Legislative Implementation of Flexibilities - Australia
| Title: | Sections 6, 8, 40 (1) and (2) (a), 41 (1) and (2), 45 (3), (4) and (5), 59 (c), 100A (1) and (2) and 100 (1) and (2) of the Patens Act No. 83 of 1990 as amended by Act No. 106 of 2006 |
| Field of IP: | Patents |
| Type of flexibility: | Disclosure related flexibilities |
| Summary table: |  |
Provisions of Law
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 filing, acceptance 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.
8 - Disclosure in basic applications
Subject to the regulations, account must not be taken, for the purposes of this Act, of a disclosure in a specification or other document filed in respect of, and at the same time as, a basic application unless the following documents are filed within the prescribed period:
(a) a copy of the specification or document;
(b) if the specification or document is not in English - a translation of the specification or document into English.
40 - Specifications
(1) A provisional specification must describe the invention.
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
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:
(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.
45 - Examination
(3) The applicant must inform the Commissioner, in accordance with the regulations, of the results of the following searches carried out for the purpose of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia:
(a) any documentary searches by, or on behalf of, a foreign patent office, other than searches prescribed by the regulations;
(b) the documentary searches prescribed by the regulations.
(4) Subsection (3) only applies to searches completed before the grant of the patent.
(5) In subsection (4):
completed, in relation to a search, has the meaning prescribed by the regulations.
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:
(c) that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3).
100A Refusal to grant patent - re-examination before grant
(1) Where the Commissioner makes an adverse report on a re-examination under subsection 97(1), the Commissioner may refuse to grant the patent (see subsection 61(1)).
(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.
101 - Revocation of patent - re-examination after grant
(1) Where the Commissioner makes an adverse report on a re-examination under subsection 97(2), the Commissioner may, by notice in writing, revoke the patent, either wholly or so far as it relates to a particular claim, as the case requires.
(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.