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主要文本 主要文本 英语 Patents Act 1990 (consolidated as of June 24, 2014)        


Prepared by the Office of Parliamentary Counsel, Canberra

Patents Act 1990

No. 83, 1990 as amended

Compilation start date: 24 June 2014

Includes amendments up to: Act No. 31, 2014

ComLaw Authoritative Act C2014C00301

About this compilation

This compilation

This is a compilation of the Patents Act 1990 as in force on 24 June 2014. It

includes any commenced amendment affecting the legislation to that date.

This compilation was prepared on 24 June 2014.

The notes at the end of this compilation (the endnotes) include information

about amending laws and the amendment history of each amended provision.

Uncommenced amendments

The effect of uncommenced amendments is not reflected in the text of the

compiled law but the text of the amendments is included in the endnotes.

Application, saving and transitional provisions and amendments

If the operation of a provision or amendment is affected by an application,

saving or transitional provision that is not included in this compilation, details

are included in the endnotes.

Modifications

If a provision of the compiled law is affected by a modification that is in force,

details are included in the endnotes.

Provisions ceasing to have effect

If a provision of the compiled law has expired or otherwise ceased to have

effect in accordance with a provision of the law, details are included in the

endnotes.

ComLaw Authoritative Act C2014C00301

Patents Act 1990 i

Contents

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

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

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

5 Associated applications .....................................................4

6 Deposit requirements.........................................................4

7 Novelty, inventive step and innovative step ......................5

7A Meaning of useful..............................................................6

9 Secret use ..........................................................................7

10 Certain international applications to be taken to

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

11 Act binds the Crown..........................................................8

12 Application of Act .............................................................8

12A Application of the Criminal Code .....................................9

Chapter 2—Patent rights, ownership and validity 10

Part 1—Patent rights 10 13 Exclusive rights given by patent......................................10

14 Assignment of patent.......................................................10

Part 2—Ownership 11 15 Who may be granted a patent? ........................................11

16 Co-ownership of patents..................................................11

17 Directions to co-owners...................................................12

Part 3—Validity 13

Division 1—Validity 13

18 Patentable inventions.......................................................13

19 Certificate of validity.......................................................14

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

21 Validity not implied by making or refusal of

non-infringement declaration ..........................................15

Division 2—Matters not affecting validity 16

22A Validity not affected by who patent is granted to ............16

22 Invalidity in relation to one claim not to affect

validity in relation to other claims ...................................16

23 Validity not affected by publication etc. after

priority date .....................................................................16

ComLaw Authoritative Act C2014C00301

ii Patents Act 1990

24 Validity not affected by certain publication or use ..........16

25 Validity: patents of addition ............................................17

26 Validity not affected in certain cases involving

amendments.....................................................................17

Division 3—Notice of matters affecting validity 19

27 Notice of matters affecting validity of standard

patents .............................................................................19

28 Notice of matters affecting validity of innovation

patents .............................................................................19

Chapter 3—From application to acceptance 21

Part 1—Patent applications 21

Division 1—Applications 21

29 Application for patent—general rules .............................21

29A Applications for patents—special rules for PCT

applications .....................................................................21

29B Applications for patents—special rules for

Convention applications ..................................................22

30 Filing date........................................................................23

31 Joint applicants................................................................23

32 Disputes between applicants etc. .....................................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............................29

Division 2—Specifications 30

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

41 Specifications: micro-organisms .....................................30

42 Micro-organisms ceasing to be reasonably

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

Division 3—Priority dates 34

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

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

ComLaw Authoritative Act C2014C00301

Patents Act 1990 iii

Part 2—Examination of standard patent requests and

specifications 36

Division 1A—Preliminary search and opinion 36

43A Preliminary search and opinion .......................................36

Division 1—Examination 37

44 Request for examination..................................................37

45 Examination ....................................................................37

Part 3—Acceptance 39

Division 1—Acceptance of standard patents 39

49 Acceptance of patent request: standard patent.................39

49A Postponing acceptance of patent request: standard

patent...............................................................................40

50 Application or grant may be refused in certain

cases ................................................................................40

50A Revocation of acceptance ................................................41

51 Appeal .............................................................................41

Division 2—Acceptance of innovation patents 42

52 Formalities check and acceptance of innovation

patents .............................................................................42

Chapter 4—Publication 43 53 Publication of certain information about applicants

etc. ...................................................................................43

54 Notice of publication .......................................................43

55 Documents open to public inspection..............................45

56 Certain documents not to be published............................45

56A Publication and inspection of PCT applications ..............46

57 Effect of publication of complete specification ...............46

58 Result of search may be disclosed ...................................47

Chapter 5—Opposition to grant of standard patent 48 59 Opposition to grant of standard patent.............................48

60 Hearing and decision by Commissioner ..........................48

Chapter 6—Grant and term of patents 50

Part 1—Grant 50 61 Grant of standard patent ..................................................50

62 Grant and publication of innovation patent .....................50

63 Joint patentees .................................................................51

ComLaw Authoritative Act C2014C00301

iv Patents Act 1990

64 Grant: multiple applications ............................................51

65 Date of patent ..................................................................51

Part 2—Term 52 67 Term of standard patent...................................................52

68 Term of innovation patent ...............................................52

Part 3—Extension of term of standard patents relating to

pharmaceutical substances 53 70 Applications for extension of patent................................53

71 Form and timing of an application ..................................54

72 Notification and public inspection of application ............55

73 Withdrawal of application ...............................................55

74 Acceptance or refusal of application ...............................55

75 Opposition to grant of extension .....................................56

76 Grant of extension ...........................................................56

76A Notification of extension to the Secretary, Health

and Family Services ........................................................57

77 Calculation of term of extension .....................................57

78 Exclusive rights of patentee are limited if

extension granted.............................................................57

79 Rights of patentee if extension granted after patent

expires .............................................................................58

79A Commissioner not to make decision if court

proceedings pending........................................................59

Chapter 6A—Divisional applications 60 79B Divisional applications prior to grant of patent ...............60

79C Divisional applications for innovation patents may

be made after grant of an innovation patent ....................61

Chapter 7—Patents of addition 62 80 Chapter does not apply to innovation patents ..................62

81 Grant of patent of addition ..............................................62

82 Revocation of patent and grant of patent of

addition instead ...............................................................62

83 Term of patent of addition...............................................63

85 Revocation of patent for main invention .........................64

86 Renewal fees not payable ................................................64

87 Fees payable where patent of addition becomes an

independent patent...........................................................64

ComLaw Authoritative Act C2014C00301

Patents Act 1990 v

Chapter 9—Re-examination of standard patents 65 96A Chapter does not apply to innovation patents ..................65

97 Re-examination of complete specifications .....................65

98 Report on re-examination ................................................66

99 Statement by applicant or patentee ..................................66

100 Copies of report to be given to court ...............................66

100A Refusal to grant patent—re-examination before

grant ................................................................................66

101 Revocation of patent—re-examination after grant ..........67

Chapter 9A—Examination, re-examination and

opposition-innovation patents 68

Part 1—Examination of innovation patents 68 101A Examination may be requested or Commissioner

may decide to examine ....................................................68

101B Examination of an innovation patent ...............................68

101C How and when examination to be carried out .................69

101E Certificate of examination ...............................................69

101EA Revocation of certificate of examination.........................70

101F Revocation of innovation patents following

examination under section 101B .....................................71

Part 2—Re-examination of innovation patents 72 101G Re-examination of complete specifications of

innovation patents ...........................................................72

101H Patentee statements..........................................................73

101J Revocation of innovation patent following

re-examination.................................................................73

101K Relevant proceedings and re-examination.......................74

101L Copies of report to be given to court ...............................74

Part 3—Opposition to innovation patents 75 101M Opposition to innovation patent ......................................75

101N Hearing and decision by the Commissioner ....................75

101P Relevant proceedings and opposition ..............................76

Chapter 10—Amendments 77

Part 1—Amendments that are not allowable 77 102 What amendments are not allowable? .............................77

103 Consent of mortgagee or exclusive licensee

needed .............................................................................78

ComLaw Authoritative Act C2014C00301

vi Patents Act 1990

Part 2—Amendments of patent requests, specifications and

other filed documents 79 104 Amendments by applicants and patentees .......................79

105 Amendments directed by court........................................79

106 Amendments directed by Commissioner: patents............80

107 Amendments directed by Commissioner:

applications for standard patents .....................................81

109 Appeal .............................................................................82

Part 3—Miscellaneous 83 110 Advertisement of amendment of complete

specification ....................................................................83

112 Pending proceedings........................................................83

112A Decisions on appeal.........................................................83

113 Persons claiming under assignment or agreement ...........83

114 Priority date of claims of certain amended

specifications...................................................................84

114A Objection cannot be taken to certain amended

specifications...................................................................84

115 Restriction on recovery of damages etc. ..........................85

116 Interpretation of amended specifications.........................85

Chapter 11—Infringement 86

Part 1—Infringement and infringement proceedings 86 117 Infringement by supply of products.................................86

118 Infringement exemptions: use in or on foreign

vessels, aircraft or vehicles..............................................86

119 Infringement exemptions: prior use.................................87

119A Infringement exemptions: acts for obtaining

regulatory approval of pharmaceuticals...........................89

119B Infringement exemptions: acts for obtaining

regulatory approval (non-pharmaceuticals) .....................90

119C Infringement exemptions: acts for experimental

purposes ..........................................................................90

120 Infringement proceedings................................................91

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 .....................................................93

ComLaw Authoritative Act C2014C00301

Patents Act 1990 vii

Part 2—Non-infringement declarations 94 124 Interpretation ...................................................................94

125 Application for non-infringement declaration .................94

126 Proceedings for non-infringement declarations ...............94

127 Effect of non-infringement declarations..........................95

Part 3—Unjustified threats of infringement proceedings 96 128 Application for relief from unjustified threats .................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....................................................104

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............................................105

142 Lapsing of applications .................................................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

ComLaw Authoritative Act C2014C00301

viii Patents Act 1990

145 Termination of contract after patent ceases to be in

force ..............................................................................108

146 Effect of Chapter ...........................................................108

Chapter 15—Special provisions relating to associated

technology 110 147 Certificate by Director as to associated technology.......110

148 Lapsing etc. of applications...........................................111

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 Jurisdiction of Federal Court .........................................115

155 Jurisdiction of other prescribed courts...........................115

156 Exercise of jurisdiction..................................................116

157 Transfer of proceedings.................................................116

158 Appeals..........................................................................116

159 Commissioner may appear in appeals ...........................117

160 Powers of Federal Court................................................117

Chapter 17—The Crown 118

Part 1—Introductory 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..........122

ComLaw Authoritative Act C2014C00301

Patents Act 1990 ix

170 Sale of forfeited articles ................................................122

Part 3—Acquisitions by and assignments to the Crown 123 171 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

182 Officers not to traffic in inventions ...............................127

183 Unauthorised disclosure of information by

employees etc. ...............................................................128

184 Other unauthorised disclosures of information..............128

185 Commissioner etc. not to prepare documents or

search records................................................................128

Chapter 19—The Register and official documents 129 186 Register of Patents.........................................................129

187 Registration of particulars of patents etc. ......................129

188 Trusts not registrable .....................................................130

189 Power of patentee to deal with patent............................130

190 Inspection of Register....................................................130

191 False entries in Register ................................................131

191A Commissioner’s power to rectify register......................131

192 Orders for rectification of Register................................132

193 Inspection of documents................................................133

194 Information obtainable from Commissioner..................133

195 Evidence—the Register .................................................133

196 Evidence—unregistered particulars...............................134

197 Evidence—certificate and copies of documents ............134

197AA Evidence of matters arising under PCT.........................135

ComLaw Authoritative Act C2014C00301

x Patents Act 1990

Chapter 20—Patent Attorneys 136

Part 1—Registration, privileges and professional conduct 136 198 Registration of patent attorneys.....................................136

199 Deregistration ................................................................138

200 Privileges.......................................................................138

200A Designated Manager......................................................139

Part 2—Offences 140 201 Acting or holding out without being registered .............140

201A When a person carries on business, practises or

acts as a patent attorney.................................................142

201B Incorporated patent attorney must have a patent

attorney director ............................................................143

202 Documents prepared by legal practitioners ...................144

202A Documents prepared by a member of a partnership ......144

202B Documents prepared by incorporated patent

attorneys and incorporated legal practices.....................145

203 Attendance at patent attorney’s office ...........................145

204 Time for starting prosecutions.......................................146

Chapter 21—Administration 147 205 Patent Office and sub-offices ........................................147

206 Patent Office seal ..........................................................147

207 Commissioner of Patents...............................................147

208 Deputy Commissioner of Patents ..................................147

209 Delegation of Commissioner’s powers and

functions........................................................................148

210 Commissioner’s powers ................................................148

210A Sanctions for non-compliance with

Commissioner’s requirements .......................................150

211 Recovery of costs awarded by Commissioner ...............150

Chapter 22—Miscellaneous 151 212 Copies of examination reports to be communicated ......151

213 Making and signing applications etc. ............................151

214 Filing of documents.......................................................151

215 Death of applicant or nominated person........................151

216 Exercise of discretionary power by Commissioner .......152

217 Assessors .......................................................................152

218 Costs where patent invalid in part .................................152

219 Security for costs ...........................................................152

ComLaw Authoritative Act C2014C00301

Patents Act 1990 xi

220 Costs of attendance of patent attorney...........................153

221 Service of documents ....................................................153

222 Publication of Official Journal etc. ...............................153

222A Doing act when Patent Office reopens after end of

period otherwise provided for doing act ........................153

223 Extensions of time .........................................................154

224 Review of decisions.......................................................157

225 Conduct of employees and agents of natural

persons ..........................................................................158

226 Documents open to public inspection do not

infringe copyright ..........................................................159

227 Fees ...............................................................................159

227A Professional Standards Board for Patent and Trade

Marks Attorneys ............................................................160

228 Regulations....................................................................162

Chapter 23—Transitional and savings provisions 167 231 Application of Part III of 1989 Amending Act..............167

233 Patents granted under 1952 Act.....................................167

234 Applications under 1952 Act.........................................167

235 Other applications and proceedings under 1952

Act.................................................................................169

236 Micro-organisms ...........................................................169

237 Orders, directions etc. under 1952 Act ..........................169

238 The Commissioner and Deputy Commissioner .............169

239 The Register of Patents and Register of Patent

Attorneys .......................................................................169

240 Registered patent attorneys............................................170

Schedule 1—Dictionary 171

Endnotes 182

Endnote 1—About the endnotes 182

Endnote 2—Abbreviation key 184

Endnote 3—Legislation history 185

Endnote 4—Amendment history 191

Endnote 5—Uncommenced amendments [none] 202

Endnote 6—Modifications [none] 202

Endnote 7—Misdescribed amendments [none] 202

Endnote 8—Miscellaneous [none] 202

ComLaw Authoritative Act C2014C00301

ComLaw Authoritative Act C2014C00301

Introductory Chapter 1

Section 1

Patents Act 1990 1

An Act relating to patents of inventions

Chapter 1—Introductory

1 Short title

This Act may be cited as the Patents Act 1990.

2 Commencement

(1) Subject to subsection (2), this Act commences on a day to be fixed

by Proclamation.

(2) If this Act does not commence under subsection (1) within the

period of 6 months beginning on the day on which it receives the

Royal Assent, it commences on the first day after the end of that

period.

3 Definitions

The following expressions are defined, for the purposes of this Act

or of a particular Chapter of this Act, in the dictionary in

Schedule 1:

ComLaw Authoritative Act C2014C00301

Chapter 1 Introductory

Section 3

2 Patents Act 1990

application

approved form

associated

technology

Australia

Australian

continental shelf

Australian Register

of Therapeutic

Goods

authority

basic application

Budapest Treaty

certified

claim

commencing day

Commissioner

company

compensable person

complete

specification

compulsory licence

Convention applicant

Convention

application

Convention country

deposit requirements

depositary institution

Deputy

Commissioner

Designated Manager

Director

director

eligible person

employee

examination

exclusive licensee

exploit

Federal Court

file

foreign aircraft

foreign land vehicle

foreign vessel

formalities check

incorporated legal

practice

incorporated patent

attorney

infringement

proceedings

innovation patent

intellectual property

advice

interested party

international

application

international

depositary

authority

international filing

date

invention

legal practitioner

legal representative

licence

main invention

nominated person

non-infringement

declaration

Official Journal

patent

patent application

patent area

patent attorney

director

patent of addition

Patent Office

patent request

patentable invention

patented process

patented product

patentee

patents work

PCT

PCT application

permit

pharmaceutical

substance

PPSA security

interest

preliminary search

and opinion

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

related company

group

relevant authority

relevant international

application

relevant proceedings

rules relating to

micro-organisms

Safeguards Act

specification

standard patent

State

ComLaw Authoritative Act C2014C00301

Introductory Chapter 1

Section 3

Patents Act 1990 3

Statute of

Monopolies

supply

Territory

therapeutic use

this Act

work

1952 Act

1989 Amending Act

ComLaw Authoritative Act C2014C00301

Chapter 1 Introductory

Section 5

4 Patents Act 1990

5 Associated applications

For the purposes of this Act, a complete application is to be taken

to be associated with a provisional application if, and only if, the

patent request filed in respect of the complete application identifies

the provisional application and contains a statement to the effect

that the applications are associated.

[Note: see sections 29 and 38]

6 Deposit requirements

For the purposes of this Act, the deposit requirements are to be

taken to be satisfied in relation to a micro-organism to which a

specification relates if, and only if:

(a) the micro-organism was, on or before the date of filing of the

specification, deposited with a prescribed depositary

institution in accordance with the rules relating to

micro-organisms; and

(b) the specification includes, at that date, such relevant

information on the characteristics of the micro-organism as is

known to the applicant; and

(c) at all times since the end of the prescribed period, the

specification has included:

(i) the name of a prescribed depositary institution from

which samples of the micro-organism are obtainable as

provided by the rules relating to micro-organisms; and

(iii) the file, accession or registration number of the deposit

given by the institution; and

(d) at all times since the date of filing of the specification,

samples of the micro-organism have been obtainable from a

prescribed depositary institution as provided by those rules.

[Note: see sections 41 and 42]

ComLaw Authoritative Act C2014C00301

Introductory Chapter 1

Section 7

Patents Act 1990 5

7 Novelty, inventive step and innovative step

Novelty

(1) For the purposes of this Act, an invention is to be taken to be novel

when compared with the prior art base unless it is not novel in the

light of any one of the following kinds of information, each of

which must be considered separately:

(a) prior art information (other than that mentioned in

paragraph (c)) made publicly available in a single document

or through doing a single act;

(b) prior art information (other than that mentioned in

paragraph (c)) made publicly available in 2 or more related

documents, or through doing 2 or more related acts, if the

relationship between the documents or acts is such that a

person skilled in the relevant art would treat them as a single

source of that information;

(c) prior art information contained in a single specification of the

kind mentioned in subparagraph (b)(ii) of the definition of

prior art base in Schedule 1.

Inventive step

(2) For the purposes of this Act, an invention is to be taken to involve

an inventive step when compared with the prior art base unless the

invention would have been obvious to a person skilled in the

relevant art in the light of the common general knowledge as it

existed (whether in or out of the patent area) before the priority

date of the relevant claim, whether that knowledge is considered

separately or together with the information mentioned in

subsection (3).

(3) The information for the purposes of subsection (2) is:

(a) any single piece of prior art information; or

(b) a combination of any 2 or more pieces of prior art

information that the skilled person mentioned in

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

claim, be reasonably expected to have combined.

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Chapter 1 Introductory

Section 7A

6 Patents Act 1990

Innovative step

(4) For the purposes of this Act, an invention is to be taken to involve

an innovative step when compared with the prior art base unless

the invention would, to a person skilled in the relevant art, in the

light of the common general knowledge as it existed (whether in or

out of the patent area) before the priority date of the relevant claim,

only vary from the kinds of information set out in subsection (5) in

ways that make no substantial contribution to the working of the

invention.

(5) For the purposes of subsection (4), the information is of the

following kinds:

(a) prior art information made publicly available in a single

document or through doing a single act;

(b) prior art information made publicly available in 2 or more

related documents, or through doing 2 or more related acts, if

the relationship between the documents or acts is such that a

person skilled in the relevant art would treat them as a single

source of that information.

(6) For the purposes of subsection (4), each kind of information set out

in subsection (5) must be considered separately.

[Notes: (1) For the meaning of document see section 2B of the

Acts Interpretation Act 1901.

(2) See also the definitions of prior art base and prior

art information in Schedule 1: see also

paragraph 18(1)(b) and section 98.]

7A Meaning of useful

(1) For the purposes of this Act, an invention is taken not to be useful

unless a specific, substantial and credible use for the invention (so

far as claimed) is disclosed in the complete specification.

(2) The disclosure in the complete specification must be sufficient for

that specific, substantial and credible use to be appreciated by a

person skilled in the relevant art.

ComLaw Authoritative Act C2014C00301

Introductory Chapter 1

Section 9

Patents Act 1990 7

(3) Subsection (1) does not otherwise affect the meaning of the word

useful in this Act.

9 Secret use

For the purposes of this Act, the following acts are not to be taken

to be secret use of an invention in the patent area:

(a) any use of the invention by or on behalf of, or with the

authority of, the patentee or nominated person, or his or her

predecessor in title to the invention, for the purpose of

reasonable trial or experiment only;

(b) any use of the invention by or on behalf of, or with the

authority of, the patentee or nominated person, or his or her

predecessor in title to the invention, being use occurring

solely in the course of a confidential disclosure of the

invention by or on behalf of, or with the authority of, the

patentee, nominated person, or predecessor in title;

(c) any other use of the invention by or on behalf of, or with the

authority of, the patentee or nominated person, or his or her

predecessor in title to the invention, for any purpose other

than the purpose of trade or commerce;

(d) any use of the invention by or on behalf of the

Commonwealth, a State, or a Territory where the patentee or

nominated person, or his or her predecessor in title to the

invention, has disclosed the invention, so far as claimed, to

the Commonwealth, State or Territory;

(e) any use of the invention by or on behalf of, or with the

authority of, the patentee or nominated person, or his or her

predecessor in title to the invention, for any purpose, if a

complete application is made for the invention within the

prescribed period.

[Note: See also paragraph 18(1)(d)]

10 Certain international applications to be taken to have been given

an international filing date

(1) Where:

ComLaw Authoritative Act C2014C00301

Chapter 1 Introductory

Section 11

8 Patents Act 1990

(a) an international application specifies Australia as a

designated State under Article 4(1)(ii) of the PCT; and

(b) the receiving Office does not give the application an

international filing date; and

(c) the Commissioner is satisfied, on the balance of probabilities,

that the application should, under Article 25(2)(a) of the

PCT, be treated as if it had been given an international filing

date;

the application is to be taken, for the purposes of this Act, to have

been given an international filing date under Article 11 of the PCT.

(2) This section does not apply to an international application that was

not filed in the receiving Office in English unless a translation of

the application into English, verified in accordance with the

regulations, has been filed.

(3) Where this section applies, the international filing date of the

application is to be taken to be the date that, in the opinion of the

Commissioner, should have been given to the application as its

international filing date under the PCT.

[Note: international filing date is defined in Schedule 1.]

11 Act binds the Crown

(1) This Act binds the Crown in right of the Commonwealth, of each

of the States, of the Australian Capital Territory, of the Northern

Territory and of Norfolk Island.

(2) Nothing in this Act makes the Crown liable to be prosecuted for an

offence.

12 Application of Act

This Act extends to:

(a) each external Territory; and

(b) the Australian continental shelf; and

(c) the waters above the Australian continental shelf; and

(d) the airspace above Australia, each external Territory and the

Australian continental shelf.

ComLaw Authoritative Act C2014C00301

Introductory Chapter 1

Section 12A

Patents Act 1990 9

12A Application of the Criminal Code

Chapter 2 of the Criminal Code applies to all offences created by

this Act.

Note: Chapter 2 of the Criminal Code sets out the general principles of

criminal responsibility.

ComLaw Authoritative Act C2014C00301

Chapter 2 Patent rights, ownership and validity

Part 1 Patent rights

Section 13

10 Patents Act 1990

Chapter 2—Patent rights, ownership and

validity

Part 1—Patent rights

13 Exclusive rights given by patent

(1) Subject to this Act, a patent gives the patentee the exclusive rights,

during the term of the patent, to exploit the invention and to

authorise another person to exploit the invention.

(2) The exclusive rights are personal property and are capable of

assignment and of devolution by law.

(3) A patent has effect throughout the patent area.

14 Assignment of patent

(1) An assignment of a patent must be in writing signed by or on

behalf of the assignor and assignee.

(2) A patent may be assigned for a place in, or part of, the patent area.

ComLaw Authoritative Act C2014C00301

Patent rights, ownership and validity Chapter 2

Ownership Part 2

Section 15

Patents Act 1990 11

Part 2—Ownership

15 Who may be granted a patent?

(1) Subject to this Act, a patent for an invention may only be granted

to a person who:

(a) is the inventor; or

(b) would, on the grant of a patent for the invention, be entitled

to have the patent assigned to the person; or

(c) derives title to the invention from the inventor or a person

mentioned in paragraph (b); or

(d) is the legal representative of a deceased person mentioned in

paragraph (a), (b) or (c).

(2) A patent may be granted to a person whether or not he or she is an

Australian citizen.

16 Co-ownership of patents

(1) Subject to any agreement to the contrary, where there are 2 or more

patentees:

(a) each of them is entitled to an equal undivided share in the

patent; and

(b) each of them is entitled to exercise the exclusive rights given

by the patent for his or her own benefit without accounting to

the others; and

(c) none of them can grant a licence under the patent, or assign

an interest in it, without the consent of the others.

(2) Where a patented product, or a product of a patented method or

process, is sold by any of 2 or more patentees, the buyer, and a

person claiming through the buyer, may deal with the product as if

it had been sold by all the patentees.

(3) This section does not affect the rights or obligations of a trustee or

of the legal representative of a deceased person, or rights or

obligations arising out of either of those relationships.

ComLaw Authoritative Act C2014C00301

Chapter 2 Patent rights, ownership and validity

Part 2 Ownership

Section 17

12 Patents Act 1990

17 Directions to co-owners

(1) Where there are 2 or more patentees, the Commissioner may, on

the application of any of them, give such directions in accordance

with the application as the Commissioner thinks fit, being

directions about:

(a) a dealing with the patent or an interest in it; or

(b) the grant of licences under the patent; or

(c) the exercise of a right under section 16 in relation to the

patent.

(2) If a patentee fails to do anything necessary to carry out a direction

under subsection (1) within 14 days after being asked in writing to

do so by one of the other patentees, the Commissioner may, on the

application of one of those other patentees, direct a person to do it

in the name and on behalf of the defaulting patentee.

(3) Before giving a direction, the Commissioner must give an

opportunity to be heard:

(a) in the case of an application by a patentee or patentees under

subsection (1)—to the other patentee or patentees; and

(b) in the case of an application under subsection (2)—to the

defaulting patentee.

(4) The Commissioner must not give a direction that:

(a) affects the rights or obligations of a trustee or of the legal

representative of a deceased person, or rights or obligations

arising out of either of those relationships; or

(b) is inconsistent with the terms of an agreement between the

patentees.

ComLaw Authoritative Act C2014C00301

Patent rights, ownership and validity Chapter 2

Validity Part 3

Validity Division 1

Section 18

Patents Act 1990 13

Part 3—Validity

Division 1—Validity

18 Patentable inventions

Patentable inventions for the purposes of a standard patent

(1) Subject to subsection (2), an invention is a patentable invention for

the purposes of a standard patent if the invention, so far as claimed

in any claim:

(a) is a manner of manufacture within the meaning of section 6

of the Statute of Monopolies; and

(b) when compared with the prior art base as it existed before the

priority date of that claim:

(i) is novel; and

(ii) involves an inventive step; and

(c) is useful; and

(d) was not secretly used in the patent area before the priority

date of that claim by, or on behalf of, or with the authority of,

the patentee or nominated person or the patentee’s or

nominated person’s predecessor in title to the invention.

Patentable inventions for the purposes of an innovation patent

(1A) Subject to subsections (2) and (3), an invention is a patentable

invention for the purposes of an innovation patent if the invention,

so far as claimed in any claim:

(a) is a manner of manufacture within the meaning of section 6

of the Statute of Monopolies; and

(b) when compared with the prior art base as it existed before the

priority date of that claim:

(i) is novel; and

(ii) involves an innovative step; and

(c) is useful; and

ComLaw Authoritative Act C2014C00301

Chapter 2 Patent rights, ownership and validity

Part 3 Validity

Division 1 Validity

Section 19

14 Patents Act 1990

(d) was not secretly used in the patent area before the priority

date of that claim by, or on behalf of, or with the authority of,

the patentee or nominated person or the patentee’s or

nominated person’s predecessor in title to the invention.

(2) Human beings, and the biological processes for their generation,

are not patentable inventions.

Certain inventions not patentable inventions for the purposes of an

innovation patent

(3) For the purposes of an innovation patent, plants and animals, and

the biological processes for the generation of plants and animals,

are not patentable inventions.

(4) Subsection (3) does not apply if the invention is a microbiological

process or a product of such a process.

[Note: see also sections 7 and 9.]

19 Certificate of validity

(1) In any proceedings in a court in which the validity of a patent, or of

a claim, is disputed, the court may certify that the validity of a

specified claim was questioned.

(2) If a court issues a certificate, then, in any subsequent proceedings

for infringement of the claim concerned, or for the revocation of

the patent so far as it relates to that claim, the patentee, or any other

person supporting the validity of the claim is, on obtaining a final

order or judgment in his or her favour, entitled to full costs,

charges and expenses as between solicitor and client, so far as that

claim is concerned.

(3) Subsection (2) has effect subject to any direction by the court

trying the proceedings.

20 Validity of patent not guaranteed

(1) Nothing done under this Act or the PCT guarantees the granting of

a patent, or that a patent is valid, in Australia or anywhere else.

ComLaw Authoritative Act C2014C00301

Patent rights, ownership and validity Chapter 2

Validity Part 3

Validity Division 1

Section 21

Patents Act 1990 15

(2) The Commonwealth, the Commissioner, a Deputy Commissioner,

or an employee, is not liable because of, or in connection with,

doing any act under this Act or the PCT, or any proceedings

consequent on doing any such act.

21 Validity not implied by making or refusal of non-infringement

declaration

The making of, or refusal to make, a non-infringement declaration

in respect of a claim of a patent does not imply that the claim is

valid.

ComLaw Authoritative Act C2014C00301

Chapter 2 Patent rights, ownership and validity

Part 3 Validity

Division 2 Matters not affecting validity

Section 22A

16 Patents Act 1990

Division 2—Matters not affecting validity

22A Validity not affected by who patent is granted to

A patent is not invalid merely because:

(a) the patent, or a share in the patent, was granted to a person

who was not entitled to it; or

(b) the patent, or a share in the patent, was not granted to a

person who was entitled to it.

22 Invalidity in relation to one claim not to affect validity in relation

to other claims

The invalidity of a patent in relation to a claim does not affect its

validity in relation to any other claim.

23 Validity not affected by publication etc. after priority date

A patent is not invalid, so far as the invention is claimed in any

claim, merely because of:

(a) the publication or use of the invention, so far as claimed in

that claim, on or after the priority date of that claim; or

(b) the grant of another patent which claims the invention, so far

as claimed in the first-mentioned claim, in a claim of the

same or a later priority date.

24 Validity not affected by certain publication or use

(1) For the purpose of deciding whether an invention is novel or

involves an inventive step or an innovative step, the person making

the decision must disregard:

(a) any information made publicly available in the prescribed

circumstances, by or with the consent of the nominated

person or patentee, or the predecessor in title of the

nominated person or patentee; and

(b) any information made publicly available without the consent

of the nominated person or patentee, through any publication

or use of the invention by another person who derived the

ComLaw Authoritative Act C2014C00301

Patent rights, ownership and validity Chapter 2

Validity Part 3

Matters not affecting validity Division 2

Section 25

Patents Act 1990 17

information from the nominated person or patentee or from

the predecessor in title of the nominated person or patentee;

but only if a complete application for the invention is made within

the prescribed period.

(2) For the purpose of deciding whether an invention is novel or

involves an inventive step or an innovative step, the person making

the decision must disregard:

(a) any information given by, or with the consent of, the

nominated person or the patentee, or his or her predecessor in

title, to any of the following, but to no other person or

organisation:

(i) the Commonwealth or a State or Territory, or an

authority of the Commonwealth or a State or Territory;

(ii) a person authorised by the Commonwealth or a State or

Territory to investigate the invention; and

(b) anything done for the purpose of an investigation mentioned

in subparagraph (a)(ii).

25 Validity: patents of addition

Objection cannot be taken to a patent request or complete

specification in respect of an application for a patent of addition,

and a patent of addition is not invalid, merely because the

invention, so far as claimed, does not involve an inventive step,

having regard to the publication or use of the main invention

during the prescribed period.

26 Validity not affected in certain cases involving amendments

(1) Objection cannot be taken to a patent request and specification that

have been accepted, and a patent is not invalid, merely because the

specification claims an invention that was not the subject of the

request, or that was not described or claimed in the specification as

filed.

(2) Except in the case of an amendment made in contravention of

section 112 or 112A, objection cannot be taken to a patent request

and specification that have been accepted, and a patent is not

ComLaw Authoritative Act C2014C00301

Chapter 2 Patent rights, ownership and validity

Part 3 Validity

Division 2 Matters not affecting validity

Section 26

18 Patents Act 1990

invalid, merely because an amendment of the specification has

been made that was not allowable.

ComLaw Authoritative Act C2014C00301

Patent rights, ownership and validity Chapter 2

Validity Part 3

Notice of matters affecting validity Division 3

Section 27

Patents Act 1990 19

Division 3—Notice of matters affecting validity

27 Notice of matters affecting validity of standard patents

(1) A person may, within the prescribed period after a complete

specification filed in relation to an application for a standard patent

becomes open to public inspection, notify the Commissioner, in

accordance with the regulations, that the person asserts, for reasons

stated in the notice, that the invention concerned is not a patentable

invention because it does not comply with paragraph 18(1)(b).

(2) The Commissioner must inform the applicant for the patent in

writing of any matter of which the Commissioner is notified and

send the applicant a copy of any document accompanying the

notice.

(3) The Commissioner must otherwise consider and deal with a notice

in accordance with the regulations.

(4) A notice and any document accompanying it are open to public

inspection.

28 Notice of matters affecting validity of innovation patents

Person may give notice of invalidity of an innovation patent

(1) A person may notify the Commissioner that the person asserts, for

reasons stated in the notice, that an innovation patent is invalid

because the invention concerned does not comply with

paragraph 18(1A)(b).

When notice may be given

(2) A notice may only be given to the Commissioner under

subsection (1) in respect of an innovation patent within the

prescribed period after an innovation patent has been granted.

How notice must be given

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

ComLaw Authoritative Act C2014C00301

Chapter 2 Patent rights, ownership and validity

Part 3 Validity

Division 3 Notice of matters affecting validity

Section 28

20 Patents Act 1990

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.

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Patent applications Part 1

Applications Division 1

Section 29

Patents Act 1990 21

Chapter 3—From application to acceptance

Part 1—Patent applications

Division 1—Applications

29 Application for patent—general rules

(1) A person may apply for a patent for an invention by filing, in

accordance with the regulations, a patent request and such other

documents as are prescribed.

(2) An application may be a provisional application or a complete

application.

(3) A patent request in relation to a provisional application must be in

the approved form and accompanied by a provisional specification.

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

the approved form and accompanied by a complete specification.

(5) In this section:

person includes a body of persons, whether incorporated or not.

[Note: see also section 5 for requirements relating to associated

applications.]

29A Applications for patents—special rules for PCT applications

(1) A PCT application is to be treated as a complete application under

this Act for a standard patent.

(2) The description, drawings and claims contained in a PCT

application are to be treated as a complete specification filed in

respect of the application.

(3) The specification of a PCT application is to be taken to be

amended in the circumstances, on the day and in the manner as

prescribed by the regulations.

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 1 Patent applications

Division 1 Applications

Section 29B

22 Patents Act 1990

(4) A PCT application is to be taken to comply with the prescribed

requirements of this Act that relate to applications for standard

patents, but is not to be taken, merely because of subsection (1) or

(2), to comply with any other requirements of this Act.

(5) An applicant of a PCT application must do the following within the

prescribed period:

(a) if the application was not filed in the receiving Office in

English—file a translation of the application into English;

(b) in any case—file the prescribed documents and pay the

prescribed fees.

Note: A failure to comply with this subsection may result in the PCT

application lapsing: see paragraph 142(2)(f).

29B Applications for patents—special rules for Convention

applications

Making Convention applications

(1) A Convention applicant in relation to a basic application may make

a Convention application, or 2 or more such applicants may make a

joint Convention application.

(2) If 2 or more basic applications for protection in respect of

inventions have been made in one or more Convention countries,

one Convention application may be made within the prescribed

period by a Convention applicant in relation to those basic

applications, or by 2 or more such entitled applicants jointly, in

respect of the inventions disclosed in the basic applications.

(3) Subject to subsections (4) and (5), a Convention application must

be made and dealt with in the same way as any other patent

application.

(4) A patent request relating to a Convention application must:

(a) include the prescribed particulars relating to the relevant

basic application; and

(b) be accompanied by a complete specification.

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Patent applications Part 1

Applications Division 1

Section 30

Patents Act 1990 23

Meaning of Convention country

(5) Convention country means a foreign country or region of a kind

prescribed by the regulations.

(6) Despite subsection 14(2) of the Legislative Instruments Act 2003,

regulations made for the purposes of subsection (1) may make

provision in relation to a matter by applying, adopting or

incorporating, with or without modification, any matter contained

in any other instrument or other writing as in force or existing from

time to time.

30 Filing date

A patent application (including a PCT application) is to be taken to

have been made on the filing date determined under the

regulations.

31 Joint applicants

2 or more persons (within the meaning of section 29) may make a

joint patent application.

32 Disputes between applicants etc.

(1) If a dispute arises between any 2 or more joint applicants in

relation to a patent application whether, or in what manner, the

application should proceed, the Commissioner may, on a request

made in accordance with the regulations by any of those

applicants, make any determinations the Commissioner thinks fit

for enabling the application to proceed in the name of one or more

of the applicants alone, or for regulating the manner in which it is

to proceed, or both, as the case requires.

(2) The Commissioner may make a determination under subsection (1)

whether or not the application has lapsed.

(3) The Commissioner must not make a determination under

subsection (1) without first giving each joint applicant a reasonable

opportunity to be heard.

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 1 Patent applications

Division 1 Applications

Section 33

24 Patents Act 1990

33 Applications by opponents etc.

Opposition to standard patent if a person other than nominated

person eligible for grant of patent

(1) If:

(a) an application has been made for a standard patent; and

(b) the grant of the standard patent is opposed under section 59

by one or more persons; and

(c) the Commissioner decides, under section 60, that:

(i) one or more opponents are eligible persons in relation to

the invention, so far as claimed in any claim of the

opposed patent application (the original claim); and

(ii) the nominated person in respect of the application is not

an eligible person in relation to the invention; and

(iii) there is no other reason that a patent should not be

granted; and

(d) a complete application is made under section 29 by one or

more of the eligible persons for a patent in relation to the

invention;

the Commissioner may grant those eligible persons a patent jointly

for the invention, so far as so claimed.

Opposition to standard patent if nominated person eligible for

grant of patent with other persons

(2) If:

(a) an application has been made for a standard patent; and

(b) the grant of the patent is opposed under section 59 by one or

more persons; and

(c) the Commissioner decides, under section 60:

(i) that both the nominated person and one or more of the

opponents are eligible persons in relation to the

invention, so far as claimed in any claim of the opposed

patent application (the original claim); and

(ii) that there is no other reason that a patent should not be

granted; and

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From application to acceptance Chapter 3

Patent applications Part 1

Applications Division 1

Section 33

Patents Act 1990 25

(d) a complete application is made by one or more of the eligible

persons under section 29 for a patent in relation to the

invention;

the Commissioner may grant a patent for the invention, so far as so

claimed, to those eligible persons jointly.

Opposition to innovation patent if patentee not entitled to grant of

patent but another person is

(3) If:

(a) an innovation patent is opposed under section 101M by one

or more persons;

(b) the Commissioner decides, under section 101N, that the

patentee is not entitled to the grant of the patent; and

(c) the Commissioner decides that one or more of the opponents

are eligible persons in relation to the invention the subject of

the patent, so far as claimed in any claim of the patent (the

original claim); and

(d) a complete application is made by one or more of the eligible

persons under section 29 for a patent in relation to the

invention;

the Commissioner may grant an innovation patent for the

invention, so far as so claimed, to those eligible persons.

Opposition to innovation patent if patentee entitled to grant of

patent with other person

(4) If:

(a) an innovation patent is opposed under section 101M by one

or more persons; and

(b) the Commissioner decides that one or more of the opponents

and the original patentee are eligible persons in relation to the

invention the subject of the patent, so far as claimed in any

claim of the patent (the original claim); and

(c) a complete application is made by one or more of the eligible

persons under section 29 for a patent in relation to the

invention;

the Commissioner may grant an innovation patent for the

invention, so far as so claimed, to those eligible persons jointly.

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 1 Patent applications

Division 1 Applications

Section 34

26 Patents Act 1990

(5) If the Commissioner grants a patent under subsection (1), (2), (3)

or (4), the claims of that patent granted have the same priority date

as that of the original claim referred to in the respective subsection.

34 Applications by eligible persons arising out of Court proceedings

(1) If, in any proceedings in a court relating to a patent (the first

patent), the court is satisfied either:

(a) that one or more persons are eligible persons in relation to an

invention so far as claimed in any claim of the patent (the

original claim) but that the patentee is not an eligible person;

or

(b) that the patentee and another person or persons are eligible

persons in relation to an invention so far as claimed in any

claim of the first patent (the original claim);

the court, in addition to any other order it may make in the

proceedings, may, by order, declare that the persons who it is

satisfied are eligible persons are eligible persons in relation to that

invention so far as so claimed.

(2) Subject to subsection (3), if a complete application is made under

section 29 by one or more declared persons, the Commissioner

may grant a patent for the invention, so far as claimed in the

original claim, to those declared persons jointly.

(3) If the Commissioner grants a patent under subsection (2), the

claims of that patent have the same priority date as that of the

original claim.

35 Applications by eligible persons following revocation by

Commissioner

(1) If the Commissioner:

(a) revokes a patent under section 137; and

(b) is satisfied, on the balance of probabilities:

(i) on application made by one or more persons in

accordance with the regulations, that the persons are

eligible persons in relation to the invention concerned,

so far as so claimed in any claim of the revoked patent

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Patent applications Part 1

Applications Division 1

Section 36

Patents Act 1990 27

(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).

(2) The Commissioner must not make a declaration without first

giving the former patentee a reasonable opportunity to be heard.

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

Commissioner making, or refusing to make, a declaration.

36 Other applications by eligible persons

(1) If:

(a) a patent application has been made and, in the case of a

complete application, the patent has not been granted; and

(b) an application for a declaration by the Commissioner is made

by one or more persons (the section 36 applicants) in

accordance with the regulations; and

(c) the Commissioner is satisfied on the balance of probabilities,

in relation to an invention disclosed in the specification filed

in relation to the application for the patent:

(i) that the nominated person is not an eligible person, but

that the section 36 applicants are eligible persons; or

(ii) that the nominated person is an eligible person, but that

the section 36 applicants are also eligible persons;

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 1 Patent applications

Division 1 Applications

Section 37

28 Patents Act 1990

the Commissioner may declare in writing that the persons who the

Commissioner is satisfied are eligible persons are eligible persons

in relation to the invention as so disclosed.

(2) The Commissioner may make a declaration under subsection (1)

whether or not the patent application lapses or is withdrawn.

(3) The Commissioner must not make a declaration under

subsection (1) without first giving the nominated person a

reasonable opportunity to be heard.

(3A) The Commissioner may, after making a declaration under

subsection (1), make any determination the Commissioner thinks

fit for enabling the application to proceed in the name of one or

more of the declared persons.

(4) If a complete application is made under section 29 by one or more

of the declared persons, the priority date of the claims of a patent

for the invention granted to the person, or persons, as the case may

be, must be determined under the regulations.

(5) An appeal lies to the Federal Court against a decision by the

Commissioner under this section.

37 Complete application may be treated as provisional

(1) Where a complete application is made, the applicant may, at any

time during the prescribed period, by written request, ask the

Commissioner to direct that the application be treated as a

provisional application.

(2) A person is not entitled to make a request if the patent request and

specification filed in respect of the application have been accepted

or have become open to public inspection.

(3) On receiving a request, the Commissioner must give a direction as

asked.

(4) Where the Commissioner gives a direction, the complete

application is to be taken, for the purposes of this Act, to be, and to

have always been, a provisional application.

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Patent applications Part 1

Applications Division 1

Section 38

Patents Act 1990 29

38 Time for making complete application

(1) If an applicant makes a provisional application, the applicant may

make one or more complete applications associated with the

provisional application at any time within the prescribed period.

(1A) A Convention application must be made within the prescribed

period.

(2) In this section:

applicant includes a person entitled to make a request under

section 113 in relation to the relevant patent application.

[Note: see also section 5 for requirements relating to associated

applications.]

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 1 Patent applications

Division 2 Specifications

Section 40

30 Patents Act 1990

Division 2—Specifications

40 Specifications

Requirements relating to provisional specifications

(1) A provisional specification must disclose the invention in a manner

which is clear enough and complete enough for the invention to be

performed by a person skilled in the relevant art.

(2) A complete specification must:

(a) disclose the invention in a manner which is clear enough and

complete enough for the invention to be performed by a

person skilled in the relevant art; and

(aa) disclose the best method known to the applicant of

performing the invention; and

(b) where it relates to an application for a standard patent—end

with a claim or claims defining the invention; and

(c) where it relates to an application for an innovation patent—

end with at least one and no more than 5 claims defining the

invention.

(3) The claim or claims must be clear and succinct and supported by

matter disclosed in the specification.

(3A) The claim or claims must not rely on references to descriptions or

drawings unless absolutely necessary to define the invention.

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

41 Specifications: micro-organisms

(1) To the extent that an invention is a micro-organism, the complete

specification is to be taken to comply with paragraph 40(2)(a), so

far as it requires a description of the micro-organism, if the deposit

requirements are satisfied in relation to the micro-organism.

(2) Where:

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Patent applications Part 1

Specifications Division 2

Section 42

Patents Act 1990 31

(a) an invention involves the use, modification or cultivation of a

micro-organism, other than the micro-organism mentioned in

subsection (1); and

(b) a person skilled in the relevant art in the patent area could not

reasonably be expected to perform the invention without

having a sample of the micro-organism before starting to

perform the invention; and

(c) the micro-organism is not reasonably available to a person

skilled in the relevant art in the patent area;

the specification is to be taken to comply with paragraph 40(2)(a),

so far as it requires a description of the micro-organism, if, and

only if, the deposit requirements are satisfied in relation to the

micro-organism.

(3) For the purposes of this section, a micro-organism may be taken to

be reasonably available to a person even if it is not so available in

the patent area.

(4) Where:

(a) the requirements specified in paragraph 6(c) or (d) cease to

be satisfied in relation to a micro-organism; and

(b) steps are taken at a later time within the prescribed period in

accordance with such provisions (if any) of the regulations as

are applicable; and

(c) as a result of those steps, if the period during which those

requirements are not satisfied is disregarded, those

requirements would be satisfied at that later time;

those requirements are to be taken to have been satisfied during the

period mentioned in paragraph (c), and such provisions as are

prescribed have effect for the protection or compensation of

persons who availed themselves, or took definite steps by way of

contract or otherwise to avail themselves, of the invention during

that period.

[Note: see also section 6 in relation to satisfaction of deposit

requirements.]

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 1 Patent applications

Division 2 Specifications

Section 42

32 Patents Act 1990

42 Micro-organisms ceasing to be reasonably available

(1) Where:

(a) a complete application has been made for a patent, or a patent

has been granted for an invention of a kind mentioned in

paragraph 41(2)(a); and

(b) the relevant micro-organism was, at the date of filing of the

complete specification, reasonably available (within the

meaning of section 41) to a skilled person working in the

relevant art in the patent area; and

(c) the micro-organism has ceased to be so available;

a prescribed court or the Commissioner, on application made in

accordance with the regulations, or the Commissioner, on his or

her own motion, may declare that the specification does not

comply with section 40 unless the deposit requirements are

satisfied in relation to the micro-organism.

(2) Where a declaration is made under subsection (1):

(a) this Act has effect in relation to the specification accordingly;

and

(b) section 6 applies as if the references in that section to the date

of filing of the specification were references to a date

specified in the declaration for the purposes of this

subsection.

(3) Subsection (2) does not limit the operation of section 223.

(4) Where:

(a) an application is made under subsection (1); or

(b) the Commissioner proposes to make a declaration under that

subsection on his or her own motion;

the applicant for the patent, or the patentee, as the case may be,

must be notified, in accordance with the regulations, of the

application or proposal and is entitled to appear and be heard.

(5) A declaration by the Commissioner must be made in accordance

with the regulations.

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Patent applications Part 1

Specifications Division 2

Section 42

Patents Act 1990 33

(6) An office copy of a declaration by a prescribed court must be

served on the Commissioner by the Registrar or other appropriate

officer of the court.

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

Commissioner under subsection (1).

[Note: see also section 6 in relation to satisfaction of deposit

requirements.]

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 1 Patent applications

Division 3 Priority dates

Section 43

34 Patents Act 1990

Division 3—Priority dates

43 Priority dates

(1) Each claim of a specification must have a priority date.

(2) The priority date of a claim is:

(a) if subsection (2A) applies to the claim—the date determined

under the regulations; or

(b) otherwise—the date of the filing of the specification.

(2A) This subsection applies to a claim if:

(a) prescribed circumstances apply in relation to the invention

defined in the claim; and

(b) a prescribed document discloses the invention in the claim in

a manner that is clear enough and complete enough for the

invention to be performed by a person skilled in the relevant

art.

(3) Where a claim defines more than one form of an invention, then,

for the purposes of determining the priority date of the claim, it

must be treated as if it were a separate claim for each form of the

invention that is defined.

(4) The priority date of a claim of a specification may be different

from the priority date of any other claim of the specification.

(5) If, at the time when a Convention application or a PCT application

is made in respect of an invention:

(a) an application (the earlier application) has been made for

protection in respect of the invention in a Convention

country; and

(b) the earlier application was made in the prescribed period; and

(c) the earlier application has been withdrawn, abandoned or

refused without becoming open to public inspection; and

(d) the earlier application has not been used as the basis of

claiming a right of priority in a Convention country under a

law of that country; and

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Patent applications Part 1

Priority dates Division 3

Section 43AA

Patents Act 1990 35

(e) a later application has been made by the same applicant for

protection in respect of the invention in a Convention

country;

the earlier application is taken, for the purposes of this Act, to have

never been made.

Note: For the purposes of paragraph (e), the later application need not have

been made in the same Convention country as the earlier application.

43AA Disclosure in basic applications

Prescribed documents relating to basic applications

(1) The regulations may prescribe documents that relate to a basic

application.

Disclosures in prescribed documents may generally be taken into

account

(2) Without limiting the documents or disclosures that may be taken

into account for the purposes of this Act in relation to a basic

application, account may be taken of a disclosure in a prescribed

document that relates to a basic application.

Disclosures in prescribed documents must not be taken into

account if Commissioner’s requirement not complied with

(3) However, if the Commissioner makes a requirement under

subsection (4) in relation to a prescribed document, account must

not be taken, for the purposes of this Act, of a disclosure in the

prescribed document unless the document has been made available

by the prescribed means and within the prescribed period.

Commissioner may require prescribed documents be made

available

(4) The Commissioner may require that a prescribed document relating

to a basic application be made available to the Commissioner by

the prescribed means and within the prescribed period.

(5) The Commissioner may make a requirement under subsection (4)

more than once in relation to the same prescribed document.

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 2 Examination of standard patent requests and specifications

Division 1A Preliminary search and opinion

Section 43A

36 Patents Act 1990

Part 2—Examination of standard patent requests

and specifications

Division 1A—Preliminary search and opinion

43A Preliminary search and opinion

(1) If a complete application for a standard patent has been made, the

Commissioner may conduct a preliminary search and opinion in

relation to the patent request and specification relating to the

application.

(2) The preliminary search and opinion must be conducted in

accordance with the regulations.

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Examination of standard patent requests and specifications Part 2

Examination Division 1

Section 44

Patents Act 1990 37

Division 1—Examination

44 Request for examination

(1) Where a complete application for a standard patent has been made,

the applicant may, within the prescribed period and in accordance

with the regulations, ask for an examination of the patent request

and specification relating to the application.

(2) Where a complete application has been made for a standard patent,

the Commissioner may, on one or more of the prescribed grounds

and in accordance with the regulations, direct the applicant to ask,

within the prescribed period, for an examination of the patent

request and complete specification relating to the application.

(3) Where the patent request and specification relating to a complete

application for a standard patent are open to public inspection, a

person may, in accordance with the regulations, require the

Commissioner to direct the applicant to ask, within the prescribed

period, for an examination of the request and specification.

(4) Where required under subsection (3), the Commissioner must give

a direction accordingly, unless the applicant has already asked, or

been directed to ask, for an examination of the patent request and

specification.

45 Examination

(1) Subject to subsection (1A), if an applicant asks for an examination

of a patent request and complete specification relating to an

application for a standard patent, the Commissioner must examine

the request and specification and report on:

(a) whether the specification complies with subsections 40(2) to

(4); and

(b) whether, to the best of his or her knowledge, the invention, so

far as claimed, satisfies the criteria mentioned in paragraphs

18(1)(a), (b) and (c); and

(c) whether the invention is a patentable invention under

subsection 18(2); and

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 2 Examination of standard patent requests and specifications

Division 1 Examination

Section 45

38 Patents Act 1990

(d) such other matters (if any) as are prescribed.

(1A) If a PCT application has been made and the prescribed

requirements have not been met, the Commissioner may decline to

examine the request and specification under subsection (1) until the

requirements have been met.

(2) The examination must be carried out in accordance with the

regulations.

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Acceptance Part 3

Acceptance of standard patents Division 1

Section 49

Patents Act 1990 39

Part 3—Acceptance

Division 1—Acceptance of standard patents

49 Acceptance of patent request: standard patent

(1) Subject to section 50, the Commissioner must accept a patent

request and complete specification relating to an application for a

standard patent if the Commissioner is satisfied, on the balance of

probabilities:

(a) that the specification complies with subsections 40(2) to (4);

and

(b) that the invention, so far as claimed, satisfies the criteria

mentioned in paragraphs 18(1)(a), (b) and (c); and

(c) that the invention is a patentable invention under

subsection 18(2); and

(d) as to the matters (if any) prescribed under

paragraph 45(1)(d).

(2) If subsection (1) does not apply, the Commissioner may refuse to

accept the request and specification.

(5) Where the Commissioner accepts a patent request and complete

specification relating to an application for a standard patent, the

Commissioner must:

(a) notify the applicant in writing of the acceptance; and

(b) publish a notice of the acceptance in the Official Journal.

(6) If the patent request and complete specification have not already

become open to public inspection, the notice mentioned in

paragraph (5)(b) must include a statement to the effect that the

patent request and specification are open to public inspection.

(7) Where the Commissioner refuses to accept a patent request and

complete specification relating to an application for a standard

patent, the Commissioner must notify the applicant in writing of

the reasons for the refusal and publish a notice of the refusal in the

Official Journal.

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 3 Acceptance

Division 1 Acceptance of standard patents

Section 49A

40 Patents Act 1990

49A Postponing acceptance of patent request: standard patent

(1) The Commissioner may postpone acceptance of a patent request

and complete specification:

(a) on his or her own initiative; or

(b) if requested to do so in writing by the applicant.

(2) If the Commissioner postpones acceptance on his or her own

initiative, he or she must specify a day to which acceptance is

postponed.

(3) If the Commissioner postpones acceptance following a request by

the applicant, the Commissioner may specify a day to which

acceptance is postponed.

(4) The day specified under subsection (2) or (3) cannot be a day that

is after the end of the period prescribed for the purposes of

paragraph 142(2)(e).

(5) If:

(a) acceptance is postponed under subsection (1) following a

request by the applicant; and

(b) the Commissioner has not specified a day to which

acceptance is postponed;

the Commissioner is not required to accept the patent request and

complete specification unless the applicant withdraws the request

in writing.

Note: If the applicant does not withdraw the request before the day

prescribed by the regulations, the application lapses: see

paragraph 142(2)(e).

50 Application or grant may be refused in certain cases

(1) The Commissioner may refuse to accept a request and specification

relating to a standard patent, or to grant a standard patent:

(a) for an invention the use of which would be contrary to law;

or

(b) on the ground that the specification claims as an invention:

(i) a substance that is capable of being used as food or

medicine (whether for human beings or animals and

ComLaw Authoritative Act C2014C00301

From application to acceptance Chapter 3

Acceptance Part 3

Acceptance of standard patents Division 1

Section 50A

Patents Act 1990 41

whether for internal or external use) and is a mere

mixture of known ingredients; or

(ii) a process producing such a substance by mere

admixture.

(2) The Commissioner may refuse to accept a specification relating to

a standard patent containing a claim that includes the name of a

person as the name, or part of the name, of the invention so far as

claimed in that claim.

50A Revocation of acceptance

(1) The Commissioner may revoke the acceptance of a patent request

and complete specification relating to an application for a standard

patent if the Commissioner is satisfied, on the balance of

probabilities, that:

(a) a patent has not been granted on the application; and

(b) the request and specification should not have been accepted,

taking account of all the circumstances that existed when the

request and specification were accepted (whether or not the

Commissioner knew then of their existence); and

(c) it is reasonable to revoke the acceptance, taking account of

all the circumstances.

(2) If the Commissioner revokes the acceptance:

(a) the patent request and complete specification are taken to

have never been accepted; and

(b) the Commissioner must continue to examine, and report on,

the application under section 45; and

(c) sections 49 and 50 continue to apply in relation to the request

and specification.

51 Appeal

An appeal lies to the Federal Court against a decision of the

Commissioner under this Division (other than a decision under

section 50A).

ComLaw Authoritative Act C2014C00301

Chapter 3 From application to acceptance

Part 3 Acceptance

Division 2 Acceptance of innovation patents

Section 52

42 Patents Act 1990

Division 2—Acceptance of innovation patents

52 Formalities check and acceptance of innovation patents

(1) If a complete application for an innovation patent is made, the

Commissioner must undertake a formalities check in respect of the

application.

(2) If satisfied, on the balance of probabilities, that the application

passes the formalities check, the Commissioner must accept the

patent request and complete specification.

ComLaw Authoritative Act C2014C00301

Publication Chapter 4

Section 53

Patents Act 1990 43

Chapter 4—Publication

53 Publication of certain information about applicants etc.

(1) If a patent application (other than a PCT application) is made, the

Commissioner must publish in the Official Journal the prescribed

information about the applicant and the application.

(2) The regulations may make provision for and in relation to the

publication of information relating to PCT applications.

54 Notice of publication

(1) Where a complete specification filed in respect of an application

for a standard patent (other than a PCT application) has not

become open to public inspection, the Commissioner must, if

asked to do so by the applicant, publish, in accordance with the

regulations, a notice in the Official Journal that the complete

specification is open to public inspection.

(2) If subsection 41(2) applies to a specification, the applicant cannot

make a request under subsection (1) in relation to the specification

unless the specification includes the particulars mentioned in

paragraph 6(c).

(3) Where:

(a) a complete specification has been filed in respect of an

application for a standard patent (other than a PCT

application); and

(b) the prescribed period has ended; and

(c) the specification is not open to public inspection;

the Commissioner must publish a notice in the Official Journal that

the specification is open to public inspection, unless the application

has lapsed or been refused or withdrawn.

(4) Where:

(a) a divisional application for a standard patent provided for in

section 79B (other than a PCT application) is made in respect

ComLaw Authoritative Act C2014C00301

Chapter 4 Publication

Section 54

44 Patents Act 1990

of an original application, whether a PCT application or not;

and

(b) the complete specification filed in respect of the original

application was open to public inspection when the divisional

application was made;

the Commissioner must publish a notice in the Official Journal that

the complete specification filed in respect of the divisional

application is open to public inspection.

(5) Where a divisional application for a standard patent provided for in

section 79B (other than a PCT application) is made in respect of an

original application that is not a PCT application and:

(a) a notice is published in the Official Journal that the complete

specification filed in respect of the original application is

open to public inspection; or

(b) a notice is published in the Official Journal that the complete

specification filed in respect of the divisional application is

open to public inspection;

the Commissioner must also publish in the Official Journal a

notice that:

(c) where paragraph (a) applies—the complete specification filed

in respect of the divisional application is open to public

inspection; or

(d) where paragraph (b) applies—the complete specification

filed in respect of the original application is open to public

inspection.

(6) Where:

(a) a divisional application for a standard patent provided for in

section 79B (other than a PCT application) is made in respect

of an original application that is a PCT application; and

(b) a notice is published in the Official Journal that the complete

specification filed in respect of the original application is

open to public inspection;

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.

ComLaw Authoritative Act C2014C00301

Publication Chapter 4

Section 55

Patents Act 1990 45

55 Documents open to public inspection

(1) Where a notice is published under section 54 or under

subsection 62(3), the specification concerned, and such other

documents (if any) as are prescribed, are open to public inspection.

(2) Where a notice is published under paragraph 49(5)(b) in relation to

an application for a standard patent, or under subsection 62(2) in

relation to the grant of an innovation patent, the following

documents are open to public inspection:

(a) all documents (other than prescribed documents) filed in

relation to the application or the patent, whether before or

after the acceptance or grant;

(b) all documents (other than prescribed documents) filed, after

the patent ceases, expires or is revoked, in relation to the

former patent;

(c) copies of all documents relating to the application or patent

(other than prescribed documents) given by the

Commissioner to the applicant or patentee, or the former

applicant or patentee;

being documents that have not already become open to public

inspection.

(3) Subject to section 56A, a specification, or other document, is to be

taken to have been published on the day on which it becomes open

to public inspection unless it has been published otherwise before

that day.

56 Certain documents not to be published

(1) Except as otherwise provided by this Act, documents of the kind

mentioned in section 55:

(a) must not be published or be open to public inspection; and

(b) are not liable to be inspected or produced before the

Commissioner or in a legal proceeding unless the

Commissioner, court, or any person having power to order

inspection or production, directs that the inspection or

production be allowed.

ComLaw Authoritative Act C2014C00301

Chapter 4 Publication

Section 56A

46 Patents Act 1990

(2) Notice of an application for the production in legal proceedings of

a document of the kind mentioned in section 55 must be given to

the Commissioner, who is entitled to be heard on the application.

56A Publication and inspection of PCT applications

(1) The regulations may make provision for and in relation to the

public inspection of PCT applications.

(2) Without limiting subsection (1), the regulations may make

provision for and in relation to:

(a) notices regarding the opening of complete specifications

relating to PCT applications to public inspection; and

(b) the circumstances in which PCT applications become open to

public inspection.

57 Effect of publication of complete specification

(1) After a complete specification relating to an application for a

standard patent has become open to public inspection and until a

patent is granted on the application, the applicant has the same

rights as he or she would have had if a patent for the invention had

been granted on the day when the specification became open to

public inspection.

(3) Subsection (1) does not give the applicant a right to start

proceedings in respect of the doing of an act unless:

(a) a patent is granted on the application; and

(b) the act would, if done after the grant of the patent, have

constituted an infringement of a claim of the specification.

(4) It is a defence to proceedings under subsection (1) in respect of an

act done:

(a) after the complete specification became open to public

inspection; and

(b) before the patent request was accepted:

if the defendant proves that a patent could not validly have been

granted to the applicant in respect of the claims (as framed when

ComLaw Authoritative Act C2014C00301

Publication Chapter 4

Section 58

Patents Act 1990 47

the act was done) that are alleged to have been infringed by the

doing of the act.

(5) For the purposes of applying this section to a PCT application,

references to the complete specification becoming open to public

inspection are references to the PCT application becoming open to

public inspection in accordance with regulations made for the

purposes of section 56A.

58 Result of search may be disclosed

The Commissioner may disclose the result of any search made for

the purpose of making a report under this Act.

ComLaw Authoritative Act C2014C00301

Chapter 5 Opposition to grant of standard patent

Section 59

48 Patents Act 1990

Chapter 5—Opposition to grant of standard

patent

59 Opposition to grant of standard patent

The Minister or any other person may, in accordance with the

regulations, oppose the grant of a standard patent on one or more

of the following grounds, but on no other ground:

(a) that the nominated person is either:

(i) not entitled to a grant of a patent for the invention; or

(ii) entitled to a grant of a patent for the invention but only

in conjunction with some other person;

(b) that the invention is not a patentable invention;

(c) that the specification filed in respect of the complete

application does not comply with subsection 40(2) or (3).

60 Hearing and decision by Commissioner

(1) Where the grant of a standard patent is opposed, the Commissioner

must decide the case in accordance with the regulations.

(2) The Commissioner must give the applicant and the opponent a

reasonable opportunity to be heard before deciding a case.

(3) The Commissioner may, in deciding a case, take into account any

ground on which the grant of a standard patent may be opposed,

whether relied upon by the opponent or not.

(3A) If the Commissioner is satisfied, on the balance of probabilities,

that a ground of opposition to the grant of the standard patent

exists, the Commissioner may refuse the application.

(3B) The Commissioner must not refuse an application under this

section unless the Commissioner has, where appropriate, given the

applicant a reasonable opportunity to amend the relevant

specification for the purpose of removing any ground of opposition

and the applicant has failed to do so.

ComLaw Authoritative Act C2014C00301

Opposition to grant of standard patent Chapter 5

Section 60

Patents Act 1990 49

(4) The applicant, and any opponent, may appeal to the Federal Court

against a decision of the Commissioner under this section.

ComLaw Authoritative Act C2014C00301

Chapter 6 Grant and term of patents

Part 1 Grant

Section 61

50 Patents Act 1990

Chapter 6—Grant and term of patents

Part 1—Grant

61 Grant of standard patent

(1) Subject to section 100A and paragraph 210A(2)(a), the

Commissioner must grant a standard patent, by registering

prescribed particulars of the patent in the Register, if:

(a) there is no opposition to the grant; or

(b) in spite of opposition, the Commissioner’s decision, or the

decision on appeal, is that a standard patent should be

granted.

(2) A standard patent must be granted within the prescribed period.

(3) The Commissioner must notify the patentee that the standard

patent has been granted.

62 Grant and publication of innovation patent

(1) If:

(a) the Commissioner accepts a patent request and complete

specification filed in respect of an application for an

innovation patent; and

(b) a prohibition order is not in force under subsection 152(3) or

173(1) in relation to the application;

the Commissioner must grant the innovation patent by registering

prescribed particulars of the patent in the Register.

(2) If an innovation patent is granted, the Commissioner must publish

a notice in the Official Journal stating that:

(a) the innovation patent has been granted; and

(b) the patent request and complete specification are open to

public inspection.

(3) If:

ComLaw Authoritative Act C2014C00301

Grant and term of patents Chapter 6

Grant Part 1

Section 63

Patents Act 1990 51

(a) a divisional application provided for in section 79B is made

for an innovation patent; and

(b) a notice is published in the Official Journal that the complete

specification filed in respect of the divisional application is

open to public inspection;

the Commissioner must also publish in the Official Journal a

notice that the complete specification filed in respect of the original

application on which the divisional application is based is open to

public inspection.

(4) The Commissioner must notify the patentee that the innovation

patent has been granted.

63 Joint patentees

A patent may be granted to 2 or more nominated persons jointly.

64 Grant: multiple applications

(1) Subject to this section, where there are 2 or more applications for

patents for identical, or substantially identical, inventions, the

granting of a patent on one of those applications does not prevent

the granting of a patent on any of the other applications.

(2) Where:

(a) an application for a standard patent claims an invention that

is the same as an invention that is the subject of a patent and

is made by the same inventor; and

(b) the relevant claim or claims in each of the complete

specifications have the same priority date or dates;

a standard patent cannot be granted on the application.

65 Date of patent

The date of a patent is:

(a) the date of filing of the relevant complete specification; or

(b) where the regulations provide for the determination of a

different date as the date of a patent—the date determined

under the regulations.

ComLaw Authoritative Act C2014C00301

Chapter 6 Grant and term of patents

Part 2 Term

Section 67

52 Patents Act 1990

Part 2—Term

67 Term of standard patent

The term of a standard patent is 20 years from the date of the

patent.

68 Term of innovation patent

The term of an innovation patent is 8 years from the date of the

patent.

ComLaw Authoritative Act C2014C00301

Grant and term of patents Chapter 6

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

Section 70

Patents Act 1990 53

Part 3—Extension of term of standard patents

relating to pharmaceutical substances

70 Applications for extension of patent

(1) The patentee of a standard patent may apply to the Commissioner

for an extension of the term of the patent if the requirements set out

in subsections (2), (3) and (4) are satisfied.

(2) Either or both of the following conditions must be satisfied:

(a) one or more pharmaceutical substances per se must in

substance be disclosed in the complete specification of the

patent and in substance fall within the scope of the claim or

claims of that specification;

(b) one or more pharmaceutical substances when produced by a

process that involves the use of recombinant DNA

technology, must in substance be disclosed in the complete

specification of the patent and in substance fall within the

scope of the claim or claims of that specification.

(3) Both of the following conditions must be satisfied in relation to at

least one of those pharmaceutical substances:

(a) goods containing, or consisting of, the substance must be

included in the Australian Register of Therapeutic Goods;

(b) the period beginning on the date of the patent and ending on

the first regulatory approval date for the substance must be at

least 5 years.

Note: Section 65 sets out the date of a patent.

(4) The term of the patent must not have been previously extended

under this Part.

(5) For the purposes of this section, the first regulatory approval date,

in relation to a pharmaceutical substance, is:

(a) if no pre-TGA marketing approval was given in relation to

the substance—the date of commencement of the first

ComLaw Authoritative Act C2014C00301

Chapter 6 Grant and term of patents

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

Section 71

54 Patents Act 1990

inclusion in the Australian Register of Therapeutic Goods of

goods that contain, or consist of, the substance; or

(b) if pre-TGA marketing approval was given in relation to the

substance—the date of the first approval.

(6) For the purposes of this section, pre-TGA marketing approval, in

relation to a pharmaceutical substance, is an approval (however

described) by a Minister, or a Secretary of a Department, to:

(a) market the substance, or a product containing the substance,

in Australia; or

(b) import into Australia, for general marketing, the substance or

a product containing the substance.

71 Form and timing of an application

Form of application

(1) An application for an extension of the term of a standard patent

must:

(a) be in the approved form; and

(b) be accompanied by such documents (if any) as are

ascertained in accordance with the regulations; and

(c) be accompanied by such information (if any) as is ascertained

in accordance with the regulations.

For this purpose, document includes a copy of a document.

Timing of application

(2) An application for an extension of the term of a standard patent

must be made during the term of the patent and within 6 months

after the latest of the following dates:

(a) the date the patent was granted;

(b) the date of commencement of the first inclusion in the

Australian Register of Therapeutic Goods of goods that

contain, or consist of, any of the pharmaceutical substances

referred to in subsection 70(3);

(c) the date of commencement of this section.

ComLaw Authoritative Act C2014C00301

Grant and term of patents Chapter 6

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

Section 72

Patents Act 1990 55

72 Notification and public inspection of application

If a patentee makes an application for an extension of the term of a

standard patent, the Commissioner must publish in the Official

Journal a notice that the application has been made and is open to

public inspection.

73 Withdrawal of application

(1) A patentee who has applied for an extension of the term of a

standard patent may, by notice in writing to the Commissioner,

withdraw the application.

(2) If an application for an extension of the term of a standard patent is

withdrawn, the Commissioner must publish in the Official Journal

a notice stating that the application has been withdrawn.

74 Acceptance or refusal of application

Acceptance

(1) If a patentee of a standard patent makes an application for an

extension of the term of the patent, the Commissioner must accept

the application if the Commissioner is satisfied, on the balance of

probabilities, that the requirements of sections 70 and 71 are

satisfied in relation to the application.

(2) If the Commissioner accepts the application, the Commissioner

must:

(a) notify the applicant in writing of the acceptance; and

(b) publish a notice of the acceptance in the Official Journal.

Refusal

(3) The Commissioner must refuse to accept the application if the

Commissioner is not satisfied, on the balance of probabilities, that

the requirements of sections 70 and 71 are satisfied in relation to

the application.

ComLaw Authoritative Act C2014C00301

Chapter 6 Grant and term of patents

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

Section 75

56 Patents Act 1990

(4) If the Commissioner refuses to accept the application, the

Commissioner must:

(a) notify the applicant in writing of the reasons for the refusal;

and

(b) publish a notice of the refusal in the Official Journal.

75 Opposition to grant of extension

(1) The Minister or any other person may, in accordance with the

regulations, oppose the grant of an extension of the term of a

standard patent on the ground that one or more of the requirements

of sections 70 and 71 are not satisfied in relation to the application

for the extension. The Minister or other person may not oppose the

grant of the extension on any other ground.

(2) If the grant of an extension of the term of a standard patent is

opposed, the Commissioner must decide the case in accordance

with the regulations.

(3) The Commissioner must give the applicant and the opponent a

reasonable opportunity to be heard before deciding a case.

(4) The applicant, and any opponent, may appeal to the Federal Court

against a decision of the Commissioner under this section.

76 Grant of extension

(1) The Commissioner must grant an extension of the term of a

standard patent if:

(a) there is no opposition to the grant; or

(b) in spite of opposition, the Commissioner’s decision, or the

decision on appeal, is that the extension should be granted.

(2) If the Commissioner grants an extension, the Commissioner must

notify the applicant in writing of the grant and publish a notice of

the grant in the Official Journal.

ComLaw Authoritative Act C2014C00301

Grant and term of patents Chapter 6

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

Section 76A

Patents Act 1990 57

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

(b) the name of any body:

(i) with which the applicant has a contractual agreement;

and

(ii) which is in receipt of Commonwealth funds; and

(c) the total amount spent on each type of research and

development, including pre-clinical research and clinical

trials, in respect of the drug which was the subject of the

application.

77 Calculation of term of extension

(1) If the Commissioner grants an extension of the term of a standard

patent, the term of the extension is equal to:

(a) the period beginning on the date of the patent and ending on

the earliest first regulatory approval date (as defined by

section 70) in relation to any of the pharmaceutical

substances referred to in subsection 70(2);

reduced (but not below zero) by:

(b) 5 years.

Note: Section 65 sets out the date of a patent.

(2) However, the term of the extension cannot be longer than 5 years.

78 Exclusive rights of patentee are limited if extension granted

If the Commissioner grants an extension of the term of a standard

patent, the exclusive rights of the patentee during the term of the

extension are not infringed:

ComLaw Authoritative Act C2014C00301

Chapter 6 Grant and term of patents

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

Section 79

58 Patents Act 1990

(a) by a person exploiting:

(i) a pharmaceutical substance per se that is in substance

disclosed in the complete specification of the patent and

in substance falls within the scope of the claim or claims

of that specification; or

(ii) a pharmaceutical substance when produced by a process

that involves the use of recombinant DNA technology,

that is in substance disclosed in the complete

specification of the patent and in substance falls within

the scope of the claim or claims of that specification;

for a purpose other than therapeutic use; or

(b) by a person exploiting any form of the invention other than:

(i) a pharmaceutical substance per se that is in substance

disclosed in the complete specification of the patent and

in substance falls within the scope of the claim or claims

of that specification; or

(ii) a pharmaceutical substance when produced by a process

that involves the use of recombinant DNA technology,

that is in substance disclosed in the complete

specification of the patent and in substance falls within

the scope of the claim or claims of that specification.

79 Rights of patentee if extension granted after patent expires

If:

(a) a patentee applies for an extension of the term of a standard

patent; and

(b) the term of the patent expires before the application is

determined; and

(c) the extension is granted;

the patentee has, after the extension is granted, the same rights to

start proceedings in respect of the doing of an act during the

period:

(d) commencing on the expiration of the term of the patent; and

(e) ending on the day on which the extension was granted;

as if the extension had been granted at the time when the act was

done.

ComLaw Authoritative Act C2014C00301

Grant and term of patents Chapter 6

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

Section 79A

Patents Act 1990 59

79A Commissioner not to make decision if court proceedings

pending

If:

(a) a patentee of a standard patent applies for an extension of the

term of the patent; and

(b) relevant proceedings in relation to the patent are pending;

the Commissioner must not make any decision under this Part in

relation to the patent without the leave of the court.

ComLaw Authoritative Act C2014C00301

Chapter 6A Divisional applications

Section 79B

60 Patents Act 1990

Chapter 6A—Divisional applications

79B Divisional applications prior to grant of patent

(1) If:

(a) a complete application (the first application) for a patent is

made; and

(b) the first application is not a divisional application for an

innovation patent provided for in section 79C;

the applicant may make a further complete application for a patent

for an invention disclosed in the specification filed in relation to

the first application.

(2) The further complete application:

(a) must be made in accordance with the regulations made for

the purposes of this subsection; and

(b) must include the prescribed particulars.

(3) The further complete application can only be made during the

period:

(a) starting on the day the first application is made; and

(b) ending when any of the following happens:

(i) the first application lapses;

(ii) the first application is refused;

(iii) the first application is withdrawn;

(iv) a period prescribed by the regulations for the purposes

of this subparagraph ends.

(4) In this section:

applicant has the same meaning as in section 38.

ComLaw Authoritative Act C2014C00301

Divisional applications Chapter 6A

Section 79C

Patents Act 1990 61

79C Divisional applications for innovation patents may be made

after grant of an innovation patent

Applications may be made

(1) A patentee of an innovation patent (the first patent) may make a

complete application for another innovation patent for a further

invention disclosed in the first patent if the invention was disclosed

in the complete specification filed in respect of the application on

which the first patent was granted.

(1A) The further complete application:

(a) must be made in accordance with the regulations made for

the purposes of this subsection; and

(b) must include the prescribed particulars.

(2) The patentee may make the further complete application only

during the period:

(a) starting when an examination of the first patent begins; and

(b) ending when any of the following happens:

(i) the term of the first patent ends;

(ii) the first patent is revoked;

(iii) the first patent ceases;

(iv) a period prescribed by the regulations for the purposes

of this subparagraph ends.

When does an examination begin?

(3) For the purposes of subsection (2), an examination of the patent

begins:

(a) if the examination has been requested under

paragraph 101A(b)—on the day the request was made; or

(b) if the Commissioner decided to examine the patent under

paragraph 101A(a)—on the day the Commissioner made that

decision.

ComLaw Authoritative Act C2014C00301

Chapter 7 Patents of addition

Section 80

62 Patents Act 1990

Chapter 7—Patents of addition

80 Chapter does not apply to innovation patents

This Chapter does not apply in relation to innovation patents.

81 Grant of patent of addition

(1) Where:

(a) a patent for an invention (in this Chapter called the main

invention) has been applied for or granted; and

(b) the applicant or patentee (or a person authorised by the

applicant or patentee) applies for a further patent for an

improvement in, or modification of, the main invention; and

(c) the application for that further patent is made in accordance

with the regulations;

the Commissioner may, subject to this Act and the regulations,

grant a patent of addition for the improvement or modification.

(2) A patent request and complete specification relating to an

application for a patent of addition must not be examined before a

request is made for the examination of the patent request and

complete specification relating to the application for the patent for

the main invention.

(3) A patent of addition must not be granted before the patent for the

main invention is granted.

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

Commissioner under this section.

82 Revocation of patent and grant of patent of addition instead

(1) Where:

(a) an invention that is an improvement in, or modification of, a

main invention is the subject of an independent patent; and

(b) the patentee of the independent patent is also the patentee of

the patent for the main invention;

ComLaw Authoritative Act C2014C00301

Patents of addition Chapter 7

Section 83

Patents Act 1990 63

the Commissioner may, on an application made by the patentee,

revoke the independent patent and grant a patent of addition for the

improvement or modification.

(2) A patent of addition granted under this section must be given the

same date as the date of the independent patent that is revoked.

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

Commissioner refusing an application under this section.

83 Term of patent of addition

Usual term

(1) The general rule is that a patent of addition remains in force for so

long as the patent for the main invention remains in force.

However, this rule is subject to the exceptions set out in

subsections (3) and (4).

(2) The term of a patent of addition may be extended under Part 3 of

Chapter 6, even though the patent for the main invention is not

extended under that Part.

Patent of addition extended

(3) If the term of a patent of addition is extended under Part 3 of

Chapter 6:

(a) the extension begins at the end of the unextended term of the

patent for the main invention; and

(b) when the extension begins, the patent of addition becomes an

independent patent.

Patent for main invention extended

(4) If:

(a) the term of the patent for the main invention is extended

under Part 3 of Chapter 6; and

ComLaw Authoritative Act C2014C00301

Chapter 7 Patents of addition

Section 85

64 Patents Act 1990

(b) the term of the patent of addition is not extended under that

Part;

the term of the patent of addition expires at the end of the

unextended term of the patent for the main invention.

85 Revocation of patent for main invention

(1) If the patent for the main invention is revoked by a prescribed

court, or by the Commissioner under section 101 or 137, the patent

of addition becomes an independent patent unless otherwise

ordered by:

(a) where the patent is revoked by a prescribed court—that court;

or

(b) in any other case—the Commissioner.

(2) Where a patent of addition becomes an independent patent under

this section, its term cannot be more than the unexpired part of the

term of the patent for the main invention.

86 Renewal fees not payable

A fee is not payable for the renewal of a patent of addition.

87 Fees payable where patent of addition becomes an independent

patent

The fees payable after a patent of addition becomes an independent

patent, and the dates when they become payable, are to be

determined by reference to the date of the independent patent.

ComLaw Authoritative Act C2014C00301

Re-examination of standard patents Chapter 9

Section 96A

Patents Act 1990 65

Chapter 9—Re-examination of standard

patents

96A Chapter does not apply to innovation patents

This Chapter does not apply in relation to innovation patents.

97 Re-examination of complete specifications

(1) Subject to this section and the regulations, if:

(a) a request and complete specification relating to an

application for a patent has been accepted; and

(b) the patent has not been granted;

the Commissioner may re-examine the complete specification.

(2) Subject to this section and the regulations, where a patent has been

granted, the Commissioner may, and must if asked to do so by the

patentee or any other person, re-examine the complete

specification.

(3) Where the validity of a patent is disputed in any proceedings

before a prescribed court under this Act, the court may direct the

Commissioner to re-examine the complete specification and the

Commissioner must re-examine the specification accordingly.

(3A) The re-examination must be carried out in accordance with the

regulations.

(4) Where relevant proceedings in relation to a patent are pending, the

Commissioner must not re-examine the complete specification

relating to the patent under subsection (2).

(5) Where:

(a) the Commissioner has started to re-examine a complete

specification relating to a patent under subsection (2); and

(b) relevant proceedings in relation to the patent are started;

the Commissioner must not continue the re-examination.

ComLaw Authoritative Act C2014C00301

Chapter 9 Re-examination of standard patents

Section 98

66 Patents Act 1990

98 Report on re-examination

On re-examining a complete specification, the Commissioner must

ascertain and report on:

(a) whether the specification does not comply with

subsection 40(2) or (3); and

(b) whether, to the best of his or her knowledge, the invention, so

far as claimed, does not satisfy the criteria mentioned in

paragraph 18(1)(a), (b) or (c); and

(c) whether the invention is not a patentable invention under

subsection 18(2).

99 Statement by applicant or patentee

(1) Where the Commissioner reports adversely on a complete

specification, the applicant or patentee may, within the prescribed

period, file a statement, in accordance with the regulations,

disputing the whole or any part of the report.

(2) The applicant or patentee may file a statement whether or not the

applicant or patentee takes steps to amend the complete

specification, or files a statement of amendments in accordance

with a direction under section 106 or 107.

100 Copies of report to be given to court

A copy of a report under section 98, and of any statement filed

under section 99 in relation to the report, must, where the

re-examination was directed under subsection 97(3), be given to

the court that gave the direction.

100A Refusal to grant patent—re-examination before grant

(1) The Commissioner may refuse to grant a patent if the

Commissioner:

(a) makes an adverse report on a re-examination of the relevant

specification under subsection 97(1); and

(b) is satisfied, on the balance of probabilities, that there is a

lawful ground of objection to the specification.

ComLaw Authoritative Act C2014C00301

Re-examination of standard patents Chapter 9

Section 101

Patents Act 1990 67

(2) The Commissioner cannot refuse to grant a patent under this

section unless the Commissioner:

(a) has given the applicant a reasonable opportunity to be heard;

and

(b) has, where appropriate, given the applicant a reasonable

opportunity to amend the relevant specification for the

purpose of removing any lawful ground of objection and the

applicant has failed to do so.

(3) The applicant may appeal to the Federal Court against a decision of

the Commissioner under this section.

101 Revocation of patent—re-examination after grant

(1) The Commissioner may, by notice in writing, revoke a patent,

either wholly or so far as it relates to a particular claim, if the

Commissioner:

(a) makes an adverse report on a re-examination of the relevant

specification under subsection 97(2); and

(b) is satisfied, on the balance of probabilities, that there is a

lawful ground of objection to the relevant specification.

(2) The Commissioner must not revoke a patent under this section

unless the Commissioner:

(a) has given the patentee a reasonable opportunity to be heard;

and

(b) has, where appropriate, given the patentee a reasonable

opportunity to amend the relevant specification for the

purpose of removing any lawful ground of objection and the

patentee has failed to do so.

(3) The Commissioner must not revoke a patent under this section

while relevant proceedings in relation to that patent are pending.

(4) The patentee may appeal to the Federal Court against a decision of

the Commissioner under this section.

ComLaw Authoritative Act C2014C00301

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

Part 1 Examination of innovation patents

Section 101A

68 Patents Act 1990

Chapter 9A—Examination, re-examination

and opposition-innovation patents

Part 1—Examination of innovation patents

101A Examination may be requested or Commissioner may decide

to examine

After the grant of an innovation patent, the Commissioner:

(a) may, if the Commissioner decides to do so; and

(b) must, if asked to do so, in writing, by the patentee or any

other person;

examine the complete specification relating to an innovation

patent.

101B Examination of an innovation patent

What the Commissioner must do in examining a patent

(1) If the Commissioner decides, or is asked, to examine an innovation

patent under section 101A, the Commissioner must:

(a) examine the complete specification relating to the patent to

ascertain the matters set out in subsection (2); and

(b) report on those matters.

Matters for examination and report

(2) The matters in this subsection are whether:

(a) the specification complies with subsections 40(2) to (4); and

(b) the invention, so far as claimed, complies with paragraphs

18(1A)(a), (b) and (c); and

(c) the invention is a patentable invention under

subsections 18(2) and (3); and

(d) the use of the invention would not be contrary to law; and

(e) the patent does not claim as an invention a substance that is

capable of being used as food or medicine (whether for

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

Examination of innovation patents Part 1

Section 101C

Patents Act 1990 69

human beings or animals and whether for internal or external

use) and is a mere mixture of known ingredients; and

(f) the patent does not claim as an invention a process producing

such a substance by mere admixture; and

(g) the patent does not contain a claim that includes the name of

a person as the name, or part of the name, of the invention so

far as it is claimed in that claim; and

(h) the patent does not claim an invention that is the same as an

invention that is the subject of a patent and is made by the

same inventor, where the relevant claim or claims in respect

of each patent have the same priority date or dates; and

(i) the complete specification complies with such other matters

(if any) as are prescribed for the purpose of this paragraph.

101C How and when examination to be carried out

The examination under section 101B must be carried out:

(a) in accordance with the regulations; and

(b) within the period prescribed.

101E Certificate of examination

(1) This section applies to an innovation patent if:

(a) after examining the patent under section 101B, the

Commissioner decides in writing that he or she is satisfied,

on the balance of probabilities, as to the following:

(i) the specification complies with subsections 40(2) to (4);

(ii) the invention, so far as claimed, complies with

paragraphs 18(1A)(a), (b) and (c);

(iii) the invention is a patentable invention under

subsections 18(2) and (3);

(iv) the use of the invention would not be contrary to law;

(v) the patent does not claim as an invention a substance

that is capable of being used as food or medicine

(whether for human beings or animals and whether for

internal or external use) and is a mere mixture of known

ingredients;

ComLaw Authoritative Act C2014C00301

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

Part 1 Examination of innovation patents

Section 101EA

70 Patents Act 1990

(vi) the patent does not claim as an invention a process

producing such a substance by mere admixture;

(vii) the patent does not contain a claim that includes the

name of a person as the name, or part of the name, of

the invention so far as it is claimed in that claim;

(viii) the patent does not claim an invention that is the same

as an invention that is the subject of a patent and is

made by the same inventor, where the relevant claim or

claims in respect of each patent have the same priority

date or dates;

(ix) the complete specification complies with such other

matters (if any) as are prescribed for the purpose of

paragraph 101B(2)(i);

(b) the patent has not ceased under section 143A.

(2) If this section applies, the Commissioner must:

(a) notify the patentee and the person who requested the

examination (if that person is not the patentee) that the patent

has been examined and that a certificate of examination is to

be issued; and

(b) publish a notice of the examination having occurred in the

Official Journal; and

(c) issue a certificate of examination to the patentee in the

approved form; and

(d) register the issue of the certificate.

(3) A decision under subsection (1) is not a legislative instrument.

101EA Revocation of certificate of examination

(1) The Commissioner may revoke a certificate of examination issued

in relation to an innovation patent if the Commissioner is satisfied,

on the balance of probabilities, that:

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

taking account of all the circumstances that existed when the

certificate was issued (whether or not the Commissioner

knew then of their existence); and

(b) it is reasonable to revoke the certificate, taking account of all

the circumstances; and

ComLaw Authoritative Act C2014C00301

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

Examination of innovation patents Part 1

Section 101F

Patents Act 1990 71

(c) there are no relevant proceedings pending.

(2) If the Commissioner revokes the certificate:

(a) all of the provisions of section 101E are taken, after

revocation, to have never operated in relation to the patent;

and

(b) the Commissioner must continue to examine and report on

the patent under section 101B; and

(c) sections 101E and 101F continue to apply in relation to the

patent.

101F Revocation of innovation patents following examination under

section 101B

(1) The Commissioner must revoke a patent if:

(a) the patent has been examined under section 101B; and

(b) section 101E does not apply to the patent; and

(c) the patent has not ceased under section 143A.

(2) If the Commissioner revokes the patent:

(a) the Commissioner must notify the patentee and the person

who requested the examination (if that person is not the

patentee) of the revocation; and

(b) register the revocation of the patent.

(3) The Commissioner must not revoke a patent under this section

unless the Commissioner:

(a) has given the patentee a reasonable opportunity to be heard;

and

(b) has, if appropriate, given the patentee a reasonable

opportunity to amend the relevant specification for the

purposes of removing a ground for the revocation of the

patent and the patentee has failed to do so.

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

Commissioner revoking a patent.

ComLaw Authoritative Act C2014C00301

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

Part 2 Re-examination of innovation patents

Section 101G

72 Patents Act 1990

Part 2—Re-examination of innovation patents

101G Re-examination of complete specifications of innovation

patents

(1) Subject to subsections 101K(2) and (3) and the regulations, after an

innovation patent has been certified, the Commissioner:

(a) may, if the Commissioner decides to do so; and

(b) must, if asked to do so, in writing, by the patentee or any

other person;

re-examine the complete specification relating to the patent.

(1A) The re-examination must be carried out in accordance with the

regulations.

(2) If the Commissioner re-examines an innovation patent under

subsection (1):

(a) the Commissioner must re-examine the complete

specification relating to the patent to determine if the patent

is invalid and should be revoked because a ground set out in

subsection (3) is made out; and

(b) the Commissioner must report on the grounds set out in

subsection (3).

(3) The grounds for the revocation of the patent under subsection (2)

are as follows:

(a) that the specification filed in respect of the complete

application does not comply with subsection 40(2) or (3);

(b) that the invention, so far as claimed, does not comply with

paragraph 18(1A)(a), (b) or (c);

(c) that the invention is not a patentable invention under

subsection 18(2) or (3).

(4) There are no other grounds for the revocation of a patent under

subsection (2).

ComLaw Authoritative Act C2014C00301

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

Re-examination of innovation patents Part 2

Section 101H

Patents Act 1990 73

101H Patentee statements

(1) If the Commissioner reports that, after re-examining a patent under

section 101G, a ground for the revocation of the patent has been

made out, the patentee may, within the prescribed period, file a

statement, in accordance with the regulations, disputing the whole

or any part of the report.

(2) The patentee may file a statement whether or not the patentee takes

steps to amend the complete specification, or files a statement of

amendments in accordance with a direction under section 106.

101J Revocation of innovation patent following re-examination

(1) The Commissioner may, by notice in writing, revoke a patent,

either wholly or so far as it relates to a particular claim, if the

Commissioner:

(a) makes an adverse report on a re-examination of the relevant

specification under section 101G; and

(b) is satisfied, on the balance of probabilities, that there is a

ground of revocation of the patent.

(2) If the Commissioner revokes the patent:

(a) the Commissioner must notify the patentee and the person

who requested the examination (if that person is not the

patentee) of the revocation; and

(b) register the revocation of the patent.

(3) The Commissioner must not revoke a patent under this section

unless:

(a) the Commissioner has given the patentee a reasonable

opportunity to be heard; and

(b) the Commissioner has considered the statement made by the

patentee under section 101H (if any); and

(c) the Commissioner has, if appropriate, given the patentee a

reasonable opportunity to amend the relevant specification

for the purpose of removing any ground for revocation and

the patentee has failed to do so.

ComLaw Authoritative Act C2014C00301

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

Part 2 Re-examination of innovation patents

Section 101K

74 Patents Act 1990

(4) The Commissioner must not revoke a patent under this section

while relevant proceedings in relation to that patent are pending.

(5) The patentee may appeal to the Federal Court against a decision of

the Commissioner under this section.

101K Relevant proceedings and re-examination

(1) If the validity of an innovation patent is disputed in any

proceedings before a prescribed court under this Act, the court may

direct the Commissioner to re-examine the complete specification

relating to the patent. If so directed, the Commissioner must

re-examine the specification accordingly.

(2) If relevant proceedings in relation to an innovation patent are

pending, the Commissioner must not re-examine the complete

specification relating to the patent.

(3) If:

(a) the Commissioner has started to re-examine a complete

specification relating to an innovation patent; and

(b) relevant proceedings in relation to the patent are started;

the Commissioner must not continue the re-examination.

101L Copies of report to be given to court

A copy of a report under paragraph 101G(2)(b), and of any

statement filed under section 101H in relation to the report, must, if

the re-examination was directed under subsection 101K(1), be

given to the court that gave the direction.

ComLaw Authoritative Act C2014C00301

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

Opposition to innovation patents Part 3

Section 101M

Patents Act 1990 75

Part 3—Opposition to innovation patents

101M Opposition to innovation patent

The Minister, or any other person, may, in accordance with the

regulations, oppose an innovation patent that has been certified and

seek the revocation of it, on one or more of the following grounds

of invalidity, but on no other:

(a) that the patentee is either:

(i) not entitled to the patent; or

(ii) entitled to the patent but only in conjunction with some

other person;

(b) that the complete specification does not comply with

subsection 40(2) or (3);

(c) that the invention is not a patentable invention because it

does not comply with paragraph 18(1A)(a), (b) or (c);

(d) that the invention is not a patentable invention under

subsection 18(2) or (3).

101N Hearing and decision by the Commissioner

(1) If an innovation patent has been opposed under section 101M, the

Commissioner must decide the case in accordance with the

regulations.

(2) The Commissioner must give the opponent and the patentee a

reasonable opportunity to be heard before deciding the case.

(3) The Commissioner may, in deciding whether to revoke the patent,

take into account any ground on which the grant of an innovation

patent may be opposed, whether relied upon by the opponent or

not.

(4) Subject to subsection (6), if the Commissioner is satisfied, on the

balance of probabilities, that a ground exists for the revocation of

an innovation patent, the Commissioner may revoke the patent in

writing either wholly or so far as it relates to a particular claim.

ComLaw Authoritative Act C2014C00301

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

Part 3 Opposition to innovation patents

Section 101P

76 Patents Act 1990

(5) If the Commissioner revokes the patent:

(a) the Commissioner must notify the patentee and the opponent

of the revocation; and

(b) register the revocation of the patent.

(6) The Commissioner must not revoke a patent under this section

unless the Commissioner has, where appropriate, given the

patentee a reasonable opportunity to amend the relevant

specification for the purpose of removing any ground for

revocation and the patentee has failed to do so.

(7) The patentee, and any opponent, may appeal to the Federal Court

against a decision of the Commissioner under this section.

101P Relevant proceedings and opposition

If relevant proceedings in relation to an innovation patent are

pending, the Commissioner must not make a decision under this

Part in relation to the patent without the leave of the court.

ComLaw Authoritative Act C2014C00301

Amendments Chapter 10

Amendments that are not allowable Part 1

Section 102

Patents Act 1990 77

Chapter 10—Amendments

Part 1—Amendments that are not allowable

102 What amendments are not allowable?

Amendment of complete specification not allowable if amended

specification claims or discloses matter extending beyond that

disclosed in certain documents

(1) An amendment of a complete specification is not allowable if, as a

result of the amendment, the specification would claim or disclose

matter that extends beyond that disclosed in the following

documents taken together:

(a) the complete specification as filed;

(b) other prescribed documents (if any).

Certain amendments of complete specification are not allowable

after relevant time

(2) An amendment of a complete specification is not allowable after

the relevant time if, as a result of the amendment:

(a) a claim of the specification would not in substance fall within

the scope of the claims of the specification before

amendment; or

(b) the specification would not comply with subsection 40(2) or

(3).

Meaning of relevant time 1

(2A) For the purposes of subsection (2), relevant time means:

(a) in relation to an amendment proposed to a complete

specification relating to a standard patent—after the

specification has been accepted; or

(b) in relation to an amendment proposed to a complete

specification relating to an innovation patent—after the

1 This heading has been placed in the correct position.

ComLaw Authoritative Act C2014C00301

Chapter 10 Amendments

Part 1 Amendments that are not allowable

Section 103

78 Patents Act 1990

Commissioner has made a decision under

paragraph 101E(1)(a) in respect of the patent.

Amendment of innovation patent request not allowable in certain

circumstances

(2B) An amendment to a patent request relating to an innovation patent

application is not allowable if:

(a) the patent application was provided for in section 79C; and

(b) the effect of the proposed amendment would be to convert

the application from an application for an innovation patent

to an application for a standard patent.

Amendments of a kind prescribed by regulations not allowable

(2D) An amendment of a patent request or a complete specification is

not allowable if it is of a kind prescribed by regulations made for

the purposes of this section.

Section does not apply in certain cases

(3) This section does not apply to an amendment for the purposes of:

(a) correcting a clerical error or an obvious mistake made in, or

in relation to, a complete specification; or

(b) complying with paragraph 6(c) (about deposit requirements).

103 Consent of mortgagee or exclusive licensee needed

(1) Where a person is registered as the mortgagee or exclusive licensee

of a patent, an amendment of the complete specification is not

allowable unless the mortgagee or licensee has consented, in

writing, to the amendment.

(2) If a mortgagee or licensee refuses to consent to a proposed

amendment, the Commissioner may, on the application of the

applicant or patentee, if satisfied on the balance of probabilities

that the consent has been unreasonably refused, direct that the

consent of the mortgagee or licensee is not necessary.

ComLaw Authoritative Act C2014C00301

Amendments Chapter 10

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

Section 104

Patents Act 1990 79

Part 2—Amendments of patent requests,

specifications and other filed documents

104 Amendments by applicants and patentees

(1) An applicant for a patent or a patentee, may, subject to this Act,

and subject to and in accordance with the regulations, ask the

Commissioner for leave to amend the relevant patent request or

complete specification, or any other filed document, for any

purpose including either or both of the following:

(a) removing a lawful ground of objection to the request or

specification, whether that objection is raised in the course of

an examination or re-examination or otherwise;

(b) correcting a clerical error or an obvious mistake.

(2) Where an applicant or patentee asks for leave to amend a patent

request or complete specification, or any other filed document, the

Commissioner must consider and deal with the request in

accordance with the regulations.

(4) The Minister or any other person may, subject to and in accordance

with the regulations, oppose allowing an amendment.

(5) The Commissioner must not allow an amendment that is not

allowable under section 102.

(6) On the allowance of an amendment, the amendment is to be taken

to have been made.

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

Commissioner allowing, or refusing to allow, a requested

amendment, other than a prescribed decision.

105 Amendments directed by court

Order for amendment during relevant proceedings

ComLaw Authoritative Act C2014C00301

Chapter 10 Amendments

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

Section 106

80 Patents Act 1990

(1) In any relevant proceedings in relation to a patent, the court may,

on the application of the patentee, by order direct the amendment

of the patent request or the complete specification in the manner

specified in the order.

Order for amendment during an appeal

(1A) If an appeal is made to the Federal Court against a decision or

direction of the Commissioner in relation to a patent application,

the Federal Court may, on the application of the applicant for the

patent, by order direct the amendment of the patent request or the

complete specification in the manner specified in the order.

Orders for amendment generally

(2) An order under subsection (1) or (1A) may be made subject to such

terms (if any) as to costs, advertisements or otherwise, as the court

thinks fit.

(3) The applicant for an order under subsection (1) or (1A) must give

notice of an application for an order to the Commissioner, who is

entitled to appear and be heard, and must appear if the court

directs.

(4) A court is not to direct an amendment that is not allowable under

section 102.

(5) The applicant must file a copy of an order within the prescribed

period.

(6) On the filing of a copy of an order, the patent request or complete

specification is to be taken to have been amended in the manner

specified in the order.

106 Amendments directed by Commissioner: patents

(1) Where:

(a) a patent has been granted; and

(b) the Commissioner is satisfied, on the balance of probabilities,

that the patent is invalid on grounds that could be removed

by appropriate amendments of the specification following:

ComLaw Authoritative Act C2014C00301

Amendments Chapter 10

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

Section 107

Patents Act 1990 81

(i) in the case of a standard patent—re-examination of the

patent; or

(ii) in the case of an innovation patent—examination of,

re-examination of, or opposition to, the patent;

the Commissioner may, in accordance with the regulations, direct

the patentee to file, within such time as the Commissioner allows, a

statement of proposed amendments of the specification for the

purpose of removing those grounds.

(2) The Commissioner must not give a direction without first giving

the patentee a reasonable opportunity to be heard.

(3) A patentee may, in accordance with the regulations, amend a

statement of amendments.

(4) If the Commissioner is satisfied, on the balance of probabilities,

that the amendments set out in a statement (or an amended

statement) are allowable and would, if made, remove the grounds

on which the patent is invalid, the Commissioner must allow the

amendments.

(5) On the allowance of an amendment, the amendment is to be taken

to have been made.

107 Amendments directed by Commissioner: applications for

standard patents

(1) Where:

(a) a complete application for a standard patent has been made;

and

(b) the Commissioner is satisfied, on the balance of probabilities,

that there are lawful grounds of objection to the patent

request or complete specification, but that those grounds of

objection could be removed by appropriate amendments of

the request or specification; and

(c) the applicant has not taken action to amend the request or

specification so as to remove those grounds of objection;

the Commissioner may, in accordance with the regulations, direct

the applicant to file, within such time as the Commissioner allows,

ComLaw Authoritative Act C2014C00301

Chapter 10 Amendments

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

Section 109

82 Patents Act 1990

a statement of proposed amendments of the request or specification

for the purpose of removing those grounds of objection.

(2) The Commissioner must not give a direction without first giving

the applicant a reasonable opportunity to be heard.

(3) An applicant may, in accordance with the regulations, amend a

statement of amendments.

(4) If the Commissioner is satisfied, on the balance of probabilities,

that the amendments set out in a statement (or an amended

statement) are allowable and would, if made, remove all lawful

grounds of objection to the patent request and complete

specification, the Commissioner must allow the amendments.

(5) On the allowance of an amendment, the amendment is to be taken

to have been made.

109 Appeal

An appeal lies to the Federal Court against a direction of the

Commissioner under section 106 or 107.

ComLaw Authoritative Act C2014C00301

Amendments Chapter 10

Miscellaneous Part 3

Section 110

Patents Act 1990 83

Part 3—Miscellaneous

110 Advertisement of amendment of complete specification

An amendment of a complete specification that is open to public

inspection must be notified in the Official Journal.

112 Pending proceedings

A complete specification relating to a patent must not be amended,

except under section 105, while relevant proceedings in relation to

the patent are pending.

112A Decisions on appeal

A complete specification relating to a patent application must not

be amended, except under section 105, if:

(a) an appeal against a decision or direction of the Commissioner

has been made to the Federal Court in relation to the

specification; and

(b) the appeal, and any proceedings resulting from it, have not

been finally determined, withdrawn or otherwise disposed of.

113 Persons claiming under assignment or agreement

(1) Where, before a patent is granted, a person would, if the patent

were then granted, be entitled under an assignment or agreement,

or by operation of law, to:

(a) the patent or an interest in it; or

(b) an undivided share in the patent or in such an interest;

the Commissioner may, on a request made by the person in

accordance with the regulations, direct that the application proceed

in the name of the person, or in the name of the person and the

applicant or the other joint applicant or applicants, as the case

requires.

(2) Where the Commissioner gives a direction:

ComLaw Authoritative Act C2014C00301

Chapter 10 Amendments

Part 3 Miscellaneous

Section 114

84 Patents Act 1990

(a) the person is to be taken to be the applicant, or a joint

applicant, as the case requires; and

(b) the patent request is to be taken to have been amended so as

to request the grant of a patent to the person, either alone or

as a joint patentee, as the case requires.

114 Priority date of claims of certain amended specifications

(1) This section applies if:

(a) a complete specification has been amended; and

(b) the amendment was not allowable under subsection 102(1);

and

(c) as a result of the amendment, a claim of the amended

specification claims an invention that:

(i) was not disclosed by the complete specification as filed

in a manner that was clear enough and complete enough

for the invention to be performed by a person skilled in

the relevant art; but

(ii) is disclosed in that manner by the amended

specification.

(2) If this section applies, the priority date of the claim must be

determined under the regulations.

114A Objection cannot be taken to certain amended specifications

(1) This section applies if:

(a) a complete specification (the original specification) has been

amended; and

(b) the amendment was not allowable under subsection 102(1);

and

(ba) as a result of the amendment, a claim of the amended

specification claims an invention that was not disclosed by

the original specification as filed in a manner that was clear

enough and complete enough for the invention to be

performed by a person skilled in the relevant art; and

ComLaw Authoritative Act C2014C00301

Amendments Chapter 10

Miscellaneous Part 3

Section 115

Patents Act 1990 85

(c) after the filing date of the original specification there is a

publication or use of the invention as described in the

original specification.

(2) If this section applies, objection cannot be taken to the amended

specification, and a patent is not invalid, on the ground that the

invention, so far as claimed in the amended specification and

having regard to the publication or the use of the invention

described in the original specification, does not involve:

(a) in the case of a standard patent—an inventive step; or

(b) in the case of an innovation patent—an innovative step.

115 Restriction on recovery of damages etc.

(1) Where a complete specification is amended after becoming open to

public inspection, damages shall not be awarded, and an order shall

not be made for an account of profits, in respect of any

infringement of the patent before the date of the decision or order

allowing or directing the amendment:

(a) unless the court is satisfied that the specification without the

amendment was framed in good faith and with reasonable

skill and knowledge; or

(b) if the claim of the specification that was infringed is a claim

mentioned under subsection 114(1).

(2) Subsection (1) has effect subject to subsections 57(3) and (4).

116 Interpretation of amended specifications

The Commissioner or a court may, in interpreting a complete

specification as amended, refer to the specification without

amendment.

ComLaw Authoritative Act C2014C00301

Chapter 11 Infringement

Part 1 Infringement and infringement proceedings

Section 117

86 Patents Act 1990

Chapter 11—Infringement

Part 1—Infringement and infringement

proceedings

117 Infringement by supply of products

(1) If the use of a product by a person would infringe a patent, the

supply of that product by one person to another is an infringement

of the patent by the supplier unless the supplier is the patentee or

licensee of the patent.

(2) A reference in subsection (1) to the use of a product by a person is

a reference to:

(a) if the product is capable of only one reasonable use, having

regard to its nature or design—that use; or

(b) if the product is not a staple commercial product—any use of

the product, if the supplier had reason to believe that the

person would put it to that use; or

(c) in any case—the use of the product in accordance with any

instructions for the use of the product, or any inducement to

use the product, given to the person by the supplier or

contained in an advertisement published by or with the

authority of the supplier.

118 Infringement exemptions: use in or on foreign vessels, aircraft

or vehicles

The rights of a patentee are not infringed:

(a) by using the patented invention on board a foreign vessel, in

the body of the vessel, or in the machinery, tackle, apparatus

or other accessories of the vessel, if the vessel comes into the

patent area only temporarily or accidentally and the invention

is used exclusively for the needs of the vessel; or

ComLaw Authoritative Act C2014C00301

Infringement Chapter 11

Infringement and infringement proceedings Part 1

Section 119

Patents Act 1990 87

(b) by using the patented invention in the construction or

working of a foreign aircraft or foreign land vehicle, or in the

accessories of the aircraft or vehicle, if the aircraft or vehicle

comes into the patent area only temporarily or accidentally.

119 Infringement exemptions: prior use

(1) A person may, without infringing a patent, do an act that exploits a

product, method or process and would infringe the patent apart

from this subsection, if immediately before the priority date of the

relevant claim the person:

(a) was exploiting the product, method or process in the patent

area; or

(b) had taken definite steps (contractually or otherwise) to

exploit the product, method or process in the patent area.

Note 1: This section applies in relation to a patent granted as a result of an

application filed on or after the commencement of Schedule 6 to the

Intellectual Property Laws Amendment Act 2006 (which repealed and

substituted this section).

Note 2: Section 119 of this Act as in force before the commencement of that

Schedule continues to apply in relation to patents granted as a result of

earlier applications.

(2) Subsection (1) does not apply if, before the priority date, the

person:

(a) had stopped (except temporarily) exploiting the product,

method or process in the patent area; or

(b) had abandoned (except temporarily) the steps to exploit the

product, method or process in the patent area.

Limit for product, method or process derived from patentee

(3) Subsection (1) does not apply to a product, method or process the

person derived from the patentee or the patentee’s predecessor in

title in the patented invention unless the person derived the

product, method or process from information that was made

publicly available:

(a) by or with the consent of the patentee or the patentee’s

predecessor in title; and

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Chapter 11 Infringement

Part 1 Infringement and infringement proceedings

Section 119

88 Patents Act 1990

(b) through any publication or use of the invention in the

prescribed circumstances mentioned in paragraph 24(1)(a).

Exemption for successors in title

(4) A person (the disposer) may dispose of the whole of the disposer’s

entitlement under subsection (1) to do an act without infringing a

patent to another person (the recipient). If the disposer does so, this

section applies in relation to the recipient as if the references in

subsections (1), (2) and (3) to the person were references to:

(a) the disposer; or

(b) if the disposer’s entitlement arose because of one or more

previous applications of this subsection—the first person:

(i) who was entitled under subsection (1) (applying of its

own force) to do an act without infringing the patent;

and

(ii) to whom the disposer’s entitlement is directly or

indirectly attributable.

Definition

(5) In this section:

exploit includes:

(a) in relation to a product:

(i) make, hire, sell or otherwise dispose of the product; and

(ii) offer to make, hire, sell or otherwise dispose of the

product; and

(iii) use or import the product; and

(iv) keep the product for the purpose of doing an act

described in subparagraph (i), (ii) or (iii); and

(b) in relation to a method or process:

(i) use the method or process; and

(ii) do an act described in subparagraph (a)(i), (ii), (iii) or

(iv) with a product resulting from the use of the method

or process.

ComLaw Authoritative Act C2014C00301

Infringement Chapter 11

Infringement and infringement proceedings Part 1

Section 119A

Patents Act 1990 89

119A Infringement exemptions: acts for obtaining regulatory

approval of pharmaceuticals

(1) The rights of a patentee of a pharmaceutical patent are not

infringed by a person exploiting an invention claimed in the patent

if the exploitation is solely for:

(a) purposes connected with obtaining the inclusion in the

Australian Register of Therapeutic Goods of goods that:

(i) are intended for therapeutic use; and

(ii) are not medical devices, or therapeutic devices, as

defined in the Therapeutic Goods Act 1989; or

(b) purposes connected with obtaining similar regulatory

approval under a law of a foreign country or of a part of a

foreign country.

(2) Subsection (1) does not apply to the export from Australia of goods

for purposes described in paragraph (1)(b) unless the term of the

patent has been extended under Part 3 of Chapter 6 and the goods

consist of or contain:

(a) a pharmaceutical substance per se that is in substance

disclosed in the complete specification of the patent and in

substance falls within the scope of the claim or claims of that

specification; or

(b) a pharmaceutical substance when produced by a process that

involves the use of recombinant DNA technology, that is in

substance disclosed in the complete specification of the

patent and in substance falls within the scope of the claim or

claims of that specification.

Note: Part 3 of Chapter 6 provides for the extension of the term of standard

patents claiming pharmaceutical substances.

(3) In this section:

pharmaceutical patent means a patent claiming:

(a) a pharmaceutical substance; or

(b) a method, use or product relating to a pharmaceutical

substance, including any of the following:

(i) a method for producing a raw material needed to

produce the substance;

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Chapter 11 Infringement

Part 1 Infringement and infringement proceedings

Section 119B

90 Patents Act 1990

(ii) a product that is a raw material needed to produce the

substance;

(iii) a product that is a pro-drug, metabolite or derivative of

the substance.

119B Infringement exemptions: acts for obtaining regulatory

approval (non-pharmaceuticals)

(1) A person may, without infringing a patent, do an act that would

infringe the patent apart from this subsection, if the act is done

solely for:

(a) purposes connected with obtaining an approval required by a

law of the Commonwealth or of a State or Territory to

exploit a product, method or process; or

(b) purposes connected with obtaining a similar approval under a

law of another country or region.

(2) This section does not apply in relation to a pharmaceutical patent

within the meaning of subsection 119A(3).

119C Infringement exemptions: acts for experimental purposes

(1) A person may, without infringing a patent for an invention, do an

act that would infringe the patent apart from this subsection, if the

act is done for experimental purposes relating to the subject matter

of the invention.

(2) For the purposes of this section, experimental purposes relating to

the subject matter of the invention include, but are not limited to,

the following:

(a) determining the properties of the invention;

(b) determining the scope of a claim relating to the invention;

(c) improving or modifying the invention;

(d) determining the validity of the patent or of a claim relating to

the invention;

(e) determining whether the patent for the invention would be, or

has been, infringed by the doing of an act.

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Infringement Chapter 11

Infringement and infringement proceedings Part 1

Section 120

Patents Act 1990 91

120 Infringement proceedings

(1) Subject to subsection (1A), infringement proceedings may be

started in a prescribed court, or in another court having jurisdiction

to hear and determine the matter, by the patentee or an exclusive

licensee.

(1A) Infringement proceedings in respect of an innovation patent cannot

be started unless the patent has been certified.

(2) If an exclusive licensee starts infringement proceedings, the

patentee must be joined as a defendant unless joined as a plaintiff.

(3) A patentee joined as a defendant is not liable for costs unless the

patentee enters an appearance and takes part in the proceedings.

(4) Infringement proceedings must be started within:

(a) 3 years from the day on which the relevant patent is granted;

or

(b) 6 years from the day on which the infringing act was done;

whichever period ends later.

121 Counter-claim for revocation of patent

(1) A defendant in infringement proceedings may apply by way of

counter-claim in the proceedings for the revocation of the patent.

(2) The provisions of this Act relating to proceedings for the

revocation of a patent apply, with the necessary changes, to a

counter-claim.

121A Burden of proof—infringement of patent for a process

(1) This section applies only to a patent for a process for obtaining a

product.

(2) If, in proceedings for infringement of a patent started by the

patentee or the exclusive licensee:

(a) the defendant alleges that he or she has used a process

different from the patented process to obtain a product

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Part 1 Infringement and infringement proceedings

Section 122

92 Patents Act 1990

(defendant’s product) identical to the product obtained by

the patented process; and

(b) the court is satisfied that:

(i) it is very likely that the defendant’s product was made

by the patented process; and

(ii) the patentee or exclusive licensee has taken reasonable

steps to find out the process actually used by the

defendant but has not been able to do so;

then, in the absence of proof to the contrary the onus for

which is on the defendant, the defendant’s product is to be

taken to have been obtained by the patented process.

(3) In deciding how the defendant is to adduce evidence for the

purposes of subsection (2), the court is to take into account the

defendant’s legitimate interests in having business and

manufacturing secrets protected.

122 Relief for infringement of patent

(1) The relief which a court may grant for infringement of a patent

includes an injunction (subject to such terms, if any, as the court

thinks fit) and, at the option of the plaintiff, either damages or an

account of profits.

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

damages for an infringement of a patent, if the court considers it

appropriate to do so having regard to:

(a) the flagrancy of the infringement; and

(b) the need to deter similar infringements of patents; and

(c) the conduct of the party that infringed the patent that

occurred:

(i) after the act constituting the infringement; or

(ii) after that party was informed that it had allegedly

infringed the patent; and

(d) any benefit shown to have accrued to that party because of

the infringement; and

(e) all other relevant matters.

ComLaw Authoritative Act C2014C00301

Infringement Chapter 11

Infringement and infringement proceedings Part 1

Section 123

Patents Act 1990 93

(2) On the application of either party, the court may make such order

for the inspection of any thing in or on any vehicle, vessel, aircraft

or premises, and may impose such terms and give such directions

about the inspection, as the court thinks fit.

123 Innocent infringement

(1) A court may refuse to award damages, or to make an order for an

account of profits, in respect of an infringement of a patent if the

defendant satisfies the court that, at the date of the infringement,

the defendant was not aware, and had no reason to believe, that a

patent for the invention existed.

(2) If patented products, marked so as to indicate that they are patented

in Australia, were sold or used in the patent area to a substantial

extent before the date of the infringement, the defendant is to be

taken to have been aware of the existence of the patent unless the

contrary is established.

(3) Nothing in this section affects a court’s power to grant relief by

way of an injunction.

ComLaw Authoritative Act C2014C00301

Chapter 11 Infringement

Part 2 Non-infringement declarations

Section 124

94 Patents Act 1990

Part 2—Non-infringement declarations

124 Interpretation

In this Part:

patentee includes an exclusive licensee.

125 Application for non-infringement declaration

(1) A person who has done, is doing, or is intending to do an act may

apply to a prescribed court for a declaration that the doing of the

act does not, or would not, infringe a patent.

(2) An application may be made:

(a) for a declaration in relation to an invention claimed in a

standard patent—at any time after the patent has been

granted; and

(b) for a declaration in relation to an innovation patent—at any

time after the patent has been certified; and

(c) whether or not the patentee has made any assertion to the

effect that the doing of the act has or would infringe the

claim.

(3) The patentee must be joined as a respondent in the proceedings.

126 Proceedings for non-infringement declarations

(1) A prescribed court must not make a non-infringement declaration

unless:

(a) the applicant for the declaration:

(i) has asked the patentee in writing for a written admission

that the doing of the act has not infringed, or would not

infringe, the patent; and

(ii) has given the patentee full written particulars of the act

done, or proposed to be done; and

ComLaw Authoritative Act C2014C00301

Infringement Chapter 11

Non-infringement declarations Part 2

Section 127

Patents Act 1990 95

(iii) has undertaken to pay a reasonable sum for the

patentee’s expenses in obtaining advice about whether

the act has infringed or would infringe the claim; and

(b) the patentee has refused or failed to make the admission.

(2) The court may make orders as to costs as the court thinks fit.

127 Effect of non-infringement declarations

If:

(a) a patentee has given a person a written admission that the

doing of an act has not infringed, or would not infringe, a

claim, or a prescribed court has made a non-infringement

declaration in respect of an invention; and

(b) the patentee later gets an injunction restraining the person

from doing the act as specified in the admission, or the

declaration is revoked;

the person is not liable:

(c) to account to the patentee for any profits, made by the person

before the date on which the injunction was granted or the

declaration was revoked, from the doing of the act as

specified in the admission or declaration; or

(d) to pay damages for any loss suffered by the patentee before

that date as a result of the doing of that act.

ComLaw Authoritative Act C2014C00301

Chapter 11 Infringement

Part 3 Unjustified threats of infringement proceedings

Section 128

96 Patents Act 1990

Part 3—Unjustified threats of infringement

proceedings

128 Application for relief from unjustified threats

(1) Where a person, by means of circulars, advertisements or

otherwise, threatens a person with infringement proceedings, or

other similar proceedings, a person aggrieved may apply to a

prescribed court, or to another court having jurisdiction to hear and

determine the application, for:

(a) a declaration that the threats are unjustifiable; and

(b) an injunction against the continuance of the threats; and

(c) the recovery of any damages sustained by the applicant as a

result of the threats.

(2) Subsection (1) applies whether or not the person who made the

threats is entitled to, or interested in, the patent or a patent

application.

129 Court’s power to grant relief if threats related to a standard

patent or standard patent application

If an application under section 128 for relief relates to threats made

in respect of a standard patent or an application for a standard

patent, the court may grant the applicant the relief applied for

unless the respondent satisfies the court that the acts about which

the threats were made infringed, or would infringe:

(a) a claim that is not shown by the applicant to be invalid; or

(b) rights under section 57 in respect of a claim that is not shown

by the applicant to be a claim that would be invalid if the

patent had been granted.

ComLaw Authoritative Act C2014C00301

Infringement Chapter 11

Unjustified threats of infringement proceedings Part 3

Section 129A

Patents Act 1990 97

129A Threats related to an innovation patent application or

innovation patent and court’s power to grant relief

Certain threats of infringement proceedings are always

unjustifiable

(1) If:

(a) a person:

(i) has applied for an innovation patent, but the application

has not been determined; or

(ii) has an innovation patent that has not been certified; and

(b) the person, by means of circulars, advertisements or

otherwise, threatens a person with infringement proceedings

or other similar proceedings in respect of the patent applied

for, or the patent, as the case may be;

then, for the purposes of an application for relief under section 128

by the person threatened, the threats are unjustifiable.

Courts power to grant relief in respect of threats made by the

applicant for an innovation patent or the patentee of an uncertified

innovation patent

(2) If an application under section 128 for relief relates to threats made

in respect of an innovation patent that has not been certified or an

application for an innovation patent, the court may grant the

applicant the relief applied for.

Courts power to grant relief in respect of threats made by the

patentee of a certified innovation patent

(3) If an application under section 128 for relief relates to threats made

in respect of a certified innovation patent, the court may grant the

applicant the relief applied for unless the respondent satisfies the

court that the acts about which the threats were made infringed, or

would infringe, a claim that is not shown by the applicant to be

invalid.

ComLaw Authoritative Act C2014C00301

Chapter 11 Infringement

Part 3 Unjustified threats of infringement proceedings

Section 130

98 Patents Act 1990

130 Counter-claim for infringement

(1) The respondent in proceedings under section 128 may apply, by

way of counter-claim, for relief to which the respondent would be

entitled in separate proceedings for an infringement by the

applicant of the patent to which the threats relate.

(2) Where the respondent applies by way of counter-claim, the

applicant may, without making a separate application under

Chapter 12, apply in the proceedings for the revocation of the

patent.

(3) The provisions of this Act relating to infringement proceedings

apply, with the necessary changes, to a counter-claim.

Note: Infringement proceedings cannot be commenced in respect of an

innovation patent unless the patent has first been certified (see

subsection 120(1A)).

(4) The provisions of this Act relating to proceedings under

section 138 for the revocation of a patent apply, with the necessary

changes, to an application under subsection (2).

Note: Revocation proceedings under section 138 cannot be commenced in

respect of an innovation patent unless the patent has first been

certified (see subsection 138(1A)).

131 Notification of patent not a threat

The mere notification of the existence of a patent, or an application

for a patent, does not constitute a threat of proceedings for the

purposes of section 128.

132 Liability of legal practitioner or patent attorney

A legal practitioner or a registered patent attorney is not liable to

proceedings under section 128 in respect of an act done in a

professional capacity on behalf of a client.

ComLaw Authoritative Act C2014C00301

Compulsory licences and revocation of patents Chapter 12

Section 133

Patents Act 1990 99

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.

(2) After hearing the application, the court may, subject to this section,

make the order if satisfied that:

(a) all the following conditions exist:

(i) the applicant has tried for a reasonable period, but

without success, to obtain from the patentee an

authorisation to work the invention on reasonable terms

and conditions;

(ii) the reasonable requirements of the public with respect to

the patented invention have not been satisfied;

(iii) the patentee has given no satisfactory reason for failing

to exploit the patent; or

(b) the patentee has contravened, or is contravening, Part IV of

the Competition and Consumer Act 2010 or an application

law (as defined in section 150A of that Act) in connection

with the patent.

(3) An order must direct that the licence:

(a) is not to give the licensee, or a person authorised by the

licensee, the exclusive right to work the patented invention;

and

(b) is to be assignable only in connection with an enterprise or

goodwill in connection with which the licence is used;

and may direct that the licence is to be granted on any other terms

specified in the order.

ComLaw Authoritative Act C2014C00301

Chapter 12 Compulsory licences and revocation of patents

Section 133

100 Patents Act 1990

(3B) If the patented invention cannot be worked by the applicant

without his or her infringing another patent:

(a) the court is to make the order only if the court is further

satisfied that the patented invention involves an important

technical advance of considerable economic significance on

the invention (other invention) to which the other patent

relates; and

(b) the court must further order that the patentee of the other

invention:

(i) must grant to the applicant a licence to work the other

invention insofar as is necessary to work the patented

invention; and

(ii) is to be granted, if he or she so requires, a cross-licence

on reasonable terms to work the patented invention; and

(c) the court must direct that the licence granted by the patentee

of the other invention may be assigned by the applicant:

(i) only if he or she assigns the licence granted in respect of

the patented invention; and

(ii) only to the assignee of that licence.

(4) An order operates, without prejudice to any other method of

enforcement, as if it were embodied in a deed granting a licence

and executed by the patentee and all other necessary parties.

(5) The patentee is to be paid in respect of a licence granted to the

applicant under an order:

(a) such amount as is agreed between the patentee and the

applicant; or

(b) if paragraph (a) does not apply—such amount as is

determined by the Federal Court to be just and reasonable

having regard to the economic value of the licence and the

desirability of discouraging contraventions of Part IV of the

Competition and Consumer Act 2010 or an application law

(as defined in section 150A of that Act).

(6) The patentee or the Federal Court may revoke the licence if:

(a) the patentee and the licensee are agreed, or the court on

application made by either party finds, that the circumstances

ComLaw Authoritative Act C2014C00301

Compulsory licences and revocation of patents Chapter 12

Section 134

Patents Act 1990 101

that justified the grant of the licence have ceased to exist and

are unlikely to recur; and

(b) the legitimate interests of the licensee are not likely to be

adversely affected by the revocation.

134 Revocation of patent after grant of compulsory licence

(1) Where a compulsory licence relating to a patent is granted, an

interested person may apply to the Federal Court, after the end of

the prescribed period, for an order revoking the patent.

(2) After hearing the application, the court may make the order if

satisfied that:

(a) both:

(i) the reasonable requirements of the public with respect to

the patented invention have not been satisfied; and

(ii) the patentee has given no satisfactory reason for failing

to exploit the patent; or

(b) the patentee is contravening Part IV of the Competition and

Consumer Act 2010 or an application law (as defined in

section 150A of that Act) in connection with the patent.

135 Reasonable requirements of the public

(1) For the purposes of sections 133 and 134, the reasonable

requirements of the public with respect to a patented invention are

to be taken not to have been satisfied if:

(a) an existing trade or industry in Australia, or the establishment

of a new trade or industry in Australia, is unfairly prejudiced,

or the demand in Australia for the patented product, or for a

product resulting from the patented process, is not reasonably

met, because of the patentee’s failure:

(i) to manufacture the patented product to an adequate

extent, and supply it on reasonable terms; or

(ii) to manufacture, to an adequate extent, a part of the

patented product that is necessary for the efficient

working of the product, and supply the part on

reasonable terms; or

ComLaw Authoritative Act C2014C00301

Chapter 12 Compulsory licences and revocation of patents

Section 136

102 Patents Act 1990

(iii) to carry on the patented process to a reasonable extent;

or

(iv) to grant licences on reasonable terms; or

(b) a trade or industry in Australia is unfairly prejudiced by the

conditions attached by the patentee (whether before or after

the commencing day) to the purchase, hire or use of the

patented product, the use or working of the patented process;

or

(c) if the patented invention is not being worked in Australia on

a commercial scale, but is capable of being worked in

Australia.

(2) If, where paragraph (1)(c) applies, the court is satisfied that the

time that has elapsed since the patent was granted has, because of

the nature of the invention or some other cause, been insufficient to

enable the invention to be worked in Australia on a commercial

scale, the court may adjourn the hearing of the application for the

period that the court thinks sufficient for that purpose.

136 Orders to be consistent with international agreements

An order must not be made under section 133 or 134 that is

inconsistent with a treaty between the Commonwealth and a

foreign country.

136A Dealing with allegation of contravention of application law

Proceedings under section 133 or 134 involving an allegation of

contravention of an application law that is a law of a State must be

dealt with as if the law were a law of the Commonwealth.

Note: Those proceedings are in the Federal Court, which can only exercise

the judicial power of the Commonwealth. This section lets the court

deal comprehensively with the proceedings without the need for a

court of the State to determine whether the application law has been

contravened.

137 Revocation on surrender of patent

(1) A patentee may, at any time, by written notice to the

Commissioner, offer to surrender the patent.

ComLaw Authoritative Act C2014C00301

Compulsory licences and revocation of patents Chapter 12

Section 138

Patents Act 1990 103

(2) The Commissioner must give notice of an offer in accordance with

the regulations.

(3) After hearing all interested persons who notify the Commissioner

in accordance with the regulations of their wish to be heard, the

Commissioner may accept the offer and revoke the patent.

(4) Where relevant proceedings in relation to a patent are pending, the

Commissioner must not accept an offer to surrender the patent

without either the leave of the court or the consent of the parties to

the proceedings.

(5) Where a compulsory licence is in force in relation to a patent, the

Commissioner must not accept an offer to surrender the patent.

138 Revocation of patents in other circumstances

(1) Subject to subsection (1A), the Minister or any other person may

apply to a prescribed court for an order revoking a patent.

(1A) A person cannot apply for an order in respect of an innovation

patent unless the patent has been certified.

(2) At the hearing of the application, the respondent is entitled to begin

and give evidence in support of the patent and, if the applicant

gives evidence disputing the validity of the patent, the respondent

is entitled to reply.

(3) After hearing the application, the court may, by order, revoke the

patent, either wholly or so far as it relates to a claim, on one or

more of the following grounds, but on no other ground:

(a) that the patentee is not entitled to the patent;

(b) that the invention is not a patentable invention;

(d) that the patent was obtained by fraud, false suggestion or

misrepresentation;

(e) that an amendment of the patent request or the complete

specification was made or obtained by fraud, false suggestion

or misrepresentation;

(f) that the specification does not comply with subsection 40(2)

or (3).

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Chapter 12 Compulsory licences and revocation of patents

Section 139

104 Patents Act 1990

(4) A court must not make an order under subsection (3) on the ground

that the patentee is not entitled to the patent unless the court is

satisfied that, in all the circumstances, it is just and equitable to do

so.

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.

(2) In any proceedings under section 133, 134 or 138:

(a) the applicant must serve a copy of the application on the

Commissioner; and

(b) the Commissioner may appear and be heard in the

proceedings.

140 Commissioner to be given copies of orders

An office copy of an order made under this Chapter must be served

on the Commissioner by the Registrar or other appropriate officer

of the court that made the order.

ComLaw Authoritative Act C2014C00301

Withdrawal and lapsing of applications and ceasing of patents Chapter 13

Section 141

Patents Act 1990 105

Chapter 13—Withdrawal and lapsing of

applications and ceasing of patents

141 Withdrawal of applications

(1) A patent application, other than a PCT application, may be

withdrawn if all of the following conditions are met:

(a) the applicant lodges a written notice of withdrawal signed by

the applicant;

(b) if the application has been opposed under section 59—the

Commissioner has consented to the withdrawal;

(c) if the regulations prescribe a period within which an

application must not be withdrawn—the withdrawal will not

occur within the prescribed period.

(2) The regulations may prescribe circumstances in which PCT

applications may be withdrawn, or are to be taken to be withdrawn.

142 Lapsing of applications

(1) A provisional application for a patent lapses at the end of the

period prescribed for the purpose of section 38 or, if that period is

extended, at the end of the period as so extended.

(2) A complete application for a standard patent lapses if:

(a) the applicant does not ask for an examination of the patent

request and complete specification within the relevant period

prescribed for the purposes of subsection 44(1), (2) or (3), as

the case requires; or

(d) the applicant does not pay a continuation fee for the

application within the period prescribed for the purposes of

this paragraph; or

(e) the patent request and complete specification are not

accepted within the period prescribed for the purposes of this

paragraph; or

(f) if the application is a PCT application—prescribed

circumstances apply to the application.

ComLaw Authoritative Act C2014C00301

Chapter 13 Withdrawal and lapsing of applications and ceasing of patents

Section 143

106 Patents Act 1990

(3) A complete application for a standard patent lapses if the applicant

does not comply with a direction of the Commissioner under

section 107 within the time allowed by the Commissioner under

that section.

143 Ceasing of patents

A standard patent ceases if the patentee:

(a) does not pay a renewal fee for the patent within the

prescribed period; or

(b) does not file the prescribed documents (if any) within the

prescribed period.

143A Ceasing of innovation patents

An innovation patent ceases if:

(a) the fee for filing the request and accompanying specification

relating to an application for an innovation patent is not paid

in accordance with the regulations; or

(b) after an examination of the patent has been requested under

paragraph 101A(b), the patentee does not pay the prescribed

fee for the examination within the prescribed period; or

(c) the Commissioner does not make a decision under

paragraph 101E(1)(a) within the period prescribed for the

purposes of this paragraph; or

(d) the patentee does not pay a renewal fee for the patent within

the prescribed period; or

(e) the patentee does not comply with a direction of the

Commissioner under section 106 within the time allowed by

the Commissioner under that section.

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.

ComLaw Authoritative Act C2014C00301

Contracts Chapter 14

Section 144

Patents Act 1990 107

Chapter 14—Contracts

144 Void conditions

(1) A condition in a contract relating to the sale or lease of, or a

licence to exploit, a patented invention is void if the effect of the

condition would be:

(a) to prohibit or restrict the buyer, lessee or licensee from using

a product or process (whether patented or not) supplied or

owned by a person other than the seller, lessor or licensor, or

a nominee of the seller, lessor or licensor; or

(b) to require the buyer, lessee or licensee to acquire a product

not protected by the patent from the seller, lessor or licensor,

or a nominee of the seller, lessor or licensor.

(1A) A condition in a contract relating to the sale or lease of, or a

licence to exploit, an invention the subject of an innovation patent

is void if the effect of the condition would be to:

(a) prohibit the buyer, lessee or licensee from applying for

examination of the patent; or

(b) impose restrictions on the circumstances in which the buyer,

lessee or licensee may apply for examination of the patent.

(2) Subsection (1) does not apply if:

(a) the seller, lessor or licensor proves that, at the time the

contract was made, the buyer, lessee or licensee had the

option of buying the product, or obtaining a lease or licence,

on reasonable terms without the condition; and

(b) the contract entitles the buyer, lessee or licensee to be

relieved of the liability to comply with the condition on

giving the other party 3 months’ notice in writing and paying,

in compensation for the relief:

(i) in the case of a sale—such sum as is fixed by an

arbitrator appointed by the Minister; or

(ii) in the case of a lease or licence—such rent or royalty as

is so fixed for the rest of the term of the contract.

ComLaw Authoritative Act C2014C00301

Chapter 14 Contracts

Section 145

108 Patents Act 1990

(3) A person is not stopped from applying for or obtaining relief in any

proceedings under this Act merely because of an admission made

by the person about the reasonableness of terms offered to the

person as mentioned in paragraph (2)(a).

(4) It is a defence to proceedings for infringement of a patent that the

patented invention is, or was when the proceedings were started,

the subject of a contract containing a provision, inserted by the

patentee, that is void under this section.

(5) If the patentee offers the other parties to a contract mentioned in

subsection (4) a new contract that does not contain the void

condition but that otherwise gives the parties the same rights as the

existing contract, then, whether or not the other parties accept the

new contract in place of the existing contract, subsection (4) ceases

to apply, but the patentee is not entitled to damages or an account

of profit for an infringement of the patent committed before the

offer of the new contract.

145 Termination of contract after patent ceases to be in force

(1) A contract relating to the lease of, or a licence to exploit, a

patented invention may be terminated by either party, on giving 3

months’ notice in writing to the other party, at any time after the

patent, or all the patents, by which the invention was protected at

the time the contract was made, have ceased to be in force.

(2) Subsection (1) applies despite anything to the contrary in that

contract or in any other contract.

146 Effect of Chapter

Nothing in this Chapter:

(a) affects a condition in a contract that prohibits a person from

selling products other than those of a particular person; or

(b) validates a contract that would otherwise be invalid; or

(c) affects a right to terminate a contract, or to terminate a

condition of a contract, being a condition exercisable

independently of this section; or

ComLaw Authoritative Act C2014C00301

Contracts Chapter 14

Section 146

Patents Act 1990 109

(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.

ComLaw Authoritative Act C2014C00301

Chapter 15 Special provisions relating to associated technology

Section 147

110 Patents Act 1990

Chapter 15—Special provisions relating to

associated technology

147 Certificate by Director as to associated technology

(1) Where the Commissioner considers that a specification in respect

of an application may contain information of a kind referred to in

the definition of associated technology in subsection 4(1) of the

Safeguards Act, the Commissioner must give the Director written

notice to that effect together with a copy of the patent request and

specification.

(2) On receiving a notice, the Director may, if satisfied that the

specification contains information of that kind, issue a certificate to

that effect.

(3) Where the Director is satisfied that:

(a) the possession by the applicant or the nominated person of

the associated technology containing the information was not

in accordance with a permit; or

(b) the communication of the information involved in making the

application was not in accordance with an authority;

the Director may include in the certificate:

(c) if the application is not a relevant international application—

a direction that the application should lapse; or

(d) if the application is a relevant international application—a

direction that the application should not be treated as an

international application.

(4) Where the Director issues a certificate, the Director must give a

copy of it to the Commissioner who must give a copy to the

applicant.

ComLaw Authoritative Act C2014C00301

Special provisions relating to associated technology Chapter 15

Section 148

Patents Act 1990 111

148 Lapsing etc. of applications

(1) Where:

(a) the Commissioner receives a copy of a certificate under

subsection 147(2) in relation to an application; and

(b) the certificate includes a direction under subsection 147(3);

then, upon receipt by the Commissioner of that copy:

(c) if the application is not a relevant international application—

the application lapses; or

(d) if the application is a relevant international application—the

application must cease to be treated as an international

application.

(2) Where an application has lapsed under this section, the

Commissioner must publish a notice to that effect in the Official

Journal.

149 Revocation of direction

Where under section 148 an application has lapsed, or has ceased

to be treated as an international application, because of a direction

by the Director under section 147, the applicant may apply in

writing to the Director for the revocation of the direction and the

Director may revoke the direction.

150 Restoration of lapsed application

(1) Where an application has lapsed under section 148, the applicant

may, in writing, ask the Commissioner to restore it.

(2) On receiving a request, the Commissioner must restore the

application if satisfied, on the balance of probabilities, that:

(a) the relevant direction of the Director is no longer in force;

and

(b) there is no other reason not to do so.

(3) Where the Commissioner restores an application, the

Commissioner must publish a notice to that effect in the Official

Journal.

ComLaw Authoritative Act C2014C00301

Chapter 15 Special provisions relating to associated technology

Section 151

112 Patents Act 1990

(4) Where an application is restored under this section, such provisions

as are prescribed have effect for the protection or compensation of

persons who exploited (or took definite steps by contract or

otherwise to exploit) the relevant invention after the lapse of the

application and before the day on which its restoration was notified

in the Official Journal.

(5) Proceedings cannot be started under section 57 in respect of

anything done during the period from and including the day on

which the application lapsed to and including the day on which its

restoration was notified in the Official Journal.

151 Reinstatement of application as an international application

(1) Where a relevant international application has ceased to be treated

as an international application under section 148, the applicant may

ask the Commissioner in writing to reinstate it.

(2) On receiving a request, the Commissioner must reinstate the

application as an international application if satisfied, on the

balance of probabilities, that:

(a) the relevant direction of the Director is no longer in force;

and

(b) there is no other reason not to do so.

(3) Where the Commissioner reinstates an application as an

international application, the application must be treated as an

international application.

(4) Where:

(a) the relevant international application specifies Australia as a

designated State; and

(b) the Commissioner cannot reinstate the application merely

because, under the PCT, it is to be considered as having been

withdrawn; and

(c) the applicant files, within the prescribed period, a written

request signed by the applicant that the application be treated

as an application under this Act for a standard patent; and

ComLaw Authoritative Act C2014C00301

Special provisions relating to associated technology Chapter 15

Section 152

Patents Act 1990 113

(d) the applicant files any prescribed documents and pays the

prescribed fee;

then, except as otherwise prescribed:

(e) the application must be treated as requested; and

(f) the description, claims and drawings in the application must

be treated as a complete specification filed in respect of the

application; and

(g) the application and complete specification must be treated as

having been filed on the date on which the relevant

international application was filed.

152 Notice of prohibitions or restrictions on publication

(1) Where the Director issues a certificate under section 147 in relation

to an application, the Director may give written notice to the

Commissioner of any prohibitions or restrictions on the publication

or communication of the information in the specification, or in a

relevant abstract, that the Director considers appropriate.

(2) On receiving a notice, the Commissioner must take such steps as

are necessary or expedient to give effect to it.

(3) Without limiting the generality of subsection (2), the

Commissioner may, by written order, prohibit or restrict the

publication or communication of information about the

subject-matter of the application, whether generally or in relation

to a particular person or class of persons.

(4) A person must not, except in accordance with the written consent

of the Commissioner, publish or communicate information in

contravention of an order.

Penalty: Imprisonment for 2 years.

153 Effect of order

(1) Where an order is in force in relation to an application for a

standard patent, the application may proceed up to the acceptance

of the patent request and complete specification, but the complete

specification must not be made open to public inspection, the

ComLaw Authoritative Act C2014C00301

Chapter 15 Special provisions relating to associated technology

Section 153

114 Patents Act 1990

acceptance must not be notified in the Official Journal and a patent

must not be granted on the application.

(2) While an order is in force in relation to an application for an

innovation patent, the application may proceed up to the

acceptance of the patent request and complete specification but a

patent must not be granted on the application.

(3) Where an order in relation to an application for a standard patent

has been revoked after the acceptance of the patent request and

complete specification, the acceptance must be notified in the

Official Journal within the prescribed period.

(4) Nothing in this Act prevents disclosing information about an

invention to the Director for the purpose of obtaining advice on

whether an order should be made, amended or revoked.

ComLaw Authoritative Act C2014C00301

Jurisdiction and powers of courts Chapter 16

Section 154

Patents Act 1990 115

Chapter 16—Jurisdiction and powers of

courts

154 Jurisdiction of Federal Court

(1) The Federal Court has jurisdiction with respect to matters arising

under this Act.

(2) The jurisdiction of the Federal Court to hear and determine appeals

against decisions or directions of the Commissioner is exclusive of

the jurisdiction of any other court except the jurisdiction of the

High Court under section 75 of the Constitution.

(3) A prosecution for an offence against this Act must not be started in

the Federal Court.

155 Jurisdiction of other prescribed courts

(1) Each prescribed court (other than the Federal Court) has

jurisdiction with respect to matters arising under this Act in respect

of which proceedings may, under this Act, be started in a

prescribed court.

(2) The jurisdiction conferred by subsection (1) on the Supreme Court

of a Territory is conferred:

(a) in the case of proceedings for the infringement of a patent or

proceedings under subsection 125(1) or section 128, or a

matter arising under this Act that may be heard and

determined in the course of such proceedings—to the extent

that the Constitution permits; and

(b) in any other case—only in relation to proceedings instituted

by a natural person who is resident in the Territory, or a

corporation that has its principal place of business in the

Territory, at the time the proceedings are started.

ComLaw Authoritative Act C2014C00301

Chapter 16 Jurisdiction and powers of courts

Section 156

116 Patents Act 1990

156 Exercise of jurisdiction

The jurisdiction of a prescribed court under section 154 or 155 is to

be exercised by a single judge.

157 Transfer of proceedings

(1) A prescribed court in which proceedings under this Act have been

started may, on the application of a party made at any stage in the

proceedings, by order, transfer the proceedings to another

prescribed court having jurisdiction to hear and determine the

proceedings.

(2) Where a court transfers proceedings to another court:

(a) all documents of record relevant to those proceedings filed in

the transferring court shall be sent to the other court by the

Registrar or other appropriate officer of the transferring

court; and

(b) the other court shall proceed as if the proceedings had been

started in the other court and as if the same steps in the

proceedings had been taken there as had been taken in the

transferring court.

158 Appeals

(1) An appeal lies to the Federal Court against a judgment or order of:

(a) another prescribed court exercising jurisdiction under this

Act; or

(b) any other court in proceedings under subsection 120(1) or

section 128.

(2) Except with the leave of the Federal Court, an appeal does not lie

to the Full Court of the Federal Court against a judgment or order

of a single judge of the Federal Court in the exercise of its

jurisdiction to hear and determine appeals from decisions or

directions of the Commissioner.

(3) With the special leave of the High Court, an appeal lies to the High

Court against a judgment or order referred to in subsection (1).

ComLaw Authoritative Act C2014C00301

Jurisdiction and powers of courts Chapter 16

Section 159

Patents Act 1990 117

(4) Except as otherwise provided by this section, an appeal does not lie

against a judgment or order referred to in subsection (1).

159 Commissioner may appear in appeals

The Commissioner may appear and be heard at the hearing of an

appeal to the Federal Court against a decision or direction of the

Commissioner even if the Commissioner is not a party to the

appeal.

160 Powers of Federal Court

On hearing an appeal against a decision or direction of the

Commissioner, the Federal Court may do any one or more of the

following:

(a) admit further evidence orally, or on affidavit or otherwise;

(b) permit the examination and cross-examination of witnesses,

including witnesses who gave evidence before the

Commissioner;

(c) order an issue of fact to be tried as it directs;

(d) affirm, reverse or vary the Commissioner’s decision or

direction;

(e) give any judgment, or make any order, that, in all the

circumstances, it thinks fit;

(f) order a party to pay costs to another party.

ComLaw Authoritative Act C2014C00301

Chapter 17 The Crown

Part 1 Introductory

Section 161

118 Patents Act 1990

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.

ComLaw Authoritative Act C2014C00301

The Crown Chapter 17

Exploitation by the Crown Part 2

Section 163

Patents Act 1990 119

Part 2—Exploitation by the Crown

163 Exploitation of inventions by Crown

(1) Where, at any time after a patent application has been made, the

invention concerned is exploited by the Commonwealth or a State

(or by a person authorised in writing by the Commonwealth or a

State) for the services of the Commonwealth or the State, the

exploitation is not an infringement:

(a) if the application is pending—of the nominated person’s

rights in the invention; or

(b) if a patent has been granted for the invention—of the patent.

(2) A person may be authorised for the purposes of subsection (1):

(a) before or after any act for which the authorisation is given

has been done; and

(b) before or after a patent has been granted for the invention;

and

(c) even if the person is directly or indirectly authorised by the

nominated person or patentee to exploit the invention.

(3) Subject to section 168, an invention is taken for the purposes of

this Part to be exploited for services of the Commonwealth or of a

State if the exploitation of the invention is necessary for the proper

provision of those services within Australia.

164 Nominated person or patentee to be informed of exploitation

As soon as practicable after an invention has been exploited under

subsection 163(1), the relevant authority must inform the applicant

and the nominated person, or the patentee, of the exploitation and

give him or her any information about the exploitation that he or

she from time to time reasonably requires, unless it appears to the

relevant authority that it would be contrary to the public interest to

do so.

ComLaw Authoritative Act C2014C00301

Chapter 17 The Crown

Part 2 Exploitation by the Crown

Section 165

120 Patents Act 1990

165 Remuneration and terms for exploitation

(2) The terms for the exploitation of the invention (including terms

concerning the remuneration payable to the nominated person or

the patentee) are such terms as are agreed, or determined by a

method agreed, between the relevant authority and the nominated

person or the patentee or, in the absence of agreement, as are

determined by a prescribed court on the application of either party.

(3) For the purposes of subsection (2), the terms, or the method, may

be agreed before, during or after the exploitation.

(4) When fixing the terms, the court may take into account any

compensation that a person interested in the invention or the patent

has received, directly or indirectly, for the invention from the

relevant authority.

165A Exploitation of invention to cease under court order

(1) A prescribed court may, on the application of the nominated person

or the patentee, declare that the exploitation of the invention by the

Commonwealth or the State is not, or is no longer, necessary for

the proper provision of services of the Commonwealth or of the

State if the court is satisfied that, in all the circumstances of the

case, it is fair and reasonable to make the declaration.

(2) The court may further order that the Commonwealth or the State is

to cease to exploit the invention:

(a) on and from the day specified in the order; and

(b) subject to any conditions specified in the order.

In making the order, the court is to ensure that the legitimate

interests of the Commonwealth or of the State are not adversely

affected by the order.

166 Previous agreements inoperative

An agreement or licence (whether made or given before or after the

commencement of this Act) fixing the terms on which a person

other than the Commonwealth or a State may exploit an invention

is inoperative with respect to the exploitation, after the

ComLaw Authoritative Act C2014C00301

The Crown Chapter 17

Exploitation by the Crown Part 2

Section 167

Patents Act 1990 121

commencement of this Act, of the invention under

subsection 163(1), unless the agreement or licence has been

approved:

(a) if the relevant authority is the Commonwealth—by the

Minister; or

(b) if the relevant authority is a State—by the Attorney-General

of the State.

167 Sale of products

(1) The right to exploit an invention under subsection 163(1) includes

the right to sell products made in exercise of that right.

(2) Where under subsection 163(1) the sale of products is not an

infringement of:

(a) a patent; or

(b) a nominated person’s rights in the products;

the buyer, and any person claiming through the buyer, is entitled to

deal with the products as if the relevant authority were the patentee

or the nominated person.

168 Supply of products by Commonwealth to foreign countries

Where the Commonwealth has made an agreement with a foreign

country to supply to that country products required for the defence

of the country:

(a) the use of a product or process by the Commonwealth, or by

a person authorised in writing by the Commonwealth, for the

supply of that product is to be taken, for the purposes of this

Chapter, to be use of the product or process by the

Commonwealth for the services of the Commonwealth; and

(b) the Commonwealth or the authorised person may sell those

products to the country under the agreement; and

(c) the Commonwealth or the authorised person may sell to any

person any of the products that are not required for the

purpose for which they were made.

ComLaw Authoritative Act C2014C00301

Chapter 17 The Crown

Part 2 Exploitation by the Crown

Section 169

122 Patents Act 1990

169 Declarations that inventions have been exploited

(1) Subject to subsection (4), a patentee who considers that the

patented invention has been exploited under subsection 163(1) may

apply to a prescribed court for a declaration to that effect.

(2) In proceedings under subsection (1):

(a) the alleged relevant authority is the defendant; and

(b) the alleged relevant authority may apply by way of

counter-claim in the proceedings, for the revocation of the

patent.

(3) The provisions of this Act relating to the revocation of patents

apply, with the necessary changes, to a counter-claim.

(4) An application under subsection (1) in respect of an innovation

patent cannot be made unless the patent has been certified.

170 Sale of forfeited articles

Nothing in this Chapter affects the right of the Commonwealth or a

State, or of a person deriving title directly or indirectly from the

Commonwealth or a State, to sell or use an article forfeited under a

law of the Commonwealth or the State.

ComLaw Authoritative Act C2014C00301

The Crown Chapter 17

Acquisitions by and assignments to the Crown Part 3

Section 171

Patents Act 1990 123

Part 3—Acquisitions by and assignments to the

Crown

171 Acquisition of inventions or patents by Commonwealth

(1) The Governor-General may direct that a patent, or an invention

that is the subject of a patent application, be acquired by the

Commonwealth.

(2) When a direction is given, all rights in respect of the patent or the

invention are, by force of this subsection, transferred to and vested

in the Commonwealth.

(3) Notice of the acquisition must be:

(a) given to the applicant and the nominated person, or the

patentee; and

(b) published in the Official Journal and the Gazette unless, in

the case of the acquisition of an invention that is the subject

of an application for a patent, a prohibition order, or an order

under section 152, is in force in respect of the application.

(4) The Commonwealth must pay a compensable person such

compensation as is agreed between the Commonwealth and the

person or, in the absence of agreement, as is determined by a

prescribed court on the application of either of them.

172 Assignment of invention to Commonwealth

(1) An inventor, or an inventor’s successor in title, may assign the

invention, and any patent granted or to be granted for the

invention, to the Commonwealth.

(2) The assignment and all covenants and agreements in the

assignment are valid and effectual, even if valuable consideration

has not been given for the assignment, and may be enforced by

proceedings in the name of the Minister.

ComLaw Authoritative Act C2014C00301

Chapter 17 The Crown

Part 4 Prohibition orders

Section 173

124 Patents Act 1990

Part 4—Prohibition orders

173 Prohibition of publication of information about inventions

(1) Subject to any directions of the Minister, the Commissioner may, if

it appears to the Commissioner to be necessary or expedient to do

so in the interests of the defence of the Commonwealth, by written

order:

(a) prohibit or restrict the publication of information about the

subject-matter of an application for a patent (including an

international application); or

(b) prohibit or restrict access to a micro-organism deposited for

the purposes of section 41 with a prescribed depositary

institution situated in Australia.

(2) A person must not contravene a prohibition order except in

accordance with the written consent of the Commissioner.

Penalty: Imprisonment for 2 years.

(3) A reference in subsection (1) to giving access to a micro-organism

includes a reference to giving a sample of the micro-organism.

174 Effect of prohibition orders

(1) While a prohibition order is in force in relation to an application

for a standard patent, the application may proceed up to the

acceptance of the patent request and complete specification, but the

complete specification must not be made open to public inspection,

the acceptance must not be notified in the Official Journal and a

patent must not be granted on the application.

(2) Where a prohibition order in relation to an application for a

standard patent is revoked after the acceptance of the patent request

and complete specification, the acceptance must be notified in the

Official Journal within the prescribed period.

ComLaw Authoritative Act C2014C00301

The Crown Chapter 17

Prohibition orders Part 4

Section 175

Patents Act 1990 125

(3) While a prohibition order is in force in relation to an application

for an innovation patent, the application may proceed up to the

acceptance of the patent request and complete specification, but a

patent must not be granted on the application.

175 Disclosure of information to Commonwealth authority

Nothing in this Act prevents disclosing information about an

invention, or giving access to, or a sample of, a micro-organism to

a department or authority of the Commonwealth for the purpose of

obtaining advice on whether a prohibition order should be made,

amended or revoked.

176 International applications treated as applications under this Act

Where:

(a) an international application specifies Australia as a

designated State; and

(b) as a result of a prohibition order or of anything done in

reliance on section 175, the application is, under the PCT, to

be considered as having been withdrawn; and

(c) the applicant files, within the prescribed period, a written

request signed by the applicant that the application be treated

as an application under this Act for a standard patent; and

(d) the applicant files any prescribed documents and pays the

prescribed fee;

then, except as otherwise prescribed:

(e) the application must be treated as requested; and

(f) the description, claims and drawings in the application must

be treated as a complete specification filed in respect of the

application; and

(g) the application and specification must be treated as having

been filed on the date on which the international application

was filed.

ComLaw Authoritative Act C2014C00301

Chapter 18 Miscellaneous offences

Section 177

126 Patents Act 1990

Chapter 18—Miscellaneous offences

177 False representations about the Patent Office

(1) A person must not use, in connection with his or her business,

words that would reasonably lead to the belief that his or her office

is, or is officially connected with, the Patent Office.

Penalty: 30 penalty units.

(2) Without limiting subsection (1), a person who:

(a) places, or allows to be placed, on the building in which his or

her office is situated; or

(b) uses when advertising his or her office or business; or

(c) places on a document, as a description of his or her office or

business;

the words ―Patent Office‖ or ―Office for obtaining patents‖, or

words of similar import, whether alone or together with other

words, 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: 60 penalty units.

(1A) A person must not falsely represent that he or she, or another

person, is the patentee of an innovation patent that has been

certified.

Penalty: 60 penalty units.

(2) A person must not falsely represent that an article sold by him or

her is patented in Australia, or is the subject of an application for a

patent in Australia.

Penalty: 60 penalty units.

ComLaw Authoritative Act C2014C00301

Miscellaneous offences Chapter 18

Section 182

Patents Act 1990 127

(3) Without limiting subsection (2):

(a) a person is to be taken to represent that an article is patented

in Australia if the word ―patent‖ or ―patented‖, the words

―provisional patent‖, or any other word or words implying

that a patent for the article has been obtained in Australia, are

stamped, engraved or impressed on, or otherwise applied to,

the article; and

(b) a person is to be taken to represent that an article is the

subject of an application for a patent in Australia if the words

―patent applied for‖ or ―patent pending‖, or any other word

or words implying that an application for a patent for the

article has been made in Australia, are stamped, engraved or

impressed on, or otherwise applied to, the article.

(4) A prosecution must not be started for an offence against

subsection (1) or (2) without the consent of the Minister, or a

person authorised by the Minister.

182 Officers not to traffic in inventions

(1) The Commissioner, a Deputy Commissioner or an employee must

not buy, sell, acquire or traffic in:

(a) an invention or patent, whether granted in Australia or

anywhere else; or

(b) a right to, or licence under, a patent, whether granted in

Australia or anywhere else.

Penalty: 60 penalty units.

(2) A purchase, sale, acquisition, assignment or transfer made or

entered into in contravention of this section is void.

(3) This section does not apply to the inventor or to an acquisition by

bequest or devolution by law.

ComLaw Authoritative Act C2014C00301

Chapter 18 Miscellaneous offences

Section 183

128 Patents Act 1990

183 Unauthorised disclosure of information by employees etc.

(1) The Commissioner, each Deputy Commissioner and each

employee must not disclose information about a matter that has

been or is being dealt with under this Act or the 1952 Act unless

required or authorised to do so by this Act, a written direction of

the Commissioner or an order of a court.

(2) The Designated Manager may disclose to the Australian Securities

and Investments Commission information (including personal

information within the meaning of the Privacy Act 1988) that is:

(a) relevant to the functions of the Commission; and

(b) obtained by the Designated Manager as a result of the

performance of functions and duties, or the exercise of

powers, in relation to incorporated patent attorneys.

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:

(a) prepare, or help to prepare:

(i) a specification; or

(ii) any other document relating to a specification (other

than a document which is in an approved form);

unless the Commissioner, Deputy Commissioner or the

employee is the inventor in respect of the specification; or

(b) search the records of the Patent Office otherwise than in his

or her official capacity.

Penalty: 10 penalty units.

ComLaw Authoritative Act C2014C00301

The Register and official documents Chapter 19

Section 186

Patents Act 1990 129

Chapter 19—The Register and official

documents

186 Register of Patents

(1) A Register of Patents is to be kept at the Patent Office. The

Register is to contain 2 parts as follows:

(a) a part dealing with standard patents; and

(b) a part dealing with innovation patents.

(2) The Register may be kept wholly or partly by use of a computer.

(3) If the Register is kept wholly or partly by use of a computer:

(a) references in this Act to an entry in the Register are to be

read as including references to a record of particulars kept by

use of the computer and comprising the Register or part of

the Register; and

(b) references in this Act to particulars being registered, or

entered in the Register, are to be read as including references

to the keeping of a record of those particulars as part of the

Register by use of the computer; and

(c) references in this Act to the rectification of the Register are to

be read as including references to the rectification of the

record of particulars kept by use of the computer and

comprising the Register or part of the Register.

187 Registration of particulars of patents etc.

(1) Particulars of standards patents in force, and other prescribed

particulars relating to standard patents (if any), must be registered

in that part of the Register dealing with standard patents.

(2) Particulars of innovation patents in force, and other prescribed

particulars relating to innovation patents (if any), must be

registered in that part of the Register dealing with innovation

patents.

ComLaw Authoritative Act C2014C00301

Chapter 19 The Register and official documents

Section 188

130 Patents Act 1990

188 Trusts not registrable

Notice of any kind of trust relating to a patent or licence is not

receivable by the Commissioner and must not be registered.

189 Power of patentee to deal with patent

(1) A patentee may, subject only to any rights appearing in the

Register to be vested in another person, deal with the patent as the

absolute owner of it and give good discharges for any

consideration for any such dealing.

(2) This section does not protect a person who deals with a patentee

otherwise than as a purchaser in good faith for value and without

notice of any fraud on the part of the patentee.

(2A) Despite subsection (1), the recording in the Register of a right that

is a PPSA security interest does not affect a dealing with a patent.

(3) Equities in relation to a patent may be enforced against the

patentee except to the prejudice of a purchaser in good faith for

value.

(4) Subsection (3) does not apply in relation to an equity that is a

PPSA security interest.

Note: The Personal Property Securities Act 2009 deals with the rights of

purchasers of personal property (including intellectual property such

as patents) that is subject to PPSA security interests. That Act also

provides for the priority and enforcement of PPSA security interests.

See the following provisions of that Act:

(a) Part 2.5 (taking personal property free of security interests);

(b) Part 2.6 (priority between security interests);

(c) Chapter 4 (enforcement of security interests).

190 Inspection of Register

(1) The Register must be available for inspection at the Patent Office

by any person during the hours that it is open for business.

(2) If a record of particulars is kept by use of a computer, subsection (1)

is to be taken to be complied with, to the extent that the Register

consists of those particulars, by giving members of the public access

ComLaw Authoritative Act C2014C00301

The Register and official documents Chapter 19

Section 191

Patents Act 1990 131

to a computer terminal which they can use to inspect the particulars,

either on a screen or in the form of a computer printout.

191 False entries in Register

A person must not:

(a) make a false entry in the Register; or

(b) cause a false entry to be made in the Register; or

(c) tender in evidence a document that falsely purports to be a

copy of or extract from an entry in the Register.

Penalty: Imprisonment for 2 years.

191A Commissioner’s power to rectify register

(1) The Commissioner may rectify the Register if the Commissioner is

satisfied, on the balance of probabilities, whether on application or

otherwise, of any of the following:

(a) the omission of an entry from the Register;

(b) an entry made in the Register without sufficient cause;

(c) an entry wrongly existing in the Register;

(d) an error or defect in an entry in the Register.

(2) The Commissioner must, on application, make a declaration as to a

person’s entitlement to a patent, or a share in a patent, if the

Commissioner is satisfied, on the balance of probabilities, that the

Register does not properly record a person’s entitlement to a

patent, or a share in a patent:

(a) because the patent, or a share in the patent, was granted to a

person who was not entitled to it; or

(b) because the patent, or a share in the patent, was not granted

to a person who was entitled to it; or

(c) for any other reason.

(3) If the Commissioner makes a declaration under subsection (2), the

Commissioner must rectify the Register accordingly.

ComLaw Authoritative Act C2014C00301

Chapter 19 The Register and official documents

Section 192

132 Patents Act 1990

(4) The Commissioner must not make a declaration, or rectify the

Register, under this section without first giving the following

persons a reasonable opportunity to be heard:

(a) the person whose entitlement is not properly recorded by the

Register;

(b) any person whose entitlement to the patent, or a share in the

patent, is recorded in the Register.

(5) The Commissioner must not make a declaration or rectify the

Register under this section while relevant proceedings in relation to

the patent are pending.

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

Commissioner:

(a) to make, or refuse to make, a declaration; or

(b) to rectify, or not rectify, the Register;

under this section.

192 Orders for rectification of Register

(1) A person aggrieved by:

(a) the omission of an entry from the Register; or

(b) an entry made in the Register without sufficient cause; or

(c) an entry wrongly existing in the Register; or

(d) an error or defect in an entry in the Register;

may apply to a prescribed court for an order to rectify the Register.

(2) On hearing an application, the court may:

(a) decide any question which it is necessary or expedient to

decide in connection with the rectification of the Register;

and

(b) make any order it thinks fit for the rectification of the

Register.

(3) The Commissioner:

(a) must be given notice of an application; and

(b) may appear and be heard in the proceedings; and

(c) must appear if directed to do so by the court.

ComLaw Authoritative Act C2014C00301

The Register and official documents Chapter 19

Section 193

Patents Act 1990 133

(4) An office copy of an order must be served on the Commissioner by

the Registrar or other appropriate officer of the court.

(5) On receiving an office copy of an order, the Commissioner must

rectify the Register accordingly.

193 Inspection of documents

All documents filed in connection with the registration of

prescribed particulars under section 187 must be available for

inspection at the Patent Office by any person during the hours

when it is open for business.

194 Information obtainable from Commissioner

The Commissioner may give any person information about:

(a) a patent; or

(b) an application for a patent that is open to public inspection;

or

(c) any prescribed document or matter.

195 Evidence—the Register

(1) The Register is prima facie evidence of any particulars registered

in it.

(2) If the Register is wholly or partly kept by use of a computer, a

document signed by the Commissioner reproducing in writing all

or any of the particulars comprising the Register, or that part of it,

is admissible in any proceedings as prima facie evidence of those

particulars.

(3) This section does not apply in relation to any particulars registered

in the Register in relation to a PPSA security interest.

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.

ComLaw Authoritative Act C2014C00301

Chapter 19 The Register and official documents

Section 196

134 Patents Act 1990

196 Evidence—unregistered particulars

(1) A document in respect of which particulars have not been entered

in the Register is not admissible in any proceedings in proof of the

title to a patent or to an interest in a patent unless:

(a) the court or tribunal before which the proceedings are

brought otherwise directs; or

(b) the proceedings are:

(i) for an order under section 192; or

(ii) to enforce equities in relation to a patent or licence.

(2) However, subsection (1) does not restrict the admissibility in any

proceedings of a document in relation to a PPSA security interest.

Note: Certain particulars relating to registrations in respect of PPSA security

interests under the Personal Property Securities Act 2009 are

admissible in evidence: see section 174 of that Act.

197 Evidence—certificate and copies of documents

(1) A signed certificate to the effect that:

(a) anything required or permitted by this Act or the 1952 Act to

be done or not to be done had or had not been done on a date

specified in the certificate; or

(b) a document in the Patent Office or its library was available

for public inspection on a date specified in the certificate;

is prima facie evidence of the matters in the certificate.

(2) A signed copy of or signed extract from the Register is admissible

in any proceedings as if it were the original.

(3) A signed copy of or signed extract from a document in the Patent

Office or its library is admissible in any proceedings as if it were

the original.

(4) In this section:

signed means signed by the Commissioner.

ComLaw Authoritative Act C2014C00301

The Register and official documents Chapter 19

Section 197AA

Patents Act 1990 135

197AA Evidence of matters arising under PCT

A certificate signed by the Commissioner in relation to an

international application, certifying that:

(a) any matter or thing required or permitted by or under this Act

or the PCT to be made or done has been made or done; or

(b) any matter or thing required by or under this Act or the PCT

not to be made or done has not been made or done;

is prima facie evidence of the matters contained in the certificate.

ComLaw Authoritative Act C2014C00301

Chapter 20 Patent Attorneys

Part 1 Registration, privileges and professional conduct

Section 198

136 Patents Act 1990

Chapter 20—Patent Attorneys

Part 1—Registration, privileges and professional

conduct

198 Registration of patent attorneys

(1) A Register of Patent Attorneys is to be kept by the Designated

Manager.

Note: Designated Manager is defined by section 200A.

(2) The Register of Patent Attorneys may be kept wholly or partly by

use of a computer.

(3) If the Register of Patent Attorneys is kept wholly or partly by use

of a computer, references in this Act to an entry in the Register of

Patent Attorneys are to be read as including references to a record

of particulars kept by use of the computer and comprising the

Register of Patent Attorneys or part of the Register of Patent

Attorneys.

Registration of individuals

(4) The Designated Manager must register as a patent attorney an

individual who:

(a) is ordinarily resident in Australia; and

(b) holds such qualifications as are specified in, or ascertained in

accordance with, the regulations; and

(c) has been employed as prescribed for not less than the

prescribed period; and

(d) is of good fame, integrity and character; and

(e) has not been convicted of a prescribed offence during the

previous 5 years; and

(f) is not under sentence of imprisonment for a prescribed

offence; and

(g) meets any other requirements prescribed by the regulations.

ComLaw Authoritative Act C2014C00301

Patent Attorneys Chapter 20

Registration, privileges and professional conduct Part 1

Section 198

Patents Act 1990 137

The registration is to consist of entering the individual’s name in

the Register of Patent Attorneys.

(5) A qualification specified in, or ascertained in accordance with,

regulations made for the purposes of paragraph (4)(b) may consist

of passing an examination conducted by the Professional Standards

Board. This subsection does not limit paragraph (4)(b).

(6) Paragraphs (4)(e) and (f) do not limit paragraph (4)(d).

(7) For the purposes of this section, an individual is taken to be

ordinarily resident in Australia if:

(a) the individual has his or her home in Australia; or

(b) Australia is the country of his or her permanent abode even

though he or she is temporarily absent from Australia;

but the individual 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.

Registration of companies

(9) The Designated Manager must register as a patent attorney a

company that:

(a) has at least one patent attorney director; and

(b) has given the Designated Manager written notice in the

approved form of its intention to act as a patent attorney; and

(c) meets the requirements (if any) prescribed by the regulations.

The registration is to consist of entering the company’s name in the

Register of Patent Attorneys.

(10) A company registered as a patent attorney is an incorporated

patent attorney.

(11) A patent attorney director of a company is an individual who is

both:

ComLaw Authoritative Act C2014C00301

Chapter 20 Patent Attorneys

Part 1 Registration, privileges and professional conduct

Section 199

138 Patents Act 1990

(a) a registered patent attorney; and

(b) a validly appointed director of the company.

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

(1) A registered patent attorney:

(a) is entitled to prepare all documents, transact all business and

conduct all proceedings for the purposes of this Act; and

(b) has such other rights and privileges as are prescribed.

(2) A communication made for the dominant purpose of a registered

patent attorney providing intellectual property advice to a client is

privileged in the same way, and to the same extent, as a

communication made for the dominant purpose of a legal

practitioner providing legal advice to a client.

(2A) A record or document made for the dominant purpose of a

registered patent attorney providing intellectual property advice to

a client is privileged in the same way, and to the same extent, as a

record or document made for the dominant purpose of a legal

practitioner providing legal advice to a client.

(2B) A reference in subsection (2) or (2A) to a registered patent attorney

includes a reference to an individual authorised to do patents work

under a law of another country or region, to the extent to which the

individual is authorised to provide intellectual property advice of

the kind provided.

(2C) Intellectual property advice means advice in relation to:

(a) patents; or

(b) trade marks; or

(c) designs; or

(d) plant breeder’s rights; or

(e) any related matters.

ComLaw Authoritative Act C2014C00301

Patent Attorneys Chapter 20

Registration, privileges and professional conduct Part 1

Section 200A

Patents Act 1990 139

(3) Nothing in this section authorises a registered patent attorney to

prepare a document to be issued from or filed in a court or to

transact business, or conduct proceedings, in a court.

200A Designated Manager

For the purposes of this Act, a person is the Designated Manager if

the person occupies, or is acting in, a position that:

(a) is usually occupied by an SES employee; and

(b) has been declared by the Secretary of the Department, in

writing, to be the position of Designated Manager.

ComLaw Authoritative Act C2014C00301

Chapter 20 Patent Attorneys

Part 2 Offences

Section 201

140 Patents Act 1990

Part 2—Offences

201 Acting or holding out without being registered

Individuals

(1) An individual commits an offence if:

(a) the individual carries on business, practises or acts as a patent

attorney; and

(b) the individual is not a registered patent attorney or a legal

practitioner.

Penalty: 30 penalty units.

(2) An individual commits an offence if:

(a) the individual describes himself or herself, or holds himself

or herself out, or permits himself or herself to be described or

held out, as a patent attorney or agent for obtaining patents;

and

(b) the individual is not a registered patent attorney.

Penalty: 30 penalty units.

Partnerships

(3) A member of a partnership commits an offence if:

(a) the member carries on business, practises or acts as a patent

attorney; and

(b) none of the members of the partnership is a registered patent

attorney or a legal practitioner.

Penalty: 30 penalty units.

(4) A member of a partnership commits an offence if:

(a) the member describes the partnership, or holds the

partnership out, or permits the partnership to be described or

held out, as a patent attorney, or agent for obtaining patents;

and

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Patent Attorneys Chapter 20

Offences Part 2

Section 201

Patents Act 1990 141

(b) none of the members of the partnership is a registered patent

attorney.

Penalty: 30 penalty units.

Companies

(5) A company commits an offence if:

(a) the company carries on business, practises or acts as a patent

attorney; and

(b) the company is not a registered patent attorney or

incorporated legal practice.

Penalty: 150 penalty units.

(6) A company commits an offence if:

(a) the company describes itself, or holds itself out, or permits

itself to be described or held out, as a patent attorney, or

agent for obtaining patents; and

(b) the company is not a registered patent attorney.

Penalty: 150 penalty units.

Exception—legal representatives

(7) Subsections (1), (3) and (5) do not apply in relation to the business

of a registered patent attorney who is deceased if the business:

(a) is carried on, within 3 years of the death of the patent

attorney, or such further time allowed by a prescribed court,

by the legal representative of the deceased registered patent

attorney; and

(b) is managed by a registered patent attorney on behalf of the

legal representative.

Note: The defendant bears an evidential burden in relation to the matters in

subsection (7). See subsection 13.3(3) of the Criminal Code.

Exception—employees

(8) Subsections (1) and (2) do not apply in relation to anything done

by a person, as an employee, for:

ComLaw Authoritative Act C2014C00301

Chapter 20 Patent Attorneys

Part 2 Offences

Section 201A

142 Patents Act 1990

(a) his or her employer; or

(b) if the person’s employer is a member of a related company

group—another member of the group.

Note: The defendant bears an evidential burden in relation to the matters in

subsection (8). See subsection 13.3(3) of the Criminal Code.

Exception—related company groups

(9) Subsections (5) and (6) do not apply in relation to anything done

by a member of a related company group for another member of

the group.

Note: The defendant bears an evidential burden in relation to the matter in

subsection (9). See subsection 13.3(3) of the Criminal Code.

Whether a company is related to another company

(10) For the purposes of this section, the question of whether a company

is related to another company is to be determined in the same

manner as that question is determined under the Corporations Act

2001.

201A When a person carries on business, practises or acts as a

patent attorney

(1) For the purposes of section 201, a person is taken to carry on

business, practise or act as a patent attorney if, and only if, the

person does, or undertakes to do, patents work in Australia.

(2) Patents work means one or more of the following done, on behalf

of someone else, for gain:

(a) applying for or obtaining patents in Australia or anywhere

else;

(b) preparing specifications or other documents for the purposes

of this Act or the patent law of another country;

(c) giving advice (other than advice of a scientific or technical

nature) about the validity, or infringement, of patents.

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Patent Attorneys Chapter 20

Offences Part 2

Section 201B

Patents Act 1990 143

201B Incorporated patent attorney must have a patent attorney

director

Offence—failing to notify lack of patent attorney director

(1) An incorporated patent attorney commits an offence if the

incorporated patent attorney:

(a) does not have a patent attorney director; and

(b) does not notify the Designated Manager of that within 7

days.

Penalty: 150 penalty units.

Offence—acting after 7 days without patent attorney director

(2) An incorporated patent attorney commits an offence if the

incorporated patent attorney:

(a) does not have a patent attorney director; and

(b) has not had a patent attorney director during the previous 7

days; and

(c) carries on business, practises or acts as a patent attorney.

Penalty: 150 penalty units.

Designated Manager may appoint a registered patent attorney

(3) If an incorporated patent attorney does not have a patent attorney

director, the Designated Manager may, by writing, appoint another

registered patent attorney to take charge of the patents work of the

incorporated patent attorney.

(4) The appointment may be made only with the consent of the other

registered patent attorney.

Effect of appointment

(5) A registered patent attorney holding an appointment under

subsection (3) (the appointed attorney) is taken, for the purposes

of this Act, to be a patent attorney director of the incorporated

patent attorney.

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Chapter 20 Patent Attorneys

Part 2 Offences

Section 202

144 Patents Act 1990

(6) However, for the purposes of the Corporations Act 2001:

(a) the appointed attorney is not a director of the incorporated

patent attorney only because:

(i) the appointed attorney takes charge of the patents work

of the incorporated patent attorney; and

(ii) the appointed attorney is taken, for the purposes of this

Act, to be a patent attorney director of the incorporated

patent attorney; and

(b) the Designated Manager is not a director of the incorporated

patent attorney only because the Designated Manager

appointed the appointed attorney.

Designated Manager may remove incorporated patent attorney

from Register

(7) If an incorporated patent attorney does not have a patent attorney

director, the Designated Manager may remove the incorporated

patent attorney from the Register.

202 Documents prepared by legal practitioners

A legal practitioner must not prepare a specification, or a document

relating to an amendment of a specification, unless:

(a) the practitioner is acting under the instructions of a registered

patent attorney; or

(b) the amendment has been directed by an order under

section 105.

Penalty: 30 penalty units.

202A Documents prepared by a member of a partnership

A person who is:

(a) a member of a partnership; and

(b) not a registered patent attorney;

must not prepare a specification, or a document relating to an

amendment of a specification, unless:

(c) the person is acting under the instructions or supervision of a

registered patent attorney; or

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Patent Attorneys Chapter 20

Offences Part 2

Section 202B

Patents Act 1990 145

(d) the amendment has been directed by an order under

section 105.

Penalty: 30 penalty units.

202B Documents prepared by incorporated patent attorneys and

incorporated legal practices

An incorporated patent attorney or an incorporated legal practice

commits an offence if:

(a) an employee or member of the incorporated patent attorney

or incorporated legal practice prepares a specification, or a

document relating to an amendment of a specification; and

(b) the employee or member is not a registered patent attorney;

and

(c) the specification or document is not prepared:

(i) under the instructions or supervision of an individual

who is a registered patent attorney; or

(ii) as directed by an order under section 105.

Penalty: 150 penalty units.

203 Attendance at patent attorney’s office

A registered patent attorney commits an offence if:

(a) the registered patent attorney practises, acts, or holds himself,

herself or itself out as practising or acting, as a patent

attorney, at an office or place of business where

specifications or other documents are prepared for the

purposes of this Act; and

(b) there is not an individual who is a registered patent attorney:

(i) in regular attendance at that office or place; and

(ii) in continuous charge of the patents work done at that

office or place.

Penalty: 30 penalty units.

ComLaw Authoritative Act C2014C00301

Chapter 20 Patent Attorneys

Part 2 Offences

Section 204

146 Patents Act 1990

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.

ComLaw Authoritative Act C2014C00301

Administration Chapter 21

Section 205

Patents Act 1990 147

Chapter 21—Administration

205 Patent Office and sub-offices

(1) For the purposes of this Act, there is to be an office called the

Patent Office.

(2) The Commissioner may establish one or more sub-offices of the

Patent Office as the Commissioner considers appropriate.

(3) The Commissioner may abolish any such sub-offices.

206 Patent Office seal

There is to be a seal of the Patent Office and impressions of the

seal must be judicially noticed.

207 Commissioner of Patents

(1) There is to be a Commissioner of Patents.

(2) The Commissioner has such powers and functions as are conferred

on him or her under this Act or any other Act.

208 Deputy Commissioner of Patents

(1) There is to be at least one Deputy Commissioner of Patents.

(2) Subject to any direction by the Commissioner, a Deputy

Commissioner has all the powers and functions of the

Commissioner under this Act or any other Act, except the

Commissioner’s powers of delegation under section 209.

(3) A power or function of the Commissioner under this Act or any

other Act, when exercised by a Deputy Commissioner, is to be

taken, for the purposes of this Act or any other Act, to have been

exercised by the Commissioner.

ComLaw Authoritative Act C2014C00301

Chapter 21 Administration

Section 209

148 Patents Act 1990

(4) The exercise of a power or function of the Commissioner under

this Act or any other Act by a Deputy Commissioner does not

prevent the exercise of the power or function by the Commissioner.

(5) Where, under this Act or any other Act, the exercise of a power or

function by the Commissioner, or the operation of a provision of

this Act or any other Act, is dependent on the opinion, belief or

state of mind of the Commissioner in relation to a matter, that

power or function may be exercised by a Deputy Commissioner,

and that provision may operate, as the case may be, on the opinion,

belief or state of mind of the Deputy Commissioner in relation to

that matter.

209 Delegation of Commissioner’s powers and functions

(1) The Commissioner may, by instrument, signed by him or her,

delegate all or any of the Commissioner’s powers or functions

under this Act or any other Act to a prescribed employee, or a

prescribed class of employees.

(2) A delegate must, if so required by the instrument of delegation,

exercise or perform a delegated power or function under the

direction or supervision of the Commissioner or an employee

specified in the instrument.

210 Commissioner’s powers

Commissioner’s powers

(1) The Commissioner may, for the purposes of this Act:

(a) summon witnesses; and

(b) receive written or oral evidence on oath or affirmation; and

(c) require the production of documents or articles; and

(d) award costs against a party to proceedings before the

Commissioner.

Exercise of power to summon witnesses

(2) The Commissioner must not summon a witness under

paragraph (1)(a) unless:

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Administration Chapter 21

Section 210

Patents Act 1990 149

(a) the Commissioner is satisfied, on the balance of probabilities,

of the following matters:

(i) the witness has a substantial interest in the proceedings

before the Commissioner;

(ii) the witness is likely to provide oral evidence of

substantial relevance to a matter before the

Commissioner;

(iii) receiving oral evidence from the witness is necessary or

desirable in all the circumstances; and

(b) the Commissioner notifies the witness of the actions the

Commissioner may take under section 210A if the witness

fails or refuses to comply with the summons.

(3) The Commissioner may summon a witness under paragraph (1)(a)

whether the witness is in or out of the patent area.

Exercise of power to require production of document or article

(4) The Commissioner must not require a person to produce a

document or article under paragraph (1)(c) unless:

(a) the Commissioner is satisfied, on the balance of probabilities,

of the following matters:

(i) the person has a substantial interest in the proceedings

before the Commissioner;

(ii) the document or article is likely to be of substantial

relevance to a matter before the Commissioner; and

(b) the Commissioner notifies the person of the actions the

Commissioner may take under section 210A if the person

fails or refuses to comply with the requirement.

(5) The Commissioner may require a person to produce a document or

article under paragraph (1)(c) whether the person is in or out of the

patent area.

Exercise of powers in relation to bodies corporate

(6) The Commissioner’s powers in subsection (1) to make a

requirement of a person extend, if the person is a body corporate,

to making that requirement of any person who is an officer, agent

or employee of the body corporate.

ComLaw Authoritative Act C2014C00301

Chapter 21 Administration

Section 210A

150 Patents Act 1990

210A Sanctions for non-compliance with Commissioner’s

requirements

(1) The Commissioner may take one or more of the actions listed in

subsection (2) in relation to a person if:

(a) the Commissioner summons the person to appear as a

witness under paragraph 210(1)(a) or requires the person to

produce a document or article under paragraph 210(1)(c); and

(b) the person refuses or fails to comply with the summons or

requirement; and

(c) the Commissioner is satisfied, on the balance of probabilities,

that it is appropriate in the circumstances to take the action.

(2) The actions the Commissioner may take are:

(a) if the person is an applicant for a patent—a refusal to grant

the patent (see subsection 61(1); and

(b) the drawing of an inference unfavourable to the person’s

interest in proceedings before the Commissioner; and

(c) actions of a kind that are prescribed by the regulations.

(3) In deciding whether it is appropriate to take the action, the

Commissioner must consider the following:

(a) whether the person has a reasonable excuse for refusing or

failing to comply with the summons or requirement;

(b) whether the person has been offered payment of reasonable

expenses associated with complying with the summons or

requirement;

(c) any other matter the Commissioner considers to be relevant.

211 Recovery of costs awarded by Commissioner

Costs awarded by the Commissioner against a party are

recoverable as a debt.

ComLaw Authoritative Act C2014C00301

Miscellaneous Chapter 22

Section 212

Patents Act 1990 151

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:

(a) delivering the document to the Patent Office or a sub-office

of the Patent Office (if any) either personally or by post; or

(b) any other prescribed means.

215 Death of applicant or nominated person

(1) If an applicant dies before a patent is granted on the application,

his or her legal representative may proceed with the application.

(2) If a nominated person dies before a patent is granted on the

application, the patent may be granted to his or her legal

representative.

(3) Where, at any time after a patent is granted, the Commissioner is

satisfied, on the balance of probabilities, that the patentee had died

(or, in the case of a body corporate, had ceased to exist) before the

patent was granted, the Commissioner may amend the Register by

substituting for the name of the patentee the name of the person to

whom the patent should have been granted.

(4) An amendment by the Commissioner has effect, and is to be taken

always to have had effect, accordingly.

ComLaw Authoritative Act C2014C00301

Chapter 22 Miscellaneous

Section 216

152 Patents Act 1990

216 Exercise of discretionary power by Commissioner

(1) The Commissioner must not exercise a discretionary power under

this Act adversely to any person applying for the exercise of that

power without first giving that person a reasonable opportunity to

be heard.

(2) Subsection (1) does not apply in relation to the Commissioner’s

power to direct an applicant to request an examination.

217 Assessors

A prescribed court may, if it thinks fit, call in the aid of an assessor

to assist it in the hearing and trial or determination of any

proceedings under this Act.

218 Costs where patent invalid in part

In any proceedings in which the validity of a patent is disputed, the

court may, if it is satisfied that some of the claims in the complete

specification which are alleged to be invalid are not invalid but that

other claims are invalid, apportion the costs between the parties to

the proceedings as it thinks just.

219 Security for costs

If a person who neither resides nor carries on business in Australia:

(a) gives notice of opposition under this Act; or

(b) appeals to the Federal Court;

the Commissioner or the Federal Court, as the case may be, may

require the person to give security for the costs of the proceeding

or appeal and, where such security is not given to the satisfaction

of the Commissioner or the Federal Court, as the case may be, may

dismiss the proceeding or appeal.

ComLaw Authoritative Act C2014C00301

Miscellaneous Chapter 22

Section 220

Patents Act 1990 153

220 Costs of attendance of patent attorney

Where, at the hearing of proceedings under this Act, a registered

patent attorney attends in court for the purpose of assisting a party

in the conduct of the hearing and an order is made for payment of

the costs of that party, those costs may include an allowance for

that attendance.

221 Service of documents

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.

(1) The Commissioner shall issue periodically an official journal

containing such matters as are prescribed and such other matters (if

any) as the Commissioner thinks fit.

(2) The Commissioner must make arrangements for selling copies of

the Official Journal, and of complete specifications which are open

to public inspection.

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

relating to inventions and patents as the Commissioner thinks fit.

222A Doing act when Patent Office reopens after end of period

otherwise provided for doing act

(1) If the last day of a period provided by this Act (except this section)

for doing an act is a day when the Patent Office, or a sub-office of

the Patent Office (if any), is not open for business, the act may be

done in prescribed circumstances on the next day when the office

or sub-office is open for business.

(2) For the purposes of this section, the Patent Office, or a sub-office

of the Patent Office, is taken not to be open for business on a day:

(a) declared by regulations to be a day on which the office or

sub-office is not open for business; or

ComLaw Authoritative Act C2014C00301

Chapter 22 Miscellaneous

Section 223

154 Patents Act 1990

(b) declared, by a prescribed person in writing published in the

prescribed way, to be a day on which the office or sub-office

is not open for business.

Declarations

(3) A declaration mentioned in paragraph (2)(a) or (b) may identify the

day by reference to its being declared a public holiday by or under

a law of a State or Territory. This does not limit the way the

declaration may identify the day.

(4) A declaration mentioned in paragraph (2)(b):

(a) may be made before, on or after the day; and

(b) is not a legislative instrument.

Relationship with other law

(5) This section has effect despite the rest of this Act.

(6) Subsection 36(2) of the Acts Interpretation Act 1901 does not

apply in relation to the act mentioned in subsection (1) of this

section.

Exception for prescribed act

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

Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a

prescribed act.

223 Extensions of time

(1) The Commissioner must extend the time for doing a relevant act

that is required to be done within a certain time if the act is not, or

cannot be, done within that time because of an error or omission

by:

(a) the Commissioner or a Deputy Commissioner; or

(b) an employee; or

(c) a person providing, or proposing to provide, services for the

benefit of the Patent Office; or

(d) the receiving Office; or

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Miscellaneous Chapter 22

Section 223

Patents Act 1990 155

(e) the International Bureau of the World Intellectual Property

Organization.

(2) Where, because of:

(a) an error or omission by the person concerned or by his or her

agent or attorney; or

(b) circumstances beyond the control of the person concerned;

a relevant act that is required to be done within a certain time is

not, or cannot be, done within that time, the Commissioner may, on

application made by the person concerned in accordance with the

regulations, extend the time for doing the act.

(2A) If:

(a) a relevant act that is required to be done within a certain time

is not done within that time; and

(b) the Commissioner is satisfied, on the balance of probabilities,

that the person concerned took due care, as required in the

circumstances, to ensure the doing of the act within that time;

the Commissioner must, on application made by the person

concerned in accordance with the regulations and within the

prescribed period, extend the time for doing the act.

(2B) An extension of time under subsection (2A) cannot exceed the

period prescribed for the purposes of this subsection.

(3) The time allowed for doing a relevant act may be extended,

whether before or after that time has expired.

(3A) Despite subsection (3), the time allowed for doing a relevant act

may be extended under subsection (2A) only after that time has

expired.

(4) The Commissioner must advertise in the Official Journal:

(a) an application made for an extension of time for more than 3

months; or

(b) an application made for an extension of time for doing a

prescribed relevant act in prescribed circumstances.

(6) Subject to subsection (6A), a person may, as prescribed, oppose the

granting under subsection (2) or (2A) of the application.

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Chapter 22 Miscellaneous

Section 223

156 Patents Act 1990

(6A) If the Commissioner is satisfied, on the balance of probabilities,

that an application under subsection (2) or (2A) would not be

granted even in the absence of opposition under subsection (6):

(a) the Commissioner need not advertise the application in

accordance with subsection (4); and

(b) the application cannot be opposed, despite subsection (6);

and

(c) the Commissioner must refuse to grant the application.

(7) Where:

(a) a patent application lapses, or a patent ceases, because of a

failure to do one or more relevant acts within the time

allowed; and

(b) the time for doing that act or those acts is extended;

the application or patent must be treated as having been restored.

(8) Where:

(a) a provisional patent application lapses under subsection 142(1)

at the end of the period prescribed for the purposes of

section 38; and

(b) that period is extended;

the application must be treated as if it had not lapsed.

(9) Where the Commissioner grants:

(a) an extension of more than 3 months for doing a relevant act;

or

(b) an extension of time for doing a prescribed relevant act in

prescribed circumstances;

the prescribed provisions have effect for the protection or

compensation of persons who, before the day on which the

application for extension of time is advertised under subsection (4),

exploited (or took definite steps by way of contract or otherwise to

exploit) the invention concerned because of the failure to do the

relevant act within the time allowed, the lapsing of the patent

application or the ceasing of the patent, as the case may be.

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(10) Infringement proceedings cannot be brought in respect of an

infringement committed:

(a) between the day on which the patent application lapses and

the day on which it is restored; or

(b) between the day on which the patent ceases and the day on

which it is restored.

(11) In this section:

relevant act means an action (other than a prescribed action) in

relation to a patent, a patent application, or any proceedings under

this Act (other than court proceedings), and includes the making of

a Convention application within the time allowed for making such

applications.

224 Review of decisions

(1) Application may be made to the Administrative Appeals Tribunal

for review of:

(a) a decision of the Commissioner under section 10, 17, 32, 33

or 52, subsection 56(1)(b), 74(3) or 103(2), section 113,

subsection 137(3), paragraph 141(1)(b) or 142(2)(b),

subsection 150(2), 151(2), 152(2) or 152(3), or section 173,

215 or 223; or

(b) a decision of the Designated Manager under section 198 not

to register a person as a patent attorney; or

(c) a decision of the Director under subsection 147(2) or (3),

section 149 or subsection 152(1).

(2) Where a person who makes a decision mentioned in subsection (1)

gives the person or persons affected by the decision written notice

of the making of the decision, the notice must include a statement

to the effect that, subject to the Administrative Appeals Tribunal

Act 1975, application may be made to the Administrative Appeals

Tribunal for review of the decision to which the notice relates by or

on behalf of the person or persons whose interests are affected by

the decision.

(3) Failure to comply with subsection (2) in relation to a decision does

not affect the validity of the decision.

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158 Patents Act 1990

(4) In this section:

decision has the same meaning as in the Administrative Appeals

Tribunal Act 1975.

225 Conduct of employees and agents of natural persons

(3) Where it is necessary to establish, for the purposes of a prosecution

for an offence under this Act, the state of mind of a person other

than a company in relation to particular conduct, it is sufficient to

show:

(a) that the conduct was engaged in by a servant or agent of the

person within the scope of his or her actual or apparent

authority; and

(b) that the servant or agent had the state of mind.

(4) Any conduct engaged in on behalf of a person other than a

company by the person’s servant or agent within the scope of his or

her actual or apparent authority is to be taken, for the purposes of a

prosecution for an offence under this Act, to have been engaged in

also by the person, unless the person establishes that he or she took

reasonable precautions and exercised due diligence to avoid the

conduct.

(5) A reference in this section to an offence under this Act includes a

reference to an offence created by:

(a) section 6 of the Crimes Act 1914 that relates to this Act or the

regulations; or

(b) section 11.1, 11.2, 11.2A, 11.4 or 11.5 of the Criminal Code

that relates to this Act or the regulations.

(6) Where:

(a) a person other than a company is convicted of an offence

under this Act; and

(b) the person would not have been convicted of the offence but

for subsections (3) and (4);

the person is not liable to be punished by imprisonment for that

offence.

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(7) A reference in subsection (3) to the state of mind of a person

includes a reference to:

(a) the knowledge, intention, opinion, belief or purpose of the

person; and

(b) the person’s reasons for the intention, opinion, belief or

purpose.

(9) A reference in this section to engaging in conduct includes a

reference to failing or refusing to engage in conduct.

Note: For provisions relating to proof of offences by bodies corporate, see

Part 2.5 of the Criminal Code.

226 Documents open to public inspection do not infringe copyright

(1) If a document mentioned in subsection (2) is open to public

inspection, doing any of the following in relation to the whole or

part of the document does not constitute an infringement of any

copyright subsisting under the Copyright Act 1968 in any literary

or artistic work:

(a) reproducing the document in two-dimensional form;

(b) communicating (within the meaning of that Act) the

document to the public;

(c) translating (within the meaning of that Act) the document.

(2) The documents are:

(a) a provisional specification; and

(b) a complete specification; and

(c) a prescribed document.

(3) If a reproduction of an unpublished work is made as a result of a

document being open to public inspection, the supply or

communication of the reproduction does not constitute the

publication of the work for the purposes of the Copyright Act 1968.

227 Fees

(1) The prescribed fees are payable in accordance with the regulations.

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160 Patents Act 1990

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

respect of the doing of an act according to the time when the act is

done.

(3) The regulations may provide for the consequences (for the

purposes of this Act) of failing to pay a fee in accordance with the

regulations.

Note: Some provisions of this Act provide expressly or implicitly for the

consequences of failing to pay a fee (for example, see

subsections 29A(5) and 142(2), section 143, subsection 151(4) and

section 176). Regulations cannot provide for consequences

inconsistent with those provisions.

(4) In particular, the regulations may provide that, for the purposes of

this Act:

(a) an act is not to be done, or is taken not to have been done, if

the fee for doing the act is not paid in accordance with the

regulations; or

(b) a document is not filed, or is taken not to have been filed, if

the fee for filing the document is not paid in accordance with

the regulations; or

(c) a patent application lapses, or is taken to have lapsed, if the

fee for filing the request and accompanying specification is

not paid in accordance with the regulations.

(5) Subsection (4) does not limit subsection (3).

227A Professional Standards Board for Patent and Trade Marks

Attorneys

(1) The Professional Standards Board for Patent and Trade Marks

Attorneys is established.

(2) The Professional Standards Board has the following functions:

(a) such functions as are conferred on the Professional Standards

Board by this Act or the Trade Marks Act 1995;

(b) such functions as are conferred on the Professional Standards

Board by regulations made for the purposes of any of the

following provisions:

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Section 227A

Patents Act 1990 161

(i) paragraph 198(4)(b) of this Act (which deals with the

qualifications of patent attorneys);

(ii) section 199 of this Act (which deals with the

deregistration of patent attorneys);

(iii) paragraph 228(2)(r) of this Act (which deals with the

professional conduct of patent attorneys);

(iv) paragraph 228A(4)(a) of the Trade Marks Act 1995

(which deals with the qualifications of trade marks

attorneys);

(v) section 228B of the Trade Marks Act 1995 (which deals

with the deregistration of trade marks attorneys);

(vi) paragraph 231(2)(ha) of the Trade Marks Act 1995

(which deals with the professional conduct of trade

marks attorneys);

(c) to do anything incidental to or conducive to the performance

of any of the above functions.

(3) The regulations may make provision for and in relation to:

(a) the constitution and membership of the Professional

Standards Board; and

(b) the manner in which the Professional Standards Board is to

perform its functions; and

(c) the procedure to be followed at or in relation to meetings of

the Professional Standards Board, including (but not limited

to) matters with respect to:

(i) the convening of meetings of the Board; and

(ii) the number of members of the Board who are to

constitute a quorum; and

(iii) the selection of a member of the Board to preside at a

meeting of the Board; and

(iv) the manner in which questions arising at a meeting of

the Board are to be decided.

(4) A member of the Professional Standards Board is to be paid such

remuneration as is determined by the Remuneration Tribunal. If no

determination of that remuneration by the Tribunal is in operation,

the member is to be paid such remuneration as is prescribed.

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162 Patents Act 1990

(5) A member of the Professional Standards Board is to be paid such

allowances as are prescribed.

(6) Subsections (4) and (5) have effect subject to the Remuneration

Tribunal Act 1973.

228 Regulations

(1) The Governor-General may make regulations, not inconsistent with

this Act:

(a) prescribing matters required or permitted by this Act to be

prescribed; and

(b) prescribing matters necessary or convenient to be prescribed

for carrying out or giving effect to this Act; and

(c) prescribing matters necessary or convenient to be prescribed

for the conduct of any business relating to the Patent Office;

and

(d) for the purpose of carrying out or giving effect to the

Budapest Treaty; and

(e) for the purpose of carrying out or giving effect to the PCT,

whether in relation to PCT applications or otherwise.

(2) Without limiting subsection (1), that subsection includes the power

to make regulations:

(aa) making provision for and in relation to:

(i) the procedures for conducting a preliminary search and

opinion in relation to a patent request and complete

specification; and

(ii) the reports to be made in relation to the preliminary

search and opinion; and

(a) making provision for and in relation to the procedures for the

examination of a patent request and complete specification

and the re-examination of a complete specification; and

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

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

(c) making provision for and in relation to the amendment of

patent requests, provisional and complete specifications, and

other filed documents:

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Patents Act 1990 163

(i) to correct a clerical error or obvious mistake; or

(ii) to remove a lawful ground of objection, whether the

objection is raised in the course of examination or

re-examination or otherwise; or

(iii) for any other purpose; and

(e) making provision for and in relation to the amendment of an

entry in the Register to correct a clerical error or an obvious

mistake, or for any other purpose; and

(g) making provision for and in relation to the preparation, filing

and publication of abstracts of complete specifications; and

(h) making provision for and in relation to opposition

proceedings; and

(ha) setting out the formalities checking process for innovation

patents including, in particular, the following matters:

(i) specifying the formalities requirements (including

compliance with the requirements of subsections 18(2)

and (3)) that must be met in respect of an application for

an innovation patent; and

(ii) empowering the Commissioner to direct an applicant for

an innovation patent to do such things as are necessary

to ensure that the application is in accordance with the

requirements of the regulations relating to the

preparation of documents for filing; and

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

direction is not complied with within a time specified in

the regulations; and

(iv) providing for the restoration of an application that has

so lapsed; and

(i) setting out the checking process for PCT applications

including, in particular, the following matters:

(i) specifying the requirements that must be met in respect

of a PCT application, once the requirements of

subsection 29A(5) have been met;

(ii) empowering the Commissioner to direct an applicant to

do such things as are necessary to ensure that the PCT

application is in accordance with those requirements;

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164 Patents Act 1990

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

a direction is not complied with within a time specified

in the regulations;

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

standard patent to do such things as are necessary to ensure

that the complete specification is in accordance with the

requirements of the regulations relating to the preparation of

documents for filing and:

(i) providing for the lapsing of the application if such a

direction is not complied with within a time specified in

the regulations; and

(ii) providing for the restoration of an application that has

so lapsed; and

(k) empowering the Commissioner to hear and determine the

question whether a person is an interested person for the

purpose of doing any act permitted to be done under this Act

by an interested person; and

(m) providing for appeals against decisions of the Commissioner

made under the regulations; and

(n) making provision for and in relation to the practice and

procedure of prescribed courts in proceedings under this Act,

including provision prescribing the time within which any

proceeding may be started or anything else may be done, and

providing for the extension of any such time; and

(p) requiring persons to make statutory declarations in relation to

patent applications or patents or in proceedings under this

Act (not being court proceedings); and

(q) making provision for and in relation to the making of a

declaration, or the doing of an act, under this Act on behalf of

a person who, because of infancy or physical or mental

disability, is unable to make the declaration or do the act; and

(r) for the control of the professional conduct of registered

patent attorneys and the practice of the profession and, for

that purpose, making provision for and in relation to all or

any of the following:

(i) making complaints, and hearing charges, against

registered patent attorneys about their professional

conduct;

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Patents Act 1990 165

(ia) assessing the professional conduct of registered patent

attorneys by reference to standards of practice

established by the Professional Standards Board from

time to time;

(ii) imposing penalties on registered patent attorneys,

including issuing a reprimand and suspending or

cancelling registration;

(iii) summoning witnesses;

(iv) requiring persons to give evidence on oath (whether

orally or otherwise);

(v) administering oaths to persons giving evidence (whether

orally or otherwise);

(vi) requiring persons to produce documents or articles; and

(s) making provision for and in relation to:

(i) the deposit for the purposes of this Act, the Budapest

Treaty, or both, of micro-organisms with prescribed

depositary institutions and the storage and testing of,

and furnishing of samples of, micro-organisms by those

institutions; and

(ii) the charging of fees by prescribed depositary

institutions situated in Australia in relation to the

matters described in subparagraph (i); and

(iii) the making of reports by prescribed depositary

institutions situated in Australia in relation to those

matters; and

(iv) the powers and functions of the Commissioner in

relation to prescribed depositary institutions with

respect to those matters; and

(t) modifying the operation of this Act in relation to PCT

applications that are treated as patent applications under this

Act by excluding, varying, or substituting different

provisions for, specified provisions of this Act; and

(u) making provision for and in relation to the destruction of

documents relating to applications for patents filed not less

than 25 years before the time of destruction; and

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166 Patents Act 1990

(w) making provision for and in relation to the refund, in

specified circumstances, of the whole or part of a fee paid in

respect of the filing of a document; and

(y) making provision for and in relation to the remission of, or

the exemption of specified classes of persons from the

payment of, the whole or part of a fee; and

(z) prescribing penalties for offences against the regulations not

exceeding a fine of $1,000; and

(za) making such transitional and savings provisions as are

necessary or convenient as a result of the repeal of the 1952

Act and the enactment of this Act.

(3) The regulations may make provision for matters referred to in

paragraph (2)(s) by empowering the Commissioner, on behalf of

the Commonwealth, to enter into agreements with prescribed

depositary institutions with respect to those matters.

(4) Regulations made under paragraph (2)(s) and subsection (3) may

make different provision with respect to different matters dealt

with by or under those regulations, but this subsection shall not be

taken to limit a power to make regulations conferred by any other

provision of this Act.

(7) Despite the repeal of the 1952 Act by this Act, regulations made

under paragraph (2)(za) may provide for the continued operation of

specified provisions of the 1952 Act in relation to prescribed

persons or matters, or in prescribed circumstances.

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Section 231

Patents Act 1990 167

Chapter 23—Transitional and savings

provisions

231 Application of Part III of 1989 Amending Act

Nothing in this Act affects the continued operation of Part III of the

1989 Amending Act.

233 Patents granted under 1952 Act

(1) Subject to this Chapter and the regulations, this Act applies in

relation to a standard patent or a petty patent granted under the

1952 Act as if the patent had been granted under this Act.

(2) A patent mentioned in subsection (1) does not have effect in any

place in which it did not have effect immediately before the

commencing day.

(3) Chapter 9 of this Act does not apply in relation to a patent

mentioned in subsection (1).

(4) Objection cannot be taken to a patent mentioned in subsection (1),

and such a patent is not invalid, so far as the invention is claimed

in any claim, on any ground that would not have been available

against the patent under the 1952 Act.

234 Applications under 1952 Act

(1) Where, before the commencing day:

(a) a patent application and provisional specification had been

lodged under the 1952 Act; and

(b) a complete specification had not been lodged under that Act

in respect of the application; and

(c) the application had not been withdrawn;

then, subject to this Chapter and the regulations, this Act applies in

relation to the application on and after that day as if it were a

provisional application under this Act.

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Section 234

168 Patents Act 1990

(2) Where, before the commencing day:

(a) a patent application had been lodged under the 1952 Act; and

(b) a complete specification, or a petty patent specification, had

been lodged under that Act in respect of the application; and

(c) the application had not been withdrawn or finally dealt with;

then, subject to this Chapter and the regulations, this Act applies on

and after that day:

(d) in relation to the application as if it were a complete

application made under this Act; and

(e) in relation to the petty patent specification as if it were a

complete specification filed under this Act in respect of the

application.

(3) Chapter 5 of this Act does not apply in relation to an application

mentioned in subsection (2), but Part V of the 1952 Act, as in force

immediately before the commencing day, continues to apply in

relation to such an application.

(4) Chapter 9 of this Act does not apply in relation to:

(a) an application mentioned in subsection (2); or

(b) a patent granted on such an application.

(5) Objection cannot be taken to:

(a) an application mentioned in subsection (2); or

(b) a patent granted on such an application;

and such a patent is not invalid, so far as the invention is claimed

in any claim, on any ground that would not have been available

against the application or patent, as the case may be, under the

1952 Act.

(6) A petty patent specification to which subsection (2) applies cannot

be amended under this Act so as to include more than one claim.

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Section 235

Patents Act 1990 169

235 Other applications and proceedings under 1952 Act

(1) Subject to this Chapter and the regulations, this Act applies, on and

after the commencing day, to any application, request, action or

proceeding made or started under the 1952 Act and not finally

dealt with or determined under that Act before that day as if the

application, request, action or proceeding had been made or started

under a corresponding provision of this Act.

(2) Subsection (1) does not apply in relation to an application covered

by section 234 of this Act.

236 Micro-organisms

Sections 41 and 42 of this Act do not apply in relation to a

specification lodged before 7 July 1987.

237 Orders, directions etc. under 1952 Act

Any report, order or direction made or given under the 1952 Act

and in force immediately before the commencing day continues to

have effect on and after that day as if it had been made or given

under a corresponding provision of this Act.

238 The Commissioner and Deputy Commissioner

The persons holding office as Commissioner of Patents and Deputy

Commissioner of Patents immediately before the commencing day

continue to hold those respective offices on and after that day.

239 The Register of Patents and Register of Patent Attorneys

(1) On and after the commencing day, the Register of Patents under

the 1952 Act is to be taken to form part of the Register of Patents

under this Act.

(2) On and after the commencing day, the Register of Patent Attorneys

under the 1952 Act is to be taken to form part of the Register of

Patent Attorneys under this Act.

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Section 240

170 Patents Act 1990

240 Registered patent attorneys

This Act applies, on and after the commencing day, in relation to a

person who was, immediately before that day, a registered patent

attorney under the 1952 Act as if the person had been registered as

a patent attorney under this Act.

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Schedule 1—Dictionary Section 3

In this Act, unless the contrary intention appears:

application, in Chapter 15, means a patent application, and

includes a relevant international application.

approved form means a form approved by the Commissioner for

the purposes of the provision in which the expression appears.

associated technology has the same meaning as in the Safeguards

Act.

Australia includes each external Territory.

Australian continental shelf means the continental shelf adjacent

to the coast of Australia (including the coast of any island forming

part of a State or Territory).

Australian Register of Therapeutic Goods means the register

maintained under section 9A of the Therapeutic Goods Act 1989.

authority, in Chapter 15, has the same meaning as in the

Safeguards Act.

basic application means an application for protection in respect of

an invention, being an application made in a Convention country.

Budapest Treaty means the Budapest Treaty on the International

Recognition of the Deposit of Microorganisms for the Purposes of

Patent Procedure signed at Budapest on 28 April 1977, as that

treaty is in force for Australia from time to time, together with the

Regulations annexed to that treaty, as those Regulations are in

force for Australia from time to time.

Note: The text of the Treaty is set out in Australian Treaty Series 1987 No. 9

([1987] ATS 9). In 2011, the text of a Treaty in the Australian Treaty

Series was accessible through the Australian Treaties Library on the

AustLII website (www.austlii.edu.au).

certified, in respect of an innovation patent other than in

section 19, means a certificate of examination issued by the

Commissioner under paragraph 101E(2)(c) in respect of the patent.

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172 Patents Act 1990

claim means:

(a) when used as a noun in relation to a patent—a claim

(including a dependent claim) of the specification relating to

the complete application on which the patent was granted;

and

(b) when used as a noun otherwise than in relation to a patent—a

claim (including a dependent claim) of a complete

specification; and

(c) when used as a verb—to claim in a claim (including a

dependent claim) of a complete specification.

commencing day means the day on which this Act commences.

Commissioner means the Commissioner of Patents.

company means a company registered under the Corporations Act

2001.

compensable person means:

(a) in relation to a patent acquired by the Commonwealth—the

patentee and any person recorded in the Register as having an

interest in the patent; and

(b) in relation to an invention that is the subject of a patent

application and is so acquired—the nominated person in

relation to the application.

complete specification means (other than in section 116) a

specification filed in respect of a complete patent application or, if

the specification has been amended, the complete specification as

amended.

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:

(a) has made the basic application; or

(b) is the assignee of that applicant; or

(c) would, on the grant of a patent on that application, be entitled

to have the patent assigned to the person; or

(d) is the legal representative of a person mentioned in

paragraph (a), (b) or (c); or

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(e) has the consent of a person mentioned in paragraph (a), (b),

(c) or (d) to make a Convention application based on that

basic application.

Convention application means a patent application made under

Part 1 of Chapter 3.

Convention country has the meaning given by section 29B.

deposit requirements means the requirements specified in

paragraphs 6(a) to (d), inclusive.

depositary institution means a body or institution that receives,

accepts and stores micro-organisms and furnishes samples of

micro-organisms.

Deputy Commissioner means a Deputy Commissioner of Patents.

Designated Manager has the meaning given by section 200A.

Director means the Director of Safeguards.

director of a company has the same meaning as in the

Corporations Act 2001.

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:

(a) is a person engaged under the Public Service Act 1999 and is

employed in the Patent Office; or

(b) is not such a person but performs services, in the Patent

Office, for or on behalf of the Commonwealth.

examination means:

(a) in relation to a patent request and a complete specification

relating to a standard patent—an examination of the request

and specification under section 45; or

(b) in relation to an innovation patent—an examination of the

complete specification relating to the patent under

section 101B.

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exclusive licensee means a licensee under a licence granted by the

patentee and conferring on the licensee, or on the licensee and

persons authorised by the licensee, the right to exploit the patented

invention throughout the patent area to the exclusion of the

patentee and all other persons.

exploit, in relation to an invention, includes:

(a) where the invention is a product—make, hire, sell or

otherwise dispose of the product, offer to make, sell, hire or

otherwise dispose of it, use or import it, or keep it for the

purpose of doing any of those things; or

(b) where the invention is a method or process—use the method

or process or do any act mentioned in paragraph (a) in respect

of a product resulting from such use.

Federal Court means the Federal Court of Australia.

file means file with the Patent Office.

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 vessel means a vessel registered in a prescribed foreign

country.

formalities check means, in respect of an application for an

innovation patent, the checking process undertaken under

section 52 using the process set out in the regulations.

incorporated legal practice means a body corporate recognised

under a law of the Commonwealth, a State or a Territory as an

incorporated legal practice (however described).

incorporated patent attorney has the meaning given by

subsection 198(10).

infringement proceedings means proceedings for infringement of

a patent.

innovation patent means letters patent for an invention granted

under section 62.

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intellectual property advice has the meaning given by

subsection 200(2C).

interested party, in relation to a patent application, means the

applicant or a joint applicant, or a person who claims to be entitled

to the grant of a patent on the application, either alone or jointly

with another person.

international application has the same meaning as in the PCT.

international depositary authority has the same meaning as in the

Budapest Treaty.

international filing date, in relation to an international application,

means the date given to the international application as its

international filing date under the PCT.

invention means any manner of new manufacture the subject of

letters patent and grant of privilege within section 6 of the Statute

of Monopolies, and includes an alleged invention.

legal practitioner means a barrister or solicitor of the High Court

or of the Supreme Court of a State or Territory.

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.

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.

ComLaw Authoritative Act C2014C00301

Schedule 1 Dictionary

176 Patents Act 1990

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:

(a) Australia; and

(b) the Australian continental shelf; and

(c) the waters above the Australian continental shelf; and

(d) the airspace above Australia and the Australian continental

shelf.

patent attorney director has the meaning given by

subsection 198(11).

patent of addition means letters patent for an invention granted

under Chapter 7 and includes, for the purposes of section 25, a

patent of addition that has become an independent patent under

section 83.

Patent Office means the Patent Office established under this Act.

patent request means a request for the grant of a patent to a

nominated person.

patentable invention means an invention of the kind mentioned in

section 18.

patented process means a process in respect of which a patent has

been granted and is in force.

patented product means a product in respect of which a patent has

been granted and is in force.

patentee means the person for the time being entered in the

Register as the grantee or proprietor of a patent.

patents work has the meaning given by subsection 201A(2).

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.

ComLaw Authoritative Act C2014C00301

Dictionary Schedule 1

Patents Act 1990 177

Note: The text of the Treaty is set out in Australian Treaty Series 1980 No. 6

([1980] ATS 6). In 2011, the text of a Treaty in the Australian Treaty

Series was accessible through the Australian Treaties Library on the

AustLII website (www.austlii.edu.au).

PCT application means an international application in which

Australia is specified as a designated State under Article 4(1)(ii) of

the PCT.

permit, in Chapter 15, has the same meaning as in the Safeguards

Act.

pharmaceutical substance means a substance (including a mixture

or compound of substances) for therapeutic use whose application

(or one of whose applications) involves:

(a) a chemical interaction, or physico-chemical interaction, with

a human physiological system; or

(b) action on an infectious agent, or on a toxin or other poison, in

a human body;

but does not include a substance that is solely for use in in vitro

diagnosis or in vitro testing.

PPSA security interest (short for Personal Property Securities Act

security interest) means a security interest within the meaning of

the Personal Property Securities Act 2009 and to which that Act

applies, other than a transitional security interest within the

meaning of that Act.

Note 1: The Personal Property Securities Act 2009 applies to certain security

interests in personal property. See the following provisions of that

Act:

(a) section 8 (interests to which the Act does not apply);

(b) section 12 (meaning of security interest);

(c) Chapter 9 (transitional provisions).

Note 2: For the meaning of transitional security interest, see section 308 of

the Personal Property Securities Act 2009.

preliminary search and opinion, in relation to a patent request and

complete specification relating to an application for a standard

patent, means search and opinion under section 43A.

prescribed court means the Federal Court, the Supreme Court of a

State, the Supreme Court of the Australian Capital Territory, the

Supreme Court of the Northern Territory or the Supreme Court of

Norfolk Island.

ComLaw Authoritative Act C2014C00301

Schedule 1 Dictionary

178 Patents Act 1990

prescribed depositary institution means:

(a) an international depositary authority, whether in or outside

Australia; or

(b) any other depositary institution in Australia that is prescribed

for the purposes of this paragraph.

prior art base means:

(a) in relation to deciding whether an invention does or does not

involve an inventive step or an innovative step:

(i) information in a document that is publicly available,

whether in or out of the patent area; and

(ii) information made publicly available through doing an

act, whether in or out of the patent area.

(b) in relation to deciding whether an invention is or is not novel:

(i) information of a kind mentioned in paragraph (a); and

(ii) information contained in a published specification filed

in respect of a complete application where:

(A) if the information is, or were to be, the subject

of a claim of the specification, the claim has, or

would have, a priority date earlier than that of

the claim under consideration; and

(B) the specification was published on or after the

priority date of the claim under consideration;

and

(C) the information was contained in the

specification on its filing date.

[Note: For the meaning of document see section 2B of the Acts

Interpretation Act 1901.]

prior art information means:

(a) for the purposes of subsection 7(1)—information that is part

of the prior art base in relation to deciding whether an

invention is or is not novel; and

(b) for the purposes of subsection 7(3)—information that is part

of the prior art base in relation to deciding whether an

invention does or does not involve an inventive step; and

(c) for the purposes of subsection 7(5)—information that is part

of the prior art base in relation to deciding whether an

invention does or does not involve an innovative step.

ComLaw Authoritative Act C2014C00301

Dictionary Schedule 1

Patents Act 1990 179

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:

(a) in relation to a complete specification relating to an

application for a standard patent—the re-examination of the

complete specification under Chapter 9; and

(b) in relation to an innovation patent—the re-examination of the

innovation patent under Part 2 of Chapter 9A.

Register means the Register of Patents mentioned in section 186.

registered, in relation to a patent, means entered in the Register of

Patents.

registered patent attorney means a person registered as a patent

attorney under this Act.

related company group means a group of 2 or more companies,

where each member of the group is related to each other member

of the group.

relevant authority means:

(a) in relation to the exploitation of an invention by or for the

Commonwealth—the Commonwealth; and

(b) in relation to the exploitation of an invention by or for a

State—that State.

relevant international application, in Chapter 15, means an

international application in relation to which the Patent Office is

the receiving Office (even if Australia is not specified in the

application as a designated State under Article 4(1)(ii) of the PCT).

relevant proceedings, in relation to a patent, means court

proceedings:

(a) for infringement of the patent; or

ComLaw Authoritative Act C2014C00301

Schedule 1 Dictionary

180 Patents Act 1990

(b) for revocation of the patent; or

(c) in which the validity of the patent, or of a claim, is in dispute.

rules relating to micro-organisms means such provisions of the

Budapest Treaty, and such provisions made by or under regulations

made under section 228, as are applicable.

Safeguards Act means the Nuclear Non-Proliferation (Safeguards)

Act 1987.

specification, in relation to an international application, means the

description, claims and drawings contained in the application.

standard patent means letters patent for an invention granted under

section 61.

State, in Chapter 17, includes the Australian Capital Territory, the

Northern Territory and Norfolk Island.

Statute of Monopolies means the Imperial Act known as The

Statute of Monopolies.

supply includes:

(a) supply by way of sale, exchange, lease, hire or hire-purchase;

and

(b) offer to supply (including supply by way of sale, exchange,

lease, hire or hire-purchase).

Territory means a Territory in which this Act applies or to which

this Act extends.

therapeutic use means use for the purpose of:

(a) preventing, diagnosing, curing or alleviating a disease,

ailment, defect or injury in persons; or

(b) influencing, inhibiting or modifying a physiological process

in persons; or

(c) testing the susceptibility of persons to a disease or ailment.

this Act includes the regulations.

work, in relation to a patented invention, means:

(a) where the invention is a product—make or import the

product; or

ComLaw Authoritative Act C2014C00301

Dictionary Schedule 1

Patents Act 1990 181

(b) where the invention is a method or process—use the method

or process or do any act mentioned in paragraph (a) in respect

of a product resulting from such use.

1952 Act means the Patents Act 1952.

1989 Amending Act means the Patents Amendment Act 1989.

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 1—About the endnotes

182 Patents Act 1990

Endnotes

Endnote 1—About the endnotes

The endnotes provide details of the history of this legislation and its provisions.

The following endnotes are included in each compilation:

Endnote 1—About the endnotes

Endnote 2—Abbreviation key

Endnote 3—Legislation history

Endnote 4—Amendment history

Endnote 5—Uncommenced amendments

Endnote 6—Modifications

Endnote 7—Misdescribed amendments

Endnote 8—Miscellaneous

If there is no information under a particular endnote, the word ―none‖ will

appear in square brackets after the endnote heading.

Abbreviation key—Endnote 2

The abbreviation key in this endnote sets out abbreviations that may be used in

the endnotes.

Legislation history and amendment history—Endnotes 3 and 4

Amending laws are annotated in the legislation history and amendment history.

The legislation history in endnote 3 provides information about each law that

has amended the compiled law. The information includes commencement

information for amending laws and details of application, saving or transitional

provisions that are not included in this compilation.

The amendment history in endnote 4 provides information about amendments at

the provision level. It also includes information about any provisions that have

expired or otherwise ceased to have effect in accordance with a provision of the

compiled law.

Uncommenced amendments—Endnote 5

The effect of uncommenced amendments is not reflected in the text of the

compiled law but the text of the amendments is included in endnote 5.

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 1—About the endnotes

Patents Act 1990 183

Modifications—Endnote 6

If the compiled law is affected by a modification that is in force, details of the

modification are included in endnote 6.

Misdescribed amendments—Endnote 7

An amendment is a misdescribed amendment if the effect of the amendment

cannot be incorporated into the text of the compilation. Any misdescribed

amendment is included in endnote 7.

Miscellaneous—Endnote 8

Endnote 8 includes any additional information that may be helpful for a reader

of the compilation.

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 2—Abbreviation key

184 Patents Act 1990

Endnote 2—Abbreviation key

ad = added or inserted pres = present

am = amended prev = previous

c = clause(s) (prev) = previously

Ch = Chapter(s) Pt = Part(s)

def = definition(s) r = regulation(s)/rule(s)

Dict = Dictionary Reg = Regulation/Regulations

disallowed = disallowed by Parliament reloc = relocated

Div = Division(s) renum = renumbered

exp = expired or ceased to have effect rep = repealed

hdg = heading(s) rs = repealed and substituted

LI = Legislative Instrument s = section(s)

LIA = Legislative Instruments Act 2003 Sch = Schedule(s)

mod = modified/modification Sdiv = Subdivision(s)

No = Number(s) SLI = Select Legislative Instrument

o = order(s) SR = Statutory Rules

Ord = Ordinance Sub-Ch = Sub-Chapter(s)

orig = original SubPt = Subpart(s)

par = paragraph(s)/subparagraph(s)

/sub-subparagraph(s)

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 3—Legislation history

Patents Act 1990 185

Endnote 3—Legislation history

Act Number

and year

Assent Commencement Application,

saving and

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

Intellectual Property

Laws Amendment Act

1998

100, 1998 27 July

1998

Schedules 1 and 2: 27

Jan 1999

Remainder: Royal

Assent

Sch. 1 (item 8),

Sch. 2 (items 31,

32) and Sch. 3

(item 4)

Public Employment

(Consequential and

Transitional)

Amendment Act 1999

146, 1999 11 Nov

1999

Schedule 1 (items 728–

730): 5 Dec 1999 (see

Gazette 1999, No. S584)

(b)

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 3—Legislation history

186 Patents Act 1990

Act Number

and year

Assent Commencement Application,

saving and

transitional

provisions

Patents Amendment

(Innovation Patents) Act

2000

140, 2000 24 Nov

2000

24 May 2001 Sch. 1 (items 1,

2(1), (3)–(6), 3–6,

8)

Sch. 2 (items 2(2),

7) (am. by 99,

2001, Sch. 2

[items 1, 2])

as amended by

Trade Marks and

Other Legislation

Amendment Act 2001

99, 2001 22 Aug

2001

Schedule 2: (c)

Intellectual Property

Laws Amendment Act

2003

48, 2003 26 June

2003

Schedule 2 (item 8): (d)

Corporations (Repeals,

Consequentials and

Transitionals) Act 2001

55, 2001 28 June

2001

ss. 4–14 and Schedule 3

(item 401): 15 July 2001

(see Gazette 2001, No.

S285) (e)

ss. 4–14

Industry, Science and

Resources Legislation

Amendment

(Application of Criminal

Code) Act 2001

140, 2001 1 Oct 2001 2 Oct 2001 s. 4

Patents Amendment Act

2001

160, 2001 1 Oct 2001 Schedule 1: 1 Apr 2002

Schedule 2: (f)

Remainder: Royal

Assent

Sch. 1 (items 13,

32, 33)

Intellectual Property

Laws Amendment Act

2003

48, 2003 26 June

2003

Schedule 1 (item 2):

24 July 2003

Schedule 2 (items 1–5):

26 Aug 2003

Sch. 2 (item 5)

US Free Trade

Agreement

Implementation Act

2004

120, 2004 16 Aug

2004

Schedule 8: Royal

Assent

Sch. 8 (item 3)

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 3—Legislation history

Patents Act 1990 187

Act Number

and year

Assent Commencement Application,

saving and

transitional

provisions

Statute Law Revision

Act 2005

100, 2005 6 July 2005 Schedule 1 (items 31–

37): (g)

Intellectual Property

Laws Amendment Act

2006

106, 2006 27 Sept

2006

Schedules 5, 6, 8 and 9:

28 Sept 2006

Schedule 7: 25 Oct 2006

Schedules 10 and 12

(item 4): 27 Mar 2007

Schedule 16 (item 1): 4

Oct 2002 (see s. 2(1))

Sch. 5 (item 2),

Sch. 6 (item 2),

Sch. 7 (item 4),

Sch. 8 (item 9),

Sch. 9 (item 2)

and Sch. 10

(item 3)

Personal Property

Securities

(Consequential

Amendments) Act 2009

131, 2009 14 Dec

2009

Schedule 2 (items 8–15):

30 Jan 2012 (see

F2011L02397)

Sch. 2 (item 15)

Crimes Legislation

Amendment (Serious

and Organised Crime)

Act (No. 2) 2010

4, 2010 19 Feb

2010

Schedule 10 (item 22):

20 Feb 2010

Statute Law Revision

Act 2010

8, 2010 1 Mar 2010 Schedule 1 (item 39):

Royal Assent

Personal Property

Securities (Corporations

and Other Amendments)

Act 2010

96, 2010 6 July 2010 Schedule 3 (item 16): (h)

Trade Practices

Amendment (Australian

Consumer Law) Act

(No. 2) 2010

103, 2010 13 July

2010

Schedule 6 (items 1, 82):

1 Jan 2011

Statute Law Revision

Act 2011

5, 2011 22 Mar

2011

Schedule 7 (items 108,

109): 19 Apr 2011

Acts Interpretation

Amendment Act 2011

46, 2011 27 June

2011

Schedule 2 (items 905–

907) and Schedule 3

(items 10, 11): 27 Dec

2011

Sch. 3 (items 10,

11)

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 3—Legislation history

188 Patents Act 1990

Act Number

and year

Assent Commencement Application,

saving and

transitional

provisions

Intellectual Property

Laws Amendment

(Raising the Bar) Act

2012

35, 2012 15 Apr

2012

Schedule 1, Schedule 3

(items 1–16, 32(1)–(6),

33), Schedule 4

(items 1–36) and

Schedule 6 (items 23–86,

88–103, 133, 134): 15

Apr 2013

Schedule 2 and

Schedule 6 (item 87): 16

Apr 2012

Sch. 1 (items 55,

56), Sch. 2

(item 2), Sch. 3

(items 32(1)–(6),

33) and Sch. 6

(items 133, 134)

Statute Law Revision

Act 2013

103, 2013 29 June

2013

Schedule 4 (items 17,

18): Royal Assent

Statute Law Revision

Act (No. 1) 2014

31, 2014 27 May

2014

Sch 1 (items 53, 54):

24 June 2014

(a) Subsection 2(4) of the Industry, Technology and Commerce Legislation

Amendment Act 1991 provides as follows:

(4) The amendments of the Patents Act 1990 are taken to commence, or to

have commenced, immediately after the commencement of the Patents

Act 1990.

(b) The Patents Act 1990 was amended by Schedule 1 (items 728–730) only of

the Public Employment (Consequential and Transitional) Amendment Act

1999, subsections 2(1) and (2) of which provide as follows:

(1) In this Act, commencing time means the time when the Public Service

Act 1999 commences.

(2) Subject to this section, this Act commences at the commencing time.

(c) The Patents Amendment (Innovation Patents) Act 2000 was amended by

Schedule 2 only of the Trade Marks and Other Legislation Amendment Act

2001, subsection 2(3) of which provides as follows:

(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.

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 3—Legislation history

Patents Act 1990 189

(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,

Part 3

Immediately after the time specified in the Patents

Amendment (Innovation Patents) Act 2000 for the

commencement of item 3 of Schedule 1 to that Act

24 May 2001

(e) The Patents Act 1990 was amended by Schedule 3 (item 401) only of the

Corporations (Repeals, Consequentials and Transitionals) Act 2001,

subsection 2(3) of which provides as follows:

(3) Subject to subsections (4) to (10), Schedule 3 commences, or is taken to

have commenced, at the same time as the Corporations Act 2001.

(f) Subsection 2(4) of the Patents Amendment Act 2001 provides as follows:

(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

(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.

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 3—Legislation history

190 Patents Act 1990

Provision(s) Commencement Date/Details

13. Schedule 3,

item 16

Immediately after the commencement of item 14 of

Schedule 2 to the Personal Property Securities

(Consequential Amendments) Act 2009.

30 January 2012

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

Patents Act 1990 191

Endnote 4—Amendment history

Provision affected How affected

Chapter 1

s. 3 .................................................am. Nos. 108 and 154, 1994; No. 100, 1998; No. 140, 2000; No. 48,

2003; No. 131, 2009; No. 35, 2012

s. 4 .................................................rs. No. 140, 2000

rep. No. 35, 2012

s. 6 .................................................am. No. 100, 1998

Heading to s. 7...............................am. No. 35, 2012

Subheads. to s. 7(1), (2).................ad. No. 140, 2000

s. 7 .................................................am. No. 140, 2000; No. 160, 2001; No. 35, 2012

Note 1 to s. 7 .................................am. No. 46, 2011

Note 2 to s. 7 .................................am. No. 35, 2012

s. 7A ..............................................ad. No. 35, 2012

s. 8 .................................................rep. No. 35, 2012

s. 9 .................................................am. No. 35, 2012

s. 10 ...............................................am. No. 35, 2012

Note to s. 10 ..................................am. No. 35, 2012

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. 22A ............................................ad. No. 35, 2012

s. 24 ...............................................am. No. 140, 2000; No. 8, 2010; No. 35, 2012

s. 26 ...............................................am. No. 35, 2012

Division 3

s. 28 ...............................................rs. No. 140, 2000

Chapter 3

Part 1

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

192 Patents Act 1990

Provision affected How affected

Division 1

Heading to s. 29.............................am. No. 35, 2012

s. 29A ............................................ad. No. 35, 2012

s. 29B ............................................ad. No. 35, 2012

s. 30 ...............................................am. No. 35, 2012

s. 32 ...............................................am. No. 35, 2012

ss. 33, 34........................................rs. No. 140, 2000

s. 35 ...............................................am. No. 140, 2000; No. 35, 2012

s. 36 ...............................................rs. No. 140, 2000

am. No. 35, 2012; No 31, 2014

s. 38 ...............................................am. No. 35, 2012

s. 39 ...............................................rep. No. 140, 2000

Division 2

s. 40 ...............................................am. No. 140, 2000; No. 106, 2006; No. 35, 2012

Division 3

s. 43 ...............................................am. No. 140, 2000; No. 35, 2012

s. 43AA .........................................ad. No. 35, 2012

Part 2

Heading to Part 2...........................

of Chapt. 3

rs. No. 140, 2000

Division 1A

Div. 1A of Part 2 of .......................

Chapt. 3

ad. No. 35, 2012

s. 43A ............................................ad. No. 35, 2012

Division 1

s. 45 ...............................................am. No. 140, 2000; No. 160, 2001; No. 48, 2003; No. 35, 2012

s. 46 ...............................................rep. No. 35, 2012

Div. 2 of Part 2 of..........................

Chapt. 3

rep. No. 35, 2012

s. 47 ...............................................rep. No. 35, 2012

s. 48 ...............................................am. No. 140, 2000; No. 160, 2001

rep. No. 35, 2012

Part 3

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

Patents Act 1990 193

Provision affected How affected

Division 1

Heading to Div. 1 of Part 3............

of Chapt. 3

ad. No. 140, 2000

s. 49 ...............................................am. No. 140, 2000; No. 160, 2001; No. 35, 2012

s. 49A ............................................ad. No. 35, 2012

s. 50 ...............................................rs. No. 140, 2000

s. 50A ............................................ad. No. 35, 2012

s. 51 ...............................................rs. No. 140, 2000

am. No. 35, 2012

Division 2

Heading to Div. 2 of Part 3............

of Chapt. 3

ad. No. 140, 2000

s. 52 ...............................................rs. No. 140, 2000

am. No. 35, 2012

Chapter 4

s. 53 ...............................................rs. No. 35, 2012

s. 54 ...............................................am. No. 140, 2000

s. 55 ...............................................am. No. 140, 2000; No. 35, 2012

s. 56 ...............................................am. No. 66, 1991

s. 56A ............................................ad. No. 35, 2012

s. 57 ...............................................am. No. 140, 2000; No. 35, 2012; No 31, 2014

Chapter 5

Heading to Chapt. 5.......................rs. No. 140, 2000

s. 59 ...............................................am. No. 140, 2000; No. 120, 2004

s. 60 ...............................................am. No. 35, 2012

Chapter 6

Part 1

s. 61 ...............................................am. No. 160, 2001; No. 35, 2012

s. 62 ...............................................rs. No. 140, 2000

am. No. 35, 2012

s. 64 ...............................................am. No. 140, 2000

s. 66 ...............................................am. No. 140, 2000

rep. No. 35, 2012

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

194 Patents Act 1990

Provision affected How affected

Part 2

s. 67 ...............................................am. No. 154, 1994

s. 68 ...............................................rs. No. 140, 2000

Part 3

Heading to Part 3...........................

of Chapt. 6

rs. No. 140, 2000

Heading to Div. 1 of Part 3............

of Chapt. 6

rep. No. 154, 1994

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............

of Chapt. 6

rep. No. 140, 2000

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: No. 5, 2011

s. 71 ...............................................rep. No. 154, 1994

ad. No. 100, 1998

s. 72 ...............................................rep. No. 154, 1994

ad. No. 100, 1998

s. 73 ...............................................rep. No. 154, 1994

ad. No. 100, 1998

s. 74 ...............................................rep. No. 154, 1994

ad. No. 100, 1998

am. No. 35, 2012

s. 75 ...............................................rep. No. 154, 1994

ad. No. 100, 1998

s. 76 ...............................................rep. No. 154, 1994

ad. No. 100, 1998

s. 76A ............................................ad. No. 100, 1998

s. 77 ...............................................rep. No. 154, 1994

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

Patents Act 1990 195

Provision affected How affected

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

rs. No. 35, 2012

s. 79C ............................................ad. No. 140, 2000

am. No. 106, 2006; No. 35, 2012

Chapter 7

s. 80 ...............................................rs. No. 140, 2000

s. 81 ...............................................am. No. 35, 2012

s. 83 ...............................................am. No. 154, 1994

rs. No. 100, 1998

am. No. 100, 2005

s. 84 ...............................................rep. No. 154, 1994

Chapt. 8 .........................................rep. No. 35, 2012

s. 88 ...............................................am. No. 140, 2000

rep. No. 35, 2012

s. 89 ...............................................am. No. 140, 2000

rep. No. 35, 2012

s. 90 ...............................................rep. No. 35, 2012

s. 91 ...............................................rep. No. 35, 2012

s. 92 ...............................................rep. No. 35, 2012

s. 93 ...............................................rep. No. 35, 2012

s. 94 ...............................................rep. No. 35, 2012

s. 95 ...............................................rep. No. 35, 2012

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

196 Patents Act 1990

Provision affected How affected

s. 96 ...............................................rep. No. 35, 2012

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; No. 35, 2012

s. 98 ...............................................am. No. 140, 2000; No. 160, 2001

rs. No. 35, 2012

s. 99 ...............................................am. No. 140, 2000

s. 100 .............................................am. No. 66, 1991

s. 100A ..........................................ad. No. 160, 2001

am. No. 35, 2012

Heading to s. 101...........................rs. No. 160, 2001

s. 101 .............................................am. No. 66, 1991; No. 35, 2012

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

rs. No. 35, 2012

s. 101C ..........................................ad. No. 140, 2000

s. 101D ..........................................ad. No. 140, 2000

rs. No. 160, 2001; No. 48, 2003

rep. No. 35, 2012

s. 101E...........................................ad. No. 140, 2000

am. No. 160, 2001

rs. No. 35, 2012

s. 101EA........................................ad. No. 35, 2012

s. 101F...........................................ad. No. 140, 2000

am. No. 35, 2012

Part 2

s. 101G ..........................................ad. No. 140, 2000

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

Patents Act 1990 197

Provision affected How affected

am. No. 160, 2001; No. 35, 2012

s. 101H ..........................................ad. No. 140, 2000

s. 101J............................................ad. No. 140, 2000

am. No. 35, 2012

s. 101K ..........................................ad. No. 140, 2000

s. 101L...........................................ad. No. 140, 2000

Part 3

s. 101M..........................................ad. No. 140, 2000

rs. No. 35, 2012

s. 101N ..........................................ad. No. 140, 2000

am. No. 35, 2012

s. 101P...........................................ad. No. 140, 2000

Chapter 10

Part 1

Subhead. to s. 102(1) .....................ad. No. 140, 2000

rs. No. 35, 2012

s. 102 .............................................am. No. 140, 2000; No. 160, 2001; No. 35, 2012

s. 103 .............................................am. No. 35, 2012

Part 2

s. 104 .............................................am. No. 120, 2004

Subhead. to s. 105(1) .....................ad. No. 35, 2012

Subhead. to s. 105(2) .....................ad. No. 35, 2012

s. 105 .............................................am. No. 35, 2012

s. 106 .............................................am. No. 140, 2000; No. 35, 2012

Heading to s. 107...........................am. No. 140, 2000

s. 107 .............................................am. No. 140, 2000; No. 35, 2012

s. 108 .............................................rep. No. 140, 2000

s. 109 .............................................am. No. 140, 2000

Part 3

s. 111 .............................................rep. No. 140, 2000

s. 112A ..........................................ad. No. 35, 2012

s. 114 .............................................am. No. 140, 2000

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

198 Patents Act 1990

Provision affected How affected

rs. No. 35, 2012

Heading to s. 114A........................am. No. 35, 2012

s. 114A ..........................................ad. No. 140, 2000

am. No. 35, 2012

Chapter 11

Part 1

s. 119 .............................................am. No. 160, 2001

rs. No. 106, 2006

s. 119A ..........................................ad. No. 106, 2006

ss. 119B, 119C ..............................ad. No. 35, 2012

s. 120 .............................................am. No. 140, 2000

s. 121A ..........................................ad. No. 154, 1994

s. 122 .............................................am. No. 106, 2006

Part 2

s. 125 .............................................rs. No. 35, 2012

s. 126 .............................................am. No. 140, 2000

rs. No. 35, 2012

s. 127 .............................................rs. No. 35, 2012

Part 3

s. 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

s. 132 .............................................am. No. 35, 2012

Chapter 12

s. 133 .............................................am. No. 154, 1994; No. 140, 2000; No. 106, 2006; No. 103, 2010

Heading to s. 134...........................am. No. 140, 2000

s. 134 .............................................am. No. 140, 2000; No. 106, 2006; No. 103, 2010

s. 135 .............................................am. No. 35, 2012

s. 136A ..........................................ad. No. 106, 2006

s. 138 .............................................am. No. 140, 2000; No. 120, 2004; No. 35, 2012

Chapter 13

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

Patents Act 1990 199

Provision affected How affected

s. 141 .............................................rs. No. 140, 2000

am. No. 35, 2012

s. 142 .............................................am. No. 140, 2000; No. 160, 2001; No. 35, 2012

s. 143A ..........................................ad. No. 140, 2000

am. No. 160, 2001; No. 35, 2012

s. 143B ..........................................ad. No. 160, 2001

Chapter 14

s. 144 .............................................am. No. 140, 2000

Chapter 15

s. 150 .............................................am. No. 35, 2012

s. 151 .............................................am. No. 140, 2000; No. 35, 2012

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. 177 .............................................am. No. 35, 2012

s. 178 .............................................am. No. 140, 2000; No. 35, 2012

s. 179 .............................................am. No. 140, 2001

rep. No. 35, 2012

s. 180 .............................................am. No. 140, 2001

rep. No. 35, 2012

s. 181 .............................................am. No. 140, 2001

rep. No. 35, 2012

s. 182 .............................................am. No. 35, 2012

s. 183 .............................................am. No. 35, 2012

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

200 Patents Act 1990

Provision affected How affected

s. 185 .............................................rs. No. 100, 1998

Chapter 19

s. 186 .............................................am. No. 140, 2000

s. 187 .............................................rs. No. 140, 2000

s. 189 .............................................am. No. 131, 2009

s. 191 .............................................am. No. 140, 2001

s. 191A ..........................................ad. No. 35, 2012

ss. 195, 196....................................am. No. 131, 2009

s. 197AA .......................................ad. No. 35, 2012

Chapter 20

Part 1

Subhead. to s. 198(4) .....................ad. No. 35, 2012

s. 198 .............................................rs. No. 100, 1998

am. No. 35, 2012

s. 200 .............................................am. No. 100, 1998; No. 35, 2012

s. 200A ..........................................ad. No. 100, 1998

rs. No. 146, 1999

am. No. 5, 2011

Part 2

s. 201 .............................................am. No. 100, 1998; No. 55, 2001

rs. No. 35, 2012

s. 201A ..........................................ad. No. 35, 2012

s. 201B ..........................................ad. No. 35, 2012

s. 202 .............................................am. No. 35, 2012

s. 202A ..........................................ad. No. 100, 1998

s. 202B ..........................................ad. No. 35, 2012

s. 203 .............................................rs. No. 35, 2012

s. 204 .............................................am. No. 100, 1998; No. 140, 2000

Chapter 21

s. 205 .............................................am. No. 35, 2012

ss. 207–209....................................am. No. 58, 1994

Subhead. to s. 210(1) .....................ad. No. 35, 2012

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 4—Amendment history

Patents Act 1990 201

Provision affected How affected

s. 210 .............................................am. No. 35, 2012

s. 210A ..........................................ad. No. 35, 2012

Chapter 22

s. 213 .............................................am. No. 100, 1998

s. 214 .............................................rs. No. 35, 2012

s. 215 .............................................am. No. 35, 2012

s. 220 .............................................am. No. 100, 1998

s. 222A ..........................................ad. No. 106, 2006

am. No. 35, 2012

s. 223 .............................................am. No. 66, 1991; No. 154, 1994; No. 140, 2000; No. 160, 2001; No. 48,

2003; No. 35, 2012

s. 224 .............................................am. No. 100, 1998; No. 140, 2000; No. 35, 2012

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. 226 .............................................rs. No. 35, 2012

s. 227 .............................................am. No. 100, 1998; No. 140, 2000

Note to s. 227(3)............................am. No. 35, 2012

s. 227A ..........................................ad. No. 100, 1998

s. 228 .............................................am. No. 140, 2000; No. 35, 2012

s. 229 .............................................rep. No. 103, 2013

s. 230 .............................................rep. No. 103, 2013

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;

No. 131, 2009; No. 96, 2010; No. 46, 2011; No. 35, 2012

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

ComLaw Authoritative Act C2014C00301

Endnotes

Endnote 5—Uncommenced amendments [none]

202 Patents Act 1990

Endnote 5—Uncommenced amendments [none]

Endnote 6—Modifications [none]

Endnote 7—Misdescribed amendments [none]

Endnote 8—Miscellaneous [none]

ComLaw Authoritative Act C2014C00301


立法 取代 (9 文本) 取代 (9 文本) 被以下文本修正 (3 文本) 被以下文本修正 (3 文本) 被以下文本取代 (7 文本) 被以下文本取代 (7 文本)
无可用数据。

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