- Patents Amendment (Innovation Patents) Act 2000
- Contents
- The Parliament of Australia enacts:
- Schedule 1—Amendment of the Patents Act 1990
- 1 Section 3 (index of expressions)
- 2 Section 3 (index of expressions)
- 3 Section 4
- 4 Section 4 (Table 2)
- 5 At the end of section 7
- 6 Subsection 18(1)
- 7 After subsection 18(1)
- 8 At the end of section 18
- 9 Subsections 24(1) and (2)
- 10 Section 28
- 11 Sections 33 and 34
- 12 Subsection 35(1)
- 13 Section 36
- 14 Section 39
- 15 Paragraph 40(2)(c)
- 16 At the end of section 43
- 17 Part 2 of Chapter 3 (heading)
- 18 Subsection 45(1)
- 19 Subsection 48(1)
- 20 After Part 3 of Chapter 3 (heading)
- 21 Subsection 49(1)
- 22 Sections 50, 51 and 52
- 23 Subsection 54(1)
- 24 Paragraph 54(4)(a)
- 25 Subsection 54(5)
- 26 Paragraph 54(6)(a)
- 26A Subsection 55(1)
- 27 Subsection 55(2)
- 28 Subsection 57(2)
- 29 Subsection 57(3)
- 30 Subsection 57(4)
- 31 Chapter 5 (heading)
- 32 Paragraph 59(a)
- 33 At the end of section 59
- 34 Section 62
- 35 Paragraph 64(2)(a)
- 36 Subsection 64(2)
- 37 At the end of section 66
- 38 Section 68
- 39 Part 3 of Chapter 6 (heading)
- 40 Division 1 of Part 3 of Chapter 6
- 41 Division 2 of Part 3 of Chapter 6 (heading)
- 42 After Chapter 6
- 43 Section 80
- 44 Subsection 88(2)
- 45 Subsection 89(1)
- 46 Chapter 9 (heading)
- 47 Before section 97 in Chapter 9
- 48 Subsection 98(1)
- 49 Subsection 98(2)
- 50 At the end of subsection 99(2)
- 51 After Chapter 9
- Chapter 9A—Examination, re-examination and opposition-innovation patents
- Part 1—Examination of innovation patents
- 101A Examination may be requested or Commissioner may decide to examine
- 101B Examination of an innovation patent
- 101C How and when examination to be carried out
- 101D Commissioner may get information on searches
- 101E Certificate of examination
- 101F Revocation of innovation patents following examination under section 101B
- Part 2—Re-examination of innovation patents
- 101G Re-examination of complete specifications of innovation patents
- 101H Patentee statements
- 101J Revocation of innovation patent following re-examination
- 101K Relevant proceedings and re-examination
- 101L Copies of report to be given to court
- Part 3—Opposition to innovation patents
- 101M Opposition to innovation patent
- 101N Hearing and decision by the Commissioner
- 101P Relevant proceedings and opposition
- 52 Subsection 102(2)
- 53 Paragraph 106(1)(b)
- 54 Paragraph 107(1)(a)
- 55 Section 108
- 56 Section 109
- 57 Section 111
- 57A Subsection 114(2)
- 58 After section 114
- 59 Subsection 120(1)
- 60 After subsection 120(1)
- 61 At the end of subsection 126(1)
- 62 Section 129
- 63 At the end of subsection 130(3)
- 64 Subsection 130(4)
- 65 At the end of subsection 130(4)
- 66 Subsection 133(1)
- 67 After subsection 133(1)
- 68 Subsection 134(1)
- 69 Subsection 138(1)
- 70 After subsection 138(1)
- 71 Section 141
- 72 Subsection 142(3)
- 73 Subsection 142(4)
- 74 After section 143
- 75 After subsection 144(1)
- 76 Paragraph 151(4)(c)
- 77 Subsection 153(2)
- 78 Subsection 169(1)
- 79 At the end of section 169
- 80 Subsection 174(3)
- 81 Paragraph 176(c)
- 82 After subsection 178(1)
- 83 At the end of subsection 186(1)
- 84 Section 187
- 85 Section 204
- 86 Subsection 223(4)
- 87 Subsection 223(9)
- 88 Paragraph 224(1)(a)
- 89 At the end of subsection 227(1)
- 90 Subsections 227(3), (4), (5) and (6)
- 91 Paragraph 228(2)(d)
- 92 After paragraph 228(2)(h)
- 93 Paragraph 228(2)(j)
- 94 Schedule 1 (Dictionary)
- 95 Schedule 1 (Dictionary) (definition of complete specification)
- 96 Schedule 1 (Dictionary) (definition of divisional application)
- 97 Schedule 1 (Dictionary) (definition of examination)
- 98 Schedule 1 (Dictionary)
- 99 Schedule 1 (Dictionary)
- 100 Schedule 1 (Dictionary) (definition of patent)
- 101 Schedule 1 (Dictionary) (definition of patent application)
- 102 Schedule 1 (Dictionary) (definition of petty patent)
- 103 Schedule 1 (Dictionary) (paragraph (a) of the definition of prior art base)
- 104 Schedule 1 (Dictionary) (at the end of the definition of prior art information)
- 105 Schedule 1 (Dictionary) (definition of re-examination)
- 106 Schedule 1 (Dictionary) (definition of standard patent)
- 107 Schedule 1 (Dictionary) (definition of supply)
- Schedule 2—Application, saving and transitional provisions
- Part 1—Application, saving and transitional provisions relating to petty patents
- 1 Definitions
- 2 Saving and application provisions relating to old law
- 3 Transitional—applications for petty patents made before the commencement day may be converted to innovation patents or standard patents
- 4 Transitional—Register of Patents
- 5 Continuity of Register of Patents not affected
- 6 Other transitional matters relating to innovation patents and petty patents may be provided for in the regulations
- Part 2—Other application and saving provisions
- Part 1—Application, saving and transitional provisions relating to petty patents
- Schedule 3—Consequential amendment of other Acts
Patents Amendment (Innovation Patents) Act 2000
No. 140, 2000
Patents Amendment (Innovation Patents) Act 2000
No. 140, 2000
An Act to amend the Patents Act 1990 by repealing the petty patent scheme and providing for innovation patents and other minor amendments, and for related purposes
Contents
1 Short title...........................................................................................1 2 Commencement.................................................................................2 3 Schedule(s)........................................................................................2
Schedule 1—Amendment of the Patents Act 1990 3 Schedule 2—Application, saving and transitional provisions 39 Part 1—Application, saving and transitional provisions relating to petty patents 39 Part 2—Other application and saving provisions 43 Schedule 3—Consequential amendment of other Acts 44 Income Tax Assessment Act 1997 44
Patents Amendment (Innovation Patents) Act 2000 No. 140, 2000
Patents Amendment (Innovation Patents) Act 2000
No. 140, 2000
An Act to amend the Patents Act 1990 by repealing the petty patent scheme and providing for innovation patents and other minor amendments, and for related purposes
[Assented to 24 November 2000]
The Parliament of Australia enacts:
1 Short title
This Act may be cited as the Patents Amendment (Innovation Patents) Act 2000.
2 Commencement
- (1)
- Subject to subsection (2), this Act commences on a day to be fixed by Proclamation.
- (2)
- If this Act does not commence under subsection (1) within the period of 6 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period.
3 Schedule(s)
Subject to section 2, each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
Schedule 1—Amendment of the Patents Act 1990
1 Section 3 (index of expressions)
Insert the following entries in their appropriate alphabetical positions, determined on a letter by letter basis: certified formalities check innovation patent
2 Section 3 (index of expressions)
Omit: divisional application petty patent
3 Section 4
Repeal the section, substitute:
4 What are the typical steps in getting and maintaining a standard patent?
The following diagram shows most of the typical steps involved in getting and maintaining a standard patent. The diagram is intended for use only as a general introductory illustration and is not intended to have any other effect. If there is an inconsistency between any matter contained in the diagram and a provision of this Act or the regulations, the provision prevails.
4 Section 4 (Table 2)
Repeal the table.
5 At the end of section 7
Add:
Innovative step - (4)
- For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless
the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
- (5)
- For the purposes of subsection (4), the information is of the following kinds:
- (a)
- prior art information made publicly available in a single document or through doing a single act;
- (b)
- prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information.
- (6)
- For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.
Note 1: The following heading to subsection 7(1) is inserted “Novelty”.
Note 2: The following heading to subsection 7(2) is inserted “Inventive step”.
6 Subsection 18(1)
Omit “a patentable invention is an invention that”, substitute “an invention is a patentable invention for the purposes of a standard patent if the invention”.
Note: The following heading to subsection 18(1) is inserted “Patentable inventions for the purposes of a standard patent”.
7 After subsection 18(1)
Insert:
Patentable inventions for the purposes of an innovation patent
(1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim: - (a)
- is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
- (b)
- when compared with the prior art base as it existed before the priority date of that claim:
- (i)
- is novel; and
- (ii)
- involves an innovative step; and
- (c)
- is useful; and
- (d)
- was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.
8 At the end of section 18
Add:
Certain inventions not patentable inventions for the purposes of an innovation patent - (3)
- For the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions.
- (4)
- Subsection (3) does not apply if the invention is a microbiological process or a product of such a process.
9 Subsections 24(1) and (2)
Omit “inventive step”, substitute “inventive step or an innovative step”.
10 Section 28
Repeal the section, substitute:
28 Notice of matters affecting validity of innovation patents
Person may give notice of invalidity of an innovation patent
(1) A person may notify the Commissioner that the person asserts, for reasons stated in the notice, that an innovation patent is invalid because the invention concerned does not comply with paragraph 18(1A)(b).
When notice may be given
(2) A notice may only be given to the Commissioner under subsection (1) in respect of an innovation patent within the prescribed period after an innovation patent has been granted.
How notice must be given
(3) Notice must be given in accordance with the regulations.
Commissioner must inform patentee of notice given
(4) If the Commissioner receives a notice in respect of an innovation patent, the Commissioner must inform the patentee, in writing, of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice.
Commissioner to deal with notice in accordance with regulations
(5) The Commissioner must otherwise consider and deal with a notice in accordance with the regulations.
11 Sections 33 and 34
Repeal the sections, substitute:
33 Applications by opponents etc.
Opposition to standard patent if a person other than nominated person eligible for grant of patent
(1) If: - (a)
- an application has been made for a standard patent; and
- (b)
- the grant of the standard patent is opposed under section 59 by one or more persons; and
- (c)
- the Commissioner decides, under section 60, that:
- (i)
- one or more opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim); and
- (ii)
- the nominated person in respect of the application is not an eligible person in relation to the invention; and
(iii) there is no other reason that a patent should not be granted; and
- (d)
- a complete application is made under section 29 by one or more of the eligible persons for a patent in relation to the invention;
the Commissioner may grant those eligible persons a patent jointly for the invention, so far as so claimed.
Opposition to standard patent if nominated person eligible for grant of patent with other persons
(2) If: - (a)
- an application has been made for a standard patent; and
- (b)
- the grant of the patent is opposed under section 59 by one or more persons; and
- (c)
- the Commissioner decides, under section 60:
- (i)
- that both the nominated person and one or more of the opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim); and
- (ii)
- that there is no other reason that a patent should not be granted; and
- (d)
- a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention;
the Commissioner may grant a patent for the invention, so far as so claimed, to those eligible persons jointly.
Opposition to innovation patent if patentee not entitled to grant of patent but another person is
(3) If: - (a)
- an innovation patent is opposed under section 101M by one or more persons;
- (b)
- the Commissioner decides, under section 101N, that the patentee is not entitled to the grant of the patent; and
- (c)
- the Commissioner decides that one or more of the opponents are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim); and
- (d)
- a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention;
the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons.
Opposition to innovation patent if patentee entitled to grant of patent with other person
(4) If: - (a)
- an innovation patent is opposed under section 101M by one or more persons; and
- (b)
- the Commissioner decides that one or more of the opponents and the original patentee are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim); and
- (c)
- a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention;
the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons jointly.
(5) If the Commissioner grants a patent under subsection (1), (2), (3) or (4), the claims of that patent granted have the same priority date as that of the original claim referred to in the respective subsection.
34 Applications by eligible persons arising out of Court proceedings
(1) If, in any proceedings in a court relating to a patent (the first patent), the court is satisfied either: - (a)
- that one or more persons are eligible persons in relation to an invention so far as claimed in any claim of the patent (the original claim) but that the patentee is not an eligible person; or
- (b)
- that the patentee and another person or persons are eligible persons in relation to an invention so far as claimed in any claim of the first patent (the original claim);
the court, in addition to any other order it may make in the proceedings, may, by order, declare that the persons who it is satisfied are eligible persons are eligible persons in relation to that invention so far as so claimed. - (2)
- Subject to subsection (3), if a complete application is made under section 29 by one or more declared persons, the Commissioner may grant a patent for the invention, so far as claimed in the original claim, to those declared persons jointly.
- (3)
- If the Commissioner grants a patent under subsection (2), the claims of that patent have the same priority date as that of the original claim.
12 Subsection 35(1)
Repeal the subsection, substitute:
(1) If the Commissioner: - (a)
- revokes a patent under section 137; and
- (b)
- is satisfied:
- (i)
- on application made by one or more persons in accordance with the regulations, that the persons are eligible persons in relation to the invention concerned, so far as so claimed in any claim of the revoked patent (the original claim) and that the former patentee is not such an eligible person; or
- (ii)
- on application made by one or more persons in accordance with the regulations, that the persons and the former patentee are eligible persons in relation to the invention concerned, so far as is claimed in any claim of the revoked patent (the original claim);
the Commissioner may declare in writing that the eligible persons are such eligible persons.
(1A) If a complete application is made under section 29 by one or more of the declared persons, the Commissioner may grant a patent for the invention, so far as so claimed, to those declared persons jointly.
(1B) If the Commissioner grants a patent under subsection (1A), the claims of that patent have the same priority date as that of the original claim as referred to in subsection (1).
13 Section 36
Repeal the section, substitute:
36 Other applications by eligible persons
(1) If: - (a)
- a patent application has been made and, in the case of a complete application, the patent request and complete specification have not been accepted; and
- (b)
- an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and
- (c)
- the Commissioner is satisfied, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
- (i)
- that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
- (ii)
- that the nominated person is an eligible person, but that
the section 36 applicants are also eligible persons; the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed. - (2)
- The Commissioner may make a declaration under subsection (1) whether or not the patent application lapses or is withdrawn.
- (3)
- The Commissioner must not make a declaration under subsection (1) without first giving the nominated person a reasonable opportunity to be heard.
- (4)
- If a complete application is made under section 29 by one or more of the declared persons, the priority date of the claims of a patent for the invention granted to the person, or persons, as the case may be, must be determined under the regulations.
- (5)
- An appeal lies to the Federal Court against a decision by the Commissioner under this section.
14 Section 39
Repeal the section.
Patents Amendment (Innovation Patents) Act 2000
No. 140, 2000
An Act to amend the Patents Act 1990 by repealing the petty patent scheme and providing for innovation patents and other minor amendments, and for related purposes
Contents
1 Short title...........................................................................................1 2 Commencement.................................................................................2 3 Schedule(s)........................................................................................2
Schedule 1—Amendment of the Patents Act 1990 3 Schedule 2—Application, saving and transitional provisions 39 Part 1—Application, saving and transitional provisions relating to petty patents 39 Part 2—Other application and saving provisions 43 Schedule 3—Consequential amendment of other Acts 44 Income Tax Assessment Act 1997 44
Patents Amendment (Innovation Patents) Act 2000 No. 140, 2000
Patents Amendment (Innovation Patents) Act 2000
No. 140, 2000
An Act to amend the Patents Act 1990 by repealing the petty patent scheme and providing for innovation patents and other minor amendments, and for related purposes
[Assented to 24 November 2000]
The Parliament of Australia enacts:
1 Short title
This Act may be cited as the Patents Amendment (Innovation Patents) Act 2000.
2 Commencement
- (1)
- Subject to subsection (2), this Act commences on a day to be fixed by Proclamation.
- (2)
- If this Act does not commence under subsection (1) within the period of 6 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period.
3 Schedule(s)
Subject to section 2, each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
Schedule 1—Amendment of the Patents Act 1990
1 Section 3 (index of expressions)
Insert the following entries in their appropriate alphabetical positions, determined on a letter by letter basis: certified formalities check innovation patent
2 Section 3 (index of expressions)
Omit: divisional application petty patent
3 Section 4
Repeal the section, substitute:
4 What are the typical steps in getting and maintaining a standard patent?
The following diagram shows most of the typical steps involved in getting and maintaining a standard patent. The diagram is intended for use only as a general introductory illustration and is not intended to have any other effect. If there is an inconsistency between any matter contained in the diagram and a provision of this Act or the regulations, the provision prevails.
4 Section 4 (Table 2)
Repeal the table.
5 At the end of section 7
Add:
Innovative step - (4)
- For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless
the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
- (5)
- For the purposes of subsection (4), the information is of the following kinds:
- (a)
- prior art information made publicly available in a single document or through doing a single act;
- (b)
- prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information.
- (6)
- For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.
Note 1: The following heading to subsection 7(1) is inserted “Novelty”.
Note 2: The following heading to subsection 7(2) is inserted “Inventive step”.
6 Subsection 18(1)
Omit “a patentable invention is an invention that”, substitute “an invention is a patentable invention for the purposes of a standard patent if the invention”.
Note: The following heading to subsection 18(1) is inserted “Patentable inventions for the purposes of a standard patent”.
7 After subsection 18(1)
Insert:
Patentable inventions for the purposes of an innovation patent
(1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim: - (a)
- is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
- (b)
- when compared with the prior art base as it existed before the priority date of that claim:
- (i)
- is novel; and
- (ii)
- involves an innovative step; and
- (c)
- is useful; and
- (d)
- was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.
8 At the end of section 18
Add:
Certain inventions not patentable inventions for the purposes of an innovation patent - (3)
- For the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions.
- (4)
- Subsection (3) does not apply if the invention is a microbiological process or a product of such a process.
9 Subsections 24(1) and (2)
Omit “inventive step”, substitute “inventive step or an innovative step”.
10 Section 28
Repeal the section, substitute:
28 Notice of matters affecting validity of innovation patents
Person may give notice of invalidity of an innovation patent
(1) A person may notify the Commissioner that the person asserts, for reasons stated in the notice, that an innovation patent is invalid because the invention concerned does not comply with paragraph 18(1A)(b).
When notice may be given
(2) A notice may only be given to the Commissioner under subsection (1) in respect of an innovation patent within the prescribed period after an innovation patent has been granted.
How notice must be given
(3) Notice must be given in accordance with the regulations.
Commissioner must inform patentee of notice given
(4) If the Commissioner receives a notice in respect of an innovation patent, the Commissioner must inform the patentee, in writing, of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice.
Commissioner to deal with notice in accordance with regulations
(5) The Commissioner must otherwise consider and deal with a notice in accordance with the regulations.
11 Sections 33 and 34
Repeal the sections, substitute:
33 Applications by opponents etc.
Opposition to standard patent if a person other than nominated person eligible for grant of patent
(1) If: - (a)
- an application has been made for a standard patent; and
- (b)
- the grant of the standard patent is opposed under section 59 by one or more persons; and
- (c)
- the Commissioner decides, under section 60, that:
- (i)
- one or more opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim); and
- (ii)
- the nominated person in respect of the application is not an eligible person in relation to the invention; and
(iii) there is no other reason that a patent should not be granted; and
- (d)
- a complete application is made under section 29 by one or more of the eligible persons for a patent in relation to the invention;
the Commissioner may grant those eligible persons a patent jointly for the invention, so far as so claimed.
Opposition to standard patent if nominated person eligible for grant of patent with other persons
(2) If: - (a)
- an application has been made for a standard patent; and
- (b)
- the grant of the patent is opposed under section 59 by one or more persons; and
- (c)
- the Commissioner decides, under section 60:
- (i)
- that both the nominated person and one or more of the opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim); and
- (ii)
- that there is no other reason that a patent should not be granted; and
- (d)
- a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention;
the Commissioner may grant a patent for the invention, so far as so claimed, to those eligible persons jointly.
Opposition to innovation patent if patentee not entitled to grant of patent but another person is
(3) If: - (a)
- an innovation patent is opposed under section 101M by one or more persons;
- (b)
- the Commissioner decides, under section 101N, that the patentee is not entitled to the grant of the patent; and
- (c)
- the Commissioner decides that one or more of the opponents are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim); and
- (d)
- a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention;
the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons.
Opposition to innovation patent if patentee entitled to grant of patent with other person
(4) If: - (a)
- an innovation patent is opposed under section 101M by one or more persons; and
- (b)
- the Commissioner decides that one or more of the opponents and the original patentee are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim); and
- (c)
- a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention;
the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons jointly.
(5) If the Commissioner grants a patent under subsection (1), (2), (3) or (4), the claims of that patent granted have the same priority date as that of the original claim referred to in the respective subsection.
34 Applications by eligible persons arising out of Court proceedings
(1) If, in any proceedings in a court relating to a patent (the first patent), the court is satisfied either: - (a)
- that one or more persons are eligible persons in relation to an invention so far as claimed in any claim of the patent (the original claim) but that the patentee is not an eligible person; or
- (b)
- that the patentee and another person or persons are eligible persons in relation to an invention so far as claimed in any claim of the first patent (the original claim);
the court, in addition to any other order it may make in the proceedings, may, by order, declare that the persons who it is satisfied are eligible persons are eligible persons in relation to that invention so far as so claimed. - (2)
- Subject to subsection (3), if a complete application is made under section 29 by one or more declared persons, the Commissioner may grant a patent for the invention, so far as claimed in the original claim, to those declared persons jointly.
- (3)
- If the Commissioner grants a patent under subsection (2), the claims of that patent have the same priority date as that of the original claim.
12 Subsection 35(1)
Repeal the subsection, substitute:
(1) If the Commissioner: - (a)
- revokes a patent under section 137; and
- (b)
- is satisfied:
- (i)
- on application made by one or more persons in accordance with the regulations, that the persons are eligible persons in relation to the invention concerned, so far as so claimed in any claim of the revoked patent (the original claim) and that the former patentee is not such an eligible person; or
- (ii)
- on application made by one or more persons in accordance with the regulations, that the persons and the former patentee are eligible persons in relation to the invention concerned, so far as is claimed in any claim of the revoked patent (the original claim);
the Commissioner may declare in writing that the eligible persons are such eligible persons.
(1A) If a complete application is made under section 29 by one or more of the declared persons, the Commissioner may grant a patent for the invention, so far as so claimed, to those declared persons jointly.
(1B) If the Commissioner grants a patent under subsection (1A), the claims of that patent have the same priority date as that of the original claim as referred to in subsection (1).
13 Section 36
Repeal the section, substitute:
36 Other applications by eligible persons
(1) If: - (a)
- a patent application has been made and, in the case of a complete application, the patent request and complete specification have not been accepted; and
- (b)
- an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and
- (c)
- the Commissioner is satisfied, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
- (i)
- that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
- (ii)
- that the nominated person is an eligible person, but that
the section 36 applicants are also eligible persons; the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed. - (2)
- The Commissioner may make a declaration under subsection (1) whether or not the patent application lapses or is withdrawn.
- (3)
- The Commissioner must not make a declaration under subsection (1) without first giving the nominated person a reasonable opportunity to be heard.
- (4)
- If a complete application is made under section 29 by one or more of the declared persons, the priority date of the claims of a patent for the invention granted to the person, or persons, as the case may be, must be determined under the regulations.
- (5)
- An appeal lies to the Federal Court against a decision by the Commissioner under this section.
14 Section 39
Repeal the section.
An Act to amend the Patents Act 1990 by repealing the petty patent scheme and providing for innovation patents and other minor amendments, and for related purposes
Contents
1 Short title...........................................................................................1 2 Commencement.................................................................................2 3 Schedule(s)........................................................................................2
Schedule 1—Amendment of the Patents Act 1990 3 Schedule 2—Application, saving and transitional provisions 39 Part 1—Application, saving and transitional provisions relating to petty patents 39 Part 2—Other application and saving provisions 43 Schedule 3—Consequential amendment of other Acts 44 Income Tax Assessment Act 1997 44
Patents Amendment (Innovation Patents) Act 2000 No. 140, 2000
Patents Amendment (Innovation Patents) Act 2000
No. 140, 2000
An Act to amend the Patents Act 1990 by repealing the petty patent scheme and providing for innovation patents and other minor amendments, and for related purposes
[Assented to 24 November 2000]
The Parliament of Australia enacts:
1 Short title
This Act may be cited as the Patents Amendment (Innovation Patents) Act 2000.
2 Commencement
- (1)
- Subject to subsection (2), this Act commences on a day to be fixed by Proclamation.
- (2)
- If this Act does not commence under subsection (1) within the period of 6 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period.
3 Schedule(s)
Subject to section 2, each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
Schedule 1—Amendment of the Patents Act 1990
1 Section 3 (index of expressions)
Insert the following entries in their appropriate alphabetical positions, determined on a letter by letter basis: certified formalities check innovation patent
2 Section 3 (index of expressions)
Omit: divisional application petty patent
3 Section 4
Repeal the section, substitute:
4 What are the typical steps in getting and maintaining a standard patent?
The following diagram shows most of the typical steps involved in getting and maintaining a standard patent. The diagram is intended for use only as a general introductory illustration and is not intended to have any other effect. If there is an inconsistency between any matter contained in the diagram and a provision of this Act or the regulations, the provision prevails.
4 Section 4 (Table 2)
Repeal the table.
5 At the end of section 7
Add:
Innovative step - (4)
- For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless
the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
- (5)
- For the purposes of subsection (4), the information is of the following kinds:
- (a)
- prior art information made publicly available in a single document or through doing a single act;
- (b)
- prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information.
- (6)
- For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.
Note 1: The following heading to subsection 7(1) is inserted “Novelty”.
Note 2: The following heading to subsection 7(2) is inserted “Inventive step”.
6 Subsection 18(1)
Omit “a patentable invention is an invention that”, substitute “an invention is a patentable invention for the purposes of a standard patent if the invention”.
Note: The following heading to subsection 18(1) is inserted “Patentable inventions for the purposes of a standard patent”.
7 After subsection 18(1)
Insert:
Patentable inventions for the purposes of an innovation patent
(1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim: - (a)
- is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
- (b)
- when compared with the prior art base as it existed before the priority date of that claim:
- (i)
- is novel; and
- (ii)
- involves an innovative step; and
- (c)
- is useful; and
- (d)
- was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.
8 At the end of section 18
Add:
Certain inventions not patentable inventions for the purposes of an innovation patent - (3)
- For the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions.
- (4)
- Subsection (3) does not apply if the invention is a microbiological process or a product of such a process.
9 Subsections 24(1) and (2)
Omit “inventive step”, substitute “inventive step or an innovative step”.
10 Section 28
Repeal the section, substitute:
28 Notice of matters affecting validity of innovation patents
Person may give notice of invalidity of an innovation patent
(1) A person may notify the Commissioner that the person asserts, for reasons stated in the notice, that an innovation patent is invalid because the invention concerned does not comply with paragraph 18(1A)(b).
When notice may be given
(2) A notice may only be given to the Commissioner under subsection (1) in respect of an innovation patent within the prescribed period after an innovation patent has been granted.
How notice must be given
(3) Notice must be given in accordance with the regulations.
Commissioner must inform patentee of notice given
(4) If the Commissioner receives a notice in respect of an innovation patent, the Commissioner must inform the patentee, in writing, of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice.
Commissioner to deal with notice in accordance with regulations
(5) The Commissioner must otherwise consider and deal with a notice in accordance with the regulations.
11 Sections 33 and 34
Repeal the sections, substitute:
33 Applications by opponents etc.
Opposition to standard patent if a person other than nominated person eligible for grant of patent
(1) If: - (a)
- an application has been made for a standard patent; and
- (b)
- the grant of the standard patent is opposed under section 59 by one or more persons; and
- (c)
- the Commissioner decides, under section 60, that:
- (i)
- one or more opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim); and
- (ii)
- the nominated person in respect of the application is not an eligible person in relation to the invention; and
(iii) there is no other reason that a patent should not be granted; and
- (d)
- a complete application is made under section 29 by one or more of the eligible persons for a patent in relation to the invention;
the Commissioner may grant those eligible persons a patent jointly for the invention, so far as so claimed.
Opposition to standard patent if nominated person eligible for grant of patent with other persons
(2) If: - (a)
- an application has been made for a standard patent; and
- (b)
- the grant of the patent is opposed under section 59 by one or more persons; and
- (c)
- the Commissioner decides, under section 60:
- (i)
- that both the nominated person and one or more of the opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim); and
- (ii)
- that there is no other reason that a patent should not be granted; and
- (d)
- a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention;
the Commissioner may grant a patent for the invention, so far as so claimed, to those eligible persons jointly.
Opposition to innovation patent if patentee not entitled to grant of patent but another person is
(3) If: - (a)
- an innovation patent is opposed under section 101M by one or more persons;
- (b)
- the Commissioner decides, under section 101N, that the patentee is not entitled to the grant of the patent; and
- (c)
- the Commissioner decides that one or more of the opponents are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim); and
- (d)
- a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention;
the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons.
Opposition to innovation patent if patentee entitled to grant of patent with other person
(4) If: - (a)
- an innovation patent is opposed under section 101M by one or more persons; and
- (b)
- the Commissioner decides that one or more of the opponents and the original patentee are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim); and
- (c)
- a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention;
the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons jointly.
(5) If the Commissioner grants a patent under subsection (1), (2), (3) or (4), the claims of that patent granted have the same priority date as that of the original claim referred to in the respective subsection.
34 Applications by eligible persons arising out of Court proceedings
(1) If, in any proceedings in a court relating to a patent (the first patent), the court is satisfied either: - (a)
- that one or more persons are eligible persons in relation to an invention so far as claimed in any claim of the patent (the original claim) but that the patentee is not an eligible person; or
- (b)
- that the patentee and another person or persons are eligible persons in relation to an invention so far as claimed in any claim of the first patent (the original claim);
the court, in addition to any other order it may make in the proceedings, may, by order, declare that the persons who it is satisfied are eligible persons are eligible persons in relation to that invention so far as so claimed. - (2)
- Subject to subsection (3), if a complete application is made under section 29 by one or more declared persons, the Commissioner may grant a patent for the invention, so far as claimed in the original claim, to those declared persons jointly.
- (3)
- If the Commissioner grants a patent under subsection (2), the claims of that patent have the same priority date as that of the original claim.
12 Subsection 35(1)
Repeal the subsection, substitute:
(1) If the Commissioner: - (a)
- revokes a patent under section 137; and
- (b)
- is satisfied:
- (i)
- on application made by one or more persons in accordance with the regulations, that the persons are eligible persons in relation to the invention concerned, so far as so claimed in any claim of the revoked patent (the original claim) and that the former patentee is not such an eligible person; or
- (ii)
- on application made by one or more persons in accordance with the regulations, that the persons and the former patentee are eligible persons in relation to the invention concerned, so far as is claimed in any claim of the revoked patent (the original claim);
the Commissioner may declare in writing that the eligible persons are such eligible persons.
(1A) If a complete application is made under section 29 by one or more of the declared persons, the Commissioner may grant a patent for the invention, so far as so claimed, to those declared persons jointly.
(1B) If the Commissioner grants a patent under subsection (1A), the claims of that patent have the same priority date as that of the original claim as referred to in subsection (1).
13 Section 36
Repeal the section, substitute:
36 Other applications by eligible persons
(1) If: - (a)
- a patent application has been made and, in the case of a complete application, the patent request and complete specification have not been accepted; and
- (b)
- an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and
- (c)
- the Commissioner is satisfied, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
- (i)
- that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
- (ii)
- that the nominated person is an eligible person, but that
the section 36 applicants are also eligible persons; the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed. - (2)
- The Commissioner may make a declaration under subsection (1) whether or not the patent application lapses or is withdrawn.
- (3)
- The Commissioner must not make a declaration under subsection (1) without first giving the nominated person a reasonable opportunity to be heard.
- (4)
- If a complete application is made under section 29 by one or more of the declared persons, the priority date of the claims of a patent for the invention granted to the person, or persons, as the case may be, must be determined under the regulations.
- (5)
- An appeal lies to the Federal Court against a decision by the Commissioner under this section.
14 Section 39
Repeal the section.
1 Short title...........................................................................................1 2 Commencement.................................................................................2 3 Schedule(s)........................................................................................2
Schedule 1—Amendment of the Patents Act 1990 3 Schedule 2—Application, saving and transitional provisions 39 Part 1—Application, saving and transitional provisions relating to petty patents 39 Part 2—Other application and saving provisions 43 Schedule 3—Consequential amendment of other Acts 44 Income Tax Assessment Act 1997 44
Patents Amendment (Innovation Patents) Act 2000 No. 140, 2000
An Act to amend the Patents Act 1990 by repealing the petty patent scheme and providing for innovation patents and other minor amendments, and for related purposes
[Assented to 24 November 2000]
This Act may be cited as the Patents Amendment (Innovation Patents) Act 2000.
Subject to section 2, each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
1 Section 3 (index of expressions)
Insert the following entries in their appropriate alphabetical positions, determined on a letter by letter basis: certified formalities check innovation patent
2 Section 3 (index of expressions)
Omit: divisional application petty patent
3 Section 4
Repeal the section, substitute:
The following diagram shows most of the typical steps involved in getting and maintaining a standard patent. The diagram is intended for use only as a general introductory illustration and is not intended to have any other effect. If there is an inconsistency between any matter contained in the diagram and a provision of this Act or the regulations, the provision prevails.
4 Section 4 (Table 2)
Repeal the table.
5 At the end of section 7
Add:
Innovative step Note 1: The following heading to subsection 7(1) is inserted “Novelty”.
Note 2: The following heading to subsection 7(2) is inserted “Inventive step”.
6 Subsection 18(1)
Omit “a patentable invention is an invention that”, substitute “an invention is a patentable invention for the purposes of a standard patent if the invention”.
Note: The following heading to subsection 18(1) is inserted “Patentable inventions for the purposes of a standard patent”.
7 After subsection 18(1)
Insert:
Patentable inventions for the purposes of an innovation patent
(1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim: 8 At the end of section 18
Add:
Certain inventions not patentable inventions for the purposes of an innovation patent 9 Subsections 24(1) and (2)
Omit “inventive step”, substitute “inventive step or an innovative step”.
10 Section 28
Repeal the section, substitute:
28 Notice of matters affecting validity of innovation patents
Person may give notice of invalidity of an innovation patent
(1) A person may notify the Commissioner that the person asserts, for reasons stated in the notice, that an innovation patent is invalid because the invention concerned does not comply with paragraph 18(1A)(b).
When notice may be given
(2) A notice may only be given to the Commissioner under subsection (1) in respect of an innovation patent within the prescribed period after an innovation patent has been granted.
How notice must be given
(3) Notice must be given in accordance with the regulations.
Commissioner must inform patentee of notice given
(4) If the Commissioner receives a notice in respect of an innovation patent, the Commissioner must inform the patentee, in writing, of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice.
Commissioner to deal with notice in accordance with regulations
(5) The Commissioner must otherwise consider and deal with a notice in accordance with the regulations.
11 Sections 33 and 34
Repeal the sections, substitute:
33 Applications by opponents etc.
Opposition to standard patent if a person other than nominated person eligible for grant of patent
(1) If: the Commissioner may grant those eligible persons a patent jointly for the invention, so far as so claimed.
Opposition to standard patent if nominated person eligible for grant of patent with other persons
(2) If: the Commissioner may grant a patent for the invention, so far as so claimed, to those eligible persons jointly.
Opposition to innovation patent if patentee not entitled to grant of patent but another person is
(3) If: the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons.
Opposition to innovation patent if patentee entitled to grant of patent with other person
(4) If: the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons jointly.
(5) If the Commissioner grants a patent under subsection (1), (2), (3) or (4), the claims of that patent granted have the same priority date as that of the original claim referred to in the respective subsection.
(1) If, in any proceedings in a court relating to a patent (the first patent), the court is satisfied either: the court, in addition to any other order it may make in the proceedings, may, by order, declare that the persons who it is satisfied are eligible persons are eligible persons in relation to that invention so far as so claimed. 12 Subsection 35(1)
Repeal the subsection, substitute:
(1) If the Commissioner: the Commissioner may declare in writing that the eligible persons are such eligible persons.
(1A) If a complete application is made under section 29 by one or more of the declared persons, the Commissioner may grant a patent for the invention, so far as so claimed, to those declared persons jointly.
(1B) If the Commissioner grants a patent under subsection (1A), the claims of that patent have the same priority date as that of the original claim as referred to in subsection (1).
13 Section 36
Repeal the section, substitute:
36 Other applications by eligible persons
(1) If: the section 36 applicants are also eligible persons; the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed. 14 Section 39
Repeal the section.
Patents Amendment (Innovation Patents) Act 2000
No. 140, 2000
The Parliament of Australia enacts:
1 Short title
2 Commencement
3 Schedule(s)
Schedule 1—Amendment of the Patents Act 1990
4 What are the typical steps in getting and maintaining a standard patent?
(iii) there is no other reason that a patent should not be granted; and
34 Applications by eligible persons arising out of Court proceedings