Commonwealth Consolidated Acts

PATENTS AMENDMENT (INNOVATION PATENTS) ACT 2000 - SCHEDULE 2

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.

(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.

(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.

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.

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

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).

(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.