(g)  the application and complete specification must be treated as having been filed on the date on which the relevant international application was filed. (5)  On the allowance of an amendment, the amendment is to be taken to have been made. Regulations cannot provide for consequences inconsistent with those provisions. (g)  meets any other requirements prescribed by the regulations. (C)  the information was contained in the specification on its filing date. (3)  A patent request in relation to a provisional application must be in the approved form and accompanied by a provisional specification. (2)  If the Commissioner accepts the application, the Commissioner must: (3)  The Commissioner must refuse to accept the application if the Commissioner is not satisfied, on the balance of probabilities, that the requirements of sections 70 and 71 are satisfied in relation to the application. (b)  where the regulations provide for the determination of a different date as the date of a patent—the date determined under the regulations. (4)  The claim or claims must relate to one invention only. (1)  Subject to section 50, the Commissioner must accept a patent request and complete specification relating to an application for a standard patent if the Commissioner is satisfied, on the balance of probabilities: (a)  that the specification complies with subsections 40(2) to (4); and, (b)  that the invention, so far as claimed, satisfies the criteria mentioned in paragraphs 18(1)(a), (b) and (c); and, (c)  that the invention is a patentable invention under subsection 18(2); and. 119A  Infringement exemptions: acts for obtaining regulatory approval of pharmaceuticals. (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. (2)  The Register may be kept wholly or partly by use of a computer. 35  Applications by eligible persons following revocation by Commissioner, (a)  revokes a patent under section 137; and. (b)  import into Australia, for general marketing, the substance or a product containing the substance. 201A  When a person carries on business, practises or acts as a patent attorney. (b)  in relation to deciding whether an invention is or is not novel: (i)  information of a kind mentioned in paragraph (a); and. (ii)  in continuous charge of the patents work done at that office or place. (3)  The information for the purposes of subsection (2) is: (a)  any single piece of prior art information; or. Safeguards Act means the Nuclear Non‑Proliferation (Safeguards) Act 1987. specification, in relation to an international application, means the description, claims and drawings contained in the application. (b)  obtained by the Designated Manager as a result of the performance of functions and duties, or the exercise of powers, in relation to incorporated patent attorneys. (1)  If a dispute arises between any 2 or more joint applicants in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those applicants, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the applicants alone, or for regulating the manner in which it is to proceed, or both, as the case requires. (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. Exclusive rights of patentee are limited if extension granted, 79.......................... Rights of patentee if extension granted after patent expires, 79A....................... Commissioner not to make decision if court proceedings pending. 126  Proceedings for non‑infringement declarations. (2)  Without limiting the documents or disclosures that may be taken into account for the purposes of this Act in relation to a basic application, account may be taken of a disclosure in a prescribed document that relates to a basic application. applicant includes a person entitled to make a request under section 113 in relation to the relevant patent application. (c)  whether the invention is not a patentable invention under subsection 18(2). (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)  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. (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. It will take only 2 minutes to fill in. This Part also enables the Commissioner to appear and be heard in all proceedings under this Chapter. (b)  register the revocation of the patent. complete specification means (other than in section 116) a specification filed in respect of a complete patent application or, if the specification has been amended, the complete specification as amended. (1)  If an innovation patent has been opposed under section 101M, the Commissioner must decide the case in accordance with the regulations. Note 2:       For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009. preliminary search and opinion, in relation to a patent request and complete specification relating to an application for a standard patent, means search and opinion under section 43A. (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. Australian Patent Law. Part 1—Registration, privileges and professional conduct. 2 or more persons (within the meaning of section 29) may make a joint patent application. (5)  The Commissioner may require a person to produce a document or article under paragraph (1)(c) whether the person is in or out of the patent area. (b)  relevant proceedings in relation to the patent are started; the Commissioner must not continue the re‑examination. (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. means the official journal mentioned in section 222. means a standard patent or an innovation patent. 1989 Amending Act means the Patents Amendment Act 1989. (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, Note:          Certain particulars relating to registrations in respect of PPSA security interests under the, Evidence—certificate and copies of documents, Registration, privileges and professional conduct, (a)  the making of an order under section 19B of the, (10)  A company registered as a patent attorney is an, Acting or holding out without being registered, Note:          The defendant bears an evidential burden in relation to the matters in subsection (7). Legislation history and amendment history—Endnotes 3 and 4. (3)  The time specified under subsection (2) must be later than the day on which the regulations are registered under the Legislation Act 2003. (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. Australian continental shelf means the continental shelf adjacent to the coast of Australia (including the coast of any island forming part of a State or Territory). (4)  Where relevant proceedings in relation to a patent are pending, the Commissioner must not re‑examine the complete specification relating to the patent under subsection (2). (c)  there are no relevant proceedings pending. (5)  Convention country means a foreign country or region of a kind prescribed by the regulations. Click on the first link on a line below to go directly to a page where "australian patent law" is defined. PCT application means an international application in which Australia is specified as a designated State under Article 4(1)(ii) of the PCT. (1)  Nothing done under this Act or the PCT guarantees the granting of a patent, or that a patent is valid, in Australia or anywhere else. (2)  After the time specified in the regulations, a reference in this section to an address includes a reference to an electronic address. This country-specific Q&A provides an overview of Patent Litigation laws and regulations applicable in Australia. Opposition to innovation patent if patentee entitled to grant of patent with other person, (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. Nothing in this Part prevents the Federal Court from dealing with the following applications together: (a)  applications for different PPI orders, or for the amendment or revocation of such orders; (b)  applications for determinations under paragraph 136J(3)(b) for remuneration in relation to different PPI compulsory licences, or for the amendment of such determinations. That Act also provides for the priority and enforcement of PPSA security interests. Accordingly, this compilation does not show the text of the compiled law as modified. Prohibition of publication of information about inventions. (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. international application has the same meaning as in the PCT. (b)  does not file the prescribed documents (if any) within the prescribed period. Director means the Director of Safeguards. (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 of a Department, to: (a)  market the substance, or a product containing the substance, in Australia; or. (3)  A reference in subsection (1) to giving access to a micro‑organism includes a reference to giving a sample of the micro‑organism. (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. (c)  the Commissioner is satisfied on the balance of probabilities, 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. commencing day means the day on which this Act commences. (1)  A PCT application is to be treated as a complete application under this Act for a standard patent. (ii)  is disclosed in that manner by the amended specification. (8)  To avoid doubt, a PPI compulsory licence may be revoked whether or not an amount has been agreed or determined under this section. (1)  For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard: (a)  any information made publicly available in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and. Any report, order or direction made or given under the 1952 Act and in force immediately before the commencing day continues to have effect on and after that day as if it had been made or given under a corresponding provision of this Act. (3B)  The Commissioner must not refuse an application under this section unless the Commissioner has, where appropriate, given the applicant a reasonable opportunity to amend the relevant specification for the purpose of removing any ground of opposition and the applicant has failed to do so. (1)  Each claim of a specification must have a priority date. (c)  at all times since the end of the prescribed period, the specification has included: (i)  the name of a prescribed depositary institution from which samples of the micro‑organism are obtainable as provided by the rules relating to micro‑organisms; and, (iii)  the file, accession or registration number of the deposit given by the institution; and. (a)  a person is the deputy of the New Zealand Commissioner of Patents for the purpose of attendance at a particular meeting of the Board; and. (5)  A registered patent attorney holding an appointment under subsection (3) (the appointed attorney) is taken, for the purposes of this Act, to be a patent attorney director of the incorporated patent attorney. (4)  It is a defence to proceedings under subsection (1) in respect of an act done: (a)  after the complete specification became open to public inspection; and. (a)  in relation to a patent request and a complete specification relating to a standard patent—an examination of the request and specification under section 45; or. (b)  the individual is not a registered patent attorney. 149, 184........................ Other unauthorised disclosures of information............... 150, 185........................ Commissioner etc. (b)  the Commissioner notifies the witness of the actions the Commissioner may take under section 210A if the witness fails or refuses to comply with the summons. It also includes information about any provision of the compiled law that has been repealed in accordance with a provision of the law. The Commissioner, a Deputy Commissioner or an employee must not: (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. (c)  the exercise of a right under section 16 in relation to the patent. (b)  is managed by a registered patent attorney on behalf of the legal representative. An order must not be made under section 133 or 134 that is inconsistent with a treaty between the Commonwealth and a foreign country. (b)  is inconsistent with the terms of an agreement between the patentees. (7)  For the purposes of subsection (6), the amount of the fee in New Zealand currency is to be ascertained in accordance with the regulations. person includes a body of persons, whether incorporated or not. You can also view our Policy Register which contains a list of issues that IP Australia is considering or currently working on for policy action or legislative amendment. Termination of contract after patent ceases to be in force. As federal legislation, the act and regulations apply to all Australian territory. 138  Revocation of patents in other circumstances. (4)  Infringement proceedings must be started within: (a)  3 years from the day on which the relevant patent is granted; or. (1)  If a patent application (other than a PCT application) is made, the Commissioner must publish in the Official Journal the prescribed information about the applicant and the application. 101C  How and when examination to be carried out. deposit requirements means the requirements specified in paragraphs 6(a) to (d), inclusive. (ii)  to enforce equities in relation to a patent or licence. (2)  In proceedings under subsection (1): (a)  the alleged relevant authority is the defendant; and. (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. 140  Commissioner to be given copies of orders. (1)  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. (2)  A patent may be assigned for a place in, or part of, the patent area. (b)  the Commissioner is satisfied, on the balance of probabilities, 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. (2)  If a court issues a certificate, then, in any subsequent proceedings for infringement of the claim concerned, or for the revocation of the patent so far as it relates to that claim, the patentee, or any other person supporting the validity of the claim is, on obtaining a final order or judgment in his or her favour, entitled to full costs, charges and expenses as between solicitor and client, so far as that claim is concerned. The legal requirements for obtaining a pharmaceutical PTE as stated in the Australian Patents Act 1990 are: The patent must relate to a pharmaceutical substance per se or a pharmaceutical substance when produced by recombinant DNA technology. The term of a standard patent is 20 years from the date of the patent. foreign vessel means a vessel registered in a prescribed foreign country. (c)  meets the requirements (if any) prescribed by the regulations. The examination under section 101B must be carried out: (a)  in accordance with the regulations; and. 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. (ii)  by a person (the third party importer) on behalf of, and with the authorisation of, the eligible importing country; (c)  the proposed use of the pharmaceutical product is to address a public health problem in the eligible importing country: (i)  in circumstances of national emergency or other circumstances of extreme urgency; or. This Act may be cited as the Patents Act 1990. (1)  An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together: (a)  the complete specification as filed; (b)  other prescribed documents (if any). Schedule 1............................... am No 66, 1991; No 58, 1994; No 108, 1994; No 154, 1994; No 100, 1998; No 146, 1999; No 140, 2000; No 160, 2001; No 48, 2003; No 106, 2006; No 131, 2009; No 96, 2010; No 46, 2011; No 35, 2012; No 8, 2015. (1)  The Commissioner may revoke a certificate of examination issued in relation to an innovation patent if the Commissioner is satisfied, on the balance of probabilities, that: (a)  the certificate of examination should not have been issued, taking account of all the circumstances that existed when the certificate was issued (whether or not the Commissioner knew then of their existence); and, (b)  it is reasonable to revoke the certificate, taking account of all the circumstances; and. (3)  If the term of a patent of addition is extended under Part 3 of Chapter 6: (a)  the extension begins at the end of the unextended term of the patent for the main invention; and. 184........................ Other unauthorised disclosures of information............... 185........................ Commissioner etc. Convention country has the meaning given by section 29B. This is a compilation of the Patents Act 1990 that shows the text of the law as amended and in force on 24 February 2017 (the compilation date). Part 3—Extension of term of standard patents relating to pharmaceutical substances. under 1952 Act, 238 The Commissioner and Deputy Commissioner, 239 The Register of Patents and Register of Patent Attorneys. 136A  Dealing with allegation of contravention of application law. (b)  the Commissioner is satisfied, on the balance of probabilities, 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. (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. (b)  publish a notice of the refusal in the Official Journal. (4)  A declaration mentioned in paragraph (2)(b): (a)  may be made before, on or after the day; and. A legal practitioner or a registered patent attorney is not liable to proceedings under section 128 in respect of an act done in a professional capacity on behalf of a client. (a)  the company carries on business, practises or acts as a patent attorney; and. The persons holding office as Commissioner of Patents and Deputy Commissioner of Patents immediately before the commencing day continue to hold those respective offices on and after that day. (2)  This section does not apply in relation to a pharmaceutical patent within the meaning of subsection 119A(3). 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