ORGANIZACIÓN MUNDIAL IP/N/1/AUS/P/l 
14 de noviembre de 1996 
DEL COMERCIO 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio (96-4820) 
Original: inglés 
NOTIFICACIÓN DE LEYES Y REGLAMENTOS DE CONFORMIDAD 
CON EL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
Australia 
En el presente documento se reproducen1 las leyes y reglamentos siguientes, notificados por 
Australia en virtud de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento 
IP/N/1/ AUS/1/Rev .1). 
Ley de Patentes de 1990, con las modificaciones introducidas por 
la Ley de Modificación de la Legislación sobre Industria, 
Tecnología y Comercio de 1991 ......................... . 
Ley de Modificación de la Legislación sobre Industria, Tecnología 
y Desarrollo Regional de 1994 .......................... . 
Ley de Modificación de la Legislación sobre Industria, Ciencia y 
Tecnología de 1994 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
Ley de Patentes (Modificaciones dimanantes del Acuerdo por el que 
se establece la Organización Mundial del Comercio) de 1994 . . . . . . . . 
1En inglés solamente. 2 
112 
117 
123 IP/N/1/ AUS/P/1 
Page 2 
in 
-!)\ AUSTRALIA,.t& ;J>}'))))~(((((i,..;. 
PATENTS ACT 1990 
Reprinted as al 30 April 1992 
TABLE OF PROVISIONS 
Section 
CHAPTER 1-INTRODUCTORY 
1. Short title 
2. Commencement 
3. Definitions 
4. What are typical steps in getting and maintaining a patent? 
5. Associated applications 
6. Deposit requirements 
7. Novelty and inventiva step 
8. Disclosure in basic applications 
9. Secret use 
1 O. Certain international applications to be taken to have been given an 
international filing date 
11. Act binds the Crown 
12. Application of Act 
CHAPTER 2-PATENT RIGHTS, OWNERSHIP AND VALIDITY 
PART 1 -PATENT RIGHTS 
13. Exclusive rights given by patent 
14. Assignment of patent 
PART 2-0WNERSHIP 
15. Who may be granted a patent? 
16. Co-ownership of patents 
17. Directions to co-owners 
18. Patentable inventions · 
19. Certiticate of validity PAAT 3-VALIDITY 
Division 1-Validity 
20. Validity of patent not guaranteed 
21. Validity not implied by making or refusal of non-infringement declaration ¡¡ 
Secüon Patents Act 1990 
TABLE OF PROVISIONS-continued 
Division 2-Matters not affecting validity IP/N/1/ AUS/P/1 
Page 3 
22. lnvalidily in relation to one claim not to atfect validity in relation to other 
claims 
23. Validity not affected by publication etc. after priority date 
24. Validity not affected by certain publication or use 
25. VaJidity: patents of addition 
26. Validity not atfected in certain cases involving amendments 
Division 3-Nolice of matters affecling validity 
27. Notice of matters affecting validity of standard patents 
28. Notice of matters affecting validity of petty patents 
CHAPTEA 3-FAOM APPLICATION TO ACCEPTANCE 
PAAT 1-PATENT APPLICATIONS 
Division 1 -Applications 
29. Application for patent 
30. Filing date 
31. Joint applicants 
32. Disputes betwee'l applicants etc. 
33. Applications by opponents etc. 
34. Applications by eligible persons arising out of court proceedings 
35. Applications by eligible persons following revocation by Commissioner 
36. Other applications by eligible persons 
37. Complete application may be treated as provisional 
38. Time for making complete application 
39. Divisional applications 
Division 2-Specifications 
40. Specifications 
41. Spacifications: micro-organisms 
42. Micro-organisms ceasing to be reasonably available 
Division 3-Priority dates 
43. Priority dates 
PART 2-EXAMINATION OF PATENT REQUESTS ANO 
SPECIFICATIONS 
Division 1-EJ<amination 
44. Request for examination 
45. Examination 
46. Request for deferment of examination 
Division 2-Modified examination 
47. Request for modified examination 
48. Modified examination IP/N/1/ AUS/P/1 
Page 4 
Patents Act 1990 
TABLE OF PROVISIONS-continued 
Section 
PART 3-ACCEPTANCE 
49. Acceptance of patent request: standard patent 
50. Consideration and acceptance of patent request: petty patent 
51. Application or grant may be refused in carta.in cases 
52. Appeal 
CHAPTER 4-PUBLICATION 
53. Publication of certain information about applicants etc. 
54. Notice of publication 
55. Documents open to public inspection 
56. Certain documents not to be published 
57. Effect of publication of complete specification 
58. Result of search may be disclosed 
CHAPTER 5-0PPOSITION 
59. Opposition to grant of standard patent 
60. Hearing and decision by Commissioner 
.¡; 
CHAPTER 6-GRANT ANO TEAM OF PATENTS 
PART 1-GRANT 
61. Grant of standard patent 
62. Grant and publication of petty patent 
63. Joint patentees · 
64. Grant: multiple applications 
65. Date of patent 
66. Sealing of duplicate of patent 
PART 2-TERM 
67. Term of standard patent 
68. T erm of petty patent 
PART 3-EXTENSION OF TERM 
Division 1-Petty patents 
69. Extension of term of petty patent 
Division 2-Standard patents ¡¡¡ 
70. Application for extension of term of patent relating to a pharmaceutical 
substance 
71. Application for extension to lapse in certain circumstances 
72. lssue of marketing approval certificate 
73. Advertisement of application for extension 
74. Opposition to extension 
75. Determination of application for extension 
76. Limitatiori on infringement proceedings n. Rights of patentee 
78. Appeals 
79. Delegation iv Patents Act 1990 
TABLE OF PROVISIONS-continued IP/N/1/AUS/P/l 
Page 5 
Section 
CHAPTER 7 -PATENTS OF AOOITION 
80. Chapter does not apply to petty patents 
81. Grant of patent of addition 
82. Revocation of patent and grant of patent of addition instead 
83. T erm of patent of addition 
84. Non-extension of term of patent for main invention 
85. Revocation of patent for main invention 
86. Renewal fees not payable 
87. Feas payable where patent of addition becomes an independent patent 
CHAPTER 8-PCT APPLICATIONS ANO CONVENTION APPLICATIONS 
PART 1-PCT APPLICATIONS 
88. PCT applications 
89. Modified application of Act 
90. Publication of PCT applications 
91. Application of certain provisions to PCT applications 
92. Notice of ,publication 
93. Evidence of matters arising under PCT 
PART 2-CONVENTION APPLICATIONS 
94. Convention applicants may make Convention applications 
95. Manner of making Convention application 
96. Withdrawn, abandonador refused applications 
CHAPTER 9-RE-EXAMINATION 
97. Re-examination of complete specifications 
98. Report on re-examination 
99. Statement by applicant or patentee 
1 OO. Copies of report to be given to court 
101. Revocation of patent following re-examination 
CHAPTER10-AMENDMENTS 
PART 1-AMENDMENTS THAT ARE NOT ALLOWABLE 
102. What amendments are not allowable? 
103. Consent of mortgagee or exclusive licensee needed 
PART 2-AMENDMENTS OF PATENT REQUESTS, SPECIFICATIONS 
ANO OTHER FILED DOCUMENTS 
104. Amendments by applicants and patentees 
105. Amendments directed by court 
106. Amendments directed by Commissioner: patents 
107. Amendments directed by Commissioner: patent applications 
108. Amendments directed by Commissioner: extensions of term of petty 
patents 
109. Appeal IP/N/1/ AUS/P/1 
Page 6 
Section Patents Act 1990 
TABLE OF PROVISIONS-continued 
PART 3-MISCELIJ\NEOUS 
11 O. Advertisement of amendment of complete specification 
111. Amendments relating to micro-organisms 
112. Pending proceedings 
113. Persons claiming under assignment or agreement 
114. Priority date of certain amended claims 
115. Restriction on recovery of damages etc. 
116. lnterpretation of amended specifications 
CHAPTER 11-INFRINGEMENT 
PART 1 -INFRINGEMENT ANO INFRINGEMENT PROCEEDINGS 
117. lnfringement by supply of products V 
118. lnfringement exemptions: use in or on foreign vessels. aircraft or vehicles 
119. lnfringement exemptions: prior use 
120. lnfringement proceedings 
121. Counter-claim for revocation of patent 
122. Relief for infringement of patent 
123. Jnnocent infringement 
PART 2-NON-INFRINGEMENT OECLARATIONS 
124. lnterpretation 
125. Application for non-infringement declaration 
126. Proceedings for non-infringement declarations 
127. Effect of non-infringement declarations 
PAAT 3-UNJUSTIFIED THREATS OF INFRINGEMENT PROCEEDINGS 
128. Application for relief from unjustified threats 
129. Court's power to grant relief 
130. Coun.ter-claim for infringement 
131. Notification of patent not a threat 
132. liability of legal practitioner or patent attorney 
CHAPTEA 12-COMPULSOAY LICENCES ANO REVOCATION OF 
PATENTS 
133. Compulsory licences 
134. Aevocation of standard patent atter grant of compulsory licence 
135. Reasonable requirements of the public 
·136. Orders to be consistent with international agreements 
137. Revocation on surrender of patent 
138. Revocation of patents in other circumstances 
139. Parties to proceedings 
140. Commissioner to be given copies of orders 
CHAPTER 13-WITHDAAWAL ANO LAPSING OF APPLICATIONS ANO 
CEASING OF PATENTS 
141. Withdrawal of applications 
142. Lapsing of applications 
143. Ceasing of patents vi Patents Act 1990 
TABLE OF PROVISIONS-continued IP/N/1/AUS/P/1 
Page 7 
Section 
CHAPTEA14-CONTRACTS 
1 «. Void conditions 
145. T ermination of contract after patent ceases to be in force 
146. Effect of Chapter 
CHAPTER 15-SPECIAL PROVISIONS RELATING TO ASSOCIATED 
TECHNOLOGY 
147. Certificate by Director as to associated technoklgy 
148. Lapsing etc. of applications 
149. · Aevocation of direction 
150. Restoration of lapsed application 
151 . Reinstatement of application as an international application 
152. Notice of prohibitions or restrictions on publication 
153. Effect of order 
CHAPTER 16-JURISDICTION ANO POWERS OF COURTS 
154. Jurisdiction of Federal Court 
155. Jurisdiction of other prescribed c.ourts 
156. Exercise of jurisdiction 
157. T ransfer of proceedings 
158. Appeals 
159; Commissioner may appear in appeals 
160. Powers of Federal Court 
CHAPTER 17-THE CROWN 
PART 1-INTRODUCTORY 
161 . Nominated persons and patentees 
162. Commonwealth and State authorities 
PART 2-EXPLOITATION BY THE CAOWN 
163. Exploitation of inventions by Crown 
164. Nominated person or patentee to be informad of exploitation 
165. Remuneration and terms far exploitation 
166. Previous agreements inoperative 
167. Sale of products 
168. Supply of products by Commonwealth to foreign countries 
169. Declarations that inventions have been exploited 
170. Sale of forfeited articles 
PART 3-ACQUISITIONS BY ANO ASSIGNMENTS TO THE CROWN 
171. Acquísition of inventions or patents by Commonwealth 
172. Assígnment of invention to Commonwealth 
PART 4-PROHIBITION ORDERS 
173. Prohibition of publication of information about inventions 
174. Etfect of prohibition orders 
175. Disclosure of inf ormation to Commonwealth authority 
176. lnternational applications treated as applications under this Act IP/N/1/ AUS/P/1 
Page 8 
Section Patents Act 1990 
TABLE OF PROVISIONS-continued 
CHAPTER 18-MISCELLANEOUS OFFENCES 
177. False representations about the Patent Office 
178. False representations about patents or patentad articles 
179. Failure to comply with summons 
180. Refusal to give evidence 
181. F ailure to produce documents or articles 
182. Otticers not to trattic in inventions 
183. Unauthorised disdosure of information by employees etc. 
184. _ Other unauthorised disclosures of information 
185. Employees etc. not to prepare documents or search records 
186. 
187. 
188. 
189. 
190. 
191. ,; 
192. 
193. 
194. 
195. 
196. 
197. CHAPTER 19-THE REGISTER ANO OFFICIAL DOCUMENTS 
Register of Patents 
Registration of particulars of patents etc. 
T rusts not registrable 
Power of patentee to deal with patent 
lnspection of Register 
False entries in Register 
Orders for rectification of Register 
lnspection of documents 
lnformation obtainable from Commissioner 
Evidence -the Register 
Evidence-unregistered particulars 
Evidence -certificate and copies of documents 
CHAPTER 20-PATENT ATIORNEYS 
PART 1-REGISTRATION, PRIVILEGES ANO PROFESSIONAL 
CONDUCT 
198. Registration of patent attorneys 
199. Deregistration 
200. Privileges 
PART 2-0FFENCES 
201. Offences: unregistered persons etc. 
202. Documents preparad by legal practitioners 
203. Attendance at patent attorney's office 
204. Time for starting prosecutions 
CHAPTER 21-ADMINISTRATION 
205. Patent Office and sub-offices 
206. Patent Office seal 
207. Commissioner of Patents 
208. Deputy Commissioner ot Patents 
209. Delegation of Commissioner's powers and functions 
210. Commissioner's powers 
211. Recovery of costs awarded by Commissioner vii viii Patents Act 1990 
TABLE OF PROVISIONS-continued 
Section 
CHAPTER 22-MISCELLANEOUS 
212. Copies of examination reports to be communicated 
213. Making and signing applications etc. 
214. Filing of documents 
215. Death of applicant or nominated person 
216. Exercise of discretionary power by Commissioner 
217. Assessors 
218. Costs where patent invalid in part 
219. Security for costs 
220. Costs of attendance of patent attorney 
221 . Service of documents 
222. Publication of Official Journal etc. 
223. Extensions of time 
224. Review of decisions 
225. Conduct of directors, servants and agents 
226. Reproduction of published specifications does not infringe copyright 
227. Fees 
228. Regulations 
229. Consequential amendments 
230. Repeal 
CHAPTER 23-TRANSITIONAL ANO SAVING$ PROVISIONS 
231 . Application of Part III of 1989 Amending Act 
232. Application of this Act: extensions of term 
233. Patents granted under 1952 Act 
234. Applications under 1952 Act 
235. Other applications and proceedings under 1952 Act 
236. Micro-organisms 
237. Orders, directions etc. under 1952 Act 
238. The Commissioner and Deputy Commissioner 
239. The Register of Patents and Register of Patent Attorneys 
240. Registered patent attorneys 
SCHEDULE 1 
DICTIONARY 
SCHEDULE 2 
CONSEQUENTIAL AMENDMENTS IP/N/1/ AUS/P/l 
Page 9 IP/N/1/ AUS/P/1 
Page 10 
PATENTS ACT 1990 
An Act relating to patenls of inventions 
CHAPTER 1-INTRODUCTORY 
Short title 
1. This Act may be cited as the Patents Act 1990.' 
Commencement 
2.1 (1) Subject to subsection (2), this Act commences on a day to 
be fixed by Proclamation. 
(2) lf this Act does not commence under subsection (1) within the 
period of 6 months beginning on the day on which it receives the 
Royal Assent, it commences on the first day after the end of that 
period. 
Definitions 
3. The following expressions are dcfined, for the purposes of this 
· Act or -of a particular Chapter of this Act, in the dictionary in 
Schedule 1: 
application 
approved form 
aM<>Ciated technology 
Australia 
Australian continental 
shelf 
authority 
basic application 
Budapest Treaty foreign vessel 
infringemenl 
proceedings 
interested party 
international 
application 
internationar 
depositary 
authority permit 
petty patent 
pharmaceutical 
substance 
prescribed court 
prcscribed depositary 
instilution 
prior art base 
prior art information s. 4 
claim 
commendng day 
Commissioner 
compensable persan 
complete specification 
compulsory licence 
Continental Shelf 
Convention 
Convention applicant 
Convention 
application 
Convention country 
deposit requirements 
depositary institution 
Deputy 
Commissioner 
Director ;; 
divisional application 
eligible person 
employee 
examination 
exclusive licensee 
exploit 
Federal Court 
file 
foreign aircraf°t 
foreign land vehicle Patents Act 1990 
international filing 
date 
invention 
legal practitioner 
legal representative 
licence 
main invention 
marketing approval 
marketing approval 
certificate 
modified examination 
nominated person 
non-infringement 
declaration 
Official Journal 
patent 
patent application 
patent area 
patent of addition 
Patent Office 
patent request 
patentable invention 
patented process 
patented product 
patentee 
PCT 
PCT application prohibition order 
provisional 
specification 
receiving Office 
re-examination 
Register 
registered 
relevant authority 
relevant international 
application 
relevant proceedings 
rules relating to 
micro-organisms 
Safeguards Act 
sèaled 
specification 
standard patent 
State 
Statute of 
Monopolies 
supply 
Territory 
therapeutic use 
this Act 
work 
1952 Act 
1989 Amending Act. 
What are typical steps in getting and malntaining a patent? IP/N/1/ AUS/P/1 
Page 11 
4. The following tables contain charts showing most of the typical 
steps involved in getting and maintaining a standard patent and petty 
patent. The charts are intended for use only as general introductory 
illustrations and are not intended to have any other effect. If there is 
any inconsist~ncy between any matter contained in the charts &nd a 
provision of this Act or the regulations, the provision prevails. IP/N/1/ AUS/P/1 
Page 12 
Patents Act 1990 
TABLE 1-GETTING AND MAINTAINING A STANDARD PATENT 
Fee payable. 
A complete application must be 
associated with a provisional 
application within the 
prescribed period. 
Provisionals which lapse at this 
stage are not published. 
Applicant may be requireJ to 
correct deficiencies. Application 
will lapse if applicanl does not 
comply. 
Continuation fees are 
prescribed and payable under 
the regulations. 
A.pplications lapse if 
continuation fees are not paid 
(see section /42). 
Applicant must request 
examination as directed or 
application will lapse (su 
section /42). 
Fee payable. 
Application lapses if patent 
request and com pie te 
specification not accepted 
within the prescribed period 
(see section 142). Patent application 
(provisional or complete) 
(sa .H!clion 29) 
Filing formalities 
Publication or prcscribed 
details in Official Journal 
Subject-matter of 
complete specification 
cla'iSified using International 
Patent Classification 
Abstracts prepared for 
search material 
Pay continuation fees 
for unaccepted 
patent requests 
Direction to request 
examination unless 
applicant has already 
done so (.see section 44) 
Request for examination 
Examination 
(su section 45> S. 4 S. 4 
Patents may 
be subject 
to revocation 
proceedings (see 
section 138) and 
re-examination 
(se,: seclion 97) 
Renewal fus 
are prescribed 
and payable 
under the 
regulations. 
Patent case if 
renewal fees are 
not paid (.see 
#CÛOII UJ) Patents Act 1990 
Favourable 
report IP/N/1/AUS/P/1 
Page 13 
Hearing leading 
to: 
Accept patent 
request and , .. ~----
complete specification 
lncorporate any accepted 
amendments: notice of 
acceptance to applicant: 
acceptance advertised in 
Official Journal . 
No opposition 
Patent granted 
(sealed) and Opposition (su 
secuons 59 and 60): 
may involve 
re-examination 
(see seclion 97) 
Hearing leading 
to: 
entered in , .. ~---- or 
Register: letters 
patent sent to 
patentee 
Annual renewal 
of patent or h I Paient req...; 1 --~--1.,~_ refused ~ 
Refusai to 
grant patent IP/N/1/ AUS/P/1 
Page 14 
Patents Act 1990 
S. 4 
TABLE 2-GETIING AND MAINTAINING A PETIY PATENT 
Fee payable. 
A complete 
application must be 
associated with 
a provisional 
application within 
the prescribed period. 
Provisionals which 
lapse at this stage 
are not published. 
Initial term is 12 
months 
(su section 68). 
Petty patents may 
be subject to 
revocation (su 
section 138) and 
re-e.xamination (su 
StcÛOII 97). Patent application 
(provisional or complete) 
(su section 29) 
Subject-matter of 
complete specification 
classified using 
International Patent 
Cla'i'iification 
Consideration of 
application: compliance 
with formai 
requirements checked 
(see sulion 50) 
Accept patent 
request and Adverse 
notification 
Hearin~~eadi ng 
complete specification .__ or 
(uc 1«tion 50) 
lncorporate any accepted amendmenta: 
petty patent granted (sealed): letters 
patent sent to patentee: notice in 
Official Journal that patent request 
and spedfication are open to public 
inspection (ue uction 62) 
Application for Refusai to accept 
patent request 
Notice ofmatters 
aff'ecting validity 
ofpeUy patent 
(uc uction 28) extension of initial 
12 montha' term 
(uc uctiora 69): 
feea payable for 
application and grant 
Hearing leading 
to: 
Reruaatto L 
es:tend ter~ 1 or E:1tenaion of term 
for total of6 yeara 
allowed: es:tenaion 
notified in 
Official Journal 
( ue uction 69) Patents Act 1990 
•. 5 IP/N/1/ AUS/P/1 
Page 15 
Assoclated applications 
S. For the purposes of this Act, a complete application is to be 
ta ken to be associated with a provisional application if, and only if, the 
patent request filed in respect of the complete application identifies 
the provisional application and contains a statement to the effect that 
the applications are associated. 
[Note.: see sections 29 and 38) 
Deposit requirements 
6. For the purposes of this Act, the deposit requirements are to be 
taken to be satisfied in relation to a micro-organism to which a 
specification relates if, and only if: 
(a) the micro-organism was, on or before the date of filing of the 
specification, deposited with a prescribed depositary institution 
in accordance with the rules relating to micro-organisms; and 
(b) the specification includes, at that date, such relevant informa­
tion on the characteristics of the micro-organism as is known 
to the applicant; and 
(c) at ail times since the end of the prescribed period, the speci­
fication 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 
(ii) the date on which the relevant deposit was made; and 
(iii) the file, accession or registration number of the de­
posit given by the institution; and 
(d) at ail times since the date of filing of the specification, samples 
· of the micro-organism have been obtainable from a prescribed 
depositary institution as provided by those rules. 
[ Note: see sections 41 and 42] 
Novelty and inventive step 
7. (1) For the purposes of this Act, an invention is to be taken to 
be novel when compared with the prior art base unless it is not novel 
in the light of any one of the following kinds of information, each of 
which must be considered separately: 
(a) prior art information (other than that mentioned in paragraph 
(c)) made publicly available in a single document or through 
doing a single act; IP/N/1/ AUS/P/1 
Page 16 
Patents Act 1990 
•. 8 
(b) prior art information (other than that mentioned in paragraph 
(c)) made publicly available in 2 or more related documents, 
or through doing 2 or more related acts, if the relationship 
between the documents or acts is such that a person skilled in 
the relevant art in the patent area would treat them as a single 
source of that information; 
(c) prior art information contained in a single specification of the 
kind mentioned in subparagraph (b) (ii) of the definition of 
"prior art base" in Schedule 1. 
(2) For the purposes of this Act, an invention is to be taken to 
involve an inventive step when compared with the prior art base unless 
the invention would have been obvious to a person skilled in the 
relevant art in the light of the common general knowledge as it existed 
in the patent area before the priority date of the relevant claim, 
whether tpat knowledge is considered separately or together with 
either of the kinds of information mentioned in subsection (3), each of 
which must be considered separately. 
(3) For the purposes of subsection (2), the k inds of information 
are: 
(a) prior art information made publicly availab!e in a single docu­
ment or through doing a single act; and 
(b) prior art information made publicly available in 2 or more 
related documents, or through doing 2 or more related acts, if 
the relationship hetween the documents or acts is such that a 
person skilled in the relevant art in the patent area would treat 
them as a single source of that information; 
being information that the skilled persan mentioned in subsection (2) 
could, before the priorily date of the relevant claim, be reasonably 
expected to have ascertai ned, u nderstood and regarded as relevant to 
work in the relevant art in the patent area. 
[ Notes: ( 1) For the meaning of "document" sec section 25 of the Acts lnter­
pretation Act 190 I. 
(2) See also the de/initions of ''prior art base" and "prior art informa­
tion" in Schedule I: see also paragraph I 8 ( / J (b) and subsection 
98 ( J).J 
Disclosure in basic applications 
8. Subject to the regulations, account must not be taken, for the 
purposes of this Act, of a disclosure in a specification or other 
document filed in respect of, and at the same time as, a basic 
application unless the following documents are filed within the pre­
scribed period: 
(a) a copy of the specification or document; Patents Act 1990 
.. ' IP/N/1/ AUS/P/1 
Page 17 
(b) if the specification or document is not in English-a transla-
tion of the specification or document into English. 
(Note: "basic application" is defined in Schedule 1: see also Part 2 of 
Chapter 8.) 
Secret use 
9. For the purposes of this Act, the following acts are not to be 
taken to be secret use of an invention in the patent area: 
(a) any use of the invention by or on behalf of, or with the 
authority of, the patentee or nominated person, or his or ber 
predecessor in title to the invention, for the purpose of reason­
able trial or experiment only; 
(b) any use of the invention by or on behalf of, or with the 
authority of, the patentee or nominated person, or his or her 
predeêessor in title to the invention, being use occurring solely 
in the course of a confidential disclosure of the invention by 
or on behalf of, or with the authority of, the patentee, 
nominated person, or predecessor in title; 
(c) any other use of the invention by or on behalf of, or with the 
authority of, the patentee or nominated person, or his or her 
predecessor in title to the invention, for any purpose other 
than the purpose of trade or commerce; 
(d) any use of the invention by or on behalf of the Common­
wealth, a State, or a Territory where the patentee or 
nominated pcrson, or his or her predecessor in title to the 
invention, has disclosed the invention, so far as claimed, to the 
Commonwealth, State or Territory. 
[Note: See also paragraph 18 ( /) (d)] 
Certain international applications to be laken to have been given an 
lnternàtional filing date 
10. (1) Where: 
(a) an international application specifies Australia as a designated 
State under Article 4 ( 1) (ii) of the PCT; and 
(b) the receiving Office does not give the application an interna­
tional filing date; and 
{c) the Commissioner is satisfied that the application should, 
under Article 25 (2) (a) of the PCT, be treated as if it had 
been given an internéltional filing date; 
the application is to be taken, for the purposes of this Act, to have 
been given an international filing date under Article 11 of the PCT. IP/N/1/ AUS/P/1 
Page 18 
Patents Act 1990 
•. 11 
(2) This section does not apply to an international application that 
was not filed in the receiving Office in English unless a translation of 
the application into English, verified in accordance with the regula­
tions, has been filed. 
(3) Where this section applies, the international filing date of the 
application is to be taken to be the date that, in the opinion of the 
Commissioner, should have been given to the application as its inter­
national filing date under the PCT. 
[ Note: "international filing dale" is defined in Schedule 1: see also 
Chapler 8.) 
Act binds the Crown 
11. (1) This Act binds the Crown in right of the Commonwealth, 
of each of the States, of the Australian Capital Territory, of the 
Northern Territory and of Norfolk Island. 
(2) Nothing in this Act makes the Crown li.able to be prosecuted 
for an offence. 
Application of Act 
12. This Act extends to: 
(a) each externat Territory; and 
(b) the Australian continental shelf; and 
(c) the waters above the Australian continental shelf; and 
{d) the airspace above Australia, each externat Territory and the 
Australian continental shelf. 
CHAPTER 2-PATENT RIGHTS, OWNERSHIP AND VALIDITY 
PART 1-PATENT RIGHTS 
Exclusive rlghts glven by patent 
13. (1) Subject to this Act, a patent gives the patentee the 
exclusive rights, during the term of the patent, to exploit the invention 
and to authorise another person to exploit the invention. 
(2) The exclusive rights are personal property and are capable of 
assignment and of devolution by law. 
(3) A patent has effect throughout the patent area. Patents Act 1990 
•• 14 
Aalgnment of patent IP/N/1/ AUS/P/1 
Page 19 
14. · (1) An assignment of a patent must be in writing signed by or 
on behalf of the assignor and assignee. 
(2) A patent may be assigned for a place in, or part of, the patent 
area. 
PART 2-0WNERSHIP . 
Who may be granted a patent? 
15. (1) Subject to this Act, a patent for an invention may only be 
granted to a person who: 
· (a) is the inventor; or 
{b) wouldi on the grant of a patent for the invention, be entitled to 
have the patent assigned to the person; or 
(c) derives title to the invention from the inventor or a person 
mentioned in paragraph (b); or 
( d) is the legal representative of a deceased person mentioned in 
paragraph (a), (b) or (c). 
(2) A patent may be granted to a persan whether or not he or she 
is an Australian citizen. 
Co-ownership of patents 
16. (1) Subject to any agreement to the contrary, where there are 
2 or more patentees: 
(a) each of them is entitled to an equal undivided share in the 
patent; and 
(b) each of them is entitled to exercise the exclusive rights given 
by the patent for his or her own benefit without accounting to 
the others; and 
(c) none of them can grant a licence under the patent, or assign 
an interest in it, without the consent of the others. 
(2) Where a patented product, or a product of a patented method 
or process, is sold by any of 2 or more patentees, the buyer, and a 
person claiming through the buyer, may deal with the product as if it 
had been sold by ail the patentees. 
(3) This section does not affect the rights or obligations of a 
trustee or of the legal representative of a deceased person, or rights or 
obligations arising out of either of those relationships. IP/N/1/ AUS/P/1 
Page 20 
Directions to co-owners Patents Act 1990 
s. 17 
17. (1) Where there are 2 or more patentees, the Commissioner 
may, on the app]ication of any of them, give such directions in 
accordance with the appJication as the Commissioner thinks fit, being 
directions about: 
(a) a dealing with the patent or an interest in it; or 
(b) the grant of licences under the patent; or 
(c) the exercise of a right under section 16 in relation to the 
patent. 
(2) If a patentee faiJs to do anything necessary to carry out a 
direction under subsection (1) within 14 days after being asked in 
writing to do so by one of the other patentees, the Commissioner may, 
on the application of one of those other patentees, direct a person to 
do it in th~ name and on behalf of the defaulting patentee. 
(3) Before giving a direction, the Commissioner must give an 
opportunity to be heard: 
(a) in the case of an application by a patentee or patentees under 
subsection (1)-to the other patentee or patentees; and 
(b) in the case of an application under subsection (2)-to the 
defaulting patentee. 
(4) The Commissioner must not give a direction that: 
(a) affects the rights or obligations of a trustee or of the legal 
representative of a deceased person, or rights or obligations 
arising out of either of those relationships; or 
(b) is inconsistent with the terms of an agreement between the 
patentees. 
PART 3-VALIDITY 
Division 1-Validity 
Patentable inventions 
18. (1) Subject to subsection (2), a patentable invention is an 
invention that, so far as claimed in any claim: 
(a) is a manner of manufacture within the meaning of section 6 of 
the Statute of Monopolies; and 
(b) when comparcd with the prior art base as it existed before the 
priority date of that daim: 
(i) is novel; and 
(ii) involves an inventive step; and 
(c) is useful; and Patents Act 1990 
1. 19 IP/N/1/ AUS/P/1 
Page 21 
(d) was not secretly used in the patent area before the priority 
date of that claim by, or on behalf of, or with the authority of, 
the patentee or nominated person or the patentee's or 
nominated person's predecessor in title to the invention. 
(2) Uuman beings, and the biological processes for their genera­
tion, are not patentable inventions. 
(Nole: see also sections 7 and 9.) 
Certificate of validity 
19. (1) In any proceedings in a court in which the validity of a 
patent, or of a claim, is disputed, the court may certify that the validity 
of a specified claim was questioned. 
(2) If a court issues a certificate, then, in any subsequent proceed­
ings 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. 
(3) Subsection (2) ha~ effect subject to any direction by the court 
trying the proceedings. 
Validity of patent not guaranteed 
20. (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) The Commonwealth, the Commissioner, a Deputy Commis­
sioner, or an employee, is not liable because of, or in connection with, 
doing any act under this Act or the PCT, or any proceedings con­
sequent on doing any such act. 
Validity not implied by making or refusal of non-infringement 
declaration 
21. The making of, or refusal to make, a non-infringement dec­
laration in respect of a claim of a patent does not imply that the claim 
is valid. IP/N/1/ AUS/P/1 
Page 22 
Patents Act 1990 
Division 2-Matters not affecting validity s.22 
Invalidity in relation to one claim not to affect validity in relation to 
other claims 
22. The invalidity of a patent in relation to a claim does not affect 
its validity in relation to any other claim. 
Validity not affected by publication etc. after priority date 
23. A patent is not invalid, so far as the invention is claimed in 
any claim, merely because of: 
(a) the publication or use of the invention, so far as claimed in 
that claim, on or after the priority date of that claim; or 
(b) the grant of another patent which claims the invention, so far 
as claimed in the first-mentioned claim, in a claim of the same 
or a later priority date. 
Validity not affected by certain publication or use 
24. (1) For the purpose of deciding whether an invention is novel 
or involves an inventive step, the person making the decision must 
disregard: 
(a) any information made publicly available, through any publica­
tion c.r use of the invention 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 
(b) any information made publicly available without the consent 
of the nominated person or patentee, through any publication 
or use of the invention by another person who derived the 
information from the nominated person or patentee or from 
the predecessor in title of the nominated person or patentee; 
but only if a patent application for the invention is made within the 
prescribed period. · 
(2) For the purpose of deciding whether an invention is novel or 
involves an inventive step, the person making the decision must 
disregard: 
(a) any information given· by, or with the consent of, the 
nominated person or the patentee, or his or her predecessor in 
title, to any of the following, but to no other person or 
organisation: 
(i) the Commonwealth or a State or Territory, or an 
authority of the Commonwealth of a State or Terri­
tory; Patents. Act 1990 
1. 25 IP/N/1/ AUS/P/1 
Page 23 
(ii) a person authorised by the Commonwealth or a State 
or Territory to investigate the invention; and 
(b) anything done for the purpose of an investigation mentioned 
in subparagraph (a) (ii). 
Validity: patents or addition 
25. Objection cannot be taken to a patent request or complete 
specification in respect of an application for a patent of addition, and 
a patent of addition is not invalid, merely because the invention, so far 
as claimed, does not involve an inventive step, having regard to the 
publication or use of the main invention during the prescribed period. 
Validity not affected in certain cases involving amendments 
26. (1) 9bjection cannot be taken to a patent request and 
specification ttiat. have been accepted, and a patent is not invalid, 
merely because the specification claims an invention that was not the 
subject of the request, or that was not described or claimed in the 
specification as filed. 
(2) Except in the case of an amendment made in contravention of 
section 112, objection cannot be taken to a patent request and speci­
fication that have been accepted, and a patent is not invalid, merely 
because an amendment of the specification has been made that was 
not allowable. 
Division 3-Notice of matters affecting validity 
Notice or matters affecting validity of standard patents 
27. (1) A person may, within the prescribed period after a 
complete specification filed in relation to an application for a standard 
patent becomes open to public inspection, notify the Commissioner, in 
accordance with the regulations, that the person asserts, for reasons 
stated in the notice, that the invention concerned is not a patentable 
invention because it does not comply with paragraph 18 (1) (b). 
(2) The Commissioner must inform the applicant for the patent in 
writing of any matter of which the Commissioner is notified and send 
the applicant a copy of any document accompanying the notice. 
(3) The Commissioner must otherwise consider and deal with a 
notice in accordance with the regulations. 
(4) A notice and any document accompanying it are open to 
public inspection. IP/N/1/ AUS/P/1 
Page 24 
Patents Act 1990 
Notice of matters affecting validity of petty patents s. 21 
28. (1) A person may, within the prescribed period after the grant 
of a petty patent, notify the Commissioner, in accordance with the 
regulations, that the person asserts, for reasons stated in the notice, 
that the petty patent is invalid on one or more of the following 
grounds: 
(a) that the patentee was not entitled to be granted the petty 
patent; 
(b) that the invention is not a patentable invention because it does 
not comply with paragraph 18 (1) (a) or (b); 
(c) that the specification does not comply with subsection 40 (2) 
or (3). 
(2) The Commissioner must inform the patentee in writing of any 
matter o( which· the Commissioner is notified and send the patentee a 
copy of any document accompanying the notice. 
(3) If the Commissioner becomes aware~ otherwise than by a 
notification under subsection ( 1 ), of any matter that may affect the 
validity of a petty patent on one or more of the grounds mentioned in 
that subsection, the Commissioner must inform the patentee in writing 
of the matter. 
(4) A notice given to the Commissioner and any document 
accompanying it are open to public inspection. 
CHAPTER 3-FROM APPLICATION TO ACCEPTANCE 
PART 1-PATENT APPLICATIONS 
Division J -Applications 
Application for patent 
29. (1) A person may apply for a patent for an invention by filing, 
in accordance with the -regulations, a patent request and such other 
documents as are prescribed. 
(2) An application may be a provisional application or a complete 
application. 
(3) · A patent request in relation to a provisional application must 
be in the approved form and accompanied by a provisional specific.a­
tion. 
(4) A patent request in relation to a complete application must be 
in the approved form and accompanied by a complete specification. •. 30 
(S) In this section: Patents Act 1990 IP/N/1/AUS/P/1 
Page 25 
"person" includes a body of persons, whether incorporated or not. 
[ Note: see also section 5 for requirements relating to associated 
applications.) 
Filing date 
30. A patent application is to be taken to have been made on the 
filing date determined under the regulations. 
Joint applicants 
31. 2 or more persons (within the meaning of section 29) may 
make a joint patent application. 
Disputes between appllcants etc. 
,I) 
32. If a dispute arises between any 2 or more interested parties 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 parties, make any 
determinations the Commissioner thinks fit for enabling the applica­
tion to proceed in the name of one or more of the parties alone, or for 
regulating the manner in which it is to proceed, or both, as the case 
requires. 
Applications by opponents etc. 
33. (1) Where: 
(a) the grant of a standard patent is opposed; and 
(b) · the Commissioner decides, under section 60, that the opponent 
is an eligible person in relation to the invention, so far as 
claimed in any claim, but that there is no other reason that a 
patent should not be granted; 
the Commissioner may, if a complete application is made by the 
opponent under section 29, grant the opponent a patent for the 
invention, so far as so claimed, and the claims of that patent have the 
same priority date as that of the first-mentioned claim. 
(2) Where: 
(a) a person gives the Commissioner a notice under section 28 in 
relation to a petty patent; and 
(b) the Commissioner decides under section 69 to refuse to grant 
an extension of the term of a petty patent on the ground, or on 
grounds that include the ground, that the patentee was not 
entitled to be granted the petty patent; and IP/N/1/ AUS/P/1 
Page 26 
Patents Act 1990 
s. 34 
(c) the Commissioner is satisfied that the person who gave the 
notice is an eligible person in relation to the invention, so far 
as claimed in any claim; 
the Commissioner may, if a complete application is made by the 
person under section 29, grant the person a petty patent for the 
invention, so far as so claimed, and the claims of that petty patent have 
the same priority date as that of the first-mentioned claim. 
Applications by eligible persons arising out of court proceedings 
34. (1) Where, in any proceedings in a court relating to a patent, 
the court is satisfied that a person other than the patentee is an eligible 
person in relation to the invention, so far as claimed in any claim, the 
court may, in addition to any other order it may make in the 
proceedings, by order, declare the person to be an eligible person in 
relation to that invention, so far as so claimed. 
(2) The Commissioner must, if a complete application is made 
under section 29 by a person so declared, grant the person a patent for 
the invention, so far as claimed in any claim of the patent mentioned 
in subsection (1), and the claims of that patent have the same priority 
date as that of the first-mentioned claim. 
Applications by eligible persons following revocation by Commissioner 
35. (I) Where the Commissioner: 
(a) revokes a patent under section 137; and 
(b) is satisfied, on application made by a person other than the 
former patentee in accordance with the regulations, that the 
person is an eligible person in relation to the invention con­
cerned, so far as claimed in any claim; 
the Commissioner may declare in writing that the person is such an 
eligible person and, if a complete application is made by the person 
under section 29, grant the person a patent for the invention, so far as 
so claimed, and the claims of that patent have the same priority date 
as that of the first-mentioned claim. 
(2) The Commissioner must not make a declaration without first 
giving the former patentee a reasonable opportunity to be heard. 
(3) An appeal lies to the Federal Court against a decision of the 
Commissioner making, or refusing to make, a declaration. Patents Act 1990 
s. 3' 
Other applications by eligible persons 
36. (1) Where: IP/N/1/ AUS/P/1 
Page 27 
(a) a patent application has been made and, in the case of a 
complete application, the patent request and complete speci­
fication have not been accepted; and 
(b) the Commissioner is satisfied, on application mad~ by a person 
in accordance with the regulations, that the nominated person 
is not an eligible person in relation to an invention disclosed 
in a specification filed in relation to the application but that 
some other person is an eligible person in relation to the 
invention as so disclosed; 
the Commissioner may (whether or not the patent application lapses 
or is withdrawn) declare in writing that the other person is such an 
eligible person .• 
(2) The Commissioner must not make a declaration without first 
giving the nominated person a reasonable opportunity to be heard. 
(3) If a complete application is made under section 29 by a person 
so declared, the priority date of the claims of a patent granted to the 
person for the invention must be determined under the regulations. 
(4) An appeal lies to the Federal Court against a decision by the 
Commissioner under this section. 
Complete application may be treated as provisional 
37. (1) Where a complete application is made, the applicant may, 
at any time during the prescribed period, by written request, ask the 
Commissioner to direct that the application be treated as a provisional 
application. 
(2) A person is not entitled to make a request if the patent request 
and specification filed in respect of the application have been accepted 
or have become open to public inspection. 
(3) On receiving a request, the Commissioner must give a direc­
tion as asked. 
(4) Where the Commissioner gives a direction, the complete 
application is to be taken, for the purposes of this Act, to be, and to 
have always been, a provisional application. 
Time for making complete application 
38. (1) If an applicant makes a provisional application, the 
applicant may make one or more complete applications associated 
with the provisional application at any time within the prescribed 
period. IP/N/1/ AUS/P/1 
Page 28 
(2) In this section: Patents Act 1990 
1. )9 
"appllcant0 includes a person entitled to make a request under section 
113 in relation to the relevant patent application. 
(Note: see also section 5 for requirements relating to associated 
applications.] 
Divisional applications 
39. (1) Where a complete patent application is made (but has not 
lapsed or been refused or withdrawn), the applicant may, in accor­
dance with the regulations, make a further complete application for a 
standard patent or a petty patent for an invention: 
(a) disclosed in the specification filed in respect of the first­
mentioned application; and 
(b) where the first-mentioned application is for a standard patent 
arid at least 3 months have elapsed since the publication of a 
notice of acceptance of the relevant patent request and speci­
fication in the Official Journal-falling within the scope of the 
claims of the accepted specification. 
(2) A patentee of a petty patent may, in accordance with the 
regulations, make a further complete application for a petty patent" or 
a standard patent in respect of an invention disclosed in the complete 
specification filed in respect of the application on which the first­
mentioned petty patent was sealed. 
(3) In this section: 
"applicant" has the same meaning as in section 38. 
Division 2-Specifit:ations 
Specifications 
40. (1) A provisional specification must describe the invention. 
(2) A complete specification must: 
(a) describe the invention fully, including the best method known 
to the applicant of performing the invention; and 
(b) where it relates to an application for a standard patent-end 
with a claim or claims defining the invention; and 
(c) where it relates to an application for a petty patent-end with 
a single claim, or a single independent claim and not more 
than 2 dependent claims, defining the invention. 
(3) The claim or claims must be clear and succinct and fairly 
based on the matter described in the specification. 
(4) The claim or claims must relate to one invention only. Patents Act 1990 
•. 41 
Specifications: micro-organisms IP/N/1/AUS/P/l 
Page 29 
41. (1) To the extent that an invention is a micro-organism, the 
complete specification is to be taken to comply with paragraph 40 (2) 
(a), so far as it requires a description of the micro-organism, if the 
deposit requirements are satisfied in relation to the micro-organism. 
(2) Where: 
(a) an invention involves the use, modification or cultivation of a 
micro-organism, other than the micro-organism mentioned in 
subsection ( 1 ); and 
(b) a person skilled in the relevant art in the patent area could 
not reasonably be expected to perform the invention without 
having a sample of the micro-organism before starting to 
perform the invention; and 
(c) the micro-organism is not reasonahly available to a person 
skilled in the relevant art in the patent area; 
the specification is to be taken to comply with paragraph 40 (2) (a), so 
far as it requires a description of the micro-organism, if, and only if, 
the deposit requirements are satisfied in relation to the micro­
organism. · 
(3) For the purposes of this section, a micro-organism may be 
taken to be reasonahly available to a person even if it is not so 
available in the patent area. 
(4) Where: 
(a) the requirements specified in paragraph 6 (c) or (d) cease to 
be satisfied in relation to a micro-organism; and 
{b) · steps are taken at a later time within the prescribed period in 
accordance with such provisions (if any) of the regulations as 
~re applicahle; and 
(c) as a result of those steps, if the period during which those 
requirements are not satisfied is disregarded, those require­
ments would he satisfied at that later time; 
those requirements are to be taken to have been satisfied during the 
period mentioned in paragraph (c), and such provisions as are pre­
scribed have effect for the protection or compensation of persons who 
availed themselves, or took definite steps · by way of contract or 
otherwise to avail themselves, of the invention during that period. 
[Note: see also section 6 in relation to satisfaction of deposit require­
ments.) IP/N/1/ AUS/P/1 
Page 30 
Patents Act 1990 
Micro-organisms ceasing to be reasonably available 
42. (1) Where: s. 42 
(a) a complete application has been made for a patent, or a patent 
has been granted for an invention of a kind mentioned in 
paragraph 41 (2) (a); and 
(b) the relevant micro-organism was, at the date of filing of the 
complete specification, reasonably available (within the mean­
ing of section 41) to a skilled person working in the relevant 
art in the patent area; and 
(c) the micro-organism has ceased to be so available; 
a prescribed court or the Commissioner, on application made in 
accordance with the regulations, or the Commissioner, on his or her 
own motion, may declare that the specification does not comply with 
section 4P unless the deposit requirements are satisfied in relation to 
the micro-organism. 
(2) Where a declaration is made under subsection ( 1 ): 
(a) this Act has effect in relation to the specification accordingly; 
and 
(b) section 6 applies as if the references in that section to the date 
of filing of the specification were references to a date specified 
in the declaration for the purposes of this subsection. 
(3) Subse:ction (2) does not limit the operation of section 223. 
(4) Where: 
(a) an application is made under subsection ( l ); or 
(b) the Commissioner proposes to make a declaration under that 
subsection on his or her own motion; 
the applicant for the patent, or the patentee, as the case may be, must 
be notified, in accordance with the regulations, of the application or 
proposal and is entitled to appear and be heard. 
(5) A declaration_ by the Commissioner must be made in accor­
dance with the regulations. 
(6) An office copy of a declaration by a prescribed court must be 
served on the Commissioner by the Registrar or other appropriate 
officer of the court. 
(7) An appeal lies to the Federal Court against a decision of the 
Commissioner under subsection ( 1). 
(Note: see also section 6 in relation lo satisfaction of deposit require­
ments.] Patents Act 1990 
5. 43 
Division ]-Priority dates 
Priority dates 
43. (1) Each claim of a specification must have a priority date. 
(2) The priority date of a claim is: 
(a) the date of filing of the specification; or IP/N/1/ AUS/P/1 
Page 31 
(b) where the regulations provide for the determination of a 
different date as the priority date-the date determined under 
the regulations. 
(3) Where a claim defines more than one form of an invention, 
then, for the purposes of determining the priority date of the claim, it 
must be treated as if it were a separate claim for each form of the 
invention that is defined. 
(4) The priority date of a claim of a specification may be different 
from the priority date of any other claim of the specification. 
PART 2-EXAMINATION OF PATENT REQUESTS AND 
SPECIFICATIONS 
Division I -Examination 
Request for examination 
44. · (1) Where a complete application for a standard patent has 
been made, the applicant may, within the prescribed period and in 
accordance with the regulations, ask for an examination of the patent 
request and specification relating to the application. 
(2) Where a complete application has been made for a standard 
patent, the Commissioner may, on one or more of the prescribed 
grounds and in accordance with the regulations, direct the applicant to 
ask, within the prescribed period, for an examination of the patent 
request and complete specification relating to the application. 
(3) Where the patent request and specification relating to a 
complete application for a standard patent are open to public inspec­
tion, a person may, in accordance with the regulations, require the 
Commissioner to direct the applicant to ask, within the prescribed 
period, for an examination of the request and specification. 
(4) Where required under subsection (3), the Commissioner must 
give a direction accordingly, unless the applicant has already asked, or 
been directed to ask, for an examination of the patent request and 
s pee i fi eat ion. IP/N/1/ AUS/P/1 
Page 32 
Examination Patents Act 1990 
1.45 
45. (1) Where an applicant asks for an examination of a patent 
request and complete specification, the Commissioner must examine 
the request and specification and report on: 
(a) whether the specification complies with section 40; and 
(b) whether, to the best of his or her knowledge, the invention, so 
far as claimed, satisfies the criteria mentioned in paragraphs 18 
(1) (a) and (b); and 
(c) such other matters (if any) as are prescribed. 
(2) The examination must be carried out in accordance with the 
regulations. 
(3) The Commissioner may, from time to time, by notice in 
writing, direct the applicant to inform the Commissioner of the results 
of the searches specified in the notice, being searches carried out in a 
foreign country by a specified patent office or organisation in respect 
of a corresponding application filed outside Australia. 
Request for deferment of examination 
46. (1) Where: 
(a) a complete application for a standard patent has been made; 
and 
(b) a prescribed application for a patent has been made in a 
prescribed foreign country; and 
(c) a patent has not been granted in respect of the prescribed 
application; and 
(d) the applicant has been directed by the Commissioner to ask 
for an examination of the patent request and specification 
relating to the application mentioned in paragraph (a), being a 
direction given on a ground prescribed for the purposes of this 
paragraph; 
the applicant may, instead of asking for an examination as directed, 
ask for deferment of the examination. 
(2) A request for deferment must be made in accordance with the 
regulations. 
(3) Where a request for deferment is made: 
(a) the examination of the patent request and specification must 
be deferred accordingly; and 
(b) the application does not lapse merely because of failure by the 
applicant to ask for an examination in accordance with the 
Commissioner's direction. Patents Act 1990 
•. 47 
Division 2-Modijied examination 
Request for modified examination 
47. (1) Where: IP/N/1/AUS/P/1 
Page 33 
(a) a complete application for a standard patent has been made; 
and 
(b) a patent has been granted in a prescribed foreign country in 
respect of a prescribed application made in that country; 
the applicant may, instead of asking for an examination, ask for a 
modified examination of the patent request and specification relating 
to the application. 
(2) The applicant may withdraw a request for a modified examina­
tion at any time before acceptance of the patent request and ·specifica­
tion and ask for an examination under section 44 instead. 
Modified examination 
48. (1) Where an applicant asks for a modified examination of a 
patent request and complete specification, the Commissioner must 
examine the request and specification and report on: 
(a) whether, to the best of his or her knowledge, the invention, so 
far as claimed, satisfies the criteria mentioned in paragraphs 18 
(1) (a) and (b); and 
(b) such other matters (if any) as are prescribed. 
(2) The modified examination must be carried out in accordance 
with the regulations. 
PART 3-ACCEPTANCE 
Acceptance of patent request: standard patent 
49. (I) Subject to section 51, if the Commissioner considers that 
there is no lawful ground of objection to a patent request and com­
plete specification relating to an application for a standard patent, or 
that any such ground of objection has been removed, the Commis­
sioner must accept the request and specification. 
(2) If subsection (1) does not apply, the Commissioner may refuse 
to accept the request and specification. 
(3) The Commissioner must, if asked to do so by the applicant in 
writing, postpone acceptance of a patent request and complete speci­
fication until such day as the applicant specifies. IP/N/1/ AUS/P/1 
Page 34 
Patents Act 1990 
s. so 
(4) The applicant cannot, for the purposes of subsection (3), 
specify a day that is after the end of the period prescribed for the 
purposes of paragraph 142 (2) (e) . 
. (5) Where the Commissioner accepts a patent request and com­
plete specification relating to an application for a standard patent, the 
Commissioner must: 
(a) notify the applicant in writing of the acceptance; and 
(b) publish a notice of the acceptance in the Official Journal. 
(6) The notice mentioned in paragraph (5) (b) must: 
(a) if the patent request and complete specification have been 
subjected to a modified examination-include a statement to 
the effect that the acceptance has resulted from a modified 
examination; and 
(b) if. the patent request and complete specification have not 
already become open to public inspection-include a state­
ment to the effect that the patent request and specification are 
open to public inspection. 
(7) Where the Commissioner refuses to accept a patent request 
and complete specification relating to an application for a standard 
patent, the Commissioner must notify the applicant in writing of the 
reasons for the refusal and publish a notice of the refusal in the 
Official Journal. 
Consideration and acceptance of patent request: petty patent 
50. (I) Where a complete application for a petty patent is made, 
the Commissioner must consider the patent request and the complete 
specification and, for that purpose, may make such investigations as 
the Commissioner thinks fit. 
(2) If the Commissioner is satisfied that there is a lawful ground of 
objection to the patent request or complete specification, the Commis­
sioner must, by notice in writing: 
(a) notify the applicant of the ground of objection; and 
(b) advise the applicant that unless he or she asks leave to amend 
the patent request or complete specification, or files a written 
statement contesting the objection, within the time specified by 
the Commissioner, the application will lapse. 
(3) Subject to section 51, if the Commissioner considers that there 
is no lawful ground of objection to the patent request or complete 
specification, or that any such ground of objection has been removed, 
the Commissioner must accept the request and specification. IP/N/1/ AUS/P/1 
Page 35 
Patents Act 1990 
•. 51 
(4) If subsection (3) does not apply, the Commissioner may, after 
giving the applicant a reasonable opportunity to be heard, refuse to 
accept the request and specification. 
(5) Where the Commissioner refuses to accept a patent request 
and complete specification relating to an application for a petty patent, 
the Commissioner must notify the applicant of the reasons for the 
refusal and publish a notice of the refusal in the Official Journal. 
Application or grant may be refused in certain cases 
St. (1) The Commissioner may refuse to accept a patent request 
and specification, or to grant a patent: 
(a) for an invention the use of which wou Id be contrary to law; or 
(b) on the ground that the specification claims as an invention: 
(i) a substance which is capable of being used as food or 
medicine (whether for human beings or animals and 
whether for internal or external use) and is a mere 
mixture of known ingredients; or 
(ii) a process producing such a substance by mere admix­
ture. 
(2) The Commissioner may refuse to accept a specification con­
taining a claim that includes the name of a person as the name, or part 
of the name, of the invention so far as claimed in that claim. 
Appeal 
52. An appeal lies to the Federal Court against a decision of the 
Commissioner under this Part. 
CHAPTER 4-PUBLICATION 
Publication of certain information about applicants etc. 
53. Where a patent application is made, the Commissioner must 
publish in the Official Journal the prescribed information about the 
applicant and the application. 
Notice of publication 
S4. (1) Where a complete specification filed in respect of an 
application for a patent (other than a PCT application) has not 
become open to public inspection, the Commissioner must, if asked to 
do so by the applicant, publish, in accordance with the regulations, a 
notice in the Official Journal that the complete specification is open to 
public inspection. IP/N/1/ AUS/P/1 
Page 36 
Patents Act 1990 
s. 54 
(2) If subsection 41 (2) applies to a specification, the applicant 
cannot make a request under subsection ( 1) in relation to the speci­
fication unless the specification includes the particulars mentioned in 
paragraph 6 (c). 
(3) Where: 
(a) a complete specification has been filed in respect of an 
application for a standard patent (other than a PCT applica­
tion); and 
(b) the prescribed period has ended; and 
(c) the specification is not open to public inspection; 
the Commissioner must publish a notice in the Officitll Journal that 
the specification is open to public inspection, unless the application 
has lapsed or been refused or withdrawn. 
(4) Where: 
(a) a divisional application (other than a PCT application) is made 
in respect of an original application, whether a PCT applica­
tion or not; and 
(b) the complete specification file·d in respect of the original 
application was open to public inspection when the divisional 
application was made; 
the Commissioner must publish a notice in the Official Journal that 
the completf! specification filed in respect of the divisional application 
is open to public inspection. 
(5) Where a divisional application (other than a PCT application) 
is made in respect of an original application that is not a PCT 
application and: 
(a) a notice is published in the Official Journal that the complete 
specification filed in respect of the original application is open 
to public inspection; or 
(b) a notice is published in the Official Journal that the complete 
specification filed in respect of the divisional application is 
open to public inspection; 
the Commissioner must also publish in the Official Journal a notice 
that: 
(c) where paragraph (a) applies-the complete specification filed 
in respect of the divisional application is open to public 
inspection; or 
(d) where paragraph (b) applies-the complete specification filed 
in respect of the original application is open to public inspec­
tion. •. 55 
(6) Where: Patents Act 1990 IP/N/1/ AUS/P/1 
Page 37 
(a) a divisional application (other than a PCT application) is made 
in respect of an original application that is a PCT application; 
and 
(b) a notice is published in the Official Jo11rnal that the complete 
specification filed in respect of the original application is open 
to public inspection; 
the Commissioner must also publish in the Official Journal a notice 
that the complete specification filed in respect of the divisional 
application is open to public inspection. 
Documents open to public Inspection 
55. (1) Where a notice is published under section 54, the 
specification co.i:icerned, and such other documents (if any) as are 
prescribed, are open to public inspection. 
(2) Where a notice is published under paragraph 49 (5) (b) in 
relation to an application for a standard patent, or under subsection 62 
(2) in relation to the grant of a petty patent, the following documents 
are open to public inspection: 
(a) all documents (other than prescribed documents) filed in rela­
tion to the application or the patent, whether before or after 
the acceptance or grant; 
(b) all documents (other than prescribed documents) filed, after 
the patent ceases, expires or is revoked, in relation to the 
former patent; 
(c) copies of all documents relating to the application or patent 
. {other than prescribed documents) given by the Commissioner 
to the applicant or patentee, or the former applicant or paten­
tee; 
being documents that have not already become open to public inspec­
tion. 
(3) Subject to section 90, a specification, or other document, is to 
be taken to have been published on the day on which it becomes open 
to public inspection unless it has been published otherwise before that 
day. 
Certain documents not to be published 
56. (1) Except as otherwise provided by this Act, documents of 
the kind mentioned in section 55: 
(a) must not be published or be open to public inspection; and IP/N/1/ AUS/P/1 
Page 38 
Patents Act 1990 
s. 57 
(b) are not liable to be inspected or produced before the Commis­
sioner or in a legal proceeding unless the Commissioner, court, 
or any person having power to order inspection or production, 
directs that the inspection or production be allowed. 
(2) Notice of an application for the production in legal proceed­
ings of a document of the kind mentioned in section 55 must be given 
t~ the Commissioner, who is entitled to be heard on the application. 
Effect of publication of complete specification 
57. (1) After a complete specification relating to an application 
for a standard patent has become open to public inspection and until a 
patent is granted on the application, the applicant has the same rights 
as he or she would have had if a patent for the invention had been 
granted on the day when the specification became open to public 
inspection. 
(2) If a complete specification in relation to an application for a 
petty patent becomes open to public inspection before a patent is 
granted on the application, the applicant has the same rights as he or 
she would have had if a petty patent for the invention had been 
granted on the day when the specification became open to public 
inspection. 
(3) Neither subsection ( 1) nor (2) gives the applicant a right to 
start proceedings in respect of the doing of an act unless: 
(a) a patent is granted on the application; and 
(b) the act would, if done after the grant of the patent, have 
constituted an infringement of a claim of the specification. 
(4) It is a defence to proceedings under subsection (1) or (2) in 
respect of an act done after the complete specification became open to 
public inspection but before: 
(a) in the case of a standard patent-the patent request was 
accepted; or 
(b) in the case of a petty patent-the petty patent was granted on 
the application; 
if the defendant proves that a patent could not validly have been 
granted to the applicant in respect of the claim (as framed when the 
act was done) that is alleged to have been infringed by the doing of the 
act. 
Result of search may be disclosed 
58. The Commissioner may disclose the result of any search made 
for the purpose of making a report under this Act. Patents Act 1990 
s. 59 
CHAPTER 5-0PPOSITION 
Opposition to grant of standard patent IP/N/1/ AUS/P/1 
Page 39 
59. The Minister or any other person may. in accordance with the 
regulations, oppose the grant of a standard patent on one or more of 
the following grounds. but on no other ground: 
(a) that the nominated person is not entitled to a grant of a patent 
for the invention; 
(b) that the invention is not a patentable invention because it does 
not comply with paragraph 18 (I) (a) or (b); 
(c) that the specification filed in respect of the complete applica­
tion does not comply with subsection 40 (2) or (3). 
Hearing and decision by Commissioner 
~ 
60. (I) Where the grant of a standard patent is opposed, the 
Commissioner must decide the case in accordance with the regulations. 
(2) The Commissioner must give the applicant and the opponent a 
reasonable opportunity Lo be heard before deciding a case. 
·(J) The Commissioner may, in deciding a case, take into account 
any ground on which the grant of a standard patent may be opposed, 
whether relied upon by the opponent or not. 
(4) The applicant, and any opponent, may appeal to the Federal 
Court against a decision of the Commissioner under this section. 
CHAPTER 6-GRANT AND TERM OF PATENTS 
PART I-GRANT 
Grant of standard patent 
61. (1) The Commissioner must grant a standard patent, by 
sealing a standard patent in the approved form, if: 
(a) there is no opposition to the grant; or 
(b) in spite of oprosition, the Commissioner's decision. or the 
decision on appeal, is that a standard patent should be grant­
ed. 
(2) A standard patent must be granted within the prescribed 
period. IP/N/1/ AUS/P/1 
Page 40 
Patents Act 1990. 
Grant and publication of petty patent ,. 62 
62. (1) Where the Commissioner accepts a patent request and 
complete specification filed in respect of an application for a petty 
patent, the Commissioner must grant a petty patent by sealing a petty 
patent in the approved form. 
(2) Where a petty patent is granted, the Commissioner must 
publish a notice in the Official Journal stating that: 
(a) the petty patent has been granted; and 
(b) where the patent request and complete specification relating to 
the petty patent application are not already open to public 
inspection-the patent request and corn plete specification are 
open to public inspection. 
Joint pateptees 
63. A patent may be granted to 2 or more nominated persons 
jointly. 
Grant: multiple applications 
64. (1) Subject to this section, where there are 2 or more 
applications for patents for identical, or substantially identical, inven­
tions, the granting of a patent on one of those applications does not 
prevent the granting of a patent on any of the other applications. 
(2) Where: 
(a) a patent application claims an invention that is the same as an 
invention that is the subject of a patent and is made by the 
same inventor; and 
(b) the relevant claim or claims in each of the complete specifica­
tions have the same priority date or dates; 
a patent cannot be granted on the application. 
Date of patent 
65. The date of a patent is: 
(a) the date of filing of the relevant complete specification; or 
(b) where the regulations provide for the determination of a 
different date as the date of a patent-the date determined 
under the regulations. 
Sealing of duplicate of patent 
66. The Commissioner may seal a duplicate of a patent if satisfied 
that the patent is lost, stolen, damaged or destroyed. Patents Act 1990 
•. 67 
PART 2-TERM 
Term of standard patent IP/N/1/AUS/P/l 
Page 41 
67. The term of a standard patent is 16 years from the date of the 
patent. 
Term of petty patent 
68. The term of a petty patent is: 
(a) the period of 12 months beginning on the date of sealing of 
the patent; and 
(b) if an extension of the term of the patent is granted-an 
additional period beginning on the day immediately following 
the end of that 12 months' period and ending at the end of 6 
years after the date of the patent. 
PART 3-EXTENSION OF TERM 
Division 1-Petty patents 
Extension of term of petty patent 
69. (1) A patentee of a petty patent may apply to the Commis­
sioner, in accordance with the regulations, for an extension of the term 
of the petty patent. 
(2) The Commissioner must decide an application in accordance 
with the regulations. 
(3) The Commissioner must not grant an extension without giving 
each person who has given the Commissioner a notice under section 
28 in relation to the petty patent a reasonable opportunity to be heard. 
(4) The Commissioner must not refuse to grant an extension of the 
term of a petty patent that the Commissioner is satisfied is invalid 
unless the Commissioner has, where appropriate, given the applicant a 
reasonable opportunity to amend the relevant patent request or com­
plete specification, or both, for the purpose of removing the grounds of 
the invalidity and the applicant has failed to do so. 
(5) Where the Commissioner grants an extension, the Commis­
sioner must notify the applicant in writing of the grant and puhlish a 
notice of the grant in the Official Journal. 
(6) Where the Commissioner refuses to grant an extension, the 
Commissioner must: 
(a) give the applicant written notice of the refusal and of the 
reasons for it; and IP/N/1/AUS/P/l 
Page 42 
Patents Act 1990 
(b) publish a notice of the refusal in the Official Journal. 1. 70 
(7) An appeal lies to the FeJcral Court against a refusal by the 
Commissioner to grant an extension. 
(8) A person who has given the Commissioner a notice under 
section 28 in relation to a petty patent may appeal to the Federal 
Court against a decision of the Commissioner to grant an extension of 
the term of the petty patent. 
Division 2-Standard patents 
Application for extension of term of patent relating to a 
pharmaceutical substance 
70. (1) Where: 
(a) a 1:pharmaceutical substance is in supstance disclosed in the 
complete specification of a standard patent and in substance 
falls within the scope of the claim or claims of that complete 
specification; and 
(b) the patentee has requested the issue of a marketing approval 
certificate in respect of that substance; 
the patentee may, by notice in writing in the approved form given to 
the Commissioner not later than 12 months before the end of the term 
of the patent, apply for an extension of the term of the patent in 
respect of that substance and any other pharmaceutical substance 
which is in substance disclosed in the specification and in substance 
falls within the scope of the claim or claims of the specification. 
(2) Where a patentee applies for an extension of the term of a 
patent, the patentee must send a copy of the application to the 
Secretary to the Department of Community Services and Health. 
(3) Where a patentee applies for an extension of the term of a 
patent, the Commissioner must publish in the Official Journal a notice 
stating that the application has been made and is open to public 
inspectio~. 
(4) A patentee who has applied for an extension of the term of a 
patent may, by notice in writing to the Commissioner, withdraw the 
application. 
(5) Where an application for an extension of the term of a patent 
is withdrawn, the Commissioner must publish in the Official Journal a 
notice stating that the application has been withdrawn. Patents Act 1990 
,. 71 
Application for extension to la~ in certain circumstances ·1P/N/1/ AUS/P/1 
Page 43 
71. An application for an extension of the term of a patent lapses 
if the applicant does not, within the prescribed period, give the 
Commissioner: 
(a) a marketing approval certificate in respect of the pharmaceuti­
cal substance to which the application relates; and 
(b) a proposed claim or claims~ 
mue of marketing approval certificate 
72. Where: 
(a) a patentee asks the Secretary to the Department of Community. 
Services and Health, in writing, for the issue of a marketing 
approval certificate in respect of a pharmaceutical substance; 
and i: 
(b} the Secretary to the Department of Community Services and 
Health has approved the marketing of that substance, or a 
product containing that substance, in Australia; 
the Secretary must immediately give a marketing approval certificate 
in the approved form to the patentee in respect of that substance. 
Advertisement or application for extension 
73. Where: 
(a) a patentee applies for an extension of the term of a patent; and 
(b) the patentee gives the Commissioner the documents referred 
to in section 71; 
the Commissioner must publish in the Official Journal a notice to the 
effect that the Commissioner proposes to consider the application. 
Opposition to extension 
74. The Minister, the Secretary to the Department of Community 
Services and Health or a person interested may, within the prescribed 
period and in accordance with the regulations, oppose the grant of an 
extension of the term of a patent on either one or both of the 
following grounds, but on no other ground: 
(a) that the application for the extension, the marketing approval 
certificate, or the proposed claim or claims, is or are not in 
accordance with this Act; IP/N/1/AUS/P/1 
Page 44 
Patents Act 1990 
s. 75 
(b) that the proposed claim or claims claim matter other than the 
pharmaceutical substance or substances to which the applica­
tion relates. 
Determination of application for extension 
75. (1) The Commissioner may determine an application for an 
extension of the term of a patent even though the term of the patent 
has expired. 
(2) Where the time for opposing the grant of an extension of the 
term of a patent has expired, the Commissioner must, if satisfied that: 
(a) the application for the extension, the marketing approval cer­
tificate and the proposed claim or claims are in accordance 
with this Act; and 
(b) the proposed claim or claims do not claim matter other than 
the pharmaceutical substance or substances to which the ap­
plication relates; 
grant an extension of the term of the patent for a period of 4 years in 
relation to the proposed claim or claims, but if not so satisfied, the 
Commissioner must, subject to subsection (3), refuse to grant an 
extension of the term of the patent. 
(3) The patentee may, within such periocJ as the Commissioner 
allows, amend the proposcJ claim or claims. 
(4) If, after amendments are made under subsection (3), the 
Commissioner is satisfied as to the matters referred to in subsection 
(2), the Commissioner must grant an extension of the term of the 
patent for a period of 4 years in relation to the proposed claim or 
claims, but if the Commissioner is not so satisfied the Commissioner 
must refuse to grant an extension of the term of the patent. 
(5) Where the Commissioner grants, or refuses to grant, an 
extension of the term of a patent, the Commissioner must publish in 
the Official Journal a notice setting out the terms of the decision. 
(6) The Commissioner must not grant, or refuse to grant, an 
extension of the term of a patent unless the Commissioner has given 
the applicant, and any person who opposed the grant of the extension 
under section 74, a reasonable opportunity of being heard. 
(7) Where relevant proceeJings in relation to a patent are pending, 
the Commissioner must not determine an application for an extension 
of the term of the patent without the leave of the court. Patents Act 1990 
s. 76 
Limitation on infringement proceedings IP/N/1/AUS/P/l 
Page 45 
76. Where the term of a patent has been extended, proceedings for 
infringement of the patent cannot be instituted in respect of an act 
done more than 2 years after the day on which the term of the patent 
expired unless the act constitutes sale, offering for sale, or distribution 
for a purpose other than obtaining marketing approval, of the phar­
maceutical substance or substances concerned. 
Rights of patentee 
77. Where: 
(a) a patentee applies for an extension of the term of a patent; and 
(b) before the application is determined, the term of the patent 
expires; 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 
commencing on the expiration of the term of the patent and ending on 
the day on which the extension is granted as if the extension had been 
granted at the time when the act was done. 
Appeals 
78. An applicant for an extension of the term of a patent, or a 
person who has opposed or proposes to oppose the extension, may 
appeal to the Federal Court: 
(a) against a decision of the Secretary to the Department of 
. Community Services and Health under section 72 to give or 
not to give a marketing approval certificate; or 
(b) against a decision of the Commissioner under subsection 75 
(2) or (4) granting or refusing to grant an extension of the 
term of the pc1tent. 
Delegation 
79. The Secretary to the Department of Community Services and 
Health may, by signed instrument, delegate to an officer of that 
Department all or any of the powers and functions of the Secretary 
under this Division. IP/N/1/AUS/P/l 
Page 46 
Patents Act 1990 
CHAPTER 7-PATENTS Of. .. ADDITION 
Chapter does not apply to petty patents 
. 80. This Chapter does not apply in relation to petty patents. 
Grant of patent of addition 
81. (1) Where: s.10 
(a) a patent for an invention (in this Chapter called "the main 
invention" ) has been applied for or granted; and 
(b) the applicant or patentee (or a person authorised by the 
applicant or patentee) applies for a further patent for an 
improvement in, or modification of, the main invention; and 
(c) the application for that further patent is made in accordance 
wit...h the regulations; 
the Commissioner may, subject to this Act and the regulations, grant a 
patent of addition for the improvement or modification. 
(2) A patent request and complete specification relating to an 
application for a patent of addition must not be examined before a 
request is made for the examination of the patent request and com­
plete specification relating to the application for the patent for the 
main invention. 
(3) A patent of aduition must not be sealed before the patent for 
the main invention is sealed. 
(4) An appeal lies to the Federal Court against a decision of the 
Commissioner under this section. 
Revocation of patent and grant of patent of addition instead 
82. (1) Where: 
(a) an invention thut is an improvement in, or modification of, a 
main invention is the subject of an independent patent; and 
(b) the patentee of the independent patent is also the patentee of 
the patent for the main invention; 
the Commissioner may, on an application made by the patentee, 
revoke the independent patent and grant a patent of addition for the 
improvement or modification. 
(2) A patent of addition granted under this section must be given 
the same date as the date of the independent patent that is revoked. 
(3) An appeal lies to the Federal Court against a decision of the 
Commissioner refusing an application under this section. Patents Act 1990 
1. 83 
Term of patent of addition IP/N/1/ AUS/P/1 
Page 47 
83. (1) A patent of addition remains in force for so long as the 
patent for the main invention remains in force. 
(2) The term of a patent of addition may be extended under 
Chapter 6, even though the term of the patent for the main invention 
is not extended. 
(3) The extended term of a patent of adJition begins at the end of 
the term of the patent for the main invention. 
Non-extension or term or patent for main invention 
84. If the term of a patent of addition is extended under Chapter 6 
and the patent for the main invention is not extended, the patent of 
addition becomes an independent patent. 
1" 
Revocation of patent for main invention 
85. (1) If the patent for the main invention is revoked by a 
prescribed court, or by the Commissioner under section 101 or 137, 
the patent of addition becomes an independent patent unless otherwise 
ordered by: 
(a) where the patent is revoked by a prescribed court-that court; 
or 
(b) in any other case-the Commissioner. 
(2) Where a patent of addition becomes an independent patent 
under this section, its term cannot be more than the unexpired part of 
the term of the patent for the main invention. 
Renewal fees not payable 
86 .. A fee is not payable for the renewal of a patent of addition. 
Fees payable where patent of addition becomes an independent patent 
87. The fees payable after a patent of addition becomes an 
independent patent, and the dates when they become payable, are to 
be determined by reference to the date of the independent patent. IP/N/1/ AUS/P/1 
Page 48 
Patents Act 1990 
CHAPTER 8-PCT APPLICATIONS AND CONVENTION 
APPLICATIONS 
PART 1-PCT APPLICATIONS 
PCT applications s.11 
88. (1) Subject to this section, a PCT application must, for the 
purposes of this Act other than this Part, be treated as a complete 
application under this Act for a standard patent. 
(2) Where: 
(a) a PCT application contains an indic~tion under Article 43 of 
the PCT that the application is, as far as Australia is con­
cerned, for the grant of a petty patent; or 
(b) before making a request for examination under section 44 or 
48, the applicant files a written request signed by the applicant 
that the PCT application be treated as an application for a 
petty patent; 
the application must be treated, for the purposes of this Act other than 
this Part, as a complete application under this Act for a petty patent. 
(3) The description, drawings anLI claims contained in a PCT 
application must be treated as a complete specification filed in respect 
of the application. 
(4) The filing date of a PCT application is to be taken to be its 
international filing date. 
(5) For the purposes of this Act, an indication, ;n relation to a 
deposited micro-organism furnished under Rule 13 bis. 4, in relation 
to a PCT application, is to be taken to be included in the description 
contained in the PCT application even if the indication is contained in 
another document. 
(6) The reference in subsection (5) to Rule 13 bis. 4 is a reference 
to Rule 13 bis. 4 of the Regulations mentioned in the definition of 
"PCT" in Schedule 1. 
[ Note: "international filing date" is defined in Schedule 1: see also 
section JO.] Patents Act 1990 
1. 19 
Modified application or Act IP/N/1/ AUS/P/1 
Page 49 
89. (1) A PCT application is to be taken to comply with the 
prescribed requirements of this Act and the regulations that relate to 
patent applications but is not to be taken, merely because of section 
88, to comply with any other such requirements that apply to it. 
(2) The description, drawings and claims contained in a PCT 
application are not to be taken, merely because of section 88, to 
comply with the requirements of section 40. 
(3) An applicant is not entitled to ask that any action be taken, or 
that he or she be allowed to take any action, under this Act in relation 
to a P<..1 application unless: 
(a) if the application was not filed in the receiving Office in 
English-a translation of the application into English, verified 
in accordance with the regulations, has been filed; and 
(b) in any case-the prescribed documents have been filed and the 
prescribed fees paid. 
(4) If a translation of a PCT application has been filed, being a 
translation of the kind mentioned in paragraph (3) (a), the description 
and claims, and any matter associated with the drawings, contained in 
the application are to be taken to have heen amended, on the day on 
which the translation was filed, by substituting the translation of the 
description, claims and matter for the original. 
(5) Where: 
(a) a PCT application has been amended under Article 19 of the 
PCT; or 
(b) . a PCT application in respect of which Australia has been 
elected under Chapter II of the PCf within the period speci­
fie<l in Article 39 of the PCT has been amended under Article 
-34 of the PCT; or 
(c) a PCT application has been rectified under Rule 91 of 
the Regulations mentioned in the definition of "PCT,, in 
Schedule I; 
the description, drawings and claims containe<l in the application are, 
for the purposes of this Act, to be taken to have been amended on the 
day on which that amendment or rectification was made. 
Publication of PCT applications 
90. A PCr application is to be taken to have become open to 
public inspection, and to have been published in Australia: 
(a) where a notice in relation to the application is published 
under subsection 92 ( 1) or (2)-on the day on which the 
notice is so published; or IP/N/1/AUS/P/1 
Page 50 
Patents Act 1990 
•. 91 
(b) where a notice in relation to the application is published 
under subsection 92 (3)-on the day on which a copy of the 
application, as so published, is received in the Patent Office. 
Application of certain provisions to PCT applications 
91. For the purposes of applying section 57 to a PCT application, 
references to the complete specification becoming open to public 
inspection are references to the PCT application being taken to have 
become open to public inspection under section 90. 
Notice of publication 
92. (1) Where, in relation to a PCT application that has not 
lapsed, or been withdrawn or refused: 
(a) the applicant complies with subsection 89 (3); and 
~ (b) the applicant asks the Commissioner in writing to publish a 
notice in the Official Journal that the application is open to 
public inspection; and 
(c) the application is not already open to public inspection; 
the Commissioner must publish a notice in the Official Journal stating 
that-a copy of the application is open to public inspection. 
(2) Where: 
(a) a PCT application that has not lapsed, or been withdrawn or 
refused, is to be treated as an application for a standard patent 
under this Act; and 
(b) the applicant complies with subsection 89 (3); and 
(c) the period of 18 months after the .priority date of the applica­
tion has ended; and 
(d) the application is not already open to public inspection; 
· the Commissioner must publish a notice in the Official Journal stating 
that a copy of the application is open to public inspection. 
(3) Where: 
(a) a copy of a PCT application, as published under Article 21 of 
the PCT, is received in the Patent Office; and 
(b) the application has not lapsed, or been withdrawn or refused; 
and 
(c) a notice has not been published under subsection (1) or (2); 
the Commissioner must publish a notice in the Official Journal speci­
fying the date on which the copy was so received and stating th~t the 
copy is open to public inspection. Patents Act 1990 
1. 93 IP/N/1/ AUS/P/1 
Page 51 
(4) Where a notice is published in the Official Journal under this 
section, a copy of the relevant application and of any other prescribed 
document is open to public inspection. 
Evidence of matters arising under PCT 
93. A certificate signed by the Commissioner in relation lo an 
international application, certifying that: 
(a) any matter or thing required or permitted by or under this Act 
or the PCT to be made or done has been made or done; or 
(b) any matter or thing required by or under this Act or the PCT 
not to be made or done has not been made or done; 
is prima facie evidence of the matters contained in the certificate. 
-i. 
PART 2-CONVENTION APPLICATIONS 
Convention applicants may make Convention applications 
94. (1) A Convention applicant in relation to a basic application 
may make a Convention application, or 2 or more such applicants may 
make a joint Convention application, within the prescribed period. 
(2) Where 2 or more basic applications for protection in respect of 
inventions have been made in one or more Convention countries, one 
Convention application may be made within the prescribed period by 
a Convention applicant in relation to those basic applications, or by 2 
or more such entitled applicants jointly, in respect of the inventions 
disclosed in the basic applications. 
Manner of making Convention application 
95. (I) Subject to this section, a Convention application must be 
made and dealt with in the same way as any other patent application. 
(2) A patent request relating to a Convention application must: 
(a) include the prescribed particulars relating to the relevant basic 
application; and 
(b) be accompanied by a complete specification. 
(3) In addition to the complete specification, the prescribed 
documents must be filed within the prescribed period. IP/N/1/ AUS/P/1 
Page 52 
Patents Act 1990 
Withdrawn, abandoned or refused applications 
96. (1) Where, at the time when a Convention application is made 
in respect of an invention: 
(a) an application has been made for protection in respect of the 
invention in a Convention country; and 
(b) the application has been withdrawn, abandoned or refused 
without becoming open to public inspection; and 
(c) the application has not been used as the basis of claiming a 
right of priority in a Convention country under a law of that 
country corresponding to this Part; and 
(d) a later application has been made by the same applicant for 
protection in respect of the invention in the Convention 
country in which the earlier application was made; 
the appJicant may ask the Commissioner to disregard the earlier 
application for the purposes of this Part. 
(2) Where an applicant makes a request under subsection (1): 
(a) the earlier application must be disregarded; and 
(b) neither the applicant nor any other applicant may use the 
earlier application as a basic application for the purposes of 
this Part. 
CHAPTER 9-RE-EXAMINATION 
Re-examination of complete specifications 
97. (I) Subject to this section and the regulations, where the grant 
of a patent is opposed, the Commissioner may re-examine the com­
plete specification. 
(2) Subject to this section and the regulations, where a patent has 
been granted, the Commissioner may, and must if asked to do so by 
the patentee or any other person, re-examine the complete specifica­
tion. 
(3) Where the validity of a patent is disputed in any proceedings 
before a prescribed court under this Act, the court may direct the 
Commissioner to re-examine the complete specification and the Com­
missioner must re-examine the specification accordingly. 
(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). •. 98 
(5) Where: Patents Act 1990 IP/N/1/ AUS/P/1 
Page 53 
(a) the Commissioner has started to re-examine a complete speci­
fication relating to a patent under subsection (2); and 
(b) relevant proceedings in relation to the patent are started; 
the Commissioner must not continue the re-examination. 
Report on re-examination 
98. (1) On re-examining a complete specification, the Commis­
sioner must ascertain and report whether, to the best of his or her 
knowledge, the invention, so far as claimed in any claim and when 
compared with the prior art base as it existed immediately before the 
priority date of that claim: 
(a) is not novel; and 
(b) does not involve an inventive step. 
(2) For the purposes of subsection (1), the prior art base is to be 
taken not to include information made publicly available through the 
doing of an act anywhere in the patent area. 
[ Note: see also section 7.] 
Statement by applicant or patentee 
99. (I) Where the Commissioner reports adversely on a complete 
specification, the applicant or patentee may, within the prescribed 
period, file a statement, in accordance with the regulations, disputing 
the whole .or any part of the report. 
(2) The applicant or patentee may file a statement whether or not 
the applicant or patentee takes steps to amend the complete specifica­
tion, or files a statement of amendments in accordance with a direction 
under section 106. 
Copies of report to be given to court 
100. A copy of a report under section 98, and of any statement 
filed under section 99 in relation to the report, must, where the 
re-examination was directed under subsection 97 (3), be given to the 
court that gave the direction. 
Revocation of patent following re-examination 
101. (1) Where the Commissioner makes an adverse report on a 
re-examination under subsection 97 (2), the Commissioner may, by 
notice in writing, revoke the patent, either wholly or so far as it relates 
to a particular claim, as the case requires. IP/N/1/ AUS/P/1 
Page 54 
Patents Act 1990 
s. 102 
(2) The Commissioner must not revoke a patent under this section 
unless the Commissioner: 
(a) has given the patentee a reasonahle opportunity to be heard; 
and 
(b) has, where appropriate, given the patentee a reasonable 
opportunity to amend the relevant specification for the pur­
pose of removing any lawful ground of objection and the 
patentee has failed to do so. 
(3) The Commissioner must not revoke a patent under this section 
while relevant proceedings in relation to that patent are pending. 
(4) The patentee may appeal to the Federal Court against a 
decision of the Commissioner under this section. 
~ CHAPTER JO-AMENDMENTS 
PART I-AMENDMENTS THAT ARE NOT ALLOWABLE 
What amendments are not allowable? 
102. (1) An amendment of a complete specification is not 
allowable if, as a result of the amenument, the specification would 
claim matter not in substance discloseu in the specification as filed. 
(2) An amendment of a complete specification is not allowable 
after the specification has been accepted if, as a result of the amend­
ment: 
(a) a claim of the specification would not in substance fall within 
the scope of the claims of the specification before amendment; 
or 
(b) the specification would not corn ply with subsection 40 (2) or 
(3). 
(3) This section does not apply to an amendment for the purpose 
of correcting a clerical error or an obvious mistake made in, or in 
relation to, a complete specification. 
Consent of mortgagee or exclusive licensee needed 
103. (1) Where a person is registered as the mortgagee or 
exclusive licensee of a patent, an amendment of the complete speci­
fication is not allowable unless the mortgagee or licensee has con-
sented, in writing, to the amendment. · Patents Act 1990 
•. 104 IP/N/1/ AUS/P/1 
Page 55 
(2) If a mortgagee or licensee refuses to consent to a proposed 
amendment, the Commissioner may, on the application of the ap­
plicant or patentee, if satisfied that the consent has been unreasonably 
refused, direct that the consent of the mortgagee or licensee is not 
necessary. 
PART 2-AMENDMENTS OF PATENT REQUESTS, 
SPECIFICATIONS AND OTHER FILED DOCUMENTS 
Amendments by applicants and patentees 
104. (1) An applicant for a patent or a patentee, may, subject to 
this Act, and subject to and in accordance with the regulations, ask the 
Commissioner for leave to amend the relevant patent request or 
complete specifjcation, or any other filed document, for any purpose 
including eithe·r or both of the following: 
(a) removing a lawful ground of objection to the request or 
specification, whether that objection is raised in the course of 
an examination or re-examination or otherwise; 
(b) correcting a clerical error or an obvious mistake. 
(2) Where an applicant or patentee asks for leave to amend a 
patent request or complete specification, or any other filed document, 
the Commissioner must consider and deal with the request in accor­
dance with th~ regulations. 
(3) Subject to the regulations, the Commissioner may allow an 
amendment subject to conditions. 
(4) The Minister or any other person may, subject to and in 
accordance with the regulations, oppose allowing an amendment. 
(S) The Commissioner must not allow an amendment that is not 
allowable under section 102. 
(6) On the allowance of an amendment, the· amendment is to be 
taken to have been made. 
(7) An appeal lies to the Federal Court, against a decision of the 
Commissioner allowing, or refusing to allow, a requested amendment, 
other than a prescribed decision. 
Amendments directed by court 
10S. (1) In any relevant proceedings in relation to a patent, the 
court may, on the application of the patentee, by order direct the 
amendment of the patent, the patent request or the complete specifica­
tion in the manner specified in the order. IP/N/1/AUS/P/1 
Page 56. 
Patents Act 1990 
,. 106 
(2) An order may be made subject to such terms (if any) as to 
costs, advertisements or otherwise, as the court thinks fit. 
(3) The patentee must give notice of an application for an order to 
the Commissioner, who is entitled to appear and be heard, and must 
appear if the court directs. 
(4) A court is not to direct an amendment that is not allowable 
under section 102. 
(S) The patentee must file a copy of an order within the pre­
scribed period. 
(6) On the filing of a copy of an order, the patent, patent request 
or complete specification is to be taken to have been amended in the 
manner specified in the order. 
Amendments direded by Commissioner: patents 
106. (1) Where: 
(a) a patent has been granted; and 
(b) the Commissioner is satisfied, on re-examination of the rel­
evant complete specification, that the patent is invalid on 
grounds that could be removed by appropriate amendments of 
the specification; 
the Commissioner mny, in accordance with the regulations, direct the 
patentee to file, within such time as the Commissioner allows, a 
statement of proposed amendments of the specification for the purpose 
of removing those grounds. 
(2) The Commissioner must not give a direction without first 
giving the patentee a reasonable opportunity to be heard. 
(3) A patentee may, in accordance with the regulations, amend a 
statement of amendments. 
(4) If the Commissioner is satisfied that the amendments set out in 
a statement (or an amended statement) are allowable and would, if 
made, remove the grounds on which the patent is invalid, the Commis­
sioner must allow the amendments. 
(5) On the allowance of an amendment, the amendment is to be 
taken to have been made. Patents Act 1990 
•. 107 
Amendments directed by Comml~ioner: patent applications 
107. (1) Where: 
(a) a complete patent application has been made; and IP/N/1/ AUS/P/1 
Page 57 
(b) the Commissioner is satisfied that there are lawful grounds of 
objection to the patent request or complete specification, but 
that those grounds of objection could be removed by appro­
priate amendments of the request or specification; and 
(c) the applicant has not taken action to amend the request or 
specification so as to remove those grounds of objection; 
the Commissioner may, in accordance with the regulations, direct the 
applicant to file, within such time as the Commissioner allows, a 
statement of proposed amendments of the request or specification for 
the purpose of removing those grounds of objection. 
(2) The Commissioner must not give a direction without first 
giving the applicant a reasonable opportunity to be heard. 
(3) An applicant may, in accordance with the regulations, amend a 
statement of amendments. 
(4) If the Commissioner is satisfied that the amendments set out in 
a statement (or an amended statement) are allowable and would, if 
made, remove all lawful grounds of objection to the patent request and 
complete specification, the Commissioner must allow the amendments. 
(5) On the allowance of an amendment, the amendment is to be 
taken to have been made. 
Amendments directed by Commissioner: extensions of term of petty 
patents 
108. (1) Where: 
(a) a patentee of a petty patent has applied for an extension of the 
term of the petty patent; and 
(b) the Commissioner is satisfied that the petty patent is invalid on 
grounds that could be removed by appropriate amendments of 
the relevant patent request or complete specification; 
the Commissioner may, in accordance with the regulations, direct the 
patentee to file, within such time as the Commissioner allows, a 
statement of proposed amendments of the request or specification for 
the purpose of removing those grounds. 
(2) The Commissioner must not give a direction without first 
giving the patentee a reasonable opportunity to be heard. IP/N/1/ AUS/P/1 
Page 58 
Patents Act 1990 
1. 109 
(3) A patentee may, in accordance with the regulations, amend a 
statement of amendments. 
(4) If the Commissioner is satisfied that the amendments set out in 
a statement (or an amended statement) are allowable and would, if 
made, remove the grounds on which the petty patent is invalid, the 
Commissioner must allow the amendments. 
(5) On the allowance of an amendment, the amendment is to be 
taken to have been made. 
Appeal 
109. An appeal lies to the Federal Court against a direction of the 
Commissioner under section 106, 107 or 108. 
PART 3-MISCELLANEOUS 
Advertisement of amendment of complete specification 
110. An amendment of a complete specification that is open to 
public inspection must be notified in the Official Journal. 
Amendments relating to micro-organisms 
111. None of the other provisions of this Part apply to an 
amendment of a complete specification relating to a micro-organism, 
being an amendment to which regulations made under paragraph 228 
(2) (d) apply. 
Pending proceedings 
112. A complete specification relating to a patent must not be 
amended, except under section 105, while relevant proceedings in 
relation to the patent are pending. 
Persons claiming under assignment or agreement 
113. (1) Where, before a patent is granted, a person would, if the 
patent were then granted, be entitled under an assignment or agree­
ment, or by operation of law, to: 
(a) the patent or an interest in it: or 
(b) an undivided share in the patent or in such an interest; 
the Commissioner may, on a request made by the person in accor­
dance with the regulations, direct that the application proceed in the 
name of the person, or in the name of the person and the applicant or 
the other joint applicant or applicants, as the case requires. Patents Act 1990 
•. 114 
(2) Where the Commissioner gives a direction: IP/N/1/ AUS/P/1 
Page 59 
(a) the person is to be taken to be the applicant, or a joint 
applicant, as the case requares; and 
(b) the patent request is to be taken to have been amended so as 
to request the grant of a patent to the person, either alone or 
as a joint patentee, as the case requires. 
Priority date of certain amended claims 
114. (1) Where a claim of a complete specification claims matter 
that was in substance disclosed as a result of amending the specifica­
tion, the priority date of the claim must be determined under the 
regulations. 
(2) Objection cannot be taken to a patent request or complete 
specification, a11d a patent is not invalid, on the ground that the 
invention, so far as claimed in a claim mentioned in subsection ( 1), 
does not involve an inventive step having regard to any publication or 
use of the invention after its disclosure in the complete specification as 
filed. 
Restriction on recovery of damages etc. 
115. (1) Where a complete specification is amended after becom­
ing open to public inspection, damages shall not be awarded, and an 
order shall not be made for an account of profits, in respect of any 
infringement of the patent before the date of the decision or order 
allowing or directing the amendment: 
(a) unless the court is satisfied that the specification without the 
amendment was framed in good faith and with reasonable skill 
and knowledge; or 
(b) if the claim of the specification that was infringed is a claim 
·mentioned under subsection 114 (1). 
(2) Subsection ( 1) has effect subject to subsections 57 (3) and ( 4). 
Interpretation of amended specifications 
116. The Commissioner or a court may, in interpreting a complete 
specification as amended, refer to the specification without amend­
ment. IP/N/1/ AUS/P/1 
Page 60 
Patents Act 1990 
CHAPTER I I -INFRINGEMENT s. 117 
PART I -INFRINGEMENT AND INFRINGEMENT PROCEEDINGS 
Infringement by supply of products 
117. (I) If the use of a product by a person would infringe a 
patent, the supply of that product by one person to another is. an 
infringement of the patent by the supplier unless the supplier is the 
patentee or licensee of the patent. 
(2) A reference in subsection ( 1) to the use of a product by a 
person is a reference to: · 
(a) if the product is capable of only one reasonable use, having 
regard to its nature or design-that use; or 
(b) if the product is not a staple commercial product-any use of 
the product, if the supplier had reason to helieve that the 
person would put it to that use; or 
(c) in any case-the use of the product in accordance with any 
instructions for the use of the product, or any inducement to 
use the product, given to the person by the supplier or 
contained in an advertisement published by or with the au­
thority of the supplier. 
Infringement exemptions: use in or on foreign vessels, aircraft or 
vehicles 
118. The rights of a patentee are not infringed: 
(a) by using the patented invention on board a foreign vessel, in 
the body of the vessel, or in the machinery, tackle, apparatus 
or other accessories of the vessel, if the vessel comes into the 
patent area only temporarily or accidentally and the invention 
is used exclusively for the needs of the vessel; or 
(b) by using the patented invention in the construction or working 
of a foreign aircraft or foreign land vehicle, or in the acces­
sories of the aircraft or vehicle, if the aircraft or vehicle comes 
into the patent area only temporarily or accidentally. 
Infringement exemptions: prior use 
119. (1) Where, immediately before the priority date of a claim, a 
person: 
(a) was making a product or using a process claimed in that claim; 
or Patents Act 199Cl 
s. 120 IP/N/1/ AUS/P/1 
Page 61 
(b) had taken definite steps (whether by way of contract or other-
wise) to make that product or use that process; 
the person may, despite the grant of a patent for the product or 
process so claimed, make the product, or use the process, (or continue 
to do so) in the patent area, without infringing the patent. 
(2) Suhsection (1) does not apply if the person: 
(a) derived the subject-matter of the invention concerned from the 
patentee or the patentee's predecessor in title in the invention; 
or 
(b) before the relevant priority date, had stoppe<.J making the 
product or using the process (other than temporarily), or had 
abandoned (other than temporarily) the steps mentioned in 
paragraph (1) (b ). 
Infringement pr~eedings 
120. (I) Infringement proceedings may be started in a prescribed 
court, or in another court having jurisdiction to hear and determine 
the matter, by the patentee or an exclusive licensee. 
(2) If an exclusive licensee starts infringement proceedings, the 
patentee must be joined as a defendant ~nless joined as a plaintiff. 
(3) A patentee joined as a defendant is not liable for costs unless 
the patentee enters an appearance and takes part in the proceedings. 
(4) Infringement proceedings must be started within: 
(a) 3 years from the day on which the relevant patent is granted; 
or 
(b} · 6 years from the day on which the infringing act was done; 
whichever period ends later. 
Counter-claim for revocation of patent 
121. (1) A defendant in infringement proceedings may apply by 
way of counter-claim in the proceedings for the revocation of the 
patent. 
(2) The provisions of this Act relating to proceedings for the 
revocation of a patent apply, with the necessary changes, to a counter­
claim. 
Relief for infringement of patent 
122. (I) The relief which a court may grant for infringement of a 
patent includes an injunction (subject to such terms, if any, as the 
court thinks fit) and, at the option of the plaintiff, either damages or 
an account of profits. IP/N/1/ AUS/P/1 
Page 62 
Patents Act 1990 
S, 123 
(2) On the application of either party, the court may make such 
order for the inspection of any thing in or on any vehicle, vessel, 
aircraft or premises, and may impose such terms and give such 
directions about the inspection, as the court thinks fit. 
Innocent infringement 
123. (1) A court may refuse to award damages. or to make an 
order for an account of profits, in respect of an infringement of a 
patent if the defendant satisfies the court that, at the date of the 
infringement, the defendant was not aware, and had no reason to 
believe, that a patent for the invention existed. 
(2) If patented products, marked so as to indicate that they are 
patented in Australia, were sold or used in the patent area to a 
substantial extent before the date of the infringement, the defendant is 
to be taken to have been aware of the existence of the patent unless 
the contrary is established. 
(3) Nothing in this section affects a court's power to grant relief hy 
way of an injunction. 
PART 2-NON-INFRINGEMENT DECLARATIONS 
Interpretation 
124. In this Part: 
"patentee" includes an exclusive licensee. 
Application for non-infringement declaration 
125. (1) A person who wishes to exploit an invention may apply 
to a prescribed court for a declaration that the exploitation of the 
invention would not infringe a claim of a particular complete specifica­
tion. 
(2) An application may be made: 
(a) at any time after the complete specification has become open 
to public inspection; and 
(b) whether or not the nominated person or patentee has made 
any assertion to the effect that the exploitation of the invention 
would infringe the claim. 
(3) The nominated person or patentee must be joined as a 
respondent in the proceedings. Patents Act 1990 
s. 12, 
Proceedings for non-infringement declarations IP/N/1/ AUS/P/1 
Page 63 
126. (1) A prescribed court must not make a non-infringement 
declaration unless a patent has been granted in respect of the relevant 
invention and: 
(a) the applicant for the declaration: 
(i) has asked the nominated person or patentee in writ­
ing for a written admission that the proposed ex­
ploitation would not infringe a claim of the complete 
specification; and 
(ii) has given the nominated person or patentee full writ­
ten particulars of the proposed exploitation; and 
(iii) has unuertaken to pay a reasonable sum for the 
nominated person's or patentee's expenses in obtain­
ing advice ahout whether the proposed exploitation 
~would infringe the claim; and 
(b) the nominated person or patentee has refused or failed to 
make the admission. 
(2) The validity of a claim cannot be questioned in proceedings for 
a non-infringement declaration. 
(3) The costs of all parties in proceedings for a non-infringement 
declaration must be paid by the applicant for the declaration unless 
the court otherwise oruers. 
Effect of non-infringement declarations 
127. If: 
(a) a nominated person or patentee has given a person a written 
admission that the exploitation of an invention would not 
infringe a claim. or a prescribed court has made a non­
infringement declaration in respect of an invention; and 
(b) the patentee later gets an injunction restraining the person 
from exploiting the invention as specified in the admission, or 
the declaration is revoked; 
the person is not liahle: 
(c) to account to the patentee for any profits, made by the person 
before the date on which the injunction was granted or the 
declaration was revoked, from the exploitation of the invention 
as specified in the admission or declaration; or 
(d) to pay damages for any loss suffered by the patentee before 
that date as a result of that exploitation. IP/N/1/ AUS/P/1 
Page 64 
Patents Act 1990 
PART 3-UNJUSTIFIED THREATS OF INFRINGEMENT 
PROCEEDINGS 
.Application for relier from unjustified threats s. 128 
128. (1) Where a person, by means of circulars, advertisements or 
otherwise, threatens a person with infringement proceedings, or other 
similar proceedings, a person aggrieved may apply to a prescribed 
court, or to another court having jurisdiction to hear and determine 
the application, for: 
(a) a declaration that the threats are unjustifiable; and 
(b) an injunction against the continuance of the threats; and 
(c) the recovery of any damages sustained by the applicant as a 
result of the threats. 
(2) S'-!:bsection ( 1) applies whether or not the person who made 
the threats is entitled to, or interested in, the patent or a patent 
application. 
Court's power to grant relief 
129. The court may grant an applicant under section 128 the relief 
applied for unless the respondent satisfies the court that the acts about 
which the threats were made infringed, or would infringe: 
(a) a claim that is not shown by the applicant to be invalid; or 
(b) rights under section 57 in respect of a claim that is not shown 
by the applicant to be a claim that would be invalid if a patent 
had been granted. 
Counter-claim for infringement 
130. (1) The respondent in proceedings under section 128 may 
apply, by way of counter-claim, for relief to which the respondent 
would be entitled in separate proceedings for an infringement by the 
applicant of the patent to which the threats relate. 
(2) Where the respondent applies by way of counter-claim, the 
applicant may, without making a separate application under Chapter 
12, apply in the proceedings for the revocation of the patent. 
(3) The provisions of this Act relating to infringement proceedings 
apply, with the necess:uy changes, to a counter-claim. 
(4) The provisions of this Act relating to proceedings for the 
revocation of a patent apply, with the necessary changes, to an applica­
tion under subsection (2). Patents Act 1990 
s. Ill 
Notification of patent not a threat iP/N/1/ AUS/P/1 
Page 65 
131. The mere notification· of the existence of a patent, or an 
application for a patent, does not constitute a threat of proceedings for 
the purposes of section 128. 
Liability of legal practitioner or patent attorney 
132. A legal practitioner or a registered patent attorney is not 
liable to proceedings under section 128 in respect of an act done in his 
or her professional capacity on behalf of a client. 
CHArfER 12-COMPULSORY LICENCES AND REVOCATION OF 
PATENTS 
Compulsory licences 
133. (1) A person may apply to a prescribed court, after the end 
of the prescribed period, for an or<ler requiring the patentee to grant 
the applicant a licence to work the patented invention. 
(2) After hearing the application, the court may make the order if 
satisfied that: 
(a) the reasonable requirements of the public with respect to the 
patented invention have not been satisfied; and 
(b) the patentee has given no satisfactory reason for failing to 
exploit the patent. 
(3) An order must direct that the licence: 
(a) . is not to give the licensee, or a person authorised by the 
licensee, the exclusive right to work the patented invention; 
arid 
(b) is to be assignable only in connection with an enterprise or 
goodwill in connection with which the licence is used; 
and may direct that the licence is to be granted on any other terms 
specified in the order. 
(4) An order operates, without prejudice to any other method of 
enforcement, as if it were embodied in a deed granting a licence and 
executed by the patentee and all other necessary parties. 
Revocation of standard patent after grant of compulsory licence 
134. (1) Where a compulsory licence relating to a standard patent 
is granted, an interested person may apply to a prescribed court, after 
the end of the prescribed period, for an order revoking the patent. IP/N/1/ AUS/P/1 
Page 66 
Patents Act 1990 
s. 135 
(2) After hearing the application, the court may make the order if 
satisfied that: 
(a) the reasonable requirements of the public with respect to the 
patented invention have not heen satisfied; and 
(b) the patentee has given no satisfactory reason for failing to 
exploit the patent. 
Reasonable requirements of the public 
135. (1) For the purposes of sections 133 and 134, the reasonable 
requirements of the public with respect to a patented invention are to 
be taken not to have been satisfied if: 
(a) an existing trade or industry in Australia, or the establishment 
of a new trade or industry in Australia, is unfairly prejudiced, 
or the demand in Australia for the patented product, or for a 
product resulting from the patented process, is not reasonably 
met, because of the patentee's failure: 
(i) to manufacture the patente<l product to an adequate 
extent, and supply it on reasonable terms; or 
(ii) to manufacture, to an adequate extent, a part of the 
patented product that is necessary for the efficient 
working of the proc.luct, and supply the pan on rea­
sonable terms; or 
(iii) to carry on the patented process to a reasonable 
extent; or 
(iv) to grant licences on reasonable terms; or 
(b) a trade or industry in Australia is unfairly prejudiced by the 
conditions attached by the patentee (whether before or after 
the commencing day) to the purchase, hire or use of the 
patented product, the use or working of the patented process; 
or 
(c) if the patented invention is not being worked in Australia on a 
commercial scale, but is capable of being worked in Australia. 
(2) If, where paragraph (1) (c) applies, the court is satisfied that 
the time that has elapsed since the patent was sealed has, because of 
the nature of the invention or some other cause, been insufficient to 
enable the invention to be worked in Australia on a commercial scale, 
the court may adjourn the hearing of the application for the period 
that the court thinks sufficient for that purpose. 
Orders to be consistent with international agreements 
136. An order must not be made under section 133 or 134 that is 
inconsistent with a treaty between the Commonwealth and a foreign 
country. Patents Act 1990 
s. 137 
Revocation on surrender of patent IP/N/1/ AUS/P/1 
Page 67 
137. (1) A patentee may, at any time, by written notice to the 
Commissioner, offer to surrender the patent. 
(2) The Commissioner must give notice of an offer in accordance 
with the regulations. 
(3) After hearing all interested persons who notify the Commis­
sioner in accordance with the regulations of their wish to be heard, the 
Commissioner may accept the offer and revoke the patent. 
(4) Where relevant proceedings in relation to a patent are pending, 
the Commissioner must not accept an offer to surrender the patent 
without either the leave of the court or the consent of the parties to 
the proceedings. 
(5) Where a compulsory licence is in force in relation to a patent, 
the Commissioner must not accept an offer to surrender the patent. 
Revocation of patents in other circumstances 
138. (1) The Minister or any other person may apply to a 
. prescribed court for an order revoking a patent. 
(2) At the hearing of the application, the respondent is entitled to 
begin and give evidence in support of the patent and, if the applicant 
gives evidence disputing the validity of the patent, the respondent is 
entitled to reply. 
(3) After hearing the application, the court may, by order, revoke 
the patent, either wholly or so far as it relates to a claim, on one or 
more of the following grounds, but on no other ground: 
(a) that the patentee is not enti,tled to the patent; 
(b) that the invention is not a patentable invention; 
(c) ·that the patentee has contravened a condition in the patent; 
(d) that the patent was obtained by fraud, false suggestion or 
mi s representation; 
(e) that an amendment of the patent request or the complete 
specification was made or obtained by fraud, false suggestion 
or m isrepresen tat ion; 
(f) that the specification does not comply with subsection 40 (2) 
or (3). 
Parties to proceedings 
139. (I) The paten tee, and any person claiming an interest in the 
patent as exclusive licensee or otherwise, are parties to any proceed­
ings under section 133, 134 or 138. IP/N/1/ AUS/P/1 
Page 68 
Patents Act 1990 
(2) In any proceedings under section 133, 134 or 138: s. 140 
(a) the applicant must serve a copy of the application on the 
Commissioner; and 
. (b) the Commissioner may appear an<l be heard in the proceed­
ings. 
Commissioner to be given copies of orders 
140. An office copy of an order made under this Chapter must be 
served on the Commissioner by the Registrar or other appropriate 
officer of the court that made the order. 
CHAPTER J3_:.WJTHDRAWAL AND LAPSING OF APPLICATIONS 
AND CEASING OF PATENTS 
Withdrawal or applications 
141. A patent application is to be treated as having been with­
drawn if, and only if, the applicant lodges a written notice of with­
drawal signed by the applicant. 
~psing of applications 
142. (1) A provisional application for a patent lapses at the end of 
the period prescribed for the purpose of section 38 or, if that period is 
extended, at the end of the period as so extended. 
(2) A complete application for a standard patent lapses if: 
(a) the applicant does not ask for an examination of the patent 
request and complete specification within the relevant period 
prescribed for the purposes of subsection 44 (1), (2) or (3), as 
the case requires; or 
(b) the applicant does not comply with a direction of the Commis­
sioner under subsection 45 (3) within the time specified by the 
Commissioner under that subsection and the Commissioner 
directs that the application lapse; or 
(c) the examination of the patent request and complete specifica­
tion has been dcferre<l under section 46 and the applicant does 
not ask for an examination within the period prescribed for 
the purposes of this paragraph; or 
(d) the applicant does not pay a continuation fee for the applica­
tion within the period prescribed for the purposes of this 
paragraph; or 
(e) the patent request and complete specification are not accepted 
within the period prescribed for the purposes of this para­
graph. Patents Act 1990 
•. 143 IP/N/1/ AUS/P/1 
Page 69 
(3) A complete application for a patent lapses if the applicant does 
not comply with a direction of the Commissioner under section 107 
within the time allowed by the Commissioner under that section. 
(4) A complete application for a petty patent lapses if the ap­
plicant does not: 
(a) comply with a direction of the Commissioner under section 
108 within the time allowed by the Commissioner under that 
section; or 
(b) comply with a notice given to the applicant under subsection 
50 (2) within the time specified by the Commissioner under 
that subsection. 
Ceasing of patents 
143. A standard patent ceases if the patentee: 
1) 
(a) does not pay a renewal fee for the patent within the prescribed 
period; or 
(b) does not file the prescribed documents (if any) within the 
prescribed period. 
CHAPTER14-CONTRACTS 
Void conditions 
144. (1) A condition in a contract relating to the sale or lease of, 
or a licence to exploit, a patented invention is void if the effect of the 
condition would be: 
(a) · to prohibit or restrict the buyer, lessee or licensee from using a 
product or process (whether patented or not) supplied or 
owned by a person other than the seller, lessor or licensor, or a nominee of the seller, lessor or licensor; or 
(b) to require the buyer, lessee or licensee to acquire a product 
not protected by the patent from the seller, lessor or licensor, 
or a nominee of the seller, lessor or licensor. 
(2) Subsection ( 1) does not apply if: 
(a) the seller, lessor or licensor proves that, at the time the 
contract was made, the buyer, lessee or licensee had the option 
of buying the product, or obtaining a lease or licence, on 
reasonable terms without the condition; and 
(b) the contract entitles the buyer, lessee or licensee to be relieved 
of the liability to comply with the condition on giving the 
other party 3 months' notice in writing and paying, in com­
pensation for the relief: IP/N/1/ AUS/P/1 
Page 70 
Patents Act 1990 
s. 145 
(i) in the case of a sale-such sum as is fixed by an 
arbitrator appointed by the Minister; or 
(ii) in the case of a lease or licence-such rent or royalty 
as is so fixed for the rest of the term of the contract. 
(3) A person is not stopped from applying for or obtaining relief 
in any proceedings under this .Act merely because of an admission 
made by the person about the reasonableness of terms offered to the 
person as mentioned in paragraph (2) (a). 
(4) It is a defence to proceedings for infringement of a patent that 
the patented invention is, or was when the proceedings were started, 
the subject of a contract containing a provision, inserted by the 
patentee, that is void under this section. 
(5) If the patentee offers the other parties to a contract mentioned 
in subs~ction ( 4) a new contract that does not contain the void 
condition but that otherwise gives the parties the same rights as the 
existing contract, then, whether or not the other parties accept the new 
contract in place of the existing contract, subsection (4) ceases to 
apply, but the patentee is not entitled to damages or an account of 
profit for an infringement of the patent committed before the offer of 
the new contract. 
Termination of contract after patent ceases to he in force 
145. (1) A contract relating to the lease of, or a licence to exploit, 
a patented invention may be terminated hy either party, on giving 3 
months' notice in writing to the other party, at any time after the 
patent, or all the patents, by which the invention was protected at the 
time the contract was made, have ceased to be in force. 
(2) Subsection ( 1) applies despite anything to the contrary in that 
~ontract or in any other contract. 
Effect of Chapter 
146. Nothing in this Chapter: 
(a) affects a condition in a contract that prohibits a person from 
selling products other than those of a particular person; or 
(b) validates a contract that would otherwise be invalid; or 
(c) affects a right to terminate a contract, or to terminate a 
condition of a contract, being a condition exercisable indepen­
dently of this section; or 
(d) affects a condition in a contract for the lease of, or a licence to 
exploit, a patented product, that reserves to the lessor or 
licensor the right to supply new parts of the patented product 
that are required to put or keep it in repair. •. 147 Patents Act 1990 
CHAPTER IS-SPECIAL PROVISIONS RELATING TO 
ASSOCIATED TECHNOLOGY IP/N/ 1/ AUS/P/1 
Page 71 
Certificate by Director as to associated technology 
147. (1) Where the Commissioner considers that a specification in 
respect of an application may contain information of a kind referred to 
in the definition of "associated technology" in subsection 4 ( 1) of the 
Safeguards Act, the Commissioner must give the Director written 
notice to that effect together with a copy of the patent request and 
specification. 
(2) On receiving a notice, the Director may, if satisfied that the 
specification contains information of that kind, issue a certificate to 
that effect. 
(3) 
(a) 
(b) Where the Director is satisfied that: j; 
the possession by the applicant or the nominated person of the 
associated technology containing the information was not in 
accordance with a permit; or 
the communication of the information involved in making the 
application was not in accordance with an authority; 
the Director may inclu<le in the certificate: 
(c) if the application is not a relevant international application-a 
direction that the application should lapse; or 
(d) if the application is a relevant international application-a 
direction that the application should not be treated as an 
international application. 
(4) Where the Director issues a certificate, the Director must give 
a copy of it to the Commissioner who must give a copy to the 
applicant. 
Lapsing etc. of applications 
148. (1) Where: 
(a) the Commissioner receives a copy of a certificate under sub-
section 147 (2) in relation to an application; and · 
(b) the certificate includes a direction under subsection 147 (3); 
then, upon receipt hy the Commissioner of that copy: 
(c) if the application is not a relevant international applica­
tion-the application lapses; or 
(d) if the application is a relevant international application-the 
application must cease to be treated as an international ap­
plication. IP/N/1/ AUS/P/1 
Page 72 
Patents Act 1990 
s. 149 
(2) Where an application has lapsed under this section, the 
Commissioner must publish a notice to that effect in the Official 
Journal. 
Revocation of direction 
149. Where under section 148 an application has lapsed, or has 
ceased to be treated as an international application, because of a 
direction by the Director under section 147, the applicant may apply 
in writing to the Director for the revocation of the direction and the 
Director may revoke the direction. 
Restoration of lapsed application 
150. (1) Where an application has lapsed under section 148, the 
applicant may, in writing, ask the Commissioner to restore it. 
i: 
(2) On receiving a request, the Commissioner must restore the 
application if satisfied that: 
(a) the relevant direction of the Director is no longer in force; and 
(b) there is no other reason not to do so. 
(3) Where the Commissioner restores an application, the Commis­
sioner must publish a notice to that effect in the Official Journal. 
(4) Where an application is restored under this section, such 
provisions as are prescribed have effect for the protection or com­
pensation of persons who exploited (or took definite steps by contract 
or otherwise to exploit) the relevant invention after the lapse of the 
application and before the day on which its restoration was notified in 
the Official Journal. 
(S) Proceedings cannot be started under section 57 in respect of 
anything done during the period from and including the day on which 
the application lapsed to and including the day on which its restora­
tion was notified in the Official Journal. 
Reinstatement of application as an international application 
151. (1) Where a relevant international application has ceased to 
be treated as an international applicc1tion under section 148, the 
applicant may ask the Commissioner in writing to reinstate it. 
(2) On receiving a request, the Com missioner must reinstate the 
application as an international application if satisfied that: 
(a) the relevant direction of the Director is no longer in force; and 
(b) there is no other reason not to do so. Patents Act 1990 
•. 152 IP/N/1/AUS/P/1 
Page 73 
(3) Where the Commissioner reinstates an application as an 
international application, the application must be treated as an inter­
national application. 
(4) Where: 
{a) the relevant international application specifies Australia as a 
designated State; and 
{b) the Commissioner cannot reinstate the application merely 
because, under the PCT, it is to be considered as having been 
withdrawn; and 
(c) the applicant files, within the prescribed period, a written 
request signed by the applicant that the application be treated 
as an application under this Act for a standard patent or for a 
petty patent; and 
{d) the applicant files any prescribed documents and .pays the 
prescribed fee; 
then, except as otherwise prescribed: 
(e) the application must be treated as requested; and 
{f) the description, claims and drawings in the application must 
be treated as a complete specification filed in respect of the 
application; and 
(g) the application and complete specification must be treated as 
having been filed on the date on which the relevant interna­
tional application was filed. 
Notice of prohibitions or restrictions on publication 
152. (1) Where the Director issues a certificate under section 147 
in relation to an application, the Director may give written notice to 
the Commissioner of any prohibitions or restrictions on the publica­
tion or communication of the information in the specification, or in a 
relevant abstract, that the Director considers appropriate. 
(2) On receiving a notice, the Commissioner must take such steps 
as are necessary or expedient to give effect to it. 
(3) Without limiting Lhe genernlity of subsection (2), the Commis­
sioner may, by written order, prohibit or restrict the publication or 
communication of information about the subject-matter of the applica­
tion, whether generally or in relation to a particular person or class of 
persons. 
(4) A person must not, except in accordance with the written 
consent of the Commissioner, publish or communicate information in 
contravention of an order. 
Penalty: Imprisonment for 2 years. IP/N/1/ AUS/P/1 
Page 74 
Effect of order Patents Act 1990 
•. 153 
153. (1) Where an order is in force in relation to an application 
for a standard patent, the application may proceed up to the accep­
tance of the patent request and complete specification, but the com­
plete specification must not be made open to public inspection, the 
acceptance must not be notified in the Official Journal and a patent 
must not be granted on the application. 
(2) Where an order is in force in relation to an application for a 
petty patent, the application may proceed up to the acceptance of the 
patent request and complete specification but the complete specifica­
tion must not be made open to public inspection and a patent must 
not be granted on the application. 
(3) Where an order in relation to an application for a standard 
patent hllas been revoked after the acceptance .of the patent request and 
complete specification, the acceptance must be notified in the Official 
Journal within the prescribed period. 
(4) Nothing in .this Act prevents disclosing information about an 
invention to the Director for the purpose of obtaining advice on 
whether an order should be made, amended or revoked. 
CHAPTER 16-JURISDICTION AND POWERS OF COURTS 
Jurisdiction of Federal Court 
154. (1) The Federal Court has jurisdiction with respect to 
matters arising under this Act. 
(2) The jurisdiction of the Federal Court to hear and determine 
appeals against decisions or directions of the Commissioner is exclu­
~ive of the jurisdiction of any other court except the jurisdiction· of the 
High Court under section 75 of the Constitution. 
(3) A prosecution for an offence against this Act must not be 
started in the Federal Court. 
Jurisdiction of other prescribed courts 
155. (1) Each prescribed court (other than the Federal Court) has 
jurisdiction with respect to matters arising under this Act in respect of 
which proceedings may, under this Act, be started in a prescribed 
court. Patents Act 1990 
•. 156 IP/N/1/ AUS/P/1 
Page 75 
(2) The jurisdiction conferred by subsection ( 1) on the Supreme 
Court of a Territory is conferred: 
(a) in the case of proceedings for the infringement of a patent or 
proceedings under subsection 125 (1) or section 128, or a 
matter arising under this Act that may be heard and deter­
mined in the course of such proceedings- to the extent that 
the Constitution permits; and 
(b) in any other case-only in relation to proceedings instituted by 
a natural person who is resident in the Territory, or a corpora­
tion that has its principal place of business in the Territory, at 
the time the proceedings are started. 
Exercise of jurisdiction 
156. The jurisdiction of a prescribed court under section 154 or 
155 is to be exerciseu by a single judge. 
Transfer of proceedings 
157. (1) A prescribed court in which proceedings under this Act 
have been started may, on the application of a party made at any stage 
in the proceedings, by order, transfer the proceedings to another 
prescribed court having jurisdiction to hear and determine the pro­
ceedings. 
(2) Where a coun transfers proceedings to another court: 
(a) all documents of record relevant to those proceedings filed in 
the transferring court shall be sent to the other court by the 
Registrar or other appropriate officer of the transferring court; 
and 
(b) the other court shall proceed as if the proceedings bad been 
started in the other court and as if the same steps in the 
proceedings had been taken there as had been taken in the 
transferring court. 
Appeals 
158. (1) An appeal lies lo the Federal Court ag.1insl a judgment or 
order of: 
(a) another prcscrihell court exercising jurisdiction under this Act; 
or 
(b) any other court in proceedings under subsection 120 (I) or 
section I 28. IP/N/1/ AUS/P/1 
Page 76 
Patents Act 1990 
,. 159 
(2) Except with the leave of the Federal Court, an appeal does not 
lie to the Full Court of the Federal Court against a judgment or order 
of a single judge of the Federal Court in the exercise of its jurisdiction 
to hear and determine appeals from decisions or directions of the 
Commissioner. 
(3) With the special leave of the High Court, an appeal lies to the 
High Court against a judgment or order referred to in subsection ( 1 ). 
(4) Except as otherwise provided by this section, an appeal does 
not lie against a judgment or order referred to in subsection (l). 
Commissioner may appear in appeals 
159. The Commissioner may appear and be heard at the hearing 
of an appeal to the Federal Court against a decisi.on or direction of the 
Commissjoner even if the Commissioner is not a party to the appeal. 
Powers of Federa I Court 
160. On hearing an appeal against a decision or direction of the 
Commissioner, the Federal Court may do any one or more of the 
following: 
(a) admit funher evidence orally, or on affidavit or otherwise; 
(b) permit the examination and cross-examination of witnesses, 
including witnesses who gave evidence before the Commis­
sioner; 
(c) order an issue of fact to he tried as it directs; 
(d) affirm, reverse or vary the Commissioner's decision or direc­
tion; 
(e) give any judgment, or make any order, that, in all the 
circumstances, it thinks fit; 
(f) order a party to pay costs to another party. 
CHAPTER 17-THE CROWN 
PART I-INTRODUCTORY 
Nominated persons and patentees 
161. A reference in this Chapter to a nominated person or to a 
patentee includes a reference to the successor in title of the nominated 
person or patentee or an exclusive licensee of the nominated person_ or 
patentee. Patents Act 1990 
•. 162 
Commonwealth and State authorities IP/N/1/ AUS/P/1 
Page 77 
162. A reference in this Cha1>tcr to the Commonwealth includes a 
reference to an authority of the Commonwealth and a reference to a 
State includes a reference to an authority of a State. 
PART 2-EXPLOITATION BY THE CROWN 
Exploitation or inventions by Crown 
163. (1) Where, at any time after a patent application has been 
made, the invention concerned is exploited by the Commonwealth or a 
State (or by a person authorised in writing by the Commonwealth or a 
State) for the services of the Commonwealth or the State, the exploita­
tion is not an infringement: 
(a) if the application is pending-of the nominated person's rights 
in the invention; or 
(b) if a patent has been granted for the invention-of the patent. 
(2) A person may be authorised for the purposes of subsection (1): 
(a) before or after any act for which the authorisation is given has 
been done; and 
(b) before or after a patent has been granted for the invention; 
and 
(c) even if the person is directly or indirectly authorised by the 
nominated person or patentee to exploit the invention. 
Nominated person or patentee to be informed of exploitation 
164·. As soon as practicable after an invention has been exploited 
under subsection 163 (1), the relevant authority must inform the 
applicant and the nominated person, or the patentee, of the exploita­
tion and give him or her any information about the exploitation that 
he or she from time to time reasonably requires, unless it appears to 
the relevant authority that it would be contrary to the public interest 
to do so. 
Remuneration and terms for exploitation 
165. (1) No remuneration is payable to a nominated person or 
patentee for the exploitation of an invention under subsection 163 (1) 
if, before the priority date of the relevant claim, the invention was 
recorded in a document by, or tested by or for, the relevant authority, 
unless the nominated person or patentee directly or indirectly commu­
nicated the invention to the relevant authority. IP/N/1/ AUS/P/1 
Page 78 
Patents Act 1990 
s. 16' 
(2) Subject to subsection ( 1), the terms for the exploitation of the 
invention are such terms as are agreed, or determined by a method 
agreed, between the relevant authority and the nominated person or 
the patentee or, in the absence of agreement, as are determined by a 
prescribed court on the application of either party. 
(3) For the purposes of subsection (2), the terms, or the method, 
may be agreed before, during or after the exploitation. 
(4) When fixing the terms, the court may take into account any 
compensation that a person interested in the invention or the patent 
has received, directly or indirectly, for the invention from the relevant 
authority. 
Previous agreements inoperative 
166. ~ An agreement or licence ( whether made or given before or 
after the commencement of this Act) fixing the terms on which a 
person other than the Commonwealth or a State may exploit an 
invention is inoperative with respect to the exploitation, after the 
commencement of this Act, of the invention under subsection 163 ( 1), 
unless the agreement or licence has been approved: 
(a) if the relevant authority is the Commonwealth- by the Min­
ister; or 
(b) if the relevant authority is a State-by the Attorney-General of 
the State. 
Sale of products 
167. (1) The right to exploit an invention under subsection 163 (I) 
includes the right to sell products made in exercise of that right. 
(2) Where under subsection 163 (l) the sale of products is not an 
infringement of: 
(a) a patent; or 
(b) a nominated person's rights in the products; 
the buyer, and any person claiming through the buyer, is entitled to 
deal with the products as if the relevant authority were the patentee or 
the nominated person. 
Supply of products by Commonwealth to foreign countries 
168. Where the Commonwealth has made an agreement with a 
foreign country to supply to that country products required for the 
defence of the country: Patents Act 1990 
s. 169 IP/N/1/AUS/P/1 
Page 79 
(a) the use of a product or process hy the Commonwealth, or by a 
person authorised in writing by the Commonwealth, for the 
supply of that product is to be taken, for the purposes of this 
Chapter, to be use of the product or process by the Common­
wealth for the services of the Commonwealth; and 
(b) the Commonwealth or the authorised person may sell those 
products to the country under the agreement; and 
(c) the Commonwealth or the authorised person may sell to any 
person any of the products that are not required for the 
purpose for which they were made. 
Declarations that inventions have been exploited 
169. (1) A patentee who considers that the patented invention has 
been exploited under subsection 163 (I) may apply to a prescribed 
court for a declaration to that effect. 
(2) In proceedings under subsection ( 1 ): 
(a) the alleged relevant authority is the defendant; and 
(b) the alleged relevant authority may apply by way of counter­
claim in the proceedings, for the revocation of the patent. 
(3) The provisions of this Act relating to the revocation of patents 
apply, with the necessary changes, to a counter-claim. 
Sale of forfeited articles 
170. Nothing in this Chapter affects the right of the Common­
wealth or a State, or of a person deriving title directly or indirectly 
from the Commonwealth or a State, to sell or use an article forfeited 
under a law of the Commonwealth or the State. 
PART 3-ACQUISITIONS BY AND ASSIGNMENTS TO THE CROWN 
Acquisition of inventions or patents by Commonwealth 
171. (1) The Governor-General may direct that a patent, or an 
invention that is the suhject of a patent application, be acquired by the 
Commonwealth. 
(2) When a direction is given, all rights in respect of the patent or 
the invention are, hy force of this subsection, transferred to and vested 
in the Commonwealth. 
(3) Notice of the acquisition must be: 
(a) given to the applicant and the nominated person, or the 
patentee; and IP/N/1/ AUS/P/1 
Page 80 
Patents Act 1990 
s. 172 
(b) published in the Official Journal and the Gazelle unless, in 
the case of the acquisition of an invention that is the subject of 
an application for a patent, a prohibition order, or an order 
under section 152, is in force in respect of the application. 
(4) The Commonwealth must pay a compensable person such 
compensation as is agreed between the Commonwealth and the person 
or, in the absence of agreement, as is determined by a prescribed court 
on the application of either of them. 
Assignment or invention to Commonwealth 
172. (1) An inventor, or an inventor's successor in title, may 
assign the invention, and any patent granted or to be granted for the 
invention, to the Commonwealth. 
(2) • The assignment and all covenants and agreements in the 
assignment are valid and effectual, even if valuable consideration has 
not been given for the assignment, and may be enforced by proceed­
ings in the name of the Minister. 
PART 4-PROHIBITION ORDERS 
Prohibition of publication of information about inventions 
173. {I) Subject to any directions of the Minister, the Commis­
sioner may, if it appears to the Commissioner to be necessary or 
expedient to do so in the interests of the defence of the Common­
wealth, by written order: 
(a) prohibit or restrict the publication of information about the 
subject-matter of an application for a patent (including an 
international application); or 
(b) prohibit or restrict access to a micro-organism deposited for 
the purposes of section 41 with a prescribed depositary institu­
tion situated in Australia. 
(2) A person must not contravene a prohibition order except in 
accordance with the written consent of the Commissioner. 
Penalty: Imprisonment for 2 years. 
(3) A reference in subsection ( 1) to giving access to a micro­
organism includes a reference to giving a sample of the micro­
organism. Patents Act 1990 
1. 174 
Effect of prohibition orders IP/N/1/AUS/P/l 
Page 81 
174. (l) While a prohibition order is in force in relation to an 
application for a standard patent, the application may proceed up to 
the acceptance of the patent request and complete specification, but 
the complete specification must not be made open to public inspec­
tion, the acceptance must not be notified in the Official Journal and a 
patent must not be granted on the application. 
(2) Where a prohibition order in relation to an application for a 
standard patent is revoked after the acceptance of the patent request 
and complete specification, the acceptance must be notified in the 
Official Journal within the prescribed period. 
(3) While a prohibition order is in force in relation to an 
application for a petty patent, the application may proceed up to the 
acceptance of the~ patent request and complete specification, but the 
complete specification must not be made open to public inspection 
and a patent must not be granted on the application. 
Disclosure of information to Commonwealth authority 
175. Nothing in this Act prevents disclosing information about an 
invention, or giving access to, or a sample of, a micro-organism to a 
department or authority of the Commonwealth for the purpose of 
obtaining advice on whether a prohibition order should be made, 
amended or revoked. 
International applications treated as applications under this Act 
176. Where: 
(a) · an international application specifies Australia as a designated 
State; and 
{b) as a result of a prohibition order or of anything done in 
reliance on section 175, the application is, under the PCT, to 
be considered as having been withdrawn; and 
(c) the applicant files, within the prescribed period, a written 
request signed by the applicant that the application be treated 
as an application under this Act for a standard patent or for a 
petty patent; and 
(d) the applicant files any prescribed documents and pays the 
prescribed fee; 
then, except as otherwise prescribed: 
(e) the application must be treated as requested; and 
(f) the description, claims and drawings in the application must 
be treated as a complete specification filed in respect of the 
application; and IP/N/1/ AUS/P/1 
Page 82 
Patents Act 1990 
s. 177 
(g) the application and specification must be treated as having 
been filed on the date on which the international application 
was filed. 
CHAPTER 18-MISCELLANEOUS OFFENCES 
False representations about the Patent Office 
177. (1) A person must not use, in connection with his or her 
business, words that would reasonably lead to the belief that his or her 
office is, or is officially connected with, the Patent Office. 
Penalty: $3,000. 
(2) Without limiting subsection ( l ), a person who: 
(a) places, or allows to be placetJ, on the building in which his or 
her office is situated; or 
(b) uses when advertising his or her office or business; or 
(c) places on a tJocument. as a description of his or her office or 
business; 
the words "Patent Office'' or "Office for obtaining patents" , or words 
of similar import, whether alone or together with other words, is guilty 
of an offence ag~inst that subsection. 
False representations about patents or patented articles 
178. (1) A person must not falsely represent that he or she, or 
another person, is the patentee of an invention. 
Penalty: $6,000. 
(2) A person must not falsely represent that an article sold by him 
or her is patented in Australia, or is the subject of an application for a 
patent in Australia. 
Penalty: $6,000. 
(3) Without limiting suhscction (2): 
(a) a person is to be taken to represent that an article is patented 
in Australia if the word "patent" or "patented" , the words 
"provisional patent" , or any other word or words implying 
that a patent for the article has been obtained in Australia, are 
stamped, engraved or impressed on, or otherwise applied to, 
the article; and 
(b) a person is to be taken to represent that an article is the 
subject of an application for a patent in Australia if the words 
"patent applied for" or "patent pending" , or any other word Patents Act 1990 
s. 179 IP/N/1/ AUS/P/1 
Page 83 
· or words implying that an application for a patent for the 
article has been made in Australia, are stamped, engraved or 
impressed on, or otherwise applied to, the article. 
(4) A prosecution must not he started for an offence against 
subsection (I) or (2) without the consent of the Minister, or a person 
authorised by the Minister. 
Failure to comply with summons 
179. A person who: 
(a) is summoned by the Commissioner to appear as a witness; and 
(b) has been offered payment of reasonahle expenses; 
must not, without lawful excuse, fail to comply with the summons. 
Penalty: $1,000. 
Refusal to give evidence 
180. A person who appears before the Commissioner must not, 
without lawful excuse, refuse: 
(a) to be sworn or to make an affirmation; or 
(b) to answer questions that the person is lawfully required to 
answer. 
Penalty: $3,000. 
Failure to produce documents or articles 
181. A person who: 
(a) is required by the Commissioner to produce a document or 
article; and 
(b) has been offered payment of reasonable expenses; 
must not, without lawful excuse, fail to produce it. 
Penalty: $3,000. 
Officers not to traffic in inventions 
182. (1) The Commissioner, a Deputy Commissioner or an 
employee must not buy, sell, acquire or traffic in: 
(a) an invention or patent, whether granted in Australia or any­
where else; or 
(b) a right to, or licence under, a patent, whether granted in 
Australia or anywhere else. 
Penalty: $6,000. IP/N/1/ AUS/P/1 
Page 84 
Patents Act 1990 
s. 18J 
(2) A purchase, sale, acquisition, assignment or transfer made or 
entered into in contravention of this section is voi<l. 
(3) This section does not apply to the inventor or to an acquisition 
by bequest or devolution by law. 
Unauthorised disclosure of information by employees etc. 
183. The Commissioner, each Deputy Commissioner and each 
employee must not disclose information about a matter that has been 
or is being dealt with under this Act or the 1952 Act unless required 
or authorised to do so by this Act, a written direction of the Commis­
sioner or an order of a court. 
Other unauthorised disclosures of information 
184. , A person to whom section 71 of the Safeguar<ls Act applies 
must not disclose information about a matter that has been or is being 
dealt with under this Act or the 1952 Act unless required or 
authorised to do so by the Safeguards Act, this Act, a written direction 
of the Director or an order of a court. 
Penalty: Imprisonment for 2 years. 
Employees etc. not to prepare documents or search records 
185. The Commissioner, a Deputy Commissioner or an employee 
must not: 
(a) prepare, or help prepare, a document to be filed unJer this 
Act; or 
(b) search the recor<ls of the Patent Office; 
unless required or authorised to do so by this Act, a written Jirection 
of the Commissioner or an order of a court. 
Penalty: $1,000. 
CHAPTER 19-THE REGISTER AND OFFICIAL DOCUMENTS 
Register of Patents 
186. (1) A Register of Patents is to be kept at the Patent Office. 
(2) The Register may be kept wholly or partly by use of a 
computer. Patents Act 1990 
s. 187 
(3) If the Register is kept wholly or partly by use of a computer: 
(a) references in this Act to an entry in the Register are to be read 
as including references to a record of particulars kept by use 
of the computer and comprising the Register or part of the 
Register; and 
(b) references in this Act to particulars being registered, or en­
Lered in the Register, are to be read as including references to 
the keeping of a record of those particulars as part of the 
Register by use of the computer; and 
(c) references in this Act to the rectification of the Register are to 
be read as including references to the rectification of the 
record of particulars kept by use of the computer and com­
prising the Regif.ter or part of the Register. 
Registration of particulars of patents etc. 
187. Particulars of patenls in force, and other prescribed particu­
lars relating to patents (if any) must be registered. 
Trusts not registrable 
188. Notice of • .my kind of trust relating to a patent or licence is 
not receivable by the Commissioner and must not be registered. 
Power of patentee to deal with patent 
189. (I) A patentee may, subject only to any rights appearing in 
the Register to be vested in another person, deal with the patent as the 
absolute owner of it and give good discharges for any consideration for 
any such dealing. 
(2) This section does not protect a person who deals with a 
patentee otherwise than as a purchaser in good faith for value and 
without notice of any fraud on the part of the patentee. 
(3) Equities in relation to a patent may be enforced against the 
patentee except to the prejudice of a purchaser in good faith for value. 
Inspection of Register 
190. (1) The Register must he available for inspection at the 
Patent Office by any person during the hours that it is open for 
business. 
(2) If a record of particulars is kept by use of a computer, 
subsection ( 1) is to be taken to be complied with, to the extent that the 
Register consists of those particulars, by giving members of the public 
access to a computer terminal which they can use to inspect the 
particulars, either on a screen or in the form of a computer printout. IP/N/1/ AUS/P/1 
Page 85 IP/N/1/ AUS/P/1 
Page 86 
False entries in Register Patents Act 1990 
191. A person must not knowingly or recklessly: 
(a) make a false entry in the Register; or 
(b) cause a false entry to he made in the Register; or S, 191 
(c) tender in evidence a llocument that falsely purports to be a 
copy of or extract from an entry in the Register. 
Penalty: Imprisonment for 2 years. 
Orders for rectification of Register 
192. (1) A person aggrieved by: 
(a) the omission of an entry from the Register; or 
(b) an entry made in the Register without sufficient cause; or 
(c) an ~entry wrongly existing in the Register; or 
(d) an error or defect in an entry in the Register; 
may apply to a prescribed court for an order to rectify the Register. 
(2) On hearing an application, the court may: 
(a) decide any question which it is necessary or expedient to 
decide in connection with the rectification of the Register; and 
(b) make any artier it thinks fit for the rectification of the Regis-
ter. 
(3) The Commissioner: 
(a) must be given notice or an application; and 
(b) may appear and be heard in the proceedings; and 
(c) must appear ir directed to do so by the court. 
(4) An office copy of an order must be served on the Commis­
sioner by the Registrar or other t1ppropriate officer of the court. 
(5) On receiving an office copy of an order, the Commissioner 
must rectify the Register accordingly. 
Inspection of documents 
193. All <.locuments filed in connection with the registration of 
prescribed particulars u ndcr section 187 must be available for inspec­
tion at the Patent Office by any person during the hours when it is 
open for business. 
Information obtainable from Commissioner 
194. The Commissioner may give any person information about: 
(a) a patent; or 
(b) an application for a patent that is open to public inspection; or Patents Act 1990 
s. 19S 
(c) any prescribed document or matter. 
Evidence-the Register 
195. (1) The Register is prima fade evidence of any particulars 
registered in it. 
(2) If the Register is wholly or partly kept by use of a computer, a 
document signed by the Commissioner reproducing in writing all or 
any of the particulars comprising the Register, or that part of it, is 
admissible in any proceedings as prima facie evidence of those particu­
lars. 
Evidence-unregistered particulars 
196. A document in respect of which particulars have not been 
entered in the Regi~ter is not admissible in any proceedings in proof of 
the title to a patent or to an interest in a patent unless: 
(a) the court or tribunal before which the proceedings are brought 
otherwise directs; or 
(b) the proceedings are: 
(i) for an order under section 192; or 
(ii) to enforce equities in relation to a patent or licence. 
Evidence-certificate and copies of documents 
197. (1) A. signed certificate to the effect that: 
(a) anything required or permitted by this Act or the 1952 Act to 
be done or not to be done had or had not been done on a 
date specified in the certificate; or 
(b) a document in the Patent Office or its library was available for 
public inspection on a date specified in the certificate; 
is pr_ima facie evidence of the matters in the certificate. 
(2) A signed copy of or signed extract from the Register is 
admissible in any proceeuings as if it were the original. 
(3) A signed copy of or signed extract from a document in the 
Patent Office or its library is admissible in any proceedings as if it 
were the original. 
(4) In this section: 
"signed" means signed by the Commissioner. IP/N/1/AUS/P/1 
Page 87 IP/N/1/ AUS/P/1 
Page 88 
Patents Act 1990 
CHAPTER 20-PATENT ATTORNEYS s. 191 
PART I-REGISTRATION, PRIVILEGES AND PROFESSIONAL 
CONDUCT 
Registration of patent attorneys 
198. (1) A Register of Patent Attorneys is to be kept at the Patent 
Office. 
(2) 
who: 
(a) 
(b) 
(c) 
(d) 
(e) The Commissioner must register as a patent attorney a person 
is an Australian citizen; and 
£ 
is at least 21; and 
has passed the prescribed subjects; and 
has the prescribed qualifications; and 
has been employed as prescribed, for not less than the pre­
scribed period, by a patent attorney. 
Deregistration 
199. 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. 
Privileges 
200. (1) A patent attorney: 
(a) is entitled to prepare all documents, transact all business and 
conduct all proceedings for the purposes of this Act; and· 
(b) has such other rights and privileges as are prescribed. 
(2) A communication between a patent attorney and his or her 
client, and any record or document made for the purposes of such a 
communication, are privileged to the same extent as a communication 
between a solicitor and his or her client. 
(3) Nothing in this section authorises a patent attorney to prepare 
a document to be issued from or filed in a court or to transact 
business, or conduct proceedings, in a court. Patents Act 1990 
•. 201 
PART 2-0FFENCES 
Offences: unregistered persons etc. IP/N/1/ AUS/P/1 
Page 89 
201. (1) A person must not carry on business, practise or act as a 
patent attorney unless the person is a registered patent attorney or a 
legal practitioner. 
Penalty: $3,000. 
(2) The members of a partnership must not carry on business, 
practise or act as patent attorneys unless each member is a registered 
patent attorney or a legal practitioner. 
Penalty: $3,000. 
(3) A person must not describe himself or herself, or hold himself 
or herself out, o,.r permit himself or herself to be described or held out, 
as a patent attorney, or agent for obtaining patents unless the person is 
a registered patent attorney. 
Penalty: $3,000. 
(4) The members of a partnership must not describe themselves, 
or hold themselves out, or permit themselves to be described or held 
out, as patent attorneys, or agents for obtaining patents, unless each 
member is a registered patent attorney. 
Penalty: $3,000. 
(5) A company must not carry on business, practise, act, describe 
itself or hold itself out, or permit itself to be described or held out, as 
a patent attorney or agent for obtaining patents. 
Penalty: $15,000. 
(6) It is not an offence against subsection (I), (2) or (5) if the legal 
representative of a deceased patent attor_ney: 
(a) carries on the patent attorney's business for not more than 3 
years after the patent attorney's death or for any further 
period allowed by a prescribed court; and 
(b) is a registered patent attorney, or em ploys a registered patent 
attorney to manage the business on his or her behalf. 
(7) For the purposes of this section, a person or company is to be 
taken to carry on business as a patent attorney if the person or 
company undertakes in Australia, for gain: 
(a) to apply for or obtain patents in Australia or anywhere else; or 
(b) to prepare specifications or other documents for the purposes 
of this Act or the patent law of another country; or IP/N/1/ AUS/P/1 
Page 90 
Patents Act 1990 
,. 202 
(c) to give advice (other than advice of a scientific or technical 
nature) about the validity, or infringement, of patents. 
Documents prepared by legal practitioners 
202. A legal practitioner must not prepare a specification, or a 
document relating to an amendment of a specification, unless: 
(a) the practitioner is acting under the instructions of a registered 
patent attorney; or 
(b) the amendment has been directed by an order under section 
105. 
Penalty: $3,000. 
Attendance at patent attorney's office 
203. A registered patent attorney must not practise, act, or' hold 
himself or herself out as practising or acting, as a patent attorney, at an 
office or place of business where specifications or other documents are 
prepared for the purposes of this Act, unless he or she, or another 
registered patent attorney, is in regular attendance at, and in continu­
ous charge of, that office or place. 
Penalty: $3,000. 
Time for starting prosecutions 
i04. Despite section 2 t of the Crimes Act 1914, a prosecution for 
an offence against subsection 201 (1), (2), (3), (4) or (5), or section 202 
or 203, may be started at any time within 5 years after the offence was 
committed. 
CHAPTER 21-ADMINISTRATION 
Patent Office and sub-offices 
205. (1) For the purposes of this Act, there is to be an office 
called the Patent Office. 
(2) There is to be a sub-office of the Patent Office in each State. 
Patent Office seal 
206. There is to be a seal of the Patent Office and impressions of 
the seal must be judicially noticed. Patents Act 1990 
•. 207 
Commissioner or Patents 
207. (1) There is to be a Commissioner of Patents. IP/N/1/ AUS/P/1 
Page 91 
(2) The Commissioner has, under the Minister, the administration 
of the Patent Office. 
Deputy Commissioner of Patents 
208. (1) There is to be at least one Deputy Commissioner of 
Patents. 
(2) Subject to any direction by the Commissioner, a Deputy 
Commissioner has all the powers and functions of the Commissfoner 
under this Act, except the Commissioner's powers of delegation under 
section 209. 
(3) A powerii or function of the Commissioner under this Act, 
when exercised by a Deputy Commissioner, is to be taken, for the 
purposes of this Act, to have been exercised by the Commissioner. 
(4) The exercise of a power or function of the Commissioner 
under this Act by a Deputy Commissioner does not prevent the 
exercise of the power or function. by the Commissioner. 
(5) Where, under this Act, the exercise of a power or function by 
the Commissioner, or the operation of a provision· of this· Act, is 
dependent on the opinion, belief or state of mind of the Commissioner 
in relation to a matter, that power or function may be exercised by a 
Deputy Commissioner, and that provision may operate, as the case 
.may be, on the opinion, belief or state of mind of the Deputy 
Commissioner in relation to that matter. 
Delegation of Commissioner's powers and functions 
209. (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 to an employee. 
(2) A delegate must, if so required by the instrument of delegation, 
exercise or perform a delegated power or function under the direction 
or supervision of the Commissioner or an employee specified in the 
instrument. 
Commissioner's powers 
210. The Commissioner may, for the purposes of this Act: 
(a) summon witnesses; and 
(b) receive written or oral evidence on oath or affirmation; and 
(c) require the production of documents or articles; and IP/N/1/AUS/P/1 
Page 92 
Patents Act 1990 
•. 211 
(d) award costs against a party to proceedings before the Commis­
sioner. 
Recovery of c~ts awarded by Comml~loner 
211. Costs awarded by the Commissioner against a party are 
recoverable as a debt. 
CHAPTER 22-MISCELLANEOUS 
Coples of examination reports to be communicated 
212. A copy of each report relating to an examination or a 
re-examination under this Act must, subject to Chapters 15 and 17, be 
given to the applicant or patentee, as the case requires . 
• 
Making and signing applications etc. 
213. An application, notice or request required or permitted under 
this Act to be made or signed by a person may be made or signed, on 
behalf of that person, by a person entitled under this Act to practise as 
a patent attorney. 
FIiing of documents 
214. A document may be filed with the Patent Office by delivering 
the document to a sub-office of the Patent Office either personally or 
by post or by any other prescribed means. 
Death of applicant or nominated person 
215. (I) If an applicant dies before a patent is granted on the 
application, his or her legal representative may proceed with the 
application. 
(2) If a nominated person dies before a patent is granted on the 
application, the patent may be granteu to his or her legal representa­
tive. 
(3) Where, at any time after a patent is granted, the Commissioner 
is satisfied that the patentee had died (or, in the case of a body 
corporate, had ceased to exist) before the patent was granted, the 
Commissioner may amend the patent by substituting for the name of 
the patentee the name of the. person to whom the patent should have 
been granted. 
(4) An amendment by the Commissioner has effect, and is to ·be 
taken always to have had effect, accordingly. Patents Act 1990 
s. 216 
Exercise or discretionary power by Commissioner IP/N/1/ AUS/P/1 
Page 93 
216. (1) The Commissioner must not exercise a discretionary 
power under this Act adversely to any person applying for the exercise 
of that power without first giving that person a reasonable opportunity 
to be heard. 
(2) Subsection ( 1) does not apply in relation to the Commis­
sioner's power to direct an applicant to request an examination. 
A~ssors 
217. A prescribed court may, if it thinks fit, call in the aid of an 
assessor to assist it in the hearing and trial or determination of any 
proceedings under this Act.. 
Costs where pat_ent invalid in part 
218. In any proceedings in which the· validity of a patent is 
disputed, the court may, if it is satisfied that some of the claims in the 
complete specification which are alleged to be invalid are not invalid 
but that other claims are invalid, apportion the costs between the 
parties to the proceedings as it thinks just. 
Security for costs 
219. If a person who neither resides nor carries on business in 
Australia: 
(a) gives notice of opposition under this Act; or 
(b) appeals to the Federal Court; 
the Commissioner or the Federal Court, as the case may be, may 
require the person to give security for the costs of the proceeding or 
appeal and, where such security is not given to the satisfaction of the 
Commissioner or the Federal Court, as the case may be, may dismiss 
the proceeding or appeal. 
Costs of attendance of patent attorney 
220. Where, at the hearing of proceedings under this Act, a patent . 
attorney attends in court for the purpose of assisting a party in the 
conduct of the hearing and an order is made for payment of the costs 
of that party, those costs may include an allowance for that attendance. 
Service of documents 
221. Where this Act provides for a document to be served on, or 
given or sent to, a person and the person has given the Commissioner 
an address in Australia for service of documents, the document may be 
served on, or given or sent to, the person by post to that address. IP/N/1/ AUS/P/1 
Page 94 
Patents Act 1990 
Publication of Official Journal etc. 1. 222 
222. (1) The Commissioner shall issue periodically an official 
journal containing such matters as are prescribed and such other 
matters (if any) as the Commissioner thinks fit. 
(2) The Commissioner must make arrangements for selling copies 
of the Official Journal, and of complete specifications which are open 
to public inspection. 
(3) The Commissioner may prepare, publish and sell such docu­
ments relating to inventions and patents as the Commissioner thinks 
fit. 
Extensions of lime 
223. (1) Where, because of an error or omission by the Commis­
sioner, a Deputy Commissioner or an employee, a relevant act that is 
required to be done within a certain time is not, or cannot be, done 
within that time, the Commissioner must extend the time for doing the 
act. 
(2) Where, because of: 
(a) an error or omission by the person concerned or by his or her 
agent or attorney; or 
(b) circumstances beyond the control of the person concerned; 
a relevant act that is required to be done within a certain time is not, 
or cannot be, done within that time, the Commissioner may, on 
application made by the person concerned in accordance with the 
regulations, extend the time for doing the act. 
(3) The time allowed . for doing a relevant act may be extended, 
whether before or after that time has expired. 
(4) Where an application is made for an extension of time for 
more than 3 months, the Commissioner must advertise the application 
in the Official Journal. 
(5) An application cannot be made under subsection (2) for an 
extension of time for more than 3 months in respect of an act or step 
required to be done or taken for the purposes of Division 2 of Part 3 
of Chapter 6. 
(6) A person may, as prescribed, oppose the granting of the 
application. 
(7) Where: 
(a) a patent application lapses, or a patent ceases, because. of a 
failure to do one or more relevant acts within the time al­
lowed; and Patents Act 1990 
s.224 
(b) the time for doing that act or those acts is extended; 
the application or patent must be treated as having been restored. 
(8) Where: IP/N/1/ AUS/P/1 
Page 95 
(a) a provisional patent application lapses under subsection 142 
( 1) at the end of the period prescribed for the purposes of 
section 38; and 
(b) that period is extended; 
the application must be treated as if it had not lapsed. 
(9) Where an extension of time for more than 3 months is granted 
for doing a relevant act, the prescribed provisions have effect for the 
protection or compensation of persons who, before the day on which 
the application for extension of time is advertised under subsection ( 4), 
exploited (or took definite steps by way of contract or otherwise to 
exploit) the in'vention concerned because of the failure to do the 
relevant act within the time allowed, the lapsing of the patent applica­
tion or the ceasing of the patent, as the case may be. 
(10) Infringement proceedings cannot be brought in respect of an 
infringement committed: 
(a) between the day on which the patent application lapses and 
the day on which it is restored; or" .. 
(b) between the day on which the patent ceases and the day on 
which it is restored. 
(11) In this section: 
"relevant act" means an action (other than a prescribed action) in 
relation to a patent, a patent application, or any proceedings under 
this Act (other than court proceedings), and includes the making of a 
Convention application within the time allowed for making such ap­
plications. 
Review of decisions 
224. (1) Application may be made to the Administrative Appeals 
Tribunal for review of: 
(a) a decision of lhe Commissioner under section 10, 17, 32, 33 or 
66, suhsection 103 (2), section 113, subsection 137 (3), para­
graph 142 (2) (h ), subsection 150 (2), 151 (2), 152 (2) or 152 
(3), or section J 73, 2 J 5 or 223; or 
(b) a decision of the Commissioner under Chapter 20 not to 
register a person who is a patent attorney; or 
(c) a decision of the Director under subsection 147 (2) or (3), 
section 149 or subsection 152 ( 1 ). IP/N/1/AUS/P/1 
Page 96 
Patents Act 1990 
1. 225 
(2) Where a person who makes a decision mentioned in subsection 
( 1) gives the person or persons affected by the decision written notice 
of the making of the decision, the notice must include a statement to 
the effect that, subject to the Administrative Appeals Tribunal Act 
1975, application may be made to the Administrative Appeals Tribunal 
for review of the decision to which the notice relates by or on behalf · 
of the person or persons whose interests are affected by the decision. 
(3) Failure to comply with subsection (2) in relation to a decision 
does not affect the validity of the decision. 
(4) In this section: 
"decision" has the same meaning as in the Administrative Appeals 
Tribunal Act 1975. 
Conduc! of directors, servants and agents 
225. (1) Where it is necessary to establish, for the purposes of a 
prosecution for an offence under this Act, the state of mind of a 
company in relation to particular conduct, it is sufficient to show: 
(a) that the conduct was engnged in by a director, servant or agent 
of the company within the scope of his or her actual or 
apparent authority; and 
(b) that the director, servant or agent had the state of mind. 
(2) Any conduct engaged in on behalf of a company by a director, 
servant or agent of the company within the scope of his or her actual 
or apparent authority is to be taken, for the purposes of a prosecution 
for an offence under this Act, to have been engaged in also by the 
company, unle~s it establishes that it took reasonable precautions and 
exercised due diligence to avoid the conduct. 
(3) Where it is necessary to establish, for the purposes of a 
prosecution for an offence under this Act, the state of mind of a 
person other than a company in relation to particular conduct, it is 
sufficient to show: 
(a) that the conduct was engaged in by a servant or agent of the 
person within the scope of his or her actual or apparent 
authority; and 
(b) that the servant or agent had the state of mind. 
(4) Any conduct engaged in on behalf of a person other than a 
company by the person's servant or agent within the scope of his or 
her actual or apparent authority is to be taken, for the purposes of a 
prosecution for an offence under this Act, to have been engaged in 
also by the person, unless the person establishes that he or she took 
reasonable precautions and exercised due diligence to avoid the con­
duct. Patents Act 1990 
•• 22' IP/N/1/ AUS/P/1 
Page 97 
(5) A reference in this section to an offence under this Act 
includes a reference to an offence created by section 5, 6, 7 or 7 A, or 
subsection 86 (1), of the Crimes Act 1914, that relates to this Act or 
the regulations. 
(6) Where: 
(a) a person other than a company is convicted of an offence 
under this Act; and 
(b) the person would not have been convicted of the offence but 
for subsections (3) and ( 4); 
the person is not liable to be punished by imprisonment for that 
offence. 
(7) A reference in subsection ( 1) or (3) to the state of mind of a 
person includes a reference to: 
(a) the knowledge, intention, opinion, belief or purpose of the 
person; and 
(b) the person's reasons for the intention, opinion, belief or pur­
pose. 
(8) A reference in this section to a director of a company includes 
a reference to a constituent member of a body corporate incorporated 
for a public purpose by a law of the Commonwealth, of a State or of a 
Territory. 
(9) A reference in this section to engaging in conduct includes a 
reference to failing or refusing to engage in conduct. 
Reproduction or published specifications does not infringe copyright 
226. The reproduction in 2 dimensions of the whole or part of a 
provisional or complete specification that is open to public inspection 
does not constitute an infringement of any copyright subsisting under 
the Copyright Act 1968 in any literary or artistic work. 
Fees 
227. (1) The prescribed fees are payable. 
(2) Without limiting subsection ( 1 ). different fees may be pre­
scribed in respect of the doing of an act according to the time when 
the act is done. 
(3) Where a fee is payable in respect of the doing of an act by the 
Commissioner, the Commissioner must not do the act until the fee has 
been paid. IP/N/1/ AUS/P/1 
Page 98 
Patents Act 1990 
s. 221 
(4) Subject to subsection (5), where a fee is payable in respect of 
the doing of an act by a person other than the Commissioner, or a fee 
is payable in respect of the filing of a document, the act is to be taken 
to have been done, or the document is to be taken to have been filed, 
in spite of the failure to pay the fee. 
(S) Where the Commissioner notifies the person concerned, or his 
or her patent attorney, in accordance with the regulations, of the 
failure to pay the fee, the act is not to be taken to have been done, or 
the document is not to be taken to have been filed, before the day on 
which the fee is paid. 
Regulations 
228. (1) The Governor-General may make regulations, not in­
consistent with this Act: 
(a) prescribing matters required or permitted by this Act to be 
prescribed; and 
(b) prescribing matters necessary or convenient to be prescribed 
for carrying out or giving effect to this Act; and 
(c) prescribing matters necessary or convenient to be prescribed 
for the conduct of any business relating to the Patent Office; 
and 
(d) for the purpose of carrying out or giving effect to the Budapest 
Treaty; and 
(e) for the purpose of carrying out or giving effect to the PCT, 
whether in relation to PC'T applications or otherwise. 
(2) Without limiting subsection ( 1 ), that subsection includes the 
power to make regulations: 
(a) making provision for and in relation to the procedures for the 
examination of a patent request and complete specification 
and the re-examination of a complete specification; and 
(b) making provision for and in relation to the reports to be made 
in relation to an examination and a re-examination; and 
(c) making provision for and in relation to the amendment of 
patent requests, provisional and complete specifications, and 
other filed documents: 
(i) to correct a clerical error or obvious mistake; or 
(ii) to remove a lawful ground of objection, whether the 
objection is raised in the course of examination or 
re-examination or otherwise; or 
(iii) for any other purpose; and 
(d) making provision for and in relation to the amendment of a 
complete specification to include the matters mentioned in 
paragraph 6 (c); and Patents Act 1990 
a.lll 
(e) making provision for and in relation to the amendment of an 
entry in the Register to correct a clerical error or an obvious 
mistake, or for any other purpose; and 
(f) making provision for and in relation to the amendment of a 
patent to correct a clerical error or an obvious mistake; and 
(g) making provision for and in relation to the preparation, filing 
and publication of abstracts of complete specifications; and 
(h) making provision for and in relation to opposition proceed­
ings; and 
(j) empowering the Commissioner to direct an applicant for a 
patent to do such things as are necessary to ensure that the 
complete specification is in accordance with the requirements 
of the regulations relating to the preparation of documents for 
filing and: 
(i) providing for the lapsing of the application if such a 
direction is not complied with within a time specified 
in the regulations; and 
(ii) providing for the restoration of an application that 
has so lapsed; and 
(k) empowering the Commissioner to hear and determine the 
question whether a person is an interested person for the 
purpose of doing any act permitted to be done under this Act 
by an interested person; and 
(m) providing for appeals against decisions of the Commissioner 
made under the regulations; and 
(n) making provision for and in relation to the practice and 
procedure of prescribed courts in proceedings under this Act, 
including provision prescribing the time within which any 
proceeding may be started or anything else may be done, and 
providing for the extension of any such time; and 
(p) requiring persons to make statutory declarations in relation to 
patent applications or patents or in proceedings under this Act 
(not being court proceedings); and 
(q) making provision for and in relation to the making of a 
declaration, or the doing of an act, under this Act on behalf of 
a person who, because of infancy or physical or mental disabil­
ity, is unable to make the declaration or do the act; and 
(r) for the control of the professional conduct of registered patent 
attorneys and the practice of the profession and, for that 
purpose, making provision for and in relation to all or any of 
the following: IP/N/1/ AUS/P/1 
Page 99 IP/N/1/ AUS/P/1 
Page 100 
Patents Act 1990 
,. 221 
(i) making complaints, and hearing charges, against reg­
istered patent attorneys about their professional con­
duct; 
(ii) imposing penalties on registered patent attorneys, 
including issuing a reprimand and suspending or can­
celling registration; 
(iii) summoning witnesses; 
(iv) requiring persons to give evidence on oath (whether 
orally or otherwise); 
(v) administering oaths to persons giving evidence 
( whether orally or otherwise); 
( vi) requiring persons to produce documents or articles; 
and 
(s) makjng provision for and in relation to: 
(i) the deposit for the purposes of this Act, the Budapest 
Treaty, or both, of micro-organisms with prescribed 
depositary institutions and the storage and testing of, 
and furnishing of samples of, micro-organisms by 
those institutions; and 
(ii) the charging of fees by prescribed depositary institu­
tions situated in Australia in relation to the matters 
described in subparagraph (i); and 
(iii) the making of reports by prescribed depositary in­
stitutions situated in Australia in relation to those 
matters; and 
(iv) the powers and functions of the Commissioner in 
relation to prescribed depositary institutions with re­
spect to those matters; and 
(t) modifying the operation of this Act in relation to PCT applica­
tions that are treated as patent applications under this Act by 
excluding, varying, or substituting different provisions for, 
specified provisions of this Act; and 
(u) making provision for and in relation to the destruction of 
documents relating to applications for patents filed not less 
than 25 years before the time of destruction; and 
(w) making provision for and in relation to the refund, in specified 
circumstances, of the whole or part of a fee paid in respect of 
the filing of a document; and 
(y) making provision for and in relation to the remission of, or the 
exemption of specified classes of persons from the payment of, 
the whole or part of a fee; and Patents Act 1990 
s.22' 
(z) prescribing penalties for offences against the regulations not 
exceeding a fine of $1,000; and 
(za) making such transitional and savings provisions as are neces­
sary or convenient as a result of the repeal of the 1952 Act 
and the enactment of this Act. 
(3) The regulations may make provision for matters referred to in 
paragraph (2) (s) by empowering the Commissioner, on behalf of the 
Commonwealth, to enter into agreements with prescribed depositary 
institutions with respect to those matters. 
(4) Regulations made under paragraph (2) (s) and subsection (3) 
may make different provision with respect to different matters dealt 
with by or under those regulations, but this subsection shall not be 
taken to limit a power to make regulations conferred by any other 
provision of this Act. 
(5) The Governor-General is to make regulations setting out the 
English texts of the Budapest Treaty and the PCT as in force for 
Australia on the commencing day, and afterwards such regulations as 
are necessary to keep those English texts in an up-to-date form. 
(6) The Governor-General may make regulations setting out the 
English text of a treaty relating to the protection of inventions to which 
Australia is a party (other than the Budapest Treaty or the PCT), being 
the English text of the treaty as in force for Australia when the 
regulations are made, and afterwards such regulations as are necessary 
to keep that English text in an up-to-date form. 
(7) Despite the repeal of the 1952 Act by this Act, regulations 
made under paragraph (2) (za) may provide for the continued opera­
tion of speci fled provisions of the 1952 Act in relation to prescribed 
persons or matters, or in prescribed circumstances. 
Consequential amendments 
229. The Acts specified in Schedule 2 are amended as set out in 
that Schedule. 
Repeal 
230. The Pments Act 1952 is repealed. IP/N/1/ AUS/P/1 
Page 101 IP/N/1/ AUS/P/1 
Page 102 
Patents Act 1990 
s. 231 
CHAPTER 23-TRANSITIONAL AND SAVINGS PROVISIONS 
Application of Part III of 1989 Amending Act 
231. Nothing in this Act affects the continued operation of Part Ill 
of the 1989 Amending Act. 
Application of this Act: extensions of term 
232. The term of a patent c.tnnot be extended under Division 2 of 
Part 3 of Chapter 6 of this Act if the term of the patent was extended 
under Part IX of the 1952 Act, as in force before or after the 
commencement of the 1989 Amending Act. 
Patents granted under 1952 Act 
233. j.(l) Suhjcct to this Chapter and the regulations, this Act 
applies in relation to a standard patent or a petty patent granted under 
the 1952 Act as if the patent had been granted under this Act. 
(2) A patent mentioned in subsection (I) does not have effect in 
any place in which it did not have effect immediately before the 
commencing day. 
(3) Chapter 9 of this Act does not Hpply in relation to a patent 
mentioned in subsection (I). 
(4) Objection cannot be taken to a patent mentioned in subsection 
(1), and such a patent is not invalid, so far ns the invention is claimed 
in any claim, on any ground that would not have been available against 
the patent under the 1952 Act. 
Applications under 1952 Act 
234. (1) Where, before the commencing day: 
(a) a patent application and provisional specification had been 
lodged under Lhe 1952 Act; and 
(b) a complete specification had not been lodged under that Act 
in respect of the application; and 
(c) the application had not been withdrawn; 
then, subject to this Chapter and the regulutions, this Act applies in 
relation to the application on and after that day as if it were a 
provisional application under this Act. 
(2) Where, before the commencing day: 
(a) a patent application had been lodged under the 1952 Act; and 
(b) a complete specification, or a petty patent specification~ had 
been lodged under that Act in respect of the application; and 
(c) the application had not been withdrawn or finally dealt with; Patents Act 1990 
s.235 IP/N/1/ AUS/P/1 
Page 103 
then, subject to this Chapter and the regulations, this Act applies on 
and after that day: · 
(d) in relation to the application as if it were a complete applica­
tion made under this Act; and 
(e) in relation to the petty patent specification as if it were a 
complete specification filed under this Act in respect of the 
application. 
(3) Chapter 5 of this Act does not apply in relation to an 
application mentioned in subsection (2), but Part V of the 1952 Act, as 
in force immediately before the commencing day, continues to apply 
in relation to such an application. 
(4) Chapter 9 of this Act does not apply in relation to: 
(a) an application mentioned in subsection (2); or 
(b) a patent granted on such an application. 
(5) Objection cannot be taken to: 
(a) an application mentioned in subsection (2); or 
(b) a patent granted on such an application; 
and such a patent is not invalid, so far as the invention is claimed in 
any claim, on any ground that would not have been available against 
the application or patent, as the case may be, under the 1952 Act. 
(6) A petty patent specification to which subsection (2) applies 
cannot be amended under this Act so as to include more than one 
claim. 
Other applications and proceedings under 1952 Act 
235. (1) Subject to this Chapter and the regulations, this Act 
applies, on and after the commencing day, to any application, request, 
action or proceeding made or started under the 1952 Act and not 
finally dealt with or determined under that Act before that day as if 
the application. request, action or proceeding had been made or 
started under a corresponding provision of this Act. 
(2) Subsection ( l) does not apply in relation to an application 
covered by section 234 of this Act. 
Micro-organisms 
236. Sections 41 and 42 of this Act do not apply in relation to a 
specification lodged before 7 July 1987. IP/N/1/ AUS/P/1 
Page 104 
Patents Act 1990 
1. 237 
Ord~rs, diredions etc. under 1952 Act 
237. 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. 
The Commissioner and Deputy Commissioner 
238. · 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. 
The Register of Patents and Register or Patent Attorneys 
239. (1) On and after the commencing day,.the Register of Patents 
under th~ 1952 Act is to be taken to form part of the Register of 
Patents under this Act. 
(2) On and after the commencing day, the Register of Patent 
Attorneys under the 1952 Act is to be taken to form part of the 
Register of Patent Attorneys under this Act. 
Registered patent attorneys 
240. This Act applies, on and after the commencing day, in 
relation to a person who was, immediately before that day, a registered 
patent attorney under the 1952 Act as if the person had been regis­
tered as a patent attorney under this Act. Patents Act 1990 
SCHEDULE 1 
DICTIONARY 
In this Act, unless the contrary intention appears: IP/N/1/ AUS/P/1 
Page 105 
Section 3 
"application.. , in Chapter 15, means a patent application, and includes a relevant international 
application: 
"approved form" means a lorm approved by the Commissioner for the purposes of the provision in 
which the expression appears: 
"uaoclated technology'' has the same meaning as in the Safeguards Act; 
"Auatralla" includes each external Territory; 
"Australian continental shelf' means the continental sheU, within the meaning of the Conlinental 
Shelf Convention, ad,acent to the coast of Australia (including the coast or any island forming part of 
a State or Territory); 
"authority" , in Chapter 15, has the same meaning as in the Safeguards Act; 
"basic application" means an applicatk>n for protection in respect of an invention, being an 
application made in a Convention country; 
"Budapest Treaty'' mecJis the Budapest Treaty on the International Recognitk>n of the Deposit of 
Microorganisms for the Purposes or Patent Procedure signed at Budapest on 28 April 1977, as that 
treaty is in force for Australia from ttme to time, together with the Regulaoons annexed to that treaty, 
as those Regulations are 1n force ror Australia from time to time; 
"claim" means: 
(a) when used as a noun in rolalion to a patent-a clrum (including a dependent claim) of the 
specihcation relahng to the complete application on which the patent was granted; and 
(b) when used as a noun otherwise than ,n relation to a patent-a claim (including a 
dependent claim) or a complete specification; and 
(c) when used as a verb-to claim in a claim (including a dependent claim) of a complele 
specilicaoon; 
"commencing day" means the day on which this Act commences; 
"Commissioner" means the Comm1ss10ner of Patents; 
"compensable person" means: 
(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 
(b) · in relation to an inventoo that 1s the subject of a patent application and is so ac-
quired-the nominated person in relation to the apphcation; 
0complete specification " means a specification filed in respect of a complete patent application; 
"compulsory licence" means a licence granted under an order made under sectt0n 133; 
"Continental Shelf Convention" means the Convention called "Convention on the Continental 
Shelf" signed at Geneva on 29 Apnl 1958, a copy of the Enghsh text of which is set out 1n Schedule 
1 to the Petroleum (Submerged Lands) Act 1967; 
"Convention applicant" , ,n relation to a basic application, means a person (or a body of persons, 
whether incorporated or not) who: 
(a) has made the basic appltcation; or 
(b) 1s the assignee of that applicant; or 
(c) would, on the grant of a patent on that apphcat,on, be entitled to have the patent assigned 
to the person; or 
(d) 1s the legal representative of a person mentioned 1n paragraph (a), (b) or (c): or 
(e) has the consent of a person mentioned in paragraph (a), (b), (c) or (d) to make a 
ConvenllOn application based on that basic apphcatmn; 
~Conventlon application" means a patent apphcation made under Parl 2 of Chapter 8; 
"Convention country'' means a lo<eign country declared by the regulations to be a Convention 
country for the purposes of this Act; 
"deposit requirements" means the requtremonts spec1hed ,n paragraphs 6 (a) to (d), inclusive; IP/N/1/ AUS/P/1 
Page 106 
Patents Act 1990 
SCHEDULE 1 -continued 
"dep<>attary lnatitutk>n" means a body Of' insbtution that receives, accepts and SIOres micro­
organisms and furnishes samples of micro-Of'ganisms; 
"Deputy Commiaak>ner' means a Deputy Comm1SSK)00r of Patents; 
"Director" means the Director of Safeguards; 
"dlvlak>nal appUcaHon" means a further apphcation for a patent under section 39; 
"ellgible person" . in relation to an invention, means a person to whom a patent for the invenbOO 
may be granted under section 15; 
"employee" means a person, other than the Commissioner°' a Deputy Commissioner, who: 
(a) is an officer or employee witrnn the meaning of the Public Service Act 1922 and is 
employed unde< the control of the Commissk)oer; °' 
(b) is not such an oHicer or employee but perlorms S8MC8S, under the control ot the 
Commissioner. for or on behalf of lhe Commonwealth; 
"examination" , in relation 10 a patent request and a comP'ete specification relating to an application 
for a standard patent, means an examination of the request and specification uncle( section 45, or a 
modified examination of lhe request and specification; 
"exclualve lfcensee" means a licensee under a licence granted by the patentee and conJerriog on 
the licensee, or on lhe licensee and persons authorised by the licensee, the right to expk)it the 
patented invention throughout the patent area to the exclusion of the patentee and all other persons; 
"exploit" . in relation to an inventl()(l, includes: 
(a) where lhe invention 1s a product-make, hire, sell or otherwise dispose of the product, 
offer to make, sell, hire Of' otherwise dispose of it. use or import it, or keep 1t for the 
purpose of domg any of those things; Of' 
(b) where the invention 1s a method or process-use the method 0< process or do any act 
mentioned in paragraph (a) in respect of a product resulting from such use; 
"federal Court" means the Federal Court of Australia; 
"file" means file with the Patent OHice; 
0foreign aircraft" means an aircraft registered in a prescribed foreign country; 
"foreign land vehicle" means a land vehicle owned by a person ordinarily resident in a p<escribed 
f0<eign country; 
"foreign veaael" means a vessel registered in a prescribed foreign country; 
"Infringement proceedings" means proceedings for infringement of a patent; 
"Interested party'' . in relation to a patent application, means the applicant or a JC)int applicant, or a 
person who claims to be entitled lo the grant of a patent on the application, either aJone or joinUy 
with another person; 
"International application" has the same meaning as in the PCT; 
"International depositary authority" has the same meaning as in the Budapest Treaty; 
.. International tiling date" . in relation to an international apphcation, means: 
(a) the date given to the mternahonal application as its international filing date under Article 
11 of the PCT; or 
(b) if that date 1s revised under Article 14 ol the PCT-thal international fi~ng date as so 
reVlsed; 
[See also section 10) 
"Invention" means any manner of new manufacture the subtect of letters patent and grant of 
privilege within section 6 of the Statute of Monopolies, and indudes an alleged invention; 
"legal practitioner" means a barris1er °' solicitor of the High Court or of the Supreme Court of a 
Stale°' Territory; 
"legal representative" , in relation to a deceased person, means a person to whom probate ot. the 
wil of the deceased person, letters of administrabOO of the estale of the deceased person, °' 8l'Y 
other similar grant, has been granted, whether in Australia or anywhere else, but does not include 
such a person who, under the terms of the grant. is not enbtled to do an act in relation to which the 
expreSSfOfl is used; Patents Act 1990 
SCHEDULE 1-continued 
"llcence" means a licence to exploit, °' to authorise the exploitation of, a patented invention; 
"main Invention" has the meaning given in section 81 ; IP/N/1/ AUS/P/1 
Page 107 
"'marketing approval" , in relation to a pharmaceutical substance, means the approval of the 
Secretary to the Department of Community Services and Health for the marketing of the substance, °' a product containing the substance, in Australia; 
"marketing approval certificate" , in relation to a pharmaceutical substance, means a cenifecate 
by the Secretary to the Department of Community Services and Health certifying that he or she has 
approved the marketing of that substance, Of' a product conlalning that substance, in Australia; 
"modified examination" , in relation to a patent request and complete specification relating to an 
application fO< a standard paloot, means an examination of the request and specification under 
section 48; 
"nominated person" means the person identified in a patent request as the person to whom the 
patent is to be granted; 
"non-Infringement declaration" means a declaration mentioned in subsection 125 (1 ); 
"Official Journar' means the otticial journal mentioned in section 222; 
. £ "patent" means a standard patent Of' a petty patent; 
"patent application" means an application fOf' a standard patent or an application for a petty 
patent; 
"patent area" means: 
(a) Australia; and 
(b) the Australian continental shelf; and 
(c) the waters above the Australian continental shelf; and 
(d) the airspace above Australia and the Australian continental shelf; 
"patent of addition" means letters patent fOf' an invention granted under Chapter 7 and includes, 
fOf' the purposes of section 25, a patent of addition that has become an independent patent under 
section 84; 
"'Patent Office" means the Patent Ottice established under this Act; 
"patent request" means a request fOf' the grant of a patent to a nominated person; 
"patentable Invention" means an invention of the kind mentioned in section 18; 
"patented proceaa" means a process in respect of which a patent has been granted and is in 
force; 
"patented product" means a prcx:luct in respect of which a patent has been granted and is in 
force; · 
"patentee" means the person for the lime being entered 1n the Register as the grantee or proprietor 
of a patent; 
"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 Regulations annexed to that treaty, as 
those Regulat100s are in force IOI' Australia from lime to lime; 
"PCT application" means an 1nternahonal application: 
(a) in which Austraha 1s specified as a designated State under Article 4 ( 1) (ii) of the PCT; 
and 
(b) which has been given an 1nternat1onal hhng date; 
"permit" , in Chapter 15, has the same meaning as tn the Safeguards Act; 
"petty patent" means letters patent for an invention granted under section 62; 
"pharmaceutical substance" means a substance (including a mixture or compound of substances) 
for therapeutic use whose application (or one of whose applications) invofves: 
(a) a chemical interaction, °' physico-chemical interaction, with a human physiological sys­
tem; or 
(b) action on an infectious agent, or on a toxin Of' other poison, in a human body; 
but does not include a substance that is solely '°' use in in vitro diagnosis or in vitro testing; IP/N/1/AUS/P/1 
Page 108 
Patents Act 1990 
SCHEDULE 1-continued 
.. 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 Terriloty Of' 1he Supreme Court 
of Norfolk Island; 
"p,NCribed depo&Jtary Institution" means: 
(a) an international depositary authority, whether in or outside Australia; or 
(b) any other depositary institution in Australia that is prescribed tor the purposes of this 
pa,agtaph; 
.. prior art baae" means: 
(a) in relation to deciding whether an invention does Of' does not involve an inventive s&ep: 
(i) infOf'mation 1n a document, being a document publicly av&lable anywhef'8 in the 
patent area; and 
(ii) infomiation made pubhcly available through doing an act anywhere in the patent 
area; and 
(iii) where the invention is the subfecl of a standard patent °' an application for a 
standard patent -infOf'mation in a document publicly available outside the palent 
area; and 
(b) in ~elation to deciding whether an invention is or is not novel: 
(i) infOf'mation of a kind mentioned in paragraph (a); and 
(ii) informattOO contained in a published specification filed in respect of a complete 
application where: 
(A) if the information is, or were to be, the subfect of a claim of the 
specification, the claim has, or wouJd have, a priority date earlier 
than that of the claim under cons.defation; and 
(B) the specification was published after the priority dale of the claim 
under consideration; and 
(C) the 1nlormat100 was contained in the specification on its filing date 
and when it was published; 
(Note: For the meaning of udocument" see section 25 of the Acts Interpretation Act 1901.] 
"prior art Information" means: 
(a) IOf' the purposes of subsection 7 ( 1 )-information that as part of the prior art base in 
relation to deciding whether an invention 1s or as not novel; and 
(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 1nven~ step; 
0prohlbltk>n on:ler" means an order under section 173; 
"provisional specification" means a specificauon filed 1n respect of a proviS100al patent applica· 
lion; 
"receiving Office" has the same meaning as in the PCT; 
",....xamlnation" means the re-examinaoon al a complete specification under Chapter 9; 
"Register" means the Register of Patents rnentiooed 1n seclK>n 186; 
"registered" means: 
(a) in refation to a pa lent-entered ,n the Register of P ateots; or 
(b) in r8'ation to a patent attorney-entered in the Register of Patent Attorneys; 
"relevant authority" means: 
(a) in rotation to the expk>ttahon of an invention by or for the Commonwealth-the Common­
wealth; and 
(b) in rotation to the exploitation of an invention by or f0< a State-that State; 
"relevant International appUcation" , in Chapter 15, means an international application in relation 
to which the Patent OfflC8 is the recetving Office (even if Australia is not specified in the app.cation 
as a designated Stale under Article 4 (1) (i1) of the PCT); Patents Act 1990 
SCHEDULE 1-continued 
"relevant proceedings" , in relation IO a patent, means court proceedings: 
(a) tor infringement of lhe patent; or 
(b) for revocation of the patent; or 
(c) in which the validity of the patent, or of a claim, is in dispute; IP/N/1/ AUS/P/1 
Page 109 
"rules relating to mlcn:H>rganiama,. means such provisions al the Budapest Treaty, and such 
pmvisk>os made by or under regulalJOns made under section 228, as are applicable; 
"Safeguards Act'' means lhe Nuclear Non-Proliferation (Safeguards) Act 1981; 
"sealed" means sealed with lhe seal of the Patent Office; 
"apectficatJon" , in re&ation to an international application, means the description, claims and 
drawings contained in the application; 
"'standard patent,. means letters patent for an invention granted under this Act. blit does not 
include a petty patent; 
"State" , in Chapter 17, includes the Australian Capital Territory, the Northern Territ<XY and Nor1oik 
Island; 
"Statute of Monopol~" means the Imperial Act known as The Statute ol Monopolies;. 
"aupply" includes supply by way of sale, exchange, lease, hire or hire-purchase; 
"T errttory" means a T errit<XY in which this Act applies or to which this Act extends; 
"therapeutic: use" means use for the purpose of: 
(a) preventing, diagnosing, curing or allev1allng a disease, ailment, defect or injury in persons; 
or 
(b) influencing, inhibiting or modifying a physiological process in persons; or 
(c) testing the susceptibtlity of persons to a disease or ailment: 
"this Act" includes the regulations; 
"work" , in relation to a patented invention, means: 
(a) where the invention is a product- mako or import the product; or 
(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 use; 
"1952 Act'' means the Patents Act 1952; 
"1989 Amending Act" means the Patents Amendment Act 1989. IP/N/1/ AUS/P/1 
Page 110 
Patents Act 1990 
SCHEDULE 2 
CONSEQUENTIAL AMENDMENTS 
Companies Act 1981 
Paragraph 204 (5) (d): 
Omit .. 1952" • substitute" 1990• . 
Designs Act 1906 
Subsection 4 (1) (definition of "Official Journal" ): 
Omit the definition, substitute the loflowing definition: 
... Official Journal' has the same meaning as in the Patents Act 1990;• . Section 229 
Industry, Technology and Commerce Legislation Amendment Act (No. 2) 1989 
Subsection 2 (3): 
Omit .. Patents Act 1989" • substitute "Patents Act 1990" . 
Jurisdiction of Courts (Cross-vesting) Act 1987 
Schedule: 
Omit • Patents Act 195r • substitute "Patents Act 1990" . 
Nuclear Non-Proliferation (Safeguards) Act 1987 
Paragraph 23 (6) (a): 
Omit" 1952" • substitute "1990" . 
Paragraph 26 (4) (a): 
Om,1 "1952" • substitute" 1990" . 
Sales Tax Assessment Act (No. 1) 1930 
Paragraph 3A (7) (b): 
Omit " 1952" , substitute " 1990" . 
Trade Marks Act 1955 
Subsection 6 (1) (definition of "the Official Journa,. ): 
Omit the definition, subslllule the following definition: 
... Official Journal' has the same meaning as in the Patents Act 1990;" . 
Section 138: 
Repeal the section. Patents Act 1990 
NOTE 
1. The Patents Act 1990 as shown in lhis reprint comprises Act No. 83, 1990 amended as 
indicaaed in the T ~ bek>w. 
Table of Acts 
Act Number Date Dale of Application, 
and year of Assent 00fMl80C8m80t saving 
Of transitional 
provisions 
Patents Act 1990 83, 1990 30 Oct 1990 30 Apr 1991 {see 
s. 2 (2)) 
Industry, Technology and 66, 1991 15 June S. 26 (a) 
Commerce Legislation 1991 
Amendment Act 1991 
{a) The Patents Act 1990 was amended by section 26 onty of the Industry, Technology and 
Commerce Legislation Amendment Act 199 t. section 2 (4) of which provides as folows: 
"(4) The amendments of the Patents Act 1990 are taken to commence, 01 to have 
commenced, immediately aflef the commencement of the Patents Act t 990. • . 
The Patents Act 1990 commenced on 30 April 1991. 
Table of Amendments 
ad. • added or inserted am. • amended rep. = repealed rs. • repealed and substituled 
ProvisK)n affected How affected 
S. 56 . . . . . . . . . . . . . . . . . am. No. 66, 1991 
S. 97 ................. am. No. 66, 1991 
Ss. 100, 101 ............ am. No. 66, 1991 
S. 223 . . . . . . . . . . . . . . . . am. No. 66, 1991 
S. 233 ................ am. No. 66, 1991 
Schedule 1 ............. am. No. 66, 1991 IP/N/1/ AUS/P/1 
Page 111 IP/N/1/ AUS/P/1 
Page 112 
~,, AUSTRALIA ,,., 
-=-..... ~)))~ ·;(////((I.::-;' .... ,,,, 
Industry, Technology and Regional 
Development Legislat~on Amendment 
Act 1994 
No. 58 of 1994 
An Act to amend various Acts relating to matters dealt with 
by the Department of Industry, Technology and Regional 
Development, and for related purposes 
[Assented to 9 April 1994] 
The Parliament of Australia enacts: 
Short title 
1. This Act may be cited as the Industry, Technology and Regional 
5 Development Legislation Amendment Act 1994. 
Commencement 
2. This Act commences on a day to be fixed by Proclamation. 
53800 Cat. No. 94 4367 0 IP/N/1/ AUS/P/1 
Page 113 
Industry, Technology and Regional Development 
Legislation Amendment No. 58, 1994 
Amendment of Acts 
3. The Acts specified in the Schedule are amended as set out in the 
Schedule. 
Transitional provisions 
4.(1) Regulations made for the purposes of subsection 48(1) of the 5 
Designs Act 1906, and in force immediately before the commencement of 
this Act, have effect after that commencement as if they had been made for 
the purposes of that subsection as amended by this Act. 
(2) Regulations made for the purposes of subsection 108(1) of the Trade 
Marks Act 1955, and in force immediately before the commencement of this 10 
Act, have effect after that commencement as if they had been made for the 
purposes of that subsection as amended by this Act. IP/N/1/ AUS/P/1 
Page 114 
Industry, Tech_nology and Regional Development 
Legislation Amendment No. 58, 1994 
SCHEDULE 
AMENDMENTS OF ACTS 
Designs Act 1906 Section 3 
Subsection 8(1): 
Omit the subsection, substitute: 
"(1) There is to be a Registrar of Designs. 
"(lA) The Registrar has such powers and functions as are conferred on 
him or her under this Act or any other Act.". 
Subsections 8(4) and (5): 
After "this Act", insert "or any other Act". 
Subsection 8(5A): 
After "this Act", insert "or any other Act". 
Subsection 8(5B): 
After "this Act" (wherever occurring), insert "or any other Act". 
tlc 
Subsection· 8(6): 
Omit the subsection. 
Section 8A: 
Omit the section, substitute: 
Delegation by Registrar 
"8A.(1) The Registrar may, by writing, delegate all or any of the 
Registrar's powers under this Act or any other Act to: 
(a) a prescribed person, or a prescribed class of persons, holding or 
performing the duties of an Australian Public Service office in the 
Designs Office; or 
(b) a prescribed employee, or a prescribed class of employees, employed 
in the Designs Office. 
"(2) In this section: 
'employee' has the same meaning as in the Public Service Act 1922.". 
After subsection 37(1): 
Insert: 
"(lA) The Registrar may, in accordance with the regulations, amend or 
alter an entry in the register to correct a clerical error or an obvious mistake. 
"(lB) An amendment or alteration under subsection (lA) may be made: 
( a) on the request made in the prescribed manner by the owner of a 
registered design; or IP/N/1/ AUS/P/1 
Page 115 
Industry, Technology and Regional Development 
Legislation Amendment No. 58, 1994 
SCHEDULE--continued 
(b) on the Registrar's own initiative.". 
Subsection 48(1): 
Omit from subsection (1) ", with a view to the fulfilment of a treaty, 
convention, arrangement or engagement between the. Commonwealth and 
another country,". 
Industry Research and Developmen.t Act 1986 
Paragraph 28(2)(a): 
Omit "30 June 1994", substitute "31 December 1995". 
Paragraph 31(2)(a): 
Omit "30 June 1994", substitute "31 December 1995". 
Patents Act 1990 
Subsection 207(2): · 
Omit the supsection, substitute: 
"(2) The Commissioner has such powers and functions as are conferred 
on him or her under this Act or any other Act.". 
Subsections 208(2) and (3): 
After "this Act" (wherever occurring), insert "or any other Act". 
Subsection 208(4): 
After "this Act", insert "or any other Act". 
Subsection 208(5): 
After "this Act" (wherever occurring), insert "or any other Act". 
Subsection 209(1): 
Omit "to an·employee", substitute "or any other Act to a prescribed 
employee, or a prescribed class of employees". 
Schedule 1 (paragraphs (a) and (b) of the definition of "employee"): 
. Omit "under the control of the Commissioner", substitute "in the Patent 
Office". 
Trade Marks Act 1955 
Subsection 10(1): 
Omit the subsection, substitute: 
"(l) There is to be a Registrar of Trade Marks. IP/N/1/ AUS/P/1 
Page 116 
Industry, Technology and Regional Development 
Legislation Amendment No. 58, 1994 
SCHEDULE--continued 
"(lA) The Registrar has such powers and functions as are conferred on 
him or her under this Act or any other Act.". 
Subsection 10(2): 
Omit the subsection. 
Subsections 10(3A) and (3B): 
After "this Act" (wherever occurring), insert "or any other Act". 
Subsection 10(3C): 
After "this Act", insert "or any other Act". 
Subsection 10(4): 
After "this Act" (wherever occurring), insert "or any other __ Act". 
Subsection 10(5): 
Omit the subsection. 
Section 11: 
Omit the section, substitute: 
Deleg~tion by Registrar 
"11.(1) The Registrar may, by writing, delegate all or any of the 
Registrar's powers under this Act or any other Act to: 
(a) a prescribed person, or a prescribed class of persons, holding or 
perfonning the duties of an Australian Public Service office in the 
Trade Marks Office; or 
(b) a prescribed employee, or a prescribed class of employees, employed 
in the Trade Marks Office. 
"(2) In this section: 
'employee' has the same meaning as in the Public Service Act .1922.". 
Subsection 108(1): 
Omit", with a view to the fulfilment of a treaty, conven.tion, arrangeme.nt 
or engagement between the Commonwealth and another country,". 
[Minister'.s second reading speech made in­
Senate on 16December 1993 
House of Representatives on 2 March 1994] 
Printed by Authority by the Commonwealth Government Printer (204/93) .J, AUSTRALIA & --~'».'". ··//t((-((1.!:. -~ // >, .. ;-;..:,',; ' IP/N/1/ AUS/P/1 
Page 117 
Industry, Science and Technology 
Legislation Amendment Act 1994 
Section 
1. Short title 
2. Commencement No. 108 of 1994 
TABLE OF PROVISIONS 
PART 1-PRELIMINARY 
PART 2-AfAENDMENT OF THE NATIONAL MEASUREMENT ACT 1960 
Division 1-PrincipalAct 
3. Principal Act 
Division 2-Membership of Commission 
4. Object of Division 
5. Membership of Commission 
6. Meetings 
Division 3-Contracts 
7. Object of Division 
8. Contracts 
70002 Cat. No. 94 4900 7 IP/N/1/ AUS/P/1 
Page 118 
11 
TABLE OF PROVISIONS-continued 
Section 
Division 4-Jnvestments 
9. Object of Division 
10. · Application of money 
11. Insertion of new section: 
18DA. Investment of monev 
12. Contracts · 
Division 5-Grants, loans, scholarships etc. 
13. Object of Division 
14. Functions of the Commission 
15. Application of money 
PART 3-A.NfENDMENT OF THE PATENTS ACT 1990 
16. Object of Part 
17. Principal Act 
18. Definitions 
19. Schedule 1 
PART 4-AMEND:MENT OF 1HE POOLED DEVELOPMENT FUNDS 
ACT 1992 
20. Object of Part 
21. Principal Act 
22. Limit on size of investee company Industry, Science and Technology 
Legislation Amen~ment No.108, 1994 IP/N/1/ AUS/P/1 
Page 119 
(3) Division 5 of Part 2 commences on the day after the day on which this 
Act receives the Royal Assent. 
PART 2-AMENDMENT OF THE NATIONAL MEASUREMENT 
ACT 1960 
Division I-Principal Act 
Principal Act 
3. In this Part, "Principal Act" means the National Measurement Act 
19601• 
Division 2--M emberslzip of Commission 5 
Object of Division 10 
4. The object of this Division is to increase the number ·of members of 
the National Standards Commission from 8 to 10. 
Membership of Commission 
5. Section 17 of the Principal Act is amended by omitting from 
subsection (1) .. " 6 other" and substituting "8 othe_r". 15 
Meetings 
6. Section 18AE of the Principal Act is amended by omitting from 
subsection (3) "5" and substituting "6" ... 
Division 3-Contracts 
Object of Division 20 
7. The object of this Division is to increase the limit on contracts which 
the National Standards Commission may make without Ministerial approval 
from $100,000 to $250,000. 
Contracts 
8. Section 18F of the Principal Act is amended by omitting "$100,000" 25 
and substituting "$250,000". 
Division 4--Investments 
Object of Division 
9. The object of this Division is to give the National Standards 
Commission the power to invest its money. 30 
Application of money 
10. Section 18D of the Principal Act is amended by adding at the end the 
following word and paragraph: 
"; and ( c) in making investments under section 18DA.". IP/N/1/ AUS/P/1 
Page 120 
Industry, Science and Technology 
Legislation Amendment No. 108, 1994 
Insertion of new section 
11. After section 18D of the Principal Act the following section is 
inserted: 
Jnyestment of money 
5 "18DA.(l) Money of the Commission not immediately required for the 
purposes of the Commission may be invested: 
(a) on deposit with an approved bank; or 
(b) in Commonwealth securities; or 
(c) in ap.y other manner approved by the Treasurer. 
10 "(2) In subsection (1): 
'approved bank' means: . 
(a) a bank as defined in subsection 5(1) of the Banking Act 1959; or 
(b) another bank approved by the Treasurer, or by a person authorised by 
the Treasurer to give approvals under section 63E of the Audit Act 
15 1901.". . . 
Contracts 
12. Secfion 18F of the Principal Act is amended by adding at the end the 
following subsection: ' 
"(2) Subsection (1) does not apply to investments under section 
20 18DA.". 
Division 5-Grants, loans, scholarships etc. 
Object of Division 
13. The object of this Division is to give the National Standards 
Commission the power: 
25 (a) to make grants of financial assistance; and 
(b) to make and guarantee loans; and 
(c) to establish and award fellowships and scholarships. 
Functions of the Commission 
14. Section 18 of the Principal Act is amended: 
30 (a) by omitting from paragraph (l)(g) "and" (last occurring); 
(b) by adding at the end of subsection (1) the following paragraphs: 
"; (i) to make grants of financial assistance for purposes relating 
to metrology; 
G) to make loans for purposes relating to metrology; 
35 (k) to guarantee loans made for purposes relating to metrology; 
and · L Industry, Science and Technology 
Legislation Amendment No.108, 1994 IP/N/1/ AUS/P/1 
Page 121 
(1) to establish and award fellowships and scholarships for: 
(i) training in the knowledge and skills relevant to 
metrology; or 
(ii) metrology re.search.". 
Application of money 5 
15. Section l8D of the Principal Act is amended by adding at the end the 
following word and paragraph: 
"; and ( d) in making any other payments which the Commission is 
authorised or required to make under this Act or any other law.". 
PART 3-AMENDMENT OF THE PATENTS ACT 1990 10 
Object of Part 
16. The object-of this Part is to make minor technical amendments to the 
Patents Act 1990. The amendments define the Australian continental shelf 
by reference to tqe Seas and Submerged Lands Act 1973. 
Principal Act 15 
17. In this Part, "Principal Act" means the Patents Act 19902. 
Definitions 
18. Section 3 of the Principal Act is amended by omitting "Continental 
.Shelf Convention". 
Schedule 1 20 
19. Schedule 1 to the Principal Act is amended: 
(a) by omitting "Continental Shelf Convention" from the definition of 
"Australian continental shelf" and substituting "Seas and 
Submerged Lands Act 1973"; 
(b) by omitting the definition of "Continental Shelf Convention". 25 
PART 4-AMENDMENT OF THE POOLED DEVELOPMENT 
FUNDS ACT 1992 
Object of Part 
20. The object of this Part is to ma~e a minor technical change to the rules 
relating to the investment in companies by pooled development funds in 30 
cases where the investee company's audited accounts relate to a period that 
ended less than 18 months before the investment is made. 
Principal Act 
21. In this Part, "Principal Act" means the Pooled Development Funds 
Act 19923• 35 IP/N/1/ AUS/P/1 
Page 122 
Industry~ Science and Technology 
Legislation Amendment No. 108, 1994 
Limit on size of investee company 
22. Section 24 of the Principal Act is amended by omitting from 
paragraph (5)(b) "12 ,, and substituting "18 ,, . 
NOTES 
National Measurement Act 1960 
1. No. 64, 1960, as amended. For previous amendments, see No. 6, 1964; No. 93, 
1966; No. 216, 1973 (as amended by No. 20, 1974); No. 158, 1978; No. 77, 1984; 
No. 65, 1985; No. 76, 1986; No. 141, 1987; No. 91, 1989; Nos. 66 and 199, 1991; 
and No. 168, 1992. 
Patents Act 1990 
2. No. 83, 1990, as amended. For previous amendments, see No. 66, 1991. 
Pooled Development Funds Act 1992 
3. No. 100, 1992, as amended. For previous amendments, see No. 102, 1994. 
[Ministers second reading speech 11U1de in-
Senate on 24 March 1994 
House of Representatives on 9June 1994] IP/N/1/AUS/P/1 
Page 123 
Patents (World Trade Organization 
A1Tiendn1ents) Act 1994 
No. 154 of 1994 
An Act to amend the law with respect to patents to enable 
Australia to accept the Agreement Establishing the World 
Trade Organization 
[Assented to 13 December 1994] 
The Parliament of Australia enacts: 
PART I-PRELIMINARY 
Short title etc. 
1.(1) This Act may be cited as the Patents (World Trade Organization 
Amendments) Act 1994. 
(2) In this Act, "Principal Act", means the Patents Act 19901.-
Commencement 
2. Sections 4, 5, 6, 7 and 12 commence on 1 July 1995. 
Note: Under section 5 of the Acts Interpretation Act 1901 the other provisions of this Act commence 
~8 days after the day on which this Act receives the Royal Assent. IP/N/1/ AUS/P/1 
Page 124 
Patents (lVorld Trade Organization Amendments) No. 154, 1994 
3.(1) In this Act: 
"transitional standard patent" means a standard patent: 
(a) granted (for a term of 16 years) before 1 July 1995; and 
(b) whose term at the time of the grant was due to end on or after 1 July 
1995. 
(2) A word or expression that is used in this Act and is defined in the 
Principal Act has, in this Act, the same meaning as in the. Principal Act. 
PART 2-TER.l\1 OF STANDARD PATENT 
Term of standard patent 
4. Section 67 of the Principal Act is amended by omitting "16" and 
substituting "20". 
Repeal of Divi§ion 
5.(1) The heading to'"Division 1 of Part 3 of Chapter 6 of the Principal 
Act is omitted. 
(2) Division 2 of Part 3 of Chapter 6 of the Principal Act is repealed. 
Further amendments 
6. The Principal Act is further amended as set out in the Schedule. 
Application 
7.(1) The amendments made by this Part apply: 
(a) to all standard patents that are granted on or after 1 July 1995; and 
(b) to all transitional standard patents. 
Note: The Principal Act as in force immediately before 1 July 1995 continues to apply to a standard 
patent (other than a transitional standard patent) whose term: 
(a) ·was, immediately before 1 July 1995, capable of being extended under Division 2 of 
Part 3 of Chapter 6 of that Act; or 
(b) had, before 1 July 1995, been extended for a period of 4 years ending after that date. 
(2) If, before this section commenced, the Commissioner had granted an 
extension of the term of a transitional standard patent under Division 2 (the 
"repealed Division") of Part 3 of Chapter 6 of the Principal Act as then in 
force, the Principal Act as amended by this Part has effect in relation to tpe 
patent as if: 
(a) no action had been taken in respect of the patent under the repealed 
Division; and 
(b) the extension had not been granted. 
Transitional 
8.(1) On the commencement of this section: IP/N/1/ AUS/P/1 
Page 125 
Patents (World Trade Organization Amendments) No. 154, 1994 
(a) any application (under section 70 of the Principal Act) for the 
extension of the term of a transitional standard patent that had not yet 
been determined by the Commissioner under section 75 of the 
Principal Act is taken to have been withdrawn; and 
(b) no action is to be taken under the Principal Act in respect of the 
application. 
(2) On the commencement of this section: 
(a) any appeal under paragraph 78(a) or (b) of the Principal Act: 
(i) relating to a transitional standard patent; and 
(ii) that had not yet been determined by the Federal Court; 
is taken to have been withdrawn; and 
(b) no action is to be taken in respect of such an appeal except the making 
of any order about costs that the Federal Court may think proper in 
the circumstances of the case. 
(3) After the commencement of this section: 
(a) an applicatiop may not.be made under section 70 of the Principal Act 
for the extension of the term of a transitional standard patent; and 
(b) an appeal may not be made to the Federal Court under paragraph 
78( a) or (b) of the Principal Act in relation to an application for the 
extension of the term of a transitional standard patent. 
PART 3-INFRINGEI\1ENT 
9. After section 121 of. the Principal Act the following section 1s 
inserted: 
Burden of proof-infringement of patent for a process 
"121A.(1) This section applies only to a patent for a process for 
obtaining a product. 
"(2) If, in proceedings for infringement of a patent started by the 
patentee or the exclusive licensee: 
(a) the defendant alleges that he or she has used a process different from 
the patented process to obtain a product ('defendant's product') 
·identical to the product obtained by the patented process; and 
(b) the court is satisfied that: 
(i) it is very likely that the defendant's product was made by the 
· .. patented process; and 
(ii) the patentee or exclusive licensee has taken reasonable steps 
to find out the process actually used by the defendant but has 
not been able to do so; 
then, in the absence of proof to the contrary the onus for which is on 
the defendant, the defendant's product is to be taken to have been 
obtained by the patented process. IP/N/1/ AUS/P/1 
Page 126 
Patents (World Trade Organization Amendments) No. 154, 1994 
"(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.". 
Application 
10. The amendments made by this Part do not apply to an action for 
infringement of a patent that was pending before the court immediately 
before the commencement of this Part. 
PART 4-COMPULSORY LICENCES 
Compulsory licences 
11. Section 133 of the Principal Act is amended: 
(a) by inserting in subsection (2) ", subject to this section," after 
"may"; 
(b) by inserting ;fter subsection (3) the following subsections: 
,: 
"(3A) Before making the order, the court must be satisfied that 
the applicant has tried for a reasonable period, but without success, 
to obtain from the patentee in respect of the patented invention an 
authorisation to work the invention on reasonable terms and 
conditions. 
('(3B) If the patented invention cannot be worked by the 
applicant without his or her infringing another patent: 
(a) the court is to make the order only if the court is further 
satisfied that the patented invention involves an important 
technical advance of considerable economic significance on 
the invention ('other invention') to which the other patent 
relates; and 
(b) the court must further order that the patentee of the other 
invention: 
(i) must grant to the applicant a licence to work the other 
invention insofar as is necessary to work the patented 
invention; and 
(ii) is to be granted, if he or she so requires, a cross-licence 
on reasonable terms to work the patented invenJion; 
and 
(c) the court must direct that the licence granted by the patentee 
of the other invention may be assigned by the applicant: 
(i) only if he or she assigns the licence granted in respect 
of the patented invention; and 
(ii) only to the assignee of that licence."; IP/N/1/AUS/P/1 
Page 127 
Patents (World Trade Organization Amendments) No. 154, 1994 
(c) by adding at the end the following subsections: 
"(5) The patentee is to be paid in respect of a licence granted to 
the applicant under an order: 
( a) such amount as is agreed between the patentee and the 
applicant; or 
(b) if paragraph (a) does not apply-such amount as is determined 
by a prescribed court to be just and reasonable having regard 
to the economic value of the licence. 
"(6) The patentee or a prescribed court may revoke the licence if: 
(a) the patentee and the licensee are agreed, or the court on 
application made by either party finds, that the circumstances 
that justified the grant of the licence have ceased to exist and 
are unlikely to recur; and 
(b) the legitimate interests of the licensee are not likely to be 
adversely affected by the revocation.". 
'Iransitional 
12.(1) J;his section applies to an invention ("patented invention") 
that: 
(a) is the subject of a transitional standard patent; and 
(b) is not a pharmaceutical substance in respect of which the term of the 
patent could have been extended under Division 2 of Part 3 of 
Chapter 6 of the Principal Act (as in force immediately before this 
section commenced) if that Division had not been repealed. 
(2) If, before 1 October 1994, a person had made a significant 
investment in respect of the exploitation of a patented invention, the person 
may apply to a prescribed court for an order requiring the patentee to grant 
to the applicant a licence to exploit the patented invention. 
(3) After hearing an application under subsection (2), the court may, 
subject to this section, make the order if satisfied that: 
(a) the person made the investment in good faith; and 
(b) no action done by the person in preparation for the expfoitation of the 
invention has infringed the patent. 
( 4) If: 
(a) a person holds or held a licence ("old licence") to work a patented 
invention; and 
(b) the licence expires or expired at the end of the 16th year of the term 
of the patent; 
a prescribed court may, on the application of the person and subject to this 
section, mak~ an order requiring the patentee to grant to the person a.new IP/N/1/ AUS/P/1 
Page 128 
Patents (World Trade Organization Amendments) No. 154, 1994 
licence to exploit the patented invention for so long as the patent remains in 
force. 
(5) In making an order under subsection ( 4), the court must have regard 
to the terms and conditions (if any) subject to which the old licence was 
granted to the person. 
(6) Before making an order under this section, the court must be satisfied 
that the applicant has tried for a reasonable period, but without success, to 
obtain from the patentee an authorisation to exploit the patented invention 
on reasonable terms and conditions. 
(7) An order must direct that the licence: 
(a) is not to give the licensee, or a person authorised by the licensee, the 
exclusive right to exploit the patented invention; and 
(b) is to be assignable only in connection with an enterprise or goodwill 
in connection with which the licence is used; 
and may direct that the licence is to be granted on any other terms specified 
in the order. 
(8) An ord~r operates, without prejudice to any other method of 
enforcement, as if it were embodied in a deed granting a licence and executed 
by the patentee and all other necessary parties. 
(9) The patentee is to be paid in respect of a licence granted to the 
applicant under an order: 
(a) such amount as is agreed between the patentee and the applicant; or 
(b) if paragraph (a) does not apply-such amount as is determined by a 
prescribed court to be just and reasonable having regard to the 
economic value of the licence. 
(10) The patentee, and any person claiming an interest in the patent as 
exclusive licensee or otheiwise, are parties to any proceedings under this 
section. 
(11) In any proceedings under this section: 
(a) the applicant must serve a copy of the application on the 
Commissioner; and 
(b) the Commissioner may appear and be heard. 
(12) An office copy of an order made under this section must be served 
on the Commissioner by the Registrar or other appropriate officer of the 
court .that made the order. 
(13) Section 134 of the Principal Act does not apply in the case of a 
compulsory licence granted under an order made under this section. 
Application 
13. The amendments made by this Part do not apply to: IP/N/1/ AUS/P/1 
Page 129 
Patents (lVorld Trade Organization Amendments) No. 154, 1994 
(a) an application under section 133 of the Principal Act; or 
(b) an order under section 133 or 134 of that Act; 
made before this Part commences. 
PART 5--CROWN USE 
Ex-ploitation of inventions by Crown 
14. Section 163 of the Principal Act is amended by adding at the end the 
following subsection: 
"(3) Subject to section 168, an invention is taken for the purposes of this Part 
·to be exploited for services of the Commonwealth or of a State if the exploitation 
of the invention is necessary for the proper provision of those services within 
Australia.". 
Remuneration and terms for exploitation 
15. Section 165 of the Principal Act is amended: 
(a) by omitting subsection (1 ); 
(b) by omitting from subsection (2) "Subject to subsection (1), the" and 
substituting "The"; 
( c) by· inserting in subsection (2) "(including tenns concerning the 
remuneration payable to the nominated person or the patentee)" after 
"invention". 
16. After section 165 of the Principal Act the following section is inserted: 
Exploitation of invention to cease under court order 
"165A(l) A prescribed court may, on the application of the nominated 
person or the patentee, declare that the exploitation of the invention by the 
Commonwealth or the· State is not, or is no longer, necessary for the proper 
provision of services of the Commonwealth or of the State if the court is satisfied 
that, in all the circwnstances of the case, it is fair and reasonable to make the 
declaration. 
"(2) The court may further order that the Commonwealth or the State is to 
cease to exploit the invention: 
(a) on and from the day specified in the order; and 
(b} subject to any conditions specified in the order. 
In making the order, the court is to ensure that the legitimate interests of the 
Commonwealth or of the State are not adversely affected by the order.". 
Application 
17. The amendments made by this Part do not apply to an invention that 
was being exploited by a relevant authority under section 163 immediately 
before the commencement of this Part. IP/N/1/AUS/P/1 
Page 130 
Patents (World Trade Organization Amendments) No. 154, 1994 
SCHEDULE section 6 
FURTHER AMENDMENTS OF THE PATENTS ACT 1990 
1. Section 3: 
Omit "marketing approval" and "marketing approval certificate". 
2. Subsections 83(2) and (3): 
Omit. 
3. Section 84: 
Repeal. 
4. Subsection 223(5): 
Omit. 
5. Section 232: 
Repeal. 
'il 
6. Sllchedule 1 (definitions of "marketing approval" and "marketing . 
approval certificate"): 
Omit. 
NOTE 
1. No. 83, 1990, as amended. For previous amendments, see No. 66, 1991; and 
Nos. 58 and 108, 1994. 
[Minister's second reading speech made in-
House of Representatives on 18 October 1994 
Senate on 7 November 1994]