Commonwealth Consolidated Acts

PATENTS ACT 1990 - SECT 101B

What the Commissioner must do in examining a patent

             (1)  If the Commissioner examines an innovation patent under section 101A, the Commissioner must:

                     (a)  examine the complete specification relating to the patent to determine if the patent is invalid and should be revoked because a ground set out in subsection (2), (4), (5), (6) or (7) is made out; and

                     (b)  report on the grounds set out in those subsections.

These are the only grounds for revocation under this section.

Grounds for revocation relating to validity

             (2)  The grounds for revocation under subsection (1) include the following:

                     (a)  that the specification does not comply with section 40;

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

                     (c)  that the invention is not a patentable invention under subsection 18(2) or (3);

                     (d)  that the use of the invention would be contrary to law.

             (3)  For the purposes of working out whether the invention does not comply with paragraph 18(1A)(b), the prior art base (referred to in that paragraph) is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area).

Revocation on ground that invention claims a substance capable of being used as food or medicine etc.

             (4)  A further ground for revocation is that the patent claims as an invention:

                     (a)  a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; or

                     (b)  a process producing such a substance by mere admixture.

Revocation on ground that patent includes a name

             (5)  A further ground for revocation is that the patent contains a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim.

Revocation on grounds of multiple patents for one invention

             (6)  A further ground for revocation is that:

                     (a)  the innovation patent claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor; and

                     (b)  the relevant claim or claims in respect of each patent have the same priority date or dates.

Revocation for grounds set out in the regulations

             (7)  A further ground for revocation is that the complete specification does not comply with such other matters (if any) as are prescribed.