专利法1990（2010年8月6日合并本）， 澳大利亚

12 Application of Act

This Act extends to:

(a)

each external Territory; and

(b)

the Australian continental shelf; and

(c)

the waters above the Australian continental shelf; and

(d)

the airspace above Australia, each external Territory and the Australian continental shelf.

13 Exclusive rights given by patent

(1)

Subject to this Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention.

(2)

The exclusive rights are personal property and are capable of assignment and of devolution by law.

(3)

A patent has effect throughout the patent area.

14 Assignment of patent

(1)

An assignment of a patent must be in writing signed by or on behalf of the assignor and assignee.

(2)

A patent may be assigned for a place in, or part of, the patent area.

Section 15

15 Who may be granted a patent?

(1)

Subject to this Act, a patent for an invention may only be granted to a person who:

(a)

is the inventor; or

(b)

would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

(c)

derives title to the invention from the inventor or a person mentioned in paragraph (b); or

(d)

is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).

(2)

A patent may be granted to a person whether or not he or she is an Australian citizen.

16 Co-ownership of patents

(1)

Subject to any agreement to the contrary, where there are 2 or more patentees:

(a)

each of them is entitled to an equal undivided share in the patent; and

(b)

each of them is entitled to exercise the exclusive rights given by the patent for his or her own benefit without accounting to the others; and

(c)

none of them can grant a licence under the patent, or assign an interest in it, without the consent of the others.

(2)

Where a patented product, or a product of a patented method or process, is sold by any of 2 or more patentees, the buyer, and a person claiming through the buyer, may deal with the product as if it had been sold by all the patentees.

(3)

This section does not affect the rights or obligations of a trustee or of the legal representative of a deceased person, or rights or obligations arising out of either of those relationships.

Section 17

17 Directions to co-owners

(1)

Where there are 2 or more patentees, the Commissioner may, on the application of any of them, give such directions in accordance with the application as the Commissioner thinks fit, being directions about:

(a)

a dealing with the patent or an interest in it; or

(b)

the grant of licences under the patent; or

(c)

the exercise of a right under section 16 in relation to the patent.

(2)

If a patentee fails to do anything necessary to carry out a direction under subsection (1) within 14 days after being asked in writing to do so by one of the other patentees, the Commissioner may, on the application of one of those other patentees, direct a person to do it in the name and on behalf of the defaulting patentee.

(3)

Before giving a direction, the Commissioner must give an opportunity to be heard:

(a)

in the case of an application by a patentee or patentees under subsection (1)—to the other patentee or patentees; and

(b)

in the case of an application under subsection (2)—to the defaulting patentee.

(4)

The Commissioner must not give a direction that:

(a)

affects the rights or obligations of a trustee or of the legal representative of a deceased person, or rights or obligations arising out of either of those relationships; or

(b)

is inconsistent with the terms of an agreement between the patentees.

Chapter 2 Patent rights, ownership and validity Part 3 Validity Division 1 Validity

Section 18

Division 1—Validity

Division 2—Matters not affecting validity

Division 3—Notice of matters affecting validity

40 Specifications

(1)

A provisional specification must describe the invention.

(2)

A complete specification must:

(a)

describe the invention fully, including the best method known to the applicant of performing the invention; and

(b)

where it relates to an application for a standard patent—end with a claim or claims defining the invention; and

(c)

where it relates to an application for an innovation patent— end with at least one and no more than 5 claims defining the invention.

(3)

The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

(4)

The claim or claims must relate to one invention only.

41 Specifications: micro-organisms

(1)

To the extent that an invention is a micro-organism, the complete specification is to be taken to comply with paragraph 40(2)(a), so far as it requires a description of the micro-organism, if the deposit requirements are satisfied in relation to the micro-organism.

(2)

Where:

(a)

an invention involves the use, modification or cultivation of a micro-organism, other than the micro-organism mentioned in subsection (1); and

(b)

a person skilled in the relevant art in the patent area could not reasonably be expected to perform the invention without having a sample of the micro-organism before starting to perform the invention; and

(c)

the micro-organism is not reasonably available to a person

skilled in the relevant art in the patent area; the specification is to be taken to comply with paragraph 40(2)(a), so far as it requires a description of the micro-organism, if, and only if, the deposit requirements are satisfied in relation to the micro-organism.

From application to acceptance Chapter 3 Patent applications Part 1 Specifications Division 2

Section 42

(3)

For the purposes of this section, a micro-organism may be taken to be reasonably available to a person even if it is not so available in the patent area.

(4)

Where:

(a)

the requirements specified in paragraph 6(c) or (d) cease to be satisfied in relation to a micro-organism; and

(b)

steps are taken at a later time within the prescribed period in accordance with such provisions (if any) of the regulations as are applicable; and

(c)

as a result of those steps, if the period during which those requirements are not satisfied is disregarded, those requirements would be satisfied at that later time;

those requirements are to be taken to have been satisfied during the period mentioned in paragraph (c), and such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention during that period.

[Note: see also section 6 in relation to satisfaction of deposit requirements.]

42 Micro-organisms ceasing to be reasonably available

(1)

Where:

(a)

a complete application has been made for a patent, or a patent has been granted for an invention of a kind mentioned in paragraph 41(2)(a); and

(b)

the relevant micro-organism was, at the date of filing of the complete specification, reasonably available (within the meaning of section 41) to a skilled person working in the relevant art in the patent area; and

(c)

the micro-organism has ceased to be so available; a prescribed court or the Commissioner, on application made in accordance with the regulations, or the Commissioner, on his or her own motion, may declare that the specification does not

comply with section 40 unless the deposit requirements are satisfied in relation to the micro-organism.

Chapter 3 From application to acceptance Part 1 Patent applications Division 2 Specifications

Section 42

(2)

Where a declaration is made under subsection (1):

(a)

this Act has effect in relation to the specification accordingly; and

(b)

section 6 applies as if the references in that section to the date of filing of the specification were references to a date specified in the declaration for the purposes of this subsection.

(3)

Subsection (2) does not limit the operation of section 223.

(4)

Where:

(a)

an application is made under subsection (1); or

(b)

the Commissioner proposes to make a declaration under that

subsection on his or her own motion; the applicant for the patent, or the patentee, as the case may be, must be notified, in accordance with the regulations, of the application or proposal and is entitled to appear and be heard.

(5)

A declaration by the Commissioner must be made in accordance with the regulations.

(6)

An office copy of a declaration by a prescribed court must be served on the Commissioner by the Registrar or other appropriate officer of the court.

(7)

An appeal lies to the Federal Court against a decision of the Commissioner under subsection (1).

[Note: see also section 6 in relation to satisfaction of deposit requirements.]

From application to acceptance Chapter 3 Patent applications Part 1 Priority dates Division 3

Section 43

43 Priority dates

(1)

Each claim of a specification must have a priority date.

(2)

The priority date of a claim is:

(a)

the date of filing of the specification; or

(b)

where the regulations provide for the determination of a different date as the priority date—the date determined under the regulations.

(3)

Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.

(4)

The priority date of a claim of a specification may be different from the priority date of any other claim of the specification.

Priority date if claim arises from further application for an innovation patent provided for in section 79C

(5)

If:

(a)

an innovation patent has been granted following an application provided for in section 79C; and

(b)

a request for the examination of the patent has been made

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:

(a)

an innovation patent has been granted following an application provided for in section 79C; and

(b)

a request for the examination of the patent has not been made

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.

Chapter 3 From application to acceptance Part 2 Examination of standard patent requests and specifications Division 1 Examination

Section 44

44 Request for examination

(1)

Where a complete application for a standard patent has been made, the applicant may, within the prescribed period and in accordance with the regulations, ask for an examination of the patent request and specification relating to the application.

(2)

Where a complete application has been made for a standard patent, the Commissioner may, on one or more of the prescribed grounds and in accordance with the regulations, direct the applicant to ask, within the prescribed period, for an examination of the patent request and complete specification relating to the application.

(3)

Where the patent request and specification relating to a complete application for a standard patent are open to public inspection, a person may, in accordance with the regulations, require the Commissioner to direct the applicant to ask, within the prescribed period, for an examination of the request and specification.

(4)

Where required under subsection (3), the Commissioner must give a direction accordingly, unless the applicant has already asked, or been directed to ask, for an examination of the patent request and specification.

45 Examination [see also Table B]

(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:

(a)

whether the specification complies with section 40; and

(b)

whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criterion mentioned in paragraph 18(1)(a); and

From application to acceptance Chapter 3 Examination of standard patent requests and specifications Part 2 Examination Division 1

Section 46

(c)

whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:

(i)

is novel; and

(ii)

involves an inventive step; and

(d)

such other matters (if any) as are prescribed.

(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 (whether in or out of the patent area).

(2)

The examination must be carried out in accordance with the regulations.

(3)

The applicant must inform the Commissioner, in accordance with the regulations, of the results of the following searches carried out for the purpose of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia:

(a)

any documentary searches by, or on behalf of, a foreign patent office, other than searches prescribed by the regulations;

(b)

the documentary searches prescribed by the regulations.

(4)

Subsection (3) only applies to searches completed before the grant of the patent.

(5)

In subsection (4):

completed, in relation to a search, has the meaning prescribed by the regulations.

46 Request for deferment of examination

(1)

Where:

(a)

a complete application for a standard patent has been made; and

(b)

a prescribed application for a patent has been made in a prescribed foreign country; and

(c)

a patent has not been granted in respect of the prescribed application; and

Chapter 3 From application to acceptance Part 2 Examination of standard patent requests and specifications Division 1 Examination

Section 46

(d) the applicant has been directed by the Commissioner to ask for an examination of the patent request and specification relating to the application mentioned in paragraph (a), being a direction given on a ground prescribed for the purposes of this paragraph;

the applicant may, instead of asking for an examination as directed, ask for deferment of the examination.

(2)

A request for deferment must be made in accordance with the regulations.

(3)

Where a request for deferment is made:

(a)

the examination of the patent request and specification must be deferred accordingly; and

(b)

the application does not lapse merely because of failure by the applicant to ask for an examination in accordance with the Commissioner’s direction.

From application to acceptance Chapter 3 Examination of standard patent requests and specifications Part 2 Modified examination Division 2

Section 47

47 Request for modified examination

(1)

Where:

(a)

a complete application for a standard patent has been made; and

(b)

a patent has been granted in a prescribed foreign country in

respect of a prescribed application made in that country; the applicant may, instead of asking for an examination, ask for a modified examination of the patent request and specification relating to the application.

(2) The applicant may withdraw a request for a modified examination at any time before acceptance of the patent request and specification and ask for an examination under section 44 instead.

48 Modified examination [see also Table B]

(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:

(a)

whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criterion mentioned in paragraph 18(1)(a); and

(b)

whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:

(i)

is novel; and

(ii)

involves an inventive step; and

(c)

such other matters (if any) as are prescribed.

(1A) For the purposes of paragraph (1)(b), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area).

(2) The modified examination must be carried out in accordance with the regulations.

Chapter 3 From application to acceptance Part 3 Acceptance Division 1 Acceptance of standard patents

Section 49

49 Acceptance of patent request: standard patent

(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.

(2)

If subsection (1) does not apply, the Commissioner may refuse to accept the request and specification.

(3)

The Commissioner must, if asked to do so by the applicant in writing, postpone acceptance of a patent request and complete specification until such day as the applicant specifies.

(4)

The applicant cannot, for the purposes of subsection (3), specify a day that is after the end of the period prescribed for the purposes of paragraph 142(2)(e).

(5)

Where the Commissioner accepts a patent request and complete specification relating to an application for a standard patent, the Commissioner must:

(a)

notify the applicant in writing of the acceptance; and

(b)

publish a notice of the acceptance in the Official Journal.

(6)

The notice mentioned in paragraph (5)(b) must:

(a)

if the patent request and complete specification have been subjected to a modified examination—include a statement to the effect that the acceptance has resulted from a modified examination; and

From application to acceptance Chapter 3 Acceptance Part 3 Acceptance of standard patents Division 1

Section 50

(b)

if the patent request and complete specification have not already become open to public inspection—include a statement to the effect that the patent request and specification are open to public inspection.

(7)

Where the Commissioner refuses to accept a patent request and complete specification relating to an application for a standard patent, the Commissioner must notify the applicant in writing of the reasons for the refusal and publish a notice of the refusal in the Official Journal.

50 Application or grant may be refused in certain cases

(1)

The Commissioner may refuse to accept a request and specification relating to a standard patent, or to grant a standard patent:

(a)

for an invention the use of which would be contrary to law; or

(b)

on the ground that the specification claims as an invention:

(i)

a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; or

(ii)

a process producing such a substance by mere admixture.

(2)

The Commissioner may refuse to accept a specification relating to a standard patent containing a claim that includes the name of a person as the name, or part of the name, of the invention so far as claimed in that claim.

51 Appeal

An appeal lies to the Federal Court against a decision of the Commissioner under this Division.

Chapter 3 From application to acceptance Part 3 Acceptance Division 2 Acceptance of innovation patents

Section 52

52 Formalities check and acceptance of innovation patents

(1)

If a complete application for an innovation patent is made, the Commissioner must undertake a formalities check in respect of the application.

(2)

If satisfied that the application passes the formalities check, the Commissioner must accept the patent request and complete specification.

Section 53

61 Grant of standard patent

(1)

Subject to section 100A, the Commissioner must grant a standard patent, by sealing a standard patent in the approved form, if:

(a)

there is no opposition to the grant; or

(b)

in spite of opposition, the Commissioner’s decision, or the decision on appeal, is that a standard patent should be granted.

(2)

A standard patent must be granted within the prescribed period.

62 Grant and publication of innovation patent

(1)

If:

(a)

the Commissioner accepts a patent request and complete specification filed in respect of an application for an innovation patent; and

(b)

a prohibition order is not in force under subsection 152(3) or

173(1) in relation to the application; the Commissioner must grant the innovation patent by sealing an innovation patent in the approved form.

(2)

If an innovation patent is granted, the Commissioner must publish a notice in the Official Journal stating that:

(a)

the innovation patent has been granted; and

(b)

the patent request and complete specification are open to public inspection.

(3)

If:

(a)

a divisional application provided for in section 79B is made for an innovation patent; and

Section 63

(b) a notice is published in the Official Journal that the complete specification filed in respect of the divisional application is open to public inspection;

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.

63 Joint patentees

A patent may be granted to 2 or more nominated persons jointly.

64 Grant: multiple applications

(1)

Subject to this section, where there are 2 or more applications for patents for identical, or substantially identical, inventions, the granting of a patent on one of those applications does not prevent the granting of a patent on any of the other applications.

(2)

Where:

(a)

an application for a standard patent claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor; and

(b)

the relevant claim or claims in each of the complete

specifications have the same priority date or dates; a standard patent cannot be granted on the application.

65 Date of patent

The date of a patent is:

(a)

the date of filing of the relevant complete specification; or

(b)

where the regulations provide for the determination of a different date as the date of a patent—the date determined under the regulations.

66 Sealing of duplicate of patent

(1) The Commissioner may seal a duplicate of a patent if satisfied that the patent is lost, stolen, damaged or destroyed.

Section 66

(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.

Section 67

67 Term of standard patent

The term of a standard patent is 20 years from the date of the patent.

68 Term of innovation patent

The term of an innovation patent is 8 years from the date of the patent.

Section 70

70 Applications for extension of patent

(1)

The patentee of a standard patent may apply to the Commissioner for an extension of the term of the patent if the requirements set out in subsections (2), (3) and (4) are satisfied.

(2)

Either or both of the following conditions must be satisfied:

(a)

one or more pharmaceutical substances per se must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of the claim or claims of that specification;

(b)

one or more pharmaceutical substances when produced by a process that involves the use of recombinant DNA technology, must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of the claim or claims of that specification.

(3)

Both of the following conditions must be satisfied in relation to at least one of those pharmaceutical substances:

(a)

goods containing, or consisting of, the substance must be included in the Australian Register of Therapeutic Goods;

(b)

the period beginning on the date of the patent and ending on the first regulatory approval date for the substance must be at least 5 years.

Note: Section 65 sets out the date of a patent.

(4)

The term of the patent must not have been previously extended under this Part.

(5)

For the purposes of this section, the first regulatory approval date, in relation to a pharmaceutical substance, is:

(a)

if no pre-TGA marketing approval was given in relation to the substance—the date of commencement of the first inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance; or

Section 71

(b)

if pre-TGA marketing approval was given in relation to the substance—the date of the first approval.

(6)

For the purposes of this section, pre-TGA marketing approval, in relation to a pharmaceutical substance, is an approval (however described) by a Minister, or a Secretary to a Department, to:

(a)

market the substance, or a product containing the substance, in Australia; or

(b)

import into Australia, for general marketing, the substance or a product containing the substance.

71 Form and timing of an application

Form of application

(1)

An application for an extension of the term of a standard patent must:

(a)

be in the approved form; and

(b)

be accompanied by such documents (if any) as are ascertained in accordance with the regulations; and

(c)

be accompanied by such information (if any) as is

ascertained in accordance with the regulations. For this purpose, document includes a copy of a document.

Timing of application

(2)

An application for an extension of the term of a standard patent must be made during the term of the patent and within 6 months after the latest of the following dates:

(a)

the date the patent was granted;

(b)

the date of commencement of the first inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, any of the pharmaceutical substances referred to in subsection 70(3);

(c)

the date of commencement of this section.

Section 72

85 Revocation of patent for main invention

(1)

If the patent for the main invention is revoked by a prescribed court, or by the Commissioner under section 101 or 137, the patent of addition becomes an independent patent unless otherwise ordered by:

(a)

where the patent is revoked by a prescribed court—that court; or

(b)

in any other case—the Commissioner.

(2)

Where a patent of addition becomes an independent patent under this section, its term cannot be more than the unexpired part of the term of the patent for the main invention.

86 Renewal fees not payable

A fee is not payable for the renewal of a patent of addition.

87 Fees payable where patent of addition becomes an independent patent

The fees payable after a patent of addition becomes an independent patent, and the dates when they become payable, are to be determined by reference to the date of the independent patent.

Section 88

88 PCT applications

(1)

Subject to this section, a PCT application must, for the purposes of this Act other than this Part, be treated as a complete application under this Act for a standard patent.

(3)

The description, drawings and claims contained in a PCT application must be treated as a complete specification filed in respect of the application.

(4)

The filing date of a PCT application is to be taken to be its international filing date.

(5)

For the purposes of this Act, an indication, in relation to a deposited micro-organism furnished under Rule 13 bis. 4, in relation to a PCT application, is to be taken to be included in the description contained in the PCT application even if the indication is contained in another document.

(6)

The reference in subsection (5) to Rule 13 bis. 4 is a reference to Rule 13 bis. 4 of the Regulations mentioned in the definition of PCT in Schedule 1.

[Note: international filing date is defined in Schedule 1: see also section 10.]

89 Modified application of Act [see also Table B]

(1) A PCT application is to be taken to comply with the prescribed requirements of this Act and the regulations that relate to patent applications for standard patents but is not to be taken, merely because of section 88, to comply with any other such requirements that apply to it.

Section 90

(2)

The description, drawings and claims contained in a PCT application are not to be taken, merely because of section 88, to comply with the requirements of section 40.

(3)

An applicant is not entitled to ask that any action be taken, or that he or she be allowed to take any action, under this Act in relation to a PCT application unless:

(a)

if the application was not filed in the receiving Office in English—a translation of the application into English, verified in accordance with the regulations, has been filed; and

(b)

in any case—the prescribed documents have been filed and the prescribed fees paid.

(4)

If a translation of a PCT application has been filed, being a translation of the kind mentioned in paragraph (3)(a), the description and claims, and any matter associated with the drawings, contained in the application are to be taken to have been amended, on the day on which the translation was filed, by substituting the translation of the description, claims and matter for the original.

(5)

Where:

(a)

a PCT application has been amended under Article 19 of the PCT; or

(b)

a PCT application in respect of which Australia has been elected under Chapter II of the PCT within the period specified in Article 39 of the PCT has been amended under Article 34 of the PCT; or

(c)

a PCT application has been rectified under Rule 91 of the

Regulations mentioned in the definition of PCT in Schedule 1; the description, drawings and claims contained in the application are, for the purposes of this Act, to be taken to have been amended on the day on which that amendment or rectification was made.

90 Publication of PCT applications [see also Table B]

A PCT application is to be taken to have become open to public inspection, and to have been published in Australia:

(a)

where a notice in relation to the application is published under subsection 92(1) or (2)—on the day on which the notice is so published; or

Section 91

(b)

where a notice in relation to the application is published under subsection 92(3)—on the day on which a copy of the application, as so published, is received in the Patent Office.

91 Application of certain provisions to PCT applications

For the purposes of applying section 57 to a PCT application, references to the complete specification becoming open to public inspection are references to the PCT application being taken to have become open to public inspection under section 90.

92 Notice of publication [see also Table B]

(1)

Where, in relation to a PCT application that has not lapsed, or been withdrawn or refused:

(a)

the applicant complies with subsection 89(3); and

(b)

the applicant asks the Commissioner in writing to publish a notice in the Official Journal that the application is open to public inspection; and

(c)

the application is not already open to public inspection;

the Commissioner must publish a notice in the Official Journal stating that a copy of the application is open to public inspection.

(2)

Where:

(a)

a PCT application that has not lapsed, or been withdrawn or refused, is to be treated as an application for a standard patent under this Act; and

(b)

the applicant complies with subsection 89(3); and

(c)

the period of 18 months after the priority date of the application has ended; and

(d)

the application is not already open to public inspection;

the Commissioner must publish a notice in the Official Journal stating that a copy of the application is open to public inspection.

(3)

Where:

(a)

a copy of a PCT application, as published under Article 21 of the PCT, is received in the Patent Office; and

(b)

the application has not lapsed, or been withdrawn or refused; and

Section 93

(c) a notice has not been published under subsection (1) or (2); the Commissioner must publish a notice in the Official Journal

specifying the date on which the copy was so received and stating that the copy is open to public inspection.

(4) Where a notice is published in the Official Journal under this section, a copy of the relevant application and of any other prescribed document is open to public inspection.

93 Evidence of matters arising under PCT

A certificate signed by the Commissioner in relation to an international application, certifying that:

(a)

any matter or thing required or permitted by or under this Act or the PCT to be made or done has been made or done; or

(b)

any matter or thing required by or under this Act or the PCT

not to be made or done has not been made or done; is prima facie evidence of the matters contained in the certificate.

Section 94

94 Convention applicants may make Convention applications

(1)

A Convention applicant in relation to a basic application may make a Convention application, or 2 or more such applicants may make a joint Convention application, within the prescribed period.

(2)

Where 2 or more basic applications for protection in respect of inventions have been made in one or more Convention countries, one Convention application may be made within the prescribed period by a Convention applicant in relation to those basic applications, or by 2 or more such entitled applicants jointly, in respect of the inventions disclosed in the basic applications.

95 Manner of making Convention application

(1)

Subject to this section, a Convention application must be made and dealt with in the same way as any other patent application.

(2)

A patent request relating to a Convention application must:

(a)

include the prescribed particulars relating to the relevant basic application; and

(b)

be accompanied by a complete specification.

(3)

In addition to the complete specification, the prescribed documents must be filed within the prescribed period.

96 Withdrawn, abandoned or refused applications

(1)

Where, at the time when a Convention application is made in respect of an invention:

(a)

an application has been made for protection in respect of the invention in a Convention country; and

(b)

the application has been withdrawn, abandoned or refused without becoming open to public inspection; and

(c)

the application has not been used as the basis of claiming a right of priority in a Convention country under a law of that country corresponding to this Part; and

Section 96

(d) a later application has been made by the same applicant for protection in respect of the invention in the Convention country in which the earlier application was made;

the applicant may ask the Commissioner to disregard the earlier application for the purposes of this Part.

(2)

Where an applicant makes a request under subsection (1):

(a)

the earlier application must be disregarded; and

(b)

neither the applicant nor any other applicant may use the earlier application as a basic application for the purposes of this Part.

Section 96A

100 Copies of report to be given to court

A copy of a report under section 98, and of any statement filed under section 99 in relation to the report, must, where the re-examination was directed under subsection 97(3), be given to the court that gave the direction.

100A Refusal to grant patent—re-examination before grant

(1)

Where the Commissioner makes an adverse report on a re-examination under subsection 97(1), the Commissioner may refuse to grant the patent (see subsection 61(1)).

Section 101

(2)

The Commissioner cannot refuse to grant a patent under this section unless the Commissioner:

(a)

has given the applicant a reasonable opportunity to be heard; and

(b)

has, where appropriate, given the applicant a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection and the applicant has failed to do so.

(3)

The applicant may appeal to the Federal Court against a decision of the Commissioner under this section.

101 Revocation of patent—re-examination after grant

(1)

Where the Commissioner makes an adverse report on a re-examination under subsection 97(2), the Commissioner may, by notice in writing, revoke the patent, either wholly or so far as it relates to a particular claim, as the case requires.

(2)

The Commissioner must not revoke a patent under this section unless the Commissioner:

(a)

has given the patentee a reasonable opportunity to be heard; and

(b)

has, where appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection and the patentee has failed to do so.

(3)

The Commissioner must not revoke a patent under this section while relevant proceedings in relation to that patent are pending.

(4)

The patentee may appeal to the Federal Court against a decision of the Commissioner under this section.

Section 101A

Part 3—Opposition to innovation patents

101M Opposition to innovation patent

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:

(a)

that the patentee is either:

(i)

not entitled to the patent; or

(ii)

entitled to the patent but only in conjunction with some other person;

(b)

that the invention is not a patentable invention because it does not comply with paragraph 18(1A)(a) or (b);

(c)

that the invention is not a patentable invention under subsection 18(2) or (3);

(d)

that the complete specification does not comply with subsection 40(2) or (3).

101N Hearing and decision by the Commissioner

(1)

If an innovation patent has been opposed under section 101M, the Commissioner must decide the case in accordance with the regulations.

(2)

The Commissioner must give the opponent and the patentee a reasonable opportunity to be heard before deciding the case.

(3)

The Commissioner may, in deciding whether to revoke the patent, take into account any ground on which the grant of an innovation patent may be opposed, whether relied upon by the opponent or not.

(4)

Subject to subsection (6), if the Commissioner is satisfied that a ground exists for the revocation of an innovation patent, the Commissioner may revoke the patent in writing either wholly or so far as it relates to a particular claim.

Section 101P

(5)

If the Commissioner revokes the patent:

(a)

the Commissioner must notify the patentee and the opponent of the revocation; and

(b)

register the revocation of the patent.

(6)

The Commissioner must not revoke a patent under this section unless the Commissioner has, where appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any ground for revocation and the patentee has failed to do so.

(7)

The patentee, and any opponent, may appeal to the Federal Court against a decision of the Commissioner under this section.

101P Relevant proceedings and opposition

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.

Section 102

Chapter 10—Amendments

Part 1—Amendments that are not allowable

102 What amendments are not allowable?

Amendment of complete specification not allowable if amended specification would claim matter not in substance disclosed in the filed specification

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

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:

(a)

a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)

the specification would not comply with subsection 40(2) or (3).

Meaning of relevant time¹

(2A) For the purposes of subsection (2), relevant time means:

(a)

in relation to an amendment proposed to a complete specification relating to a standard patent—after the specification has been accepted; or

(b)

in relation to an amendment proposed to a complete specification relating to an innovation patent—after the Commissioner has made decisions under paragraphs 101E(a) and (aa) in respect of the patent.

¹ This heading has been placed in the correct position.

Section 103

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:

(a)

the patent application was provided for in section 79C; and

(b)

the effect of the proposed amendment would be to convert the application from an application for an innovation patent to an application for a standard patent.

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.

(3)

This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.

103 Consent of mortgagee or exclusive licensee needed

(1)

Where a person is registered as the mortgagee or exclusive licensee of a patent, an amendment of the complete specification is not allowable unless the mortgagee or licensee has consented, in writing, to the amendment.

(2)

If a mortgagee or licensee refuses to consent to a proposed amendment, the Commissioner may, on the application of the applicant or patentee, if satisfied that the consent has been unreasonably refused, direct that the consent of the mortgagee or licensee is not necessary.

Section 104

Part 2—Amendments of patent requests, specifications and other filed documents

104 Amendments by applicants and patentees

(1)

An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:

(a)

removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;

(b)

correcting a clerical error or an obvious mistake.

(2)

Where an applicant or patentee asks for leave to amend a patent request or complete specification, or any other filed document, the Commissioner must consider and deal with the request in accordance with the regulations.

(4)

The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment.

(5)

The Commissioner must not allow an amendment that is not allowable under section 102.

(6)

On the allowance of an amendment, the amendment is to be taken to have been made.

(7)

An appeal lies to the Federal Court, against a decision of the Commissioner allowing, or refusing to allow, a requested amendment, other than a prescribed decision.

Section 105

105 Amendments directed by court

(1)

In any relevant proceedings in relation to a patent, the court may, on the application of the patentee, by order direct the amendment of the patent, the patent request or the complete specification in the manner specified in the order.

(2)

An order may be made subject to such terms (if any) as to costs, advertisements or otherwise, as the court thinks fit.

(3)

The patentee must give notice of an application for an order to the Commissioner, who is entitled to appear and be heard, and must appear if the court directs.

(4)

A court is not to direct an amendment that is not allowable under section 102.

(5)

The patentee must file a copy of an order within the prescribed period.

(6)

On the filing of a copy of an order, the patent, patent request or complete specification is to be taken to have been amended in the manner specified in the order.

106 Amendments directed by Commissioner: patents

(1)

Where:

(a)

a patent has been granted; and

(b)

the Commissioner is satisfied that the patent is invalid on grounds that could be removed by appropriate amendments of the specification following:

(i)

in the case of a standard patent—re-examination of the patent; or

(ii)

in the case of an innovation patent—examination of,

re-examination of, or opposition to, the patent; the Commissioner may, in accordance with the regulations, direct the patentee to file, within such time as the Commissioner allows, a statement of proposed amendments of the specification for the purpose of removing those grounds.

(2)

The Commissioner must not give a direction without first giving the patentee a reasonable opportunity to be heard.

Section 107

(3)

A patentee may, in accordance with the regulations, amend a statement of amendments.

(4)

If the Commissioner is satisfied that the amendments set out in a statement (or an amended statement) are allowable and would, if made, remove the grounds on which the patent is invalid, the Commissioner must allow the amendments.

(5)

On the allowance of an amendment, the amendment is to be taken to have been made.

107 Amendments directed by Commissioner: applications for standard patents

(1)

Where:

(a)

a complete application for a standard patent has been made; and

(b)

the Commissioner is satisfied that there are lawful grounds of objection to the patent request or complete specification, but that those grounds of objection could be removed by appropriate amendments of the request or specification; and

(c)

the applicant has not taken action to amend the request or

specification so as to remove those grounds of objection; the Commissioner may, in accordance with the regulations, direct the applicant to file, within such time as the Commissioner allows, a statement of proposed amendments of the request or specification for the purpose of removing those grounds of objection.

(2)

The Commissioner must not give a direction without first giving the applicant a reasonable opportunity to be heard.

(3)

An applicant may, in accordance with the regulations, amend a statement of amendments.

(4)

If the Commissioner is satisfied that the amendments set out in a statement (or an amended statement) are allowable and would, if made, remove all lawful grounds of objection to the patent request and complete specification, the Commissioner must allow the amendments.

(5)

On the allowance of an amendment, the amendment is to be taken to have been made.

Section 109

109 Appeal

An appeal lies to the Federal Court against a direction of the Commissioner under section 106 or 107.

Section 110

Part 3—Miscellaneous

110 Advertisement of amendment of complete specification

An amendment of a complete specification that is open to public inspection must be notified in the Official Journal.

112 Pending proceedings

A complete specification relating to a patent must not be amended, except under section 105, while relevant proceedings in relation to the patent are pending.

113 Persons claiming under assignment or agreement

(1)

Where, before a patent is granted, a person would, if the patent were then granted, be entitled under an assignment or agreement, or by operation of law, to:

(a)

the patent or an interest in it; or

(b)

an undivided share in the patent or in such an interest; the Commissioner may, on a request made by the person in accordance with the regulations, direct that the application proceed in the name of the person, or in the name of the person and the

applicant or the other joint applicant or applicants, as the case requires.

(2)

Where the Commissioner gives a direction:

(a)

the person is to be taken to be the applicant, or a joint applicant, as the case requires; and

(b)

the patent request is to be taken to have been amended so as to request the grant of a patent to the person, either alone or as a joint patentee, as the case requires.

114 Priority date of certain amended claims

(1) Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.

Section 114A

114A Objection cannot be taken to certain amended claims

(1)

This section applies if:

(a)

a complete specification (the original specification) has been amended; and

(b)

after the amendment, the amended specification claims matter that was in substance disclosed as a result of the amendment; and

(c)

after the filing date of the original specification there is a publication or use of the invention as described in the original specification.

(2)

If this section applies, objection cannot be taken to the amended specification, and a patent is not invalid, on the ground that the invention, so far as claimed in the amended specification and having regard to the publication or the use of the invention described in the original specification, does not involve:

(a)

in the case of a standard patent—an inventive step; or

(b)

in the case of an innovation patent—an innovative step.

115 Restriction on recovery of damages etc.

(1)

Where a complete specification is amended after becoming open to public inspection, damages shall not be awarded, and an order shall not be made for an account of profits, in respect of any infringement of the patent before the date of the decision or order allowing or directing the amendment:

(a)

unless the court is satisfied that the specification without the amendment was framed in good faith and with reasonable skill and knowledge; or

(b)

if the claim of the specification that was infringed is a claim mentioned under subsection 114(1).

(2)

Subsection (1) has effect subject to subsections 57(3) and (4).

116 Interpretation of amended specifications

The Commissioner or a court may, in interpreting a complete specification as amended, refer to the specification without amendment.

Section 117

Chapter 11—Infringement

Part 1—Infringement and infringement proceedings

117 Infringement by supply of products

(1)

If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent.

(2)

A reference in subsection (1) to the use of a product by a person is a reference to:

(a)

if the product is capable of only one reasonable use, having regard to its nature or design—that use; or

(b)

if the product is not a staple commercial product—any use of the product, if the supplier had reason to believe that the person would put it to that use; or

(c)

in any case—the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier.

118 Infringement exemptions: use in or on foreign vessels, aircraft or vehicles

The rights of a patentee are not infringed:

(a)

by using the patented invention on board a foreign vessel, in the body of the vessel, or in the machinery, tackle, apparatus or other accessories of the vessel, if the vessel comes into the patent area only temporarily or accidentally and the invention is used exclusively for the needs of the vessel; or

(b)

by using the patented invention in the construction or working of a foreign aircraft or foreign land vehicle, or in the accessories of the aircraft or vehicle, if the aircraft or vehicle comes into the patent area only temporarily or accidentally.

Section 119

119 Infringement exemptions: prior use

(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:

(a)

was exploiting the product, method or process in the patent area; or

(b)

had taken definite steps (contractually or otherwise) to exploit the product, method or process in the patent area.

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:

(a)

had stopped (except temporarily) exploiting the product, method or process in the patent area; or

(b)

had abandoned (except temporarily) the steps to exploit the product, method or process in the patent area.

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:

(a)

by or with the consent of the patentee or the patentee’s predecessor in title; and

(b)

through any publication or use of the invention in the prescribed circumstances mentioned in paragraph 24(1)(a).

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 119A

section applies in relation to the recipient as if the references in subsections (1), (2) and (3) to the person were references to:

(a)

the disposer; or

(b)

if the disposer’s entitlement arose because of one or more previous applications of this subsection—the first person:

(i)

who was entitled under subsection (1) (applying of its own force) to do an act without infringing the patent; and

(ii)

to whom the disposer’s entitlement is directly or indirectly attributable.

Definition

(5) In this section:

exploit includes:

(a)

in relation to a product:

(i)

make, hire, sell or otherwise dispose of the product; and

(ii)

offer to make, hire, sell or otherwise dispose of the product; and

(iii) use or import the product; and

(iv)

keep the product for the purpose of doing an act described in subparagraph (i), (ii) or (iii); and

(b)

in relation to a method or process:

(i)

use the method or process; and

(ii)

do an act described in subparagraph (a)(i), (ii), (iii) or

(iv) with a product resulting from the use of the method or process.

119A Infringement exemptions: acts for obtaining regulatory approval of pharmaceuticals

(1)

The rights of a patentee of a pharmaceutical patent are not infringed by a person exploiting an invention claimed in the patent if the exploitation is solely for:

(a)

purposes connected with obtaining the inclusion in the Australian Register of Therapeutic Goods of goods that:

(i)

are intended for therapeutic use; and

(ii)

are not medical devices, or therapeutic devices, as defined in the Therapeutic Goods Act 1989; or

Section 120

(b)

purposes connected with obtaining similar regulatory approval under a law of a foreign country or of a part of a foreign country.

(2)

Subsection (1) does not apply to the export from Australia of goods for purposes described in paragraph (1)(b) unless the term of the patent has been extended under Part 3 of Chapter 6 and the goods consist of or contain:

(a)

a pharmaceutical substance per se that is in substance disclosed in the complete specification of the patent and in substance falls within the scope of the claim or claims of that specification; or

(b)

a pharmaceutical substance when produced by a process that involves the use of recombinant DNA technology, that is in 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:

(a)

a pharmaceutical substance; or

(b)

a method, use or product relating to a pharmaceutical substance, including any of the following:

(i)

a method for producing a raw material needed to produce the substance;

(ii)

a product that is a raw material needed to produce the substance;

(iii) a product that is a pro-drug, metabolite or derivative of the substance.

120 Infringement proceedings

(1) Subject to subsection (1A), infringement proceedings may be started in a prescribed court, or in another court having jurisdiction to hear and determine the matter, by the patentee or an exclusive licensee.

(1A) Infringement proceedings in respect of an innovation patent cannot be started unless the patent has been certified.

Section 121

(2)

If an exclusive licensee starts infringement proceedings, the patentee must be joined as a defendant unless joined as a plaintiff.

(3)

A patentee joined as a defendant is not liable for costs unless the patentee enters an appearance and takes part in the proceedings.

(4)

Infringement proceedings must be started within:

(a)

3 years from the day on which the relevant patent is granted; or

(b)

6 years from the day on which the infringing act was done; whichever period ends later.

121 Counter-claim for revocation of patent

(1)

A defendant in infringement proceedings may apply by way of counter-claim in the proceedings for the revocation of the patent.

(2)

The provisions of this Act relating to proceedings for the revocation of a patent apply, with the necessary changes, to a counter-claim.

121A Burden of proof—infringement of patent for a process

(1)

This section applies only to a patent for a process for obtaining a product.

(2)

If, in proceedings for infringement of a patent started by the patentee or the exclusive licensee:

(a)

the defendant alleges that he or she has used a process different from the patented process to obtain a product (defendant’s product) identical to the product obtained by the patented process; and

(b)

the court is satisfied that:

(i)

it is very likely that the defendant’s product was made by the patented process; and

(ii)

the patentee or exclusive licensee has taken reasonable steps to find out the process actually used by the defendant but has not been able to do so;

then, in the absence of proof to the contrary the onus for which is on the defendant, the defendant’s product is to be taken to have been obtained by the patented process.

Section 122

(3) In deciding how the defendant is to adduce evidence for the purposes of subsection (2), the court is to take into account the defendant’s legitimate interests in having business and manufacturing secrets protected.

122 Relief for infringement of patent

(1) The relief which a court may grant for infringement of a patent includes an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.

(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:

(a)

the flagrancy of the infringement; and

(b)

the need to deter similar infringements of patents; and

(c)

the conduct of the party that infringed the patent that occurred:

(i)

after the act constituting the infringement; or

(ii)

after that party was informed that it had allegedly infringed the patent; and

(d)

any benefit shown to have accrued to that party because of the infringement; and

(e)

all other relevant matters.

(2)

On the application of either party, the court may make such order for the inspection of any thing in or on any vehicle, vessel, aircraft or premises, and may impose such terms and give such directions about the inspection, as the court thinks fit.

123 Innocent infringement

(1)

A court may refuse to award damages, or to make an order for an account of profits, in respect of an infringement of a patent if the defendant satisfies the court that, at the date of the infringement, the defendant was not aware, and had no reason to believe, that a patent for the invention existed.

Section 123

(2)

If patented products, marked so as to indicate that they are patented in Australia, were sold or used in the patent area to a substantial extent before the date of the infringement, the defendant is to be taken to have been aware of the existence of the patent unless the contrary is established.

(3)

Nothing in this section affects a court’s power to grant relief by way of an injunction.

Section 124

Part 2—Non-infringement declarations

124 Interpretation

In this Part:

patentee includes an exclusive licensee.

125 Application for non-infringement declaration

(1)

A person who wishes to exploit an invention may apply to a prescribed court for a declaration that the exploitation of the invention would not infringe a claim of a particular complete specification.

(2)

An application may be made:

(a)

at any time after the complete specification has become open to public inspection; and

(b)

whether or not the nominated person or patentee has made any assertion to the effect that the exploitation of the invention would infringe the claim.

(3)

The nominated person or patentee must be joined as a respondent in the proceedings.

126 Proceedings for non-infringement declarations

(1)

A prescribed court must not make a non-infringement declaration unless a patent has been granted in respect of the relevant invention and:

(a)

the applicant for the declaration:

(i)

has asked the nominated person or patentee in writing for a written admission that the proposed exploitation would not infringe a claim of the complete specification; and

(ii)

has given the nominated person or patentee full written particulars of the proposed exploitation; and

Section 127

(iii) has undertaken to pay a reasonable sum for the nominated person’s or patentee’s expenses in obtaining advice about whether the proposed exploitation would infringe the claim; and

(b)

the nominated person or patentee has refused or failed to make the admission; and

(c)

if the patent is an innovation patent—the patent has been certified.

(2)

The validity of a claim cannot be questioned in proceedings for a non-infringement declaration.

(3)

The costs of all parties in proceedings for a non-infringement declaration must be paid by the applicant for the declaration unless the court otherwise orders.

127 Effect of non-infringement declarations

If:

(a)

a nominated person or patentee has given a person a written admission that the exploitation of an invention would not infringe a claim, or a prescribed court has made a non-infringement declaration in respect of an invention; and

(b)

the patentee later gets an injunction restraining the person from exploiting the invention as specified in the admission, or the declaration is revoked;

the person is not liable:

(c)

to account to the patentee for any profits, made by the person before the date on which the injunction was granted or the declaration was revoked, from the exploitation of the invention as specified in the admission or declaration; or

(d)

to pay damages for any loss suffered by the patentee before that date as a result of that exploitation.

Section 128

Part 3—Unjustified threats of infringement proceedings

128 Application for relief from unjustified threats

(1)

Where a person, by means of circulars, advertisements or otherwise, threatens a person with infringement proceedings, or other similar proceedings, a person aggrieved may apply to a prescribed court, or to another court having jurisdiction to hear and determine the application, for:

(a)

a declaration that the threats are unjustifiable; and

(b)

an injunction against the continuance of the threats; and

(c)

the recovery of any damages sustained by the applicant as a result of the threats.

(2)

Subsection (1) applies whether or not the person who made the threats is entitled to, or interested in, the patent or a patent application.

129 Court’s power to grant relief if threats related to a standard patent or standard patent application

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:

(a)

a claim that is not shown by the applicant to be invalid; or

(b)

rights under section 57 in respect of a claim that is not shown by the applicant to be a claim that would be invalid if the patent had been granted.

Section 129A

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:

(a)

a person:

(i)

has applied for an innovation patent, but the application has not been determined; or

(ii)

has an innovation patent that has not been certified; and

(b)

the person, by means of circulars, advertisements or otherwise, threatens a person with infringement proceedings or other similar proceedings in respect of the patent applied for, or the patent, as the case may be;

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.

Section 130

130 Counter-claim for infringement

(1)

The respondent in proceedings under section 128 may apply, by way of counter-claim, for relief to which the respondent would be entitled in separate proceedings for an infringement by the applicant of the patent to which the threats relate.

(2)

Where the respondent applies by way of counter-claim, the applicant may, without making a separate application under Chapter 12, apply in the proceedings for the revocation of the patent.

(3)

The provisions of this Act relating to infringement proceedings apply, with the necessary changes, to a counter-claim.

Note: Infringement proceedings cannot be commenced in respect of an innovation patent unless the patent has first been certified (see subsection 120(1A)).

(4) The provisions of this Act relating to proceedings under section 138 for the revocation of a patent apply, with the necessary changes, to an application under subsection (2).

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)).

131 Notification of patent not a threat

The mere notification of the existence of a patent, or an application for a patent, does not constitute a threat of proceedings for the purposes of section 128.

132 Liability of legal practitioner or patent attorney

A legal practitioner or a registered patent attorney is not liable to proceedings under section 128 in respect of an act done in his or her professional capacity on behalf of a client.

Section 133

Chapter 12—Compulsory licences and revocation of patents

133 Compulsory licences

(1) Subject to subsection (1A), a person may apply to the Federal Court, after the end of the prescribed period, for an order requiring the patentee to grant the applicant a licence to work the patented invention.

(1A) A person cannot apply for an order in respect of an innovation patent unless the patent has been certified.

(2)

After hearing the application, the court may, subject to this section, make the order if satisfied that:

(a)

all the following conditions exist:

(i)

the applicant has tried for a reasonable period, but without success, to obtain from the patentee an authorisation to work the invention on reasonable terms and conditions;

(ii)

the reasonable requirements of the public with respect to the patented invention have not been satisfied;

(iii) the patentee has given no satisfactory reason for failing to exploit the patent; or

(b)

the patentee has contravened, or is contravening, Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act) in connection with the patent.

(3)

An order must direct that the licence:

(a)

is not to give the licensee, or a person authorised by the licensee, the exclusive right to work the patented invention; and

(b)

is to be assignable only in connection with an enterprise or

goodwill in connection with which the licence is used; and may direct that the licence is to be granted on any other terms specified in the order.

Section 133

(3B) If the patented invention cannot be worked by the applicant without his or her infringing another patent:

(a)

the court is to make the order only if the court is further satisfied that the patented invention involves an important technical advance of considerable economic significance on the invention (other invention) to which the other patent relates; and

(b)

the court must further order that the patentee of the other invention:

(i)

must grant to the applicant a licence to work the other invention insofar as is necessary to work the patented invention; and

(ii)

is to be granted, if he or she so requires, a cross-licence on reasonable terms to work the patented invention; and

(c)

the court must direct that the licence granted by the patentee of the other invention may be assigned by the applicant:

(i)

only if he or she assigns the licence granted in respect of the patented invention; and

(ii)

only to the assignee of that licence.

(4)

An order operates, without prejudice to any other method of enforcement, as if it were embodied in a deed granting a licence and executed by the patentee and all other necessary parties.

(5)

The patentee is to be paid in respect of a licence granted to the applicant under an order:

(a)

such amount as is agreed between the patentee and the applicant; or

(b)

if paragraph (a) does not apply—such amount as is determined by the Federal Court to be just and reasonable having regard to the economic value of the licence 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)

The patentee or the Federal Court may revoke the licence if:

(a)

the patentee and the licensee are agreed, or the court on application made by either party finds, that the circumstances that justified the grant of the licence have ceased to exist and are unlikely to recur; and

Section 134

(b) the legitimate interests of the licensee are not likely to be adversely affected by the revocation.

134 Revocation of patent after grant of compulsory licence

(1)

Where a compulsory licence relating to a patent is granted, an interested person may apply to the Federal Court, after the end of the prescribed period, for an order revoking the patent.

(2)

After hearing the application, the court may make the order if satisfied that:

(a)

both:

(i)

the reasonable requirements of the public with respect to the patented invention have not been satisfied; and

(ii)

the patentee has given no satisfactory reason for failing to exploit the patent; or

(b)

the patentee is contravening Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act) in connection with the patent.

135 Reasonable requirements of the public

(1)

For the purposes of sections 133 and 134, the reasonable requirements of the public with respect to a patented invention are to be taken not to have been satisfied if:

(a)

an existing trade or industry in Australia, or the establishment of a new trade or industry in Australia, is unfairly prejudiced, or the demand in Australia for the patented product, or for a product resulting from the patented process, is not reasonably met, because of the patentee’s failure:

(i)

to manufacture the patented product to an adequate extent, and supply it on reasonable terms; or

(ii)

to manufacture, to an adequate extent, a part of the patented product that is necessary for the efficient working of the product, and supply the part on reasonable terms; or

(iii) to carry on the patented process to a reasonable extent; or

(iv) to grant licences on reasonable terms; or Section 136

(b)

a trade or industry in Australia is unfairly prejudiced by the conditions attached by the patentee (whether before or after the commencing day) to the purchase, hire or use of the patented product, the use or working of the patented process; or

(c)

if the patented invention is not being worked in Australia on a commercial scale, but is capable of being worked in Australia.

(2)

If, where paragraph (1)(c) applies, the court is satisfied that the time that has elapsed since the patent was sealed has, because of the nature of the invention or some other cause, been insufficient to enable the invention to be worked in Australia on a commercial scale, the court may adjourn the hearing of the application for the period that the court thinks sufficient for that purpose.

136 Orders to be consistent with international agreements

An order must not be made under section 133 or 134 that is inconsistent with a treaty between the Commonwealth and a foreign country.

136A Dealing with allegation of contravention of application law

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.

137 Revocation on surrender of patent

(1)

A patentee may, at any time, by written notice to the Commissioner, offer to surrender the patent.

(2)

The Commissioner must give notice of an offer in accordance with the regulations.

(3)

After hearing all interested persons who notify the Commissioner in accordance with the regulations of their wish to be heard, the Commissioner may accept the offer and revoke the patent.

Section 138

(4)

Where relevant proceedings in relation to a patent are pending, the Commissioner must not accept an offer to surrender the patent without either the leave of the court or the consent of the parties to the proceedings.

(5)

Where a compulsory licence is in force in relation to a patent, the Commissioner must not accept an offer to surrender the patent.

138 Revocation of patents in other circumstances

(1) Subject to subsection (1A), the Minister or any other person may apply to a prescribed court for an order revoking a patent.

(1A) A person cannot apply for an order in respect of an innovation patent unless the patent has been certified.

(2)

At the hearing of the application, the respondent is entitled to begin and give evidence in support of the patent and, if the applicant gives evidence disputing the validity of the patent, the respondent is entitled to reply.

(3)

After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, but on no other ground:

(a)

that the patentee is not entitled to the patent;

(b)

that the invention is not a patentable invention;

(d)

that the patent was obtained by fraud, false suggestion or misrepresentation;

(e)

that an amendment of the patent request or the complete specification was made or obtained by fraud, false suggestion or misrepresentation;

(f)

that the specification does not comply with subsection 40(2) or (3).

139 Parties to proceedings

(1) The patentee, and any person claiming an interest in the patent as exclusive licensee or otherwise, are parties to any proceedings under section 133, 134 or 138.

Section 140

(2)

In any proceedings under section 133, 134 or 138:

(a)

the applicant must serve a copy of the application on the Commissioner; and

(b)

the Commissioner may appear and be heard in the proceedings.

140 Commissioner to be given copies of orders

An office copy of an order made under this Chapter must be served on the Commissioner by the Registrar or other appropriate officer of the court that made the order.

Section 141

Chapter 13—Withdrawal and lapsing of applications and ceasing of patents

141 Withdrawal of applications [see also Table B]

(1)

A patent application may be withdrawn at any time except during a period prescribed for the purposes of this section.

(2)

A patent application is to be treated as having been withdrawn if, and only if, the applicant lodges a written notice of withdrawal signed by the applicant.

142 Lapsing of applications [see also Table B]

(1)

A provisional application for a patent lapses at the end of the period prescribed for the purpose of section 38 or, if that period is extended, at the end of the period as so extended.

(2)

A complete application for a standard patent lapses if:

(a)

the applicant does not ask for an examination of the patent request and complete specification within the relevant period prescribed for the purposes of subsection 44(1), (2) or (3), as the case requires; or

(c)

the examination of the patent request and complete specification has been deferred under section 46 and the applicant does not ask for an examination within the period prescribed for the purposes of this paragraph; or

(d)

the applicant does not pay a continuation fee for the application within the period prescribed for the purposes of this paragraph; or

(e)

the patent request and complete specification are not accepted within the period prescribed for the purposes of this paragraph.

Section 143

(3) A complete application for a standard patent lapses if the applicant does not comply with a direction of the Commissioner under section 107 within the time allowed by the Commissioner under that section.

143 Ceasing of patents

A standard patent ceases if the patentee:

(a)

does not pay a renewal fee for the patent within the prescribed period; or

(b)

does not file the prescribed documents (if any) within the prescribed period.

143A Ceasing of innovation patents

An innovation patent ceases if:

(a)

the fee for filing the request and accompanying specification relating to an application for an innovation patent is not paid in accordance with the regulations; or

(b)

after an examination of the patent has been requested under paragraph 101A(b), the patentee does not pay the prescribed fee for the examination within the prescribed period; or

(c)

the Commissioner does not make decisions under paragraphs 101E(a) and (aa) within the period prescribed for the purposes of this paragraph; or

(d)

the patentee does not pay a renewal fee for the patent within the prescribed period; or

(e)

the patentee does not comply with a direction of the Commissioner under section 106 within the time allowed by the Commissioner under that section.

143B Payment of fees

To avoid doubt, a reference in this Chapter to the payment of a continuation fee or renewal fee by the applicant or patentee is taken to include a reference to the payment of that fee by a person other than the applicant or patentee.

Section 144

Chapter 14—Contracts

144 Void conditions

(1)

A condition in a contract relating to the sale or lease of, or a licence to exploit, a patented invention is void if the effect of the condition would be:

(a)

to prohibit or restrict the buyer, lessee or licensee from using a product or process (whether patented or not) supplied or owned by a person other than the seller, lessor or licensor, or a nominee of the seller, lessor or licensor; or

(b)

to require the buyer, lessee or licensee to acquire a product not protected by the patent from the seller, lessor or licensor, or a nominee of the seller, lessor or licensor.

(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:

(a)

prohibit the buyer, lessee or licensee from applying for examination of the patent; or

(b)

impose restrictions on the circumstances in which the buyer, lessee or licensee may apply for examination of the patent.

(2)

Subsection (1) does not apply if:

(a)

the seller, lessor or licensor proves that, at the time the contract was made, the buyer, lessee or licensee had the option of buying the product, or obtaining a lease or licence, on reasonable terms without the condition; and

(b)

the contract entitles the buyer, lessee or licensee to be relieved of the liability to comply with the condition on giving the other party 3 months’ notice in writing and paying, in compensation for the relief:

(i)

in the case of a sale—such sum as is fixed by an arbitrator appointed by the Minister; or

(ii)

in the case of a lease or licence—such rent or royalty as is so fixed for the rest of the term of the contract.

Section 145

(3)

A person is not stopped from applying for or obtaining relief in any proceedings under this Act merely because of an admission made by the person about the reasonableness of terms offered to the person as mentioned in paragraph (2)(a).

(4)

It is a defence to proceedings for infringement of a patent that the patented invention is, or was when the proceedings were started, the subject of a contract containing a provision, inserted by the patentee, that is void under this section.

(5)

If the patentee offers the other parties to a contract mentioned in subsection (4) a new contract that does not contain the void condition but that otherwise gives the parties the same rights as the existing contract, then, whether or not the other parties accept the new contract in place of the existing contract, subsection (4) ceases to apply, but the patentee is not entitled to damages or an account of profit for an infringement of the patent committed before the offer of the new contract.

145 Termination of contract after patent ceases to be in force

(1)

A contract relating to the lease of, or a licence to exploit, a patented invention may be terminated by either party, on giving 3 months’ notice in writing to the other party, at any time after the patent, or all the patents, by which the invention was protected at the time the contract was made, have ceased to be in force.

(2)

Subsection (1) applies despite anything to the contrary in that contract or in any other contract.

146 Effect of Chapter

Nothing in this Chapter:

(a)

affects a condition in a contract that prohibits a person from selling products other than those of a particular person; or

(b)

validates a contract that would otherwise be invalid; or

(c)

affects a right to terminate a contract, or to terminate a condition of a contract, being a condition exercisable independently of this section; or

Section 146

(d) affects a condition in a contract for the lease of, or a licence to exploit, a patented product, that reserves to the lessor or licensor the right to supply new parts of the patented product that are required to put or keep it in repair.

Section 147

Chapter 15—Special provisions relating to associated technology

147 Certificate by Director as to associated technology

(1)

Where the Commissioner considers that a specification in respect of an application may contain information of a kind referred to in the definition of associated technology in subsection 4(1) of the Safeguards Act, the Commissioner must give the Director written notice to that effect together with a copy of the patent request and specification.

(2)

On receiving a notice, the Director may, if satisfied that the specification contains information of that kind, issue a certificate to that effect.

(3)

Where the Director is satisfied that:

(a)

the possession by the applicant or the nominated person of the associated technology containing the information was not in accordance with a permit; or

(b)

the communication of the information involved in making the

application was not in accordance with an authority; the Director may include in the certificate:

(c)

if the application is not a relevant international application— a direction that the application should lapse; or

(d)

if the application is a relevant international application—a direction that the application should not be treated as an international application.

(4)

Where the Director issues a certificate, the Director must give a copy of it to the Commissioner who must give a copy to the applicant.

148 Lapsing etc. of applications

(1)

Where:

(a)

the Commissioner receives a copy of a certificate under subsection 147(2) in relation to an application; and

Section 149

(b)

the certificate includes a direction under subsection 147(3); then, upon receipt by the Commissioner of that copy:

(c)

if the application is not a relevant international application— the application lapses; or

(d)

if the application is a relevant international application—the application must cease to be treated as an international application.

(2)

Where an application has lapsed under this section, the Commissioner must publish a notice to that effect in the Official Journal.

149 Revocation of direction

Where under section 148 an application has lapsed, or has ceased to be treated as an international application, because of a direction by the Director under section 147, the applicant may apply in writing to the Director for the revocation of the direction and the Director may revoke the direction.

150 Restoration of lapsed application

(1)

Where an application has lapsed under section 148, the applicant may, in writing, ask the Commissioner to restore it.

(2)

On receiving a request, the Commissioner must restore the application if satisfied that:

(a)

the relevant direction of the Director is no longer in force; and

(b)

there is no other reason not to do so.

(3)

Where the Commissioner restores an application, the Commissioner must publish a notice to that effect in the Official Journal.

(4)

Where an application is restored under this section, such provisions as are prescribed have effect for the protection or compensation of persons who exploited (or took definite steps by contract or otherwise to exploit) the relevant invention after the lapse of the application and before the day on which its restoration was notified in the Official Journal.

Section 151

(5) Proceedings cannot be started under section 57 in respect of anything done during the period from and including the day on which the application lapsed to and including the day on which its restoration was notified in the Official Journal.

151 Reinstatement of application as an international application

(1)

Where a relevant international application has ceased to be treated as an international application under section 148, the applicant may ask the Commissioner in writing to reinstate it.

(2)

On receiving a request, the Commissioner must reinstate the application as an international application if satisfied that:

(a)

the relevant direction of the Director is no longer in force; and

(b)

there is no other reason not to do so.

(3)

Where the Commissioner reinstates an application as an international application, the application must be treated as an international application.

(4)

Where:

(a)

the relevant international application specifies Australia as a designated State; and

(b)

the Commissioner cannot reinstate the application merely because, under the PCT, it is to be considered as having been withdrawn; and

(c)

the applicant files, within the prescribed period, a written request signed by the applicant that the application be treated as an application under this Act for a standard patent; and

(d)

the applicant files any prescribed documents and pays the

prescribed fee; then, except as otherwise prescribed:

(e)

the application must be treated as requested; and

(f)

the description, claims and drawings in the application must be treated as a complete specification filed in respect of the application; and

(g)

the application and complete specification must be treated as having been filed on the date on which the relevant international application was filed.

Section 152

152 Notice of prohibitions or restrictions on publication

(1)

Where the Director issues a certificate under section 147 in relation to an application, the Director may give written notice to the Commissioner of any prohibitions or restrictions on the publication or communication of the information in the specification, or in a relevant abstract, that the Director considers appropriate.

(2)

On receiving a notice, the Commissioner must take such steps as are necessary or expedient to give effect to it.

(3)

Without limiting the generality of subsection (2), the Commissioner may, by written order, prohibit or restrict the publication or communication of information about the subject-matter of the application, whether generally or in relation to a particular person or class of persons.

(4)

A person must not, except in accordance with the written consent of the Commissioner, publish or communicate information in contravention of an order.

Penalty: Imprisonment for 2 years.

153 Effect of order

(1)

Where an order is in force in relation to an application for a standard patent, the application may proceed up to the acceptance of the patent request and complete specification, but the complete specification must not be made open to public inspection, the acceptance must not be notified in the Official Journal and a patent must not be granted on the application.

(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.

(3)

Where an order in relation to an application for a standard patent has been revoked after the acceptance of the patent request and complete specification, the acceptance must be notified in the Official Journal within the prescribed period.

Section 153

(4) Nothing in this Act prevents disclosing information about an invention to the Director for the purpose of obtaining advice on whether an order should be made, amended or revoked.

Section 154

Chapter 16—Jurisdiction and powers of courts

154 Jurisdiction of Federal Court

(1)

The Federal Court has jurisdiction with respect to matters arising under this Act.

(2)

The jurisdiction of the Federal Court to hear and determine appeals against decisions or directions of the Commissioner is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under section 75 of the Constitution.

(3)

A prosecution for an offence against this Act must not be started in the Federal Court.

155 Jurisdiction of other prescribed courts

(1)

Each prescribed court (other than the Federal Court) has jurisdiction with respect to matters arising under this Act in respect of which proceedings may, under this Act, be started in a prescribed court.

(2)

The jurisdiction conferred by subsection (1) on the Supreme Court of a Territory is conferred:

(a)

in the case of proceedings for the infringement of a patent or proceedings under subsection 125(1) or section 128, or a matter arising under this Act that may be heard and determined in the course of such proceedings—to the extent that the Constitution permits; and

(b)

in any other case—only in relation to proceedings instituted by a natural person who is resident in the Territory, or a corporation that has its principal place of business in the Territory, at the time the proceedings are started.

156 Exercise of jurisdiction

The jurisdiction of a prescribed court under section 154 or 155 is to be exercised by a single judge.

Section 157

157 Transfer of proceedings

(1)

A prescribed court in which proceedings under this Act have been started may, on the application of a party made at any stage in the proceedings, by order, transfer the proceedings to another prescribed court having jurisdiction to hear and determine the proceedings.

(2)

Where a court transfers proceedings to another court:

(a)

all documents of record relevant to those proceedings filed in the transferring court shall be sent to the other court by the Registrar or other appropriate officer of the transferring court; and

(b)

the other court shall proceed as if the proceedings had been started in the other court and as if the same steps in the proceedings had been taken there as had been taken in the transferring court.

158 Appeals

(1)

An appeal lies to the Federal Court against a judgment or order of:

(a)

another prescribed court exercising jurisdiction under this Act; or

(b)

any other court in proceedings under subsection 120(1) or section 128.

(2)

Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a judgment or order of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner.

(3)

With the special leave of the High Court, an appeal lies to the High Court against a judgment or order referred to in subsection (1).

(4)

Except as otherwise provided by this section, an appeal does not lie against a judgment or order referred to in subsection (1).

159 Commissioner may appear in appeals

The Commissioner may appear and be heard at the hearing of an appeal to the Federal Court against a decision or direction of the

Section 160

Commissioner even if the Commissioner is not a party to the appeal.

160 Powers of Federal Court

On hearing an appeal against a decision or direction of the Commissioner, the Federal Court may do any one or more of the following:

(a)

admit further evidence orally, or on affidavit or otherwise;

(b)

permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Commissioner;

(c)

order an issue of fact to be tried as it directs;

(d)

affirm, reverse or vary the Commissioner’s decision or direction;

(e)

give any judgment, or make any order, that, in all the circumstances, it thinks fit;

(f)

order a party to pay costs to another party.

Section 161

Chapter 17—The Crown

Part 1—Introductory

161 Nominated persons and patentees

A reference in this Chapter to a nominated person or to a patentee includes a reference to the successor in title of the nominated person or patentee or an exclusive licensee of the nominated person or patentee.

162 Commonwealth and State authorities

A reference in this Chapter to the Commonwealth includes a reference to an authority of the Commonwealth and a reference to a State includes a reference to an authority of a State.

Section 163

Part 2—Exploitation by the Crown

163 Exploitation of inventions by Crown

(1)

Where, at any time after a patent application has been made, the invention concerned is exploited by the Commonwealth or a State (or by a person authorised in writing by the Commonwealth or a State) for the services of the Commonwealth or the State, the exploitation is not an infringement:

(a)

if the application is pending—of the nominated person’s rights in the invention; or

(b)

if a patent has been granted for the invention—of the patent.

(2)

A person may be authorised for the purposes of subsection (1):

(a)

before or after any act for which the authorisation is given has been done; and

(b)

before or after a patent has been granted for the invention; and

(c)

even if the person is directly or indirectly authorised by the nominated person or patentee to exploit the invention.

(3)

Subject to section 168, an invention is taken for the purposes of this Part to be exploited for services of the Commonwealth or of a State if the exploitation of the invention is necessary for the proper provision of those services within Australia.

164 Nominated person or patentee to be informed of exploitation

As soon as practicable after an invention has been exploited under subsection 163(1), the relevant authority must inform the applicant and the nominated person, or the patentee, of the exploitation and give him or her any information about the exploitation that he or she from time to time reasonably requires, unless it appears to the relevant authority that it would be contrary to the public interest to do so.

Section 165

165 Remuneration and terms for exploitation

(2)

The terms for the exploitation of the invention (including terms concerning the remuneration payable to the nominated person or the patentee) are such terms as are agreed, or determined by a method agreed, between the relevant authority and the nominated person or the patentee or, in the absence of agreement, as are determined by a prescribed court on the application of either party.

(3)

For the purposes of subsection (2), the terms, or the method, may be agreed before, during or after the exploitation.

(4)

When fixing the terms, the court may take into account any compensation that a person interested in the invention or the patent has received, directly or indirectly, for the invention from the relevant authority.

165A Exploitation of invention to cease under court order

(1)

A prescribed court may, on the application of the nominated person or the patentee, declare that the exploitation of the invention by the Commonwealth or the State is not, or is no longer, necessary for the proper provision of services of the Commonwealth or of the State if the court is satisfied that, in all the circumstances of the case, it is fair and reasonable to make the declaration.

(2)

The court may further order that the Commonwealth or the State is to cease to exploit the invention:

(a)

on and from the day specified in the order; and

(b)

subject to any conditions specified in the order. In making the order, the court is to ensure that the legitimate

interests of the Commonwealth or of the State are not adversely affected by the order.

166 Previous agreements inoperative

An agreement or licence (whether made or given before or after the commencement of this Act) fixing the terms on which a person other than the Commonwealth or a State may exploit an invention is inoperative with respect to the exploitation, after the commencement of this Act, of the invention under subsection 163(1), unless the agreement or licence has been approved: Section 167

(a)

if the relevant authority is the Commonwealth—by the Minister; or

(b)

if the relevant authority is a State—by the Attorney-General of the State.

167 Sale of products

(1)

The right to exploit an invention under subsection 163(1) includes the right to sell products made in exercise of that right.

(2)

Where under subsection 163(1) the sale of products is not an infringement of:

(a)

a patent; or

(b)

a nominated person’s rights in the products; the buyer, and any person claiming through the buyer, is entitled to

deal with the products as if the relevant authority were the patentee or the nominated person.

168 Supply of products by Commonwealth to foreign countries

Where the Commonwealth has made an agreement with a foreign country to supply to that country products required for the defence of the country:

(a)

the use of a product or process by the Commonwealth, or by a person authorised in writing by the Commonwealth, for the supply of that product is to be taken, for the purposes of this Chapter, to be use of the product or process by the Commonwealth for the services of the Commonwealth; and

(b)

the Commonwealth or the authorised person may sell those products to the country under the agreement; and

(c)

the Commonwealth or the authorised person may sell to any person any of the products that are not required for the purpose for which they were made.

169 Declarations that inventions have been exploited

(1) Subject to subsection (4), a patentee who considers that the patented invention has been exploited under subsection 163(1) may apply to a prescribed court for a declaration to that effect.

Section 170

(2)

In proceedings under subsection (1):

(a)

the alleged relevant authority is the defendant; and

(b)

the alleged relevant authority may apply by way of counter-claim in the proceedings, for the revocation of the patent.

(3)

The provisions of this Act relating to the revocation of patents apply, with the necessary changes, to a counter-claim.

(4)

An application under subsection (1) in respect of an innovation patent cannot be made unless the patent has been certified.

170 Sale of forfeited articles

Nothing in this Chapter affects the right of the Commonwealth or a State, or of a person deriving title directly or indirectly from the Commonwealth or a State, to sell or use an article forfeited under a law of the Commonwealth or the State.

Section 171

Part 3—Acquisitions by and assignments to the Crown

171 Acquisition of inventions or patents by Commonwealth

(1)

The Governor-General may direct that a patent, or an invention that is the subject of a patent application, be acquired by the Commonwealth.

(2)

When a direction is given, all rights in respect of the patent or the invention are, by force of this subsection, transferred to and vested in the Commonwealth.

(3)

Notice of the acquisition must be:

(a)

given to the applicant and the nominated person, or the patentee; and

(b)

published in the Official Journal and the Gazette unless, in the case of the acquisition of an invention that is the subject of an application for a patent, a prohibition order, or an order under section 152, is in force in respect of the application.

(4)

The Commonwealth must pay a compensable person such compensation as is agreed between the Commonwealth and the person or, in the absence of agreement, as is determined by a prescribed court on the application of either of them.

172 Assignment of invention to Commonwealth

(1)

An inventor, or an inventor’s successor in title, may assign the invention, and any patent granted or to be granted for the invention, to the Commonwealth.

(2)

The assignment and all covenants and agreements in the assignment are valid and effectual, even if valuable consideration has not been given for the assignment, and may be enforced by proceedings in the name of the Minister.

Section 173

Part 4—Prohibition orders

173 Prohibition of publication of information about inventions

(1)

Subject to any directions of the Minister, the Commissioner may, if it appears to the Commissioner to be necessary or expedient to do so in the interests of the defence of the Commonwealth, by written order:

(a)

prohibit or restrict the publication of information about the subject-matter of an application for a patent (including an international application); or

(b)

prohibit or restrict access to a micro-organism deposited for the purposes of section 41 with a prescribed depositary institution situated in Australia.

(2)

A person must not contravene a prohibition order except in accordance with the written consent of the Commissioner.

Penalty: Imprisonment for 2 years.

(3)

A reference in subsection (1) to giving access to a micro-organism includes a reference to giving a sample of the micro-organism.

174 Effect of prohibition orders

(1)

While a prohibition order is in force in relation to an application for a standard patent, the application may proceed up to the acceptance of the patent request and complete specification, but the complete specification must not be made open to public inspection, the acceptance must not be notified in the Official Journal and a patent must not be granted on the application.

(2)

Where a prohibition order in relation to an application for a standard patent is revoked after the acceptance of the patent request and complete specification, the acceptance must be notified in the Official Journal within the prescribed period.

(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.

Section 175

175 Disclosure of information to Commonwealth authority

Nothing in this Act prevents disclosing information about an invention, or giving access to, or a sample of, a micro-organism to a department or authority of the Commonwealth for the purpose of obtaining advice on whether a prohibition order should be made, amended or revoked.

176 International applications treated as applications under this Act

Where:

(a)

an international application specifies Australia as a designated State; and

(b)

as a result of a prohibition order or of anything done in reliance on section 175, the application is, under the PCT, to be considered as having been withdrawn; and

(c)

the applicant files, within the prescribed period, a written request signed by the applicant that the application be treated as an application under this Act for a standard patent; and

(d)

the applicant files any prescribed documents and pays the

prescribed fee; then, except as otherwise prescribed:

(e)

the application must be treated as requested; and

(f)

the description, claims and drawings in the application must be treated as a complete specification filed in respect of the application; and

(g)

the application and specification must be treated as having been filed on the date on which the international application was filed.

Section 177

Chapter 18—Miscellaneous offences

177 False representations about the Patent Office

(1)

A person must not use, in connection with his or her business, words that would reasonably lead to the belief that his or her office is, or is officially connected with, the Patent Office.

Penalty: $3,000.

(2)

Without limiting subsection (1), a person who:

(a)

places, or allows to be placed, on the building in which his or her office is situated; or

(b)

uses when advertising his or her office or business; or

(c)

places on a document, as a description of his or her office or

business; the words “Patent Office” or “Office for obtaining patents”, or words of similar import, whether alone or together with other words, is guilty of an offence against that subsection.

178 False representations about patents or patented articles

(1) A person must not falsely represent that he or she, or another person, is the patentee of an invention.

Penalty: $6,000.

(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.

(2) A person must not falsely represent that an article sold by him or her is patented in Australia, or is the subject of an application for a patent in Australia.

Penalty: $6,000.

Section 179

(3)

Without limiting subsection (2):

(a)

a person is to be taken to represent that an article is patented in Australia if the word “patent” or “patented”, the words “provisional patent”, or any other word or words implying that a patent for the article has been obtained in Australia, are stamped, engraved or impressed on, or otherwise applied to, the article; and

(b)

a person is to be taken to represent that an article is the subject of an application for a patent in Australia if the words “patent applied for” or “patent pending”, or any other word or words implying that an application for a patent for the article has been made in Australia, are stamped, engraved or impressed on, or otherwise applied to, the article.

(4)

A prosecution must not be started for an offence against subsection (1) or (2) without the consent of the Minister, or a person authorised by the Minister.

179 Failure to comply with summons

(1)

A person who:

(a)

is summoned by the Commissioner to appear as a witness; and

(b)

has been offered payment of reasonable expenses; must not fail to comply with the summons.

Penalty: $1,000.

(2) Subsection (1) does not apply if the person has a lawful excuse.

Note: A defendant bears an evidential burden in relation to the matter in subsection (2), see subsection 13.3(3) of the Criminal Code.

180 Refusal to give evidence

(1)

A person who appears before the Commissioner must not refuse:

(a)

to be sworn or to make an affirmation; or

(b)

to answer questions that the person is lawfully required to answer.

Penalty: $3,000.

Section 181

(2) Subsection (1) does not apply if the person has a lawful excuse.

Note: A defendant bears an evidential burden in relation to the matter in subsection (2), see subsection 13.3(3) of the Criminal Code.

181 Failure to produce documents or articles

(1)

A person who:

(a)

is required by the Commissioner to produce a document or article; and

(b)

has been offered payment of reasonable expenses; must not fail to produce it.

Penalty: $3,000.

(2) Subsection (1) does not apply if the person has a lawful excuse.

Note: A defendant bears an evidential burden in relation to the matter in subsection (2), see subsection 13.3(3) of the Criminal Code.

182 Officers not to traffic in inventions

(1)

The Commissioner, a Deputy Commissioner or an employee must not buy, sell, acquire or traffic in:

(a)

an invention or patent, whether granted in Australia or anywhere else; or

(b)

a right to, or licence under, a patent, whether granted in Australia or anywhere else.

Penalty: $6,000.

(2)

A purchase, sale, acquisition, assignment or transfer made or entered into in contravention of this section is void.

(3)

This section does not apply to the inventor or to an acquisition by bequest or devolution by law.

183 Unauthorised disclosure of information by employees etc.

The Commissioner, each Deputy Commissioner and each employee must not disclose information about a matter that has been or is being dealt with under this Act or the 1952 Act unless required or authorised to do so by this Act, a written direction of the Commissioner or an order of a court.

Section 184

184 Other unauthorised disclosures of information

A person to whom section 71 of the Safeguards Act applies must not disclose information about a matter that has been or is being dealt with under this Act or the 1952 Act unless required or authorised to do so by the Safeguards Act, this Act, a written direction of the Director or an order of a court.

Penalty: Imprisonment for 2 years.

185 Commissioner etc. not to prepare documents or search records

The Commissioner, a Deputy Commissioner or an employee must not:

(a)

prepare, or help to prepare:

(i)

a specification; or

(ii)

any other document relating to a specification (other

than a document which is in an approved form); unless the Commissioner, Deputy Commissioner or the employee is the inventor in respect of the specification; or

(b) search the records of the Patent Office otherwise than in his or her official capacity.

Penalty: 10 penalty units.

Section 186

Chapter 19—The Register and official documents

186 Register of Patents

(1)

A Register of Patents is to be kept at the Patent Office. The Register is to contain 2 parts as follows:

(a)

a part dealing with standard patents; and

(b)

a part dealing with innovation patents.

(2)

The Register may be kept wholly or partly by use of a computer.

(3)

If the Register is kept wholly or partly by use of a computer:

(a)

references in this Act to an entry in the Register are to be read as including references to a record of particulars kept by use of the computer and comprising the Register or part of the Register; and

(b)

references in this Act to particulars being registered, or entered in the Register, are to be read as including references to the keeping of a record of those particulars as part of the Register by use of the computer; and

(c)

references in this Act to the rectification of the Register are to be read as including references to the rectification of the record of particulars kept by use of the computer and comprising the Register or part of the Register.

187 Registration of particulars of patents etc.

(1)

Particulars of standards patents in force, and other prescribed particulars relating to standard patents (if any), must be registered in that part of the Register dealing with standard patents.

(2)

Particulars of innovation patents in force, and other prescribed particulars relating to innovation patents (if any), must be registered in that part of the Register dealing with innovation patents.

Section 188

188 Trusts not registrable

Notice of any kind of trust relating to a patent or licence is not receivable by the Commissioner and must not be registered.

189 Power of patentee to deal with patent

(1)

A patentee may, subject only to any rights appearing in the Register to be vested in another person, deal with the patent as the absolute owner of it and give good discharges for any consideration for any such dealing.

(2)

This section does not protect a person who deals with a patentee otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the patentee.

(3)

Equities in relation to a patent may be enforced against the patentee except to the prejudice of a purchaser in good faith for value.

190 Inspection of Register

(1)

The Register must be available for inspection at the Patent Office by any person during the hours that it is open for business.

(2)

If a record of particulars is kept by use of a computer, subsection (1) is to be taken to be complied with, to the extent that the Register consists of those particulars, by giving members of the public access to a computer terminal which they can use to inspect the particulars, either on a screen or in the form of a computer printout.

191 False entries in Register

A person must not:

(a)

make a false entry in the Register; or

(b)

cause a false entry to be made in the Register; or

(c)

tender in evidence a document that falsely purports to be a copy of or extract from an entry in the Register.

Penalty: Imprisonment for 2 years.

Section 192

192 Orders for rectification of Register

(1)

A person aggrieved by:

(a)

the omission of an entry from the Register; or

(b)

an entry made in the Register without sufficient cause; or

(c)

an entry wrongly existing in the Register; or

(d)

an error or defect in an entry in the Register; may apply to a prescribed court for an order to rectify the Register.

(2)

On hearing an application, the court may:

(a)

decide any question which it is necessary or expedient to decide in connection with the rectification of the Register; and

(b)

make any order it thinks fit for the rectification of the Register.

(3)

The Commissioner:

(a)

must be given notice of an application; and

(b)

may appear and be heard in the proceedings; and

(c)

must appear if directed to do so by the court.

(4)

An office copy of an order must be served on the Commissioner by the Registrar or other appropriate officer of the court.

(5)

On receiving an office copy of an order, the Commissioner must rectify the Register accordingly.

193 Inspection of documents

All documents filed in connection with the registration of prescribed particulars under section 187 must be available for inspection at the Patent Office by any person during the hours when it is open for business.

194 Information obtainable from Commissioner

The Commissioner may give any person information about:

(a)

a patent; or

(b)

an application for a patent that is open to public inspection; or

(c)

any prescribed document or matter.

Section 195

195 Evidence—the Register

(1)

The Register is prima facie evidence of any particulars registered in it.

(2)

If the Register is wholly or partly kept by use of a computer, a document signed by the Commissioner reproducing in writing all or any of the particulars comprising the Register, or that part of it, is admissible in any proceedings as prima facie evidence of those particulars.

196 Evidence—unregistered particulars

A document in respect of which particulars have not been entered in the Register is not admissible in any proceedings in proof of the title to a patent or to an interest in a patent unless:

(a)

the court or tribunal before which the proceedings are brought otherwise directs; or

(b)

the proceedings are:

(i)

for an order under section 192; or

(ii)

to enforce equities in relation to a patent or licence.

197 Evidence—certificate and copies of documents

(1)

A signed certificate to the effect that:

(a)

anything required or permitted by this Act or the 1952 Act to be done or not to be done had or had not been done on a date specified in the certificate; or

(b)

a document in the Patent Office or its library was available

for public inspection on a date specified in the certificate; is prima facie evidence of the matters in the certificate.

(2)

A signed copy of or signed extract from the Register is admissible in any proceedings as if it were the original.

(3)

A signed copy of or signed extract from a document in the Patent Office or its library is admissible in any proceedings as if it were the original.

(4)

In this section:

signed means signed by the Commissioner.

Section 198

Chapter 20—Patent Attorneys

Part 1—Registration, privileges and professional conduct

198 Registration of patent attorneys

(1) A Register of Patent Attorneys is to be kept by the Designated Manager.

Note: Designated Manager is defined by section 200A.

(2)

The Register of Patent Attorneys may be kept wholly or partly by use of a computer.

(3)

If the Register of Patent Attorneys is kept wholly or partly by use of a computer, references in this Act to an entry in the Register of Patent Attorneys are to be read as including references to a record of particulars kept by use of the computer and comprising the Register of Patent Attorneys or part of the Register of Patent Attorneys.

(4)

The Designated Manager must register as a patent attorney a person who:

(a)

is ordinarily resident in Australia; and

(b)

holds such qualifications as are specified in, or ascertained in accordance with, the regulations; and

(c)

has been employed as prescribed for not less than the prescribed period; and

(d)

is of good fame, integrity and character; and

(e)

has not been convicted of a prescribed offence during the previous 5 years; and

(f)

is not under sentence of imprisonment for a prescribed

offence. The registration is to consist of entering the person’s name in the Register of Patent Attorneys.

(5) A qualification specified in, or ascertained in accordance with, regulations made for the purposes of paragraph (4)(b) may consist Section 199

of passing an examination conducted by the Professional Standards Board. This subsection does not limit paragraph (4)(b).

(6)

Paragraphs (4)(e) and (f) do not limit paragraph (4)(d).

(7)

For the purposes of this section, a person is taken to be ordinarily resident in Australia if:

(a)

the person has his or her home in Australia; or

(b)

Australia is the country of his or her permanent abode even

though he or she is temporarily absent from Australia; but the person is taken not to be ordinarily resident in Australia if he or she resides in Australia for a special or temporary purpose only.

(8) A reference in this section to conviction of an offence includes a reference to the making of an order under section 19B of the Crimes Act 1914, or a corresponding provision of a law of a State or a Territory, in relation to the offence.

199 Deregistration

The name of a person registered as a patent attorney may be removed from the Register of Patent Attorneys in the prescribed manner and on the prescribed grounds.

200 Privileges

(1)

A registered patent attorney:

(a)

is entitled to prepare all documents, transact all business and conduct all proceedings for the purposes of this Act; and

(b)

has such other rights and privileges as are prescribed.

(2)

A communication between a registered patent attorney and the attorney’s client in intellectual property matters,, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his or her client.

(3)

Nothing in this section authorises a registered patent attorney to prepare a document to be issued from or filed in a court or to transact business, or conduct proceedings, in a court.

Section 200A

(4) In this section:

intellectual property matters means:

(a)

matters relating to patents; or

(b)

matters relating to trade marks; or

(c)

matters relating to designs; or

(d)

any related matters.

200A Designated Manager

For the purposes of this Act, a person is the Designated Manager if the person occupies, or is acting in, a position that:

(a)

is usually occupied by an SES employee; and

(b)

has been declared by the Secretary to the Department, in writing, to be the position of Designated Manager.

Section 201

Part 2—Offences

201 Offences: unregistered persons etc.

(1)

A person must not carry on business, practise or act as a patent attorney unless the person is a registered patent attorney or a legal practitioner.

Penalty: $3,000.

(2)

The members of a partnership must not carry on business, practise or act as patent attorneys unless at least one member is a registered patent attorney or a legal practitioner.

Penalty: $3,000.

(3)

A person must not describe himself or herself, or hold himself or herself out, or permit himself or herself to be described or held out, as a patent attorney, or agent for obtaining patents unless the person is a registered patent attorney.

Penalty: $3,000.

(4)

The members of a partnership must not describe the partnership, or hold the partnership out, or permit the partnership to be described or held out, as patent attorneys, or agents for obtaining patents, unless at least one member is a registered patent attorney.

Penalty: 30 penalty units.

(5)

A company must not carry on business, practise, act, describe itself or hold itself out, or permit itself to be described or held out, as a patent attorney or agent for obtaining patents.

Penalty: $15,000.

(6)

It is not an offence against subsection (1), (2) or (5) if the legal representative of a deceased patent attorney:

(a)

carries on the patent attorney’s business for not more than 3 years after the patent attorney’s death or for any further period allowed by a prescribed court; and

Section 202

(b)

is a registered patent attorney, or employs a registered patent attorney to manage the business on his or her behalf.

(7)

For the purposes of this section, a person or company is taken to carry on business, practise or act as a patent attorney if, and only if, the person or company does, or undertakes to do, on behalf of someone else, any of the following in Australia for gain:

(a)

applying for or obtaining patents in Australia or anywhere else;

(b)

preparing specifications or other documents for the purposes of this Act or the patent law of another country;

(c)

giving advice (other than advice of a scientific or technical nature) about the validity, or infringement, of patents.

(8)

A person does not commit an offence against subsection (1) in respect of anything done, or undertaken to be done, by the person in the capacity of employee for:

(a)

in any case—the person’s employer; or

(b)

if the person’s employer is a member of a related company group—another member of the group.

(9)

A company that is a member of a related company group does not commit an offence against subsection (5) in respect of anything done, or undertaken to be done, by the company for another member of the group.

(10)

In this section:

related company group means a group of 2 or more companies, where each member of the group is related to each other member of the group.

(11)

For the purposes of this section, the question of whether a company is related to another company is to be determined in the same manner as that question is determined under the Corporations Act 2001.

202 Documents prepared by legal practitioners

A legal practitioner must not prepare a specification, or a document relating to an amendment of a specification, unless:

(a)

the practitioner is acting under the instructions of a registered patent attorney; or

Section 202A

(b)

the amendment has been directed by an order under section 105.

Penalty: $3,000.

202A Documents prepared by a member of a partnership

A person who is:

(a)

a member of a partnership; and

(b)

not a registered patent attorney;

must not prepare a specification, or a document relating to an amendment of a specification, unless:

(c)

the person is acting under the instructions or supervision of a registered patent attorney; or

(d)

the amendment has been directed by an order under section 105.

Penalty: 30 penalty units.

203 Attendance at patent attorney’s office

A registered patent attorney must not practise, act, or hold himself or herself out as practising or acting, as a patent attorney, at an office or place of business where specifications or other documents are prepared for the purposes of this Act, unless he or she, or another registered patent attorney, is in regular attendance at, and in continuous charge of, that office or place.

Penalty: $3,000.

204 Time for starting prosecutions

Despite section 15B of the Crimes Act 1914, a prosecution for an offence against subsection 201(1), (2), (3), (4) or (5), or section 202, 202A or 203, may be started at any time within 5 years after the offence was committed.

Section 205

Chapter 21—Administration

205 Patent Office and sub-offices

(1)

For the purposes of this Act, there is to be an office called the Patent Office.

(2)

There is to be a sub-office of the Patent Office in each State.

206 Patent Office seal

There is to be a seal of the Patent Office and impressions of the seal must be judicially noticed.

207 Commissioner of Patents

(1)

There is to be a Commissioner of Patents.

(2)

The Commissioner has such powers and functions as are conferred on him or her under this Act or any other Act.

208 Deputy Commissioner of Patents

(1)

There is to be at least one Deputy Commissioner of Patents.

(2)

Subject to any direction by the Commissioner, a Deputy Commissioner has all the powers and functions of the Commissioner under this Act or any other Act, except the Commissioner’s powers of delegation under section 209.

(3)

A power or function of the Commissioner under this Act or any other Act, when exercised by a Deputy Commissioner, is to be taken, for the purposes of this Act or any other Act, to have been exercised by the Commissioner.

(4)

The exercise of a power or function of the Commissioner under this Act or any other Act by a Deputy Commissioner does not prevent the exercise of the power or function by the Commissioner.

Section 209

(5)

Where, under this Act or any other Act, the exercise of a power or function by the Commissioner, or the operation of a provision of this Act or any other Act, is dependent on the opinion, belief or state of mind of the Commissioner in relation to a matter, that power or function may be exercised by a Deputy Commissioner, and that provision may operate, as the case may be, on the opinion, belief or state of mind of the Deputy Commissioner in relation to that matter.

209 Delegation of Commissioner’s powers and functions

(1)

The Commissioner may, by instrument, signed by him or her, delegate all or any of the Commissioner’s powers or functions under this Act or any other Act to a prescribed employee, or a prescribed class of employees.

(2)

A delegate must, if so required by the instrument of delegation, exercise or perform a delegated power or function under the direction or supervision of the Commissioner or an employee specified in the instrument.

210 Commissioner’s powers

The Commissioner may, for the purposes of this Act:

(a)

summon witnesses; and

(b)

receive written or oral evidence on oath or affirmation; and

(c)

require the production of documents or articles; and

(d)

award costs against a party to proceedings before the Commissioner.

211 Recovery of costs awarded by Commissioner

Costs awarded by the Commissioner against a party are recoverable as a debt.

Section 212

Chapter 22—Miscellaneous

212 Copies of examination reports to be communicated

A copy of each report relating to an examination or a re-examination under this Act must, subject to Chapters 15 and 17, be given to the applicant or patentee, as the case requires.

213 Making and signing applications etc.

An application, notice or request required or permitted under this Act to be made or signed by a person may be made or signed, on behalf of that person, by a registered patent attorney.

214 Filing of documents

A document may be filed with the Patent Office by delivering the document to a sub-office of the Patent Office either personally or by post or by any other prescribed means.

215 Death of applicant or nominated person

(1)

If an applicant dies before a patent is granted on the application, his or her legal representative may proceed with the application.

(2)

If a nominated person dies before a patent is granted on the application, the patent may be granted to his or her legal representative.

(3)

Where, at any time after a patent is granted, the Commissioner is satisfied that the patentee had died (or, in the case of a body corporate, had ceased to exist) before the patent was granted, the Commissioner may amend the patent by substituting for the name of the patentee the name of the person to whom the patent should have been granted.

(4)

An amendment by the Commissioner has effect, and is to be taken always to have had effect, accordingly.

Section 216

216 Exercise of discretionary power by Commissioner

(1)

The Commissioner must not exercise a discretionary power under this Act adversely to any person applying for the exercise of that power without first giving that person a reasonable opportunity to be heard.

(2)

Subsection (1) does not apply in relation to the Commissioner’s power to direct an applicant to request an examination.

217 Assessors

A prescribed court may, if it thinks fit, call in the aid of an assessor to assist it in the hearing and trial or determination of any proceedings under this Act.

218 Costs where patent invalid in part

In any proceedings in which the validity of a patent is disputed, the court may, if it is satisfied that some of the claims in the complete specification which are alleged to be invalid are not invalid but that other claims are invalid, apportion the costs between the parties to the proceedings as it thinks just.

219 Security for costs

If a person who neither resides nor carries on business in Australia:

(a)

gives notice of opposition under this Act; or

(b)

appeals to the Federal Court; the Commissioner or the Federal Court, as the case may be, may require the person to give security for the costs of the proceeding or appeal and, where such security is not given to the satisfaction

of the Commissioner or the Federal Court, as the case may be, may dismiss the proceeding or appeal.

220 Costs of attendance of patent attorney

Where, at the hearing of proceedings under this Act, a registered patent attorney attends in court for the purpose of assisting a party in the conduct of the hearing and an order is made for payment of the costs of that party, those costs may include an allowance for that attendance.

Section 221

221 Service of documents

Where this Act provides for a document to be served on, or given or sent to, a person and the person has given the Commissioner an address in Australia for service of documents, the document may be served on, or given or sent to, the person by post to that address.

222 Publication of Official Journal etc.

(1)

The Commissioner shall issue periodically an official journal containing such matters as are prescribed and such other matters (if any) as the Commissioner thinks fit.

(2)

The Commissioner must make arrangements for selling copies of the Official Journal, and of complete specifications which are open to public inspection.

(3)

The Commissioner may prepare, publish and sell such documents relating to inventions and patents as the Commissioner thinks fit.

222A Doing act when Patent Office reopens after end of period otherwise provided for doing act

(1)

If the last day of a period provided by this Act (except this section) for doing an act is a day when the Patent Office, or a sub-office of the Patent Office, is not open for business, the act may be done in prescribed circumstances on the next day when the office or sub-office is open for business.

(2)

For the purposes of this section, the Patent Office, or a sub-office of the Patent Office, is taken not to be open for business on a day:

(a)

declared by regulations to be a day on which the office or sub-office is not open for business; or

(b)

declared, by a prescribed person in writing published in the prescribed way, to be a day on which the office or sub-office is not open for business.

Declarations

(3)

A declaration mentioned in paragraph (2)(a) or (b) may identify the day by reference to its being declared a public holiday by or under a law of a State or Territory. This does not limit the way the declaration may identify the day.

Section 223

(4)

A declaration mentioned in paragraph (2)(b):

(a)

may be made before, on or after the day; and

(b)

is not a legislative instrument.

Relationship with other law

(5)

This section has effect despite the rest of this Act.

(6)

Subsection 36(2) of the Acts Interpretation Act 1901 does not apply in relation to the act mentioned in subsection (1) of this section.

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.

223 Extensions of time [see also Table B]

(1)

The Commissioner must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:

(a)

the Commissioner or a Deputy Commissioner; or

(b)

an employee; or

(c)

a person providing, or proposing to provide, services for the benefit of the Patent Office.

(2)

Where, because of:

(a)

an error or omission by the person concerned or by his or her agent or attorney; or

(b)

circumstances beyond the control of the person concerned; a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on

application made by the person concerned in accordance with the regulations, extend the time for doing the act.

(2A) If:

(a) a relevant act that is required to be done within a certain time is not done within that time; and Section 223

(b) the Commissioner is satisfied that the person concerned took due care, as required in the circumstances, to ensure the doing of the act within that time;

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.

(3) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

(3A) Despite subsection (3), the time allowed for doing a relevant act may be extended under subsection (2A) only after that time has expired.

(4)

The Commissioner must advertise in the Official Journal:

(a)

an application made for an extension of time for more than 3 months; or

(b)

an application made for an extension of time for doing a prescribed relevant act in prescribed circumstances.

(6)

Subject to subsection (6A), a person may, as prescribed, oppose the granting under subsection (2) or (2A) of the application.

(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):

(a)

the Commissioner need not advertise the application in accordance with subsection (4); and

(b)

the application cannot be opposed, despite subsection (6); and

(c)

the Commissioner must refuse to grant the application.

(7)

Where:

(a)

a patent application lapses, or a patent ceases, because of a failure to do one or more relevant acts within the time allowed; and

(b)

the time for doing that act or those acts is extended; the application or patent must be treated as having been restored.

Section 224

(8)

Where:

(a)

a provisional patent application lapses under subsection 142(1) at the end of the period prescribed for the purposes of section 38; and

(b)

that period is extended; the application must be treated as if it had not lapsed.

(9)

Where the Commissioner grants:

(a)

an extension of more than 3 months for doing a relevant act; or

(b)

an extension of time for doing a prescribed relevant act in

prescribed circumstances; the prescribed provisions have effect for the protection or compensation of persons who, before the day on which the application for extension of time is advertised under subsection (4), exploited (or took definite steps by way of contract or otherwise to exploit) the invention concerned because of the failure to do the relevant act within the time allowed, the lapsing of the patent application or the ceasing of the patent, as the case may be.

(10)

Infringement proceedings cannot be brought in respect of an infringement committed:

(a)

between the day on which the patent application lapses and the day on which it is restored; or

(b)

between the day on which the patent ceases and the day on which it is restored.

(11)

In this section:

relevant act means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.

224 Review of decisions

(1)

Application may be made to the Administrative Appeals Tribunal for review of:

(a)

a decision of the Commissioner under section 10, 17, 32, 33, 52 or 66, subsection 74(3) or 103(2), section 113, subsection

Section 225

137(3), paragraph 142(2)(b), subsection 150(2), 151(2),

152(2) or 152(3), or section 173, 215 or 223; or

(b)

a decision of the Designated Manager under section 198 not to register a person as a patent attorney; or

(c)

a decision of the Director under subsection 147(2) or (3), section 149 or subsection 152(1).

(2)

Where a person who makes a decision mentioned in subsection (1) gives the person or persons affected by the decision written notice of the making of the decision, the notice must include a statement to the effect that, subject to the Administrative Appeals Tribunal Act 1975, application may be made to the Administrative Appeals Tribunal for review of the decision to which the notice relates by or on behalf of the person or persons whose interests are affected by the decision.

(3)

Failure to comply with subsection (2) in relation to a decision does not affect the validity of the decision.

(4)

In this section:

decision has the same meaning as in the Administrative Appeals Tribunal Act 1975.

225 Conduct of employees and agents of natural persons

(3)

Where it is necessary to establish, for the purposes of a prosecution for an offence under this Act, the state of mind of a person other than a company in relation to particular conduct, it is sufficient to show:

(a)

that the conduct was engaged in by a servant or agent of the person within the scope of his or her actual or apparent authority; and

(b)

that the servant or agent had the state of mind.

(4)

Any conduct engaged in on behalf of a person other than a company by the person’s servant or agent within the scope of his or her actual or apparent authority is to be taken, for the purposes of a prosecution for an offence under this Act, to have been engaged in also by the person, unless the person establishes that he or she took reasonable precautions and exercised due diligence to avoid the conduct.

Section 226

(5)

A reference in this section to an offence under this Act includes a reference to an offence created by:

(a)

section 6 of the Crimes Act 1914 that relates to this Act or the regulations; or

(b)

section 11.1, 11.2, 11.2A, 11.4 or 11.5 of the Criminal Code that relates to this Act or the regulations.

(6)

Where:

(a)

a person other than a company is convicted of an offence under this Act; and

(b)

the person would not have been convicted of the offence but

for subsections (3) and (4); the person is not liable to be punished by imprisonment for that offence.

(7)

A reference in subsection (3) to the state of mind of a person includes a reference to:

(a)

the knowledge, intention, opinion, belief or purpose of the person; and

(b)

the person’s reasons for the intention, opinion, belief or purpose.

(9)

A reference in this section to engaging in conduct includes a reference to failing or refusing to engage in conduct.

Note: For provisions relating to proof of offences by bodies corporate, see Part 2.5 of the Criminal Code.

226 Reproduction of published specifications does not infringe copyright

The reproduction in 2 dimensions of the whole or part of a provisional or complete specification that is open to public inspection does not constitute an infringement of any copyright subsisting under the Copyright Act 1968 in any literary or artistic work.

227 Fees

(1) The prescribed fees are payable in accordance with the regulations.

Section 227A

(2)

Without limiting subsection (1), different fees may be prescribed in respect of the doing of an act according to the time when the act is done.

(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.

(4)

In particular, the regulations may provide that, for the purposes of this Act:

(a)

an act is not to be done, or is taken not to have been done, if the fee for doing the act is not paid in accordance with the regulations; or

(b)

a document is not filed, or is taken not to have been filed, if the fee for filing the document is not paid in accordance with the regulations; or

(c)

a patent application lapses, or is taken to have lapsed, if the fee for filing the request and accompanying specification is not paid in accordance with the regulations.

(5)

Subsection (4) does not limit subsection (3).

227A Professional Standards Board for Patent and Trade Marks Attorneys

(1)

The Professional Standards Board for Patent and Trade Marks Attorneys is established.

(2)

The Professional Standards Board has the following functions:

(a)

such functions as are conferred on the Professional Standards Board by this Act or the Trade Marks Act 1995;

(b)

such functions as are conferred on the Professional Standards Board by regulations made for the purposes of any of the following provisions:

(i)

paragraph 198(4)(b) of this Act (which deals with the qualifications of patent attorneys);

(ii)

section 199 of this Act (which deals with the deregistration of patent attorneys);

Section 227A

(iii) paragraph 228(2)(r) of this Act (which deals with the professional conduct of patent attorneys);

(iv)

paragraph 228A(4)(a) of the Trade Marks Act 1995 (which deals with the qualifications of trade marks attorneys);

(v)

section 228B of the Trade Marks Act 1995 (which deals with the deregistration of trade marks attorneys);

(vi)

paragraph 231(2)(ha) of the Trade Marks Act 1995 (which deals with the professional conduct of trade marks attorneys);

(c)

to do anything incidental to or conducive to the performance of any of the above functions.

(3)

The regulations may make provision for and in relation to:

(a)

the constitution and membership of the Professional Standards Board; and

(b)

the manner in which the Professional Standards Board is to perform its functions; and

(c)

the procedure to be followed at or in relation to meetings of the Professional Standards Board, including (but not limited to) matters with respect to:

(i)

the convening of meetings of the Board; and

(ii)

the number of members of the Board who are to constitute a quorum; and

(iii) the selection of a member of the Board to preside at a meeting of the Board; and

(iv)

the manner in which questions arising at a meeting of the Board are to be decided.

(4)

A member of the Professional Standards Board is to be paid such remuneration as is determined by the Remuneration Tribunal. If no determination of that remuneration by the Tribunal is in operation, the member is to be paid such remuneration as is prescribed.

(5)

A member of the Professional Standards Board is to be paid such allowances as are prescribed.

(6)

Subsections (4) and (5) have effect subject to the Remuneration Tribunal Act 1973.

Section 228

228 Regulations

(1)

The Governor-General may make regulations, not inconsistent with this Act:

(a)

prescribing matters required or permitted by this Act to be prescribed; and

(b)

prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to this Act; and

(c)

prescribing matters necessary or convenient to be prescribed for the conduct of any business relating to the Patent Office; and

(d)

for the purpose of carrying out or giving effect to the Budapest Treaty; and

(e)

for the purpose of carrying out or giving effect to the PCT, whether in relation to PCT applications or otherwise.

(2)

Without limiting subsection (1), that subsection includes the power to make regulations:

(a)

making provision for and in relation to the procedures for the examination of a patent request and complete specification and the re-examination of a complete specification; and

(b)

making provision for and in relation to the reports to be made in relation to an examination and a re-examination; and

(c)

making provision for and in relation to the amendment of patent requests, provisional and complete specifications, and other filed documents:

(i)

to correct a clerical error or obvious mistake; or

(ii)

to remove a lawful ground of objection, whether the objection is raised in the course of examination or re-examination or otherwise; or

(iii) for any other purpose; and

(e)

making provision for and in relation to the amendment of an entry in the Register to correct a clerical error or an obvious mistake, or for any other purpose; and

(f)

making provision for and in relation to the amendment of a patent to correct a clerical error or an obvious mistake; and

(g)

making provision for and in relation to the preparation, filing and publication of abstracts of complete specifications; and

(h)

making provision for and in relation to opposition proceedings; and

Section 228

(ha) setting out the formalities checking process for innovation patents including, in particular, the following matters:

(i)

specifying the formalities requirements (including compliance with the requirements of subsections 18(2) and (3)) that must be met in respect of an application for an innovation patent; and

(ii)

empowering the Commissioner to direct an applicant for an innovation patent to do such things as are necessary to ensure that the application is in accordance with the requirements of the regulations relating to the preparation of documents for filing; and

(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

(j)

empowering the Commissioner to direct an applicant for a standard patent to do such things as are necessary to ensure that the complete specification is in accordance with the requirements of the regulations relating to the preparation of documents for filing and:

(i)

providing for the lapsing of the application if such a direction is not complied with within a time specified in the regulations; and

(ii)

providing for the restoration of an application that has so lapsed; and

(k)

empowering the Commissioner to hear and determine the question whether a person is an interested person for the purpose of doing any act permitted to be done under this Act by an interested person; and

(m)

providing for appeals against decisions of the Commissioner made under the regulations; and

(n)

making provision for and in relation to the practice and procedure of prescribed courts in proceedings under this Act, including provision prescribing the time within which any proceeding may be started or anything else may be done, and providing for the extension of any such time; and

Section 228

(p)

requiring persons to make statutory declarations in relation to patent applications or patents or in proceedings under this Act (not being court proceedings); and

(q)

making provision for and in relation to the making of a declaration, or the doing of an act, under this Act on behalf of a person who, because of infancy or physical or mental disability, is unable to make the declaration or do the act; and

(r)

for the control of the professional conduct of registered patent attorneys and the practice of the profession and, for that purpose, making provision for and in relation to all or any of the following:

(i)

making complaints, and hearing charges, against registered patent attorneys about their professional conduct;

(ii)

imposing penalties on registered patent attorneys, including issuing a reprimand and suspending or cancelling registration;

(iii) summoning witnesses;

(iv)

requiring persons to give evidence on oath (whether orally or otherwise);

(v)

administering oaths to persons giving evidence (whether orally or otherwise);

(vi)

requiring persons to produce documents or articles; and

(s)

making provision for and in relation to:

(i)

the deposit for the purposes of this Act, the Budapest Treaty, or both, of micro-organisms with prescribed depositary institutions and the storage and testing of, and furnishing of samples of, micro-organisms by those institutions; and

(ii)

the charging of fees by prescribed depositary institutions situated in Australia in relation to the matters described in subparagraph (i); and

(iii) the making of reports by prescribed depositary institutions situated in Australia in relation to those matters; and

(iv) the powers and functions of the Commissioner in relation to prescribed depositary institutions with respect to those matters; and

Section 228

(t)

modifying the operation of this Act in relation to PCT applications that are treated as patent applications under this Act by excluding, varying, or substituting different provisions for, specified provisions of this Act; and

(u)

making provision for and in relation to the destruction of documents relating to applications for patents filed not less than 25 years before the time of destruction; and

(w)

making provision for and in relation to the refund, in specified circumstances, of the whole or part of a fee paid in respect of the filing of a document; and

(y)

making provision for and in relation to the remission of, or the exemption of specified classes of persons from the payment of, the whole or part of a fee; and

(z)

prescribing penalties for offences against the regulations not exceeding a fine of $1,000; and

(za) making such transitional and savings provisions as are necessary or convenient as a result of the repeal of the 1952 Act and the enactment of this Act.

(3)

The regulations may make provision for matters referred to in paragraph (2)(s) by empowering the Commissioner, on behalf of the Commonwealth, to enter into agreements with prescribed depositary institutions with respect to those matters.

(4)

Regulations made under paragraph (2)(s) and subsection (3) may make different provision with respect to different matters dealt with by or under those regulations, but this subsection shall not be taken to limit a power to make regulations conferred by any other provision of this Act.

(5)

The Governor-General is to make regulations setting out the English texts of the Budapest Treaty and the PCT as in force for Australia on the commencing day, and afterwards such regulations as are necessary to keep those English texts in an up-to-date form.

(6)

The Governor-General may make regulations setting out the English text of a treaty relating to the protection of inventions to which Australia is a party (other than the Budapest Treaty or the PCT), being the English text of the treaty as in force for Australia when the regulations are made, and afterwards such regulations as are necessary to keep that English text in an up-to-date form.

Section 229

(7) Despite the repeal of the 1952 Act by this Act, regulations made under paragraph (2)(za) may provide for the continued operation of specified provisions of the 1952 Act in relation to prescribed persons or matters, or in prescribed circumstances.

229 Consequential amendments

The Acts specified in Schedule 2 are amended as set out in that Schedule.

230 Repeal

The Patents Act 1952 is repealed.

Section 231

Chapter 23—Transitional and savings provisions

231 Application of Part III of 1989 Amending Act

Nothing in this Act affects the continued operation of Part III of the 1989 Amending Act.

233 Patents granted under 1952 Act

(1)

Subject to this Chapter and the regulations, this Act applies in relation to a standard patent or a petty patent granted under the 1952 Act as if the patent had been granted under this Act.

(2)

A patent mentioned in subsection (1) does not have effect in any place in which it did not have effect immediately before the commencing day.

(3)

Chapter 9 of this Act does not apply in relation to a patent mentioned in subsection (1).

(4)

Objection cannot be taken to a patent mentioned in subsection (1), and such a patent is not invalid, so far as the invention is claimed in any claim, on any ground that would not have been available against the patent under the 1952 Act.

234 Applications under 1952 Act

(1)

Where, before the commencing day:

(a)

a patent application and provisional specification had been lodged under the 1952 Act; and

(b)

a complete specification had not been lodged under that Act in respect of the application; and

(c)

the application had not been withdrawn; then, subject to this Chapter and the regulations, this Act applies in

relation to the application on and after that day as if it were a provisional application under this Act.