An Act to amend the law relating to intellectual property, and for related purposes
Note: An electronic version of this Act is available in ComLaw (http://www.comlaw.gov.au/)
1 Short title...........................................................................................1 2 Commencement.................................................................................2 3 Schedule(s)........................................................................................4
Schedule 1—Revoking registration of trade marks etc. 5 Trade Marks Act 1995 5 Schedule 2—Non-payment of fees relating to trade marks 10 Trade Marks Act 1995 10 Schedule 3—Registration process for certification trade marks 11 Part 1—Amendments commencing on day after Royal Assent 11 Trade Marks Act 1995 11 Part 2—Amendments commencing on proclaimed day or after 6 months 13 Trade Marks Act 1995 13 Schedule 4—Availability of documents about trade marks 16 Trade Marks Act 1995 16 Schedule 5—Relief for infringement of patents 18 Patents Act 1990 18
Schedule 6—Exemption of continued prior use from patent infringement 19 Patents Act 1990 19 Schedule 7—Springboarding and patents 22 Patents Act 1990 22 Schedule 8—Compulsory licensing of patents 24 Patents Act 1990 24 Schedule 9—Specifying claims for innovation patents 26 Patents Act 1990 26
Schedule 11—Setting dates by regulations 28 Plant Breeder’s Rights Act 1994 28 Trade Marks Act 1995 28 Schedule 12—Effect of office not being open for business 29 Designs Act 2003 29 Olympic Insignia Protection Act 1987 30 Patents Act 1990 31 Plant Breeder’s Rights Act 1994 32 Trade Marks Act 1995 34 Schedule 13—Extension of time 36 Trade Marks Act 1995 36 Schedule 14—Approving forms 37 Plant Breeder’s Rights Act 1994 37 Schedule 15—Delegation 38 Designs Act 2003 38 Plant Breeder’s Rights Act 1994 38 Schedule 16—Statute law revision amendments 40 Patents Act 1990 40 Trade Marks Act 1995 40
An Act to amend the law relating to intellectual property, and for related purposes
[Assented to 27 September 2006]
This Act may be cited as the Intellectual Property Laws Amendment Act 2006.
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.
Commencement information
Column 1 Column 2 Column 3
Provision(s) Commencement Date/Details
However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period.
Commencement information | ||||
---|---|---|---|---|
Column 1 | Column 2 | Column 3 | ||
Provision(s) | Commencement | Date/Details | ||
6. Schedule 4 | A single day to be fixed by Proclamation. | 27 March 2007 | ||
However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. | ||||
7. Schedules 5 and 6 | The day after this Act receives the Royal Assent. | 28 September 2006 | ||
8. Schedule 7 | The 28th day after the day on which this Act receives the Royal Assent. | 25 October 2006 | ||
9. Schedules 8 and 9 | The day after this Act receives the Royal Assent. | 28 September 2006 | ||
10. Schedule 10 | A single day to be fixed by Proclamation. | 27 March 2007 | ||
However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. | ||||
11. Schedule 11 | The day after this Act receives the Royal Assent. | 28 September 2006 | ||
12. Schedule 12 | A single day to be fixed by Proclamation. | 27 March 2007 | ||
However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period. | ||||
13. Schedules 13 to 15 | The day after this Act receives the Royal Assent. | 28 September 2006 | ||
14. Schedule 16, item 1 | At the same time as Schedule 1 to the Therapeutic Goods Amendment (Medical Devices) Act 2002 commences. | 4 October 2002 | ||
15. Schedule 16, item 2 | Immediately after the commencement of section 84 of the Trade Marks Act 1995. | 1 January 1996 |
Commencement information | ||
---|---|---|
Column 1 | Column 2 | Column 3 |
Provision(s) | Commencement | Date/Details |
16. Schedule 16, item 3 | At the same time as item 943 of Schedule 1 to the Public Employment (Consequential and Transitional) Amendment Act 1999 commences. | 5 December 1999 |
Note: This table relates only to the provisions of this Act as originally passed by the Parliament and assented to. It will not be expanded to deal with provisions inserted in this Act after assent.
(2) Column 3 of the table contains additional information that is not part of this Act. Information in this column may be added to or edited in any published version of this Act.
Each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
1 Subsection 38(1)
Repeal the subsection, substitute:
(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
2 Application of amendment of section 38
The amendment of section 38 of the Trade Marks Act 1995 made by this Schedule applies in relation to the acceptance of an application for registration of the trade mark whether the acceptance occurred before, on or after the commencement of the amendment.
3 At the end of section 73
Add:
Note: Section 84C explains the effect of revocation of the registration of a trade mark, applying some provisions as if the registration had ceased at a particular time (but for most purposes treating the registration as if it had never occurred).
4 Part 8 (heading)
Repeal the heading, substitute:
5 Before section 81
Insert:
6 Before section 84
Insert:
7 At the end of Division 1 of Part 8
Add:
Power to revoke
Note: For use of a trade mark see section 6.
Prerequisites to revocation decision
(4) The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations within 12 months of registering the trade mark:
Note: For registered owner see section 6.
(5) The Registrar must not revoke the registration of the trade mark without giving each of the following persons the opportunity to be heard:
Note: For registered owner see section 6.
No duty to consider whether to revoke
(6) The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.
84B Registration must be revoked if opposition was ignored in registration process
The Registrar must revoke the registration of a trade mark if:
after the notice was filed or the application was made. The revocation must be done within that month.
Note: If the Registrar becomes aware of the failure later, he or she may be able to revoke the registration under section 84A.
if the trade mark had ceased to be registered at the time the
defendant became aware of the revocation.
Note: For registered owner see section 6.
An appeal lies to the Federal Court from a decision of the Registrar to revoke the registration of a trade mark under section 84A.
8 After subsection 224(3)
Insert:
(3A) If the Registrar has revoked the registration of a trade mark, he or she may extend the time for doing a relevant act that is required by this Act to be done within a certain time in connection with the application for registration of the trade mark.
9 Application of amendments of Part 8 and section 224
The amendments of Part 8 and section 224 of the Trade Marks Act 1995 made by this Schedule apply in relation to trade marks that became registered on or after the commencement of this Schedule.
1 Subsections 223(3), (4) and (5)
Repeal the subsections, substitute:
2 Application
The amendment made by this Schedule applies in relation to fees that become payable after the commencement of this Schedule.
Part 1—Amendments commencing on day after Royal Assent
1 Subsection 173(2)
Repeal the subsection, substitute:
2 Application of amendment of section 173
The amendment of section 173 of the Trade Marks Act 1995 made by this Part applies in relation to rules filed on or after the commencement of the amendment.
3 Paragraph 175(2)(a)
Repeal the paragraph, substitute:
(a) the attributes a person must have to become an approved certifier are sufficient to enable the person to assess competently whether goods and/or services meet the certification requirements; and
4 Subsection 175(2) (note 2)
Repeal the note, substitute:
Note 2: For approved certifier see paragraph 173(2)(c).
Note 3: For certification requirements see paragraph 173(2)(a).
5 Application of amendments of section 175
The amendments of section 175 of the Trade Marks Act 1995 made by this Part apply in relation to decisions to give, or refuse to give, a certificate relating to rules filed on or after the commencement of this Part.
6 Subsection 177(1) (note 2)
Omit “173(2)(a)”, substitute “173(2)(c)”.
7 Subsection 181(2) (note 2)
Omit “173(2)(a)”, substitute “173(2)(c)”.
Part 2—Amendments commencing on proclaimed day or after 6 months
8 Section 174
Repeal the section, substitute:
The Registrar must send the prescribed documents relating to the application to the Commission in accordance with the regulations.
9 Application of new section 174
10 Subsection 176(1)
Repeal the subsection, substitute:
(1) The Registrar must accept the application if:
175(2). Otherwise the Registrar must reject the application.
(1A) However, the Registrar must give the applicant an opportunity to be heard before rejecting the application solely because one or both of the conditions in paragraphs (1)(a) and (b) are not met.
Note: The heading to section 176 is replaced by the heading “Acceptance or rejection of application”.
11 Application of new subsection 176(1)
12 Subsection 178(4)
Repeal the subsection, substitute:
(4) The Commission must notify, in accordance with the regulations, a decision to approve a variation or not to approve a variation.
13 Subsection 178(6)
Repeal the subsection.
14 Application of amendments of section 178
The amendments of section 178 of the Trade Marks Act 1995 made by this Part apply in relation to decisions made on or after the commencement of this Part to approve or not to approve variations of rules governing the use of certification trade marks.
15 Section 179
Repeal the section, substitute:
The Registrar must publish, in accordance with the regulations,
rules governing the use of a certification trade mark.
16 Saving of rules made available under old section 179
The Registrar is not required by section 179 of the Trade Marks Act 1995 as amended by this Part to publish rules that have before the commencement of this Part been, and continue to be, made available as required by section 179 of that Act as in force before the commencement of this Part, unless the rules are varied.
1 At the end of Division 1 of Part 21
Add:
2 Application of section 217A
Section 217A of the Trade Marks Act 1995 applies in relation to applications, made on or after the commencement of that section, for registration of trade marks.
3 After section 226
Insert:
4 Application of section 226A
Section 226A of the Trade Marks Act 1995 applies in relation to information in documents filed on or after the commencement of that section in relation to trade marks. It does not matter whether registration of the trade marks was applied for before, on or after that commencement.
1 After subsection 122(1)
Insert:
(1A) A court may include an additional amount in an assessment of damages for an infringement of a patent, if the court considers it appropriate to do so having regard to:
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.
1 Section 119
Repeal the section, substitute:
(1) A person may, without infringing a patent, do an act that exploits a product, method or process and would infringe the patent apart from this subsection, if immediately before the priority date of the relevant claim the person:
Note 1: This section applies in relation to a patent granted as a result of an application filed on or after the commencement of Schedule 6 to the Intellectual Property Laws Amendment Act 2006 (which repealed and substituted this section).
Note 2: Section 119 of this Act as in force before the commencement of that Schedule continues to apply in relation to patents granted as a result of earlier applications.
(2) Subsection (1) does not apply if, before the priority date, the person:
Limit for product, method or process derived from patentee
(3) Subsection (1) does not apply to a product, method or process the person derived from the patentee or the patentee’s predecessor in title in the patented invention unless the person derived the product, method or process from information that was made publicly available:
Exemption for successors in title
(4) A person (the disposer) may dispose of the whole of the disposer’s entitlement under subsection (1) to do an act without infringing a patent to another person (the recipient). If the disposer does so, this section applies in relation to the recipient as if the references in subsections (1), (2) and (3) to the person were references to:
Definition
(5) In this section:
exploit includes:
(iv) with a product resulting from the use of the method or process.
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.
1 Subsection 78(1)
Omit “(1) If”, substitute “If”.
2 Subsection 78(2)
Repeal the subsection.
3 After section 119
Insert:
substance disclosed in the complete specification of the patent and in substance falls within the scope of the claim or claims of that specification.
Note: Part 3 of Chapter 6 provides for the extension of the term of standard patents claiming pharmaceutical substances.
(3) In this section:
pharmaceutical patent means a patent claiming:
(iii) a product that is a pro-drug, metabolite or derivative of the substance.
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.
1 Subsection 133(1)
Omit “a prescribed court”, substitute “the Federal Court”.
2 Paragraphs 133(2)(a) and (b)
Repeal the paragraphs, substitute:
3 Subsection 133(3A)
Repeal the subsection.
4 Paragraph 133(5)(b)
Omit “a prescribed court”, substitute “the Federal Court”.
5 At the end of paragraph 133(5)(b)
Add “and the desirability of discouraging contraventions of Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act)”.
6 Subsections 133(6) and 134(1)
Omit “a prescribed court”, substitute “the Federal Court”.
7 Paragraphs 134(2)(a) and (b)
Repeal the paragraphs, substitute:
8 After section 136
Insert:
Proceedings under section 133 or 134 involving an allegation of contravention of an application law that is a law of a State must be dealt with as if the law were a law of the Commonwealth.
Note: Those proceedings are in the Federal Court, which can only exercise the judicial power of the Commonwealth. This section lets the court deal comprehensively with the proceedings without the need for a court of the State to determine whether the application law has been contravened.
9 Application and saving provisions
1 At the end of paragraph 40(2)(c)
Add “defining the invention”.
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.
1 Subsection 79C(1)
After “may”, insert “, in accordance with the regulations,”.
2 Subsection 79C(2)
Repeal the subsection, substitute:
(2) The patentee may make the further complete application only during the period:
(iii) the first patent ceases;
(iv) a period prescribed by the regulations for the purposes of this subparagraph ends.
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.
1 At the end of subsection 28(2)
Add “or, if another date is determined under the regulations for the application, the date determined”.
2 Application
The amendment of the Plant Breeder’s Rights Act 1994 made by this Schedule applies in relation to applications lodged after the commencement of the amendment.
3 Section 6 (at the end of the definition of filing date)
Add: ; or (e) in relation to a prescribed application—the day determined in the prescribed way.
4 Application
The amendment of the Trade Marks Act 1995 made by this Schedule applies in relation to applications filed after the commencement of the amendment.
1 Section 129 (after the paragraph relating to Part 4)
Insert:
Part 4A lets an act be done after the period otherwise provided for doing the act if that period ends on a day when the Designs Office or a sub-office is not open for business.
2 After Part 4 of Chapter 11
Insert:
Declarations
Relationship with other law
Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a prescribed act.
3 At the end of Part 2.3
Add:
Declarations
Relationship with other law
Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a prescribed act.
Patents Act 1990
4 After section 222
Insert:
Declarations
Relationship with other law
Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a prescribed act.
Plant Breeder’s Rights Act 1994
5 Subsection 3(1)
Insert:
PBR office means place of work of the Registrar or a person who is engaged under the Public Service Act 1999 or otherwise for or on behalf of the Commonwealth and whose duties involve providing assistance to the Registrar.
6 Subsection 3(1)
Insert:
PBR sub-office means place of work in a single State of the Registrar or a person who is engaged under the Public Service Act 1999 or otherwise for or on behalf of the Commonwealth and whose duties involve providing assistance to the Registrar.
7 After section 76
Insert:
Declarations
Relationship with other law Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a prescribed act.
8 After section 223
Insert:
Declarations
Relationship with other law
Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a prescribed act.
Trade Marks Act 1995
1 Subsection 224(7)
Omit “an act”, substitute “a relevant act”.
2 Application
The amendment of subsection 224(7) of the Trade Marks Act 1995 made by this Schedule applies in relation to decisions made by the Registrar after the commencement of this Schedule.
Plant Breeder’s Rights Act 1994
1 Subsection 3(1)
Insert:
approved form means a form approved by the Secretary for the purposes of the provision in which the expression appears.
2 Section 7
Repeal the section.
3 Transitional provision
Designs Act 2003
1 Subsection 124(1)
After “this Act”, insert “, the regulations”.
2 Section 59
Repeal the section, substitute:
59 Delegation
Delegation of Minister’s statutory powers and functions
(1) The Minister may, by signed instrument, delegate to the Registrar, or to an SES employee, or acting SES employee, in the Department, any of the powers or functions of the Minister under this Act or the regulations.
Delegation of Secretary’s statutory powers and functions
(2) The Secretary may, by signed instrument, delegate to the Registrar, or to an SES employee, or acting SES employee, in the Department, any of the powers or functions of the Secretary under this Act or the regulations.
Delegation of Registrar’s statutory powers and functions
(3) The Registrar may, by signed instrument, delegate to a prescribed employee, or employees in a prescribed class, any of the powers or functions of the Registrar under this Act or the regulations.
Subdelegation of delegated powers and functions
Requirement to act under direction or supervision
(6) If required by an instrument under subsection (3) or (4) delegating a power or function to an employee, the employee must exercise the power or perform the function under the direction or supervision of:
This subsection applies whether the instrument identifies the employee specifically or by reference to a class.
Definition
(7) In subsections (3), (4), (5) and (6):
employee means a person who is engaged under the Public Service Act 1999 or otherwise for or on behalf of the Commonwealth and whose duties involve providing assistance to the Registrar.
3 Saving
Patents Act 1990
Omit “17”, substitute “9A”.
Note: This item corrects a cross-reference consequentially on the Therapeutic Goods Amendment (Medical Devices) Act 2002 repealing section 17 of the Therapeutic Goods Act 1989, which provided for the Australian Register of Therapeutic Goods, and inserting section 9A in that Act to provide for that register.
2 Subsection 84(2)
Repeal the subsection, substitute:
(2) Before cancelling the registration of the trade mark, the Registrar must notify in accordance with the regulations:
the person to whom the trade mark has been assigned or transmitted.
Note: The text of the new and repealed subsections is identical but the indentation differs to fix a formatting error in the repealed subsection. The different indentation clarifies that the words after subparagraph 84(2)(b)(ii) relate only to paragraph 84(2)(b) and not to the whole of subsection 84(2).
3 Paragraph 206(2)(b)
Omit “paragraph (1)(a) or (b)”, substitute “subsection (1)”.
Note: This item corrects a cross-reference consequentially on the removal of paragraphs 206(1)(a) and (b) by item 943 of Schedule 1 to the Public Employment (Consequential and Transitional) Amendment Act 1999.
[Minister’s second reading speech made in— House of Representatives on 30 March 2006 Senate on 9 August 2006]
(27/06)