted after patent

expires .............................................................................61

79A Commissioner not to make decision if court

proceedings pending........................................................62

Chapter 6A—Divisional applications 63 79B Divisional applications prior to grant of patent ...............63

79C Divisional applications for innovation patents may

be made after grant of an innovation patent ....................64

Chapter 7—Patents of addition 65 80 Chapter does not apply to innovation patents ..................65

81 Grant of patent of addition ..............................................65

82 Revocation of patent and grant of patent of

addition instead ...............................................................65

83 Term of patent of addition...............................................66

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85 Revocation of patent for main invention .........................67

86 Renewal fees not payable ................................................67

87 Fees payable where patent of addition becomes an

independent patent...........................................................67

Chapter 9—Re-examination of standard patents 68 96A Chapter does not apply to innovation patents ..................68

97 Re-examination of complete specifications .....................68

98 Report on re-examination ................................................69

99 Statement by applicant or patentee ..................................69

100 Copies of report to be given to court ...............................69

100A Refusal to grant patent—re-examination before

grant ................................................................................69

101 Revocation of patent—re-examination after grant ..........70

Chapter 9A—Examination, re-examination and

opposition-innovation patents 72

Part 1—Examination of innovation patents 72 101A Examination may be requested or Commissioner

may decide to examine ....................................................72

101B Examination of an innovation patent ...............................72

101C How and when examination to be carried out .................73

101E Certificate of examination ...............................................73

101EA Revocation of certificate of examination.........................74

101F Revocation of innovation patents following

examination under section 101B .....................................75

Part 2—Re-examination of innovation patents 77 101G Re-examination of complete specifications of

innovation patents ...........................................................77

101H Patentee statements..........................................................78

101J Revocation of innovation patent following

re-examination.................................................................78

101K Relevant proceedings and re-examination.......................79

101L Copies of report to be given to court ...............................79

Part 3—Opposition to innovation patents 80 101M Opposition to innovation patent ......................................80

101N Hearing and decision by the Commissioner ....................80

101P Relevant proceedings and opposition ..............................81

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Chapter 10—Amendments 82

Part 1—Amendments that are not allowable 82 102 What amendments are not allowable? .............................82

103 Consent of mortgagee or exclusive licensee

needed .............................................................................83

Part 2—Amendments of patent requests, specifications and

other filed documents 85 104 Amendments by applicants and patentees .......................85

105 Amendments directed by court........................................85

106 Amendments directed by Commissioner: patents............86

107 Amendments directed by Commissioner:

applications for standard patents .....................................87

109 Appeal .............................................................................88

Part 3—Miscellaneous 89 110 Advertisement of amendment of complete

specification ....................................................................89

112 Pending proceedings........................................................89

112A Decisions on appeal.........................................................89

113 Persons claiming under assignment or agreement ...........89

114 Priority date of claims of certain amended

specifications...................................................................90

114A Objection cannot be taken to certain amended

specifications...................................................................90

115 Restriction on recovery of damages etc...........................91

116 Interpretation of amended specifications.........................91

Chapter 11—Infringement 92

Part 1—Infringement and infringement proceedings 92 117 Infringement by supply of products.................................92

118 Infringement exemptions: use in or on foreign

vessels, aircraft or vehicles..............................................92

119 Infringement exemptions: prior use.................................93

119A Infringement exemptions: acts for obtaining

regulatory approval of pharmaceuticals...........................95

119B Infringement exemptions: acts for obtaining

regulatory approval (non-pharmaceuticals) .....................96

119C Infringement exemptions: acts for experimental

purposes ..........................................................................96

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120 Infringement proceedings................................................97

121 Counter-claim for revocation of patent............................97

121A Burden of proof—infringement of patent for a

process.............................................................................98

122 Relief for infringement of patent .....................................98

123 Innocent infringement .....................................................99

Part 2—Non-infringement declarations 100 124 Interpretation .................................................................100

125 Application for non-infringement declaration ...............100

126 Proceedings for non-infringement declarations .............100

127 Effect of non-infringement declarations........................101

Part 3—Unjustified threats of infringement proceedings 102 128 Application for relief from unjustified threats ...............102

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 ..............................................................................103

130 Counter-claim for infringement.....................................104

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

214A Approved means of filing documents............................174

214B Directions by Commissioner for filing of

documents .....................................................................175

214C Directions by Commissioner for filing of evidence.......175

215 Death of applicant or nominated person ........................176

216 Exercise of discretionary power by Commissioner .......176

217 Assessors .......................................................................176

218 Costs where patent invalid in part .................................177

219 Security for costs ...........................................................177

220 Costs of attendance of patent attorney...........................177

220A Notifications by Commissioner under this Act..............177

221 Service of documents ....................................................178

222 Publication of Official Journal etc. ...............................178

222A Doing act when Patent Office reopens after end of

period otherwise provided for doing act ........................179

223 Extensions of time .........................................................180

223A Computerised decision-making .....................................182

224 Review of decisions.......................................................183

225 Conduct of employees and agents of natural

persons ..........................................................................184

226 Documents open to public inspection do not

infringe copyright ..........................................................185

227 Fees payable under this Act...........................................186

227AAA Approved means of paying a fee ...................................187

227AB Application of administrative law regime to

decisions made in New Zealand ....................................188

227A Trans-Tasman IP Attorneys Board ................................188

227B Publishing personal information of registered

patent attorneys .............................................................192

228 Regulations....................................................................193

229 Instrument determining formalities requirements

for patent documents .....................................................199

Chapter 23—Transitional and savings provisions 231 Application of Part III of 1989 Amending Act..............200

233 Patents granted under 1952 Act.....................................200

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234 Applications under 1952 Act.........................................200

235 Other applications and proceedings under 1952

Act.................................................................................202

236 Micro-organisms ...........................................................202

237 Orders, directions etc. under 1952 Act ..........................202

238 The Commissioner and Deputy Commissioner .............202

239 The Register of Patents and Register of Patent

Attorneys .......................................................................202

240 Registered patent attorneys............................................203

Schedule 1—Dictionary 204

Endnotes 217

Endnote 1—About the endnotes 217

Endnote 2—Abbreviation key 219

Endnote 3—Legislation history 220

Endnote 4—Amendment history 226

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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:

application Board Convention

approved form Budapest Treaty application

associated certified Convention country

technology claim deposit requirements

Australia commencing day depositary institution

Australian Commissioner Deputy

continental shelf company Commissioner

Australian Register compensable person Designated Manager

of Therapeutic complete Director

Goods specification director

authority Convention applicant Director-General of

basic application IP Australia

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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

preferred means

preliminary search

and opinion

prescribed court

prescribed depositary

institution

prior art base

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

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Section 5

Statute of therapeutic use 1952 Act

Monopolies this Act 1989 Amending Act

supply TRIPS Agreement

Territory work

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.

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Section 7

[Note: see sections 41 and 42]

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

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Section 7A

subsection (2) could, before the priority date of the relevant

claim, be reasonably expected to have combined.

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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Section 10

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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Patent rights, ownership and validity Chapter 2

Patent rights Part 1

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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Part 2 Ownership

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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Chapter 2 Patent rights, ownership and validity

Part 3 Validity

Division 1 Validity

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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Division 1 Validity

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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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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Section 25

(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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Part 3 Validity

Division 3 Notice of matters affecting validity

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:

(a) notify the applicant for the patent of any matter of which the

Commissioner is notified under subsection (1); and

(b) give the applicant for the patent a copy of any document

accompanying the notice under subsection (1).

(2A) Without limiting paragraph (2)(b), the Commissioner may give the

copy by:

(a) making the copy available to the applicant for the patent in

an electronic form; and

(b) notifying the applicant for the patent that the copy is

available.

(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).

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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.

How notice must be given

(3) Notice must be given in accordance with the regulations.

Commissioner must notify patentee of notice given

(4) The Commissioner must:

(a) notify the patentee of any matter of which the Commissioner

is notified under subsection (1); and

(b) give the patentee a copy of any document accompanying the

notice under subsection (1).

(4A) Without limiting paragraph (4)(b), the Commissioner may give the

copy by:

(a) making the copy available to the patentee in an electronic

form; and

(b) notifying the patentee that the copy is available.

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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Chapter 3 From application to acceptance

Part 1 Patent applications

Division 1 Applications

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:

(a) be in the approved form; and

(b) be in English; and

(c) be accompanied by a provisional specification.

(4) The provisional specification referred to in paragraph (3)(c) must:

(a) be in the approved form; and

(b) be in English.

(4A) A patent request in relation to a complete application must:

(a) be in the approved form; and

(b) be in English; and

(c) be accompanied by a complete specification; and

(d) comply with the formalities requirements determined in an

instrument under section 229.

(4B) The complete specification referred to in paragraph (4A)(c) must:

(a) be in the approved form; and

(b) be in English; and

(c) comply with the formalities requirements determined in an

instrument under section 229.

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Section 29A

(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, graphics, photographs and claims

contained in a PCT application are to be treated as a complete

specification filed in respect of the application.

(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.

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Section 29B

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

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.

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Section 30

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.

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:

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(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;

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:

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(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

(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.

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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);

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

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(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.

(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;

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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

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.

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(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.

(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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Chapter 3 From application to acceptance

Part 1 Patent applications

Division 2 Specifications

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,

drawings, graphics or photographs unless absolutely necessary to

define the invention.

(4) The claim or claims must relate to one invention only.

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Section 41

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:

(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:

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Section 42

(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

(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.

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Specifications Division 2

Section 42

(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.

(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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Chapter 3 From application to acceptance

Part 1 Patent applications

Division 3 Priority dates

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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Examination of standard patent requests and specifications Part 2

Preliminary search and opinion Division 1A

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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Chapter 3 From application to acceptance

Part 2 Examination of standard patent requests and specifications

Division 1 Examination

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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Examination Division 1

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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Chapter 3 From application to acceptance

Part 3 Acceptance

Division 1 Acceptance of standard patents

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 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 of the reasons

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Acceptance Part 3

Acceptance of standard patents Division 1

Section 49A

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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Division 1 Acceptance of standard patents

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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Acceptance Part 3

Acceptance of standard patents Division 1

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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Chapter 3 From application to acceptance

Part 3 Acceptance

Division 2 Acceptance of innovation patents

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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Publication Chapter 4

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

(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;

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Section 55

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.

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

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Section 56A

(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:

(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:

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Section 58

(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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Chapter 5 Opposition to grant of standard patent

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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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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Chapter 6 Grant and term of patents

Part 1 Grant

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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(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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(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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Term Part 2

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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Chapter 6 Grant and term of patents

Part 3 Extension of term of standard patents relating to pharmaceutical substances

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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(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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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 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 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.

(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.

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(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 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.

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:

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(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;

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.

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Section 79A

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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Divisional applications Chapter 6A

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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Chapter 6A Divisional applications

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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Patents of addition Chapter 7

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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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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Chapter 9 Re-examination of standard patents

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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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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Chapter 9A Examination, re-examination and opposition-innovation patents

Part 1 Examination of innovation patents

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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Section 101C

(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 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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Section 101EA

(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.

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:

(a) the certificate of examination should not have been issued,

taking account of all the circumstances that existed when the

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Section 101F

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

purposes of removing a ground for the revocation of the

patent and the patentee has failed to do so.

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(4) An appeal lies to the Federal Court against a decision of the

Commissioner revoking a patent.

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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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Part 3 Opposition to innovation patents

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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Chapter 10 Amendments

Part 1 Amendments that are not allowable

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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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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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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Amendments of patent requests, specifications and other filed documents Part 2

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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Part 2 Amendments of patent requests, specifications and other filed documents

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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(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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Miscellaneous Part 3

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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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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(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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Chapter 11 Infringement

Part 1 Infringement and infringement proceedings

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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Section 124

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.

(1A) The court may include an additional amount in an assessment of

damages sustained by the applicant as a result of the unjustifiable

threats, if the court considers it appropriate to do so having regard

to:

(a) the flagrancy of the threats; and

(b) the need to deter similar threats; and

(c) the conduct of the person who made the threats, being

conduct that occurred after the person made the threats; and

(d) any benefit shown to have accrued to the person who made

the threats because of the threats; and

(e) all other relevant matters.

(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.

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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.

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

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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.

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)).

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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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Section 136E

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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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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Section 143

(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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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, drawings, graphics and photographs

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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Special provisions relating to associated technology Chapter 15

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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Chapter 16 Jurisdiction and powers of courts

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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The Crown Chapter 17

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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Chapter 17 The Crown

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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The Crown Chapter 17

Exploitation by the Crown Part 2

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, drawings, graphics and photographs

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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Chapter 18 Miscellaneous offences

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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Miscellaneous offences Chapter 18

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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Chapter 18 Miscellaneous offences

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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The Register and official documents Chapter 19

Section 191

(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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Section 192

(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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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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Chapter 20 Patent Attorneys

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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Part 2 Offences

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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(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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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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Section 210A

(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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Chapter 22 Miscellaneous

Section 212

Chapter 22—Miscellaneous

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

For the purposes of this Act, a document may be filed with the

Patent Office by a means determined in an instrument under

subsection 214A(1).

214A Approved means of filing documents

(1) For the purposes of section 214, the Commissioner may, by

writing, determine one or more means for filing a document with

the Patent Office.

(2) The means may be an electronic means or any other means.

(3) The Commissioner must publish a notice in the Official Journal

setting out the determination.

(4) The Commissioner may, in a determination under subsection (1),

specify that one or more means for filing a document with the

Patent Office are preferred means.

Note: Under the regulations, reduced fees may be payable for filing a

document by preferred means.

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Section 214B

(5) A determination under subsection (1) is not a legislative

instrument.

214B Directions by Commissioner for filing of documents

(1) The Commissioner may, by writing, give a direction specifying the

form in which a document is to be filed under this Act.

Note 1: A reference to this Act includes the regulations (see Schedule 1).

Note 2: See also paragraph 228(2)(ba) (about regulations).

(2) Subsection (1) does not apply in relation to a document that is

required to be in an approved form.

(3) The Commissioner must publish a notice in the Official Journal

setting out the direction.

(4) A direction under subsection (1) is not a legislative instrument.

214C Directions by Commissioner for filing of evidence

(1) The Commissioner may, by writing, give a direction in relation to

the filing of evidence in connection with a matter arising under this

Act.

Note 1: A reference to this Act includes the regulations (see Schedule 1).

Note 2: See also paragraph 228(2)(bb) (about regulations).

(2) Without limiting subsection (1), a direction under that subsection

may relate to the following:

(a) the number of copies of evidence to be filed;

(b) the form in which evidence is to be filed (including the

circumstances in which physical articles, other than

documents, are or are not permitted to be filed);

(c) the means by which evidence is to be filed.

(3) Without limiting paragraph (2)(b), a direction under subsection (1)

may require that evidence in writing be in the form of a

declaration.

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(4) The Commissioner must publish a notice in the Official Journal

setting out a direction under subsection (1).

(5) A direction under subsection (1) is not a legislative instrument.

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.

(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.

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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.

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.

220A Notifications by Commissioner under this Act

(1) If under this Act the Commissioner is required or permitted:

(a) to notify a person of a matter; or

(b) to notify a person that the person is required to do a thing;

the Commissioner may so notify the person by any means of

communication (including by electronic means).

Note 1: A reference to this Act includes the regulations (see Schedule 1).

Note 2: Section 221 deals with the service etc. of documents on a person.

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(2) However, the notification must be by a means of communication

such that the content of the notification is readily accessible so as

to be usable for subsequent reference.

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.

(3) The Commissioner may prepare, publish and sell such documents

relating to inventions and patents as the Commissioner thinks fit.

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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.

Exception for prescribed act

(7) This section does not apply to a prescribed act.

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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;

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.

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(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.

(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.

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(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.

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

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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

(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

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(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.

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

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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

(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

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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.

(2A) Without limiting subsection (1), different fees may be prescribed

for filing a document with the Patent Office according to the means

by which the document is filed.

(2B) Without limiting subsection (1), different amounts of a fee may be

prescribed according to the means by which the fee is paid.

(2C) A fee must be paid by a means determined in an instrument under

subsection 227AAA(1).

(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.

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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).

227AAA Approved means of paying a fee

(1) For the purposes of subsection 227(2C), the Commissioner may,

by writing, determine one or more means for paying a fee.

(2) The means may be an electronic means or any other means.

(3) The Commissioner must publish a notice in the Official Journal

setting out the determination.

(4) The Commissioner may, in a determination under subsection (1),

specify that one or more means for paying a fee are preferred

means.

Note: Under the regulations, the amount of a fee may be reduced for paying

the fee by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

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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.

(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:

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(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);

(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.

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(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;

(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;

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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).

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

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(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

(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;

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(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.

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

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(b) making provision for and in relation to the reports to be made

in relation to an examination and a re-examination; and

(ba) making provision for and in relation to the following:

(i) the requirements for filing a document under this Act

(including the requirement that the document must be in

the form (if any) specified in a direction under

section 214B);

(ii) the consequences of a document not being in

accordance with an approved form or not complying

with the requirements referred to in subparagraph (i);

and

(bb) making provision for and in relation to the consequences of

not complying with a direction under section 214C; 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

(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) and 29(4A) and (4B)) 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

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to ensure that those formalities requirements are met;

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 applicant has complied

with subsection 29A(5);

(ii) empowering the Commissioner to direct an applicant to

do such things as are necessary to ensure that those

requirements are met;

(iii) providing for the lapsing of the PCT application if such

a direction is not complied with within a time specified

in the regulations;

(ia) making provision for and in relation to:

(i) empowering the Commissioner, in relation to a

provisional patent application, to direct the applicant to

do such things as are necessary to ensure that the

provisional specification complies with the

requirements of subsection 29(4); and

(ii) the provisional specification being taken not to have

been filed if such a direction is not complied with within

a time specified in the regulations; and

(j) empowering the Commissioner to direct an applicant for a

standard patent to do such things as are necessary to ensure

that the patent request or complete specification is in

accordance with the requirements of subsection 29(4A) or

(4B) 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

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(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:

(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);

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(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

(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

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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.

(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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229 Instrument determining formalities requirements for patent

documents

(1) The Commissioner may, by written instrument, determine

formalities requirements for the purposes of the following:

(a) paragraphs 29(4A)(d) and (4B)(c);

(b) a provision of the regulations, if that provision refers to this

section.

(2) The Commissioner must publish a notice in the Official Journal

setting out the determination.

(3) A determination under subsection (1) is not a legislative

instrument.

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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.

preferred means:

(a) in relation to filing a document with the Patent Office—

means the means specified under subsection 214A(4); or

(b) in relation to paying a fee—means the means specified under

subsection 227AAA(4).

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

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(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:

(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

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(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.

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.

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Safeguards Act means the Nuclear Non-Proliferation (Safeguards)

Act 1987.

specification, in relation to an international application, means the

description, claims, drawings, graphics and photographs contained

in the application.

standard patent means letters patent for an invention granted under

section 61.

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).

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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.

1989 Amending Act means the Patents Amendment Act 1989.

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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

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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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Endnotes

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

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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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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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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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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 (items 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 111,

151, 156, 194,

209, 242, 312)

200, 209): 24 Feb 2019

(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

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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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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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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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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Endnotes

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

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

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

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

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

Schedule 2..................................... rep No 103, 2013

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