[pic] Patents Act 1990 Act No. 83 of 1990 as amended This compilation was prepared on 27 March 2007 taking into account amendments up to Act No. 106 of 2006 The text of any of those amendments not in force on that date is appended in the Notes section The operation of amendments that have been incorporated may be affected by application provisions that are set out in the Notes section Prepared by the Office of Legislative Drafting and Publishing, Attorney-General's Department, Canberra Contents Chapter 1-Introductory 1 1 Short title [see Note 1] 1 2 Commencement [see Note 1] 1 3 Definitions 1 4 What are the typical steps in getting and maintaining a standard patent? 3 5 Associated applications 6 6 Deposit requirements 6 7 Novelty and inventive step 6 8 Disclosure in basic applications 8 9 Secret use 8 10 Certain international applications to be taken to have been given an international filing date 9 11 Act binds the Crown 10 12 Application of Act 10 12A Application of the Criminal Code 10 Chapter 2-Patent rights, ownership and validity 11 Part 1-Patent rights 11 13 Exclusive rights given by patent 11 14 Assignment of patent 11 Part 2-Ownership 12 15 Who may be granted a patent? 12 16 Co-ownership of patents 12 17 Directions to co-owners 13 Part 3-Validity 14 Division 1-Validity 14 18 Patentable inventions 14 19 Certificate of validity 15 20 Validity of patent not guaranteed 15 21 Validity not implied by making or refusal of non- infringement declaration 16 Division 2-Matters not affecting validity 17 22 Invalidity in relation to one claim not to affect validity in relation to other claims 17 23 Validity not affected by publication etc. after priority date 17 24 Validity not affected by certain publication or use 17 25 Validity: patents of addition 18 26 Validity not affected in certain cases involving amendments 18 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 21 30 Filing date 21 31 Joint applicants 21 32 Disputes between applicants etc. 21 33 Applications by opponents etc. 22 34 Applications by eligible persons arising out of Court proceedings 24 35 Applications by eligible persons following revocation by Commissioner 24 36 Other applications by eligible persons 25 37 Complete application may be treated as provisional 26 38 Time for making complete application 26 Division 2-Specifications 28 40 Specifications 28 41 Specifications: micro-organisms 28 42 Micro-organisms ceasing to be reasonably available 29 Division 3-Priority dates 31 43 Priority dates 31 Part 2-Examination of standard patent requests and specifications 32 Division 1-Examination 32 44 Request for examination 32 45 Examination [see also Table B] 32 46 Request for deferment of examination 33 Division 2-Modified examination 35 47 Request for modified examination 35 48 Modified examination [see also Table B] 35 Part 3-Acceptance 36 Division 1-Acceptance of standard patents 36 49 Acceptance of patent request: standard patent 36 50 Application or grant may be refused in certain cases 37 51 Appeal 37 Division 2-Acceptance of innovation patents 38 52 Formalities check and acceptance of innovation patents 38 Chapter 4-Publication 39 53 Publication of certain information about applicants etc. [see also Table B] 39 54 Notice of publication 39 55 Documents open to public inspection 40 56 Certain documents not to be published 41 57 Effect of publication of complete specification 41 58 Result of search may be disclosed 42 Chapter 5-Opposition to grant of standard patent 43 59 Opposition to grant of standard patent 43 60 Hearing and decision by Commissioner 43 Chapter 6-Grant and term of patents 44 Part 1-Grant 44 61 Grant of standard patent 44 62 Grant and publication of innovation patent 44 63 Joint patentees 45 64 Grant: multiple applications 45 65 Date of patent 45 66 Sealing of duplicate of patent 45 Part 2-Term 47 67 Term of standard patent 47 68 Term of innovation patent 47 Part 3-Extension of term of standard patents relating to pharmaceutical substances 48 70 Applications for extension of patent 48 71 Form and timing of an application 49 72 Notification and public inspection of application 50 73 Withdrawal of application 50 74 Acceptance or refusal of application 50 75 Opposition to grant of extension 51 76 Grant of extension 51 76A Notification of extension to the Secretary, Health and Family Services 51 77 Calculation of term of extension 52 78 Exclusive rights of patentee are limited if extension granted 52 79 Rights of patentee if extension granted after patent expires 53 79A Commissioner not to make decision if court proceedings pending 53 Chapter 6A-Divisional applications 54 79B Divisional applications prior to grant of patent 54 79C Divisional applications for innovation patents may be made after grant of an innovation patent 54 Chapter 7-Patents of addition 56 80 Chapter does not apply to innovation patents 56 81 Grant of patent of addition 56 82 Revocation of patent and grant of patent of addition instead 56 83 Term of patent of addition 57 85 Revocation of patent for main invention 58 86 Renewal fees not payable 58 87 Fees payable where patent of addition becomes an independent patent 58 Chapter 8-PCT applications and convention applications 59 Part 1-PCT applications 59 88 PCT applications 59 89 Modified application of Act [see also Table B] 59 90 Publication of PCT applications [see also Table B] 60 91 Application of certain provisions to PCT applications 61 92 Notice of publication [see also Table B] 61 93 Evidence of matters arising under PCT 62 Part 2-Convention applications 63 94 Convention applicants may make Convention applications 63 95 Manner of making Convention application 63 96 Withdrawn, abandoned or refused applications 63 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 101D Commissioner to be given information on searches 70 101E 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 72 101J Revocation of innovation patent following re-examination 73 101K Relevant proceedings and re-examination 73 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 Part 2-Amendments of patent requests, specifications and other filed documents 79 104 Amendments by applicants and patentees 79 105 Amendments directed by court 80 106 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 83 113 Persons claiming under assignment or agreement 83 114 Priority date of certain amended claims 83 114A Objection cannot be taken to certain amended claims 84 115 Restriction on recovery of damages etc. 84 116 Interpretation of amended specifications 84 Chapter 11-Infringement 85 Part 1-Infringement and infringement proceedings 85 117 Infringement by supply of products 85 118 Infringement exemptions: use in or on foreign vessels, aircraft or vehicles 85 119 Infringement exemptions: prior use 86 119A Infringement exemptions: acts for obtaining regulatory approval of pharmaceuticals 87 120 Infringement proceedings 88 121 Counter-claim for revocation of patent 89 121A Burden of proof-infringement of patent for a process 89 122 Relief for infringement of patent 90 123 Innocent infringement 90 Part 2-Non-infringement declarations 92 124 Interpretation 92 125 Application for non-infringement declaration 92 126 Proceedings for non-infringement declarations 92 127 Effect of non-infringement declarations 93 Part 3-Unjustified threats of infringement proceedings 94 128 Application for relief from unjustified threats 94 129 Court's power to grant relief if threats related to a standard patent or standard patent application 94 129A Threats related to an innovation patent application or innovation patent and court's power to grant relief 94 130 Counter-claim for infringement 95 131 Notification of patent not a threat 96 132 Liability of legal practitioner or patent attorney 96 Chapter 12-Compulsory licences and revocation of patents 97 133 Compulsory licences 97 134 Revocation of patent after grant of compulsory licence 99 135 Reasonable requirements of the public 99 136 Orders to be consistent with international agreements 100 136A Dealing with allegation of contravention of application law 100 137 Revocation on surrender of patent 100 138 Revocation of patents in other circumstances 101 139 Parties to proceedings 101 140 Commissioner to be given copies of orders 102 Chapter 13-Withdrawal and lapsing of applications and ceasing of patents 103 141 Withdrawal of applications [see also Table B] 103 142 Lapsing of applications [see also Table B] 103 143 Ceasing of patents 104 143A Ceasing of innovation patents 104 143B Payment of fees 104 Chapter 14-Contracts 105 144 Void conditions 105 145 Termination of contract after patent ceases to be in force 106 146 Effect of Chapter 106 Chapter 15-Special provisions relating to associated technology 107 147 Certificate by Director as to associated technology 107 148 Lapsing etc. of applications 107 149 Revocation of direction 108 150 Restoration of lapsed application 108 151 Reinstatement of application as an international application 109 152 Notice of prohibitions or restrictions on publication 110 153 Effect of order 110 Chapter 16-Jurisdiction and powers of courts 112 154 Jurisdiction of Federal Court 112 155 Jurisdiction of other prescribed courts 112 156 Exercise of jurisdiction 112 157 Transfer of proceedings 113 158 Appeals 113 159 Commissioner may appear in appeals 113 160 Powers of Federal Court 114 Chapter 17-The Crown 115 Part 1-Introductory 115 161 Nominated persons and patentees 115 162 Commonwealth and State authorities 115 Part 2-Exploitation by the Crown 116 163 Exploitation of inventions by Crown 116 164 Nominated person or patentee to be informed of exploitation 116 165 Remuneration and terms for exploitation 117 165A Exploitation of invention to cease under court order 117 166 Previous agreements inoperative 117 167 Sale of products 118 168 Supply of products by Commonwealth to foreign countries 118 169 Declarations that inventions have been exploited 118 170 Sale of forfeited articles 119 Part 3-Acquisitions by and assignments to the Crown 120 171 Acquisition of inventions or patents by Commonwealth 120 172 Assignment of invention to Commonwealth 120 Part 4-Prohibition orders 121 173 Prohibition of publication of information about inventions 121 174 Effect of prohibition orders 121 175 Disclosure of information to Commonwealth authority 122 176 International applications treated as applications under this Act 122 Chapter 18-Miscellaneous offences 123 177 False representations about the Patent Office 123 178 False representations about patents or patented articles 123 179 Failure to comply with summons 124 180 Refusal to give evidence 124 181 Failure to produce documents or articles 125 182 Officers not to traffic in inventions 125 183 Unauthorised disclosure of information by employees etc. 125 184 Other unauthorised disclosures of information 126 185 Commissioner etc. not to prepare documents or search records 126 Chapter 19-The Register and official documents 127 186 Register of Patents 127 187 Registration of particulars of patents etc. 127 188 Trusts not registrable 128 189 Power of patentee to deal with patent 128 190 Inspection of Register 128 191 False entries in Register 128 192 Orders for rectification of Register 129 193 Inspection of documents 129 194 Information obtainable from Commissioner 129 195 Evidence-the Register 130 196 Evidence-unregistered particulars 130 197 Evidence-certificate and copies of documents 130 Chapter 20-Patent Attorneys 131 Part 1-Registration, privileges and professional conduct 131 198 Registration of patent attorneys 131 199 Deregistration 132 200 Privileges 132 200A Designated Manager 133 Part 2-Offences 134 201 Offences: unregistered persons etc. 134 202 Documents prepared by legal practitioners 135 202A Documents prepared by a member of a partnership 136 203 Attendance at patent attorney's office 136 204 Time for starting prosecutions 136 Chapter 21-Administration 137 205 Patent Office and sub-offices 137 206 Patent Office seal 137 207 Commissioner of Patents 137 208 Deputy Commissioner of Patents 137 209 Delegation of Commissioner's powers and functions 138 210 Commissioner's powers 138 211 Recovery of costs awarded by Commissioner 138 Chapter 22-Miscellaneous 139 212 Copies of examination reports to be communicated 139 213 Making and signing applications etc. 139 214 Filing of documents 139 215 Death of applicant or nominated person 139 216 Exercise of discretionary power by Commissioner 140 217 Assessors 140 218 Costs where patent invalid in part 140 219 Security for costs 140 220 Costs of attendance of patent attorney 140 221 Service of documents 141 222 Publication of Official Journal etc. 141 222A Doing act when Patent Office reopens after end of period otherwise provided for doing act 141 223 Extensions of time [see also Table B] 142 224 Review of decisions 144 225 Conduct of employees and agents of natural persons 145 226 Reproduction of published specifications does not infringe copyright 146 227 Fees 146 227A Professional Standards Board for Patent and Trade Marks Attorneys 147 228 Regulations 149 229 Consequential amendments 153 230 Repeal 153 Chapter 23-Transitional and savings provisions 154 231 Application of Part III of 1989 Amending Act 154 233 Patents granted under 1952 Act 154 234 Applications under 1952 Act 154 235 Other applications and proceedings under 1952 Act 155 236 Micro-organisms 156 237 Orders, directions etc. under 1952 Act 156 238 The Commissioner and Deputy Commissioner 156 239 The Register of Patents and Register of Patent Attorneys 156 240 Registered patent attorneys 156 Schedule 1-Dictionary 157 Schedule 2-Consequential Amendments 167 Notes 169 An Act relating to patents of inventions Chapter 1-Introductory 1 Short title [see Note 1] This Act may be cited as the Patents Act 1990. 2 Commencement [see Note 1] (1) Subject to subsection (2), this Act commences on a day to be fixed by Proclamation. (2) If this Act does not commence under subsection (1) within the period of 6 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period. 3 Definitions The following expressions are defined, for the purposes of this Act or of a particular Chapter of this Act, in the dictionary in Schedule 1: application approved form associated technology Australia Australian continental shelf Australian Register of Therapeutic Goods authority basic application Budapest Treaty certified claim commencing day Commissioner compensable person complete specification compulsory licence Convention applicant Convention application Convention country deposit requirements depositary institution Deputy Commissioner Designated Manager Director eligible person employee examination exclusive licensee exploit Federal Court file foreign aircraft foreign land vehicle foreign patent office foreign vessel formalities check infringement proceedings innovation patent interested party international application international depositary authority international filing date invention legal practitioner legal representative licence main invention modified examination nominated person non-infringement declaration Official Journal patent patent application patent area patent of addition Patent Office patent request patentable invention patented process patented product patentee PCT PCT application permit pharmaceutical substance prescribed court prescribed depositary institution prior art base prior art information Professional Standards Board prohibition order provisional specification receiving Office re-examination Register registered registered patent attorney relevant authority relevant international application relevant proceedings rules relating to micro-organisms Safeguards Act sealed specification standard patent State Statute of Monopolies supply Territory therapeutic use this Act work 1952 Act 1989 Amending Act 4 What are the typical steps in getting and maintaining a standard patent? The following diagram shows most of the typical steps involved in getting and maintaining a standard patent. The diagram is intended for use only as a general introductory illustration and is not intended to have any other effect. If there is an inconsistency between any matter contained in the diagram and a provision of this Act or the regulations, the provision prevails. TABLE 1-GETTING AND MAINTAINING A STANDARD PATENT 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] 7 Novelty and inventive 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 in 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; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph. Innovative step (4) For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from 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 25 of the Acts Interpretation Act 1901. (2) See also the definitions of prior art base and prior art information in Schedule 1: see also paragraph 18(1)(b) and subsection 98(1).] 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. [Note: basic application is defined in Schedule 1: see also Part 2 of Chapter 8.] 9 Secret use For the purposes of this Act, the following acts are not to be taken to be secret use of an invention in the patent area: (a) any use of the invention by or on behalf of, or with the authority of, the patentee or nominated person, or his or her 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. [Note: See also paragraph 18(1)(d)] 10 Certain international applications to be taken to have been given an international filing date (1) Where: (a) an international application specifies Australia as a designated State under Article 4(1)(ii) of the PCT; and (b) the receiving Office does not give the application an international filing date; and (c) the Commissioner is satisfied 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: see also Chapter 8.] 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. 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. 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. 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. 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. 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 (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. (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. Division 2-Matters not affecting validity 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, through any publication or use of the invention 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 information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee; but only if a patent 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 of 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, objection cannot be taken to a patent request and specification that have been accepted, and a patent is not invalid, merely because an amendment of the specification has been made that was not allowable. 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. 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. Chapter 3-From application to acceptance Part 1-Patent applications Division 1-Applications 29 Application for patent (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.] 30 Filing date A patent 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. If a dispute arises between any 2 or more interested parties 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 parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires. 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 (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. (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: (i) on application made by one or more persons in accordance with the regulations, that the persons are eligible persons in relation to the invention concerned, so far as so claimed in any claim of the revoked patent (the original claim) and that the former patentee is not such an eligible person; or (ii) on application made by one or more persons in accordance with the regulations, that the persons and the former patentee are eligible persons in relation to the invention concerned, so far as is claimed in any claim of the revoked patent (the original claim); the Commissioner may declare in writing that the eligible persons are such eligible persons. (1A) If a complete application is made under section 29 by one or more of the declared persons, the Commissioner may grant a patent for the invention, so far as so claimed, to those declared persons jointly. (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 request and complete specification have not been accepted; 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, in relation to an invention disclosed in the specification filed in relation to the application for the patent: (i) that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or (ii) that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons; the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed. (2) The Commissioner may make a declaration under subsection (1) whether or not the patent application lapses or is withdrawn. (3) The Commissioner must not make a declaration under subsection (1) without first giving the nominated person a reasonable opportunity to be heard. (4) If a complete application is made under section 29 by one or more of the declared persons, the priority date of the claims of a patent for the invention granted to the person, or persons, as the case may be, must be determined under the regulations. (5) An appeal lies to the Federal Court against a decision by the Commissioner under this section. 37 Complete application may be treated as provisional (1) Where a complete application is made, the applicant may, at any time during the prescribed period, by written request, ask the Commissioner to direct that the application be treated as a provisional application. (2) A person is not entitled to make a request if the patent request and specification filed in respect of the application have been accepted or have become open to public inspection. (3) On receiving a request, the Commissioner must give a direction as asked. (4) Where the Commissioner gives a direction, the complete application is to be taken, for the purposes of this Act, to be, and to have always been, a provisional application. 38 Time for making complete application (1) If an applicant makes a provisional application, the applicant may make one or more complete applications associated with the provisional application at any time within the prescribed period. (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.] Division 2-Specifications 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 (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 fairly based on the matter described in the specification. (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: (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.] 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. (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.] 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) the date of filing of the specification; or (b) where the regulations provide for the determination of a different date as the priority date-the date determined under the regulations. (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. Priority date if claim arises from further application for an innovation patent provided for in section 79C (5) If: (a) an innovation patent has been granted following an application provided for in section 79C; and (b) a request for the examination of the patent has been made within the period prescribed in the regulations; the priority date of each claim in the specification is the date determined under the regulations. (6) If: (a) an innovation patent has been granted following an application provided for in section 79C; and (b) a request for the examination of the patent has not been made within the period prescribed in the regulations; the priority date of each claim in the specification must not be a date earlier than the date of filing of the application provided for in section 79C. Part 2-Examination of standard patent requests and specifications 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 [see also Table B] (1) Where 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 section 40; and (b) whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criterion mentioned in paragraph 18(1)(a); and (c) whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and 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 (d) such other matters (if any) as are prescribed. (1A) For the purposes of paragraph (1)(c), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area). (2) The examination must be carried out in accordance with the regulations. (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. 46 Request for deferment of examination (1) Where: (a) a complete application for a standard patent has been made; and (b) a prescribed application for a patent has been made in a prescribed foreign country; and (c) a patent has not been granted in respect of the prescribed application; and (d) the applicant has been directed by the Commissioner to ask for an examination of the patent request and specification relating to the application mentioned in paragraph (a), being a direction given on a ground prescribed for the purposes of this paragraph; the applicant may, instead of asking for an examination as directed, ask for deferment of the examination. (2) A request for deferment must be made in accordance with the regulations. (3) Where a request for deferment is made: (a) the examination of the patent request and specification must be deferred accordingly; and (b) the application does not lapse merely because of failure by the applicant to ask for an examination in accordance with the Commissioner's direction. Division 2-Modified examination 47 Request for modified examination (1) Where: (a) a complete application for a standard patent has been made; and (b) a patent has been granted in a prescribed foreign country in respect of a prescribed application made in that country; the applicant may, instead of asking for an examination, ask for a modified examination of the patent request and specification relating to the application. (2) The applicant may withdraw a request for a modified examination at any time before acceptance of the patent request and specification and ask for an examination under section 44 instead. 48 Modified examination [see also Table B] (1) When an applicant asks for a modified 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, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criterion mentioned in paragraph 18(1)(a); and (b) whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and 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) such other matters (if any) as are prescribed. (1A) For the purposes of paragraph (1)(b), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area). (2) The modified examination must be carried out in accordance with the regulations. 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: (a) the Commissioner is satisfied that the invention, so far as claimed, satisfies the criteria mentioned in paragraph 18(1)(b); and (b) the Commissioner considers that: (i) there is no lawful ground of objection (other than a ground in respect of paragraph 18(1)(b)) to the request and specification; or (ii) any such ground of objection has been removed. (2) If subsection (1) does not apply, the Commissioner may refuse to accept the request and specification. (3) The Commissioner must, if asked to do so by the applicant in writing, postpone acceptance of a patent request and complete specification until such day as the applicant specifies. (4) The applicant cannot, for the purposes of subsection (3), specify a day that is after the end of the period prescribed for the purposes of paragraph 142(2)(e). (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) The notice mentioned in paragraph (5)(b) must: (a) if the patent request and complete specification have been subjected to a modified examination-include a statement to the effect that the acceptance has resulted from a modified examination; and (b) if the patent request and complete specification have not already become open to public inspection-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. 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 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. 51 Appeal An appeal lies to the Federal Court against a decision of the Commissioner under this Division. 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 that the application passes the formalities check, the Commissioner must accept the patent request and complete specification. Chapter 4-Publication 53 Publication of certain information about applicants etc. [see also Table B] Where a patent application is made, the Commissioner must publish in the Official Journal the prescribed information about the applicant and the application. 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 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. 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 90, a specification, or other document, is to be taken to have been published on the day on which it becomes open to public inspection unless it has been published otherwise before that day. 56 Certain documents not to be published (1) Except as otherwise provided by this Act, documents of the kind mentioned in section 55: (a) must not be published or be open to public inspection; and (b) are not liable to be inspected or produced before the Commissioner or in a legal proceeding unless the Commissioner, court, or any person having power to order inspection or production, directs that the inspection or production be allowed. (2) Notice of an application for the production in legal proceedings of a document of the kind mentioned in section 55 must be given to the Commissioner, who is entitled to be heard on the application. 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 the act was done) that are alleged to have been infringed by the doing of the act. 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. 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. (4) The applicant, and any opponent, may appeal to the Federal Court against a decision of the Commissioner under this section. Chapter 6-Grant and term of patents Part 1-Grant 61 Grant of standard patent (1) Subject to section 100A, the Commissioner must grant a standard patent, by sealing a standard patent in the approved form, 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. 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 sealing an innovation patent in the approved form. (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: (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. 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. 66 Sealing of duplicate of patent (1) The Commissioner may seal a duplicate of a patent if satisfied that the patent is lost, stolen, damaged or destroyed. (2) If: (a) the Commissioner is satisfied that particulars on a patent are incorrect because of an error or omission by the Commissioner; and (b) the patent is returned to the Commissioner; the Commissioner may seal a duplicate of the patent. 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. 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 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 to 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. 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 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 that the requirements of sections 70 and 71 are satisfied in relation to the application. (4) If the Commissioner refuses to accept the application, the Commissioner must: (a) notify the applicant in writing of the reasons for the refusal; and (b) publish a notice of the refusal in the Official Journal. 75 Opposition to grant of extension (1) The Minister or any other person may, in accordance with the regulations, oppose the grant of an extension of the term of a standard patent on the ground that one or more of the requirements of sections 70 and 71 are not satisfied in relation to the application for the extension. The Minister or other person may not oppose the grant of the extension on any other ground. (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. 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: (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. 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. Chapter 6A-Divisional applications 79B Divisional applications prior to grant of patent (1) If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention: (a) disclosed in the specification filed in respect of the first- mentioned application; and (b) where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal-falling within the scope of the claims of the accepted specification. (1A) The reference to a complete patent application first-mentioned in subsection (1) does not include a reference to a divisional application for an innovation patent provided for in section 79C. (2) In this section: applicant has the same meaning as in section 38. 79C Divisional applications for innovation patents may be made after grant of an innovation patent Applications may be made (1) A patentee of an innovation patent (the first patent) may, in accordance with the regulations, 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 sealed. (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. 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 sealed before the patent for the main invention is sealed. (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; 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 (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. Chapter 8-PCT applications and convention applications Part 1-PCT applications 88 PCT applications (1) Subject to this section, a PCT application must, for the purposes of this Act other than this Part, be treated as a complete application under this Act for a standard patent. (3) The description, drawings and claims contained in a PCT application must be treated as a complete specification filed in respect of the application. (4) The filing date of a PCT application is to be taken to be its international filing date. (5) For the purposes of this Act, an indication, in relation to a deposited micro-organism furnished under Rule 13 bis. 4, in relation to a PCT application, is to be taken to be included in the description contained in the PCT application even if the indication is contained in another document. (6) The reference in subsection (5) to Rule 13 bis. 4 is a reference to Rule 13 bis. 4 of the Regulations mentioned in the definition of PCT in Schedule 1. [Note: international filing date is defined in Schedule 1: see also section 10.] 89 Modified application of Act [see also Table B] (1) A PCT application is to be taken to comply with the prescribed requirements of this Act and the regulations that relate to patent applications for standard patents but is not to be taken, merely because of section 88, to comply with any other such requirements that apply to it. (2) The description, drawings and claims contained in a PCT application are not to be taken, merely because of section 88, to comply with the requirements of section 40. (3) An applicant is not entitled to ask that any action be taken, or that he or she be allowed to take any action, under this Act in relation to a PCT application unless: (a) if the application was not filed in the receiving Office in English-a translation of the application into English, verified in accordance with the regulations, has been filed; and (b) in any case-the prescribed documents have been filed and the prescribed fees paid. (4) If a translation of a PCT application has been filed, being a translation of the kind mentioned in paragraph (3)(a), the description and claims, and any matter associated with the drawings, contained in the application are to be taken to have been amended, on the day on which the translation was filed, by substituting the translation of the description, claims and matter for the original. (5) Where: (a) a PCT application has been amended under Article 19 of the PCT; or (b) a PCT application in respect of which Australia has been elected under Chapter II of the PCT within the period specified in Article 39 of the PCT has been amended under Article 34 of the PCT; or (c) a PCT application has been rectified under Rule 91 of the Regulations mentioned in the definition of PCT in Schedule 1; the description, drawings and claims contained in the application are, for the purposes of this Act, to be taken to have been amended on the day on which that amendment or rectification was made. 90 Publication of PCT applications [see also Table B] A PCT application is to be taken to have become open to public inspection, and to have been published in Australia: (a) where a notice in relation to the application is published under subsection 92(1) or (2)-on the day on which the notice is so published; or (b) where a notice in relation to the application is published under subsection 92(3)-on the day on which a copy of the application, as so published, is received in the Patent Office. 91 Application of certain provisions to PCT applications For the purposes of applying section 57 to a PCT application, references to the complete specification becoming open to public inspection are references to the PCT application being taken to have become open to public inspection under section 90. 92 Notice of publication [see also Table B] (1) Where, in relation to a PCT application that has not lapsed, or been withdrawn or refused: (a) the applicant complies with subsection 89(3); and (b) the applicant asks the Commissioner in writing to publish a notice in the Official Journal that the application is open to public inspection; and (c) the application is not already open to public inspection; the Commissioner must publish a notice in the Official Journal stating that a copy of the application is open to public inspection. (2) Where: (a) a PCT application that has not lapsed, or been withdrawn or refused, is to be treated as an application for a standard patent under this Act; and (b) the applicant complies with subsection 89(3); and (c) the period of 18 months after the priority date of the application has ended; and (d) the application is not already open to public inspection; the Commissioner must publish a notice in the Official Journal stating that a copy of the application is open to public inspection. (3) Where: (a) a copy of a PCT application, as published under Article 21 of the PCT, is received in the Patent Office; and (b) the application has not lapsed, or been withdrawn or refused; and (c) a notice has not been published under subsection (1) or (2); the Commissioner must publish a notice in the Official Journal specifying the date on which the copy was so received and stating that the copy is open to public inspection. (4) Where a notice is published in the Official Journal under this section, a copy of the relevant application and of any other prescribed document is open to public inspection. 93 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. Part 2-Convention applications 94 Convention applicants may make 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, within the prescribed period. (2) Where 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. 95 Manner of making Convention application (1) Subject to this section, a Convention application must be made and dealt with in the same way as any other patent application. (2) 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. (3) In addition to the complete specification, the prescribed documents must be filed within the prescribed period. 96 Withdrawn, abandoned or refused applications (1) Where, at the time when a Convention application is made in respect of an invention: (a) an application has been made for protection in respect of the invention in a Convention country; and (b) the application has been withdrawn, abandoned or refused without becoming open to public inspection; and (c) the application has not been used as the basis of claiming a right of priority in a Convention country under a law of that country corresponding to this Part; and (d) a later application has been made by the same applicant for protection in respect of the invention in the Convention country in which the earlier application was made; the applicant may ask the Commissioner to disregard the earlier application for the purposes of this Part. (2) Where an applicant makes a request under subsection (1): (a) the earlier application must be disregarded; and (b) neither the applicant nor any other applicant may use the earlier application as a basic application for the purposes of this Part. 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. (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. 98 Report on re-examination (1) On re-examining a complete specification, the Commissioner must ascertain and report whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim: (a) is not novel; and (b) does not involve an inventive step. (2) For the purposes of subsection (1), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area). [Note: see also section 7.] 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) 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. (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) 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. (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. 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 examines an innovation patent under section 101A, the Commissioner must: (a) 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 (2), (4), (5), (6) or (7) is made out; and (b) report on the grounds set out in those subsections. These are the only grounds for revocation under this section. Grounds for revocation relating to validity (2) The grounds for revocation under subsection (1) include the following: (a) that the specification does not comply with section 40; (b) that the invention, so far as claimed, does not comply with paragraph 18(1A)(a) or (b); (c) that the invention is not a patentable invention under subsection 18(2) or (3); (d) that the use of the invention would be contrary to law. (3) For the purposes of working out whether the invention does not comply with paragraph 18(1A)(b), the prior art base (referred to in that paragraph) is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area). Revocation on ground that invention claims a substance capable of being used as food or medicine etc. (4) A further ground for revocation is that the patent claims as an invention: (a) a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; or (b) a process producing such a substance by mere admixture. Revocation on ground that patent includes a name (5) A further ground for revocation is that the patent contains a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim. Revocation on grounds of multiple patents for one invention (6) A further ground for revocation is that: (a) the innovation 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 respect of each patent have the same priority date or dates. Revocation for grounds set out in the regulations (7) A further ground for revocation is that the complete specification does not comply with such other matters (if any) as are prescribed. 101C How and when examination to be carried out The examination under section 101B must be carried out: (a) in accordance with the regulations; and (b) within the period prescribed. 101D Commissioner to be given information on searches (1) The patentee 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. (2) Subsection (1) only applies to searches completed before the issue of a certificate of examination in respect of the patent. (3) In subsection (2): completed, in relation to a search, has the meaning prescribed by the regulations. 101E Certificate of examination If: (a) after examining a patent under section 101B, the Commissioner decides in writing that he or she is satisfied that the invention, so far as claimed, complies with paragraph 18(1A)(b); and (aa) after so examining the patent, the Commissioner also decides in writing that he or she considers that: (i) a ground for the revocation of the patent (other than a ground in respect of paragraph 18(1A)(b)) has not been made out; or (ii) any such ground has been removed; and (b) the patent has not ceased under section 143A; the Commissioner must: (c) 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 (d) publish a notice of the examination having occurred in the Official Journal; and (e) issue a certificate of examination to the patentee in the form approved by the Commissioner; and (f) register the issue of the certificate. 101F Revocation of innovation patents following examination under section 101B (1) If: (a) the Commissioner considers that, after examining a patent under section 101B, a ground for the revocation of a patent has been made out and that the ground has not been removed; and (b) the patent has not ceased under section 143A; the Commissioner must revoke 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 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. 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 in