Patents Act 1990 · GlobalLawDB

Contents

2,692 provisions, too many to show on one page. Open a part or section to read it with its history and connections, or search inside the text.

Chapter 1 · Introductory
1. 1 Short title
2. 2 Commencement
3. 2A Object of this Act
4. 3 Definitions
5. 5 Associated applications
6. 6 Deposit requirements
7. 7 Novelty, inventive step and innovative step
8. 7A Meaning of useful
9. 9 Secret use
10. 10 Certain international applications to be taken to have been given an international filing date
11. 11 Act binds the Crown
12. 12 Application of Act
13. 12A Application of the Criminal Code
Chapter 2 · Patent rights, ownership and validity
1. Part 1 Patent rights
2. Part 2 Ownership
3. Part 3 Validity
Chapter 3 · From application to acceptance
1. Part 1 Patent applications
2. Part 2 Examination of standard patent requests and specifications
3. Part 3 Acceptance
Chapter 4 · Publication
1. 53 Publication of certain information about applicants etc.
2. 54 Notice of publication
3. 55 Documents open to public inspection
4. 56 Certain documents and information not to be published or open to public inspection
5. 56A Publication and inspection of PCT applications
6. 57 Effect of publication of complete specification
7. 58 Result of search may be disclosed
Chapter 5 · Opposition to grant of standard patent
1. 59 Opposition to grant of standard patent
2. 60 Hearing and decision by Commissioner
Chapter 6 · Grant and term of patents
1. Part 1 Grant
2. Part 2 Term
3. Part 3 Extension of term of standard patents relating to pharmaceutical substances
Chapter 6A · Divisional applications
1. 79B Divisional applications prior to grant of patent
2. 79C Divisional applications for innovation patents may be made after grant of an innovation patent
Chapter 7 · Patents of addition
1. 80 Chapter does not apply to innovation patents
2. 81 Grant of patent of addition
3. 82 Revocation of patent and grant of patent of addition instead
4. 83 Term of patent of addition
5. 85 Revocation of patent for main invention
6. 86 Renewal fees not payable
7. 87 Fees payable where patent of addition becomes an independent patent
Chapter 9 · Re-examination of standard patents
1. 96A Chapter does not apply to innovation patents
2. 97 Re-examination of complete specifications
3. 98 Report on re-examination
4. 99 Statement by applicant or patentee
5. 100 Copies of report to be given to court
6. 100A Refusal to grant patent—re-examination before grant
7. 101 Revocation of patent—re-examination after grant
Chapter 9A · Examination, re-examination and opposition-innovation patents
1. Part 1 Examination of innovation patents
2. Part 2 Re-examination of innovation patents
3. Part 3 Opposition to innovation patents
Chapter 10 · Amendments
1. Part 1 Amendments that are not allowable
2. Part 2 Amendments of patent requests, specifications and other filed documents
3. Part 3 Miscellaneous
Chapter 11 · Infringement
1. Part 1 Infringement and infringement proceedings
2. Part 2 Non-infringement declarations
3. Part 3 Unjustified threats of infringement proceedings
Chapter 12 · Compulsory licences and revocation of patents
1. Part 1 Introduction
2. Part 2 Compulsory licences (general)
3. Part 3 Patented pharmaceutical invention compulsory licences (for manufacture and export to eligible importing countries)
4. Part 4 Surrender and revocation of patents
5. Part 5 Other matters
Chapter 13 · Withdrawal and lapsing of applications and ceasing of patents
1. 141 Withdrawal of applications
2. 142 Lapsing of applications
3. 143 Ceasing of patents
4. 143A Ceasing of innovation patents
5. 143B Payment of fees
Chapter 14 · Contracts
1. 145 Termination of contract after patent ceases to be in force
Chapter 15 · Special provisions relating to associated technology
1. 147 Certificate by Director as to associated technology
2. 148 Lapsing etc. of applications
3. 149 Revocation of direction
4. 150 Restoration of lapsed application
5. 151 Reinstatement of application as an international application
6. 152 Notice of prohibitions or restrictions on publication
7. 153 Effect of order
Chapter 16 · Jurisdiction and powers of courts
1. 154 Jurisdiction of Federal Court
2. 155 Jurisdiction of other prescribed courts
3. 156 Exercise of jurisdiction
4. 157 Transfer of proceedings
5. 158 Appeals
6. 159 Commissioner may appear in appeals
7. 160 Powers of Federal Court
Chapter 17 · The Crown
1. Part 1 Introductory
2. Part 2 Exploitation by the Crown
3. Part 3 Acquisitions by and assignments to the Crown
4. Part 4 Prohibition orders
Chapter 18 · Miscellaneous offences
1. 177 False representations about the Patent Office
2. 178 False representations about patents or patented articles
3. 182 Officers not to traffic in inventions
4. 183 Unauthorised disclosure of information by employees etc.
5. 184 Other unauthorised disclosures of information
6. 185 Commissioner etc. not to prepare documents or search records
Chapter 19 · The Register and official documents
1. 186 Register of Patents
2. 187 Registration of particulars of patents etc.
3. 188 Trusts not registrable
4. 189 Power of patentee to deal with patent
5. 190 Inspection of Register
6. 191 False entries in Register
7. 191A Commissioner’s power to rectify register
8. 192 Orders for rectification of Register
9. 193 Inspection of documents
10. 194 Information obtainable from Commissioner
11. 195 Evidence—the Register
12. 196 Evidence—unregistered particulars
13. 197 Evidence—certificate and copies of documents
14. 197AA Evidence of matters arising under PCT
Chapter 20 · Patent Attorneys
1. Part 1 Registration, privileges and professional conduct
2. Part 2 Offences
Chapter 21 · Administration
1. 205 Patent Office and sub-offices
2. 206 Patent Office seal
3. 207 Commissioner of Patents
4. 208 Deputy Commissioner of Patents
5. 209 Delegation of Commissioner’s powers and functions
6. 210 Commissioner’s powers
7. 210A Sanctions for non-compliance with Commissioner’s requirements
8. 211 Recovery of costs awarded by Commissioner
Chapter 22 · Miscellaneous
1. 212 Copies of examination reports to be communicated
2. 213 Making and signing applications etc.
3. 214 Filing of documents
4. 214A Approved means of filing documents
5. 214B Directions by Commissioner for filing of documents
6. 214C Directions by Commissioner for filing of evidence
7. 215 Death of applicant or nominated person
8. 216 Exercise of discretionary power by Commissioner
9. 217 Assessors
10. 218 Costs where patent invalid in part
11. 219 Security for costs
12. 220 Costs of attendance of patent attorney
13. 220A Notifications by Commissioner under this Act
14. 221 Service of documents
15. 222 Publication of Official Journal etc.
16. 222A Doing act when Patent Office reopens after end of period otherwise provided for doing act
17. 223 Extensions of time
18. 223A Computerised decision-making
19. 224 Review of decisions
20. 225 Conduct of employees and agents of natural persons
21. 226 Documents open to public inspection do not infringe copyright
22. 227 Fees payable under this Act
23. 227AAA Approved means of paying a fee
24. 227AB Application of administrative law regime to decisions made in New Zealand
25. 227A Trans-Tasman IP Attorneys Board
26. 227B Publishing personal information of registered patent attorneys
27. 228 Regulations
28. 229 Instrument determining formalities requirements for patent documents
Chapter 23 · Transitional and savings provisions
1. 237 Orders, directions etc. under 1952 Act
2. 239 The Register of Patents and Register of Patent Attorneys
3. 240 Registered patent attorneys
Schedule 1 · Dictionary
1. Section 3
2. In this Act, unless the contrary intention appears:
3. 1952 Act means the Patents Act 1952.
4. application, in Chapter 15, means a patent application, and includes a relevant international application.
5. approved form means a form approved by the Commissioner for the purposes of the provision in which the expression appears.
6. associated technology has the same meaning as in the Safeguards Act.
7. Australia includes each external Territory.
8. 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 Territ
9. Australian Register of Therapeutic Goods means the register maintained under section 9A of the Therapeutic Goods Act 1989.
10. authority, in Chapter 15, has the same meaning as in the Safeguards Act.
11. basic application means an application for protection in respect of an invention, being an application made in a Convention country.
12. Board means the Trans-Tasman IP Attorneys Board continued in existence by section 227A.
13. Budapest Treaty means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure signed at Budap
14. Note: The text of the Treaty is set out in Australian Treaty Series 1987 No. 9 ([1987] ATS 9). In 2011, the text of a Treaty in the Australian Treaty Series was
15. certified, in respect of an innovation patent other than in section 19, means a certificate of examination issued by the Commissioner under paragraph 101E(2)(c)
16. claim means:
17. (a) when used as a noun in relation to a patent—a claim (including a dependent claim) of the specification relating to the complete application on which the pat
18. (b) when used as a noun otherwise than in relation to a patent—a claim (including a dependent claim) of a complete specification; and
19. (c) when used as a verb—to claim in a claim (including a dependent claim) of a complete specification.
20. commencing day means the day on which this Act commences.
21. Commissioner means the Commissioner of Patents.
22. company means:
23. (a) a company registered under the Corporations Act 2001; or
24. (b) a company registered under the Companies Act 1993 of New Zealand.
25. compensable person means:
26. (a) in relation to a patent acquired by the Commonwealth—the patentee and any person recorded in the Register as having an interest in the patent; and
27. (b) in relation to an invention that is the subject of a patent application and is so acquired—the nominated person in relation to the application.
28. complete specification means (other than in section 116) a specification filed in respect of a complete patent application or, if the specification has been ame
29. Convention applicant, in relation to a basic application, means a person (or a body of persons, whether incorporated or not) who:
30. (a) has made the basic application; or
31. (b) is the assignee of that applicant; or
32. (c) would, on the grant of a patent on that application, be entitled to have the patent assigned to the person; or
33. (d) is the legal representative of a person mentioned in paragraph (a), (b) or (c); or
34. (e) has the consent of a person mentioned in paragraph (a), (b), (c) or (d) to make a Convention application based on that basic application.
35. Convention application means a patent application made under Part 1 of Chapter 3.
36. Convention country has the meaning given by section 29B.
37. depositary institution means a body or institution that receives, accepts and stores micro-organisms and furnishes samples of micro-organisms.
38. deposit requirements means the requirements specified in paragraphs 6(a) to (d), inclusive.
39. Deputy Commissioner means a Deputy Commissioner of Patents.
40. Designated Manager has the meaning given by section 200A.
41. Director means the Director of Safeguards.
42. director of a company has the same meaning as in the Corporations Act 2001.
43. Director-General of IP Australia means the SES employee who holds or performs the duties of the position of Director-General of IP Australia.
44. eligible importing country means a foreign country of a kind prescribed by regulation.
45. Note: A regulation made for the purposes of this definition may make provision in relation to a matter by applying, adopting or incorporating, with or without m
46. eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.
47. employee means a person, other than the Commissioner or a Deputy Commissioner, who:
48. (a) is a person engaged under the Public Service Act 1999 and is employed in the Patent Office; or
49. (b) is not such a person but performs services, in the Patent Office, for or on behalf of the Commonwealth.
50. examination means:
51. (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;
52. (b) in relation to an innovation patent—an examination of the complete specification relating to the patent under section 101B.
53. exclusive licensee means a licensee under a licence granted by the patentee and conferring on the licensee, or on the licensee and persons authorised by the lic
54. exploit, in relation to an invention, includes:
55. (a) where the invention is a product—make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import i
56. (b) where the invention is a method or process—use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such us
57. exploited for Crown purposes has the meaning given by subsection 160A(1).
58. Federal Court means the Federal Court of Australia.
59. file means file with the Patent Office.
60. Note: See also section 214.
61. foreign aircraft means an aircraft registered in a prescribed foreign country.
62. foreign land vehicle means a land vehicle owned by a person ordinarily resident in a prescribed foreign country.
63. foreign vessel means a vessel registered in a prescribed foreign country.
64. formalities check means, in respect of an application for an innovation patent, the checking process undertaken under section 52 using the process set out in th
65. incorporated legal practice means a body corporate recognised under a law of the Commonwealth, a State or a Territory as an incorporated legal practice (however
66. incorporated patent attorney has the meaning given by subsection 198(10).
67. infringement proceedings means proceedings for infringement of a patent.
68. innovation patent means letters patent for an invention granted under section 62.
69. intellectual property advice has the meaning given by subsection 200(2C).
70. interested party, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent
71. international application has the same meaning as in the PCT.
72. international depositary authority has the same meaning as in the Budapest Treaty.
73. international filing date, in relation to an international application, means the date given to the international application as its international filing date u
74. invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes a
75. legal practitioner means a barrister or solicitor of the High Court or of the Supreme Court of a State or Territory.
76. legal representative, in relation to a deceased person, means a person to whom probate of the will of the deceased person, letters of administration of the esta
77. licence means a licence to exploit, or to authorise the exploitation of, a patented invention.
78. main invention has the meaning given in section 81.
79. New Zealand Commissioner of Patents means the person who holds or performs the duties of the office or position of Commissioner of Patents under or in accordanc
80. New Zealand Patents Minister means the Minister of New Zealand who:
81. (a) under the authority of a warrant; or
82. (b) with the authority of the Prime Minister of New Zealand;
83. is responsible for the administration of a law of New Zealand relating to the regulation of patent attorneys.
84. New Zealand patents official means a person:
85. (a) who is an employee in any part of the State services of New Zealand; and
86. (b) whose functions or duties relate to the administration of a law of New Zealand relating to patents for inventions.
87. nominated person means the person identified in a patent request as the person to whom the patent is to be granted.
88. non-infringement declaration means a declaration mentioned in subsection 125(1).
89. Official Journal means the official journal mentioned in section 222.
90. patent means a standard patent or an innovation patent.
91. patentable invention means an invention of the kind mentioned in section 18.
92. patent application means an application for a standard patent or an application for an innovation patent.
93. patent area means:
94. (a) Australia; and
95. (b) the Australian continental shelf; and
96. (c) the waters above the Australian continental shelf; and
97. (d) the airspace above Australia and the Australian continental shelf.
98. patent attorney director has the meaning given by subsection 198(11).
99. patented pharmaceutical invention, in relation to a pharmaceutical product, means:
100. (a) if the product is a patented product—the patented product; or
101. (b) if the product results from the use of a patented process—the patented process.
102. patented process means a process in respect of which a patent has been granted and is in force.
103. patented product means a product in respect of which a patent has been granted and is in force.
104. patentee means the person for the time being entered in the Register as the grantee or proprietor of a patent.
105. patent of addition means letters patent for an invention granted under Chapter 7 and includes, for the purposes of section 25, a patent of addition that has bec
106. Patent Office means the Patent Office established under this Act.
107. patent request means a request for the grant of a patent to a nominated person.
108. patents work has the meaning given by subsection 201A(2).
109. PCT means the Patent Cooperation Treaty signed at Washington on 19 June 1970, as that treaty is in force for Australia from time to time, together with the Regu
110. Note: The text of the Treaty is set out in Australian Treaty Series 1980 No. 6 ([1980] ATS 6). In 2011, the text of a Treaty in the Australian Treaty Series was
111. PCT application means an international application in which Australia is specified as a designated State under Article 4(1)(ii) of the PCT.
112. permit, in Chapter 15, has the same meaning as in the Safeguards Act.
113. pharmaceutical product means any patented product, or product manufactured through a patented process, of the pharmaceutical sector.
114. Example: Examples of a pharmaceutical product include:
115. (a) active ingredients necessary for manufacturing such a product; and
116. (b) diagnostic kits needed for using such a product.
117. pharmaceutical substance means a substance (including a mixture or compound of substances) for therapeutic use whose application (or one of whose applications)
118. (a) a chemical interaction, or physico-chemical interaction, with a human physiological system; or
119. (b) action on an infectious agent, or on a toxin or other poison, in a human body;
120. but does not include a substance that is solely for use in in vitro diagnosis or in vitro testing.
121. PPI is short for patented pharmaceutical invention.
122. PPI compulsory licence has the meaning given by section 136D.
123. PPI order has the meaning given by section 136D.
124. PPI order applicant has the meaning given by section 136D.
125. PPSA security interest (short for Personal Property Securities Act security interest) means a security interest within the meaning of the Personal Property Secu
126. Note 1: The Personal Property Securities Act 2009 applies to certain security interests in personal property. See the following provisions of that Act:
127. (a) section 8 (interests to which the Act does not apply);
128. (b) section 12 (meaning of security interest);
129. (c) Chapter 9 (transitional provisions).
130. Note 2: For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009.
131. preferred means:
132. (a) in relation to filing a document with the Patent Office—means the means specified under subsection 214A(4); or
133. (b) in relation to paying a fee—means the means specified under subsection 227AAA(4).
134. preliminary search and opinion, in relation to a patent request and complete specification relating to an application for a standard patent, means search and op
135. prescribed court means the Federal Court, the Supreme Court of a State, the Supreme Court of the Australian Capital Territory, the Supreme Court of the Northern
136. prescribed depositary institution means:
137. (a) an international depositary authority, whether in or outside Australia; or
138. (b) any other depositary institution in Australia that is prescribed for the purposes of this paragraph.
139. prior art base means:
140. (a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
141. (i) information in a document that is publicly available, whether in or out of the patent area; and
142. (ii) information made publicly available through doing an act, whether in or out of the patent area.
143. (b) in relation to deciding whether an invention is or is not novel:
144. (i) information of a kind mentioned in paragraph (a); and
145. (ii) information contained in a published specification filed in respect of a complete application where:
146. (A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the cl
147. (B) the specification was published on or after the priority date of the claim under consideration; and
148. (C) the information was contained in the specification on its filing date.
149. [Note: For the meaning of document see section 2B of the Acts Interpretation Act 1901.]
150. prior art information means:
151. (a) for the purposes of subsection 7(1)—information that is part of the prior art base in relation to deciding whether an invention is or is not novel; and
152. (b) for the purposes of subsection 7(3)—information that is part of the prior art base in relation to deciding whether an invention does or does not involve an
153. (c) for the purposes of subsection 7(5)—information that is part of the prior art base in relation to deciding whether an invention does or does not involve an
154. priority date has the meaning given by subsection 43(2).
155. prohibition order means an order under section 173.
156. provisional specification means a specification filed in respect of a provisional patent application.
157. receiving Office has the same meaning as in the PCT.
158. re-examination means:
159. (a) in relation to a complete specification relating to an application for a standard patent—the re-examination of the complete specification under Chapter 9; a
160. (b) in relation to an innovation patent—the re-examination of the innovation patent under Part 2 of Chapter 9A.
161. Register means the Register of Patents mentioned in section 186.
162. registered, in relation to a patent, means entered in the Register of Patents.
163. registered patent attorney means a person registered as a patent attorney under this Act.
164. Registrar of Companies of New Zealand means the person who holds or performs the duties of the office or position of Registrar of Companies under or in accordan
165. 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.
166. relevant authority means:
167. (a) in relation to the exploitation of an invention by or for the Commonwealth or an authority of the Commonwealth—the Commonwealth; or
168. (b) in relation to the exploitation of an invention by or for a State or an authority of a State—the State; or
169. (c) in relation to the exploitation of an invention by or for a Territory or an authority of a Territory—the Territory.
170. relevant international application, in Chapter 15, means an international application in relation to which the Patent Office is the receiving Office (even if Au
171. relevant Minister has the meaning given by subsection 163(5).
172. relevant proceedings, in relation to a patent, means court proceedings:
173. (a) for infringement of the patent; or
174. (b) for revocation of the patent; or
175. (c) in which the validity of the patent, or of a claim, is in dispute.
176. rules relating to micro-organisms means such provisions of the Budapest Treaty, and such provisions made by or under regulations made under section 228, as are
177. Safeguards Act means the Nuclear Non-Proliferation (Safeguards) Act 1987.
178. services of a relevant authority has a meaning affected by subsection 160A(4).
179. specification, in relation to an international application, means the description, claims, drawings, graphics and photographs contained in the application.
180. standard patent means letters patent for an invention granted under section 61.
181. Statute of Monopolies means the Imperial Act known as The Statute of Monopolies.
182. supply includes:
183. (a) supply by way of sale, exchange, lease, hire or hire-purchase; and
184. (b) offer to supply (including supply by way of sale, exchange, lease, hire or hire-purchase).
185. Territory means a Territory in which this Act applies or to which this Act extends.
186. therapeutic use means use for the purpose of:
187. (a) preventing, diagnosing, curing or alleviating a disease, ailment, defect or injury in persons; or
188. (b) influencing, inhibiting or modifying a physiological process in persons; or
189. (c) testing the susceptibility of persons to a disease or ailment.
190. this Act includes the regulations.
191. TRIPS Agreement means the Agreement on Trade-Related Aspects of Intellectual Property Rights set out in Annex 1C to the Marrakesh Agreement establishing the Wor
192. Note: The WTO Agreement is in Australian Treaty Series 1995 No. 8 ([1995] ATS 8) and could in 2015 be viewed in the Australian Treaties Library on the AustLII w

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