PATENTS ACT 1990

This compilation was prepared on 3 May 2012
taking into account amendments up to Act No. 35 of 2012

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? .. 5

5............ Associated applications ....................................................................... 8

6............ Deposit requirements .......................................................................... 8

7............ Novelty and inventive step .................................................................. 8

8............ Disclosure in basic applications ........................................................ 10

9............ Secret use .......................................................................................... 10

10.......... Certain international applications to be taken to have been given an international filing date 11

11.......... Act binds the Crown ......................................................................... 12

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

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

Chapter 2--Patent rights, ownership and validity 13

Part 1--Patent rights 13

13.......... Exclusive rights given by patent ........................................................ 13

14.......... Assignment of patent ........................................................................ 13

Part 2--Ownership 14

15.......... Who may be granted a patent? ........................................................... 14

16.......... Co-ownership of patents ................................................................... 14

17.......... Directions to co-owners .................................................................... 15

Part 3--Validity 16

Division 1--Validity 16

18.......... Patentable inventions ......................................................................... 16

19.......... Certificate of validity ......................................................................... 17

20.......... Validity of patent not guaranteed ....................................................... 17

21.......... Validity not implied by making or refusal of non-infringement declaration 18

Division 2--Matters not affecting validity 19

22.......... Invalidity in relation to one claim not to affect validity in relation to other claims 19

23.......... Validity not affected by publication etc. after priority date ................ 19

24.......... Validity not affected by certain publication or use ............................. 19

25.......... Validity: patents of addition .............................................................. 20

26.......... Validity not affected in certain cases involving amendments ............. 20

Division 3--Notice of matters affecting validity 21

27.......... Notice of matters affecting validity of standard patents ..................... 21

28.......... Notice of matters affecting validity of innovation patents .................. 21

Chapter 3--From application to acceptance 23

Part 1--Patent applications 23

Division 1--Applications 23

29.......... Application for patent ........................................................................ 23

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

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

32.......... Disputes between applicants etc. ....................................................... 23

33.......... Applications by opponents etc. ......................................................... 24

34.......... Applications by eligible persons arising out of Court proceedings ... 26

35.......... Applications by eligible persons following revocation by Commissioner 26

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

37.......... Complete application may be treated as provisional .......................... 28

38.......... Time for making complete application ............................................... 28

Division 2--Specifications 30

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

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

42.......... Micro-organisms ceasing to be reasonably available ......................... 31

Division 3--Priority dates 33

43.......... Priority dates ..................................................................................... 33

Part 2--Examination of standard patent requests and specifications 34

Division 1--Examination 34

44.......... Request for examination .................................................................... 34

45.......... Examination [see also Table B] ......................................................... 34

46.......... Request for deferment of examination ............................................... 35

Division 2--Modified examination 37

47.......... Request for modified examination ..................................................... 37

48.......... Modified examination [see also Table B] .......................................... 37

Part 3--Acceptance 38

Division 1--Acceptance of standard patents 38

49.......... Acceptance of patent request: standard patent ................................... 38

50.......... Application or grant may be refused in certain cases ......................... 39

51.......... Appeal ............................................................................................... 39

Division 2--Acceptance of innovation patents 40

52.......... Formalities check and acceptance of innovation patents .................... 40

Chapter 4--Publication 41

53.......... Publication of certain information about applicants etc. [see also Table B] 41

54.......... Notice of publication ......................................................................... 41

55.......... Documents open to public inspection ................................................ 42

56.......... Certain documents not to be published .............................................. 43

57.......... Effect of publication of complete specification .................................. 43

58.......... Result of search may be disclosed ..................................................... 44

Chapter 5--Opposition to grant of standard patent 45

59.......... Opposition to grant of standard patent .............................................. 45

60.......... Hearing and decision by Commissioner ............................................ 45

Chapter 6--Grant and term of patents 46

Part 1--Grant 46

61.......... Grant of standard patent .................................................................... 46

62.......... Grant and publication of innovation patent ........................................ 46

63.......... Joint patentees ................................................................................... 47

64.......... Grant: multiple applications ............................................................... 47

65.......... Date of patent .................................................................................... 47

66.......... Sealing of duplicate of patent ............................................................ 47

Part 2--Term 49

67.......... Term of standard patent ..................................................................... 49

68.......... Term of innovation patent ................................................................. 49

Part 3--Extension of term of standard patents relating to pharmaceutical substances 50

70.......... Applications for extension of patent .................................................. 50

71.......... Form and timing of an application ..................................................... 51

72.......... Notification and public inspection of application ............................... 52

73.......... Withdrawal of application ................................................................. 52

74.......... Acceptance or refusal of application .................................................. 52

75.......... Opposition to grant of extension ....................................................... 53

76.......... Grant of extension ............................................................................. 53

76A....... Notification of extension to the Secretary, Health and Family Services 53

77.......... Calculation of term of extension ........................................................ 54

78.......... Exclusive rights of patentee are limited if extension granted ............. 54

79.......... Rights of patentee if extension granted after patent expires ............... 55

79A....... Commissioner not to make decision if court proceedings pending .... 55

Chapter 6A--Divisional applications 56

79B....... Divisional applications prior to grant of patent .................................. 56

79C....... Divisional applications for innovation patents may be made after grant of an innovation patent 56

Chapter 7--Patents of addition 58

80.......... Chapter does not apply to innovation patents .................................... 58

81.......... Grant of patent of addition ................................................................ 58

82.......... Revocation of patent and grant of patent of addition instead ............. 58

83.......... Term of patent of addition ................................................................. 59

85.......... Revocation of patent for main invention ............................................ 60

86.......... Renewal fees not payable .................................................................. 60

87.......... Fees payable where patent of addition becomes an independent patent 60

Chapter 8--PCT applications and convention applications 61

Part 1--PCT applications 61

88.......... PCT applications ............................................................................... 61

89.......... Modified application of Act [see also Table B] ................................. 61

90.......... Publication of PCT applications [see also Table B] .......................... 62

91.......... Application of certain provisions to PCT applications ...................... 63

92.......... Notice of publication [see also Table B] ........................................... 63

93.......... Evidence of matters arising under PCT ............................................. 64

Part 2--Convention applications 65

94.......... Convention applicants may make Convention applications ............... 65

95.......... Manner of making Convention application ....................................... 65

96.......... Withdrawn, abandoned or refused applications ................................. 65

Chapter 9--Re-examination of standard patents 67

96A....... Chapter does not apply to innovation patents .................................... 67

97.......... Re-examination of complete specifications ........................................ 67

98.......... Report on re-examination .................................................................. 68

99.......... Statement by applicant or patentee ..................................................... 68

100........ Copies of report to be given to court ................................................. 68

100A..... Refusal to grant patent--re-examination before grant ....................... 68

101........ Revocation of patent--re-examination after grant ............................. 69

Chapter 9A--Examination, re-examination and opposition-innovation patents 70

Part 1--Examination of innovation patents 70

101A..... Examination may be requested or Commissioner may decide to examine 70

101B..... Examination of an innovation patent ................................................. 70

101C..... How and when examination to be carried out ................................... 71

101D..... Commissioner to be given information on searches .......................... 72

101E...... Certificate of examination .................................................................. 72

101F...... Revocation of innovation patents following examination under section 101B 73

Part 2--Re-examination of innovation patents 74

101G..... Re-examination of complete specifications of innovation patents ...... 74

101H..... Patentee statements ............................................................................ 74

101J...... Revocation of innovation patent following re-examination ............... 75

101K..... Relevant proceedings and re-examination ......................................... 75

101L...... Copies of report to be given to court ................................................. 76

Part 3--Opposition to innovation patents 77

101M.... Opposition to innovation patent ........................................................ 77

101N..... Hearing and decision by the Commissioner ...................................... 77

101P...... Relevant proceedings and opposition ................................................ 78

Chapter 10--Amendments 79

Part 1--Amendments that are not allowable 79

102........ What amendments are not allowable? ................................................ 79

103........ Consent of mortgagee or exclusive licensee needed .......................... 80

Part 2--Amendments of patent requests, specifications and other filed documents 81

104........ Amendments by applicants and patentees ......................................... 81

105........ Amendments directed by court .......................................................... 82

106........ Amendments directed by Commissioner: patents .............................. 82

107........ Amendments directed by Commissioner: applications for standard patents 83

109........ Appeal ............................................................................................... 84

Part 3--Miscellaneous 85

110........ Advertisement of amendment of complete specification .................... 85

112........ Pending proceedings ......................................................................... 85

113........ Persons claiming under assignment or agreement ............................. 85

114........ Priority date of certain amended claims ............................................. 85

114A..... Objection cannot be taken to certain amended claims ........................ 86

115........ Restriction on recovery of damages etc. ............................................ 86

116........ Interpretation of amended specifications ........................................... 86

Chapter 11--Infringement 87

Part 1--Infringement and infringement proceedings 87

117........ Infringement by supply of products .................................................. 87

118........ Infringement exemptions: use in or on foreign vessels, aircraft or vehicles 87

119........ Infringement exemptions: prior use ................................................... 88

119A..... Infringement exemptions: acts for obtaining regulatory approval of pharmaceuticals 89

119B..... Infringement exemptions: acts for obtaining regulatory approval (non-pharmaceuticals) 90

119C..... Infringement exemptions: acts for experimental purposes ................. 91

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

121........ Counter-claim for revocation of patent .............................................. 92

121A..... Burden of proof--infringement of patent for a process .................... 92

122........ Relief for infringement of patent ....................................................... 92

123........ Innocent infringement ....................................................................... 93

Part 2--Non-infringement declarations 94

124........ Interpretation ..................................................................................... 94

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

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

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

Part 3--Unjustified threats of infringement proceedings 96

128........ Application for relief from unjustified threats ................................... 96

129........ Court's power to grant relief if threats related to a standard patent or standard patent application 96

129A..... Threats related to an innovation patent application or innovation patent and court's power to grant relief 97

130........ Counter-claim for infringement ......................................................... 98

131........ Notification of patent not a threat ...................................................... 98

132........ Liability of legal practitioner or patent attorney ................................. 98

Chapter 12--Compulsory licences and revocation of patents 99

133........ Compulsory licences ......................................................................... 99

134........ Revocation of patent after grant of compulsory licence ................... 101

135........ Reasonable requirements of the public ............................................ 101

136........ Orders to be consistent with international agreements ..................... 102

136A..... Dealing with allegation of contravention of application law ............ 102

137........ Revocation on surrender of patent ................................................... 102

138........ Revocation of patents in other circumstances .................................. 103

139........ Parties to proceedings ..................................................................... 103

140........ Commissioner to be given copies of orders .................................... 104

Chapter 13--Withdrawal and lapsing of applications and ceasing of patents 105

141........ Withdrawal of applications [see also Table B] ................................ 105

142........ Lapsing of applications [see also Table B] ...................................... 105

143........ Ceasing of patents ........................................................................... 106

143A..... Ceasing of innovation patents ......................................................... 106

143B..... Payment of fees ............................................................................... 106

Chapter 14--Contracts 107

144........ Void conditions ............................................................................... 107

145........ Termination of contract after patent ceases to be in force ................ 108

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

Chapter 15--Special provisions relating to associated technology 110

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

148........ Lapsing etc. of applications ............................................................. 110

149........ Revocation of direction ................................................................... 111

150........ Restoration of lapsed application ..................................................... 111

151........ Reinstatement of application as an international application ............ 112

152........ Notice of prohibitions or restrictions on publication ....................... 113

153........ Effect of order ................................................................................. 113

Chapter 16--Jurisdiction and powers of courts 115

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

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

156........ Exercise of jurisdiction .................................................................... 115

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

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

159........ Commissioner may appear in appeals ............................................. 116

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

Chapter 17--The Crown 118

Part 1--Introductory 118

161........ Nominated persons and patentees ................................................... 118

162........ Commonwealth and State authorities .............................................. 118

Part 2--Exploitation by the Crown 119

163........ Exploitation of inventions by Crown .............................................. 119

164........ Nominated person or patentee to be informed of exploitation ......... 119

165........ Remuneration and terms for exploitation ......................................... 120

165A..... Exploitation of invention to cease under court order ....................... 120

166........ Previous agreements inoperative ..................................................... 120

167........ Sale of products .............................................................................. 121

168........ Supply of products by Commonwealth to foreign countries ........... 121

169........ Declarations that inventions have been exploited ............................ 121

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

Part 3--Acquisitions by and assignments to the Crown 123

171........ Acquisition of inventions or patents by Commonwealth ................. 123

172........ Assignment of invention to Commonwealth ................................... 123

Part 4--Prohibition orders 124

173........ Prohibition of publication of information about inventions ............. 124

174........ Effect of prohibition orders ............................................................. 124

175........ Disclosure of information to Commonwealth authority .................. 125

176........ International applications treated as applications under this
Act .................................................................................................. 125

Chapter 18--Miscellaneous offences 126

177........ False representations about the Patent Office .................................. 126

178........ False representations about patents or patented articles ................... 126

179........ Failure to comply with summons .................................................... 127

180........ Refusal to give evidence .................................................................. 127

181........ Failure to produce documents or articles ......................................... 128

182........ Officers not to traffic in inventions ................................................. 128

183........ Unauthorised disclosure of information by employees etc. ............. 128

184........ Other unauthorised disclosures of information ............................... 129

185........ Commissioner etc. not to prepare documents or search
records ............................................................................................ 129

Chapter 19--The Register and official documents 130

186........ Register of Patents .......................................................................... 130

187........ Registration of particulars of patents etc. ......................................... 130

188........ Trusts not registrable ....................................................................... 131

189........ Power of patentee to deal with patent .............................................. 131

190........ Inspection of Register ..................................................................... 131

191........ False entries in Register .................................................................. 132

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

193........ Inspection of documents ................................................................. 132

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

195........ Evidence--the Register ................................................................... 133

196........ Evidence--unregistered particulars ................................................. 133

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

Chapter 20--Patent Attorneys 135

Part 1--Registration, privileges and professional conduct 135

198........ Registration of patent attorneys ....................................................... 135

199........ Deregistration .................................................................................. 136

200........ Privileges ........................................................................................ 136

200A..... Designated Manager ....................................................................... 137

Part 2--Offences 138

201........ Offences: unregistered persons etc. ................................................. 138

202........ Documents prepared by legal practitioners ...................................... 139

202A..... Documents prepared by a member of a partnership ........................ 140

203........ Attendance at patent attorney's office .............................................. 140

204........ Time for starting prosecutions ......................................................... 140

Chapter 21--Administration 141

205........ Patent Office and sub-offices .......................................................... 141

206........ Patent Office seal ............................................................................ 141

207........ Commissioner of Patents ................................................................ 141

208........ Deputy Commissioner of Patents .................................................... 141

209........ Delegation of Commissioner's powers and functions ..................... 142

210........ Commissioner's powers ................................................................. 142

211........ Recovery of costs awarded by Commissioner ................................ 142

Chapter 22--Miscellaneous 143

212........ Copies of examination reports to be communicated ........................ 143

213........ Making and signing applications etc. .............................................. 143

214........ Filing of documents ........................................................................ 143

215........ Death of applicant or nominated person .......................................... 143

216........ Exercise of discretionary power by Commissioner ......................... 144

217........ Assessors ........................................................................................ 144

218........ Costs where patent invalid in part ................................................... 144

219........ Security for costs ............................................................................ 144

220........ Costs of attendance of patent attorney ............................................. 144

221........ Service of documents ...................................................................... 145

222........ Publication of Official Journal etc. .................................................. 145

222A..... Doing act when Patent Office reopens after end of period otherwise provided for doing act 145

223........ Extensions of time [see also Table B] ............................................. 146

224........ Review of decisions ........................................................................ 148

225........ Conduct of employees and agents of natural persons ...................... 149

226........ Documents open to public inspection do not infringe copyright ..... 150

227........ Fees ................................................................................................. 151

227A..... Professional Standards Board for Patent and Trade Marks Attorneys 152

228........ Regulations ..................................................................................... 153

229........ Consequential amendments ............................................................. 157

230........ Repeal ............................................................................................. 157

Chapter 23--Transitional and savings provisions 158

231........ Application of Part III of 1989 Amending Act ............................... 158

233........ Patents granted under 1952 Act ...................................................... 158

234........ Applications under 1952 Act .......................................................... 158

235........ Other applications and proceedings under 1952 Act ....................... 159

236........ Micro-organisms ............................................................................. 160

237........ Orders, directions etc. under 1952 Act ............................................ 160

238........ The Commissioner and Deputy Commissioner ............................... 160

239........ The Register of Patents and Register of Patent Attorneys ............... 160

240........ Registered patent attorneys .............................................................. 160

Schedule 1--Dictionary [see also Table B] 161

Schedule 2--Consequential Amendments 171

Companies Act 1981 171

Designs Act 1906 171

Industry, Technology and Commerce Legislation Amendment Act (No. 2) 1989 171

Jurisdiction of Courts (Cross-vesting) Act 1987 171

Nuclear Non-Proliferation (Safeguards) Act 1987 171

Sales Tax Assessment Act (No. 1) 1930 172

Trade Marks Act 1955 172

Notes 173

Act	Number and year	Date of Assent	Date of commencement	Application, saving or transitional provisions
Patents Act 1990	83, 1990	30 Oct 1990	30 Apr 1991
Industry, Technology and Commerce Legislation Amendment Act 1991	66, 1991	15 June 1991	S. 26: (a)	--
Industry, Technology and Regional Development Legislation Amendment Act 1994	58, 1994	9 Apr 1994	29 June 1994 (see Gazette 1994, No. S211)	--
Industry, Science and Technology Legislation Amendment Act 1994	108, 1994	12 July 1994	Div. 2 of Part 2 (ss. 4-6): 9 Aug 1994 Div. 5 of Part 2 (ss. 13-15): 13 July 1994 Remainder: Royal Assent	--
Patents (World Trade Organization Amendments) Act 1994	154, 1994	13 Dec 1994	Ss. 4-7 and 12: 1 July 1995 Remainder: 10 Jan 1995	Ss. 3, 7, 8, 10, 12, 13 and 17
Intellectual Property Laws Amendment Act 1998	100, 1998	27 July 1998	Schedules 1 and 2: 27 Jan 1999 Remainder: Royal Assent	Sch. 1 (item 8), Sch. 2 (items 31, 32) and Sch. 3 (item 4) [see Table A]
Public Employment (Consequential and Transitional) Amendment Act 1999	146, 1999	11 Nov 1999	Schedule 1 (items 728-730): 5 Dec 1999 (see Gazette 1999, No. S584) (b)	--
Patents Amendment (Innovation Patents) Act 2000	140, 2000	24 Nov 2000	24 May 2001	Sch. 1 (items 1, 2 (1), 2(3)-2(6), 3-6, 8) Sch. 2 [items 2(2), 7] (am. by 99, 2001, Sch. 2 [items 1, 2]) [see Table A]
as amended by
Trade Marks and Other Legislation Amendment Act 2001	99, 2001	22 Aug 2001	Schedule 2: (c)	--
Intellectual Property Laws Amendment Act 2003	48, 2003	26 June 2003	Schedule 2 (item 8): (d)	--
Corporations (Repeals, Consequentials and Transitionals) Act 2001	55, 2001	28 June 2001	Ss. 4-14 and Schedule 3 (item 401): 15 July 2001 (see Gazette 2001, No. S285) (e)	Ss. 4-14 [see Note 1]
Industry, Science and Resources Legislation Amendment (Application of Criminal Code) Act 2001	140, 2001	1 Oct 2001	2 Oct 2001	S. 4 [see Table A]
Patents Amendment Act 2001	160, 2001	1 Oct 2001	Schedule 1: 1 Apr 2002 Schedule 2: (f) Remainder: Royal Assent	Sch. 1 (items 13, 32, 33) [see Table A]
Intellectual Property Laws Amendment Act 2003	48, 2003	26 June 2003	Schedule 1 (item 2): 24 July 2003 Schedule 2 (items 1-5): 26 Aug 2003	Sch. 2 (item 5) [see Table A]
US Free Trade Agreement Implementation Act 2004	120, 2004	16 Aug 2004	Schedule 8: Royal Assent	Sch. 8 (item 3) [see Table A]
Statute Law Revision Act 2005	100, 2005	6 July 2005	Schedule 1 (items 31-37): (g)	--
Intellectual Property Laws Amendment Act 2006	106, 2006	27 Sept 2006	Schedules 5, 6, 8 and 9: 28 Sept 2006 Schedule 7: 25 Oct 2006 Schedules 10 and 12 (item 4): 27 Mar 2007 Schedule 16 (item 1): 4 Oct 2002 (see s. 2(1))	Sch. 5 (item 2), Sch. 6 (item 2), Sch. 7 (item 4), Sch. 8 (item 9), Sch. 9 (item 2) and Sch. 10 (item 3) [see Table A]
Personal Property Securities (Consequential Amendments) Act 2009	131, 2009	14 Dec 2009	Schedule 2 (items 8-15): 30 Jan 2012 (see F2011L02397)	Sch. 2 (item 15) [see Table A]
Crimes Legislation Amendment (Serious and Organised Crime) Act (No. 2) 2010	4, 2010	19 Feb 2010	Schedule 10 (item 22): 20 Feb 2010	--
Statute Law Revision Act 2010	8, 2010	1 Mar 2010	Schedule 1 (item 39): Royal Assent	--
Personal Property Securities (Corporations and Other Amendments) Act 2010	96, 2010	6 July 2010	Schedule 3 (item 16): (h)	--
Trade Practices Amendment (Australian Consumer Law) Act (No. 2) 2010	103, 2010	13 July 2010	Schedule 6 (items 1, 82): 1 Jan 2011	--
Statute Law Revision Act 2011	5, 2011	22 Mar 2011	Schedule 7 (items 108, 109): 19 Apr 2011	--
Acts Interpretation Amendment Act 2011	46, 2011	27 June 2011	Schedule 2 (items 905-907) and Schedule 3 (items 10, 11): 27 Dec 2011	Sch. 3 (items 10, 11) [see Table A]
Intellectual Property Laws Amendment (Raising the Bar) Act 2012	35, 2012	15 Apr 2012	Schedule 1, Schedule 3 (items 1-16, 32(1)-(6), 33), Schedule 4 (items 1-36) and Schedule 6 (items 23-86, 88-103, 133, 134): [see Note 2 and Table A] Schedule 2 and Schedule 6 (item 87): 16 Apr 2012	Sch. 1 (items 55, 56), Sch. 2 (item 2), Sch. 3 (items 32(1)-(6), 33) and Sch. 6 (items 133, 134) [see Table A]

Commencement information
5. Schedule 2, Part 3	Immediately after the time specified in the Patents Amendment (Innovation Patents) Act 2000 for the commencement of item 3 of Schedule 1 to that Act	24 May 2001

Provision(s)	Commencement	Date/Details
20. Schedule 1, items 31 to 37	Immediately after the commencement of the Patents Amendment (Innovation Patents) Act 2000.	24 May 2001

Provision(s)	Commencement	Date/Details
13. Schedule 3, item 16	Immediately after the commencement of item 14 of Schedule 2 to the Personal Property Securities (Consequential Amendments) Act 2009.	30 January 2012

Table of Amendments

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected	How affected
Chapter 1
S. 3......................................	am. Nos. 108 and 154, 1994; No. 100, 1998; No. 140, 2000; No. 48, 2003; No. 131, 2009
S. 4......................................	rs. No. 140, 2000
S. 6......................................	am. No. 100, 1998
Subheads. to s. 7(1), (2)...	ad. No. 140, 2000
S. 7......................................	am. No. 140, 2000; No. 160, 2001
Note to s. 7.........................	am. No. 46, 2011
S. 12A.................................	ad. No. 140, 2001
Chapter 2
Part 3
Division 1
Subhead. to s. 18(1)..........	ad. No. 140, 2000
S. 18....................................	am. No. 140, 2000
Division 2
S. 24....................................	am. No. 140, 2000; No. 8, 2010
Division 3
S. 28....................................	rs. No. 140, 2000
Chapter 3
Part 1
Division 1
Ss. 33, 34............................	rs. No. 140, 2000
S. 35....................................	am. No. 140, 2000
S. 36....................................	rs. No. 140, 2000
S. 39....................................	rep. No. 140, 2000
Division 2
S. 40....................................	am. No. 140, 2000; No. 106, 2006
Division 3
S. 43....................................	am. No. 140, 2000
Part 2
Heading to Part 2 ............. of Chapt. 3	rs. No. 140, 2000
Division 1
S. 45....................................	am. No. 140, 2000; No. 160, 2001; No. 48, 2003
Division 2
S. 48....................................	am. No. 140, 2000; No. 160, 2001
Part 3
Division 1
Heading to Div. 1 of Part 3........................................ of Chapt. 3	ad. No. 140, 2000
S. 49....................................	am. No. 140, 2000; No. 160, 2001
Ss. 50, 51............................	rs. No. 140, 2000
Division 2
Heading to Div. 2 of Part 3........................................ of Chapt. 3	ad. No. 140, 2000
S. 52....................................	rs. No. 140, 2000
Chapter 4
Ss. 54, 55............................	am. No. 140, 2000
S. 56....................................	am. No. 66, 1991
S. 57....................................	am. No. 140, 2000
Chapter 5
Heading to Chapt. 5..........	rs. No. 140, 2000
S. 59....................................	am. No. 140, 2000; No. 120, 2004
Chapter 6
Part 1
S. 61 ...................................	am. No. 160, 2001
S. 62....................................	rs. No. 140, 2000
S. 64....................................	am. No. 140, 2000
S. 66....................................	am. No. 140, 2000
Part 2
S. 67....................................	am. No. 154, 1994
S. 68....................................	rs. No. 140, 2000
Part 3
Heading to Part 3 ............. of Chapt. 6	rs. No. 140, 2000
Heading to Div. 1 of Part 3........................................ of Chapt. 6	rep. No. 154, 1994 ad. No. 100, 1998
	rep. No. 140, 2000
Div. 1 of Part 3 of Chapt. 6	rep. No. 140, 2000
S. 69....................................	rep. No. 140, 2000
Heading to Div. 2 of Part 3........................................ of Chapt. 6	rep. No. 140, 2000
Div. 2 of Part 3 of Chapt. 6	rep. No. 154, 1994
	ad. No. 100, 1998
S. 70....................................	rep. No. 154, 1994
	ad. No. 100, 1998
	am. No. 100, 2005: No. 5, 2011
Ss. 71-76............................	rep. No. 154, 1994
	ad. No. 100, 1998
S. 76A.................................	ad. No. 100, 1998
S. 77....................................	rep. No. 154, 1994
	ad. No. 100, 1998
S. 78....................................	rep. No. 154, 1994
	ad. No. 100, 1998
	am. No. 106, 2006
S. 79....................................	rep. No. 154, 1994
	ad. No. 100, 1998
S. 79A.................................	ad. No. 100, 1998
	am. No. 100, 2005
Chapter 6A
Chapt. 6A...........................	ad. No. 140, 2000
S. 79B.................................	ad. No. 140, 2000
S. 79C.................................	ad. No. 140, 2000
	am. No. 106, 2006
Chapter 7
S. 80....................................	rs. No. 140, 2000
S. 83....................................	am. No. 154, 1994
	rs. No. 100, 1998
	am. No. 100, 2005
S. 84....................................	rep. No. 154, 1994
Chapter 8
Part 1
Ss. 88, 89............................	am. No. 140, 2000
Chapter 9
Heading to Chapt. 9 .........	rs. No. 140, 2000
S. 96A.................................	ad. No. 140, 2000
S. 97....................................	am. No. 66, 1991; No. 160, 2001
S. 98....................................	am. No. 140, 2000; No. 160, 2001
S. 99....................................	am. No. 140, 2000
S. 100..................................	am. No. 66, 1991
S. 100A ..............................	ad. No. 160, 2001
Heading to s. 101 .............	rs. No. 160, 2001
S. 101..................................	am. No. 66, 1991
Chapter 9A
Chapt. 9A...........................	ad. No. 140, 2000
Part 1
S. 101A...............................	ad. No. 140, 2000
S. 101B...............................	ad. No. 140, 2000
	am. No. 160, 2001
S. 101C...............................	ad. No. 140, 2000
S. 101D...............................	ad. No. 140, 2000
	rs. No. 160, 2001; No. 48, 2003
S. 101E...............................	ad. No. 140, 2000
	am. No. 160, 2001
S. 101F...............................	ad. No. 140, 2000
Part 2
S. 101G...............................	ad. No. 140, 2000
	am. No. 160, 2001
S. 101H...............................	ad. No. 140, 2000
Ss. 101J-101L....................	ad. No. 140, 2000
Part 3
Ss. 101M, 101N..................	ad. No. 140, 2000
S. 101P...............................	ad. No. 140, 2000
Chapter 10
Part 1
Subhead. to s. 102(1)........	ad. No. 140, 2000
S. 102..................................	am. No. 140, 2000; No. 160, 2001
Part 2
S. 104..................................	am. No. 120, 2004
S. 106..................................	am. No. 140, 2000
Heading to s. 107..............	am. No. 140, 2000
S. 107..................................	am. No. 140, 2000
S. 108..................................	rep. No. 140, 2000
S. 109..................................	am. No. 140, 2000
Part 3
S. 111..................................	rep. No. 140, 2000
S. 114..................................	am. No. 140, 2000
S. 114A...............................	ad. No. 140, 2000
Chapter 11
Part 1
S. 119..................................	am. No. 160, 2001
	rs. No. 106, 2006
S. 119A...............................	ad. No. 106, 2006
Ss. 119B, 119C...................	ad. No. 35, 2012
S. 120..................................	am. No. 140, 2000
S. 121A...............................	ad. No. 154, 1994
S. 122..................................	am. No. 106, 2006
Part 2
S. 126..................................	am. No. 140, 2000
Part 3
S. 129..................................	rs. No. 140, 2000
S. 129A...............................	ad. No. 140, 2000
S. 130..................................	am. No. 140, 2000
Notes to s. 130(3), (4).......	ad. No. 140, 2000
Chapter 12
S. 133..................................	am. No. 154, 1994; No. 140, 2000; No. 106, 2006; No. 103, 2010
Heading to s. 134..............	am. No. 140, 2000
S. 134..................................	am. No. 140, 2000; No. 106, 2006; No. 103, 2010
S. 136A...............................	ad. No. 106, 2006
S. 138..................................	am. No. 140, 2000; No. 120, 2004
Chapter 13
S. 141..................................	rs. No. 140, 2000
S. 142..................................	am. No. 140, 2000; No. 160, 2001
S. 143A...............................	ad. No. 140, 2000
	am. No. 160, 2001
S. 143B ..............................	ad. No. 160, 2001
Chapter 14
S. 144..................................	am. No. 140, 2000
Chapter 15
S. 151..................................	am. No. 140, 2000
S. 153..................................	am. No. 140, 2000
Chapter 17
Part 2
S. 163..................................	am. No. 154, 1994
S. 165..................................	am. No. 154, 1994
S. 165A...............................	ad. No. 154, 1994
S. 169..................................	am. No. 140, 2000
Part 4
S. 174..................................	am. No. 140, 2000
S. 176..................................	am. No. 140, 2000
Chapter 18
S. 178..................................	am. No. 140, 2000
Ss. 179-181........................	am. No. 140, 2001
S. 185..................................	rs. No. 100, 1998
Chapter 19
S. 186..................................	am. No. 140, 2000
S. 187..................................	rs. No. 140, 2000
S. 189..................................	am. No. 131, 2009
S. 191..................................	am. No. 140, 2001
Ss. 195, 196........................	am. No. 131, 2009
Chapter 20
Part 1
S. 198..................................	rs. No. 100, 1998
S. 200..................................	am. No. 100, 1998
S. 200A...............................	ad. No. 100, 1998
	rs. No. 146, 1999
	am. No. 5, 2011
Part 2
S. 201..................................	am. No. 100, 1998; No. 55, 2001
S. 202A...............................	ad. No. 100, 1998
S. 204..................................	am. No. 100, 1998; No. 140, 2000
Chapter 21
Ss. 207-209........................	am. No. 58, 1994
Chapter 22
S. 213..................................	am. No. 100, 1998
S. 220..................................	am. No. 100, 1998
S. 222A...............................	ad. No. 106, 2006
S. 223..................................	am. No. 66, 1991; No. 154, 1994; No. 140, 2000; No. 160, 2001; No. 48, 2003
S. 224..................................	am. No. 100, 1998; No. 140, 2000
Heading to s. 225..............	rs. No. 140, 2001
S. 225..................................	am. No. 140, 2001; No. 4, 2010
Note to s. 225.....................	ad. No. 140, 2001
S. 226..................................	rs. No. 35, 2012
S. 227..................................	am. No. 100, 1998; No. 140, 2000
S. 227A...............................	ad. No. 100, 1998
S. 228..................................	am. No. 140, 2000
Chapter 23
S. 232..................................	rep. No. 154, 1994
S. 233..................................	am. No. 66, 1991
Schedule 1
Schedule 1.........................	am. No. 66, 1991; Nos. 58, 108 and 154, 1994; No. 100, 1998; No. 146, 1999; No. 140, 2000; No. 160, 2001; No. 48, 2003; No. 106, 2006; No. 131, 2009; No. 96, 2010; No. 46, 2011

Note 2

Intellectual Property Laws Amendment (Raising the Bar) Act 2012
(No. 35, 2012)

The following amendments commence on 15 April 2013:

Schedule 1

1 Section 3 (in the list of definitions)

Insert "preliminary search and opinion".

2 Subsection 7(2)

Omit "in the patent area", substitute "(whether in or out of the patent area)".

Note: The heading to section 7 is altered by omitting "and inventive step" and substituting ", inventive step and innovative step".

3 Subsection 7(3)

Repeal the subsection, substitute:

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

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

(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

4 Subsection 7(4)

Omit "in the patent area", substitute "(whether in or out of the patent area)".

5 Section 7 (note 2)

Omit "subsection 98(1)", substitute "section 98".

6 After section 7

Insert:

7A Meaning of useful

(1) For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.

(2) The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.

(3) Subsection (1) does not otherwise affect the meaning of the word useful in this Act.

7 Subsection 40(1)

Repeal the subsection, substitute:

Requirements relating to provisional specifications

(1) A provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

8 Paragraph 40(2)(a)

Repeal the paragraph, substitute:

(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and

(aa) disclose the best method known to the applicant of performing the invention; and

9 Subsection 40(3)

Omit "fairly based on the matter described", substitute "supported by matter disclosed".

10 Subsection 43(2)

Repeal the subsection, substitute:

(2) The priority date of a claim is:

(a) if subsection (2A) applies to the claim--the date determined under the regulations; or

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

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

(a) prescribed circumstances apply in relation to the invention defined in the claim; and

(b) a prescribed document discloses the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

11 Before Division 1 of Part 2 of Chapter 3

Insert:

Division 1A--Preliminary search and opinion

43A Preliminary search and opinion

(1) If a complete application for a standard patent has been made, the Commissioner may conduct a preliminary search and opinion in relation to the patent request and specification relating to the application.

(2) The preliminary search and opinion must be conducted in accordance with the regulations.

12 Paragraphs 45(1)(a), (b) and (c)

Repeal the paragraphs, substitute:

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

(b) whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criteria mentioned in paragraphs 18(1)(a), (b) and (c); and

13 Subsection 45(1A)

Repeal the subsection.

14 Subsection 49(1)

Repeal the subsection, substitute:

(1) Subject to section 50, the Commissioner must accept a patent request and complete specification relating to an application for a standard patent if the Commissioner is satisfied, on the balance of probabilities:

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

(b) that the invention, so far as claimed, satisfies the criteria mentioned in paragraphs 18(1)(a), (b) and (c); and

(d) as to the matters (if any) prescribed under paragraph 45(1)(d).

15 After subsection 60(3)

Insert:

(3A) If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application.

(3B) The Commissioner must not refuse an application under this section unless the Commissioner has, where appropriate, given the applicant a reasonable opportunity to amend the relevant specification for the purpose of removing any ground of opposition and the applicant has failed to do so.

16 After subsection 97(3)

Insert:

(3A) The re-examination must be carried out in accordance with the regulations.

17 Section 98

Repeal the section, substitute:

98 Report on re-examination

On re-examining a complete specification, the Commissioner must ascertain and report on:

(a) whether the specification does not comply with subsection 40(2) or (3); and

(b) whether, to the best of his or her knowledge, the invention, so far as claimed, does not satisfy the criteria mentioned in paragraph 18(1)(a), (b) or (c); and

18 Subsection 100A(1)

Repeal the subsection, substitute:

(1) The Commissioner may refuse to grant a patent if the Commissioner:

(a) makes an adverse report on a re-examination of the relevant specification under subsection 97(1); and

(b) is satisfied, on the balance of probabilities, that there is a lawful ground of objection to the specification.

19 Subsection 101(1)

Repeal the subsection, substitute:

(1) The Commissioner may, by notice in writing, revoke a patent, either wholly or so far as it relates to a particular claim, if the Commissioner:

(a) makes an adverse report on a re-examination of the relevant specification under subsection 97(2); and

(b) is satisfied, on the balance of probabilities, that there is a lawful ground of objection to the relevant specification.

20 Section 101B

Repeal the section, substitute:

101B Examination of an innovation patent

What the Commissioner must do in examining a patent

(1) If the Commissioner decides, or is asked, to examine an innovation patent under section 101A, the Commissioner must:

(a) examine the complete specification relating to the patent to ascertain the matters set out in subsection (2); and

(b) report on those matters.

Matters for examination and report

(2) The matters in this subsection are whether:

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

(b) the invention, so far as claimed, complies with paragraphs 18(1A)(a), (b) and (c); and

(d) the use of the invention would not be contrary to law; and

(e) the patent does not claim as an invention a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; and

(f) the patent does not claim as an invention a process producing such a substance by mere admixture; and

(g) the patent does not contain a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim; and

(h) the patent does not claim an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, where the relevant claim or claims in respect of each patent have the same priority date or dates; and

(i) the complete specification complies with such other matters (if any) as are prescribed for the purpose of this paragraph.

21 Section 101E

Repeal the section, substitute:

101E Certificate of examination

(1) This section applies to an innovation patent if:

(a) after examining the patent under section 101B, the Commissioner decides in writing that he or she is satisfied, on the balance of probabilities, as to the following:

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

(ii) the invention, so far as claimed, complies with paragraphs 18(1A)(a), (b) and (c);

(iii) the invention is a patentable invention under subsections 18(2) and (3);

(iv) the use of the invention would not be contrary to law;

(v) the patent does not claim as an invention a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients;

(vi) the patent does not claim as an invention a process producing such a substance by mere admixture;

(vii) the patent does not contain a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim;

(viii) the patent does not claim an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, where the relevant claim or claims in respect of each patent have the same priority date or dates;

(ix) the complete specification complies with such other matters (if any) as are prescribed for the purpose of paragraph 101B(2)(i);

(b) the patent has not ceased under section 143A.

(2) If this section applies, the Commissioner must:

(a) notify the patentee and the person who requested the examination (if that person is not the patentee) that the patent has been examined and that a certificate of examination is to be issued; and

(b) publish a notice of the examination having occurred in the Official Journal; and

(d) register the issue of the certificate.

(3) A decision under subsection (1) is not a legislative instrument.

22 Subsection 101F(1)

Repeal the subsection, substitute:

(1) The Commissioner must revoke a patent if:

(a) the patent has been examined under section 101B; and

(b) section 101E does not apply to the patent; and

23 After subsection 101G(1)

Insert:

(1A) The re-examination must be carried out in accordance with the regulations.

24 Subsection 101G(3)

Repeal the subsection, substitute:

(3) The grounds for the revocation of the patent under subsection (2) are as follows:

(a) that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3);

(b) that the invention, so far as claimed, does not comply with paragraph 18(1A)(a), (b) or (c);

25 Subsection 101G(5)

Repeal the subsection.

26 Subsection 101J(1)

Repeal the subsection, substitute:

(1) The Commissioner may, by notice in writing, revoke a patent, either wholly or so far as it relates to a particular claim, if the Commissioner:

(a) makes an adverse report on a re-examination of the relevant specification under section 101G; and

(b) is satisfied, on the balance of probabilities, that there is a ground of revocation of the patent.

27 Section 101M

Repeal the section, substitute:

101M Opposition to innovation patent

The Minister, or any other person, may, in accordance with the regulations, oppose an innovation patent that has been certified and seek the revocation of it, on one or more of the following grounds of invalidity, but on no other:

(a) that the patentee is either:

(i) not entitled to the patent; or

(ii) entitled to the patent but only in conjunction with some other person;

(b) that the complete specification does not comply with subsection 40(2) or (3);

(d) that the invention is not a patentable invention under subsection 18(2) or (3).

28 Subsection 101N(4)

After "satisfied", insert ", on the balance of probabilities,".

29 Subsection 102(1)

Repeal the subsection, substitute:

Amendment of complete specification not allowable if amended specification claims or discloses matter extending beyond that disclosed in certain documents

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:

(a) the complete specification as filed;

(b) other prescribed documents (if any).

30 Paragraph 102(2A)(b)

Omit "decisions under paragraphs 101E(a) and (aa)", substitute "a decision under paragraph 101E(1)(a)".

31 Before subsection 102(3)

Insert:

Amendments of a kind prescribed by regulations not allowable

(2D) An amendment of a patent request or a complete specification is not allowable if it is of a kind prescribed by regulations made for the purposes of this section.

32 Subsection 102(3)

Repeal the subsection, substitute:

Section does not apply in certain cases

(3) This section does not apply to an amendment for the purposes of:

(a) correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification; or

(b) complying with paragraph 6(c) (about deposit requirements).

33 Section 114

Repeal the section, substitute:

114 Priority date of claims of certain amended specifications

(1) This section applies if:

(a) a complete specification has been amended; and

(b) the amendment was not allowable under subsection 102(1); and

(i) was not disclosed by the complete specification as filed in a manner that was clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; but

(ii) is disclosed in that manner by the amended specification.

(2) If this section applies, the priority date of the claim must be determined under the regulations.

34 Paragraph 114A(1)(b)

Repeal the paragraph, substitute:

(b) the amendment was not allowable under subsection 102(1); and

(ba) as a result of the amendment, a claim of the amended specification claims an invention that was not disclosed by the original specification as filed in a manner that was clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and

Note: The heading to section 114A is altered by omitting "claims" and substituting "specifications".

35 Paragraph 143A(c)

Omit "decisions under paragraphs 101E(a) and (aa)", substitute "a decision under paragraph 101E(1)(a)".

36 Before paragraph 228(2)(a)

Insert:

(aa) making provision for and in relation to:

(i) the procedures for conducting a preliminary search and opinion in relation to a patent request and complete specification; and

(ii) the reports to be made in relation to the preliminary search and opinion; and

37 Schedule 1

Insert:

preliminary search and opinion, in relation to a patent request and complete specification relating to an application for a standard patent, means search and opinion under section 43A.

38 Schedule 1 (definition of certified)

Omit "101E(e)", substitute "101E(2)(c)".

39 Paragraph 10(1)(c)

After "is satisfied", insert ", on the balance of probabilities,".

40 Paragraph 35(1)(b)

After "satisfied", insert ", on the balance of probabilities".

41 Paragraph 36(1)(c)

After "is satisfied", insert "on the balance of probabilities,".

42 Subsection 52(2)

After "satisfied", insert ", on the balance of probabilities,".

43 Subsection 74(1)

After "is satisfied", insert ", on the balance of probabilities,".

44 Subsection 74(3)

After "not satisfied", insert ", on the balance of probabilities,".

45 Subsection 103(2)

After "if satisfied", insert "on the balance of probabilities".

46 Paragraph 106(1)(b)

After "is satisfied", insert ", on the balance of probabilities,".

47 Subsection 106(4)

After "is satisfied", insert ", on the balance of probabilities,".

48 Paragraph 107(1)(b)

After "is satisfied", insert ", on the balance of probabilities,".

49 Subsection 107(4)

After "is satisfied", insert ", on the balance of probabilities,".

50 Subsection 150(2)

After "if satisfied", insert ", on the balance of probabilities,".

51 Subsection 151(2)

After "if satisfied", insert ", on the balance of probabilities,".

52 Subsection 215(3)

After "is satisfied", insert ", on the balance of probabilities,".

53 Paragraph 223(2A)(b)

After "is satisfied", insert ", on the balance of probabilities,".

54 Subsection 223(6A)

After "is satisfied", insert ", on the balance of probabilities,".

Schedule 3

1 Subsection 26(2)

After "112", insert "or 112A".

2 Subsection 61(1)

After "100A", insert "and paragraph 210A(2)(a)".

3 Section 79B

Repeal the section, substitute:

79B Divisional applications prior to grant of patent

(1) If:

(a) a complete application (the first application) for a patent is made; and

(b) the first application is not a divisional application for an innovation patent provided for in section 79C;

the applicant may make a further complete application for a patent for an invention disclosed in the specification filed in relation to the first application.

(2) The further complete application:

(a) must be made in accordance with the regulations made for the purposes of this subsection; and

(b) must include the prescribed particulars.

(3) The further complete application can only be made during the period:

(a) starting on the day the first application is made; and

(b) ending when any of the following happens:

(i) the first application lapses;

(ii) the first application is refused;

(iii) the first application is withdrawn;

(iv) a period prescribed by the regulations for the purposes of this subparagraph ends.

(4) In this section:

applicant has the same meaning as in section 38.

4 Subsection 79C(1)

Omit ", in accordance with the regulations,".

5 After subsection 79C(1)

Insert:

(1A) The further complete application:

(a) must be made in accordance with the regulations made for the purposes of this subsection; and

(b) must include the prescribed particulars.

6 After subsection 105(1)

Insert:

Order for amendment during an appeal

(1A) If an appeal is made to the Federal Court against a decision or direction of the Commissioner in relation to a patent application, the Federal Court may, on the application of the applicant for the patent, by order direct the amendment of the patent request or the complete specification in the manner specified in the order.

Note: The following heading to subsection 105(1) is inserted "Order for amendment during relevant proceedings".

7 Subsection 105(2)

After "order", insert "under subsection (1) or (1A)".

Note: The following heading to subsection 105(2) is inserted "Orders for amendment generally".

8 Subsection 105(3)

Omit "patentee", substitute "applicant for an order under subsection (1) or (1A)".

9 Subsection 105(5)

Omit "patentee", substitute "applicant".

10 After section 112

Insert:

112A Decisions on appeal

A complete specification relating to a patent application must not be amended, except under section 105, if:

(a) an appeal against a decision or direction of the Commissioner has been made to the Federal Court in relation to the specification; and

(b) the appeal, and any proceedings resulting from it, have not been finally determined, withdrawn or otherwise disposed of.

11 Subsection 141(1)

Repeal the subsection, substitute:

(1) A patent application, other than a PCT application, may be withdrawn if all of the following conditions are met:

(a) the applicant lodges a written notice of withdrawal signed by the applicant;

(b) if the application has been opposed under section 59--the Commissioner has consented to the withdrawal;

(c) if the regulations prescribe a period within which an application must not be withdrawn--the withdrawal will not occur within the prescribed period.

12 Sections 179 to 181

Repeal the sections.

13 Section 210

Before "The", insert "(1)".

14 At the end of section 210

Add:

Exercise of power to summon witnesses

(2) The Commissioner must not summon a witness under paragraph (1)(a) unless:

(a) the Commissioner is satisfied, on the balance of probabilities, of the following matters:

(i) the witness has a substantial interest in the proceedings before the Commissioner;

(ii) the witness is likely to provide oral evidence of substantial relevance to a matter before the Commissioner;

(iii) receiving oral evidence from the witness is necessary or desirable in all the circumstances; and

(b) the Commissioner notifies the witness of the actions the Commissioner may take under section 210A if the witness fails or refuses to comply with the summons.

(3) The Commissioner may summon a witness under paragraph (1)(a) whether the witness is in or out of the patent area.

Exercise of power to require production of document or article

(4) The Commissioner must not require a person to produce a document or article under paragraph (1)(c) unless:

(a) the Commissioner is satisfied, on the balance of probabilities, of the following matters:

(i) the person has a substantial interest in the proceedings before the Commissioner;

(ii) the document or article is likely to be of substantial relevance to a matter before the Commissioner; and

(b) the Commissioner notifies the person of the actions the Commissioner may take under section 210A if the person fails or refuses to comply with the requirement.

(5) The Commissioner may require a person to produce a document or article under paragraph (1)(c) whether the person is in or out of the patent area.

Exercise of powers in relation to bodies corporate

(6) The Commissioner's powers in subsection (1) to make a requirement of a person extend, if the person is a body corporate, to making that requirement of any person who is an officer, agent or employee of the body corporate.

Note: The following heading to subsection 210(1) is inserted "Commissioner's powers".

15 After section 210

Insert:

210A Sanctions for non-compliance with Commissioner's requirements

(1) The Commissioner may take one or more of the actions listed in subsection (2) in relation to a person if:

(a) the Commissioner summons the person to appear as a witness under paragraph 210(1)(a) or requires the person to produce a document or article under paragraph 210(1)(c); and

(b) the person refuses or fails to comply with the summons or requirement; and

(c) the Commissioner is satisfied, on the balance of probabilities, that it is appropriate in the circumstances to take the action.

(2) The actions the Commissioner may take are:

(a) if the person is an applicant for a patent--a refusal to grant the patent (see subsection 61(1); and

(b) the drawing of an inference unfavourable to the person's interest in proceedings before the Commissioner; and

(3) In deciding whether it is appropriate to take the action, the Commissioner must consider the following:

(a) whether the person has a reasonable excuse for refusing or failing to comply with the summons or requirement;

(b) whether the person has been offered payment of reasonable expenses associated with complying with the summons or requirement;

16 Subsection 224(1)

Before "142(2)(b)", insert "141(1)(b) or".

Schedule 4

1 Section 3 (list of definitions)

Insert "company".

2 Section 3 (list of definitions)

Insert "director".

3 Section 3 (list of definitions)

Insert "incorporated legal practice".

4 Section 3 (list of definitions)

Insert "incorporated patent attorney".

5 Section 3 (list of definitions)

Insert "intellectual property advice".

6 Section 3 (list of definitions)

Insert "patent attorney director".

7 Section 3 (list of definitions)

Insert "patents work".

8 Section 3 (list of definitions)

Insert "related company group".

9 Section 132

Omit "his or her", substitute "a".

10 Subsection 177(1) (penalty)

Repeal the penalty, substitute:

Penalty: 30 penalty units.

11 Subsection 178(1) (penalty)

Repeal the penalty, substitute:

Penalty: 60 penalty units.

12 Subsection 178(2) (penalty)

Repeal the penalty, substitute:

Penalty: 60 penalty units.

13 Subsection 182(1) (penalty)

Repeal the penalty, substitute:

Penalty: 60 penalty units.

14 Section 183

Before "The", insert "(1)".

15 At the end of section 183

Add:

(2) The Designated Manager may disclose to the Australian Securities and Investments Commission information (including personal information within the meaning of the Privacy Act 1988) that is:

(a) relevant to the functions of the Commission; and

(b) obtained by the Designated Manager as a result of the performance of functions and duties, or the exercise of powers, in relation to incorporated patent attorneys.

16 Subsection 198(4)

Omit "a person", substitute "an individual".

Note: The following heading to subsection 198(4) is inserted "Registration of individuals".

17 After paragraph 198(4)(f)

Insert:

; and (g) meets any other requirements prescribed by the regulations.

18 Subsection 198(4)

Omit "person's", substitute "individual's".

19 Subsection 198(7)

Omit "a person", substitute "an individual".

20 Subsection 198(7)

Omit "the person" (wherever occurring), substitute "the individual".

21 At the end of section 198

Add:

Registration of companies

(9) The Designated Manager must register as a patent attorney a company that:

(a) has at least one patent attorney director; and

(b) has given the Designated Manager written notice in the approved form of its intention to act as a patent attorney; and

The registration is to consist of entering the company's name in the Register of Patent Attorneys.

(10) A company registered as a patent attorney is an incorporated patent attorney.

(11) A patent attorney director of a company is an individual who is both:

(a) a registered patent attorney; and

(b) a validly appointed director of the company.

22 Subsection 200(2)

Repeal the subsection, substitute:

(2) A communication made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a communication made for the dominant purpose of a legal practitioner providing legal advice to a client.

(2A) A record or document made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a record or document made for the dominant purpose of a legal practitioner providing legal advice to a client.

(2B) A reference in subsection (2) or (2A) to a registered patent attorney includes a reference to an individual authorised to do patents work under a law of another country or region, to the extent to which the individual is authorised to provide intellectual property advice of the kind provided.

(2C) Intellectual property advice means advice in relation to:

(a) patents; or

(b) trade marks; or

(d) plant breeder's rights; or

(e) any related matters.

23 Subsection 200(4)

Repeal the subsection.

24 Section 201

Repeal the section, substitute:

201 Acting or holding out without being registered

Individuals

(1) An individual commits an offence if:

(a) the individual carries on business, practises or acts as a patent attorney; and

(b) the individual is not a registered patent attorney or a legal practitioner.

Penalty: 30 penalty units.

(2) An individual commits an offence if:

(a) the individual describes himself or herself, or holds himself or herself out, or permits himself or herself to be described or held out, as a patent attorney or agent for obtaining patents; and

(b) the individual is not a registered patent attorney.

Penalty: 30 penalty units.

Partnerships

(3) A member of a partnership commits an offence if:

(a) the member carries on business, practises or acts as a patent attorney; and

(b) none of the members of the partnership is a registered patent attorney or a legal practitioner.

Penalty: 30 penalty units.

(4) A member of a partnership commits an offence if:

(a) the member describes the partnership, or holds the partnership out, or permits the partnership to be described or held out, as a patent attorney, or agent for obtaining patents; and

(b) none of the members of the partnership is a registered patent attorney.

Penalty: 30 penalty units.

Companies

(5) A company commits an offence if:

(a) the company carries on business, practises or acts as a patent attorney; and

(b) the company is not a registered patent attorney or incorporated legal practice.

Penalty: 150 penalty units.

(6) A company commits an offence if:

(a) the company describes itself, or holds itself out, or permits itself to be described or held out, as a patent attorney, or agent for obtaining patents; and

(b) the company is not a registered patent attorney.

Penalty: 150 penalty units.

Exception--legal representatives

(7) Subsections (1), (3) and (5) do not apply in relation to the business of a registered patent attorney who is deceased if the business:

(a) is carried on, within 3 years of the death of the patent attorney, or such further time allowed by a prescribed court, by the legal representative of the deceased registered patent attorney; and

(b) is managed by a registered patent attorney on behalf of the legal representative.

Note: The defendant bears an evidential burden in relation to the matters in subsection (7). See subsection 13.3(3) of the Criminal Code.

Exception--employees

(8) Subsections (1) and (2) do not apply in relation to anything done by a person, as an employee, for:

(a) his or her employer; or

(b) if the person's employer is a member of a related company group--another member of the group.

Note: The defendant bears an evidential burden in relation to the matters in subsection (8). See subsection 13.3(3) of the Criminal Code.

Exception--related company groups

(9) Subsections (5) and (6) do not apply in relation to anything done by a member of a related company group for another member of the group.

Note: The defendant bears an evidential burden in relation to the matter in subsection (9). See subsection 13.3(3) of the Criminal Code.

Whether a company is related to another company

(10) For the purposes of this section, the question of whether a company is related to another company is to be determined in the same manner as that question is determined under the Corporations Act 2001.

201A When a person carries on business, practises or acts as a patent attorney

(1) For the purposes of section 201, a person is taken to carry on business, practise or act as a patent attorney if, and only if, the person does, or undertakes to do, patents work in Australia.

(2) Patents work means one or more of the following done, on behalf of someone else, for gain:

(a) applying for or obtaining patents in Australia or anywhere else;

(b) preparing specifications or other documents for the purposes of this Act or the patent law of another country;

(c) giving advice (other than advice of a scientific or technical nature) about the validity, or infringement, of patents.

201B Incorporated patent attorney must have a patent attorney director

Offence--failing to notify lack of patent attorney director

(1) An incorporated patent attorney commits an offence if the incorporated patent attorney:

(a) does not have a patent attorney director; and

(b) does not notify the Designated Manager of that within 7 days.

Penalty: 150 penalty units.

Offence--acting after 7 days without patent attorney director

(2) An incorporated patent attorney commits an offence if the incorporated patent attorney:

(a) does not have a patent attorney director; and

(b) has not had a patent attorney director during the previous 7 days; and

Penalty: 150 penalty units.

Designated Manager may appoint a registered patent attorney

(3) If an incorporated patent attorney does not have a patent attorney director, the Designated Manager may, by writing, appoint another registered patent attorney to take charge of the patents work of the incorporated patent attorney.

(4) The appointment may be made only with the consent of the other registered patent attorney.

Effect of appointment

(5) A registered patent attorney holding an appointment under subsection (3) (the appointed attorney) is taken, for the purposes of this Act, to be a patent attorney director of the incorporated patent attorney.

(6) However, for the purposes of the Corporations Act 2001:

(a) the appointed attorney is not a director of the incorporated patent attorney only because:

(i) the appointed attorney takes charge of the patents work of the incorporated patent attorney; and

(ii) the appointed attorney is taken, for the purposes of this Act, to be a patent attorney director of the incorporated patent attorney; and

(b) the Designated Manager is not a director of the incorporated patent attorney only because the Designated Manager appointed the appointed attorney.

Designated Manager may remove incorporated patent attorney from Register

(7) If an incorporated patent attorney does not have a patent attorney director, the Designated Manager may remove the incorporated patent attorney from the Register.

25 Section 202 (penalty)

Repeal the penalty, substitute:

Penalty: 30 penalty units.

26 After section 202A

Insert:

202B Documents prepared by incorporated patent attorneys and incorporated legal practices

An incorporated patent attorney or an incorporated legal practice commits an offence if:

(a) an employee or member of the incorporated patent attorney or incorporated legal practice prepares a specification, or a document relating to an amendment of a specification; and

(b) the employee or member is not a registered patent attorney; and

(i) under the instructions or supervision of an individual who is a registered patent attorney; or

(ii) as directed by an order under section 105.

Penalty: 150 penalty units.

27 Section 203

Repeal the section, substitute:

203 Attendance at patent attorney's office

A registered patent attorney commits an offence if:

(a) the registered patent attorney practises, acts, or holds himself, herself or itself out as practising or acting, as a patent attorney, at an office or place of business where specifications or other documents are prepared for the purposes of this Act; and

(b) there is not an individual who is a registered patent attorney:

(i) in regular attendance at that office or place; and

(ii) in continuous charge of the patents work done at that office or place.

Penalty: 30 penalty units.

28 After subparagraph 228(2)(r)(i)

Insert:

(ia) assessing the professional conduct of registered patent attorneys by reference to standards of practice established by the Professional Standards Board from time to time;

29 Schedule 1

Insert:

company means a company registered under the Corporations Act 2001.

30 Schedule 1

Insert:

director of a company has the same meaning as in the Corporations Act 2001.

31 Schedule 1

Insert:

incorporated legal practice means a body corporate recognised under a law of the Commonwealth, a State or a Territory as an incorporated legal practice (however described).

32 Schedule 1

Insert:

incorporated patent attorney has the meaning given by subsection 198(10).

33 Schedule 1

Insert:

intellectual property advice has the meaning given by subsection 200(2C).

34 Schedule 1

Insert:

patent attorney director has the meaning given by subsection 198(11).

35 Schedule 1

Insert:

patents work has the meaning given by subsection 201A(2).

36 Schedule 1

Insert:

related company group means a group of 2 or more companies, where each member of the group is related to each other member of the group.

Schedule 6

23 Section 3 (in the list of definitions)

Omit "foreign patent office".

24 Section 3 (in the list of definitions)

Omit "modified examination".

25 Section 3 (in the list of definitions)

Omit "sealed".

26 Section 4

Repeal the section.

27 Section 8

Repeal the section.

28 Paragraph 9(d)

Omit "Territory.", substitute "Territory;".

29 At the end of section 9 (before the note)

Add:

(e) any use of the invention by or on behalf of, or with the authority of, the patentee or nominated person, or his or her predecessor in title to the invention, for any purpose, if a complete application is made for the invention within the prescribed period.

30 Section 10 (note)

Omit ": see also Chapter 8".

31 Before section 22

Insert:

22A Validity not affected by who patent is granted to

A patent is not invalid merely because:

(a) the patent, or a share in the patent, was granted to a person who was not entitled to it; or

(b) the patent, or a share in the patent, was not granted to a person who was entitled to it.

32 Paragraph 24(1)(a)

Omit ", through any publication or use of the invention".

33 Subsection 24(1)

Omit "patent application", substitute "complete application".

34 After section 29

Insert:

29A Applications for patents--special rules for PCT applications

(1) A PCT application is to be treated as a complete application under this Act for a standard patent.

(2) The description, drawings and claims contained in a PCT application are to be treated as a complete specification filed in respect of the application.

(3) The specification of a PCT application is to be taken to be amended in the circumstances, on the day and in the manner as prescribed by the regulations.

(4) A PCT application is to be taken to comply with the prescribed requirements of this Act that relate to applications for standard patents, but is not to be taken, merely because of subsection (1) or (2), to comply with any other requirements of this Act.

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

(a) if the application was not filed in the receiving Office in English--file a translation of the application into English;

(b) in any case--file the prescribed documents and pay the prescribed fees.

Note: A failure to comply with this subsection may result in the PCT application lapsing: see paragraph 142(2)(f).

29B Applications for patents--special rules for Convention applications

Making Convention applications

(1) A Convention applicant in relation to a basic application may make a Convention application, or 2 or more such applicants may make a joint Convention application.

(2) If 2 or more basic applications for protection in respect of inventions have been made in one or more Convention countries, one Convention application may be made within the prescribed period by a Convention applicant in relation to those basic applications, or by 2 or more such entitled applicants jointly, in respect of the inventions disclosed in the basic applications.

(3) Subject to subsections (4) and (5), a Convention application must be made and dealt with in the same way as any other patent application.

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

(a) include the prescribed particulars relating to the relevant basic application; and

(b) be accompanied by a complete specification.

Meaning of Convention country

(5) Convention country means a foreign country or region of a kind prescribed by the regulations.

(6) Despite subsection 14(2) of the Legislative Instruments Act 2003, regulations made for the purposes of subsection (1) may make provision in relation to a matter by applying, adopting or incorporating, with or without modification, any matter contained in any other instrument or other writing as in force or existing from time to time.

Note: The heading to section 29 is altered by adding at the end "--general rules".

35 Section 30

After "application", insert "(including a PCT application)".

36 Section 32

Before "If", insert "(1)".

37 Section 32

Omit "interested parties", substitute "joint applicants".

38 Section 32

Omit "parties" (second and third occurring), substitute "applicants".

39 At the end of section 32

Add:

(2) The Commissioner may make a determination under subsection (1) whether or not the application has lapsed.

(3) The Commissioner must not make a determination under subsection (1) without first giving each joint applicant a reasonable opportunity to be heard.

40 Paragraph 36(1)(a)

Omit "the patent request and complete specification have not been accepted", substitute "the patent has not been granted".

41 After subsection 36(3)

Insert:

(3A) The Commissioner may, after making a declaration under subsection (1), make any determination the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the declared persons.

42 After subsection 38(1)

Insert:

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

43 After subsection 40(3)

Insert:

(3A) The claim or claims must not rely on references to descriptions or drawings unless absolutely necessary to define the invention.

44 Subsections 43(5) and (6)

Repeal the subsections, substitute:

(5) If, at the time when a Convention application or a PCT application is made in respect of an invention:

(a) an application (the earlier application) has been made for protection in respect of the invention in a Convention country; and

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

(d) the earlier application has not been used as the basis of claiming a right of priority in a Convention country under a law of that country; and

(e) a later application has been made by the same applicant for protection in respect of the invention in a Convention country;

the earlier application is taken, for the purposes of this Act, to have never been made.

Note: For the purposes of paragraph (e), the later application need not have been made in the same Convention country as the earlier application.

45 After section 43

Insert:

43AA Disclosure in basic applications

Prescribed documents relating to basic applications

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

Disclosures in prescribed documents may generally be taken into account

(2) Without limiting the documents or disclosures that may be taken into account for the purposes of this Act in relation to a basic application, account may be taken of a disclosure in a prescribed document that relates to a basic application.

Disclosures in prescribed documents must not be taken into account if Commissioner's requirement not complied with

(3) However, if the Commissioner makes a requirement under subsection (4) in relation to a prescribed document, account must not be taken, for the purposes of this Act, of a disclosure in the prescribed document unless the document has been made available by the prescribed means and within the prescribed period.

Commissioner may require prescribed documents be made available

(4) The Commissioner may require that a prescribed document relating to a basic application be made available to the Commissioner by the prescribed means and within the prescribed period.

(5) The Commissioner may make a requirement under subsection (4) more than once in relation to the same prescribed document.

46 Subsection 45(1)

Omit "Where", substitute "Subject to subsection (1A), if".

47 After subsection 45(1)

Insert:

(1A) If a PCT application has been made and the prescribed requirements have not been met, the Commissioner may decline to examine the request and specification under subsection (1) until the requirements have been met.

48 Subsections 45(3) to (5)

Repeal the subsections.

49 Section 46

Repeal the section.

50 Division 2 of Part 2 of Chapter 3

Repeal the Division.

51 Subsections 49(3) and (4)

Repeal the subsections.

52 Subsection 49(6)

Repeal the subsection, substitute:

(6) If the patent request and complete specification have not already become open to public inspection, the notice mentioned in paragraph (5)(b) must include a statement to the effect that the patent request and specification are open to public inspection.

53 After section 49

Insert:

49A Postponing acceptance of patent request: standard patent

(1) The Commissioner may postpone acceptance of a patent request and complete specification:

(a) on his or her own initiative; or

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

(2) If the Commissioner postpones acceptance on his or her own initiative, he or she must specify a day to which acceptance is postponed.

(3) If the Commissioner postpones acceptance following a request by the applicant, the Commissioner may specify a day to which acceptance is postponed.

(4) The day specified under subsection (2) or (3) cannot be a day that is after the end of the period prescribed for the purposes of paragraph 142(2)(e).

(5) If:

(a) acceptance is postponed under subsection (1) following a request by the applicant; and

(b) the Commissioner has not specified a day to which acceptance is postponed;

the Commissioner is not required to accept the patent request and complete specification unless the applicant withdraws the request in writing.

Note: If the applicant does not withdraw the request before the day prescribed by the regulations, the application lapses: see paragraph 142(2)(e).

54 After section 50

Insert:

50A Revocation of acceptance

(1) The Commissioner may revoke the acceptance of a patent request and complete specification relating to an application for a standard patent if the Commissioner is satisfied, on the balance of probabilities, that:

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

(b) the request and specification should not have been accepted, taking account of all the circumstances that existed when the request and specification were accepted (whether or not the Commissioner knew then of their existence); and

(2) If the Commissioner revokes the acceptance:

(a) the patent request and complete specification are taken to have never been accepted; and

(b) the Commissioner must continue to examine, and report on, the application under section 45; and

55 At the end of section 51

Add "(other than a decision under section 50A)".

56 Section 53

Repeal the section, substitute:

53 Publication of certain information about applicants etc.

(1) If a patent application (other than a PCT application) is made, the Commissioner must publish in the Official Journal the prescribed information about the applicant and the application.

(2) The regulations may make provision for and in relation to the publication of information relating to PCT applications.

57 Subsection 55(3)

Omit "section 90", substitute "section 56A".

58 After section 56

Insert:

56A Publication and inspection of PCT applications

(1) The regulations may make provision for and in relation to the public inspection of PCT applications.

(2) Without limiting subsection (1), the regulations may make provision for and in relation to:

(a) notices regarding the opening of complete specifications relating to PCT applications to public inspection; and

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

59 At the end of subsection 57(1)

Add:

(5) For the purposes of applying this section to a PCT application, references to the complete specification becoming open to public inspection are references to the PCT application becoming open to public inspection in accordance with regulations made for the purposes of section 56A.

60 Subsection 61(1)

Omit "by sealing a standard patent in the approved form", substitute "by registering prescribed particulars of the patent in the Register".

61 At the end of section 61

Add:

(3) The Commissioner must notify the patentee that the standard patent has been granted.

62 Subsection 62(1)

Omit "by sealing an innovation patent in the approved form", substitute "by registering prescribed particulars of the patent in the Register".

63 At the end of section 62

Add:

(4) The Commissioner must notify the patentee that the innovation patent has been granted.

64 Section 66

Repeal the section.

65 Subsection 79C(1)

Omit "sealed", substitute "granted".

66 Subsection 81(3)

Omit "sealed" (wherever occurring), substitute "granted".

67 Chapter 8

Repeal the Chapter.

68 Section 101D

Repeal the section.

69 After section 101E

Insert:

101EA Revocation of certificate of examination

(1) The Commissioner may revoke a certificate of examination issued in relation to an innovation patent if the Commissioner is satisfied, on the balance of probabilities, that:

(a) the certificate of examination should not have been issued, taking account of all the circumstances that existed when the certificate was issued (whether or not the Commissioner knew then of their existence); and

(b) it is reasonable to revoke the certificate, taking account of all the circumstances; and

(2) If the Commissioner revokes the certificate:

(a) all of the provisions of section 101E are taken, after revocation, to have never operated in relation to the patent; and

(b) the Commissioner must continue to examine and report on the patent under section 101B; and

70 Subsection 102(2C)

Repeal the subsection.

71 Subsection 105(1)

Omit "the patent,".

72 Subsection 105(6)

Omit "patent,".

73 Sections 125 to 127

Repeal the sections, substitute:

125 Application for non-infringement declaration

(1) A person who has done, is doing, or is intending to do an act may apply to a prescribed court for a declaration that the doing of the act does not, or would not, infringe a patent.

(2) An application may be made:

(a) for a declaration in relation to an invention claimed in a standard patent--at any time after the patent has been granted; and

(b) for a declaration in relation to an innovation patent--at any time after the patent has been certified; and

(c) whether or not the patentee has made any assertion to the effect that the doing of the act has or would infringe the claim.

(3) The patentee must be joined as a respondent in the proceedings.

126 Proceedings for non-infringement declarations

(1) A prescribed court must not make a non-infringement declaration unless:

(a) the applicant for the declaration:

(i) has asked the patentee in writing for a written admission that the doing of the act has not infringed, or would not infringe, the patent; and

(ii) has given the patentee full written particulars of the act done, or proposed to be done; and

(iii) has undertaken to pay a reasonable sum for the patentee's expenses in obtaining advice about whether the act has infringed or would infringe the claim; and

(b) the patentee has refused or failed to make the admission.

(2) The court may make orders as to costs as the court thinks fit.

127 Effect of non-infringement declarations

If:

(a) a patentee has given a person a written admission that the doing of an act has not infringed, or would not infringe, a claim, or a prescribed court has made a non-infringement declaration in respect of an invention; and

(b) the patentee later gets an injunction restraining the person from doing the act as specified in the admission, or the declaration is revoked;

the person is not liable:

(c) to account to the patentee for any profits, made by the person before the date on which the injunction was granted or the declaration was revoked, from the doing of the act as specified in the admission or declaration; or

(d) to pay damages for any loss suffered by the patentee before that date as a result of the doing of that act.

74 Subsection 135(2)

Omit "sealed", substitute "granted".

75 At the end of section 138

Add:

(4) A court must not make an order under subsection (3) on the ground that the patentee is not entitled to the patent unless the court is satisfied that, in all the circumstances, it is just and equitable to do so.

76 Subsection 141(2)

Repeal the subsection, substitute:

(2) The regulations may prescribe circumstances in which PCT applications may be withdrawn, or are to be taken to be withdrawn.

77 Paragraph 142(2)(c)

Repeal the paragraph.

78 At the end of subsection 142(2)

Add:

; or (f) if the application is a PCT application--prescribed circumstances apply to the application.

79 After section 191

Insert:

191A Commissioner's power to rectify register

(1) The Commissioner may rectify the Register if the Commissioner is satisfied, on the balance of probabilities, whether on application or otherwise, of any of the following:

(a) the omission of an entry from the Register;

(b) an entry made in the Register without sufficient cause;

(d) an error or defect in an entry in the Register.

(2) The Commissioner must, on application, make a declaration as to a person's entitlement to a patent, or a share in a patent, if the Commissioner is satisfied, on the balance of probabilities, that the Register does not properly record a person's entitlement to a patent, or a share in a patent:

(a) because the patent, or a share in the patent, was granted to a person who was not entitled to it; or

(b) because the patent, or a share in the patent, was not granted to a person who was entitled to it; or

(3) If the Commissioner makes a declaration under subsection (2), the Commissioner must rectify the Register accordingly.

(4) The Commissioner must not make a declaration, or rectify the Register, under this section without first giving the following persons a reasonable opportunity to be heard:

(a) the person whose entitlement is not properly recorded by the Register;

(b) any person whose entitlement to the patent, or a share in the patent, is recorded in the Register.

(5) The Commissioner must not make a declaration or rectify the Register under this section while relevant proceedings in relation to the patent are pending.

(6) An appeal lies to the Federal Court against a decision of the Commissioner:

(a) to make, or refuse to make, a declaration; or

(b) to rectify, or not rectify, the Register;

under this section.

80 At the end of Chapter 19

Add:

197AA Evidence of matters arising under PCT

A certificate signed by the Commissioner in relation to an international application, certifying that:

(a) any matter or thing required or permitted by or under this Act or the PCT to be made or done has been made or done; or

(b) any matter or thing required by or under this Act or the PCT not to be made or done has not been made or done;

is prima facie evidence of the matters contained in the certificate.

81 Subsection 205(2)

Repeal the subsection, substitute:

(2) The Commissioner may establish one or more sub-offices of the Patent Office as the Commissioner considers appropriate.

(3) The Commissioner may abolish any such sub-offices.

82 Section 214

Repeal the section, substitute:

214 Filing of documents

A document may be filed with the Patent Office by:

(a) delivering the document to the Patent Office or a sub-office of the Patent Office (if any) either personally or by post; or

(b) any other prescribed means.

83 Subsection 215(3)

Omit "the patent by", substitute "the Register by".

84 Subsection 222A(1)

After "of the Patent Office", insert "(if any)".

85 At the end of subsection 223(1)

Add:

; or (d) the receiving Office; or

(e) the International Bureau of the World Intellectual Property Organization.

86 Paragraph 224(1)(a)

Omit ", 52 or 66, subsection 74(3)", substitute "or 52, subsection 56(1)(b), 74(3)".

88 Subsection 227(3) (note)

Omit "89(3)", substitute "29A(5)".

89 Paragraph 228(2)(f)

Repeal the paragraph.

90 After paragraph 228(2)(ha)

Insert:

(i) setting out the checking process for PCT applications including, in particular, the following matters:

(i) specifying the requirements that must be met in respect of a PCT application, once the requirements of subsection 29A(5) have been met;

(ii) empowering the Commissioner to direct an applicant to do such things as are necessary to ensure that the PCT application is in accordance with those requirements;

(iii) providing for the lapsing of the PCT application if such a direction is not complied with within a time specified in the regulations;

91 Subsections 228(5) and (6)

Repeal the subsections.

92 Schedule 1 (at the end of the definition of Budapest Treaty)

Add:

Note: The text of the Treaty is set out in Australian Treaty Series 1987 No. 9 ([1987] ATS 9). In 2011, the text of a Treaty in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au).

93 Schedule 1 (definition of Convention application)

Omit "Part 2 of Chapter 8", substitute "Part 1 of Chapter 3".

94 Schedule 1 (definition of Convention country)

Repeal the definition, substitute:

Convention country has the meaning given by section 29B.

95 Schedule 1 (paragraph (a) of the definition of examination)

Omit ", or a modified examination of the request and specification under section 48".

96 Schedule 1 (definition of foreign patent office)

Repeal the definition.

97 Schedule 1 (definition of international filing date)

Repeal the definition, substitute:

international filing date, in relation to an international application, means the date given to the international application as its international filing date under the PCT.

98 Schedule 1 (definition of modified examination)

Repeal the definition.

99 Schedule 1 (at the end of the definition of PCT)

Add:

Note: The text of the Treaty is set out in Australian Treaty Series 1980 No. 6 ([1980] ATS 6). In 2011, the text of a Treaty in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au).

100 Schedule 1 (definition of PCT application)

Repeal the definition, substitute:

PCT application means an international application in which Australia is specified as a designated State under Article 4(1)(ii) of the PCT.

101 Schedule 1 (sub-subparagraph (b)(ii)(B) of the definition of prior art base)

After "published", insert "on or".

102 Schedule 1 (sub subparagraph (b)(ii)(C) of the definition of prior art base)

Omit "and when it was published".

103 Schedule 1 (definition of sealed)

Repeal the definition.

As at 3 May 2012 the amendments are not incorporated in this compilation.

Table A

Application, saving or transitional provisions

Intellectual Property Laws Amendment Act 1998 (No. 100, 1998)

Schedule 1

8 Application of amendments

The amendments made by this Schedule apply to:

(a) standard patents granted on or after the commencement of this item; and

(b) standard patents granted before the commencement of this item (other than a standard patent granted for a term of 16 years and whose term at the time of the grant was due to end before 1 July 1995).

Schedule 2

31 Transitional--Register of Patent Attorneys

After the commencement of this item, the Register of Patent Attorneys kept under section 198 of the Patents Act 1990 (as in force immediately before that commencement) is taken to form part of the Register of Patent Attorneys kept under section 198 of that Act as amended by this Schedule.

32 Transitional--registered patent attorneys

(1) This item applies to a person who was, immediately before the commencement of this item, a registered patent attorney within the meaning of the Patents Act 1990.

(2) The Patents Act 1990 has effect, after the commencement of this item, in relation to the person, as if the person had been registered as a patent attorney under section 198 of the Patents Act 1990 as amended by this Schedule.

Schedule 3

4 Application

Section 227 of the Patents Act 1990 as amended by item 3 of this Schedule applies only in relation to a fee payable under that Act in respect of the doing of an act or the filing of a document that is to occur on or after the commencement of that item.

Patents Amendment (Innovation Patents) Act 2000 (No. 140, 2000)

Schedule 2

1 Definitions

In this Schedule:

commencement day means the day this Act commences.

new law means the Patents Act 1990 as amended by this Act.

old law means the Patents Act 1990, and the regulations made under it, in force immediately before this Act commences.

petty patent means letters patent for an invention granted under section 62 of the old law.

2 Saving and application provisions relating to old law

(1) Despite the amendments and repeals made by this Act, the old law continues to apply, with the exceptions set out in the following subitems, to:

(a) petty patents in force immediately before the commencement day; and

(b) petty patents the term of which has expired before the commencement day; and

(c) applications for petty patents made before the commencement day but not decided upon by the Commissioner before that day; and

(d) petty patents granted on or after the commencement day on applications for a patent made before the commencement day.

The old law continues to apply as if those amendments and repeals had not been made.

Exception--fees payable in respect of petty patents after the commencement day

(2) The amendments made by items 89 and 90 of Schedule 1 are incorporated into the old law in relation to fees payable in respect of petty patents on or after the commencement day.

Exception--under subsection 33(2) of the old law only innovation patents may be granted

(3) Despite subsection 33(2) of the old law providing that the Commissioner may grant a person who applies for a petty patent if the matters listed in paragraphs 33(2)(a), (b) and (c) are satisfied, the Commissioner, on or after the commencement day, may only grant the person an innovation patent.

Exception--under sections 34, 35 and 36 of the old law only innovation patents or standard patents may be granted

(4) Despite section 34, 35 and 36 of the old law providing that the Commissioner may grant a person a patent, the Commissioner, on or after the commencement day, may only grant a person an innovation patent or a standard patent.

Note: Under the old law, patent means a standard patent or a petty patent. This subitem overrides that meaning for grants of patent that the Commissioner makes on or after the commencement day.

Exception--divisional applications made after commencement day

(5) Despite subsection 39(1) of the old law providing that a further complete application may be made for a standard patent or a petty patent, on or after the commencement day a further complete application may only be made, as provided for in that subsection, for a standard patent or an innovation patent.

(6) Despite subsection 39(2) of the old law providing that a patentee of a petty patent may make a further complete application for a petty patent, on or after the commencement day a further complete application may only be made as provided for in that subsection for an innovation patent.

3 Transitional--applications for petty patents made before the commencement day may be converted to innovation patents or standard patents

(1) If, before the commencement day:

(a) a person files a complete application in respect of a petty patent; and

(b) a patent has not been accepted in respect of that application;

then, after that day, the person may convert the application, as provided for under subsection 104(2) of the old law.

(2) However, despite subsection 104(2) of the old law providing that the application may be for a standard patent or a petty patent, an application may only be made for a standard patent or an innovation patent.

4 Transitional--Register of Patents

Despite the continuation of section 186 of the old law by subitem 2(1):

(a) entries on the Register of Patents immediately before the commencement day relating to petty patents are included, after that day, in the Register in the part dealing with standard patents; and

(b) after that day, entries relating to petty patents are to be entered in the Register in the part dealing with standard patents.

Note: Section 186 of the new law provides for the Register of Patents to have 2 parts: one dealing with entries relating to standard patents and the other dealing with entries relating to innovation patents.

5 Continuity of Register of Patents not affected

To avoid doubt, the continuity of the Register of Patents and the entries on it, are unaffected by the amendments made by this Act.

6 Other transitional matters relating to innovation patents and petty patents may be provided for in the regulations

The Governor-General may make regulations, not inconsistent with this Act or the new law, prescribing other transitional matters, apart from transitional matters provided for in this Schedule, that are necessary or convenient for carrying out or giving effect to:

(a) the introduction of the innovation patent scheme; and

(b) the limited continuation of the petty patent scheme as provided for in this Schedule.

7 Application

(1) The amendments made by items 86, 87, 89 and 90 of Schedule 1 do not apply in relation to fees that were due and payable before the day on which this Act commences.

(2) The amendments made by items 86, 87, 89 and 90 of Schedule 1 do not apply in relation to fees paid before the day on which this Act commences (even if they were not due until that day or a later day).

8 Saving of regulations for subsection 223(9)

(1) Regulations in force for the purposes of subsection 223(9) of the Patents Act 1990 immediately before the day on which this Act commences continue to have effect on and after that day as if they had been made for the purposes of that subsection as amended by this Schedule.

(2) Subitem 1 does not prevent the repeal or amendment of regulations continued by that subitem.

Industry, Science and Resources Legislation Amendment (Application of Criminal Code) Act 2001 (No. 140, 2001)

4 Application of amendments

(1) Each amendment made by this Act applies to acts and omissions that take place after the amendment commences.

(2) For the purposes of this section, if an act or omission is alleged to have taken place between 2 dates, one before and one on or after the day on which a particular amendment commences, the act or omission is alleged to have taken place before the amendment commences.

Patents Amendment Act 2001 (No. 160, 2001)

Schedule 1

13 Application

The amendments made by this Part apply in relation to:

(a) patents for which the complete application is made on or after the day on which this Schedule commences; and

(b) the making of complete applications for patents on or after the day on which this Schedule commences.

32 Application

(1) The amendments made by items 14 and 24 of this Schedule apply in relation to an application if the patent request and complete specification in relation to that application has not been accepted under subsection 49(1) of the Patents Act 1990 before the commencement of this Schedule.

(2) The amendment made by item 15 of this Schedule applies in relation to the acceptance of a patent request and complete specification under subsection 49(1) of the Patents Act 1990 on or after the commencement of this Schedule.

(3) The amendments made by items 16, 17 and 18 of this Schedule apply in relation to the grant of a patent on or after the commencement of this Schedule.

(4) The amendment made by item 19 of this Schedule applies in relation to a patent unless the Commissioner has started examination of the patent under section 101B of the Patents Act 1990 before the commencement of this Schedule.

(5) The amendments made by items 20, 21 and 25 of this Schedule apply in relation to decisions of the Commissioner made under section 101E of the Patents Act 1990 on or after the commencement of this Schedule.

(6) The amendment made by item 23 of this Schedule applies in relation to a patent if the date of the patent is the date on which this Schedule commences or a later date.

(7) The amendments made by items 27, 28, 29, 30 and 31 of this Schedule apply in relation to applications made under section 223 of the Patents Act 1990 on or after the commencement of this Schedule.

33 Saving of regulations

(1) Regulations in force for the purposes of a provision of the Patents Act 1990 immediately before the day on which this Schedule commences continue to have effect on and after that day as if they had been made for the purposes of that provision as amended by this Schedule.

(2) Subitem (1) does not prevent the repeal or amendment of regulations continued by that subitem.

Intellectual Property Laws Amendment Act 2003 (No. 48, 2003)

Schedule 2

5 Application

(1) The amendment made by item 2 of this Schedule applies in relation to an application if the patent request and complete specification in relation to that application had not been accepted under subsection 49(1) of the Patents Act 1990 before 1 April 2002.

(2) The amendment made by item 3 of this Schedule applies in relation to an innovation patent unless the Commissioner had started examination of the patent under section 101B of the Patents Act 1990 before 1 April 2002.

(3) For the purposes of subitem (1), information given before commencement under old subsection 45(3) is taken to be information given under new subsection 45(3).

(4) For the purposes of subitem (2), information given before commencement under old section 101D is taken to be information given under new section 101D.

(5) In this item:

commencement means the time of commencement of Part 1 of this Schedule.

new section 101D means section 101D of the Patents Act 1990 as in force immediately after commencement.

new subsection 45(3) means subsection 45(3) of the Patents Act 1990 as in force immediately after commencement.

old section 101D means section 101D of the Patents Act 1990 as in force immediately before commencement.

old subsection 45(3) means subsection 45(3) of the Patents Act 1990 as in force immediately before commencement.

US Free Trade Agreement Implementation Act 2004 (No. 120, 2004)

Schedule 8

3 Application of amendments of section 59 of the Patents Act 1990

The amendments of section 59 of the Patents Act 1990 made by this Schedule apply in relation to each patent application for a standard patent:

(a) made after the commencement of this Schedule; or

(b) made before the commencement of this Schedule, but for which a patent has not been granted by the commencement of this Schedule.

Intellectual Property Laws Amendment Act 2006 (No. 106, 2006)

Schedule 5

2 Application

The amendment of section 122 of the Patents Act 1990 made by this Schedule applies to infringements of patents occurring on or after the commencement of this Schedule.

Schedule 6

2 Application

The amendment of the Patents Act 1990 made by this Schedule applies in relation to patents granted as a result of applications filed on or after the commencement of this Schedule.

Schedule 7

4 Application

The amendments of the Patents Act 1990 made by this Schedule apply in relation to the exploitation, at or after the time this Schedule commences, of inventions claimed in patents in force at or after that time.

Schedule 8

9 Application and saving provisions

(1) The amendments of the Patents Act 1990 made by this Schedule apply in relation to conduct (including omissions) that:

(a) occurs after the commencement of this Schedule; and

(b) is connected with a patent granted before, on or after that commencement.

(2) To avoid doubt, proceedings started in a prescribed court under section 133 or 134 of the Patents Act 1990 but not concluded before the commencement of this Schedule may be continued in the court after that commencement as if the amendments of that Act by this Schedule had not been made.

Schedule 9

2 Application

The amendment of paragraph 40(2)(c) of the Patents Act 1990 made by this Schedule applies to complete specifications relating to applications for innovation patents filed before, on or after the commencement of this Schedule.

Schedule 10

3 Application

The amendments made by this Schedule apply to the making of a complete application on or after the commencement of this Schedule, whether the first patent concerned was granted before, on or after that commencement.

Personal Property Securities (Consequential Amendments) Act 2009
(No. 131, 2009)

Schedule 2

15 Application of amendments of the Patents Act 1990

(1) The amendment of the Patents Act 1990 made by item 9 of this Schedule does not apply in relation to a dealing that starts before the time the item commences.

(2) The amendment of the Patents Act 1990 made by item 10 of this Schedule does not apply in relation to the enforcement of an equity if the equity starts to be enforced before the time the item commences.

(3) The amendments of the Patents Act 1990 made by items 11, 12 and 13 of this Schedule do not apply in relation to any proceedings in a court or tribunal in relation to patents (or interests in patents) that are commenced before the time the items commence.

Note: Items 9 to 13 commence at the registration commencement time within the meaning of section 306 of the Personal Property Securities Act 2009.

Acts Interpretation Amendment Act 2011 (No. 46, 2011)

Schedule 3

10 Saving--appointments

The amendments made by Schedule 2 do not affect the validity of an appointment that was made under an Act before the commencement of this item and that was in force immediately before that commencement.

11 Transitional regulations

The Governor-General may make regulations prescribing matters of a transitional nature (including prescribing any saving or application provisions) relating to the amendments and repeals made by Schedules 1 and 2.

Intellectual Property Laws Amendment (Raising the Bar) Act 2012
(No. 35, 2012)

Schedule 2

2 Application

The amendment made by item 1 of this Schedule applies in relation to acts done on or after the commencement of this Schedule in relation to patents granted before, on or after that commencement.

The following provisions commence on 15 April 2013:

Schedule 1

55 Application of amendments

(1) The amendments made by items 2, 3, 4, 6, 8, 9 and 10 of this Schedule apply in relation to:

(a) patents for which the complete application is made on or after the day this Schedule commences; and

(b) standard patents for which the application had been made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

(c) innovation patents granted on or after the day this Schedule commences, if the complete application to which the patent relates had been made before that day; and

(d) complete patent applications made on or after the day this Schedule commences; and

(e) complete applications for standard patents made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

(f) complete applications for innovation patents made before the day this Schedule commences, if a patent had not been granted in relation to the application on or before that day; and

(g) innovation patents granted before the day this Schedule commences, if:

(i) the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

(ii) the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

(2) The amendment made by item 7 of this Schedule applies in relation to provisional applications made on or after the day this Schedule commences.

(3) The amendments made by items 11 and 37 of this Schedule apply in relation to complete applications for standard patents made on or after the day this Schedule commences.

(4) The amendments made by items 12, 13, 14, 15 and 18 of this Schedule apply in relation to:

(a) complete applications for standard patents made on or after the day this Schedule commences; and

(b) complete applications for standard patents made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day.

(5) The amendments made by items 16 and 17 of this Schedule apply in relation to:

(a) applications for standard patents, whether the application was made before, on or after the day this Schedule commences; and

(b) standard patents, whether granted before, on or after that day.

(6) The amendment made by item 19 of this Schedule applies in relation to:

(a) standard patents for which the complete application is made on or after the day this Schedule commences; and

(b) standard patents for which the complete application had been made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day.

(7) The amendments made by items 23, 24 and 25 of this Schedule apply in relation to innovation patents, whether granted before, on or after the day this Schedule commences.

(8) The amendments made by items 20, 21, 22, 26, 27, 28, 30, 35 and 38 of this Schedule apply in relation to:

(a) complete applications for innovation patents made on or after the day this Schedule commences; and

(b) complete applications for innovation patents made before the day this Schedule commences, if a patent had not been granted in relation to the application on or before that day; and

(i) the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

(ii) the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

(d) innovation patents granted on complete applications for innovation patents made on or after the day this Schedule commences; and

(e) innovation patents granted on or after the day this Schedule commences, if the complete application to which the patent relates had been made before that day.

(9) The amendments made by items 29 and 31 to 34 of this Schedule apply in relation to amendments of complete specifications directed or requested to be made on or after the day this Schedule commences if the amendments are in relation to:

(a) patents for which the complete application is made on or after the day this Schedule commences; or

(c) innovation patents granted on or after the day this Schedule commences, if the complete application to which the patent relates had been made before that day; or

(d) complete patent applications made on or after the day this Schedule commences; or

(f) complete applications for innovation patents made before the day this Schedule commences, if a patent had not been granted in relation to the application on or before that day; or

(g) innovation patents granted before the day this Schedule commences, if:

(i) the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; or

(ii) the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

(10) The amendments made by items 39, 41, 45, 48, 49 and 50 of this Schedule apply in relation to:

(a) complete applications for standard patents made on or after the day this Schedule commences; and

(11) The amendments made by item 40, 43, 44, 46, 47 and 52 apply in relation to patents granted on or after the day this Schedule commences.

(12) The amendment made by item 42 of this Schedule applies in relation to:

(a) complete applications for innovation patents made on or after the day this Schedule commences; and

(b) complete applications for innovation patents made before the day this Schedule commences, if a patent had not been granted in relation to the application on or before that day; and

(i) the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

(ii) the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

(13) The amendments made by items 51 and 54 of this Schedule apply in relation to applications made on or after the day this Schedule commences.

(14) The amendment made by item 53 applies in relation to acts required to be done on or after the day this Schedule commences.

56 Transitional provision--approved form

(1) This item applies to an approval of a form given by the Commissioner under paragraph 101E(e) of the Patents Act 1990 that was in force immediately before the commencement of this Schedule.

(2) The approval has effect, after the commencement of this Schedule, as if it had been given under paragraph 101E(2)(c) as inserted by this Schedule.

Schedule 3

32 Application of amendments

(1) The amendments made by items 1 and 10 of this Schedule apply in relation to:

(a) requests for amendments made on or after the day this Schedule commences; and

(b) requests for amendments made before that day, if the Commissioner had not dealt with the request on or before that day.

(2) The amendments made by items 2, 13, 14 and 15 of this Schedule apply in relation to powers exercised by the Commissioner under section 210 of the Patents Act 1990 (as amended by this Schedule) on or after the day this Schedule commences.

(3) The amendment made by item 3 of this Schedule applies in relation to divisional applications provided for in section 79B of the Patents Act 1990 made on or after the day this Schedule commences.

(4) The amendments made by items 4 and 5 of this Schedule apply in relation to divisional applications provided for in section 79C of the Patents Act 1990 made on or after the day this Schedule commences.

(5) The amendments made by items 6, 7, 8 and 9 of this Schedule apply in relation to appeals to the Federal Court:

(a) made on or after the day this Schedule commences; and

(b) made before that day, if the appeal had not been finally determined, withdrawn or otherwise disposed of.

(6) The amendments made by items 11 and 16 of this Schedule apply in relation to notices of withdrawal filed on or after the day this Schedule commences in respect of patent applications made before, on or after that day.

33 Transitional provision--regulations

Despite the amendment made by item 11 of this Schedule, regulations in force for the purposes of section 141 of the Patents Act 1990 immediately before the commencement of this Schedule continue in effect, after that commencement, as if they had been made for the purposes of that section, as in force after that commencement.

Schedule 6

133 Application provisions

(1) The amendment made by item 29 of this Schedule applies in relation to a use of an invention on or after the day that item commences.

(2) The amendments made by items 30, 34, 35, 42, 46, 47, 56, 57, 58, 59, 67, 76, 78, 80, 85, 88, 90, 93, 97 and 100 of this Schedule apply in relation to applications made on or after the day those items commence.

(3) The amendments made by items 31 and 79 of this Schedule apply on and after the day those items commence in relation to patents granted before, on or after that commencement.

(4) The amendments made by items 32 and 33 of this Schedule apply in relation to information that is made publicly available on or after the day those items commence.

(5) The amendments made by items 36, 37, 38 and 39 of this Schedule apply in relation to disputes arising on or after the day those items commence.

(6) The amendments made by items 40 and 41 of this Schedule apply in relation to declarations made on or after the day those items commence.

(7) The amendments made by items 43 and 102 of this Schedule apply in relation to:

(a) patents for which the complete application is made on or after the day those items commence; and

(b) standard patents for which the application was made before the day those items commence, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

(c) innovation patents granted on or after the day those items commence, if the complete application to which the patent relates was made before that day; and

(d) complete patent applications made on or after the day those items commence; and

(e) complete applications for standard patents made before the day those items commence, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

(f) complete applications for innovation patents made before the day those items commence, if a patent had not been granted in relation to the application on or before that day; and

(g) innovation patents granted before the day those items commence, if:

(i) the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

(ii) the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

(8) The amendment made by item 44 of this Schedule applies in relation to applications filed, and patents granted, before, on or after the day that item commences.

(9) The amendments made by items 60, 61, 62, 63 and 64 of this Schedule apply in relation to patents granted on or after the day those items commence.

(10) The amendments made by items 71 and 72 of this Schedule apply in relation to proceedings commenced on or after the day those items commence.

(11) The amendments made by items 54 and 55 of this Schedule apply in relation to applications accepted on or after the day those items commence.

(12) The amendment made by item 69 of this Schedule applies in relation to patents certified on or after the day that item commences.

(13) The amendment made by item 73 of this Schedule applies in relation to applications for non-infringement declarations made on or after the day that item commences.

(14) The amendment made by item 75 of this Schedule applies in relation to applications for orders made on or after the day that item commences, whether the patent was granted before, on or after that day.

(15) The amendment made by item 77 of this Schedule does not apply in relation to an application if:

(a) the examination of the patent request and complete specification for the application had been deferred under section 46 of the Patents Act 1990 (as in force immediately before the commencement of that item); and

(b) the applicant had not asked for an examination of the patent request and complete specification on or before that commencement.

(16) The amendment made by item 101 of this Schedule applies in relation to:

(a) patents for which the complete application is made on or after the day that item commences; and

(b) standard patents for which the application was made before the day that item commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

(c) innovation patents granted on or after the day that item commences, if the complete application to which the patent relates was made before that day; and

(d) complete patent applications made on or after the day that item commences; and

(e) complete applications for standard patents made before the day that item commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

(f) complete applications for innovation patents made before the day that item commences, if a patent had not been granted in relation to the application on or before that day; and

(g) innovation patents granted before the day that item commences, if:

(i) the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

(ii) the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

134 Savings provision--modified examinations

(1) This item applies if:

(a) a request for a modified examination had been made under section 47 of the Patents Act 1990 (as in force immediately before the commencement of this item) in relation to an application; and

(b) the modified examination:

(i) had not yet commenced at the time of that commencement; or

(ii) had commenced but the application had not been accepted at the time of that commencement.

(2) Despite the amendments made by items 50 and 52 of this Schedule, Division 2 of Part 2 of Chapter 3 and subsection 49(6) of the Patents Act 1990 (as in force immediately before the commencement of this item) continue to apply in relation to the application as if those amendments had not been made.

[1] This heading has been placed in the correct position.

Commonwealth Consolidated Acts

PATENTS ACT 1990 - NOTES

Commencement information
Column 1	Column 2	Column 3
Provision(s)	Commencement	Date/Details
5. Schedule 2, Part 3	Immediately after the time specified in the Patents Amendment (Innovation Patents) Act 2000 for the commencement of item 3 of Schedule 1 to that Act	24 May 2001