- Patents Amendment Act 2001
- Contents
- The Parliament of Australia enacts:
- Schedule 1—Amendments commencing on Proclamation
- Part 1—Amendments relating to novelty, inventive step and innovative step
- Part 2—Other amendments
- Patents Act 1990
- 14 Subsection 45(3)
- 15 Subsection 49(1)
- 16 Subsection 61(1)
- 17 Subsection 97(1)
- 18 After section 100
- 19 Section 101D
- 101D Commissioner to be given information on searches
- 20 Paragraph 101E(a)
- 21 Paragraph 102(2A)(b)
- 22 After subsection 102(2B)
- 23 Subsection 119(2)
- 24 Paragraph 142(2)(b)
- 25 Paragraph 143A(c)
- 26 At the end of Chapter 13
- 27 After subsection 223(2)
- 28 After subsection 223(3)
- 29 Subsection 223(6)
- 30 Subsection 223(6)
- 31 After subsection 223(6)
- 32 Application
- 33 Saving of regulations
- Patents Act 1990
- Schedule 2—Amendments commencing after start of innovation patents scheme
- Patents Act 1990
Patents Amendment Act 2001
No. 160, 2001
Patents Amendment Act 2001
No. 160, 2001
An Act to amend the Patents Act 1990, and for related purposes
Contents
1 Short title...........................................................................................1 2 Commencement.................................................................................1 3 Schedule(s)........................................................................................2
Schedule 1—Amendments commencing on Proclamation 3 Part 1—Amendments relating to novelty, inventive step and innovative step 3 Patents Act 1990 3 Part 2—Other amendments 5 Patents Act 1990 5
Schedule 2—Amendments commencing after start of
innovation patents scheme 10 Patents Act 1990 10
Patents Amendment Act 2001
No. 160, 2001
An Act to amend the Patents Act 1990, and for related purposes
[Assented to 1 October 2001]
The Parliament of Australia enacts:
1 Short title
This Act may be cited as the Patents Amendment Act 2001.
2 Commencement
- (1)
- Subject to this section, this Act commences on the day on which it receives the Royal Assent.
- (2)
- Subject to subsection (3), Schedule 1 commences on a day to be fixed by Proclamation.
- (3)
- If Schedule 1 does not commence under subsection (2) within the period of 6 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period.
- (4)
- Schedule 2 is taken to have commenced immediately after the commencement of the Patents Amendment (Innovation Patents) Act 2000.
3 Schedule(s)
Subject to section 2, 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.
Amendments commencing on Proclamation Schedule 1 Amendments relating to novelty, inventive step and innovative step Part 1
Schedule 1—Amendments commencing on Proclamation
Part 1—Amendments relating to novelty, inventive step and innovative step
Patents Act 1990
1 Paragraph 7(1)(b)
Omit “in the patent area”.
3 Subsection 7(2)
Omit all the words from and including “either” to the end of the subsection, substitute “.”.
4 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; being information that the skilled person mentioned in subsection
(2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
6 Paragraph 7(5)(b)
Omit “in the patent area”.
7 Subsection 45(1A)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
8 Subsection 48(1A)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
Schedule 1 Amendments commencing on Proclamation Part 1 Amendments relating to novelty, inventive step and innovative step
9 Subsection 98(2)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
10 Subsection 101B(3)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
11 Subsection 101G(5)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
12 Schedule 1 (subparagraph (a)(ii) of the definition of prior art base)
Omit “in the patent area”, substitute “, whether in or out of the patent area”.
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.
Amendments commencing on Proclamation Schedule 1 Other amendments Part 2
Part 2—Other amendments
Patents Act 1990
14 Subsection 45(3)
Repeal the subsection, substitute:
(3) The applicant must inform the Commissioner, in accordance with the regulations, of the results of any documentary searches, whether conducted in Australia or elsewhere, for the purposes of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia that are carried out by or on behalf of the applicant, or the applicant’s predecessor in title, prior to the grant of the patent.
15 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: - (a)
- the Commissioner is satisfied that the invention, so far as claimed, satisfies the criteria mentioned in paragraph 18(1)(b); and
- (b)
- the Commissioner considers that:
- (i)
- there is no lawful ground of objection (other than a ground in respect of paragraph 18(1)(b)) to the request and specification; or
- (ii)
- any such ground of objection has been removed.
16 Subsection 61(1)
Omit “The Commissioner must”, substitute “”.
17 Subsection 97(1)
Repeal the subsection, substitute:
(1) Subject to this section and the regulations, if:
(a) a request and complete specification relating to an application for a patent has been accepted; and
Schedule 1 Amendments commencing on Proclamation Part 2 Other amendments
(b) the patent has not been granted; the Commissioner may re-examine the complete specification.
18 After section 100
Insert:
Note: The heading to section 101 is replaced by the heading “Revocation of patent— re-examination after grant”.
19 Section 101D
Repeal the section, substitute:
101D Commissioner to be given information on searches
The patentee must inform the Commissioner, in accordance with the regulations, of the results of any documentary searches, whether conducted in Australia or elsewhere, for the purposes of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia that are carried out by or on behalf of the patentee, or the patentee’s predecessor in title, prior to the issue of a certificate of examination in respect of the patent.
20 Paragraph 101E(a)
Repeal the paragraph, substitute:
(a) after examining a patent under section 101B, the Commissioner decides in writing that he or she is satisfied that the invention, so far as claimed, complies with paragraph 18(1A)(b); and
(aa) after so examining the patent, the Commissioner also decides in writing that he or she considers that: - (i)
- a ground for the revocation of the patent (other than a ground in respect of paragraph 18(1A)(b)) has not been made out; or
- (ii)
- any such ground has been removed; and
21 Paragraph 102(2A)(b)
Omit “a decision under paragraph 101E(a)”, substitute “”.
22 After subsection 102(2B)
Insert:
Amendments commencing on Proclamation Schedule 1 Other amendments Part 2
Amendments not allowable if information not provided
(2C) An amendment of a complete specification relating to a patent is not allowable if: - (a)
- the patentee or the patentee’s predecessor in title failed to ensure the provision to the Commissioner of the information required by subsection 45(3) or section 101D in relation to the patent; and
- (b)
- the effect of the proposed amendment would be to remove a lawful ground of objection under paragraph 18(1)(b) or 18(1A)(b) to the specification arising from the existence of some or all of the information not provided.
23 Subsection 119(2)
Repeal the subsection, substitute: - (2)
- Subject to subsection (3), subsection (1) does not apply if the person derived the subject-matter of the invention concerned from the patentee or the patentee’s predecessor in title in the invention.
- (3)
- Subsection (2) does not prevent subsection (1) from applying if:
- (a)
- the person derived the subject-matter of the invention concerned from information that was made publicly available by or with the consent of the patentee, or the predecessor in title of the patentee; and
- (b)
- the making of that information publicly available was through any publication or use of the invention in the prescribed circumstances mentioned in paragraph 24(1)(a).
- (4)
- Subsection (1) does not apply if the person, before the relevant priority date, had stopped making the product or using the process (other than temporarily), or had abandoned (other than temporarily) the steps mentioned in paragraph (1)(b).
24 Paragraph 142(2)(b)
Repeal the paragraph.
25 Paragraph 143A(c)
Omit “a decision under paragraph 101E(a)”, substitute “decisions under paragraphs 101E(a) and (aa)”.
26 At the end of Chapter 13
Schedule 1 Amendments commencing on Proclamation Part 2 Other amendments
Add:
27 After subsection 223(2)
Insert:
Patents Amendment Act 2001
No. 160, 2001
An Act to amend the Patents Act 1990, and for related purposes
Contents
1 Short title...........................................................................................1 2 Commencement.................................................................................1 3 Schedule(s)........................................................................................2
Schedule 1—Amendments commencing on Proclamation 3 Part 1—Amendments relating to novelty, inventive step and innovative step 3 Patents Act 1990 3 Part 2—Other amendments 5 Patents Act 1990 5
Schedule 2—Amendments commencing after start of
innovation patents scheme 10 Patents Act 1990 10
Patents Amendment Act 2001
No. 160, 2001
An Act to amend the Patents Act 1990, and for related purposes
[Assented to 1 October 2001]
The Parliament of Australia enacts:
1 Short title
This Act may be cited as the Patents Amendment Act 2001.
2 Commencement
- (1)
- Subject to this section, this Act commences on the day on which it receives the Royal Assent.
- (2)
- Subject to subsection (3), Schedule 1 commences on a day to be fixed by Proclamation.
- (3)
- If Schedule 1 does not commence under subsection (2) within the period of 6 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period.
- (4)
- Schedule 2 is taken to have commenced immediately after the commencement of the Patents Amendment (Innovation Patents) Act 2000.
3 Schedule(s)
Subject to section 2, 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.
Amendments commencing on Proclamation Schedule 1 Amendments relating to novelty, inventive step and innovative step Part 1
Schedule 1—Amendments commencing on Proclamation
Part 1—Amendments relating to novelty, inventive step and innovative step
Patents Act 1990
1 Paragraph 7(1)(b)
Omit “in the patent area”.
3 Subsection 7(2)
Omit all the words from and including “either” to the end of the subsection, substitute “.”.
4 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; being information that the skilled person mentioned in subsection
(2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
6 Paragraph 7(5)(b)
Omit “in the patent area”.
7 Subsection 45(1A)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
8 Subsection 48(1A)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
Schedule 1 Amendments commencing on Proclamation Part 1 Amendments relating to novelty, inventive step and innovative step
9 Subsection 98(2)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
10 Subsection 101B(3)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
11 Subsection 101G(5)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
12 Schedule 1 (subparagraph (a)(ii) of the definition of prior art base)
Omit “in the patent area”, substitute “, whether in or out of the patent area”.
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.
Amendments commencing on Proclamation Schedule 1 Other amendments Part 2
Part 2—Other amendments
Patents Act 1990
14 Subsection 45(3)
Repeal the subsection, substitute:
(3) The applicant must inform the Commissioner, in accordance with the regulations, of the results of any documentary searches, whether conducted in Australia or elsewhere, for the purposes of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia that are carried out by or on behalf of the applicant, or the applicant’s predecessor in title, prior to the grant of the patent.
15 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: - (a)
- the Commissioner is satisfied that the invention, so far as claimed, satisfies the criteria mentioned in paragraph 18(1)(b); and
- (b)
- the Commissioner considers that:
- (i)
- there is no lawful ground of objection (other than a ground in respect of paragraph 18(1)(b)) to the request and specification; or
- (ii)
- any such ground of objection has been removed.
16 Subsection 61(1)
Omit “The Commissioner must”, substitute “”.
17 Subsection 97(1)
Repeal the subsection, substitute:
(1) Subject to this section and the regulations, if:
(a) a request and complete specification relating to an application for a patent has been accepted; and
Schedule 1 Amendments commencing on Proclamation Part 2 Other amendments
(b) the patent has not been granted; the Commissioner may re-examine the complete specification.
18 After section 100
Insert:
Note: The heading to section 101 is replaced by the heading “Revocation of patent— re-examination after grant”.
19 Section 101D
Repeal the section, substitute:
101D Commissioner to be given information on searches
The patentee must inform the Commissioner, in accordance with the regulations, of the results of any documentary searches, whether conducted in Australia or elsewhere, for the purposes of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia that are carried out by or on behalf of the patentee, or the patentee’s predecessor in title, prior to the issue of a certificate of examination in respect of the patent.
20 Paragraph 101E(a)
Repeal the paragraph, substitute:
(a) after examining a patent under section 101B, the Commissioner decides in writing that he or she is satisfied that the invention, so far as claimed, complies with paragraph 18(1A)(b); and
(aa) after so examining the patent, the Commissioner also decides in writing that he or she considers that: - (i)
- a ground for the revocation of the patent (other than a ground in respect of paragraph 18(1A)(b)) has not been made out; or
- (ii)
- any such ground has been removed; and
21 Paragraph 102(2A)(b)
Omit “a decision under paragraph 101E(a)”, substitute “”.
22 After subsection 102(2B)
Insert:
Amendments commencing on Proclamation Schedule 1 Other amendments Part 2
Amendments not allowable if information not provided
(2C) An amendment of a complete specification relating to a patent is not allowable if: - (a)
- the patentee or the patentee’s predecessor in title failed to ensure the provision to the Commissioner of the information required by subsection 45(3) or section 101D in relation to the patent; and
- (b)
- the effect of the proposed amendment would be to remove a lawful ground of objection under paragraph 18(1)(b) or 18(1A)(b) to the specification arising from the existence of some or all of the information not provided.
23 Subsection 119(2)
Repeal the subsection, substitute: - (2)
- Subject to subsection (3), subsection (1) does not apply if the person derived the subject-matter of the invention concerned from the patentee or the patentee’s predecessor in title in the invention.
- (3)
- Subsection (2) does not prevent subsection (1) from applying if:
- (a)
- the person derived the subject-matter of the invention concerned from information that was made publicly available by or with the consent of the patentee, or the predecessor in title of the patentee; and
- (b)
- the making of that information publicly available was through any publication or use of the invention in the prescribed circumstances mentioned in paragraph 24(1)(a).
- (4)
- Subsection (1) does not apply if the person, before the relevant priority date, had stopped making the product or using the process (other than temporarily), or had abandoned (other than temporarily) the steps mentioned in paragraph (1)(b).
24 Paragraph 142(2)(b)
Repeal the paragraph.
25 Paragraph 143A(c)
Omit “a decision under paragraph 101E(a)”, substitute “decisions under paragraphs 101E(a) and (aa)”.
26 At the end of Chapter 13
Schedule 1 Amendments commencing on Proclamation Part 2 Other amendments
Add:
27 After subsection 223(2)
Insert:
No. 160, 2001
An Act to amend the Patents Act 1990, and for related purposes
1 Short title...........................................................................................1 2 Commencement.................................................................................1 3 Schedule(s)........................................................................................2
Schedule 1—Amendments commencing on Proclamation 3 Part 1—Amendments relating to novelty, inventive step and innovative step 3 Patents Act 1990 3 Part 2—Other amendments 5 Patents Act 1990 5
Schedule 2—Amendments commencing after start of
An Act to amend the Patents Act 1990, and for related purposes
[Assented to 1 October 2001]
This Act may be cited as the Patents Amendment Act 2001.
Subject to section 2, 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.
Amendments commencing on Proclamation Schedule 1 Amendments relating to novelty, inventive step and innovative step Part 1
Part 1—Amendments relating to novelty, inventive step and innovative step
1 Paragraph 7(1)(b)
Omit “in the patent area”.
3 Subsection 7(2)
Omit all the words from and including “either” to the end of the subsection, substitute “.”.
4 Subsection 7(3)
Repeal the subsection, substitute:
(3) The information for the purposes of subsection (2) is: information; being information that the skilled person mentioned in subsection
(2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
6 Paragraph 7(5)(b)
Omit “in the patent area”.
7 Subsection 45(1A)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
8 Subsection 48(1A)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
Schedule 1 Amendments commencing on Proclamation Part 1 Amendments relating to novelty, inventive step and innovative step
9 Subsection 98(2)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
10 Subsection 101B(3)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
11 Subsection 101G(5)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
12 Schedule 1 (subparagraph (a)(ii) of the definition of prior art base)
Omit “in the patent area”, substitute “, whether in or out of the patent area”.
13 Application
The amendments made by this Part apply in relation to: Amendments commencing on Proclamation Schedule 1 Other amendments Part 2
Part 2—Other amendments
14 Subsection 45(3)
Repeal the subsection, substitute:
(3) The applicant must inform the Commissioner, in accordance with the regulations, of the results of any documentary searches, whether conducted in Australia or elsewhere, for the purposes of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia that are carried out by or on behalf of the applicant, or the applicant’s predecessor in title, prior to the grant of the patent.
15 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: 16 Subsection 61(1)
Omit “The Commissioner must”, substitute “”.
17 Subsection 97(1)
Repeal the subsection, substitute:
(1) Subject to this section and the regulations, if:
(a) a request and complete specification relating to an application for a patent has been accepted; and
Schedule 1 Amendments commencing on Proclamation Part 2 Other amendments
(b) the patent has not been granted; the Commissioner may re-examine the complete specification.
18 After section 100
Insert:
Note: The heading to section 101 is replaced by the heading “Revocation of patent— re-examination after grant”.
19 Section 101D
Repeal the section, substitute:
The patentee must inform the Commissioner, in accordance with the regulations, of the results of any documentary searches, whether conducted in Australia or elsewhere, for the purposes of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia that are carried out by or on behalf of the patentee, or the patentee’s predecessor in title, prior to the issue of a certificate of examination in respect of the patent.
20 Paragraph 101E(a)
Repeal the paragraph, substitute:
(a) after examining a patent under section 101B, the Commissioner decides in writing that he or she is satisfied that the invention, so far as claimed, complies with paragraph 18(1A)(b); and
(aa) after so examining the patent, the Commissioner also decides in writing that he or she considers that: 21 Paragraph 102(2A)(b)
Omit “a decision under paragraph 101E(a)”, substitute “”.
22 After subsection 102(2B)
Insert:
Amendments commencing on Proclamation Schedule 1 Other amendments Part 2
Amendments not allowable if information not provided
(2C) An amendment of a complete specification relating to a patent is not allowable if: 23 Subsection 119(2)
Repeal the subsection, substitute: 24 Paragraph 142(2)(b)
Repeal the paragraph.
25 Paragraph 143A(c)
Omit “a decision under paragraph 101E(a)”, substitute “decisions under paragraphs 101E(a) and (aa)”.
26 At the end of Chapter 13
Schedule 1 Amendments commencing on Proclamation Part 2 Other amendments
Add:
27 After subsection 223(2)
Insert:
Contents
innovation patents scheme 10 Patents Act 1990 10
Patents Amendment Act 2001
No. 160, 2001
The Parliament of Australia enacts:
1 Short title
2 Commencement
3 Schedule(s)
Schedule 1—Amendments commencing on Proclamation
Patents Act 1990
Patents Act 1990
101D Commissioner to be given information on searches