WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
0RGANIZACI6N MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
of Intellectual Property Rights IP/N/1/AUS/C/2 
IP/N/1/AUS/D/2 
IP/N/1/AUS/P/4 
IP/N/l/AUS/T/2 
17 June 1999 
(99-2464) 
Original: English/ 
anglais/ 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
AUSTRALIA 
The present document reproduces the text1 of the Intellectual Property Laws Amendment Act 1998, 
amending the Copyright Act 1968 (see document IP/N/l/AUS/C/1), the Designs Act 1906 (see document 
IP/N/l/AUS/D/1), the Patents Act 1990 (see document IP/N/l/AUS/P/1) and the Trade Marks Act 1995 (see 
document IP/N/l/AUS/T/1), as notified by Australia under Article 63.2 of the Agreement, by means of a 
communication from its Permanent Mission, dated 5 March 1999. 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA PROPRIETE 
INTELLECTUELLE NOTIFIEES AU TITRE DE L'ARTICLE 63:2 DE L'ACCORD 
AUSTRALIE 
Le present document contient le texte1 de la Loi de 1998 portant modification des Lois relatives a la 
propriete intellectuelle, qui modifie la Loi de 1968 sur le droit d'auteur (voir le document IP/N/l/AUS/C/1), la 
Loi de 1906 sur les dessins et modeles (voir le document IP/N/l/AUS/D/1), la Loi de 1990 sur les brevets (voir 
le document IP/N/1/AUS/P/l) et la Loi de 1995 sur les marques (voir le document IP/N/l/AUS/T/1), notifiee 
par l'Australie au titre de l'article 63:2 de l'Accord dans une communication de la Mission permanente de ce 
pays, datee du 5 roars 1999. 
Consejo de los Aspectos de los Derechos de Propiedad 
lntelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD INTELECTUAL 
NOTIFICADOS EN VIRTUD DEL PARRAFO 2 DEL ARTiCULO 63 DEL ACUERDO 
AUSTRALIA 
En el presente documento se reproduce el texto1 de la Ley de Modificaci6n de las Leyes sobre 
Propiedad Intelectual, por la que se modifica la Ley de Derecho de Autor de 1968 (vease el documento 
IP/N/l/AUS/C/1), la Ley de Dibujos y Modelos de 1906 (vease el documento IP/N/l/AUS/D/1), la Ley de 
Patentes de 1990 (ve~e el documento IP/N/1/AUS/P/1) y la Ley de Marcas de 1995 (vease el documento 
IP/N/l/AUS/T/1), notificada por Australia en virtud de lo dispuesto en el parrafo 2 del articulo 63 del Acuerdo, 
mediante una comunicaci6n de su Misi6n Permanente, de fecha 5 de marzo de 1999. 
1 In English only/En anglais seulement/En ingl~s solamente. IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/f/2 
Page2 
Intellectual Property Laws Amendment 
Act 1998 
No. 100, 1998 IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/l/AUS/P/4, IP/N/1/AUS/T/2 
Page3 
Intellectual Property Laws Amendment 
Act 1998 
No. 100, 1998 
An Act to amend the Copyright Act 1968, the 
Designs Act 1906, the Patents Act 1990 and the 
Trade Marks Act 1995, and for other purposes IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/T/2 
Page 4 
Contents 
l Short title ....................................................................................................... 1 
2 Commencement ............................................................................................. l 
3 Schedule(s) .................................................................................................... 2 
Schedule I-Extension of pharmaceutical patents 3 
Patents Act 1990 
Division 1-Petty patents 
Division 2-Standard patents relating to pharmaceutical 
substances 3 
3 
3 
70 Applications for extension of patent ........................................................... 3 
71 Form and timing of an application .............................................................. 4 
72 Notification and public inspection of application ....................................... 5 
73 Withdrawal of application ........................................................................... 5 
7 4 Acceptance or refusal of application ........................................................... 5 
75 Opposition to grant of extension ................................................................. 6 
76 Grantofextension ....................................................................................... 7 
76A Notification of extension to the Secretary, Health and Family 
Services .............................................................................................. 7 
77 Calculation of term of extension ................................................................. 7 
78 Exclusive rights of patentee are limited if extension granted ..................... 8 
79 Rights of patentee if extension granted after patent expires ....................... 9 
79A Commissioner not to make decision if court proceedings pending ......... 9 
83 Term of patent of addition ......................................................................... 10 
Schedule 2-Patent attorneys and trade marks attorneys 12 
Copyright Act 1968 
Designs Act 1906 12 
13 
44A Right of lien of patent attorney and trade marks attorney ...................... 13 
Patents Act 1990 13 
198 Registration of patent attorneys ............................................................... 14 
200A Designated Manager ............................................................................. 16 
202A Documents prepared by a member of a partnership ............................. 18 
227 A Professional Standards Board for Patent and Trade Marks 
Attorneys .......................................................................................... 18 
Trade Marks Act 1995 21 
212 Making and signing applications etc ....................................................... 22 
Intellectual Property Laws Amendment Act 1998 No. JOO, 1998 IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/f /2 
Page5 
·228A Registration of trade marks attorneys ................................................... 23 
2288 Deregistra,tion of trade marks attorneys ............................................... 24 
229 Privileges of tr~de marks attorney and patent attorney ........................... 24 
Schedule 3-Miscellaneous ~mendments of the Patents Act 
1990 2'6 
185 Com.missioner etc. not to prepare documents or search records ............. 26 
Intellectual Property La.ws Amendment Act 1998 No. JOO, 1998 ii IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/f/2 
Page6 
Intellectual Property Laws Amendment 
Act 1998 
No. 100, 1998 
An Act to amend the Copyright Act 1968, the 
Designs Act 1906, the Patents Act 1990 and the 
Trade Marks Act 1995, and for other purposes 
[Assented to 27 July 1998] 
The Parliament of Australia enacts: 
1 Short title 
This Act may be cited as the Intellectual Property Laws 
Amendment Act 1998. 
2 Commencement 
(1) Subject to this section, this Act commences on the day on which it 
receives the Royal Assent. 
(2) Subject to subsection (3), Schedule 1 commences on a day to be 
fixed by Proclamation. 
In1ellectual Property Laws Amendment Act 1998 No. 100, 1998 1 IP/N/1/ AUS/C/2, IP/N/l/AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/T/2 
Page7 
(3) If Schedule 1 does not commence under subsection (2) within the 
period of 6 months beginning on the day on which this Act 
receives the Royal Assent, Schedule 1 commences on the first day 
after the end of that period. 
(4) Subject to subsection (5), Schedule 2 commences on a day to be 
fixed by Proclamation. 
(5) If Schedule 2 does not commence under subsection (4) within the 
period of 6 months beginning on the day on which this Act 
receives the Royal Assent, Schedule 2 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. 
2 intellectual Property Laws Amendment Act 1998 No. 100, 1998 IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/T/2 
Page 8 
Extension of pharmaceutical patents Schedule I 
Schedule.1-Extension of pharmaceutical 
patents 
Patents Act 1990 
1 Section 3 (after the entry relating to "Australian continental 
shelf") 
Insert: 
Australian Register of Therapeutic Goods 
2 Before section 69 
Insert: 
Division I-Petty patents 
3 After section 69 
Insert: 
Division 2-Standard patents relating to pharmaceutical 
substances 
70 Applications for extension of patent 
(1) The patentee of a standard patent may apply to the Commissioner 
for an extension of the term of the patent if the requirements set 
out in subsections (2), (3) and (4) are satisfied. 
(2) Either or both of the following conditions must be satisfied: 
(a) one or more pharmaceutical substances per se must in 
substance be disclosed in the complete specification of the 
patent and in substance fall within the scope of the claim or 
claims of that specification; 
(b) one or more pharmaceutical substances when produced by a 
process that involves the use of recombinant DNA 
technology, must in substance be disclosed in the complete 
specification of the patent and in substance fall within the 
scope of the claim or claims of that specification. 
Intellectual Property Laws Amendment Act I998 No. JOO, 1998 3 Schedule 1 Extension of pharmaceutical patents IP/N/l/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/f /2 
Page9 
(3) Both of the following conditions must be satisfied in relation to at 
least one of those pharmaceutical substances: 
(a) goods containing, or consisting of, the substance must be 
included in the Australian Register of Therapeutic Goods; 
(b) the period beginning on the date of the patent and ending on 
the first regulatory approval date for the substance must be at 
least 5 years. 
Note: Section 65 sets out the date of a patent. 
(4) The term of the patent must not have been previously extended 
under this Division. 
(5) For the purposes of this section, the.first regulatory approval date, 
in relation to a pharmaceutical substance, is: 
( a) if no pre-TOA marketing approval was given in relation to 
the substance-the date of commencement of the first 
inclusion in the Australian Register of Therapeutic Goods of 
goods that contain, or consist of, the substance; or 
(b) if pre-TOA marketing approval was given in relation to the 
substance-the date of the first approval. 
( 6) For the purposes of this section, pre-TGA marketi.ng approval, in 
relation to a pharmaceutical substance, is an approval (however 
described) by a Minister, or a Secretary to a Department, to: 
(a) market the substance, or a product containing the substance, 
in Australia; or 
(b) import into Australia, for general marketing, the substance or 
a product containing the substance. 
71 Form and timing of an application 
Form of application 
(1) An application for an extension of the term of a standard patent 
must: 
(a) be in the approved form; and 
(b) be accompanied by such documents (if any) as are 
ascertained in accordance with the regulations; and 
4 Intellectual Property Laws Amendment Act 199~ No. JOO, 1998 IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/T/2 
Page 10 
Extension of pharmaceutical patents Schedule 1 
(c) be accompanied by such information (if any) as is 
ascertained in accordance with the regulations. 
For this purpose, document includes a copy of a document. 
Timing of application 
(2) An application for an extension of the term of a standard patent 
must be made during the term of the patent and within 6 months 
after the latest of the following dates: 
(a) the date the patent was granted; . 
(b) the date of commencement of the first inclusion in the 
Australian Register of Therapeutic Goods of goods that 
contain, or consist of, any of the phannaceutical substances 
referred to in subsection 70(3); 
(c) the date of commencement of this section. 
72 Notification and public inspection of application 
If a patentee makes an application for an extension of the term of a 
standard patent, the Commissioner must publish in the Official 
Journal a notice that the application has been made and is open to 
public inspection. 
73 Withdrawal of application 
(1) A patentee who has applied for an extension of the term of a 
standard patent may, by notice in writing to the Commissioner, 
withdraw the application. 
(2) If an application for an extension of Ll-ie term of a standard patent is 
withdrawn, the Commissioner must publish in the Official Journal 
a notice stating that the application has been withdrawn. 
74 Acceptance or refusal of application 
Acceptance 
(1) If a patentee of a. standard patent makes an application for an 
extension of the term of the patent, the Commissioner must accept 
the application if the Commissioner is satisfied that the 
Intellectual Property Laws Amendment Act 1998 No. JOO, 1998 5 Schedule 1 Extension of pharmaceutical patents IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUSff/2 
Page 11 
requirements of sections 70 and 71 are satisfied in relation to the 
application. 
(2) If the Commissioner accepts the application, the Commissioner 
must: 
(a) notify the applicant in writing of the acceptance; and 
(b) publish a notice of the acceptance in the Official Journal. 
Refusal 
(3) The Commissioner must refuse to accept the-application if the 
Commissioner is not satisfied that the requirements of sections 70 
and 71 are satisfied in relation to the application. 
( 4) If the Commissioner refuses to accept the application, the 
Commissioner must: 
(a) notify the applicant in writing of the reasons for the refusal; 
and 
(b) publish a notice of the refusal in the Official Journal. 
75 Opposition to grant of extension 
(1) The Minister or any other person may, in accordance with the 
regulations, oppose the grant of an extension of the term of a 
standard patent on the ground that one or more of the requirements 
of sections 70 and 71 are not satisfied in relation to the application 
for the extension. The Minister or other person may not oppose the 
grant of the extension on any other ground. 
(2) If the grant of an extension of the term of a standard patent is 
opposed, the Commissioner must decide the case in accordance 
with the regulations. 
(3) The Commissioner must give the applicant and the opponent a 
reasonable opportunity to be heard before deciding a case. 
(4) The applicant, and any opponent, may appeal to the Federal Court 
against a decision of the Commissioner under this section. 
6 lntellectual Property Laws Amendment Act 1998 No, JOO, 1998 IP/N/1/AUS/C/2, IP/N/l/AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/T/2 
Page 12 
76 Grant of extension Extension of pharmaceutical patents Schedule 1 
( 1) The Commissioner must grant an ex.tension of the tenn of a 
standard patent if: ~ 
(a) there is no opposition to the grant; or 
(b) in spite of opposition, the Commissioner's decision, or the 
decision on appeal, is that the ex.tension should be granted. 
(2) If the Commissioner grants an extension, the Commissioner must 
notify the applicant in writing of the grant and publish a notice of 
the grant in the Official Journal. 
76A Notification of extension to the Secretary, Health and Family 
Services 
In respect of each application for an ex.tension approved by the 
Commissioner under section 76 in a financial year, the patent 
holder must lodge with the Secretary of the Department, before the 
end of the following financial year, a return setting out the 
following information: 
(a) details of the amount and origin of any Commonwealth funds 
spent in the research and development of the drug which was 
the subject of the application; and 
(b) the name of any body: 
(i) with which the applicant has a contractual agreement; 
and 
(ii) which is in receipt of Commonwealth funds; and 
(c) the total amount spent on each type ofresearch and 
development, including pre-clinical research and clinical 
trials, in respect of the drug which was the subject of the 
application. 
77 Calculation of term of extension 
( 1) If the Commissioner grants an ex.tension of the term of a standard 
patent, the term of the ex.tension is equal to: 
(a) the period beginning on the date of the patent and ending on 
the earliest first regulatory approval date (as defined by 
Intellectual Property Laws Amendment Act 1998 No. JOO, 1998 7 Schedule 1 Extension of pharmaceutical patents IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/i/ AUS/f /2 
Page 13 
section 70) in relation to any of the pharmaceutical 
substances referred to in subsection 70(2); 
reduced (but not below zero) by: 
(b) 5 years. 
Note: Section 65 sets out the date of a patent. 
(2) However, the term of the extension cannot be longer than 5 years. 
78 Exclusive rights of patentee are limited if extension granted 
(1) If the Commissioner grants an extension of the term of a standard 
patent, the exclusive rights of the patentee during the term of the 
extension are not infringed: 
(a) by a person exploiting: 
(i) a pharmaceutical substance per se that is in substance 
disclosed in the complete specification of the patent and 
in substance falls within the scope of the claim or 
claims of that specification; or 
(ii) a pharmaceutical substance when produced by a process 
that involves the use of recombinant DNA technology, 
that is in substance disclosed in the complete 
specification of the patent and in substance falls within 
the scope of the claim or claims of that specification; 
for a purpose other than therapeutic use; or 
(b) by a person exploiting any form of the invention other than: 
(i) a pharmaceutical substance per se that is in substance 
disclosed in the complete specification of the patent and 
in substance falls within the scope of the claim or 
claims of that specification; or 
(ii) a pharmaceutical substance when produced by a process 
that involves the use of recombinant DNA technology, 
that is in substance disclosed in the complete 
specification of the patent and in substance falls within 
the scope of the claim or claims of that specification. 
(2) If the Commissioner grants an extension of the term of a standard 
patent, the exclusive rights of the patentee after the grant of the 
extension are not infringed by a person explojting: 
8 lntellecrual Property laws Amendment Act 1998 No. 100, 1998 IP/N/l/AUS/C/2, IP/N/l/AUS/D/2, 
IP/N/l/AUS/P/4, IP/N/1/AUS/T/2 
Page 14 
Extension of pharmaceutical patents Sc,hedule 1 
(a) a pharmaceutical substance per se that is in substance 
disclosed in the complete specification of the patent and in 
substance falls within the scope of the claim or claims of that 
specification; or 
(b) a pharmaceutical substance when produced by a process that 
involves the use of recombinant DNA technology, that is in 
substance disclosed in the complete specification of the 
patent and in substance falls within the scope of the claim or 
claims of that specification; 
solely for purposes in connection with: 
(c) having goods included in the Australian Register of 
Therapeutic Goods, where the goods are intended for 
therapeutic use; or 
(d) obtaining similar regulatory approval under a law of a 
foreign country or of a part of a foreign country. 
79 Rights of patentee if extension granted after patent expires 
If: 
(a) a patentee applies for an extension of the term of a standard 
patent; and 
(b) the term of the patent expires before the application is 
determined; and 
(c) the extension is granted; 
the patentee has, after the extension is granted, the same rights to 
start proceedings in respect of the doing of an act during the 
period: 
(d) commencing on the expiration of the term of the patent; and 
(e) ending on the day on which the extension was granted; 
as if the extension had been granted at the time when the act was 
done. 
79A Commissioner not to make decision if court proceedings 
pending 
If: 
(a) a patentee of a standard patent applies for an extension of the 
term of the patent; and 
Intellectual Property lAws Amendment Act 1998 No. 100, 1998 9 Schedule 1 Extension of phannaceutical patents IP/N/1/AUS/C/2, IP/N/l/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUSff/2 
Page 15 
(b) relevant proceedings in relation to the patent are pending; 
the Commissioner must not make any decision under this Division 
in relation to the patent without the leave of the court. 
4 Section 83 
Repeal the section, substitute: 
83 Term of patent of addition 
Usual tenn 
(1) The general rule is that a patent of addition remains in force for so 
long as the patent for the main invention remains in force. 
However, this rule is subject to the exceptions set out in 
subsections (3) and (4). 
(2) The term of a patent of addition may be extended under Division 2 
of Part 3 of Chapter 6, even though the patent for the main 
invention is not extended under that Division. 
Patent of addition extended 
(3) If the term of a patent of addition is extended under Division 2 of 
Part 3 of Chapter 6: 
(a) the extension begins at the end of the unextended term of the 
patent for the main invention; and 
(b) when the el(tension begins, the patent of addition becomes an 
independent patent. 
Patent for main invention extended 
(4) If: 
(a) the term of the patent for the main invention is extended 
under Division 2 of Part 3 of Chapter 6; and 
(b) the term of the patent of addition is not extended under that 
Division; 
the term of the patent of addition expires at the end of the 
unextended term of the patent for the main invention. 
10 Intellectual Property Laws Amendment Act 1998 No. 100, 1998 IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/T/2 
Page 16 
Extension of pharmaceutical patents Schedule 1 
5 Paragraph .224(1 )(a) 
Omit "subsection 103(2),", substitute "subsection 74(3) or 103(2),". 
6 Schedule 1 
Insert: 
Australian Register of Therapeutic Goods means the register 
maintained under section 17 of the Therapeutic Goods Act 1989. 
7 Schedule 1 (definition of patent of addition) 
Omit "84", substitute "83". 
8 Application of amendments 
The amendments made by this Schedule apply to: 
(a) standard patents granted on or after the commencement of 
this item; and 
(b) standard patents granted before the commencement of this 
item (other than a standard patent granted for a term of 16 
years and whose tenn at the time of the grant was due to end 
before 1 July 1995). 
Intellectual Property lAws Amendment Act /998 No. 100, 1998 11 IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/l/AUS/P/4, IP/N/1/AUSff/2 
Page 17 
Schedule 2 Patent attorneys and trade marks attorneys 
Schedule 2-Patent attorneys and trade marks 
attorneys 
CopyrightAct 1968 
1 Subsection 43(2) 
Repeal the subsection, substitute: 
(2) A fair dealing with a literary, dramatic, musical or artistic work 
does not constitute an infringement of the copyright in the work if 
it is for the purpose of the giving of professional advice by: 
(a) a legal practitioner; or 
(b) a person registered as a patent attorney under the Patents Act 
1990; or 
(c) a person registered as a trade marks attorney under the Trade 
Marks Act 1995. 
2 At the end of paragraph 104(a) 
Insert "or". 
3 Paragraphs 104(b) and (c) 
Repeal the paragraphs, substitute: 
(b) for the purpose of seeking professional advice from: 
(i) a legal practitioner; or 
(ii) a person registered as a patent attorney under the 
Patents Act 1990; or 
(iii) a person registered as a trade marks attorney under the 
Trade Marks Act 1995; or 
(c) for the purpose of, or in the course of, the giving of 
professional advice by: 
(i) a legal practitioner; or 
(ii) a person registered as a patent attorney under the 
Patents Act 1990; or 
(iii) a person registered as a trade marks attorney under the 
Trade Marks Act 1995. 
12 Intellectual Properry laws Amendment Act 1998 No. JOO, 1998 IP/N/1/AUS/C/2, IP/N/l/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/T/2 
Page 18 
Designs Act 1906 
4 Subsection 4(1) 
Insert: Patent attorneys and trade marks attorneys Schedule 2 
patent attorney means a person registered as a patent attorney 
under the Patents Act 1990. 
5 Subsection 4(1) 
Insert: 
trade marks attorney means a person registered as a trade marks 
attorney under the Trade Marks Act 1995. 
6 Section 32G 
Omit "or a patent attorney", substitute", a patent attorney or a trade 
marks attorney". 
Note: The heading to section 32G is altered by omitting "or patent attorney" and substituting 
", patent attorney or trade marks attorney". 
7 Section 44 
Omit "Subject to the regulations the Registrar may permit any agent to 
do,", substitute "An agent may,". 
8 Section 44 
Before "any act", insert "do". 
9 After section 44 
Insert: 
44A Right of lien of patent attorney and trade marks attorney 
The regulations may provide that a patent attorney or a trade marks 
attorney has, in relation to documents and property of a client in a 
matter relating to designs, the same right of lien that a solicitor has 
in relation to the documents and property of a client. 
Patents Act 1990 
Intellectual Property Laws Amendment Act 1998 No. JOO. 1998 13 Schedule 2 Patent attorneys and trade marks attorneys IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/T/2 
Page 19 
10 Section 3 (after the entry relating to "Deputy 
Commissioner") 
Insert: 
Designated Manager 
11 Section 3 (after the entry relating to "prior art 
information") 
Insert: 
Professional Standards Board 
12 Section 3 (after the entry relating to "registered") 
Insert: 
registered patent attorney 
13 Section 198 
Repeal the section, substitute: 
198 Registration of patent attorneys 
(1) A Register of Patent Attorneys is to be kept by the Designated 
Manager. 
Note: Designated ,\,Janager is defined by section 200A. 
(2) The Register of Patent Attorneys may be kept wholly or partly by 
use of a computer. 
(3) If the Register of Patent Attorneys is kept wholly or partly by use 
of a computer, references in this Act to an entry in the Register of 
Patent Attorneys are to be read as including references to a record 
of particulars kept by use of the computer and comprising the 
Register of Patent Attorneys or part of the Register of Patent 
Attorneys. 
( 4) The Designated Manager must register as a patent attorney a 
person who: 
(a) is ordinarily resident in Australia; and 
(b) holds such qualifications as are specified in, or ascertained in 
accordance with, the regulations; and 
14 lnrellectual Properry l.Aws Amendment Act 1998 No. JOO, 1998 IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
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Page 20 
Patent attorneys and trade marks attorneys Schedule 2 
(c) has been employed as prescribed for not less than the 
prescribed period; and 
(d) is of good fame, integrity and character; and 
(e) has not been convicted of a prescribed offence during the 
previous 5 years; and 
(f) is not under sentence of imprisonment for a prescribed 
offence. 
The registration is to consist of entering the person's name in the 
Register of Patent Attorneys. 
(5) A qualification specified in, or ascertained in accordance with, 
regulations made for the purposes of paragraph (4)(b) may consist 
of passing an examination conducted by the Professional Standards 
Board. This subsection does not limit paragraph (4)(b). 
(6) Paragraphs (4)(e) and (f) do not limit paragraph (4)(d). 
(7) For the purposes of this section, a person is taken to be ordinarily 
resident in Australia if: 
(a) the person has his or her home in Australia; or 
(b) Australia is the country of his or her permanent abode even 
though he or she is temporarily absent from Australia; 
but the person is taken not to be ordinarily resident in Australia if 
he or she resides in Australia for a special or temporary purpose 
only. 
(8) A reference in this section to conviction of an offence includes a 
reference to the making of an order under section 19B of the 
Crimes Act 1914, or a corresponding provision of a law of a State 
or a Territory, in relation to the offence. 
14 Section 200 
Omit "patent attorney" (wherever occurring), substitute "registered 
patent attorney". 
15 Subsection 200(2) 
Omit "his or her client," (first occurring), substitute "the attorney's 
client in intellectual property matters,". 
Intellectual Property LQ.ws Amendment Act 1998 No. JOO, 1998 /5 Schedule 2 Patent attorneys and trade marks attorneys 
16 At the end of section 200 
Add: 
( 4) In this section: 
intellectual property matters means: 
(a) matters relating to patents; or 
(b) matters relating to trade marks; or 
(c) matters relating to designs; or 
(d) any related matters. 
17 After section 200 
Insert: 
200A Designated Manager IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/f /2 
Page 21 
For the purposes of this Act, a person is the Designated ivf anager 
if: 
(a) the Secretary to the Department has, in writing, declared that 
the holder or occupier of a specified Senior Executive 
Service office or position is the Designated Manager; and 
(b) the person holds or occupies, or is performing the duties of, 
that office or position. 
18 Subsection 201 (2) 
Omit "each member", substitute "at least one member". 
19 Subsection 201 (4) 
Repeal the subsection, substitute: 
( 4) The members of a partnership must not describe the partnership, or 
hold the partnership out, or permit the partnership to be described 
or held out, as patent attorneys, or agents for obtaining patents, 
unless at least one member is a registered patent attorney. 
Penalty: 30 penalty units. 
20 Subsection 201 (7) 
16 Intellectual Property Laws AmendmenJ Act 1998 No. JOO, 1998 IP/N/1/ AUS/C/2, IP/N/1/ AUS(D/2, 
IP/N/I/AUS/P/4, IP/N/1/AUS/T/2 
Page 22 
Patent attorneys and trade marks attorneys Schedule 2 
Repeal the subsection, substitute: 
(7) For the purposes gf this section, a person or company is taken to 
carry on business, practise or act as a patent attorney if, and only if, 
the person or company does, or undertakes to do, on behalf of 
someone else, any of the following in Australia for gain: 
(a) applying for or obtaining patents in Australia or anywhere 
else; 
(b) preparing specifications or other documents for the purposes 
of this Act or the patent law of another country; 
(c) giving advice (other than advice of a scientific or technical 
nature) about the validity, or infringement, of patents. 
(8) A person does not commit an offence against subsection (1) in 
respect of anything done, or undertaken to be done, by the person 
in the capacity of employee for: 
(a) in any case-the person's employer; or 
(b) if the person's employer is a member of a related company 
group-another member of the group. 
(9) A company that is a member of a related company group does not 
commit an offence against subsection (5) in respect of anything 
done, or undertaken to be done, by the company for another 
member of the group. 
(10) In this section: 
related company group means a group of 2 or more companies, 
where each member of the group is related to each other member 
of the group. 
(11) for the purposes of this section, the question of whether a 
company is related to another company is to be determined in the 
same manner as that question is determined under the Corporations 
Law. 
21 After section 202 
Insert: 
Intellectual Properry l.Aws Amendment Act 1998 No. 100, 1998 17 Schedule 2 Patent attorneys and trade marks attorneys IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/f/2 
Page 23 
202A Documents prepared by a member of a partnership 
A person who is: 
(a) a member of a partnership; and 
(b) not a registered patent attorney; 
must not prepare a specification, or a document relating to an 
amendment of a specification, unless: 
(c) the person is acting under the instructions or supervision of a 
registered patent attorney; or 
(d) the amendment has been directed by an order under section 
105. 
Penalty: 30 penalty units. 
22 Section 204 
After "202", insert", 202A". 
23 Section 213 
Omit "person entitled under this Act to practise as a patent attorney", 
substitute "registered patent attorney". 
24 Section 220 
Omit "patent attorney", substitute "registered patent attorney". 
25 Paragraph 224(1)(b) 
Repeal the paragraph, substitute: 
(b) a decision of the Designated Manager under section 198 not 
to register a person as a patent attorney; or 
26 After section 227 
Insert: 
227 A Professional Standards Board for Patent and Trade Marks 
Attorneys 
( 1) The Professional Standards Board for Patent and Trade Marks 
Attorneys is established. 
18 Intellectual Property Laws Amendmerll Act 1998 No. 100, 1998 IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/T/2 
Page24 
Patent attorneys and trade marks attorneys Schedule 2 
(2) The Professional Standards Board has the following functions: 
(a) such functions as are conferred on the Professional Standards 
Board by this Act or the Trade Marks Act 1995; 
(b) such functions as are conferred on the Professional Standards 
Board by regulations made for the purposes of any of the 
following provisions: 
(i) paragraph 198( 4 )(b) of this Act ( which deals with the 
qualifications of patent attorneys); 
(ii) section 199 of this Act (which cl~als with the 
deregistration of patent attorneys); 
(iii) paragraph 228(2)(r) of this Act (which deals with the 
professional conduct of patent attorneys); 
(iv) paragraph 228A(4)(a) of the Trade Marks Act 1995 
(which deals with the qualifications of trade marks 
attorneys); 
(v) section 228B of the Trade Marks Act 1995 (which deals 
with the deregistration of trade marks attorneys); 
(vi) paragraph 231(2)(ha) of the Trade Marks Act 1995 
(which deals with the professional conduct of trade 
marks attorneys); 
(c) to do anything incidental to or conducive to the performance 
of any of the above functions. 
(3) The regulations may make provision for and in relation to: 
(a) the constitution and membership of the Professional 
Standards Board; and 
(b) the manner in which the Professional Standards Board is to 
perform its functions; and 
(c) the procedure to be followed at or in relation to meetings of 
the Professional Standards Board, including (but not limited 
to) matters with respect to: 
(i) the convening of meetings of the Board; and 
(ii) the number of members of the Board who are to 
constitute a quorum; and 
(iii) the selection of a member of the Board to preside at a 
meeting of the Board; and 
Intellectual Property Laws Amendment Act 1998 No. JOO, 1998 19 Schedule 2 Patent attorneys and trade marks attorneys IP/N/l/AUS/C/2, IP/N/l/AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/T/2 
Page 25 
. (iv) the manner in which questions arising at a meeting of 
the Board are to be decided . 
., 
· (4) A member of the Professional Standards Board is to be paid such 
remuneration as is determined by the Remuneration Tribunal. If no 
determination of that remuneration by the Tribunal is in operation, 
the member is to be paid such remuneration as is prescribed. 
(5) A member of the Professional Standards Board is to be paid such 
allowances as are prescribed. 
(6) Subsections (4) and (5) have effect subject to the Remuneration 
Tribunal Act 1973. 
27 Schedule 1 
Insert: 
Designated Manager has the meaning given by sectio.n 200A. 
28 Schedule 1 
Insert: 
Professional Standards Board means the Professional Standards 
Board for Patent and Trade Marks Attorneys estabHshed by section 
227A. 
29 Schedule 1 (definition of registered) 
Repeal the definition, substitute: 
registered, in relation to a patent, means entered in the Register of 
Patents. 
30 Schedule 1 
Insert: 
registered patent attorney means a person registered as a patent· 
attorney under this Act. 
31 Transitional-Register of Patent Attorneys 
20 Intellectual Property Laws Amendment Act 1998 No. 100, 1998 IP/N/l/AUS/C/2, IP/N/l/AUS/D/2, 
IP/N/l/AUS/P/4, IP/N/1/AUS/T/2 
Page 26 
Patent attorneys and trade marks attorneys Schedule 2 
After the commencement of this item, the Register of Patent Attorneys 
kept under section 198 of the Patents Act 1990 (as in force immediately 
before that commencement) is taken to form part of the Register of 
Patent Attorneys kept under section 198 of that Act as amended by this 
Schedule. 
32 Transitional-registered patent attorneys 
(1) This item applies to a person who was, immediately before the 
commencement of this item, a registered patent attorney within the 
meaning of the Patents Act 1990. 
(2) The Patents Act 1990 has effect, after the commencement of this item, 
in relation to the person, as if the person had been registered as a patent 
attorney under section 198 of the Patents Act 1990 as amended by this 
Schedule. 
Trade Marks Act 1995 
33 Section 6 
Insert: 
registered trade marks attorney means a person registered as a 
trade marks attorney under this Act. 
34 Subsection 129(6) 
After "a lawyer", insert", registered trade marks attorney". 
35 Subsection 129(6) (note) 
After "lawyer", insert", registered trade marks attorney". 
36 Section 155 (except note 4) 
Repeal the section. 
37 Section 155 (note 4) 
Relocate the note to the end of subsection 156(2). 
38 Subsection 156(1) 
Intellectual Property Laws Amendment Act 1998 No. 100,,1998 21 Schedule 2 Patent attorneys and trade marks attorneys 
Repeal the subsection, substitute: IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/l/AUS/P/4, IP/N/1/ AUS/T/2 
Page 27 
(1) A person must not describe himself or herself, or hold himself or 
herself out, or perrcit himself or herself to be described or held out, 
as a trade marks attorney unless the person is a registered trade 
marks attorney. 
Penalty: 30 penalty units. 
Note l: The Reader's Guide gives information about penalties (see the 
paragraphs under the subheading Crimes Act 1914). 
Note 2: For registered trade marks attorney, see section 6. 
39 Subsection 156(2) 
Omit all the words from and including "held out," to and including 
"unless the person is", substitute "held out, as a trade marks agent 
unless the person is a registered trade marks attorney or". 
40 Subsection 156(2) {note 2) 
After "lawyer", insert", registered trade marks attorney". 
41 Subsection 156(2) {note 3} 
Repeal the note. 
42 Subsection 156(5) 
Repeal the subsection. 
43 Section 212 
Repeal the section, substitute: 
212 Making and signing applications etc. 
An application, notice or request required or permitted under this 
Act to be made or signed by a person may be made or signed, on 
behalf of that person, by any other person. 
44 After section 228 
Insert: 
22 Intellectual Property laws Amendmenl Act 1998 No. 100, 1998 IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/T/2 
Page 28 
Patent attorneys and trade marks attorneys Schedule 2 
228A Registration of trade marks attorneys 
(1) A Register of Traq,e Marks Attorneys is to be kept by the 
Designated Manager. 
Note: Designated Manager is defined by subsection (9). 
(2) The Register of Trade Marks Attorneys may be kept wholly or 
partly by use of a computer. 
(3) If the Register of Trade Marks Attorneys is kept wholly or partly 
by use of a computer, references in this Act to an entry in the 
Register of Trade Marks Attorneys are to be read as including 
references to a record of particulars kept by use of the computer 
and comprising the Register of Trade Marks Attorneys or part of 
the Register of Trade Marks Attorneys. 
( 4) The Designated Manager must register as a trade marks attorney a 
person who: 
(a) holds such qualifications as are specified in, or ascertained in 
accordance with, the regulations; and 
(b) is of good fame, integrity and character; and 
(c) has not been convicted of a prescribed offence during the 
previous 5 years; and 
(d) is not under sentence of imprisonment for a prescribed 
offence. 
The registration is to consist of entering the person's name in the 
Register of Trade Marks Attorneys. 
(5) A qualification specified in, or ascertained in accordance with, 
regulations made for the purposes of paragraph (4)(a) may consist 
of passing an examination conducted by the Professional Standards 
Board. This subsection does not limit paragraph (4)(a). 
(6) Paragraphs (4)(c) and (d) do not limit paragraph (4)(b). 
(7) A person may apply to the Administrative Appeals Tribunal for 
review of a decision of the Designated Manager not to register the 
person as a trade marks attorney. 
(8) A reference in this section to conviction of an offence includes a 
reference to the making of an order under section 19B of the 
Intellectual Properry Laws Amendment Act 1998 No. 100, 1998 23 Schedule 2 Patent attorneys and trade marks attorneys IP/N/1/AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/f /2 
Page29 
Crimes Act 1914, or a corresponding provision of a law of a State 
or a Territory, in relation to the offence. 
(9) In this section: 
Designated Manager has the same meaning as in the Patents Act 
1990. 
Professional Standards Board has the same meaning as in the 
Patents Act 1990. 
228B Deregistration of trade marks attorneys 
The name of the person registered as a trade marks attorney may 
be removed from the Register of Trade Marks Attorneys in the 
prescribed manner and on the prescribed grounds. 
45 Section 229 
Repeal the section, substitute: 
229 Privileges of trade marks attorney and patent attorney 
(1) A communication between a registered trade marks attorney and 
the attorney's client in intellectual property matters, and any record 
or document made for the purposes of such a communication, are 
privileged to the same extent as a communication between a 
solicitor and his or her client. 
(2) The regulations may provide that a registered trade marks attorney 
or a patent attorney has, in relation to documents and property of a 
client in a matter relating to trade marks, the same right of lien that 
a solicitor has in relation to the documents and property of a client. 
(3) In this section: 
intellectual property matters means: 
(a) matters relating to patents; or 
(b) matters relating to trade marks; or 
(c) matters relating to designs; or 
(d) any related matters. 
24 Intellectual Property Laws Amendment Act 1998 No. /00, 1998 IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/f/2 
Page 30 
Patent attorneys and trade marks attorneys Schedule 2 
46 After paragraph 231 (2)(h) 
Insert: 
(ha) provide for the control of the professional conduct of 
registered trade marks attorneys and the practice of the 
profession and, for that purpose, make provision for and in 
relation to all or any of the following: 
(i) making complaints, and hearing charges, against 
registered trade marks attorneys about their professional 
conduct; 
(ii) imposing penalties on registered trade marks attorneys 
(including issuing a reprimand and suspending or 
cancelling registration); 
(iii) summoning witnesses; 
(iv) requiring persons to give evidence on oath (whether 
orally or otherwise); 
(v) administering oaths to persons giving evidence (whether 
orally or otherwise); 
(vi) requiring persons to produce documents or articles; and 
Intellectual Property IAws Amendment Act 1998 No. 100, 1998 25 IP/N/1/ AUS/C/2, IP/N/1/ AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/T/2 
Page 31 
Schedule 3 Miscellaneous amendments of the Patents Act 1990 
Schedule 3-Miscellaneous amendments of 
the Patents Act 1990 
1 Subparagraph 6(c)(ii) 
Repeal the subparagraph. 
2 Section 185 
Repeal the section, substitute: 
185 Commissioner etc. not to prepare documents or search records 
The Commissioner, a Deputy Commissioner or an employee must 
not: 
(a) prepare, or help to prepare: 
(i) a specification; or 
(ii) any other document relating to a specification (other 
than a document which is in an approved form); 
unless the Commissioner, Deputy Com.missioner or the 
employee is the inventor in respect of the specification; or 
(b) search the records of the Patent Office otherwise than in his 
or her official capacity. 
Penalty: 10 penalty units. 
3 Subsection 227(5) 
Repeal the subsection, substitute: 
(5) If: 
(a) a fee (other than a renewal fee or a continuation fee) is 
payable under this Act by a person in respect of: 
(i) the doing of an act by someone other than the 
Commissioner; or 
(ii) the filing of a document; and 
(b) the Commissioner has, in accordance with the regulations, 
given the person a written notice under this paragraph in 
relation to the payment of that fee; and 
26 Intellectual Properry laws Amendment Act 1998 No. JOO, 1998 IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/AUS/P/4, IP/N/1/AUS/T/2 
Page 32 
Miscellaneous amendments of the Patents Act 1990 Schedule 3 
(c) the person fails to pay the fee within a prescribed period after 
the notice has been given to the person; 
then, for the purposes of this Act: 
(d) if paragraph (e) does not apply~the act is taken never to 
have been done, or the document is taken never to have been 
filed (as the case requires); or 
(e) in the case of a fee that is payable in respect of the filing of a 
patent request and the accompanied specification-the patent 
request and the specification are taken to have been filed but 
the application under section 29 to which the patent request 
relates lapses. 
Note: The consequence of failing to pay a continuation fee is provided for in 
paragraph 142(2)(d). The consequence of failing to pay a renewal fee 
is provided for in paragraph 143(a). 
(6) If, in accordance with subsection (5): 
(a) an act is taken never to have been done; or 
(b) a document is taken never to have been filed; or 
(c) a patent request and its accompanied specification are taken 
to have been filed but the application to which the patent 
request relates lapses; 
the Commissioner must, as soon as practicable, give written notice 
about that fact to: 
(d) the person referred to in paragraph (5)(a); and 
(e) any other persons considered by the Commissioner to be 
interested in the matter. 
4 Application 
Section 227 of the Patents Act 1990 as amended by item 3 of this 
Schedule applies only in relation to a fee payable under that Act in 
respect of the doing of an act or the filing of a document that is to occur 
on or after the commencement of that item. 
Intellectual Properry Laws Amendmem Act 1998 No. JOO, 1998 27 [Minister's second reading speech made ino 
House of Representatives on 26 November 1997 
Senate on 26 March 1998] 
(216/97) IP/N/1/AUS/C/2, IP/N/1/AUS/D/2, 
IP/N/1/ AUS/P/4, IP/N/1/ AUS/I'/2 
Page 33 
28 Intellectual Property Laws Amendmenl Act 1998 No. JOO, 1998