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Subject to section 2, each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.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:
(2A) If:
the Commissioner must, on application made by the person concerned in accordance with the regulations and within the prescribed period, extend the time for doing the act.
(2B) An extension of time under subsection (2A) cannot exceed the period prescribed for the purposes of this subsection.
28 After subsection 223(3)
Insert:
29 Subsection 223(6)
Omit “A person”, substitute “Subject to subsection (6A), a person”.
30 Subsection 223(6)
Omit “granting”, substitute “granting under subsection (2) or (2A)”.
31 After subsection 223(6)
Insert:
(6A) If the Commissioner is satisfied that an application under subsection (2) or (2A) would not be granted even in the absence of opposition under subsection (6):
32 Application
Amendments commencing on Proclamation Schedule 1 Other amendments Part 2
33 Saving of regulations
Schedule 2 Amendments commencing after start of innovation patents scheme
1 Subsection 48(1A)
Omit “paragraph (1)(c)”, substitute “paragraph (1)(b)”. Note: This item corrects an incorrect cross-reference.
2 Subsection 101B(3)
Omit “paragraph 18A(1)(b)”, substitute “paragraph 18(1A)(b)”. Note: This item corrects an incorrect cross-reference.
[Minister’s second reading speech made in— House of Representatives on 24 May 2001 Senate on 6 August 2001]
(83/01)