This compilation was prepared on 1 January 2011 taking into account amendments up to Act No. 103 of 2010
The text of any of those amendments not in force on that date is appended in the Notes section
The operation of amendments that have been incorporated may be affected by application provisions that are set out in the Notes section
Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra
Chapter 1—Introductory
1 Short title [see Note 1].......................................................................1 2 Commencement [see Note 1].............................................................1 3 Definitions.........................................................................................1 4 What are the typical steps in getting and maintaining a
standard patent?.................................................................................5 5 Associated applications.....................................................................8 6 Deposit requirements.........................................................................8 7 Novelty and inventive step................................................................8 8 Disclosure in basic applications.......................................................10 9 Secret use.........................................................................................10 10 Certain international applications to be taken to have been
given an international filing date.....................................................11 11 Act binds the Crown........................................................................12 12 Application of Act...........................................................................12 12A Application of the Criminal Code ...................................................12
Chapter 2—Patent rights, ownership and validity 13
Part 1—Patent rights 13 13 Exclusive rights given by patent......................................................13 14 Assignment of patent.......................................................................13
Part 2—Ownership 14 15 Who may be granted a patent?.........................................................14 16 Co-ownership of patents..................................................................14 17 Directions to co-owners...................................................................15
Division 1—Validity 16 18 Patentable inventions.......................................................................16 19 Certificate of validity.......................................................................17 20 Validity of patent not guaranteed.....................................................17 21 Validity not implied by making or refusal of
non-infringement declaration...........................................................18
Division 2—Matters not affecting validity 19 22 Invalidity in relation to one claim not to affect validity in
relation to other claims....................................................................19 23 Validity not affected by publication etc. after priority date.............19 24 Validity not affected bycertain publication or use..........................19 25 Validity:patents of addition............................................................20 26 Validity not affected in certain cases involving amendments..........20
27 Notice of matters affecting validity of standard patents ..................21 28 Notice of matters affecting validity of innovation patents...............21
| Chapter 3—From application to acceptance | 23 |
| Part 1—Patent applications | 23 |
| Division 1—Applications | 23 |
29 Application for patent......................................................................23 30 Filing date........................................................................................23 31 Joint applicants................................................................................23 32 Disputes between applicants etc......................................................23 33 Applications by opponents etc.........................................................24 34 Applications by eligible persons arising out of Court
proceedings......................................................................................26 35 Applications by eligible persons following revocation by
Commissioner..................................................................................26 36 Other applications by eligible persons.............................................27 37 Complete application may be treated as provisional........................28 38 Time for making complete application............................................28
Division 2—Specifications 30 40 Specifications..................................................................................30 41 Specifications: micro-organisms .....................................................30 42 Micro-organisms ceasing to be reasonably available.......................31
Division 3—Priority dates 33 43 Priority dates....................................................................................33
Part 2—Examination of standard patent requests and specifications 34
Division 1—Examination 34 44 Request for examination..................................................................34 45 Examination [see also Table B].......................................................34 46 Request for deferment of examination.............................................35
Division 2—Modified examination 37 47 Request for modified examination...................................................37 48 Modified examination [see also Table B]........................................37
Part 3—Acceptance 38
Division 1—Acceptance of standard patents 38 49 Acceptance of patent request: standard patent.................................38 50 Application or grant may be refused in certain cases ......................39 51 Appeal.............................................................................................39
Division 2—Acceptance of innovation patents 40 52 Formalities checkand acceptance of innovation patents.................40
Chapter 4—Publication 41 53 Publication of certain information about applicants etc.[see also Table B] 54 Notice of publication.......................................................................41 55 Documents open to public inspection..............................................42 56 Certain documents not to be published............................................43 57 Effect of publication ofcomplete specification...............................43 58 Result of search may be disclosed...................................................44
Chapter 5—Opposition to grant of standard patent 45 59 Opposition to grant of standard patent.............................................45 60 Hearing and decision by Commissioner..........................................45
Chapter 6—Grant and term of patents 46
Part 1—Grant 46 61 Grant of standard patent ..................................................................46 62 Grant and publication of innovation patent .....................................46 63 Joint patentees.................................................................................47 64 Grant: multiple applications ............................................................47 65 Date of patent ..................................................................................47 66 Sealing of duplicate of patent..........................................................47
Part 2—Term 49 67 Term of standard patent...................................................................49 68 Term of innovation patent ...............................................................49
Part 3—Extension of term of standard patents relating to pharmaceutical substances 50 70 Applications for extension of patent................................................50 71 Form and timing of an application...................................................51 72 Notification andpublic inspection of application............................52 73 Withdrawal ofapplication...............................................................52 74 Acceptance or refusal of application ...............................................52 75 Opposition to grant of extension......................................................53 76 Grant of extension ...........................................................................53 76A Notification of extension to the Secretary, Health and Family Services ...........................................................................................53 77 Calculation of term of extension......................................................54 78 Exclusive rights of patentee are limited if extension granted ..........54 79 Rights of patentee if extension granted after patent expires ............55 79A Commissioner not to make decision if court proceedings pending............................................................................................55
v
Chapter 6A—Divisional applications 56 79B Divisional applications prior to grant of patent ...............................56 79C Divisional applications for innovation patents may be made after grant of an innovation patent...................................................56
Chapter 7—Patents of addition 58 80 Chapter does not applyto innovation patents..................................58 81 Grant of patent of addition...............................................................58 82 Revocation of patent and grant of patent of addition instead...........58 83 Term of patent of addition...............................................................59 85 Revocation of patent for main invention .........................................60 86 Renewal fees not payable................................................................60 87 Fees payable where patent of addition becomes an independent patent...........................................................................60
Chapter 8—PCT applications and convention applications 61
Part 1—PCT applications 61 88 PCT applications .............................................................................61 89 Modified application of Act [see also Table B]...............................61 90 Publication of PCT applications [see also Table B] ........................62 91 Application of certain provisions to PCT applications....................63 92 Notice of publication [see also Table B] .........................................63 93 Evidence of mattersarising under PCT...........................................64
Part 2—Convention applications 65 94 Convention applicants may make Convention applications ............65 95 Manner of making Convention application .....................................65 96 Withdrawn, abandoned or refused applications...............................65
Chapter 9—Re-examination of standard patents 67 96A Chapter does not applyto innovation patents..................................67 97 Re-examinationof complete specifications.....................................67 98 Report on re-examination................................................................68 99 Statementbyapplicant or patentee..................................................68 100 Copies of report to be given to court ...............................................68 100A Refusal to grant patent—re-examination before grant.....................68 101 Revocation of patent—re-examination after grant...........................69
Chapter 9A—Examination, re-examination and opposition-innovation patents 70
Part 1—Examination of innovation patents 70 101A Examination may be requested or Commissioner may decide to examine.......................................................................................70 101B Examination of an innovation patent...............................................70
101C How and when examination to be carried out..................................71 101D Commissioner to be given information on searches........................72 101E Certificateof examination...............................................................72 101F Revocation of innovation patents following examination
under section 101B..........................................................................73
Part 2—Re-examination of innovation patents 74 101G Re-examination of complete specifications of innovation
patents .............................................................................................74 101H Patentee statements..........................................................................74 101J Revocation of innovation patent following re-examination.............75 101K Relevant proceedings and re-examination.......................................75 101L Copies of report to be given to court ...............................................76
Part 3—Opposition to innovation patents 77 101M Opposition to innovation patent.......................................................77 101N Hearing and decision by the Commissioner ....................................77 101P Relevant proceedings and opposition..............................................78
Chapter 10—Amendments 79
Part 1—Amendments that are not allowable 79 102 What amendments are not allowable? .............................................79 103 Consent of mortgagee or exclusive licensee needed........................80
Part 2—Amendments of patent requests, specifications and other filed documents 81 104 Amendments by applicants and patentees .......................................81 105 Amendments directed by court........................................................82 106 Amendments directed by Commissioner: patents............................82 107 Amendments directed by Commissioner: applications for standard patents...............................................................................83 109 Appeal.............................................................................................84
Part 3—Miscellaneous 85 110 Advertisement of amendment of complete specification.................85 112 Pending proceedings........................................................................85 113 Persons claiming under assignment or agreement...........................85 114 Priority date of certain amended claims...........................................85 114A Objection cannot be taken to certain amended claims.....................86 115 Restriction on recovery of damages etc...........................................86 116 Interpretation of amended specifications.........................................86
Chapter 11—Infringement 87
Part 1—Infringement and infringement proceedings 87 117 Infringement by supply of products.................................................87
118 Infringement exemptions: use in or on foreign vessels, aircraft or vehicles...........................................................................87 119 Infringement exemptions: prior use.................................................88 119A Infringement exemptions: acts for obtaining regulatory approval of pharmaceuticals............................................................89 120 Infringement proceedings................................................................90 121 Counter-claim for revocation of patent............................................91 121A Burden of proof—infringement of patent for a process...................91 122 Relief for infringement of patent.....................................................92 123 Innocent infringement......................................................................92
Part 2—Non-infringement declarations 94 124 Interpretation...................................................................................94 125 Application for non-infringement declaration .................................94 126 Proceedings fornon-infringement declarations...............................94 127 Effect of non-infringement declarations..........................................95
Part 3—Unjustified threats of infringement proceedings 96 128 Application for relief from unjustifiedthreats.................................96 129 Court’s power to grant relief if threats related to a standard patent or standard patent application...............................................96 129A Threats related to an innovation patent application or innovation patent and court’s power to grant relief.........................97 130 Counter-claim for infringement.......................................................98 131 Notification of patent not a threat....................................................98 132 Liability of legal practitioner or patent attorney..............................98
Chapter 12—Compulsory licences and revocation of patents 99 133 Compulsory licences .......................................................................99 134 Revocation of patent after grant of compulsory licence ................101 135 Reasonable requirements of the public..........................................101 136 Orders to be consistent with international agreements ..................102 136A Dealing with allegation of contravention of application law.........102 137 Revocation on surrender of patent.................................................102 138 Revocation of patents in other circumstances................................103 139 Parties to proceedings....................................................................103 140 Commissioner to be given copies of orders...................................104
Chapter 13—Withdrawal and lapsing of applications and ceasing of patents 105 141 Withdrawal of applications [see also Table B]..............................105 142 Lapsing of applications [see also Table B]....................................105 143 Ceasing of patents..........................................................................106 143A Ceasing of innovation patents........................................................106 143B Payment of fees.............................................................................106
Chapter 14—Contracts 107 144 Void conditions .............................................................................107 145 Termination of contract after patent ceases to be in force .............108 146 EffectofChapter...........................................................................108
Chapter 15—Special provisions relating to associated technology 110 147 Certificate by Director as to associated technology.......................110 148 Lapsing etc. of applications...........................................................110 149 Revocation of direction .................................................................111 150 Restoration of lapsed application...................................................111 151 Reinstatement of application as an international application.........112 152 Notice of prohibitions or restrictions on publication .....................113 153 Effect of order ...............................................................................113
Chapter 16—Jurisdiction and powers of courts 115 154 Jurisdictionof Federal Court.........................................................115 155 Jurisdiction of other prescribed courts...........................................115 156 Exercise of jurisdiction..................................................................115 157 Transfer of proceedings.................................................................116 158 Appeals..........................................................................................116 159 Commissioner may appear in appeals ...........................................116 160 Powers of Federal Court................................................................117
Chapter 17—The Crown 118
161 Nominated persons and patentees..................................................118
162 Commonwealth and State authorities............................................118
Part 2—Exploitation by the Crown 119 163 Exploitation of inventions by Crown.............................................119 164 Nominated person or patentee to be informed of exploitation.......119 165 Remuneration and terms for exploitation ......................................120 165A Exploitation of invention to cease under court order.....................120 166 Previous agreements inoperative...................................................120 167 Sale of products.............................................................................121 168 Supply of products by Commonwealth to foreign countries..........121 169 Declarations that inventions have been exploited..........................121 170 Sale of forfeited articles.................................................................122
171 Acquisition of inventions or patents by Commonwealth...............123
172 Assignment of invention to Commonwealth .................................123
Part 4—Prohibition orders 124 173 Prohibition of publication of information about inventions...........124 174 Effect of prohibition orders ...........................................................124 175 Disclosure of information to Commonwealth authority ................125 176 International applications treated as applications under this
Act.................................................................................................125
Chapter 18—Miscellaneous offences 126 177 False representations about the Patent Office................................126 178 False representations about patents or patented articles.................126 179 Failure to comply with summons ..................................................127 180 Refusal to give evidence................................................................127 181 Failure to produce documents or articles.......................................128 182 Officers not to traffic in inventions................................................128 183 Unauthorised disclosure of information byemployees etc............128 184 Other unauthorised disclosures of information..............................129 185 Commissioner etc. not to prepare documents or search
records ...........................................................................................129
Chapter 19—The Register and official documents 130 186 Register of Patents.........................................................................130 187 Registration of particulars of patents etc. ......................................130 188 Trusts not registrable.....................................................................131 189 Power of patentee to deal with patent............................................131 190 Inspection of Register....................................................................131 191 False entries in Register.................................................................131 192 Orders for rectification of Register................................................132 193 Inspection of documents................................................................132 194 Information obtainable from Commissioner..................................132 195 Evidence—the Register.................................................................133 196 Evidence—unregistered particulars...............................................133 197 Evidence—certificate and copies of documents............................133
Chapter 20—Patent Attorneys 134
Part 1—Registration, privileges and professional conduct 134 198 Registration of patent attorneys.....................................................134 199 Deregistration................................................................................135 200 Privileges.......................................................................................135 200A Designated Manager......................................................................136
Part 2—Offences 137 201 Offences: unregistered persons etc................................................137 202 Documents prepared by legal practitioners....................................138 202A Documents prepared by a member of a partnership.......................139
203 Attendance at patentattorney’s office...........................................139 204 Time for starting prosecutions.......................................................139
Chapter 21—Administration 140 205 Patent Office and sub-offices.........................................................140 206 Patent Office seal...........................................................................140 207 Commissioner of Patents...............................................................140 208 Deputy Commissioner of Patents ..................................................140 209 Delegation of Commissioner’s powers and functions ...................141 210 Commissioner’s powers ................................................................141 211 Recovery of costs awarded by Commissioner...............................141
Chapter 22—Miscellaneous 142 212 Copies of examination reports to be communicated......................142 213 Making and signing applications etc. ............................................142 214 Filing of documents.......................................................................142 215 Death of applicant or nominatedperson........................................142 216 Exercise of discretionary power by Commissioner .......................143 217 Assessors.......................................................................................143 218 Costs where patent invalid in part .................................................143 219 Security for costs...........................................................................143 220 Costs of attendance of patent attorney...........................................143 221 Service of documents ....................................................................144 222 Publication of Official Journal etc.................................................144 222A Doing act when Patent Office reopens after end of period
otherwise provided for doing act...................................................144 223 Extensions of time [see also Table B]...........................................145 224 Review of decisions.......................................................................147 225 Conduct of employees and agents of natural persons....................148 226 Reproduction of published specifications does not infringe
copyright........................................................................................149
227 Fees ...............................................................................................149
227A Professional Standards Board for Patent and Trade Marks
Attorneys .......................................................................................150 228 Regulations....................................................................................152 229 Consequential amendments...........................................................156 230 Repeal............................................................................................156
Chapter 23—Transitional and savings provisions 157 231 Application of Part III of 1989 Amending Act..............................157 233 Patents granted under 1952 Act.....................................................157 234 Applications under 1952 Act.........................................................157 235 Other applications and proceedings under 1952 Act .....................158 236 Micro-organisms ...........................................................................159 237 Orders, directions etc. under 1952 Act..........................................159
238 The Commissioner and Deputy Commissioner.............................159 239 The Register ofPatents and Register of Patent Attorneys.............159 240 Registered patent attorneys............................................................159 Schedule 1—Dictionary [see also Table B] 160 Schedule 2—Consequential Amendments 170 Notes 171
An Act relating to patents of inventions
This Act may be cited as the Patents Act 1990.
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: Section 3
application
approved form
associated technology
Australia
Australian continental shelf
Australian Register of Therapeutic Goods
authority
basic application
Budapest Treaty
certified
claim
commencing day
Commissioner
compensable person
complete specification
compulsory licence
Convention applicant
Convention application
Convention country
deposit requirements
depositary institution
Deputy Commissioner
Designated Manager
Director
eligible person
employee
examination
exclusive licensee
exploit
Federal Court
file
foreign aircraft
foreign land vehicle
foreign patent office
foreign vessel
formalities check
infringement proceedings
innovation patent
interested party
international application
Section 3
international depositary authority international filing date invention legal practitioner legal representative licence main invention modified examination nominated person non-infringement declaration
Official Journal
patent patent application patent area patent of addition Patent Office patent request patentable invention patented process patented product patentee PCT PCT application permit pharmaceutical substance prescribed court prescribed depositary institution prior art base prior art information Professional Standards Board prohibition order provisional specification receiving Office re-examination Register registered registered patent attorney relevant authority relevant international application relevant proceedings rules relating to micro-organisms Section 3
Safeguards Act sealed specification standard patent State Statute of Monopolies supply Territory therapeutic use this Act work 1952 Act 1989 Amending Act
Section 4
The following diagram shows most of the typical steps involved in getting and maintaining a standard patent. The diagram is intended for use only as a general introductory illustration and is not intended to have any other effect. If there is an inconsistency between any matter contained in the diagram and a provision of this Act or the regulations, the provision prevails.
Section 4
TABLE 1—GETTING AND MAINTAINING A STANDARD PATENT
Fee payable. A complete application must be associated with a provisional
application within the prescribed period. Provisionals which lapse at this
stage are not published. Applicant may be required to correct deficiencies. Application will lapse if applicant does not comply.
Filing formalities
Continuation fees are prescribed and payable under the regulations.
Applications lapse if continuation fees are not paid (see section 142).
Applicant must request examination as directed or application will lapse (see section 142).
Fee payable.
Application lapses if patent request and complete specification not accepted within the prescribed period (see section 142).
Patents Act 1990
Section 4
complete specification
Incorporate any accepted amendments: notice of acceptance to applicant: acceptance advertised in
Official Journal
Opposition (see sections 59 and 60): may involve re-examination (see section 97)
or Refusal to grant patent
Patents Act 1990
7
Section 5
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]
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:
(iii) the file, accession or registration number of the deposit given by the institution; and
(d) at all times since the date of filing of the specification, samples of the micro-organism have been obtainable from a prescribed depositary institution as provided by those rules.
[Note: see sections 41 and 42]
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
Section 7
light of any one of the following kinds of information, each of which must be considered separately:
Inventive step
information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
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 in the patent area before the priority date of the relevant claim, only vary from Section 8
the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
[Notes: (1) For the meaning of document see section 25 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 subsection 98(1).]
Subject to the regulations, account must not be taken, for the purposes of this Act, of a disclosure in a specification or other document filed in respect of, and at the same time as, a basic application unless the following documents are filed within the prescribed period:
[Note: basic application is defined in Schedule 1: see also Part 2 of Chapter 8.]
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
Section 10
predecessor in title to the invention, for the purpose of reasonable trial or experiment only;
[Note: See also paragraph 18(1)(d)]
10 Certain international applications to be taken to have 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.
Section 11
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: see also Chapter 8.]
11 Act binds the Crown
This Act extends to:
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.
Section 13
Section 15
Section 17
Chapter 2 Patent rights, ownership and validity Part 3 Validity Division 1 Validity
Section 18
Patentable inventions for the purposes of a standard patent
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:
Patent rights, ownership and validity Chapter 2 Validity Part 3 Validity Division 1
Section 19
Certain inventions not patentable inventions for the purposes of an innovation patent
[Note: see also sections 7 and 9.]
(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.
Chapter 2 Patent rights, ownership and validity Part 3 Validity Division 1 Validity
Section 21
(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.
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.
Patent rights, ownership and validity Chapter 2 Validity Part 3 Matters not affecting validity Division 2
Section 22
The invalidity of a patent in relation to a claim does not affect its validity in relation to any other claim.
A patent is not invalid, so far as the invention is claimed in any claim, merely because of:
but only if a patent application for the invention is made within the prescribed period.
Chapter 2 Patent rights, ownership and validity Part 3 Validity Division 2 Matters not affecting validity
Section 25
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.
Patent rights, ownership and validity Chapter 2 Validity Part 3 Notice of matters affecting validity Division 3
Section 27
Person may give notice of invalidity of an innovation patent
(1) A person may notify the Commissioner that the person asserts, for reasons stated in the notice, that an innovation patent is invalid because the invention concerned does not comply with paragraph 18(1A)(b).
When notice may be given
How notice must be given
Chapter 2 Patent rights, ownership and validity Part 3 Validity Division 3 Notice of matters affecting validity
Section 28
Commissioner must inform patentee of notice given
(4) If the Commissioner receives a notice in respect of an innovation patent, the Commissioner must inform the patentee, in writing, of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice.
Commissioner to deal with notice in accordance with regulations
(5) The Commissioner must otherwise consider and deal with a notice in accordance with the regulations.
From application to acceptance Chapter 3 Patent applications Part 1 Applications Division 1
Section 29
applications.]
A patent application is to be taken to have been made on the filing date determined under the regulations.
2 or more persons (within the meaning of section 29) may make a joint patent application.
If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the
Chapter 3 From application to acceptance Part 1 Patent applications Division 1 Applications
Section 33
application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.
Opposition to standard patent if a person other than nominated person eligible for grant of patent
(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
From application to acceptance Chapter 3 Patent applications Part 1 Applications Division 1
Section 33
invention, so far as claimed in any claim of the opposed patent application (the original claim); and
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
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
Chapter 3 From application to acceptance Part 1 Patent applications Division 1 Applications
Section 34
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.
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.
From application to acceptance Chapter 3 Patent applications Part 1 Applications Division 1
Section 36
(the original claim) and that the former patentee is not such an eligible person; or
(ii) on application made by one or more persons in accordance with the regulations, that the persons and the former patentee are eligible persons in relation to the invention concerned, so far as is claimed in any claim of the revoked patent (the original claim);
the Commissioner may declare in writing that the eligible persons are such eligible persons.
(1A) If a complete application is made under section 29 by one or more of the declared persons, the Commissioner may grant a patent for the invention, so far as so claimed, to those declared persons jointly.
(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).
Chapter 3 From application to acceptance Part 1 Patent applications Division 1 Applications
Section 37
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.
(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.
From application to acceptance Chapter 3 Patent applications Part 1 Applications Division 1
Section 38
(2) In this section:
applicant includes a person entitled to make a request under section 113 in relation to the relevant patent application.
[Note: see also section 5 for requirements relating to associated applications.]
Chapter 3 From application to acceptance Part 1 Patent applications Division 2 Specifications
Section 40
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.
From application to acceptance Chapter 3 Patent applications Part 1 Specifications Division 2
Section 42
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.]
comply with section 40 unless the deposit requirements are satisfied in relation to the micro-organism.
Chapter 3 From application to acceptance Part 1 Patent applications Division 2 Specifications
Section 42
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.
[Note: see also section 6 in relation to satisfaction of deposit requirements.]
From application to acceptance Chapter 3 Patent applications Part 1 Priority dates Division 3
Section 43
Priority date if claim arises from further application for an innovation patent provided for in section 79C
within the period prescribed in the regulations; the priority date of each claim in the specification is the date determined under the regulations.
within the period prescribed in the regulations; the priority date of each claim in the specification must not be a date earlier than the date of filing of the application provided for in section 79C.
Chapter 3 From application to acceptance Part 2 Examination of standard patent requests and specifications Division 1 Examination
Section 44
Division 1—Examination
From application to acceptance Chapter 3 Examination of standard patent requests and specifications Part 2 Examination Division 1
Section 46
(1A) For the purposes of paragraph (1)(c), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area).
completed, in relation to a search, has the meaning prescribed by the regulations.
Chapter 3 From application to acceptance Part 2 Examination of standard patent requests and specifications Division 1 Examination
Section 46
(d) the applicant has been directed by the Commissioner to ask for an examination of the patent request and specification relating to the application mentioned in paragraph (a), being a direction given on a ground prescribed for the purposes of this paragraph;
the applicant may, instead of asking for an examination as directed, ask for deferment of the examination.
From application to acceptance Chapter 3 Examination of standard patent requests and specifications Part 2 Modified examination Division 2
Section 47
respect of a prescribed application made in that country; the applicant may, instead of asking for an examination, ask for a modified examination of the patent request and specification relating to the application.
(2) The applicant may withdraw a request for a modified examination at any time before acceptance of the patent request and specification and ask for an examination under section 44 instead.
(1A) For the purposes of paragraph (1)(b), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area).
(2) The modified examination must be carried out in accordance with the regulations.
Chapter 3 From application to acceptance Part 3 Acceptance Division 1 Acceptance of standard patents
Section 49
Division 1—Acceptance of standard patents
From application to acceptance Chapter 3 Acceptance Part 3 Acceptance of standard patents Division 1
Section 50
An appeal lies to the Federal Court against a decision of the Commissioner under this Division.
Chapter 3 From application to acceptance Part 3 Acceptance Division 2 Acceptance of innovation patents
Section 52
Section 53
[see also Table B]
Where a patent application is made, the Commissioner must publish in the Official Journal the prescribed information about the applicant and the application.
the specification is open to public inspection, unless the application has lapsed or been refused or withdrawn.
Section 55
(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.
the Commissioner must also publish in the Official Journal a notice that:
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.
being documents that have not already become open to public inspection.
(3) Subject to section 90, 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.
(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 Section 58
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.
the act was done) that are alleged to have been infringed by the doing of the act.
The Commissioner may disclose the result of any search made for the purpose of making a report under this Act.
Section 59
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:
Section 61
173(1) in relation to the application; the Commissioner must grant the innovation patent by sealing an innovation patent in the approved form.
Section 63
(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.
A patent may be granted to 2 or more nominated persons jointly.
specifications have the same priority date or dates; a standard patent cannot be granted on the application.
The date of a patent is:
(1) The Commissioner may seal a duplicate of a patent if satisfied that the patent is lost, stolen, damaged or destroyed.
Section 66
Section 67
The term of a standard patent is 20 years from the date of the patent.
The term of an innovation patent is 8 years from the date of the patent.
Section 70
Note: Section 65 sets out the date of a patent.
Section 71
71 Form and timing of an application
Form of application
ascertained in accordance with the regulations. For this purpose, document includes a copy of a document.
Timing of application
Section 72
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.
Acceptance
Refusal
Section 75
76A Notification of extension to the Secretary, Health and Family Services
In respect of each application for an extension approved by the Commissioner under section 76 in a financial year, the patent holder must lodge with the Secretary of the Department, before the end of the following financial year, a return setting out the following information:
(a) details of the amount and origin of any Commonwealth funds spent in the research and development of the drug which was the subject of the application; and Section 77
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.
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:
for a purpose other than therapeutic use; or Section 79
If:
start proceedings in respect of the doing of an act during the period:
as if the extension had been granted at the time when the act was done.
If:
the Commissioner must not make any decision under this Part in relation to the patent without the leave of the court.
Section 79B
79B Divisional applications prior to grant of patent
(1A) The reference to a complete patent application first-mentioned in subsection (1) does not include a reference to a divisional application for an innovation patent provided for in section 79C.
(2) In this section:
applicant has the same meaning as in section 38.
79C Divisional applications for innovation patents may be made after grant of an innovation patent
Applications may be made
(iii) the first patent ceases;
(iv) a period prescribed by the regulations for the purposes of this subparagraph ends.
When does an examination begin?
Section 80
This Chapter does not apply in relation to innovation patents.
with the regulations; the Commissioner may, subject to this Act and the regulations, grant a patent of addition for the improvement or modification.
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.
Usual term
Patent of addition extended
Patent for main invention extended
Part; the term of the patent of addition expires at the end of the unextended term of the patent for the main invention.
Section 85
A fee is not payable for the renewal of a patent of addition.
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.
Section 88
[Note: international filing date is defined in Schedule 1: see also section 10.]
(1) A PCT application is to be taken to comply with the prescribed requirements of this Act and the regulations that relate to patent applications for standard patents but is not to be taken, merely because of section 88, to comply with any other such requirements that apply to it.
Section 90
Regulations mentioned in the definition of PCT in Schedule 1; the description, drawings and claims contained in the application are, for the purposes of this Act, to be taken to have been amended on the day on which that amendment or rectification was made.
A PCT application is to be taken to have become open to public inspection, and to have been published in Australia:
For the purposes of applying section 57 to a PCT application, references to the complete specification becoming open to public inspection are references to the PCT application being taken to have become open to public inspection under section 90.
the Commissioner must publish a notice in the Official Journal stating that a copy of the application is open to public inspection.
the Commissioner must publish a notice in the Official Journal stating that a copy of the application is open to public inspection.
Section 93
(c) a notice has not been published under subsection (1) or (2); the Commissioner must publish a notice in the Official Journal
specifying the date on which the copy was so received and stating that the copy is open to public inspection.
(4) Where a notice is published in the Official Journal under this section, a copy of the relevant application and of any other prescribed document is open to public inspection.
A certificate signed by the Commissioner in relation to an international application, certifying that:
not to be made or done has not been made or done; is prima facie evidence of the matters contained in the certificate.
Section 94
Section 96
(d) a later application has been made by the same applicant for protection in respect of the invention in the Convention country in which the earlier application was made;
the applicant may ask the Commissioner to disregard the earlier application for the purposes of this Part.
Section 96A
96A Chapter does not apply to innovation patents
This Chapter does not apply in relation to innovation patents.
Section 98
[Note: see also section 7.]
99 Statement by applicant or patentee
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
Section 101A
101A Examination may be requested or Commissioner may decide to examine
After the grant of an innovation patent, the Commissioner:
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
Grounds for revocation relating to validity
Section 101C
(3) For the purposes of working out whether the invention does not comply with paragraph 18(1A)(b), the prior art base (referred to in that paragraph) is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area).
Revocation on ground that invention claims a substance capable of being used as food or medicine etc.
Revocation on ground that patent includes a name
(5) A further ground for revocation is that the patent contains 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.
Revocation on grounds of multiple patents for one invention
Revocation for grounds set out in the regulations
(7) A further ground for revocation is that the complete specification does not comply with such other matters (if any) as are prescribed.
101C How and when examination to be carried out
The examination under section 101B must be carried out:
Section 101D
101D Commissioner to be given information on searches
completed, in relation to a search, has the meaning prescribed by the regulations.
101E Certificate of examination
If:
(a) after examining a patent under section 101B, the Commissioner decides in writing that he or she is satisfied that the invention, so far as claimed, complies with paragraph 18(1A)(b); and
(aa) after so examining the patent, the Commissioner also decides in writing that he or she considers that:
101F Revocation of innovation patents following examination under section 101B
Section 101G
101G Re-examination of complete specifications of innovation patents
other person; re-examine the complete specification relating to the patent.
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 Section 101J
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
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 Section 101L
relating to the patent. If so directed, the Commissioner must re-examine the specification accordingly.
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.
Section 101M
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:
101N Hearing and decision by the Commissioner
Section 101P
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.
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 would claim matter not in substance disclosed in the filed specification
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
Certain amendments of complete specification are not allowable after relevant time
Meaning of relevant time1
(2A) For the purposes of subsection (2), relevant time means:
1 This heading has been placed in the correct position.
Section 103
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:
Amendments not allowable if information not provided
(2C) An amendment of a complete specification relating to a patent is not allowable if:
103 Consent of mortgagee or exclusive licensee needed
Section 104
Part 2—Amendments of patent requests, specifications and other filed documents
104 Amendments by applicants and patentees
Section 105
105 Amendments directed by court
106 Amendments directed by Commissioner: patents
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.
107 Amendments directed by Commissioner: applications for standard patents
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.
Section 109
109 Appeal
An appeal lies to the Federal Court against a direction of the Commissioner under section 106 or 107.
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.
113 Persons claiming under assignment or agreement
applicant or the other joint applicant or applicants, as the case requires.
114 Priority date of certain amended claims
(1) Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.
Section 114A
114A Objection cannot be taken to certain amended claims
115 Restriction on recovery of damages etc.
116 Interpretation of amended specifications
The Commissioner or a court may, in interpreting a complete specification as amended, refer to the specification without amendment.
Section 117
Chapter 11—Infringement
Part 1—Infringement and infringement proceedings
117 Infringement by supply of products
118 Infringement exemptions: use in or on foreign vessels, aircraft or vehicles
The rights of a patentee are not infringed:
Section 119
119 Infringement exemptions: prior use
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.
Limit for product, method or process derived from patentee
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 119A
section applies in relation to the recipient as if the references in subsections (1), (2) and (3) to the person were references to:
Definition
(5) In this section:
exploit includes:
(iii) use or import the product; and
(iv) with a product resulting from the use of the method or process.
119A Infringement exemptions: acts for obtaining regulatory approval of pharmaceuticals
Section 120
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:
(iii) a product that is a pro-drug, metabolite or derivative of the substance.
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.
Section 121
121 Counter-claim for revocation of patent
121A Burden of proof—infringement of patent for a process
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.
Section 122
(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:
123 Innocent infringement
Section 124
Part 2—Non-infringement declarations
124 Interpretation
In this Part:
patentee includes an exclusive licensee.
125 Application for non-infringement declaration
126 Proceedings for non-infringement declarations
Section 127
(iii) has undertaken to pay a reasonable sum for the nominated person’s or patentee’s expenses in obtaining advice about whether the proposed exploitation would infringe the claim; and
127 Effect of non-infringement declarations
If:
the person is not liable:
Section 128
Part 3—Unjustified threats of infringement proceedings
128 Application for relief from unjustified threats
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:
Section 129A
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
then, for the purposes of an application for relief under section 128 by the person threatened, the threats are unjustifiable.
Courts power to grant relief in respect of threats made by the applicant for an innovation patent or the patentee of an uncertified innovation patent
(2) If an application under section 128 for relief relates to threats made in respect of an innovation patent that has not been certified or an application for an innovation patent, the court may grant the applicant the relief applied for.
Courts power to grant relief in respect of threats made by the patentee of a certified innovation patent
(3) If an application under section 128 for relief relates to threats made in respect of a certified innovation patent, the court may grant the applicant the relief applied for unless the respondent satisfies the court that the acts about which the threats were made infringed, or would infringe, a claim that is not shown by the applicant to be invalid.
Section 130
130 Counter-claim for infringement
Note: Infringement proceedings cannot be commenced in respect of an innovation patent unless the patent has first been certified (see subsection 120(1A)).
(4) The provisions of this Act relating to proceedings under section 138 for the revocation of a patent apply, with the necessary changes, to an application under subsection (2).
Note: Revocation proceedings under section 138 cannot be commenced in respect of an innovation patent unless the patent has first been certified (see subsection 138(1A)).
131 Notification of patent not a threat
The mere notification of the existence of a patent, or an application for a patent, does not constitute a threat of proceedings for the purposes of section 128.
132 Liability of legal practitioner or patent attorney
A legal practitioner or a registered patent attorney is not liable to proceedings under section 128 in respect of an act done in his or her professional capacity on behalf of a client.
Section 133
Chapter 12—Compulsory licences and revocation of patents
133 Compulsory licences
(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.
(1A) A person cannot apply for an order in respect of an innovation patent unless the patent has been certified.
(iii) the patentee has given no satisfactory reason for failing to exploit the patent; 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.
Section 133
(3B) If the patented invention cannot be worked by the applicant without his or her infringing another patent:
Section 134
(b) the legitimate interests of the licensee are not likely to be adversely affected by the revocation.
134 Revocation of patent after grant of compulsory licence
135 Reasonable requirements of the public
(iii) to carry on the patented process to a reasonable extent; or
(iv) to grant licences on reasonable terms; or Section 136
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.
137 Revocation on surrender of 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.
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.
Section 140
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.
Section 141
Chapter 13—Withdrawal and lapsing of applications and ceasing of patents
141 Withdrawal of applications [see also Table B]
142 Lapsing of applications [see also Table B]
Section 143
(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:
143A Ceasing of innovation patents
An innovation patent ceases if:
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.
Section 144
Chapter 14—Contracts
144 Void conditions
(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:
Section 145
145 Termination of contract after patent ceases to be in force
146 Effect of Chapter
Nothing in this Chapter:
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.
Section 147
Chapter 15—Special provisions relating to associated technology
147 Certificate by Director as to associated technology
application was not in accordance with an authority; the Director may include in the certificate:
148 Lapsing etc. of applications
Section 149
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
Section 151
(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
prescribed fee; then, except as otherwise prescribed:
Section 152
152 Notice of prohibitions or restrictions on publication
Penalty: Imprisonment for 2 years.
153 Effect of order
Section 153
(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.
Section 154
Chapter 16—Jurisdiction and powers of courts
154 Jurisdiction of Federal Court
155 Jurisdiction of other prescribed courts
156 Exercise of jurisdiction
The jurisdiction of a prescribed court under section 154 or 155 is to be exercised by a single judge.
Section 157
157 Transfer of proceedings
158 Appeals
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
Section 160
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:
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.
Section 163
Part 2—Exploitation by the Crown
163 Exploitation of inventions by Crown
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.
Section 165
165 Remuneration and terms for exploitation
165A Exploitation of invention to cease under court order
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 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: Section 167
167 Sale of products
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:
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.
Section 170
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.
Section 171
Part 3—Acquisitions by and assignments to the Crown
171 Acquisition of inventions or patents by Commonwealth
172 Assignment of invention to Commonwealth
Section 173
Part 4—Prohibition orders
173 Prohibition of publication of information about inventions
174 Effect of prohibition orders
Section 175
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:
prescribed fee; then, except as otherwise prescribed:
Section 177
Chapter 18—Miscellaneous offences
177 False representations about the Patent Office
business; the words “Patent Office” or “Office for obtaining patents”, or words of similar import, whether alone or together with other words, is guilty of 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: $6,000.
(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: $6,000.
Section 179
179 Failure to comply with summons
Penalty: $1,000.
(2) Subsection (1) does not apply if the person has a lawful excuse.
Note: A defendant bears an evidential burden in relation to the matter in subsection (2), see subsection 13.3(3) of the Criminal Code.
180 Refusal to give evidence
Penalty: $3,000.
Section 181
(2) Subsection (1) does not apply if the person has a lawful excuse.
Note: A defendant bears an evidential burden in relation to the matter in subsection (2), see subsection 13.3(3) of the Criminal Code.
181 Failure to produce documents or articles
Penalty: $3,000.
(2) Subsection (1) does not apply if the person has a lawful excuse.
Note: A defendant bears an evidential burden in relation to the matter in subsection (2), see subsection 13.3(3) of the Criminal Code.
182 Officers not to traffic in inventions
Penalty: $6,000.
183 Unauthorised disclosure of information by employees etc.
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.
Section 184
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 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:
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.
Section 186
Chapter 19—The Register and official documents
186 Register of Patents
187 Registration of particulars of patents etc.
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
190 Inspection of Register
191 False entries in Register
A person must not:
Penalty: Imprisonment for 2 years.
Section 192
192 Orders for rectification of Register
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:
Section 195
195 Evidence—the Register
196 Evidence—unregistered particulars
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:
197 Evidence—certificate and copies of documents
for public inspection on a date specified in the certificate; is prima facie evidence of the matters in the certificate.
signed means signed by the Commissioner.
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.
offence. The registration is to consist of entering the person’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 Section 199
of passing an examination conducted by the Professional Standards Board. This subsection does not limit paragraph (4)(b).
though he or she is temporarily absent from Australia; but the person is taken not to be ordinarily resident in Australia if he or she resides in Australia for a special or temporary purpose only.
(8) A reference in this section to conviction of an offence includes a reference to the making of an order under section 19B of the Crimes Act 1914, or a corresponding provision of a law of a State or a Territory, in relation to the offence.
199 Deregistration
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.
200 Privileges
Section 200A
(4) In this section:
intellectual property matters means:
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:
Section 201
Part 2—Offences
201 Offences: unregistered persons etc.
Section 202
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:
Penalty: $3,000.
202A Documents prepared by a member of a partnership
A person who is:
must not prepare a specification, or a document relating to an amendment of a specification, unless:
Penalty: 30 penalty units.
203 Attendance at patent attorney’s office
A registered patent attorney must not practise, act, or hold himself or herself out as practising or acting, as a patent attorney, at an office or place of business where specifications or other documents are prepared for the purposes of this Act, unless he or she, or another registered patent attorney, is in regular attendance at, and in continuous charge of, that office or place.
Penalty: $3,000.
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) or (5), or section 202, 202A or 203, may be started at any time within 5 years after the offence was committed.
Section 205
Chapter 21—Administration
205 Patent Office and 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
208 Deputy Commissioner of Patents
209 Delegation of Commissioner’s powers and functions
210 Commissioner’s powers
The Commissioner may, for the purposes of this Act:
211 Recovery of costs awarded by Commissioner
Costs awarded by the Commissioner against a party are recoverable as a debt.
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
A document may be filed with the Patent Office by delivering the document to a sub-office of the Patent Office either personally or by post or by any other prescribed means.
215 Death of applicant or nominated person
Section 216
216 Exercise of discretionary power by Commissioner
217 Assessors
A prescribed court may, if it thinks fit, call in the aid of an assessor to assist it in the hearing and trial or determination of any proceedings under this Act.
218 Costs where patent invalid in part
In any proceedings in which the validity of a patent is disputed, the court may, if it is satisfied that some of the claims in the complete specification which are alleged to be invalid are not invalid but that other claims are invalid, apportion the costs between the parties to the proceedings as it thinks just.
219 Security for costs
If a person who neither resides nor carries on business in Australia:
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.
Section 221
221 Service of documents
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 for service of documents, the document may be served on, or given or sent to, the person by post to that address.
222 Publication of Official Journal etc.
222A Doing act when Patent Office reopens after end of period otherwise provided for doing act
Declarations
Relationship with other law
Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a prescribed act.
223 Extensions of time [see also Table B]
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 Section 223
(b) the Commissioner is satisfied 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.
(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.
(6A) If the Commissioner is satisfied that an application under subsection (2) or (2A) would not be granted even in the absence of opposition under subsection (6):
Section 224
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.
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.
224 Review of decisions
Section 225
137(3), paragraph 142(2)(b), subsection 150(2), 151(2),
152(2) or 152(3), or section 173, 215 or 223; or
decision has the same meaning as in the Administrative Appeals Tribunal Act 1975.
225 Conduct of employees and agents of natural persons
for subsections (3) and (4); the person is not liable to be punished by imprisonment for that offence.
Note: For provisions relating to proof of offences by bodies corporate, see Part 2.5 of the Criminal Code.
226 Reproduction of published specifications does not infringe copyright
The reproduction in 2 dimensions of the whole or part of a provisional or complete specification that is open to public inspection does not constitute an infringement of any copyright subsisting under the Copyright Act 1968 in any literary or artistic work.
227 Fees
(1) The prescribed fees are payable in accordance with the regulations.
Section 227A
Note: Some provisions of this Act provide expressly or implicitly for the consequences of failing to pay a fee (for example, see subsections 89(3) and 142(2), section 143, subsection 151(4) and section 176). Regulations cannot provide for consequences inconsistent with those provisions.
227A Professional Standards Board for Patent and Trade Marks Attorneys
Section 227A
(iii) paragraph 228(2)(r) of this Act (which deals with the professional conduct of patent attorneys);
(iii) the selection of a member of the Board to preside at a meeting of the Board; and
Section 228
228 Regulations
(iii) for any other purpose; and
Section 228
(ha) setting out the formalities checking process for innovation patents including, in particular, the following matters:
(iii) providing for the lapsing of the application if such a direction is not complied with within a time specified in the regulations; and
Section 228
(iii) summoning witnesses;
(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
Section 228
(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.
Section 229
(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.
229 Consequential amendments
The Acts specified in Schedule 2 are amended as set out in that Schedule.
230 Repeal
The Patents Act 1952 is repealed.
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
234 Applications under 1952 Act
relation to the application on and after that day as if it were a provisional application under this Act.
Section 235
then, subject to this Chapter and the regulations, this Act applies on and after that day:
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.
235 Other applications and proceedings under 1952 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
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.
Schedule 1—Dictionary [see also Table B]
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, within the meaning of the Seas and Submerged Lands Act 1973, 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.
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.
certified, in respect of an innovation patent other than in section 19, means a certificate of examination issued by the Commissioner under paragraph 101E(e) in respect of the patent.
claim means:
commencing day means the day on which this Act commences.
Commissioner means the Commissioner of Patents.
compensable person means:
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.
compulsory licence means a licence granted under an order made under section 133.
Convention applicant, in relation to a basic application, means a person (or a body of persons, whether incorporated or not) who:
Convention application means a patent application made under Part 2 of Chapter 8.
Convention country means a foreign country declared by the regulations to be a Convention country for the purposes of this Act.
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.
eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.
employee means a person, other than the Commissioner or a Deputy Commissioner, who:
examination means:
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:
Federal Court means the Federal Court of Australia.
file means file with the Patent Office.
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.
foreign patent office means an office, organisation or other body that may grant protection in respect of an invention in a foreign country.
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.
infringement proceedings means proceedings for infringement of a patent.
innovation patent means letters patent for an invention granted under section 62.
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:
[See also section 10]
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.
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.
modified examination, in relation to a patent request and complete specification relating to an application for a standard patent, means an examination of the request and specification under section 48.
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.
patent application means an application for a standard patent or an application for an innovation patent.
patent area means:
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 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.
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.
PCT application means an international application:
permit, in Chapter 15, has the same meaning as in the Safeguards Act.
pharmaceutical substance means a substance (including a mixture or compound of substances) for therapeutic use whose application (or one of whose applications) involves:
a human body; but does not include a substance that is solely for use in in vitro diagnosis or in vitro testing.
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:
prior art base means:
[Note: For the meaning of document see section 25 of the Acts Interpretation Act 1901.]
prior art information means:
Professional Standards Board means the Professional Standards Board for Patent and Trade Marks Attorneys established by section 227A.
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:
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.
relevant authority means:
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:
rules relating to micro-organisms means such provisions of the Budapest Treaty, and such provisions made by or under regulations made under section 228, as are applicable.
Safeguards Act means the Nuclear Non-Proliferation (Safeguards) Act 1987.
sealed means sealed with the seal of the Patent Office.
specification, in relation to an international application, means the description, claims and drawings contained in the application.
standard patent means letters patent for an invention granted under section 61.
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:
Territory means a Territory in which this Act applies or to which this Act extends.
therapeutic use means use for the purpose of:
this Act includes the regulations.
work, in relation to a patented invention, means:
1952 Act means the Patents Act 1952.
1989 Amending Act means the Patents Amendment Act 1989.
Schedule 2—Consequential Amendments
Section 229
Note:
The amendments made by this Schedule are incorporated in the compilations on ComLaw.
Companies Act 1981
[repealed by Act No. 55, 2001, Sch. 1]
Designs Act 1906
[repealed by Act No. 147, 2003, s. 150]
Industry, Technology and Commerce Legislation Amendment Act (No. 2) 1989 (No. 10, 1990)
Jurisdiction of Courts (Cross-vesting) Act 1987
Nuclear Non-Proliferation (Safeguards) Act 1987
Sales Tax Assessment Act (No. 1) 1930
[repealed by Act No. 101, 2006, Sch. 5]
Trade Marks Act 1955
[repealed by Act No. 156, 1994, s. 241]
For access to the wording of the amendments made by this Schedule, see Act No. 83, 1990.
Notes to the Patents Act 1990
Table of Acts
Notes to the Patents Act 1990 Note 1
The Patents Act 1990 as shown in this compilation comprises Act No. 83, 1990 amended as indicated in the Tables below.
For application, saving or transitional provisions made by the Corporations (Repeals, Consequentials and Transitionals) Act 2001, see Act No. 55, 2001.
All relevant information pertaining to application, saving or transitional provisions prior to 27 July 1998 is not included in this compilation. For subsequent information see Table A.
The Patents Act 1990 was modified by the Patents Regulations 1991 (1991 No. 71 as amended by 1995 No. 16; 1999 No. 261; 2001 No. 98; 2003 No. 316; 2004 Nos. 193 and 395; SLI 2007 No. 40) see Table B.
Table of Acts
| Act | Number and year | Date of Assent | Date of commencement | Application, saving or transitional |
| provisions | ||||
| Patents Act 1990 | 83, 1990 | 30 Oct 1990 | 30 Apr 1991 | |
| Industry, Technology and Commerce Legislation Amendment Act 1991 | 66, 1991 | 15 June 1991 | S. 26: (a) | — |
| Industry, Technology and Regional Development Legislation Amendment Act 1994 | 58, 1994 | 9 Apr 1994 | 29 June 1994 (see Gazette 1994, No. S211) | — |
| Industry, Science and Technology Legislation Amendment Act 1994 | 108, 1994 | 12 July 1994 | Div. 2 of Part 2 (ss. 4–6): 9 Aug 1994 | — |
| Div. 5 of Part 2 | ||||
| (ss. 13–15): 13 July 1994 | ||||
| Remainder: Royal Assent | ||||
| Patents (World Trade Organization Amendments) Act 1994 | 154, 1994 | 13 Dec 1994 | Ss. 4–7 and 12: 1 July 1995 Remainder: 10 Jan 1995 | Ss. 3, 7, 8, 10, 12, 13 and 17 |
Notes to the Patents Act 1990
Table of Acts
Act Number Date Date of Application, and year of Assent commencement saving or transitional provisions
Intellectual Property Laws Amendment Act 1998
Public Employment (Consequential and Transitional) Amendment Act 1999
Patents Amendment (Innovation Patents) Act 2000
as amended by
Trade Marks and Other Legislation Amendment Act 2001
Intellectual Property Laws Amendment Act 2003
Corporations (Repeals, Consequentials and Transitionals) Act 2001
Industry, Science and Resources Legislation Amendment (Application of Criminal Code) Act 2001
Patents Amendment Act 2001
100, 1998 27 July 1998
146, 1999 11 Nov 1999
140, 2000 24 Nov 2000
99, 2001 22 Aug 2001
48, 2003 26 June 2003
55, 2001 28 June 2001
140, 2001 1 Oct 2001
160, 2001 1 Oct 2001
Schedules 1 and 2: Sch. 1 27 Jan 1999 (item 8), Remainder: Royal Sch. 2 Assent (items 31,
32) and Sch. 3 (item 4) [see Table A]
Schedule 1 (items — 728–730): 5 Dec 1999 (see Gazette 1999, No. S584) (b)
24 May 2001 Sch. 1 (items 1, 2 (1), 2(3)–2(6), 3–6, 8) Sch. 2 [items 2(2), 7] (am. by 99, 2001, Sch. 2 [items 1, 2]) [see Table A]
Schedule 2: (c) —
Schedule 2 (item 8): —
(d)
Ss. 4–14 and Ss. 4–14 Schedule 3 [see (item 401): 15 July Note 1] 2001 (see Gazette 2001, No. S285) (e)
2 Oct 2001 S. 4 [see Table A]
Schedule 1: 1 Apr Sch. 1 2002 (items 13, Schedule 2: (f) 32, 33) Remainder: Royal [see Table Assent A]
Notes to the Patents Act 1990
Table of Acts
| Act | Number | Date | Date of | Application, |
| and year | of Assent | commencement | saving or | |
| transitional | ||||
| provisions | ||||
| Intellectual Property Laws | 48, 2003 | 26 June 2003 | Schedule 1 (item 2): | Sch. 2 |
| Amendment Act 2003 | 24 July 2003 | (item 5) | ||
| Schedule 2 (items | [see Table | |||
| 1–5): 26 Aug 2003 | A] | |||
| US Free Trade Agreement | 120, 2004 | 16 Aug 2004 | Schedule 8: Royal | Sch. 8 |
| Implementation Act 2004 | Assent | (item 3) | ||
| [see Table | ||||
| A] | ||||
| Statute Law Revision Act | 100, 2005 | 6 July 2005 | Schedule 1 (items | — |
| 2005 | 31–37): (g) | |||
| Intellectual Property Laws | 106, 2006 | 27 Sept 2006 | Schedules 5, 6, 8 | Sch. 5 |
| Amendment Act 2006 | and 9: 28 Sept 2006 | (item 2), | ||
| Schedule 7: 25 Oct | Sch. 6 | |||
| 2006 | (item 2), | |||
| Schedules 10 and | Sch. 7 | |||
| 12 (item 4): 27 Mar | (item 4), | |||
| 2007 | Sch. 8 | |||
| Schedule 16 | (item 9), | |||
| (item 1): 4 Oct 2002 | Sch. 9 | |||
| (see s. 2(1)) | (item 2) | |||
| and | ||||
| Sch. 10 | ||||
| (item 3) | ||||
| [see Table | ||||
| A] | ||||
| Personal Property | 131, 2009 | 14 Dec 2009 | Schedule 2 | Sch. 2 |
| Securities (Consequential | (items 8–15): [see | (item 15) | ||
| Amendments) Act 2009 | Note 2 and Table A] | [see Table | ||
| A] | ||||
| Crimes Legislation | 4, 2010 | 19 Feb 2010 | Schedule 10 (item | — |
| Amendment (Serious and | 22): 20 Feb 2010 | |||
| Organised Crime) Act | ||||
| (No. 2) 2010 | ||||
| Statute Law Revision Act | 8, 2010 | 1 Mar 2010 | Schedule 1 (item | — |
| 2010 | 39): Royal Assent | |||
| Personal Property | 96, 2010 | 6 July 2010 | Schedule 3 (item | — |
| Securities (Corporations | 16): [see (h) and | |||
| and Other Amendments) | Note 3] | |||
| Act 2010 | ||||
| Trade Practices | 103, 2010 | 13 July 2010 | Schedule 6 (items 1, | — |
| Amendment (Australian | 82): 1 Jan 2011 | |||
| Consumer Law) Act | ||||
| (No. 2) 2010 |
Notes to the Patents Act 1990
Act Notes
(3) Schedule 2 commences, or is taken to have commenced, immediately after the commencement of the Patents Amendment (Innovation Patents) Act 2000.
The Patents Amendment (Innovation Patents) Act 2000 came into operation on 24 May 2001.
(d) Subsection 2(1) (item 5) of the Intellectual Property Laws Amendment Act 2003 provides as follows:
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, on the day or at the time specified in column 2 of the table.
Commencement information
Column 1 Column 2 Column 3
Provision(s) Commencement Date/Details
5. Schedule 2, Immediately after the time specified in the Patents 24 May 2001
Part 3 Amendment (Innovation Patents) Act 2000 for the commencement of item 3 of Schedule 1 to that Act
(4) Schedule 2 is taken to have commenced immediately after the commencement of
the Patents Amendment (Innovation Patents) Act 2000. The Patents Amendment (Innovation Patents) Act 2000 came into operation on 24 May 2001.
(g) Subsection 2(1) (item 20) of the Statute Law Revision Act 2005 provides as follows:
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.
| Provision(s) | Commencement | Date/Details |
|---|---|---|
| 20. Schedule 1, items 31 to 37 | Immediately after the commencement of the Patents Amendment (Innovation Patents) Act 2000. | 24 May 2001 |
Notes to the Patents Act 1990
Act Notes
(h) Subsection 2(1) (item 13) of the Personal Property Securities (Corporations and Other Amendments) Act 2010 provides as follows:
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.
Provision(s) Commencement Date/Details
13. Schedule 3, Immediately after the commencement of item 14 of [see Note 3]
item 16 Schedule 2 to the Personal Property Securities (Consequential Amendments) Act 2009.
Notes to the Patents Act 1990
Table of Amendments
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Chapter 1
S. 3............................................ am. Nos. 108 and 154, 1994; No. 100, 1998; No. 140, 2000; No. 48, 2003
S. 4............................................ rs. No. 140, 2000
S. 6............................................ am. No. 100, 1998 Subheads. to s. 7(1), (2) ........... ad. No. 140, 2000
S. 7............................................ am. No. 140, 2000; No. 160, 2001
S. 12A ....................................... ad. No. 140, 2001
Chapter 2 Part 3 Division 1
Subhead. to s. 18(1).................. ad. No. 140, 2000
S. 18.......................................... am. No. 140, 2000
Division 2
S. 24.......................................... am. No. 140, 2000; No. 8, 2010
Division 3
S. 28.......................................... rs. No. 140, 2000
Chapter 3 Part 1 Division 1
Ss. 33, 34 .................................. rs. No. 140, 2000
S. 35.......................................... am. No. 140, 2000
S. 36.......................................... rs. No. 140, 2000
S. 39.......................................... rep. No. 140, 2000
Division 2
S. 40.......................................... am. No. 140, 2000; No. 106, 2006
Division 3
S. 43.......................................... am. No. 140, 2000
Part 2
Heading to Part 2 ..................... rs. No. 140, 2000 of Chapt. 3
Division 1
S. 45.......................................... am. No. 140, 2000; No. 160, 2001; No. 48, 2003
Division 2
S. 48.......................................... am. No. 140, 2000; No. 160, 2001
Notes to the Patents Act 1990
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Part 3 Division 1
Heading to Div. 1 of Part 3 ........ ad. No. 140, 2000 of Chapt. 3
S. 49.......................................... am. No. 140, 2000; No. 160, 2001 Ss. 50, 51 .................................. rs. No. 140, 2000
Division 2
Heading to Div. 2 of Part 3 ........ ad. No. 140, 2000 of Chapt. 3
S. 52.......................................... rs. No. 140, 2000
Chapter 4
Ss. 54, 55 .................................. am. No. 140, 2000
S. 56.......................................... am. No. 66, 1991
S. 57.......................................... am. No. 140, 2000
Chapter 5
Heading to Chapt. 5 .................. rs. No. 140, 2000
S. 59.......................................... am. No. 140, 2000; No. 120, 2004
Chapter 6 Part 1
S. 61 ......................................... am. No. 160, 2001
S. 62.......................................... rs. No. 140, 2000
S. 64.......................................... am. No. 140, 2000
S. 66.......................................... am. No. 140, 2000
Part 2
S. 67.......................................... am. No. 154, 1994
S. 68.......................................... rs. No. 140, 2000
Part 3
Heading to Part 3 ..................... rs. No. 140, 2000 of Chapt. 6
Heading to Div. 1 of Part 3 ........ rep. No. 154, 1994 of Chapt. 6 ad. No. 100, 1998 rep. No. 140, 2000
Div. 1 of Part 3 of Chapt. 6........ rep. No. 140, 2000
S. 69.......................................... rep. No. 140, 2000
Heading to Div. 2 of Part 3 ........ rep. No. 140, 2000 of Chapt. 6
Div. 2 of Part 3 of Chapt. 6........ rep. No. 154, 1994 ad. No. 100, 1998
S. 70.......................................... rep. No. 154, 1994 ad. No. 100, 1998 am. No. 100, 2005
Ss. 71–76 .................................. rep. No. 154, 1994 ad. No. 100, 1998
S. 76A ....................................... ad. No. 100, 1998
Notes to the Patents Act 1990
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
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
Chapt. 6A .................................. ad. No. 140, 2000
S. 79B ....................................... ad. No. 140, 2000
S. 79C ....................................... ad. No. 140, 2000 am. No. 106, 2006
Chapter 7
S. 80.......................................... rs. No. 140, 2000
S. 83.......................................... am. No. 154, 1994 rs. No. 100, 1998 am. No. 100, 2005
S. 84.......................................... rep. No. 154, 1994
Chapter 8 Part 1
Ss. 88, 89 .................................. am. No. 140, 2000
Chapter 9
Heading to Chapt. 9 ................. rs. No. 140, 2000
S. 96A ....................................... ad. No. 140, 2000
S. 97.......................................... am. No. 66, 1991; No. 160, 2001
S. 98.......................................... am. No. 140, 2000; No. 160, 2001
S. 99.......................................... am. No. 140, 2000
S. 100........................................ am. No. 66, 1991
S. 100A .................................... ad. No. 160, 2001 Heading to s. 101 ..................... rs. No. 160, 2001
S. 101........................................ am. No. 66, 1991
Chapter 9A
Chapt. 9A .................................. ad. No. 140, 2000
Part 1
S. 101A ..................................... ad. No. 140, 2000
S. 101B ..................................... ad. No. 140, 2000 am. No. 160, 2001
S. 101C ..................................... ad. No. 140, 2000
S. 101D ..................................... ad. No. 140, 2000 rs. No. 160, 2001; No. 48, 2003
S. 101E ..................................... ad. No. 140, 2000 am. No. 160, 2001
Notes to the Patents Act 1990
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
S. 101F...................................... ad. No. 140, 2000
Part 2
S. 101G ..................................... ad. No. 140, 2000 am. No. 160, 2001
S. 101H ..................................... ad. No. 140, 2000 Ss. 101J–101L .......................... ad. No. 140, 2000
Part 3
Ss. 101M, 101N ........................ ad. No. 140, 2000
S. 101P ..................................... ad. No. 140, 2000
Chapter 10 Part 1
Subhead. to s. 102(1)................ ad. No. 140, 2000
S. 102........................................ am. No. 140, 2000; No. 160, 2001
Part 2
S. 104........................................ am. No. 120, 2004
S. 106........................................ am. No. 140, 2000 Heading to s. 107 ...................... am. No. 140, 2000
S. 107........................................ am. No. 140, 2000
S. 108........................................ rep. No. 140, 2000
S. 109........................................ am. No. 140, 2000
Part 3
S. 111........................................ rep. No. 140, 2000
S. 114........................................ am. No. 140, 2000
S. 114A ..................................... ad. No. 140, 2000
Chapter 11 Part 1
S. 119 ....................................... am. No. 160, 2001 rs. No. 106, 2006
S. 119A .................................... ad. No. 106, 2006
S. 120........................................ am. No. 140, 2000
S. 121A ..................................... ad. No. 154, 1994
S. 122........................................ am. No. 106, 2006
Part 2
S. 126........................................ am. No. 140, 2000
Part 3
S. 129........................................ rs. No. 140, 2000
S. 129A ..................................... ad. No. 140, 2000
S. 130........................................ am. No. 140, 2000 Notes to s. 130(3), (4) ............... ad. No. 140, 2000
Chapter 12
S. 133........................................ am. No. 154, 1994; No. 140, 2000; No. 106, 2006; No. 103, 2010
Notes to the Patents Act 1990
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Heading to s. 134 ...................... am. No. 140, 2000
S. 134........................................ am. No. 140, 2000; No. 106, 2006; No. 103, 2010
S. 136A ..................................... ad. No. 106, 2006
S. 138........................................ am. No. 140, 2000; No. 120, 2004
Chapter 13
S. 141........................................ rs. No. 140, 2000
S. 142........................................ am. No. 140, 2000; No. 160, 2001
S. 143A ..................................... ad. No. 140, 2000 am. No. 160, 2001
S. 143B .................................... ad. No. 160, 2001
Chapter 14
S. 144........................................ am. No. 140, 2000
Chapter 15
S. 151........................................ am. No. 140, 2000
S. 153........................................ am. No. 140, 2000
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
Chapter 18
S. 178........................................ am. No. 140, 2000 Ss. 179–181 .............................. am. No. 140, 2001
S. 185........................................ rs. No. 100, 1998
Chapter 19
S. 186........................................ am. No. 140, 2000
S. 187........................................ rs. No. 140, 2000
S. 191........................................ am. No. 140, 2001
Chapter 20 Part 1
S. 198........................................ rs. No. 100, 1998
S. 200........................................ am. No. 100, 1998
S. 200A ..................................... ad. No. 100, 1998 rs. No. 146, 1999
Part 2
S. 201........................................ am. No. 100, 1998; No. 55, 2001
S. 202A ..................................... ad. No. 100, 1998
S. 204........................................ am. No. 100, 1998; No. 140, 2000
Notes to the Patents Act 1990
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Chapter 21
Ss. 207–209 .............................. am. No. 58, 1994
Chapter 22
S. 213........................................ am. No. 100, 1998
S. 220........................................ am. No. 100, 1998
S. 222A ..................................... ad. No. 106, 2006
S. 223........................................ am. No. 66, 1991; No. 154, 1994; No. 140, 2000; No. 160, 2001; No. 48, 2003
S. 224........................................ am. No. 100, 1998; No. 140, 2000 Heading to s. 225 ...................... rs. No. 140, 2001
S. 225........................................ am. No. 140, 2001; No. 4, 2010 Note to s. 225............................ ad. No. 140, 2001
S. 227........................................ am. No. 100, 1998; No. 140, 2000
S. 227A ..................................... ad. No. 100, 1998
S. 228........................................ am. No. 140, 2000
Chapter 23
S. 232........................................ rep. No. 154, 1994
S. 233........................................ am. No. 66, 1991
Schedule 1
Schedule 1 ................................ am. No. 66, 1991; Nos. 58, 108 and 154, 1994; No. 100, 1998; No. 146, 1999; No. 140, 2000; No. 160, 2001; No. 48, 2003; No. 106, 2006
Notes to the Patents Act 1990
Note 2
Note 2
Personal Property Securities (Consequential Amendments) Act 2009
(No. 131, 2009)
The following amendments commence on 1 February 2012 or an earlier time determined by the Minister (see section 306 of the Personal Property Securities Act 2009):
Schedule 2
8 Section 3 (list of definitions)
Insert “PPSA security interest”.
9 After subsection 189(2)
Insert:
(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.
10 At the end of section 189
Add:
(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:
11 At the end of section 195
Add:
(3) This section does not apply in relation to any particulars registered in the Register 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.
Notes to the Patents Act 1990
Note 2
12 Section 196
Before “A document”, insert “(1)”.
13 At the end of section 196
Add:
(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.
14 Schedule 1 (Dictionary)
Insert:
PPSA security interest (short for Personal Property Securities Act security interest) means:
Note 1: The Personal Property Securities Act 2009 applies to certain security interests in personal property. See the following provisions of that Act:
Note 2: For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009. Division 4 of Part 9.4 of that Act applies to transitional security interests in situations including the bankruptcy or insolvency of a secured party, grantor or debtor.
As at 1 January 2011 the amendments are not incorporated in this compilation.
Notes to the Patents Act 1990
Note 3
Note 3
Personal Property Securities (Corporations and Other Amendments) Act 2010
(No. 96, 2010)
The following amendment commences immediately after the commencement of item 14 of Schedule 2 to the Personal Property Securities (Consequential Amendments) Act 2009:
Schedule 3
16 Schedule 1 (Dictionary) (definition of PPSA security interest)
Repeal the definition, substitute:
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:
Note 2: For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009.
Note: This amendment replaces the definition inserted by item 14 of Schedule 2 to the Personal Property Securities (Consequential Amendments) Act 2009.
As at 1 January 2011 the amendment is not incorporated in this compilation.
Notes to the Patents Act 1990
Table A
Table A
Application, saving or transitional provisions
Intellectual Property Laws Amendment Act 1998 (No. 100, 1998)
Schedule 1
8 Application of amendments
The amendments made by this Schedule apply to:
Schedule 2
31 Transitional—Register of Patent Attorneys
After the commencement of this item, the Register of Patent Attorneys kept under section 198 of the Patents Act 1990 (as in force immediately before that commencement) is taken to form part of the Register of Patent Attorneys kept under section 198 of that Act as amended by this Schedule.
32 Transitional—registered patent attorneys
Notes to the Patents Act 1990
Table A
Schedule 3
4 Application
Section 227 of the Patents Act 1990 as amended by item 3 of this Schedule applies only in relation to a fee payable under that Act in respect of the doing of an act or the filing of a document that is to occur on or after the commencement of that item.
Patents Amendment (Innovation Patents) Act 2000 (No. 140, 2000)
Schedule 2
1 Definitions
In this Schedule:
commencement day means the day this Act commences.
new law means the Patents Act 1990 as amended by this Act.
old law means the Patents Act 1990, and the regulations made under it, in force immediately before this Act commences.
petty patent means letters patent for an invention granted under section 62 of the old law.
2 Saving and application provisions relating to old law
(1) Despite the amendments and repeals made by this Act, the old law continues to apply, with the exceptions set out in the following subitems, to:
The old law continues to apply as if those amendments and repeals had not been made.
Notes to the Patents Act 1990
Table A
Exception—fees payable in respect of petty patents after the commencement day
(2) The amendments made by items 89 and 90 of Schedule 1 are incorporated into the old law in relation to fees payable in respect of petty patents on or after the commencement day.
Exception—under subsection 33(2) of the old law only innovation patents may be granted
(3) Despite subsection 33(2) of the old law providing that the Commissioner may grant a person who applies for a petty patent if the matters listed in paragraphs 33(2)(a), (b) and (c) are satisfied, the Commissioner, on or after the commencement day, may only grant the person an innovation patent.
Exception—under sections 34, 35 and 36 of the old law only innovation patents or standard patents may be granted
(4) Despite section 34, 35 and 36 of the old law providing that the Commissioner may grant a person a patent, the Commissioner, on or after the commencement day, may only grant a person an innovation patent or a standard patent.
Note: Under the old law, patent means a standard patent or a petty patent. This subitem overrides that meaning for grants of patent that the Commissioner makes on or after the commencement day.
Exception—divisional applications made after commencement day
Notes to the Patents Act 1990
Table A
3 Transitional—applications for petty patents made before the commencement day may be converted to innovation patents or standard patents
(1) If, before the commencement day:
then, after that day, the person may convert the application, as provided for under subsection 104(2) of the old law.
(2) However, despite subsection 104(2) of the old law providing that the application may be for a standard patent or a petty patent, an application may only be made for a standard patent or an innovation patent.
4 Transitional—Register of Patents
Despite the continuation of section 186 of the old law by subitem 2(1):
Note: Section 186 of the new law provides for the Register of Patents to have 2 parts: one dealing with entries relating to standard patents and the other dealing with entries relating to innovation patents.
5 Continuity of Register of Patents not affected
To avoid doubt, the continuity of the Register of Patents and the entries on it, are unaffected by the amendments made by this Act.
6 Other transitional matters relating to innovation patents and petty patents may be provided for in the regulations
The Governor-General may make regulations, not inconsistent with this Act or the new law, prescribing other transitional matters, apart from transitional matters provided for in this Schedule, that are necessary or convenient for carrying out or giving effect to:
(a) the introduction of the innovation patent scheme; and
Notes to the Patents Act 1990
Table A
(b) the limited continuation of the petty patent scheme as provided for in this Schedule.
7 Application
8 Saving of regulations for subsection 223(9)
Industry, Science and Resources Legislation Amendment (Application of Criminal Code) Act 2001 (No. 140, 2001)
4 Application of amendments
Notes to the Patents Act 1990
Table A
Patents Amendment Act 2001 (No. 160, 2001)
Schedule 1
13 Application
The amendments made by this Part apply in relation to:
32 Application
Notes to the Patents Act 1990
Table A
(7) The amendments made by items 27, 28, 29, 30 and 31 of this Schedule apply in relation to applications made under section 223 of the Patents Act 1990 on or after the commencement of this Schedule.
33 Saving of regulations
Intellectual Property Laws Amendment Act 2003 (No. 48, 2003)
Schedule 2
5 Application
commencement means the time of commencement of Part 1 of this Schedule.
Notes to the Patents Act 1990
Table A
new section 101D means section 101D of the Patents Act 1990 as in force immediately after commencement.
new subsection 45(3) means subsection 45(3) of the Patents Act 1990 as in force immediately after commencement.
old section 101D means section 101D of the Patents Act 1990 as in force immediately before commencement.
old subsection 45(3) means subsection 45(3) of the Patents Act
1990 as in force immediately before commencement.
US Free Trade Agreement Implementation Act 2004 (No. 120, 2004)
Schedule 8
3 Application of amendments of section 59 of the Patents Act 1990
The amendments of section 59 of the Patents Act 1990 made by this Schedule apply in relation to each patent application for a standard patent:
Intellectual Property Laws Amendment Act 2006 (No. 106, 2006)
Schedule 5
2 Application
The amendment of section 122 of the Patents Act 1990 made by this Schedule applies to infringements of patents occurring on or after the commencement of this Schedule.
Notes to the Patents Act 1990
Table A
Schedule 6
2 Application
The amendment of the Patents Act 1990 made by this Schedule applies in relation to patents granted as a result of applications filed on or after the commencement of this Schedule.
Schedule 7
4 Application
The amendments of the Patents Act 1990 made by this Schedule apply in relation to the exploitation, at or after the time this Schedule commences, of inventions claimed in patents in force at or after that time.
Schedule 8
9 Application and saving provisions
Schedule 9
2 Application
The amendment of paragraph 40(2)(c) of the Patents Act 1990 made by this Schedule applies to complete specifications relating to applications for innovation patents filed before, on or after the commencement of this Schedule.
Notes to the Patents Act 1990
Table A
Schedule 10
3 Application
The amendments made by this Schedule apply to the making of a complete application on or after the commencement of this Schedule, whether the first patent concerned was granted before, on or after that commencement.
Personal Property Securities (Consequential Amendments) Act 2009
(No. 131, 2009)
The following provision commences on 1 February 2012 or an earlier time determined by the Minister (see section 306 of the Personal Property Securities Act 2009):
Schedule 2
15 Application of amendments of the Patents Act 1990
Note: Items 9 to 13 commence at the registration commencement time within the meaning of section 306 of the Personal Property Securities Act 2009.
Notes to the Patents Act 1990
Table B
Table B
Modifications
Patents Regulations 1991
8.3 Modification of Act to apply to PCT applications
(1) For paragraph 228 (2) (t) of the Act, the Act is modified under this regulation for PCT applications that are treated as patent applications under the Act.
(1AA) Subsection 45 (1):
omit
Where
insert
Subject to subsection (1AC), where
(1AB) After subsection 45 (1):
insert
(1AA) Where:
Notes to the Patents Act 1990
Table B
the Commissioner may report on these matters and ask the applicant to provide a copy of the international preliminary examination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any amendments that may have been made under Article 34 of the PCT.
(1AB) Where:
the Commissioner may report on these matters and ask the applicant to provide a copy of the international preliminary examination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any amendments that may have been made under Article 34 of the PCT.
(1AC) If subsection (1AA) or (1AB) applies, the Commissioner is not required to perform his or her functions under subsection (1) unless:
(i) advises that:
Notes to the Patents Act 1990
Table B
(C) the demand was made under Article 31 of the PCT, or the international preliminary examination report was established, after the applicant complied with the requirements of subsection 89 (3); or
(ii) elects to abandon any amendments that may have been made under Article 34 of the PCT.
Note Under subsection 89 (7) of the Act, as modified by the Patents Regulations 1991, if the applicant provides the advice, or makes the election, mentioned in paragraph (1AC) (b), any amendments made under Article 34 of the PCT are not taken to be included in the application.
(1AC) After subsection 45 (5):
insert
(6) In this section:
International Bureau means the International Bureau of the World Intellectual Property Organization. international preliminary examination report has the
same meaning as it has in the PCT.
(1AD) Subsection 48 (1):
omit
When
insert
Subject to subsection (1AC), when
(1AE) After subsection 48 (1):
insert
(1AA) Where:
(a) an applicant asks for a modified examination of a patent request and complete specification relating to a PCT application; and
Notes to the Patents Act 1990
Table B
| preliminary examination International Bureau; and | report | from | the | ||||
|---|---|---|---|---|---|---|---|
| (d) | the | International | Bureau | advises | that | the | |
international preliminary examination report is not
available; the Commissioner may report on these matters and ask the applicant to provide a copy of the international preliminary examination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any amendments that may have been made under Article 34 of the PCT.
(1AB) Where:
the Commissioner may report on these matters and ask the applicant to provide a copy of the international preliminary examination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any amendments that may have been made under Article 34 of the PCT.
Notes to the Patents Act 1990
Table B
(1AC) If subsection (1AA) or (1AB) applies, the Commissioner is not required to perform his or her functions under subsection (1) unless:
Note Under subsection 89 (7) of the Act, as modified by the Patents Regulations 1991, if the applicant provides the advice, or makes the election, mentioned in paragraph (1AC) (b), any amendments made under Article 34 of the PCT are not taken to be included in the application.
(1AF) After subsection 48 (2):
insert
(3) In this section:
International Bureau means the International Bureau of the World Intellectual Property Organization. international preliminary examination report has the
same meaning as it has in the PCT.
Notes to the Patents Act 1990
Table B
(1A) Section 53:
omit
Where
insert
(1) Where
(1B) Section 53:
insert
(2) For a PCT application, the prescribed information is taken to have been published under subsection (1) when the application is published by the International Bureau of the World Intellectual Property Organization.
(1BA) Subsection 89 (5):
substitute
(5) If:
(1BD) After subsection 89 (5):
insert
Notes to the Patents Act 1990
Table B
(b) an international preliminary examination report is established before the applicant meets the requirements of subsection (3);
the description, drawings and claims contained in the application are, for the purposes of this Act, to be taken to have been amended on the day on which the amendment was made.
(1C) Paragraph 90 (a):
omit
subsection 92 (1) or (2)
insert
subsection 92 (2)
(1D) Paragraph 90 (b):
substitute
(b) where subsection 92 (3) applies — on the day on which the application is published under Article 21 of the PCT.
Notes to the Patents Act 1990
Table B
(1E) Section 92:
substitute
92 Notice of publication
the PCT; the application is open to public inspection.
priority date, for an international application, has the same meaning as in the PCT.
Notes to the Patents Act 1990
Table B
(2) Section 141: omit the section, substitute: ‘141 Withdrawal of applications
substitute
‘international filing date, in relation to an international application, means:
Notes to the Patents Act 1990
Table B
(c) if the Commissioner has treated another date as the international filing date under Rule 82ter — that international filing date as so treated.
[See also section 10]’.