No. 140, 2000
No. 140, 2000
Contents
1 Short title...........................................................................................1 2 Commencement.................................................................................2 3 Schedule(s)........................................................................................2
Schedule 1—Amendment of the Patents Act 1990 3 Schedule 2—Application, saving and transitional provisions 39 Part 1—Application, saving and transitional provisions relating to petty patents 39 Part 2—Other application and saving provisions 43 Schedule 3—Consequential amendment of other Acts 44 Income Tax Assessment Act 1997 44
Patents Amendment (Innovation Patents) Act 2000 No. 140, 2000
An Act to amend the Patents Act 1990 by repealing the petty patent scheme and providing for innovation patents and other minor amendments, and for related purposes
[Assented to 24 November 2000]
This Act may be cited as the Patents Amendment (Innovation Patents) Act 2000.
Subject to section 2, each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
1 Section 3 (index of expressions)
Insert the following entries in their appropriate alphabetical positions, determined on a letter by letter basis: certified formalities check innovation patent
2 Section 3 (index of expressions)
Omit: divisional application petty patent
3 Section 4
Repeal the section, substitute:
The following diagram shows most of the typical steps involved in getting and maintaining a standard patent. The diagram is intended for use only as a general introductory illustration and is not intended to have any other effect. If there is an inconsistency between any matter contained in the diagram and a provision of this Act or the regulations, the provision prevails.
4 Section 4 (Table 2)
Repeal the table.
5 At the end of section 7
Add:
Innovative step
Note 1: The following heading to subsection 7(1) is inserted “Novelty”.
Note 2: The following heading to subsection 7(2) is inserted “Inventive step”.
6 Subsection 18(1)
Omit “a patentable invention is an invention that”, substitute “an invention is a patentable invention for the purposes of a standard patent if the invention”.
Note: The following heading to subsection 18(1) is inserted “Patentable inventions for the purposes of a standard patent”.
7 After subsection 18(1)
Insert:
Patentable inventions for the purposes of an innovation patent
(1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim:
8 At the end of section 18
Add:
Certain inventions not patentable inventions for the purposes of an innovation patent
9 Subsections 24(1) and (2)
Omit “inventive step”, substitute “inventive step or an innovative step”.
10 Section 28
Repeal the section, substitute:
28 Notice of matters affecting validity of innovation patents
Person may give notice of invalidity of an innovation patent
(1) A person may notify the Commissioner that the person asserts, for reasons stated in the notice, that an innovation patent is invalid because the invention concerned does not comply with paragraph 18(1A)(b).
When notice may be given
(2) A notice may only be given to the Commissioner under subsection (1) in respect of an innovation patent within the prescribed period after an innovation patent has been granted.
How notice must be given
(3) Notice must be given in accordance with the regulations.
Commissioner must inform patentee of notice given
(4) If the Commissioner receives a notice in respect of an innovation patent, the Commissioner must inform the patentee, in writing, of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice.
Commissioner to deal with notice in accordance with regulations
(5) The Commissioner must otherwise consider and deal with a notice in accordance with the regulations.
11 Sections 33 and 34
Repeal the sections, substitute:
33 Applications by opponents etc.
Opposition to standard patent if a person other than nominated person eligible for grant of patent
(1) If:
the Commissioner may grant those eligible persons a patent jointly for the invention, so far as so claimed.
Opposition to standard patent if nominated person eligible for grant of patent with other persons
(2) If:
the Commissioner may grant a patent for the invention, so far as so claimed, to those eligible persons jointly.
Opposition to innovation patent if patentee not entitled to grant of patent but another person is
(3) If:
the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons.
Opposition to innovation patent if patentee entitled to grant of patent with other person
(4) If:
the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons jointly.
(5) If the Commissioner grants a patent under subsection (1), (2), (3) or (4), the claims of that patent granted have the same priority date as that of the original claim referred to in the respective subsection.
(1) If, in any proceedings in a court relating to a patent (the first patent), the court is satisfied either:
the court, in addition to any other order it may make in the proceedings, may, by order, declare that the persons who it is satisfied are eligible persons are eligible persons in relation to that invention so far as so claimed.
12 Subsection 35(1)
Repeal the subsection, substitute:
(1) If the Commissioner:
the Commissioner may declare in writing that the eligible persons are such eligible persons.
(1A) If a complete application is made under section 29 by one or more of the declared persons, the Commissioner may grant a patent for the invention, so far as so claimed, to those declared persons jointly.
(1B) If the Commissioner grants a patent under subsection (1A), the claims of that patent have the same priority date as that of the original claim as referred to in subsection (1).
13 Section 36
Repeal the section, substitute:
36 Other applications by eligible persons
(1) If:
the section 36 applicants are also eligible persons; the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed.
14 Section 39
Repeal the section.
15 Paragraph 40(2)(c)
Repeal the paragraph, substitute:
(c) where it relates to an application for an innovation patent— end with at least one and no more than 5 claims.
16 At the end of section 43
Add:
Priority date if claim arises from further application for an innovation patent provided for in section 79C
(5) If:
within the period prescribed in the regulations; the priority date of each claim in the specification is the date determined under the regulations.
(6) If:
within the period prescribed in the regulations; the priority date of each claim in the specification must not be a date earlier than the date of filing of the application provided for in section 79C.
17 Part 2 of Chapter 3 (heading)
Repeal the heading, substitute:
18 Subsection 45(1)
Repeal the subsection, substitute:
(1) Where an applicant asks for an examination of a patent request and complete specification relating to an application for a standard patent, the Commissioner must examine the request and specification and report on:
(1A) For the purposes of paragraph (1)(c), the prior art base is to be taken not to include information made publicly available only through the doing of an act anywhere in the patent area.
19 Subsection 48(1)
Repeal the subsection, substitute:
(1) When an applicant asks for a modified examination of a patent request and complete specification relating to an application for a standard patent, the Commissioner must examine the request and specification and report on:
(1A) For the purposes of paragraph (1)(c), the prior art base is to be taken not to include information made publicly available only through the doing of an act anywhere in the patent area.
20 After Part 3 of Chapter 3 (heading)
Insert:
Division 1—Acceptance of standard patents
21 Subsection 49(1)
Omit “section 51”, substitute “section 50”.
22 Sections 50, 51 and 52
Repeal the sections, substitute:
An appeal lies to the Federal Court against a decision of the Commissioner under this Division.
23 Subsection 54(1)
Omit “for a patent”, substitute “for a standard patent”.
24 Paragraph 54(4)(a)
After “divisional application”, insert “for a standard patent provided for in section 79B”.
25 Subsection 54(5)
After “divisional application”, insert “for a standard patent provided for in section 79B”.
26 Paragraph 54(6)(a)
After “divisional application”, insert “for a standard patent provided for in section 79B”.
26A Subsection 55(1)
After “under section 54”, insert “or under subsection 62(3)”.
27 Subsection 55(2)
Omit “a petty”, substitute “an innovation”.
28 Subsection 57(2)
Repeal the subsection.
29 Subsection 57(3)
Omit “Neither subsection (1) nor (2) gives”, substitute “Subsection (1) does not give”.
30 Subsection 57(4)
Repeal the subsection, substitute:
(4) It is a defence to proceedings under subsection (1) in respect of an act done:
(a) after the complete specification became open to public inspection; and
(b) before the patent request was accepted: if the defendant proves that a patent could not validly have been granted to the applicant in respect of the claims (as framed when
the act was done) that are alleged to have been infringed by the doing of the act.
31 Chapter 5 (heading)
Repeal the heading, substitute:
32 Paragraph 59(a)
Repeal the paragraph, substitute:
(a) that the nominated person is either:
33 At the end of section 59
Add: ; (d) that the invention is not a patentable invention under subsection 18(2).
34 Section 62
Repeal the section, substitute:
(1) If:
173(1) in relation to the application; the Commissioner must grant the innovation patent by sealing an innovation patent in the approved form.
the Commissioner must also publish in the Official Journal a notice that the complete specification filed in respect of the original application on which the divisional application is based is open to public inspection.
35 Paragraph 64(2)(a)
Omit “a patent application”, substitute “an application for a standard patent”.
36 Subsection 64(2)
Omit “patent cannot”, substitute “standard patent cannot”.
37 At the end of section 66
Add:
(2) If:
(a) the Commissioner is satisfied that particulars on a patent are incorrect because of an error or omission by the Commissioner; and
(b) the patent is returned to the Commissioner; the Commissioner may seal a duplicate of the patent.
38 Section 68
Repeal the section, substitute:
The term of an innovation patent is 8 years from the date of the
patent.
39 Part 3 of Chapter 6 (heading)
Repeal the heading, substitute:
40 Division 1 of Part 3 of Chapter 6
Repeal the Division.
41 Division 2 of Part 3 of Chapter 6 (heading)
Repeal the heading.
42 After Chapter 6
Insert:
(1) If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention:
(1A) The reference to a complete patent application first-mentioned in subsection (1) does not include a reference to a divisional application for an innovation patent provided for in section 79C.
(2) In this section:
applicant has the same meaning as in section 38.
Applications may be made
(1) A patentee of an innovation patent (the first patent) may make a complete application for another innovation patent for a further invention disclosed in the first patent if the invention was disclosed in the complete specification filed in respect of the application on which the first patent was sealed.
When further applications must be made
(2) The patentee may only make the further complete application during the period that commences on the day an examination of the first patent begins and ends at the end of a period prescribed in the regulations.
When does an examination begin?
(3) For the purposes of subsection (2), an examination of the patent begins:
43 Section 80
Repeal the section, substitute:
80 Chapter does not apply to innovation patents
This Chapter does not apply in relation to innovation patents.
44 Subsection 88(2)
Repeal the subsection.
45 Subsection 89(1)
After “applications”, insert “for standard patents”.
46 Chapter 9 (heading)
Repeal the heading, substitute:
47 Before section 97 in Chapter 9
Insert:
This Chapter does not apply in relation to innovation patents.
48 Subsection 98(1)
Omit “immediately”.
49 Subsection 98(2)
After “available”, insert “only”.
50 At the end of subsection 99(2)
Add “or 107”.
51 After Chapter 9
Insert:
Part 1—Examination of innovation patents
After the grant of an innovation patent, the Commissioner:
other person; examine the complete specification relating to an innovation patent.
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
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:
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:
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.
The examination under section 101B must be carried out:
The Commissioner may, from time to time, by notice in writing, direct the patentee to inform the Commissioner of the results of the searches specified in the notice, being searches carried out in a foreign country by a specified patent office or organisation in respect of a corresponding application filed outside Australia.
If:
the Commissioner must:
(1) Subject to subsections 101K(2) and (3) and the regulations, after an innovation patent has been certified, the Commissioner:
other person; re-examine the complete specification relating to the patent.
(a) the Commissioner has started to re-examine a complete specification relating to an innovation patent; and
(b) relevant proceedings in relation to the patent are started; the Commissioner must not continue the re-examination.
A copy of a report under paragraph 101G(2)(b), and of any statement filed under section 101H in relation to the report, must, if the re-examination was directed under subsection 101K(1), be given to the court that gave the direction.
The Minister, or any other person, may, in accordance with the regulations, oppose an innovation patent that has been certified and seek the revocation of it, on one or more of the following grounds of invalidity, but on no other:
If relevant proceedings in relation to an innovation patent are pending, the Commissioner must not make a decision under this Part in relation to the patent without the leave of the court.
52 Subsection 102(2)
Repeal the subsection, substitute:
Certain amendments of complete specification are not allowable
after relevant time
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(2A) For the purposes of subsection (2), relevant time means:
Amendment of innovation patent request not allowable in certain
circumstances
(2B) An amendment to a patent request relating to an innovation patent application is not allowable if:
Note: The following heading to subsection 102(1) is inserted “Amendment of complete specification not allowable if amended specification would claim matter not in substance disclosed in the filed specification”.
Meaning of relevant time
53 Paragraph 106(1)(b)
Repeal the paragraph, substitute:
(b) the Commissioner is satisfied that the patent is invalid on grounds that could be removed by appropriate amendments of the specification following:
54 Paragraph 107(1)(a)
Repeal the paragraph, substitute:
(a) a complete application for a standard patent has been made; and
Note: The heading to section 107 is altered by omitting “patent applications” and substituting “applications for standard patents”.
55 Section 108
Repeal the section.
56 Section 109
Omit “106, 107 or 108”, substitute “106 or 107”.
57 Section 111
Repeal the section.
57A Subsection 114(2)
Repeal the subsection.
58 After section 114
Insert:
59 Subsection 120(1)
Omit “Infringement”, substitute “Subject to subsection (1A),
infringement”.
60 After subsection 120(1)
Insert:
(1A) Infringement proceedings in respect of an innovation patent cannot be started unless the patent has been certified.
61 At the end of subsection 126(1)
Add: ; and (c) if the patent is an innovation patent—the patent has been certified.
62 Section 129
Repeal the section, substitute:
If an application under section 128 for relief relates to threats made in respect of a standard patent or an application for a standard patent, the court may grant the applicant the relief applied for unless the respondent satisfies the court that the acts about which the threats were made infringed, or would infringe:
129A Threats related to an innovation patent application or innovation patent and court’s power to grant relief
Certain threats of infringement proceedings are always unjustifiable
(1) If:
then, for the purposes of an application for relief under section 128 by the person threatened, the threats are unjustifiable.
Courts power to grant relief in respect of threats made by the applicant for an innovation patent or the patentee of an uncertified innovation patent
(2) If an application under section 128 for relief relates to threats made in respect of an innovation patent that has not been certified or an application for an innovation patent, the court may grant the applicant the relief applied for.
Courts power to grant relief in respect of threats made by the patentee of a certified innovation patent
(3) If an application under section 128 for relief relates to threats made in respect of a certified innovation patent, the court may grant the applicant the relief applied for unless the respondent satisfies the court that the acts about which the threats were made infringed, or would infringe, a claim that is not shown by the applicant to be invalid.
63 At the end of subsection 130(3)
Add:
Note: Infringement proceedings cannot be commenced in respect of an innovation patent unless the patent has first been certified (see subsection 120(1A)).
64 Subsection 130(4)
After “proceedings”, insert “under section 138”.
65 At the end of subsection 130(4)
Add:
Note: Revocation proceedings under section 138 cannot be commenced in respect of an innovation patent unless the patent has first been certified (see subsection 138(1A)).
66 Subsection 133(1)
Omit “A”, substitute “Subject to subsection (1A), a”.
67 After subsection 133(1)
Insert:
(1A) A person cannot apply for an order in respect of an innovation patent unless the patent has been certified.
68 Subsection 134(1)
Omit “standard”. Note: The heading to section 134 is altered by omitting “standard”.
69 Subsection 138(1)
Omit “The”, substitute “Subject to subsection (1A), the”.
70 After subsection 138(1)
Insert:
(1A) A person cannot apply for an order in respect of an innovation patent unless the patent has been certified.
71 Section 141
Repeal the section, substitute:
72 Subsection 142(3)
Omit “patent”, substitute “standard patent”.
73 Subsection 142(4)
Repeal the subsection.
74 After section 143
Insert:
143A Ceasing of innovation patents
An innovation patent ceases if:
75 After subsection 144(1)
Insert:
(1A) A condition in a contract relating to the sale or lease of, or a licence to exploit, an invention the subject of an innovation patent is void if the effect of the condition would be to:
76 Paragraph 151(4)(c)
Omit “or for a petty patent”.
77 Subsection 153(2)
Repeal the subsection, substitute:
(2) While an order is in force in relation to an application for an innovation patent, the application may proceed up to the acceptance of the patent request and complete specification but a patent must not be granted on the application.
78 Subsection 169(1)
Omit “A”, substitute “Subject to subsection (4), a”.
79 At the end of section 169
Add:
(4) An application under subsection (1) in respect of an innovation patent cannot be made unless the patent has been certified.
80 Subsection 174(3)
Repeal the subsection, substitute:
(3) While a prohibition order is in force in relation to an application for an innovation patent, the application may proceed up to the acceptance of the patent request and complete specification, but a patent must not be granted on the application.
81 Paragraph 176(c)
Omit “or for a petty patent”.
82 After subsection 178(1)
Insert:
(1A) A person must not falsely represent that he or she, or another person, is the patentee of an innovation patent that has been certified.
Penalty: 60 penalty units.
83 At the end of subsection 186(1)
Add: The Register is to contain 2 parts as follows:
84 Section 187
Repeal the section, substitute:
85 Section 204
Omit “section 21”, substitute “section 15B”.
86 Subsection 223(4)
Repeal the subsection, substitute:
(4) The Commissioner must advertise in the Official Journal:
87 Subsection 223(9)
Omit “an extension of time for more than 3 months is granted for doing
a relevant act,”, substitute:
the Commissioner grants:
88 Paragraph 224(1)(a)
Omit “or 66”, substitute “, 52 or 66”.
89 At the end of subsection 227(1)
Add “in accordance with the regulations”.
90 Subsections 227(3), (4), (5) and (6)
Repeal the subsections, substitute:
(3) The regulations may provide for the consequences (for the purposes of this Act) of failing to pay a fee in accordance with the regulations.
Note: Some provisions of this Act provide expressly or implicitly for the consequences of failing to pay a fee (for example, see subsections 89(3) and 142(2), section 143, subsection 151(4) and section 176). Regulations cannot provide for consequences inconsistent with those provisions.
91 Paragraph 228(2)(d)
Repeal the paragraph.
92 After paragraph 228(2)(h)
Insert:
(ha) setting out the formalities checking process for innovation patents including, in particular, the following matters:
(iii) providing for the lapsing of the application if such a direction is not complied with within a time specified in the regulations; and
(iv) providing for the restoration of an application that has so lapsed; and
93 Paragraph 228(2)(j)
Omit “patent”, substitute “standard patent”.
94 Schedule 1 (Dictionary)
Insert:
certified, in respect of an innovation patent other than in section 19, means a certificate of examination issued by the Commissioner under paragraph 101E(e) in respect of the patent.
95 Schedule 1 (Dictionary) (definition of complete specification)
Repeal the definition, substitute:
complete specification means (other than in section 116) a specification filed in respect of a complete patent application or, if the specification has been amended, the complete specification as amended.
96 Schedule 1 (Dictionary) (definition of divisional application)
Repeal the definition.
97 Schedule 1 (Dictionary) (definition of examination)
Repeal the definition, substitute:
98 Schedule 1 (Dictionary)
Insert:
formalities check means, in respect of an application for an innovation patent, the checking process undertaken under section 52 using the process set out in the regulations.
99 Schedule 1 (Dictionary)
Insert:
innovation patent means letters patent for an invention granted under section 62.
100 Schedule 1 (Dictionary) (definition of patent)
Omit “a petty”, substitute “an innovation”.
101 Schedule 1 (Dictionary) (definition of patent application)
Omit “a petty”, substitute “an innovation”.
102 Schedule 1 (Dictionary) (definition of petty patent)
Repeal the definition.
103 Schedule 1 (Dictionary) (paragraph (a) of the definition of prior art base)
Repeal the paragraph, substitute:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
104 Schedule 1 (Dictionary) (at the end of the definition of
Add: ; and (c) for the purposes of subsection 7(5)—information that is part of the prior art base in relation to deciding whether an invention does or does not involve an innovative step.
105 Schedule 1 (Dictionary) (definition of re-examination)
Repeal the definition, substitute:
106 Schedule 1 (Dictionary) (definition of standard patent)
Repeal the definition, substitute:
standard patent means letters patent for an invention granted under section 61.
107 Schedule 1 (Dictionary) (definition of supply)
Repeal the definition, substitute:
supply includes:
1 Definitions
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.
2 Saving and application provisions relating to 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:
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 88 and 89 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
3 Transitional—applications for petty patents made before the commencement day may be converted to innovation patents or standard patents
(1) If, before the commencement day:
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.
4 Transitional—Register of Patents
Despite the continuation of section 186 of the old law by subitem 2(1):
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.
5 Continuity of Register of Patents not affected
To avoid doubt, the continuity of the Register of Patents and the entries on it, are unaffected by the amendments made by this Act.
6 Other transitional matters relating to innovation patents and petty patents may be provided for in the regulations
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:
7 Application
8 Saving of regulations for subsection 223(9)
1 Section 373-35 (after table item 2)
Insert: 2A innovation patent the income year of the 8th anniversary of the patent
[Minister’s second reading speech made in— House of Representatives on 29 June 2000 Senate on 7 September 2000]
(136/00)