Prepared by the Office of Parliamentary Counsel, Canberra  
 
Patents Act 1990  
No. 83, 1990  
Compilation No.  43 
Compilation date:    24 February 2019  
Includes amendments up to:  Act No. 77, 2018  
Registered:     25 February 2019  
 
Authorised Version C2019C00088 registered 25/02/2019 
 
 
 About this compilation  
This compilation  
This is a compilation of the Patents Act 1990  that shows the text of the law as 
amended and in force on 24 February 2019  (the compilation date ). 
The notes at the end of this compilation (the endnotes ) include information 
about amending laws and the amendment history of provisions of the compiled 
law. 
Uncommenced amendments  
The effect of uncommenced amendments is not shown in the text of the 
compiled law. Any uncommenced amendments affecting the law are accessible 
on the Legislation Register (www.legislation.gov.au). The details of 
amendments made up to, but not commenced at, the compilation date are 
underlined in the endnotes. For  more information on any uncommenced 
amendments, see the series page on the Legislation Register for the compiled 
law. 
Application, saving and transitional provisions for provisions and 
amendments  
If the operation of a provision or amendment of the compile d law is affected by 
an application, saving or transitional provision that is not included in this 
compilation, details are included in the endnotes.  
Editorial changes  
For more information about any editorial changes made in this compilation, see 
the endno tes. 
Modifications  
If the compiled law is modified by another law, the compiled law operates as 
modified but the modification does not amend the text of the law. Accordingly, 
this compilation does not show the text of the compiled law as modified. For 
more  information on any modifications, see the series page on the Legislation 
Register for the compiled law.  
Self-repealing provisions  
If a provision of the compiled law has been repealed in accordance with a 
provision of the law, details are included in the e ndnotes.  
   
   
   
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 Patents Act 1990  i 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Contents  
Chapter  1—Introductory  1 
1 Short title  ................................ ................................ ...........  1 
2 Commencement  ................................ ................................ . 1 
3 Definitions  ................................ ................................ .........  1 
5 Associated applications  ................................ .....................  3 
6 Deposit requirements  ................................ .........................  3 
7 Novelty, inventive step and innovative step  ......................  4 
7A Meaning of useful  ................................ ..............................  5 
9 Secret use  ................................ ................................ ..........  6 
10 Certain international applications to be taken to 
have been given an international fil ing date  ......................  7 
11 Act binds the Crown  ................................ ..........................  7 
12 Application of Act  ................................ .............................  7 
12A Application of the Criminal Code  ................................ ..... 8 
Chapter  2—Patent rights, ownership and validity  9 
Part  1—Patent rights  9 
13 Exclusive rights given by patent  ................................ ........  9 
14 Assignment of patent  ................................ .........................  9 
Part  2—Ownership  10 
15 Who may be granted a patent?  ................................ ........  10 
16 Co-ownership of patents  ................................ ..................  10 
17 Directions to co -owners  ................................ ...................  11 
Part  3—Validity  12 
Division  1—Validity  12 
18 Patentable inventions  ................................ .......................  12 
19 Certificate of validity ................................ .......................  13 
20 Validity of patent not guaranteed  ................................ .... 14 
21 Validity not implied by making or refusal of 
non-infringement declaration  ................................ ..........  14 
Division  2—Matters not affecting validity  15 
22A Validity not affected by who patent is granted to  ............  15 
22 Invalidity in relation to one claim not to affect 
validity in relation to other claims  ................................ ... 15 
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 23 Validity  not affected by publication etc. after 
priority date  ................................ ................................ ..... 15 
24 Validity not affected by making information 
available in certain circumstances  ................................ ... 15 
25 Validity: patents of addition  ................................ ............  16 
26 Validity not affected in certain cases involving 
amendments  ................................ ................................ ..... 16 
Division  3—Notice of matters affecting validity  18 
27 Notice of matters affecting validity of standard 
patents  ................................ ................................ .............  18 
28 Notice of matters affecting validity o f innovation 
patents  ................................ ................................ .............  18 
Chapter  3—From application to acceptance  20 
Part  1—Patent applications  20 
Division  1—Applications  20 
29 Application for patent —general rules  .............................  20 
29A Applications for patents —special rules for PCT 
applications  ................................ ................................ ..... 21 
29B Applications for patents —special rules for 
Convention applications  ................................ ..................  22 
30 Filing date ................................ ................................ ........  23 
31 Joint applicants  ................................ ................................  23 
32 Disputes between applicants etc.  ................................ ..... 23 
33 Applications by opponents etc.  ................................ ........  23 
34 Applications by eligible persons arising out of 
Court proceedings  ................................ ...........................  26 
35 Applications by eligible per sons following 
revocation by Commissioner  ................................ ...........  26 
36 Other applications by eligible persons  .............................  27 
37 Complete application may be treated as 
provisional  ................................ ................................ ....... 28 
38 Time for making complete application  ............................  29 
Division  2—Specifications  30 
40 Specifications  ................................ ................................ .. 30 
41 Specifications: micro -organisms  ................................ ..... 31 
42 Micro -organisms ceasing to be reasonably 
available  ................................ ................................ ..........  32 
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 Division  3—Priority dates  34 
43 Priority dates  ................................ ................................ ... 34 
43AA  Disclosure in basic applications  ................................ ...... 35 
Part  2—Examination of standard patent requests and 
specifications  37 
Division  1A—Preliminary search and opinion  37 
43A Preliminary search and opinion  ................................ ....... 37 
Division  1—Examination  38 
44 Request for examination  ................................ ..................  38 
45 Examination  ................................ ................................ .... 38 
Part  3—Acceptance  40 
Division  1—Acceptance of standard patents  40 
49 Acceptance of patent request: standard patent  .................  40 
49A Postponing acceptance of patent request: standard 
patent  ................................ ................................ ...............  41 
50 Application or grant may be refused in certain 
cases  ................................ ................................ ................  41 
50A Revocation of acceptance  ................................ ................  42 
51 Appeal  ................................ ................................ .............  43 
Division  2—Acceptance of innovation patents  44 
52 Formalities check and acceptance of innovation 
patents  ................................ ................................ .............  44 
Chapter  4—Publication  45 
53 Publication of certain information about applicants 
etc. ................................ ................................ ...................  45 
54 Notice o f publication  ................................ .......................  45 
55 Documents open to public inspection  ..............................  47 
56 Certain docume nts not to be published  ............................  47 
56A Publication and inspection of PCT applications  ..............  48 
57 Effect of publication of complete specification  ...............  48 
58 Result of search may be disclosed  ................................ ... 49 
Chapter  5—Opposition to grant of standard patent  50 
59 Opposition to grant of standard patent .............................  50 
60 Hearing and decision by Commissioner  ..........................  50 
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iv Patents Act 1990   
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 Chapter  6—Grant  and term of patents  52 
Part  1—Grant  52 
61 Grant of standard patent  ................................ ..................  52 
62 Grant and publication of innovation patent  .....................  52 
63 Joint patentees  ................................ ................................ . 53 
64 Grant: multiple applications  ................................ ............  53 
65 Date of patent  ................................ ................................ .. 53 
Part  2—Term  55 
67 Term of standard patent  ................................ ...................  55 
68 Term of innovation patent  ................................ ...............  55 
Part  3—Extension of term of standard patents relating to 
pharmaceutical  substances  56 
70 Applications for extension of patent  ................................  56 
71 Form and timing of an application  ................................ .. 57 
72 Notification and public inspection of application  ............  58 
73 Withdrawal of application  ................................ ...............  58 
74 Acceptance or refusal of application  ...............................  59 
75 Opposition to grant of extension  ................................ ..... 59 
76 Grant of extension  ................................ ...........................  60 
77 Calculation of term of extension  ................................ ..... 60 
78 Exclusive rights of patentee are limited if 
extension granted  ................................ .............................  60 
79 Rights of patentee if extension granted after patent 
expires  ................................ ................................ .............  61 
79A Commissioner not to make decision if court 
proceedings pending  ................................ ........................  62 
Chapter  6A—Divisional applications  63 
79B Divisional applications prior to grant of patent  ...............  63 
79C Divisional applications for innovation patents may 
be made after grant of an innovation patent  ....................  64 
Chapter  7—Patents of addition  65 
80 Chapter does not apply to innovation patents  ..................  65 
81 Grant of patent of addition  ................................ ..............  65 
82 Revocation of patent and grant of patent of 
addition instead  ................................ ...............................  65 
83 Term of patent of addition  ................................ ...............  66 
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 85 Revocation of patent for main invention  .........................  67 
86 Renewal fees not payable  ................................ ................  67 
87 Fees payable where patent of addition becomes an 
independent patent  ................................ ...........................  67 
Chapter  9—Re-examination of standard patents  68 
96A Chapter does not apply to innovation patents  ..................  68 
97 Re-examination of complete specifications  .....................  68 
98 Report on re -examination  ................................ ................  69 
99 Statement by applicant or patentee  ................................ .. 69 
100 Copies of report to be given to court  ...............................  69 
100A  Refusal to grant patent —re-examination before 
grant  ................................ ................................ ................  69 
101 Revocation of patent —re-examination after grant  ..........  70 
Chapter  9A—Examination, re -examination and 
opposition -innovation patents  72 
Part  1—Examination of innov ation patents  72 
101A  Examination may be requested or Commissioner 
may decide to examine  ................................ ....................  72 
101B  Examination of an innovation patent  ...............................  72 
101C  How and when examination to be carried out  .................  73 
101E  Certificate of examination  ................................ ...............  73 
101EA  Revocation of certificate of examination  .........................  74 
101F  Revocation of innovation patents following 
examination under section  101B  ................................ ..... 75 
Part  2—Re-examination of innovation patents  77 
101G  Re-examination of complete specifications of 
innovation patents  ................................ ...........................  77 
101H  Patentee statements ................................ ..........................  78 
101J  Revocation of innovation patent following 
re-examination  ................................ ................................ . 78 
101K  Relevant proceedings and re -examin ation  .......................  79 
101L  Copies of report to be given to court  ...............................  79 
Part  3—Opposition to innovation patents  80 
101M  Opposition to innovation patent  ................................ ...... 80 
101N  Hearing and decision by the Commissioner  ....................  80 
101P  Relevant proceedings and opposition  ..............................  81 
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vi Patents Act 1990   
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 Chapter  10—Amendments  82 
Part  1—Amendments that are not allowable  82 
102 What amendments are not allowable?  .............................  82 
103 Consent of mortgagee or exclusive licensee 
needed  ................................ ................................ .............  83 
Part  2—Amendments of patent requests, specifications and 
other filed documents  85 
104 Amendments by applicants and patentees  .......................  85 
105 Amendments directed by court  ................................ ........  85 
106 Amendments directed by Commissioner: patents ............  86 
107 Amendments directed by Commissioner: 
applications for standard patents  ................................ ..... 87 
109 Appeal  ................................ ................................ .............  88 
Part  3—Miscellaneous  89 
110 Advertisement of amendment of complete 
specification  ................................ ................................ .... 89 
112 Pending proceedings ................................ ........................  89 
112A  Decisions on appeal  ................................ .........................  89 
113 Persons claiming under assignment or agreement  ...........  89 
114 Priority date of claims of certain amended 
specifications  ................................ ................................ ... 90 
114A  Objection cannot be taken to certain amended 
specifications  ................................ ................................ ... 90 
115 Restriction on recovery of dama ges etc.  ..........................  91 
116 Interpretation of amended specifications  .........................  91 
Chapter  11—Infrin gement  92 
Part  1—Infringement and infringement proceedings  92 
117 Infringement by supply of products  ................................ . 92 
118 Infringement exemptions: use in or on foreign 
vessels, ai rcraft or vehicles  ................................ ..............  92 
119 Infringement exemptions: prior use  ................................ . 93 
119A  Infringement exemptions: acts for obtaining 
regulatory approval of pharmaceuticals  ...........................  95 
119B  Infringe ment exemptions: acts for obtaining 
regulatory approval (non -pharmaceuticals)  .....................  96 
119C  Infringement exemptions: acts for experimental 
purposes  ................................ ................................ ..........  96 
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 120 Infringement proceedings  ................................ ................  97 
121 Counter -claim for revocation of patent  ............................  97 
121A  Burden of proof —infringement of patent for a 
process  ................................ ................................ .............  98 
122 Relief fo r infringement of patent  ................................ ..... 98 
123 Innocent infringement  ................................ .....................  99 
Part  2—Non-infringeme nt declarations  100 
124 Interpretation  ................................ ................................ . 100 
125 Application for non -infringement declaration  ...............  100 
126 Proceedings for non -infringement declarations  .............  100 
127 Effect of non -infringement declarations  ........................  101 
Part  3—Unjustified threats of infringement proceedings  102 
128 Application for relief from unjustified threats  ...............  102 
129 Court’s power to grant relief if threats re lated to a 
standard patent or standard patent application  ...............  103 
129A  Threats related to an innovation patent application 
or innovation patent and court’s power to grant 
relief  ................................ ................................ ..............  103 
130 Counter -claim for infringement  ................................ ..... 104 
131 Notification of patent not a threat  ................................ .. 105 
132 Liability of legal practitioner or patent attorney  ............  105 
Chapter  12—Compulsory licences and revocation of 
patents  106 
Part  1—Introduction  106 
132A  Simplified outline of this Chapter  ................................ . 106 
Part  2—Compulsory licences (general)  107 
132B  Simplified outline of this Part  ................................ ........  107 
133 Compulsory licences —general  ................................ ...... 107 
134 Revocation of patent after grant of compulsory 
licence under se ction  133 ................................ ..............  110 
135 Reasonable requirements of the public  ..........................  110 
136 Orders to be consistent with international 
agreements ................................ ................................ ..... 111 
136A  Dealing with allegation of contravention of 
application law  ................................ ..............................  111 
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 Part  3—Patented pharmaceutical invention compulsory 
licences (for manufacture and export to eligible 
importing countries)  112 
Division  1—Introduction  112 
136B  Simplified outline of this Part  ................................ ........  112 
136C  Relationship between Parts  2 and 3  ...............................  112 
Division  2—Patented pharmaceutical invention compulsory 
licences  113 
136D  PPI compulsory licences —applications for orders  ........  113 
136E  PPI compulsory licences —orders  ................................ .. 114 
136F  PPI compulsory licences —terms  ................................ ... 115 
136G  PPI compulsory licences —amendment  .........................  117 
136H  PPI compulsory licences —revocation  ...........................  118 
Division  3—Remuneration  119 
136J  PPI compulsory licences —remuneration .......................  119 
Division  4—General  121 
136K  PPI compulsory licences —nature of orders ...................  121 
136L  PPI compulsory licences —consistency of orders 
with international agreements  ................................ ........  121 
136M  PPI compulsory  licences —applications heard 
together  ................................ ................................ ..........  121 
Part  4—Surrender and revocation of patents  122 
136N  Simplified outline of this Part  ................................ ........  122 
137 Revocation on surrender of patent  ................................ . 122 
138 Revocation of patents in other circumstances  ................  123 
Part  5—Other matters  124 
138A  Simplified outline of this Part  ................................ ........  124 
139 Parties to proceedings  ................................ ....................  124 
140 Commissioner to be given copies of orders  ...................  124 
Chapter  13—Withdrawal and lapsing of applications 
and ceasing of patents  125 
141 Withdrawal of applications  ................................ ............  125 
142 Lapsing of appl ications  ................................ .................  125 
143 Ceasing of patents  ................................ .........................  126 
143A  Ceasing of innovation patents  ................................ ....... 126 
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 143B  Payment of fees  ................................ .............................  127 
Chapter  14—Contracts  128 
144 Void conditions  ................................ .............................  128 
145 Termination of contract after patent ceases to be in 
force  ................................ ................................ ..............  129 
146 Effect of Chapter  ................................ ...........................  129 
Chapter  15—Special provisions relating to associated 
technology  131 
147 Certificate by Director as to associated technology  ....... 131 
148 Lapsing etc. of applications  ................................ ...........  132 
149 Revocation of direction  ................................ .................  132 
150 Restoration of lapsed application  ................................ .. 132 
151 Reinstatement of application as an international 
application  ................................ ................................ ..... 133 
152 Notice of prohibitions or restrictions on 
publication  ................................ ................................ ..... 134 
153 Effect of order  ................................ ...............................  135 
Chapter  16—Jurisdiction and powers of courts  136 
154 Jurisdiction of Federal Court  ................................ .........  136 
155 Jurisdiction of other prescribed courts  ...........................  136 
156 Exercise of jurisdict ion ................................ ..................  137 
157 Transfer of proceedings  ................................ .................  137 
158 Appeals  ................................ ................................ ..........  137 
159 Commissioner may appear in appeals  ...........................  138 
160 Powers of Federal Court  ................................ ................  138 
Chapter  17—The Crown  139 
Part  1—Introductory  139 
161 Nominated persons and patentees  ................................ .. 139 
162 Commonwealth and State authorities  ............................  139 
Part  2—Exploitation by the Crown  140 
163 Exploitation of inventions by Crown  .............................  140 
164 Nominated person or patentee to be informed of 
exploita tion ................................ ................................ .... 140 
165 Remuneration and terms for exploitation  ......................  141 
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 165A  Exploitation of invention to cease under court 
order  ................................ ................................ ..............  141 
166 Previous agreements inoperative  ................................ ... 141 
167 Sale of products  ................................ .............................  142 
168 Supply of products by Commonwealth to foreign 
countries  ................................ ................................ ........  142 
169 Declarations that inventions have been exploited  ..........  143 
170 Sale of forfeited articles  ................................ ................  143 
Part  3—Acquisitions by and assignments to the Crown  144 
171 Acquisition of inventions or patents by 
Commonwealth  ................................ .............................  144 
172 Assignment of invention to Commonwealth  .................  144 
Part  4—Prohibition orders  145 
173 Prohibition of publication of information about 
inventions  ................................ ................................ ...... 145 
174 Effect of prohibition orders  ................................ ...........  145 
175 Disclosure of information to Commonwealth 
authority  ................................ ................................ ........  146 
176 International applications treated as applications 
under this Act  ................................ ................................  146 
Chapter  18—Miscellaneous offences  147 
177 False representations about the Patent Office  ................  147 
178 False representations about patents or patent ed 
articles  ................................ ................................ ...........  147 
182 Officers not to traffic in inventions  ...............................  148 
183 Unauthorised disclosure of information by 
employees etc.  ................................ ...............................  149 
184 Other unauthorised disclosures of information  ..............  149 
185 Commissioner etc. not to prepare documents or 
search records  ................................ ................................  150 
Chapter  19—The Register and official documents  151 
186 Register of Patents  ................................ .........................  151 
187 Registration of particulars of patents etc.  ......................  151 
188 Trusts not registrable  ................................ .....................  152 
189 Power of patentee to deal with patent  ............................  152 
190 Inspection of Register  ................................ ....................  152 
191 False entries in Register  ................................ ................  153 
191A  Commissioner’s power to rectify register  ......................  153 
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 192 Orders for rectification of Register  ................................  154 
193 Inspection of documents  ................................ ................  155 
194 Information obtainable from Commissioner ..................  155 
195 Evidence —the Register  ................................ .................  155 
196 Evidence —unregistered particulars  ...............................  156 
197 Evidence —certificate and copies of documents  ............  156 
197AA  Evidence of matters arising under PCT  .........................  157 
Chapter  20—Patent Attorneys  158 
Part  1—Registration, privileges and professional conduct  158 
198 Registration of patent attorneys  ................................ ..... 158 
199 Deregistration  ................................ ................................  160 
200 Privileges  ................................ ................................ ....... 160 
200A  Designated Manager  ................................ ......................  161 
Part  2—Offences  162 
201 Acting or holding out without being registered  .............  162 
201A  When a person carries on business, practises or 
acts as a patent attorney  ................................ .................  164 
201B  Incorporated pat ent attorney must have a patent 
attorney director  ................................ ............................  165 
202 Documents prepared by legal practitioners  ...................  166 
202A  Documents prepared by a member of a partnership  ...... 167 
202B  Documents prepared by incorporated patent 
attorneys and incorporated legal practices  .....................  167 
203 Attendance at patent attorney’s office  ...........................  167 
204 Time for starting prosecutions  ................................ ....... 168 
Chapter  21—Administration  169 
205 Patent Office and sub -offices  ................................ ........  169 
206 Patent Office seal  ................................ ..........................  169 
207 Commissioner of Patents  ................................ ...............  169 
208 Deputy Commissioner of Patents  ................................ .. 169 
209 Delegation of Commissioner’s powers and 
functions  ................................ ................................ ........  170 
210 Commissioner’s powers  ................................ ................  170 
210A  Sanctions for non -compliance with 
Commissioner’s requirements  ................................ ....... 172 
211 Recovery of costs awarded by Commissioner  ...............  173 
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 Chapter  22—Miscellaneous  174 
212 Copies of examination reports to be communicated  ...... 174 
213 Making and signing applications etc.  ............................  174 
214 Filing of documents  ................................ .......................  174 
214A  Approved means of filing documents  ............................  174 
214B  Directions by Commissioner for filing of 
documents  ................................ ................................ ..... 175 
214C  Directions by Commissioner for filing of evidence  ....... 175 
215 Death of applicant or nominated person  ........................  176 
216 Exercise of discretionary power by Commissioner  ....... 176 
217 Assessors  ................................ ................................ ....... 176 
218 Costs where patent invalid in part  ................................ . 177 
219 Security for costs  ................................ ...........................  177 
220 Costs of attendance of patent attorney  ...........................  177 
220A  Notifications by Commissioner under this Act  ..............  177 
221 Service of documents  ................................ ....................  178 
222 Publication of Official Journal  etc. ...............................  178 
222A  Doing act when Patent Office reopens after end of 
period otherwise provided for doing act  ........................  179 
223 Extensions of time  ................................ .........................  180 
223A  Computerised decision -making  ................................ ..... 182 
224 Review of dec isions ................................ .......................  183 
225 Conduct of employees and agents of natural 
persons  ................................ ................................ ..........  184 
226 Documents open to public inspection do no t 
infringe copyright  ................................ ..........................  185 
227 Fees payable under this Act  ................................ ...........  186 
227AAA  Approved  means of paying a fee  ................................ ... 187 
227AB  Application of administrative law regime to 
decisions made in New Zealand  ................................ .... 188 
227A  Trans -Tasman IP Attorneys Board  ................................  188 
227B  Publishing personal information of registered 
patent attorneys  ................................ .............................  192 
228 Regulations  ................................ ................................ .... 193 
229 Instrument determining formalities requirements 
for patent documents  ................................ .....................  199 
Chapter  23—Transitional and savings provisions  200 
231 Application of Part  III of 1989 Amending Act  ..............  200 
233 Patents granted under 1952 Act  ................................ ..... 200 
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 234 Applications under 1952 Act  ................................ .........  200 
235 Other applications and proceedings under 1952 
Act ................................ ................................ .................  202 
236 Micro -organisms  ................................ ...........................  202 
237 Orders, directions etc. under 1952 Act  ..........................  202 
238 The Commissioner and Deputy Commissioner  .............  202 
239 The Register of Patents and Register of Patent 
Attorneys  ................................ ................................ ....... 202 
240 Registered patent  attorneys  ................................ ............  203 
Schedule  1—Dictionary  204 
Endnotes  217 
Endnote 1 —About the endnotes  217 
Endnote 2 —Abbreviation key  219 
Endnote 3 —Legislation history  220 
Endnote 4 —Amendment history  226 
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Section 1 
 
 Patents Act 1990  1 
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 An Act relating to patents of inventions  
Chapter  1—Introductory  
   
   
1  Short title  
  This Act may be cited as the Patents Act 1990 . 
2  Commencement  
 (1) Subject to subsection  (2), this Act commences on a day to be fixed 
by Proclamation.  
 (2) If this Act does not commence under subsection  (1) within the 
period of 6 months beginning on the day on which it receives the 
Royal Assent, it commences on the first day after the end of that 
period.  
3  Definitions  
  The following expressions are defined, for the purposes of this Act 
or of a particular Chapter  of this Act, in the dictionary in 
Schedule  1: 
applicat ion 
approved form  
associated  
technology  
Australia  
Australian 
continental shelf  
Australian Register 
of Therapeutic 
Goods  
authority  
basic application  Board  
Budapest Treaty  
certified  
claim  
commencing day  
Commissioner  
company  
compensable person  
complete 
specification  
Convention applicant  Convention 
application  
Convention country  
deposit requirements  
depositary institution  
Deputy 
Commissioner  
Designated Manager  
Director  
director  
Director -General of 
IP Australia  
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Section 3 
 
2 Patents Act 1990   
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 eligible importing 
country  
eligible person  
employee  
examination  
exclusive licensee  
exploit  
Federal Court  
file 
foreign aircraft  
foreign land vehicle  
foreign vessel  
formalities check  
incorporated legal 
practice  
incorporated patent 
attorney  
infringement 
proceedings  
innovation patent  
intellectual prope rty 
advice  
interested party  
international 
application  
international 
depositary 
authority  
international filing 
date 
invention  
legal practitioner  
legal representative  
licence  
main invention  New Zealand 
Commissioner of 
Patents  
New Zealand Patents 
Minister  
New  Zealand patents 
official  
nominated person  
non-infringement 
declaration  
Official Journal  
patent  
patent application  
patent area  
patent attorney 
director  
patent of addition  
Patent Office  
patent request  
patentable invention  
patented 
pharmaceutical 
invention  
patented process  
patented product  
patentee  
patents work  
PCT 
PCT application  
permit  
pharmaceutical 
product  
pharmaceutical 
substance  
PPI 
PPI compulsory 
licence  PPI order  
PPI order applicant  
PPSA security 
interest  
preferred means  
preliminary search 
and opinion  
prescribed court  
prescribed depositary 
institution  
prior art base  
prior art information  
prohibition order  
provisional 
specification  
receiving Office  
re-examination  
Register  
registered  
registered patent 
attorney  
Registrar of 
Companies of 
New Zealand  
relate d company 
group  
relevant authority  
relevant international 
application  
relevant proceedings  
rules relating to 
micro -organisms  
Safeguards Act  
specification  
standard patent  
State  
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Section 5 
 
 Patents Act 1990  3 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Statute of 
Monopolies  
supply  
Territory  therapeutic use  
this Act  
TRIPS Agreement  
work  1952 Act  
1989 Amending Act  
5  Associated applications  
  For the purposes of this Act, a complete application is to be taken 
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 ] 
6  Deposit requirements  
  For the purposes of this Act, the deposit requi rements 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 
information on the characteristics of the micro -organism as is 
known to the applicant; and  
 (c) at all times since the end of the prescribed period, the 
specification has included:  
 (i) the name of a prescribed depositary institution from 
which samples of the micro -organism are obtainable as 
provided by the rules relating to micro -organisms; and  
 (iii) the file, accession or registra tion number of the deposit 
given by the institution; and  
 (d) at all 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.  
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Section 7 
 
4 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 [Note: see sec tions  41 and 42 ] 
7  Novelty , inventive step and innovative step  
Novelty  
 (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 o f 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;  
 (b) prior art information (other than that ment ioned 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 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. 
Inventive step  
 (2) For the purposes of this Act, an invention is to be ta ken 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 (whether in or out of the patent area)  before the priority 
date of the relevant claim, whether that knowledge is considered 
separately or together with the information mentioned in 
subsection  (3). 
 (3) The information for the purposes of subsection  (2) is:  
 (a) any single piece of prior art infor mation; or  
 (b) a combination of any 2 or more pieces of prior art 
information that the skilled person mentioned in 
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Section 7A 
 
 Patents Act 1990  5 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 subsection  (2) could, before the priority date of the relevant 
claim, be reasonably expected to have combined.  
Innovative step  
 (4) For the purposes of this Act, an invention is to be taken to involve 
an innovative step when compared with the prior art base unless 
the invention would , to a person skilled in the relevant art,  in the 
light of the common general knowledge as it existed (whether i n or 
out of the patent area)  before the priority date of the relevant claim, 
only vary from the kinds of information set out in subsection  (5) in 
ways that make no substantial contribution to the working of the 
invention.  
 (5) For the purposes of subsectio n (4), the information is of the 
following kinds:  
 (a) prior art information made publicly available in a single 
document or through doing a single act;  
 (b) prior art information made publicly available in 2 or more 
related documents, or through doing 2 o r more related acts, if 
the relationship between the documents or acts is such that a 
person skilled in the relevant art would treat them as a single 
source of that information.  
 (6) For the purposes of subsection  (4), each kind of information set out 
in subsection  (5) must be considered separately.  
[Notes:  (1) For the meaning of document  see section  2B of the 
Acts Interpretation Act 1901.  
(2) See also the definitions of prior art base  and prior 
art information  in Schedule  1: see also 
paragraph  18(1)(b) and section  98.] 
7A  Meaning of useful  
 (1) For the purposes of this Act, an invention is taken not to be useful 
unless a specific, substantial and credible use for the invention (so 
far as claimed) is disclosed in the complete specification.  
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Section 9 
 
6 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (2) The disclosure in the complete specification must be sufficient for 
that specific, substantial and credible use to be appreciated by a 
person skilled in the relevant art.  
 (3) Subsection  (1) does not otherwise affect the meaning of the word 
useful  in this  Act. 
9  Secret use  
  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 her 
predecessor in title to the invention, for the purpose of 
reasonable 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 
predecessor in title to t he 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 
Commonwealth, a State, or  a Territory where the patentee or 
nominated person, or his or her predecessor in title to the 
invention, has disclosed the invention, so far as claimed, to 
the Commonwealth, State or Territory;  
 (e) any 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, if a 
complete application is made for the invention within the 
prescribed period.  
[Note: See also paragraph  18(1)(d) ] 
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Section 10 
 
 Patents Act 1990  7 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 10  Certain interna tional applications to be taken to have been given 
an international filing date  
 (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 appli cation an 
international filing date; and  
 (c) the Commissioner is satisfied , on the balance of probabilities,  
that the application should, under Article 25(2)(a) of the 
PCT, be treated as if it had been given an international 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.  
 (2) This section does not apply to an international application that was 
not filed in the receiving Office in English unless a trans lation of 
the application into English, verified in accordance with the 
regulations, 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, s hould have been given to the application as its 
international filing date under the PCT.  
[Note: international filing date  is defined in Schedule  1.] 
11  Act binds the Crown  
 (1) This Act binds the Crown in right of the Commonwealth, of each 
of the States, of the Australian Capital Territory  and of the 
Northern Territory . 
 (2) Nothing in this Act makes the Crown liable to be prosecuted for an 
offence.  
12  Application of Act  
  This Act extends to:  
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Section 12A 
 
8 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (a) each external Territory; and  
 (b) the Australian continental shelf; and  
 (c) the waters above the Australian continental shelf; and  
 (d) the airspace above Australia, each external Territory and the 
Australian continental shelf.  
12A  Application of the Criminal Code  
  Chapter  2 of the Criminal Code  appli es to all offences created by 
this Act.  
Note:  Chapter  2 of the Criminal Code  sets out the general principles of 
criminal responsibility.  
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Section 13 
 
 Patents A ct 1990  9 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  2—Patent rights, ownership and 
validity  
Part  1—Patent rights  
   
13  Exclusive rights given by patent  
 (1) Subje ct 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.  
14  Assignment of patent  
 (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 pl ace in, or part of, the patent area.  
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Section 15 
 
10 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  2—Ownership  
   
15  Who may be granted a patent?  
 (1) Subject to this Act, a patent for an invention may only be granted 
to a person who:  
 (a) is the inventor; or  
 (b) would, on the grant of a patent for the inventi on, 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 person whether or not he or she is an 
Australian citizen.  
16  Co-ownership of patents  
 (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  all the patentees.  
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Section 17 
 
 Patents Act 1990  11 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (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.  
17  Directions to co -owners  
 (1) Where there are 2 or more patentees, the Commissioner may, on 
the application of any of them, give such directions in accordance 
with the application 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 fails 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 the name and on behalf of the defaulting patentee.  
 (3) Before giving a direction, the Commissioner must g ive 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 Commissi oner 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 a n agreement between the 
patentees.  
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Section 18 
 
12 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  3—Validity  
Division  1—Validity  
18  Patentable inventions  
Patentable inventions for the purposes of a standard patent  
 (1) Subject to subsection  (2), an invention is a patentable invention for 
the purposes of a standa rd patent if the invention, so far as claimed 
in any claim:  
 (a) is a manner of manufacture within the meaning of section  6 
of the Statute of Monopolies; and  
 (b) when compared with the prior art base as it existed before the 
priority date of that claim:  
 (i) is novel; and  
 (ii) involves an inventive step; and  
 (c) is useful; and  
 (d) was not secretly used in the patent area before the priority 
date of that claim by, or on behalf of, or with the authority of, 
the patentee or nominated person or the patentee ’s or 
nominated person’s predecessor in title to the invention.  
Patentable inventions for the purposes of an innovation patent  
 (1A)  Subject to subsections  (2) and (3), an invention is a patentable 
invention for the purposes of an innovation patent if the invention, 
so far as claimed in any claim:  
 (a) is a manner of manufacture within the meaning of section  6 
of the Statute of Monopolies; and  
 (b) when compared with the prior art base as it existed before the 
priority date of that claim:  
 (i) is novel; and  
 (ii) involves an innovative step; and  
 (c) is useful; and  
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Section 19 
 
 Patents Act 1990  13 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (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) Human beings, and the biological processes for their generation, 
are not patentable inventions.  
Certain inventions not patentable inventions for the purposes of an 
innovation patent  
 (3) For the purposes  of an innovation patent, plants and animals, and 
the biological processes for the generation of plants and animals, 
are not patentable inventions.  
 (4) Subsection  (3) does not apply if the invention is a microbiological 
process or a product of such a proc ess. 
[Note: see also sections  7 and 9 .] 
19  Certificate of validity  
 (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 cou rt issues a certificate, then, in any subsequent proceedings 
for infringement of the claim concerned, or for the revocation of 
the patent so far as it relates to that claim, the patentee, or any other 
person supporting the validity of the claim is, on obta ining 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) has effect subject to any direction by the court 
trying the proceedin gs. 
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Section 20 
 
14 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 20  Validity of patent not guaranteed  
 (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 Commissioner, 
or an emplo yee, is not liable because of, or in connection with, 
doing any act under this Act or the PCT, or any proceedings 
consequent on doing any such act.  
21  Validity not implied by making or refusal of non -infringement 
declaration  
  The making of, or refusal to  make, a non -infringement declaration 
in respect of a claim of a patent does not imply that the claim is 
valid.  
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Section 22A 
 
 Patents Act 1990  15 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Division  2—Matters not affecting validity  
22A  Validity not affected by who patent is granted to  
  A patent is not invalid merely because:  
 (a) the patent, or a share in the patent, was granted to a person 
who was not entitled to it; or  
 (b) the patent, or a share in the patent, was not granted to a 
person who was entitled to it.  
22  Invalidity in relation to one claim not to affect validity in re lation 
to other claims  
  The invalidity of a patent in relation to a claim does not affect its 
validity in relation to any other claim.  
23  Validity not affected by publication etc. after priority date  
  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 fi rst-mentioned claim, in a claim of the 
same or a later priority date.  
24  Validity not affected by making information available in certain 
circumstances  
 (1) For the purpose of deciding whether an invention is novel or 
involves an inventive step or an inno vative step, the person making 
the decision must disregard:  
 (a) any information made publicly available in the prescribed 
circumstances, by or with the consent of the nominated 
person or patentee, or the predecessor in title of the 
nominated person or pat entee; and  
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Section 25 
 
16 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (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 complete 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 or an innovat ive 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 o r a State or Territory;  
 (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 investig ation mentioned 
in subparagraph  (a)(ii).  
25  Validity: patents of addition  
  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 beca use 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.  
26  Validity not affected in certain cases involving amendments  
 (1) Objection cannot be t aken to a patent request and specification that 
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. 
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Section 26 
 
 Patents Act 1990  17 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (2) Except in the case of an amendment made in contravention of 
section  112 or 112A , objection cannot be taken to a patent request 
and specification that have been accepted, and a patent is not 
invalid, merely because an amendment of the specification has 
been made that was not allowable.  
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Section 27 
 
18 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Division  3—Notice of matters affecting validity  
27  Notice of matters affecting validity of standard patents  
 (1) A person may, within the prescribed period after a complete 
specification filed in relation to an applic ation 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 doe s not comply with paragraph  18(1)(b).  
 (2) The Commissioner must:  
 (a) notify the applicant for the patent of any matter of which the 
Commissioner is notified under subsection  (1); and  
 (b) give the applicant for the patent a copy of any document 
accompanying the notice under subsection  (1). 
 (2A)  Without limiting paragraph  (2)(b), the Commissioner may give the 
copy by:  
 (a) making the copy available to the applicant for the patent in 
an elec tronic form; and  
 (b) notifying the applicant for the patent that the copy is 
available.  
 (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 pub lic 
inspection.  
28  Notice of matters affecting validity of innovation patents  
Person may give notice of invalidity of an innovation patent  
 (1) A person may notify the Commissioner that the person asserts, for 
reasons stated in the notice, that an innovat ion patent is invalid 
because the invention concerned does not comply with 
paragraph  18(1A)(b).  
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Section 28 
 
 Patents Act 1990  19 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 When notice may be given  
 (2) A notice may only be given to the Commissioner under 
subsection  (1) in respect of an innovation patent within the 
prescribed perio d after an innovation patent has been granted.  
How notice must be given  
 (3) Notice must be given in accordance with the regulations.  
Commissioner must notify patentee of notice given  
 (4) The Commissioner must:  
 (a) notify the patentee of any matter of wh ich the Commissioner 
is notified under subsection  (1); and  
 (b) give the patentee a copy of any document accompanying the 
notice under subsection  (1). 
 (4A)  Without limiting paragraph  (4)(b), the Commissioner may give the 
copy by:  
 (a) making the copy avai lable to the patentee in an electronic 
form; and  
 (b) notifying the patentee that the copy is available.  
Commissioner to deal with notice in accordance with regulations  
 (5) The Commissioner must otherwise consider and deal with a notice 
in accordance with  the regulations.  
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Section 29 
 
20 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  3—From application to acceptance  
Part  1—Patent applications  
Division  1—Applications  
29  Application for patent —general rules  
 (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:  
 (a) be in the approved form; and  
 (b) be in Eng lish; and  
 (c) be accompanied by a provisional specification.  
 (4) The provisional specification referred to in paragraph  (3)(c) must:  
 (a) be in the approved form; and  
 (b) be in English.  
 (4A)  A patent request in relation to a complete application must:  
 (a) be in the approved form; and  
 (b) be in English; and  
 (c) be accompanied by a complete specification; and  
 (d) comply with the formalities requirements determined in an 
instrument under section  229. 
 (4B) The complete specification referred to in paragraph  (4A)(c) must:  
 (a) be in the approved form; and  
 (b) be in English; and  
 (c) comply with the formalities requirements determined in an 
instrument under section  229. 
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Section 29A 
 
 Patents Act 1990  21 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (5) In this section:  
person  includes a body of persons, whether incorporated or not.  
[Note: see also section  5 for requirements relating to associated 
applications .] 
29A  Applications for patents —special rules for PCT applications  
 (1) A PCT application is to be treated as a complete application under 
this Act for a standard patent.  
 (2) The description, drawings , graphics, photographs  and claims 
contained in a PCT application are to be treated as a complete 
specification filed in respect of the application.  
 (3) The specification of a PCT application is to be taken to be 
amended in the ci rcumstances, on the day and in the manner as 
prescribed by the regulations.  
 (4) A PCT application is to be taken to comply with the prescribed 
requirements of this Act that relate to applications for standard 
patents, but is not to be taken, merely becaus e of subsection  (1) or 
(2), to comply with any other requirements of this Act.  
 (5) An applicant of a PCT application must do the following within the 
prescribed period:  
 (a) if the application was not filed in the receiving Office in 
English —file a transl ation of the application into English;  
 (b) in any case —file the prescribed documents and pay the 
prescribed fees.  
 (6) 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 relatio n 
to a PCT application unless the following requirements of 
subsection  (5) have been met (if applicable):  
 (a) a translation of the application into English has been filed;  
 (b) the prescribed documents have been filed;  
 (c) the prescribed fees have been p aid. 
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Section 29B 
 
22 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Note:  A failure to comply with subsection  (5) may also result in the PCT 
application lapsing: see paragraph  142(2)(f).  
29B  Applications for patents —special rules for Convention 
applications  
Making Convention applications  
 (1) A Convention applicant i n relation to a basic application may make 
a Convention application, or 2 or more such applicants may make a 
joint Convention application.  
 (2) If 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 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.  
 (3) Subject to subsec tions  (4) and (5), a Convention application must 
be made and dealt with in the same way as any other patent 
application.  
 (4) 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.  
Meaning of Convention country  
 (5) Convention country  means a foreign country or region of a kind 
prescribed by the regulations.  
 (6) Despite subsection  14(2) of the Legislation Act 2003 , regulations 
made for the purposes of the definition of Convention country  in 
subsection  (5) may make provision in relation to a matter by 
applying, adopting or incorporating, with or without modification, 
any matter contained in any other instrument or o ther writing as in 
force or existing from time to time.  
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Section 30 
 
 Patents Act 1990  23 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 30  Filing date  
  A patent application  (including a PCT application)  is to be taken to 
have been made on the filing date determined under the 
regulations.  
31  Joint applicants  
  2 or more persons (wit hin the meaning of section  29) may make a 
joint patent application.  
32  Disputes between applicants etc.  
 (1) If a dispute arises between any 2 or more joint applicants  in 
relation to a patent application whether, or in what manner, the 
application should proceed, the Commissioner may, on a request 
made in accordance with the regulations by any of those 
applicants , make any determinations the Commissioner thinks fit 
for enabling the application to proceed in the name of one or more 
of the applicants  alone, or for regulating the manner in which it is 
to proceed, or both, as the case requires.  
 (2) The Commissioner may make a determination under subsection  (1) 
whether or not the application has lapsed.  
 (3) The Commissioner must not make a determination under 
subsection  (1) without first giving each joint applicant a reasonable 
opportunity to be heard.  
33  Applications by opponents etc.  
Opposition to standard patent if a person other than nominated 
person eligible for grant of patent  
 (1) If: 
 (a) an applicatio n has been made for a standard patent; and  
 (b) the grant of the standard patent is opposed under section  59 
by one or more persons; and  
 (c) the Commissioner decides, under section  60, that:  
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Section 33 
 
24 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (i) one or more opponents are eligible persons in relation to 
the invention, so far as claimed in any claim of the 
opposed patent application (the original claim ); and  
 (ii) the nominated person in respect of the application is not 
an eligible person in relati on to the invention; and  
 (iii) there is no other reason that a patent should not be 
granted; and  
 (d) a complete application is made under section  29 by one or 
more of the eligible persons for a patent in relation to the 
invention;  
the Commissioner may gr ant those eligible persons a patent jointly 
for the invention, so far as so claimed.  
Opposition to standard patent if nominated person eligible for 
grant of patent with other persons  
 (2) If: 
 (a) an application has been made for a standard patent; and  
 (b) the grant of the patent is opposed under section  59 by one or 
more persons; and  
 (c) the Commissioner decides, under section  60: 
 (i) that both the nominated person and one or more of the 
opponents are eligible persons in relation to the 
invention, so far as claimed in any claim of the opposed 
patent application (the original claim ); and  
 (ii) that there is no other reason that a patent should not be 
granted; and  
 (d) a complete application is made by one or more of the eligible 
persons under section  29 for a patent in relation to the 
invention;  
the Commissioner may grant a patent for the invention, so far as so 
claimed, to those eligible  persons jointly.  
Opposition to innovation patent if patentee not entitled to grant of 
patent but another person is  
 (3) If: 
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Section 33 
 
 Patents Act 1990  25 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (a) an innovation patent is opposed under section  101M by one 
or more persons;  
 (b) the Commissioner decides, under section  101N, that the 
patentee is not entitled to the grant of the patent; and  
 (c) the Commissioner decides that one or more of the opponents 
are eligible persons in relation to the invention the subject of 
the patent, so far as claimed in any claim of the patent  (the 
original claim ); and  
 (d) a complete application is made by one or more of the eligible 
persons under section  29 for a patent in relation to the 
invention;  
the Commissioner may grant an innovation patent for the 
invention, so far as so claimed, to those e ligible persons.  
Opposition to innovation patent if patentee entitled to grant of 
patent with other person  
 (4) If: 
 (a) an innovation patent is opposed under section  101M by one 
or more persons; and  
 (b) the Commissioner decides that one or more of the op ponents 
and the original patentee are eligible persons in relation to the 
invention the subject of the patent, so far as claimed in any 
claim of the patent  (the original claim ); and  
 (c) a complete application is made by one or more of the eligible 
persons  under section  29 for a patent in relation to the 
invention;  
the Commissioner may grant an innovation patent for the 
invention, so far as so claimed, to those eligible persons jointly.  
 (5) If the Commissioner grants a patent under subsection  (1), (2), (3)  
or (4), the claims of that patent granted have the same priority date 
as that of the original claim referred to in the respective subsection.  
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Section 34 
 
26 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 34  Applications by eligible persons arising out of Court proceedings  
 (1) If, in any proceedings in a court rela ting to a patent (the first 
patent ), the court is satisfied either:  
 (a) that one or more persons are eligible persons in relation to an 
invention so far as claimed in any claim of the patent  (the 
original claim ) but that the patentee is not an eligible pe rson; 
or 
 (b) that the patentee and another person or persons are eligible 
persons in relation to an invention so far as claimed in any 
claim of the first patent  (the original claim ); 
the court, in addition to any other order it may make in the 
proceedings , may, by order, declare that the persons who it is 
satisfied are eligible persons are eligible persons in relation to that 
invention so far as so claimed.  
 (2) Subject to subsection  (3), if a complete application is made under 
section  29 by one or more declared persons, the Commissioner 
may grant a patent for the invention, so far as claimed in the 
original claim, to those declared persons jointly.  
 (3) If the Commissioner grants a patent under subsection  (2), the 
claims of that patent have the same prio rity date as that of the 
original claim.  
35  Applications by eligible persons following revocation by 
Commissioner  
 (1) If the Commissioner:  
 (a) revokes a patent under section  137; and  
 (b) is satisfied , on the balance of probabilities : 
 (i) on applicatio n made by one or more persons in 
accordance with the regulations, that the persons are 
eligible persons in relation to the invention concerned, 
so far as so claimed in any claim of the revoked patent  
(the original claim ) and that the former patentee is not  
such an eligible person; or  
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Section 36 
 
 Patents Act 1990  27 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (ii) on application made by one or more persons in 
accordance with the regulations, that the persons and the 
former patentee are eligible persons in relation to the 
invention concerned, so far as is claimed in any claim of 
the revoked patent  (the original claim ); 
the Commissioner may declare in writing that the eligible persons 
are such eligible persons.  
 (1A)  If a complete application is made under section  29 by one or more 
of the declared persons, the Commissioner may grant a  patent for 
the invention, so far as so claimed, to those declared persons 
jointly.  
 (1B) If the Commissioner grants a patent under subsection  (1A), the 
claims of that patent have the same priority date as that of the 
original claim as referred to in subse ction  (1). 
 (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 decla ration.  
36  Other applications by eligible persons  
 (1) If: 
 (a) a patent application has been made and, in the case of a 
complete application, the patent has not been granted ; and  
 (b) an application for a declaration by the Commissioner  is made 
by one or more persons (the section  36 applicants ) in 
accordance with the regulations; and  
 (c) the Commissioner is satisfied  on the balance of probabilities,  
in relation to an invention disclosed in the specification filed 
in relation to the appli cation for the patent:  
 (i) that the nominated person is not an eligible person, but 
that the section  36 applicants are eligible persons; or  
 (ii) that the nominated person is an eligible person, but that 
the section  36 applicants are also eligible persons ; 
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Section 37 
 
28 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 the Commissioner may declare in writing that the persons who the 
Commissioner is satisfied are eligible persons are eligible persons 
in relation to the invention as so disclosed.  
 (2) The Commissioner may make a declaration under subsection  (1) 
whether o r not the patent application lapses or is withdrawn.  
 (3) The Commissioner must not make a declaration under 
subsection  (1) without first giving the nominated person a 
reasonable opportunity to be heard.  
 (3A)  The Commissioner may, after making a declarati on under 
subsection  (1), make any determination the Commissioner thinks 
fit for enabling the application to proceed in the name of one or 
more of the declared persons.  
 (4) If a complete application is made under section  29 by one or more 
of the declared p ersons, the priority date of the claims of a patent 
for the invention granted to the person, or persons, as the case may 
be, must be determined under the regulations.  
 (5) An appeal lies to the Federal Court against a decision by the 
Commissioner under this section.  
37  Complete application may be treated as provisional  
 (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 Commissi oner must give a direction as 
asked.  
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Section 38 
 
 Patents Act 1990  29 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (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.  
38  Time for making complete application  
 (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.  
 (1A)  A Convention application must be made within the presc ribed 
period.  
 (2) In this section:  
applicant  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 .] 
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Section 40 
 
30 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Division  2—Specifi cations  
40  Specifications  
Requirements relating to provisional specifications  
 (1) A provisional specification must disclose the invention in a manner 
which is clear enough and complete enough for the invention to be 
performed by a person skilled in the relevant art.  
Requirements relating to complete specifications  
 (2) A complete specification must:  
 (a) disclose the invention in a manner which is clear enough and 
complete enough for the invention to be performed by a 
person skilled in the relevant art; and 
 (aa) disclose 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 an innovation patent —
end with at least one and no more than 5 claims  defining the 
invention . 
 (3) The claim or claims must be clear and succinct and supported by 
matter disclosed  in the specification.  
 (3A)  The claim or claims must not rely on references to d escriptions , 
drawings, graphics or photographs  unless absolutely necessary to 
define the invention.  
 (4) The claim or claims must relate to one invention only.  
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Section 41 
 
 Patents Act 1990  31 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 41  Specifications: micro -organisms  
Provisional specifications  
 (1A)  A specification is taken to  comply with subsection  40(1), so far as 
it requires a description of a micro -organism, if:  
 (a) the micro -organism is deposited with a prescribed depository 
institution in accordance with such provisions of the 
Budapest Treaty as are applicable; and  
 (b) the prescribed circumstances apply.  
Complete specifications  
 (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 reasonably 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 reasonably available to a person even if it is not so available in 
the patent area.  
 (4) Where:  
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Section 42 
 
32 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (a) the requirements specified in paragraph  6(c) or (d) cease to 
be satisfie d in relation to a micro -organism; and  
 (b) steps are taken at a later time within the prescribed period in 
accordance with such provision s (if any) of the regulations as 
are applicable; and  
 (c) as a result of those steps, if the period during which those  
requirements are not satisfied is disregarded, those 
requirements would be 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 
prescribed have eff ect 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 
requirements .] 
42  Micro -organisms ceasing to be reasonably available  
 (1) Where:  
 (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 
meaning 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 presc ribed 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  40 unless the deposit requirements are 
satisfied in rela tion to the micro -organism.  
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Section 42 
 
 Patents Act 1990  33 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (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 specifica tion were references to a date 
specified in the declaration for the purposes of this 
subsection.  
 (3) Subsection  (2) does not limit the operation of section  223. 
 (4) Where:  
 (a) an application is made under subsection  (1); or  
 (b) the Commissioner propose s 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 accordance 
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 to satisfaction of deposit 
requirements .] 
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Section 43 
 
34 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Division  3—Priority dates  
43  Priority dates  
 (1) Each claim of a specification must have a priority date.  
 (2) The priority date of a claim is:  
 (a) if subsection  (2A) applies to the claim —the date determined 
under the regulations; or  
 (b) otherwise —the date of the filing of the specification.  
 (2A)  This subsection applies to a claim  if: 
 (a) prescribed circumstances apply in relation to the invention 
defined in the claim; and  
 (b) a prescribed document discloses , or a prescribed set of 
prescribed documents considered together disclose,  the 
invention in the claim in a manner that is c lear enough and 
complete enough for the invention to be performed by a 
person skilled in the relevant art.  
 (2B) A prescribed document, or a prescribed set of prescribed 
documents considered together, is taken to disclose the invention in 
a claim as mentio ned in paragraph  (2A)(b) so far as such disclosure 
requires a description of a micro -organism, if:  
 (a) the micro -organism is deposited with a prescribed depository 
institution in accordance with such provisions of the 
Budapest Treaty as are applicable; an d 
 (b) the prescribed circumstances apply.  
 (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.  
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Section 43AA  
 
 Patents Ac t 1990  35 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (5) If, at the time when a Convention application or a PCT application 
is made in respect of an inventi on: 
 (a) an application (the earlier application ) has been made for 
protection in respect of the invention in a Convention 
country; and  
 (b) the earlier application was made in the prescribed period; and  
 (c) the earlier application has been withdrawn, aba ndoned or 
refused without becoming open to public inspection; and  
 (d) the earlier application has not been used as the basis of 
claiming a right of priority in a Convention country under a 
law of that country; and  
 (e) a later application has been made by  the same applicant for 
protection in respect of the invention in a Convention 
country;  
the earlier application is taken, for the purposes of this Act, to have 
never been made.  
Note:  For the purposes of paragraph  (e), the later application need not have 
been made in the same Convention country as the earlier application.  
43AA   Disclosure in basic applications  
Prescribed documents relating to basic applications  
 (1) The regulations may prescribe documents that relate to a basic 
application.  
Disclosures in prescribed documents may generally be taken into 
account  
 (2) Without limiting the documents or disclosures that may be taken 
into account for the purposes of this Act in relation to a basic 
application, account may be taken of a disclosure in a prescribed  
document that relates to a basic application.  
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Section 43AA  
 
36 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Disclosures in prescribed documents must not be taken into 
account if Commissioner’s requirement not complied with  
 (3) However, if the Commissioner makes a requirement under 
subsection  (4) in relation to a pr escribed document, account must 
not be taken, for the purposes of this Act, of a disclosure in the 
prescribed document unless the document has been made available 
by the prescribed means and within the prescribed period.  
Commissioner may require prescribed  documents be made 
available  
 (4) The Commissioner may require that a prescribed document relating 
to a basic application be made available to the Commissioner by 
the prescribed means and within the prescribed period.  
 (5) The Commissioner may make a requi rement under subsection  (4) 
more than once in relation to the same prescribed document.  
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Section 43A 
 
 Patents Act 1990  37 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  2—Examination of standard patent requests 
and specifications  
Division  1A—Preliminary search and opinion  
43A  Preliminary search and opinion  
 (1) If a complete appl ication for a standard patent has been made, the 
Commissioner may conduct a preliminary search and opinion in 
relation to the patent request and specification relating to the 
application.  
 (2) The preliminary search and opinion must be conducted in 
accorda nce with the regulations.  
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Section 44 
 
38 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Division  1—Examination  
44  Request for examination  
 (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 examinati on 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 o pen to public inspection, 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 
specification.  
45  Examination  
 (1) Subject to subsection  (1A), if  an applicant asks for an examination 
of a patent request and complete specification  relating to an 
application for a standard patent, the Commissioner must examine 
the request and specification and report on:  
 (a) whether the specification complies with subsections  40(2) to 
(4); a nd 
 (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), (b) and (c); and  
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Section 45 
 
 Patents Act 1990  39 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (c) whether the invention is a patentable invention under 
subsection  18(2); and  
 (d) such oth er matter s (if any) as are prescribed.  
 (1A)  If a PCT application has been made and the prescribed 
requirements have not been met, the Commissioner may decline to 
examine the request and specification under subsection  (1) until the 
requirements have been met. 
 (2) The examination must be carried out in accordance with the 
regulations.  
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Section 49 
 
40 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  3—Acceptance  
Division  1—Acceptance of standard patents  
49  Acceptance of patent request: standard patent  
 (1) Subject to section  50, the Commissioner must accept a pate nt 
request and complete specification relating to an application for a 
standard patent if the Commissioner is satisfied, on the balance of 
probabilities:  
 (a) that the specification complies with subsections  40(2) to (4); 
and 
 (b) that the invention, so fa r as claimed, satisfies the criteria 
mentioned in paragraphs 18(1)(a), (b) and (c); and  
 (c) that the invention is a patentable invention under 
subsection  18(2); and  
 (d) as to the matters (if any) prescribed under 
paragraph  45(1)(d).  
 (2) If subsection  (1) does not apply, the Commissioner may refuse to 
accept the request and specification.  
 (5) Where the Commissioner accepts a patent request and complete 
specification relating to an application for a standard patent, the 
Commissioner must:  
 (a) notify the applicant of the acceptance; and  
 (b) publish a notice of the acceptance in the  Official Journal . 
 (6) If the patent request and complete specification have not already 
become open to public inspection, the notice mentioned in 
paragraph  (5)(b) must include  a statement 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 of the reasons 
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Section 49A 
 
 Patents Act 1990  41 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 for the refusal and publish a notice of the refusal in the Official 
Journal . 
49A  Postponing acceptance of patent request: standard patent  
 (1) The Commissioner may postpone acceptance of a patent request 
and compl ete specification:  
 (a) on his or her own initiative; or  
 (b) if requested to do so in writing by the applicant.  
 (2) If the Commissioner postpones acceptance on his or her own 
initiative, he or she must specify a day to which acceptance is 
postponed.  
 (3) If the Commissioner postpones acceptance following a request by 
the applicant, the Commissioner may specify a day to which 
acceptance is postponed.  
 (4) The day specified under subsection  (2) or (3) cannot be a day that 
is after the end of the period pres cribed for the purposes of 
paragraph  142(2)(e).  
 (5) If: 
 (a) acceptance is postponed under subsection  (1) following a 
request by the applicant; and  
 (b) the Commissioner has not specified a day to which 
acceptance is postponed;  
the Commissioner is not required to accept the patent request and 
complete specification unless the applicant withdraws the request 
in writing.  
Note:  If the applicant does not withdraw the request before the day 
prescribed by the regulations, the application lapses: see 
paragraph  142(2)(e).  
50  Application or grant may be refused in certain cases  
 (1) The Commissioner may refuse to accept a request and specification 
relating to a standard patent, or to grant a standard patent:  
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Section 50A 
 
42 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (a) for an invention the use of which would be contra ry to law; 
or 
 (b) on the ground that the specification claims as an invention:  
 (i) a substance that 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 
admixture.  
 (2) The Commissioner may refuse to accept a specification relating to 
a standard patent containing 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.  
50A  Revocation of acceptance  
 (1) The Commissioner may revoke the acceptance of a patent request 
and complete specification relating to an application for a standard 
patent if the Commissioner is satisfied , on the balance of 
probabilities, that:  
 (a) a patent has not been granted on the application; and  
 (b) the request and specification should not have been accepted, 
taking account of all the circumstances that existed when the 
request and specification we re accepted (whether or not the 
Commissioner knew then of their existence); and  
 (c) it is reasonable to revoke the acceptance, taking account of 
all the circumstances.  
 (2) If the Commissioner revokes the acceptance:  
 (a) the patent request and complete s pecification are taken to 
have never been accepted; and  
 (b) the Commissioner must continue to examine, and report on, 
the application under section  45; and  
 (c) sections  49 and 50 continue to apply in relation to the request 
and specification.  
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Section 51 
 
 Patents Act 1990  43 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 51  Appeal  
  An appeal lies to the Federal Court against a decision of the 
Commissioner under this Division  (other than a decision under 
section  50A) . 
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Section 52 
 
44 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Division  2—Acceptance of innovation patents  
52  Formalities check and acceptance of innovation patents  
 (1) If a complete application for an innovation patent is made, the 
Commissioner must undertake a formalities check in respect of the 
application.  
 (2) If satisfied , on the balance of probabilities,  that the application 
passes the formalities check, the Commissione r must accept the 
patent request and complete specification.  
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Section 53 
 
 Patents Act 1990  45 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  4—Publication  
   
   
53  Publication of certain information about applicants etc.  
 (1) If a patent application (other than a PCT application) is made, the 
Commissioner must publish in the Official Journal  the prescribed 
information about the applicant and the application.  
 (2) The regulations may make provision for and in relation to the 
publication of information relating to PCT applications.  
54  Notice of publication  
 (1) Where a complete specification filed in respect of an application 
for a standard 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.  
 (2) If subsection  41(2) applies to a specification, the applicant cannot 
make a request under subsection  (1) in relation to the specification 
unless th e 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 
application); 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 Official Journal  that 
the specification is open to public inspection, unless the application 
has lapsed or been refused or withdrawn.  
 (4) Where:  
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Section 54 
 
46 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (a) a divisional application for a standard patent provided for in 
section  79B (other than a PCT application) is made in respect 
of an original application, whether a PCT application or not; 
and 
 (b) the complete specification filed 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 complete specification filed in respect of the divisional 
application is open to public inspection.  
 (5) Where a divisional application for a standard patent provided for in 
section  79B (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 inspect ion; 
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 
inspection.  
 (6) Where:  
 (a) a divisional application for a standard patent provided for in 
section  79B (other than a PCT application) is made in respect 
of an original a pplication that is a PCT application; and  
 (b) a notice is published in the Official Journal  that the complete 
specification filed in respect of the original application is 
open to public inspection;  
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Section 55 
 
 Patents Ac t 1990  47 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 the Commissioner must also publish in the Official Journ al a 
notice that the complete specification filed in respect of the 
divisional application is open to public inspection.  
55  Documents open to public inspection  
 (1) Where a notice is published under section  54 or under 
subsection  62(3), the specification concerned, and such other 
document s (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 an innovation patent, the following 
documents are open to public inspection:  
 (a) all documents (other than prescribed documents) filed in 
relation to the application or the patent, whether before or 
after the acceptance or grant;  
 (b) all documents (o ther 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 a pplicant or patentee, or the former 
applicant or patentee;  
being documents that have not already become open to public 
inspection.  
 (3) Subject to section  56A, 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.  
56  Certain documents not to be published  
 (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  
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Section 56A 
 
48 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (b) are not liable to be inspected or produced before the 
Commissioner 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 proceedings of 
a document of the kind mentioned in section  55 must be given to 
the Commissioner, who is entitled to be heard on the application.  
56A  Publication and inspection of PCT applications  
 (1) The regulations may make provision for and in relation to the 
public inspection of PCT applications.  
 (2) Without limiting subsection  (1), the regulations may make 
provision for and in relation to:  
 (a) notices regarding the opening of complete specifications 
relating to PCT applications to public inspection; and  
 (b) the circumstances in which PCT applications become open to 
public inspection.  
57  Effect of publication of complete specification  
 (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.  
 (3) Subsection  (1) does not give 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) in respect of an 
act done:  
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Section 58 
 
 Patents Act 1990  49 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (a) after the complete specification became open to public 
inspection; and  
 (b) before the patent request was accepted:  
if the defendant proves that a patent could not validly have been 
granted to the applicant in respect of the claims (as framed when 
the act was done) that are alleged to have been infri nged by the 
doing of the act.  
 (5) For the purposes of applying this section to a PCT application, 
references to the complete specification becoming open to public 
inspection are references to the PCT application becoming open to 
public inspection in accor dance with regulations made for the 
purposes of section  56A.  
58  Result of search may be disclosed  
  The Commissioner may disclose the result of any search made for 
the purpose of making a report under this Act.  
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Section 59 
 
50 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  5—Opposition to grant of standard 
patent 
   
   
59  Opposition to grant of standard patent  
  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 either:  
 (i) not entitled to a grant of a patent for the invention; or  
 (ii) entitled to a grant of a patent for the invention but only 
in conjunction with some other person;  
 (b) that the invention is not a patentable invention;  
 (c) that the specification filed in respect of the complete 
application does not comply with subsection  40(2) or (3).  
60  Hearing and decision by Commissioner  
 (1) 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 to be heard before deciding a case.  
 (3) The Commissioner may, in deciding a case, take into account any 
ground on which the grant of a standard paten t may be opposed, 
whether relied upon by the opponent or not.  
 (3A)  If the Commissioner is satisfied, on the balance of probabilities, 
that a ground of opposition to the grant of the standard patent 
exists, the Commissioner may refuse the application.  
 (3B) The Commissioner must not refuse an application under this 
section unless the Commissioner has, where appropriate, given the 
applicant a reasonable opportunity to amend the relevant 
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Section 60 
 
 Patents Act 1990  51 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 specification for the purpose of removing any ground of opposition 
and t he applicant has failed to do so.  
 (4) The applicant, and any opponent, may appeal to the Federal Court 
against a decision of the Commissioner under this section.  
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Section 61 
 
52 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  6—Grant and term of patents  
Part  1—Grant  
   
61  Grant of standard patent  
 (1) Subject  to section  100A  and paragraph  210A(2)(a) , the 
Commissioner must grant a standard patent, by registering 
prescribed particulars of the patent in the Register , if: 
 (a) there is no opposition to the grant; or  
 (b) in spite of opposition, the Commissioner’s decision, or the 
decision on appeal, is that a standard patent should be 
granted.  
 (2) A standard patent must be granted within the prescribed period.  
 (3) The Commissioner must notify the patentee that the standard 
patent has been granted.  
62  Grant and p ublication of innovation patent  
 (1) If: 
 (a) the Commissioner accepts a patent request and complete 
specification filed in respect of an application for an 
innovation patent; and  
 (b) a prohibition order is not in force under subsection  152(3) or 
173(1) i n relation to the application;  
the Commissioner must grant the innovation patent by registering 
prescribed particulars of the patent in the Register . 
 (2) If an innovation patent is granted, the Commissioner must publish 
a notice in the Official Journal  stating that:  
 (a) the innovation patent has been granted; and  
 (b) the patent request and complete specification are open to 
public inspection.  
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Section 63 
 
 Patents Act 1990  53 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (3) If: 
 (a) a divisional application provided for in section  79B is made 
for an innovation patent; and  
 (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 the complete specification f iled in respect of the original 
application on which the divisional application is based is open to 
public inspection.  
 (4) The Commissioner must notify the patentee that the innovation 
patent has been granted.  
63  Joint patentees  
  A patent may be granted  to 2 or more nominated persons jointly.  
64  Grant: multiple applications  
 (1) Subject to this section, where there are 2 or more applications for 
patents for identical, or substantially identical, inventions, the 
granting of a patent on one of those appli cations does not prevent 
the granting of a patent on any of the other applications.  
 (2) Where:  
 (a) an application for a standard patent 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 
specifications have the same priority date or dates;  
a standard patent cannot be granted on the application.  
65  Date of patent  
  The date of a patent is:  
 (a) the date of filing of the relevan t complete specification; or  
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Section 65 
 
54 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (b) where the regulations provide for the determination of a 
different date as the date of a patent —the date determined 
under the regulations.  
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Section 67 
 
 Patents Act 1990  55 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  2—Term  
   
67  Term of standard patent  
  The term of a standard patent is 20 ye ars from the date of the 
patent.  
68  Term of innovation patent  
  The term of an innovation patent is 8 years from the date of the 
patent.  
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Section 70 
 
56 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  3—Extension of term of standard patents 
relating to pharmaceutical substances  
   
70  Applications for extension of patent  
 (1) The patentee of a standard patent may apply to the Commissioner 
for an extension of the term of the patent if the requirements set out 
in subsections  (2), (3) and (4) are satisfied.  
 (2) Either or both of the fol lowing conditions must be satisfied:  
 (a) one or more pharmaceutical substances per se  must in 
substance be disclosed in the complete specification of the 
patent and in substance fall within the scope of the claim or 
claims of that specification;  
 (b) one or more pharmaceutical substances when produced by a 
process that involves the use of recombinant DNA 
technology, must in substance be disclosed in the complete 
specification of the patent and in substance fall within the 
scope of the claim or claims of th at specification.  
 (3) Both of the following conditions must be satisfied in relation to at 
least one of those pharmaceutical substances:  
 (a) goods containing, or consisting of, the substance must be 
included in the Australian Register of Therapeutic Good s; 
 (b) the period beginning on the date of the patent and ending on 
the first regulatory approval date for the substance must be at 
least 5 years.  
Note:  Section  65 sets out the date of a patent.  
 (4) The term of the patent must not have been previously ex tended 
under this Part . 
Meaning of first regulatory approval date  
 (5) For the purposes of this section, the first regulatory approval date , 
in relation to a pharmaceutical substance, is:  
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Section 71 
 
 Patents Act 1990  57 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (a) if no pre -TGA marketing approval was given in relation to 
the substance —the date of commencement of the first 
inclusion in the Australian Register of Therapeutic Goods of 
goods that contain, or consist of, the substance; or  
 (b) if pre -TGA marketing approval was given in relation to the 
substance —the date of the first  approval.  
 (5A)  For the purposes of paragraph  (5)(a), disregard an inclusion in the 
Australian Register of Therapeutic Goods of goods that contain, or 
consist of, a pharmaceutical substance if the inclusion was sought 
for the sole purpose of exporting the  goods from Australia to 
address a public health problem in an eligible importing country:  
 (a) in circumstances of national emergency or other 
circumstances of extreme urgency; or  
 (b) by the public non -commercial use of the goods.  
Note:  This subsection a lso applies in relation to an application for an 
extension of the term of a standard patent (see paragraph  71(2)(b)).  
Meaning of pre-TGA marketing approval  
 (6) For the purposes of this section, pre-TGA marketing approval , in 
relation to a pharmaceutical s ubstance, is an approval (however 
described) by a Minister, or a Secretary of  a Department, to:  
 (a) market the substance, or a product containing the substance, 
in Australia; or  
 (b) import into Australia, for general marketing, the substance or 
a product  containing the substance.  
71  Form and timing of an application  
Form of application  
 (1) An application for an extension of the term of a standard patent 
must:  
 (a) be in the approved form; and  
 (b) be accompanied by such documents (if any) as are 
ascerta ined in accordance with the regulations; and  
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Section 72 
 
58 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (c) be accompanied by such information (if any) as is ascertained 
in accordance with the regulations.  
For this purpose, document  includes a copy of a document.  
Timing of application  
 (2) An application for an e xtension of the term of a standard patent 
must be made during the term of the patent and within 6 months 
after the latest of the following dates:  
 (a) the date the patent was granted;  
 (b) the date of commencement of the first inclusion in the 
Australian R egister of Therapeutic Goods of goods that 
contain, or consist of, any of the pharmaceutical substances 
referred to in subsection  70(3) , as worked out under 
subsection  70(5A) (if applicable) ; 
 (c) the date of commencement of this section.  
72  Notification and public inspection of application  
  If a patentee makes an application for an extension of the term of a 
standard patent, the Commissioner must publish in the Official 
Journal  a notice that the application has been made and is open to 
public inspection.  
73  Withdrawal of application  
 (1) A patentee who has applied for an extension of the term of a 
standard patent may, by notice in writing to the Commissioner, 
withdraw the application.  
 (2) If an application for an extension of the term of a standard patent is 
withdrawn, the Commissioner must publish in the Official Journal  
a notice stating that the application has been withdrawn.  
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Section 74 
 
 Patents Act 1990  59 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 74  Acceptance or refusal of application  
Acceptance  
 (1) If a patentee of a standard patent makes an application  for an 
extension of the term of the patent, the Commissioner must accept 
the application if the Commissioner is satisfied , on the balance of 
probabilities,  that the requirements of sections  70 and 71 are 
satisfied in relation to the application.  
 (2) If the Commissioner accepts the application, the Commissioner 
must:  
 (a) notify the applicant of the acceptance; and  
 (b) publish a notice of the acceptance in the Official Journal . 
Refusal  
 (3) The Commissioner must refuse to accept the application if the 
Commissioner is not satisfied , on the balance of probabilities,  that 
the requirements of sections  70 and 71 are satisfied in relation to 
the application.  
 (4) If the Commissioner refuses to accept the application, the 
Commissioner must:  
 (a) notify the app licant of the reasons for the refusal; and  
 (b) publish a notice of the refusal in the Official Journal . 
75  Opposition to grant of extension  
 (1) The Minister or any other person may, in accordance with the 
regulations, oppose the grant of an extension of  the term of a 
standard patent on the ground that one or more of the requirements 
of sections  70 and 71 are not satisfied in relation to the application 
for the extension. The Minister or other person may not oppose the 
grant of the extension on any other ground.  
 (2) If the grant of an extension of the term of a standard patent is 
opposed, the Commissioner must decide the case in accordance 
with the regulations.  
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Section 76 
 
60 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (3) The Commissioner must give the applicant and the opponent a 
reasonable opportunity to be h eard before deciding a case.  
 (4) The applicant, and any opponent, may appeal to the Federal Court 
against a decision of the Commissioner under this section.  
76  Grant of extension  
 (1) The Commissioner must grant an extension of the term of a 
standard pat ent if:  
 (a) there is no opposition to the grant; or  
 (b) in spite of opposition, the Commissioner’s decision, or the 
decision on appeal, is that the extension should be granted.  
 (2) If the Commissioner grants an extension, the Commissioner must 
notify th e applicant of the grant and publish a notice of the grant in 
the Official Journal . 
77  Calculation of term of extension  
 (1) If the Commissioner grants an extension of the term of a standard 
patent, the term of the extension is equal to:  
 (a) the period b eginning on the date of the patent and ending on 
the earliest first regulatory approval date (as defined by 
section  70) in relation to any of the pharmaceutical 
substances referred to in subsection  70(2);  
reduced (but not below zero) by:  
 (b) 5 years.  
Note : Section  65 sets out the date of a patent.  
 (2) However, the term of the extension cannot be longer than 5 years.  
78  Exclusive rights of patentee are limited if extension granted  
  If the Commissioner grants an extension of the term of a standard 
patent,  the exclusive rights of the patentee during the term of the 
extension are not infringed:  
 (a) by a person exploiting:  
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Section 79 
 
 Patents Act 1990  61 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (i) a pharmaceutical substance per se  that is in substance 
disclosed in the complete specification of the patent and 
in substance falls within the scope of the claim or claims 
of that specification; or  
 (ii) a pharmaceutical substance when produced by a process 
that involves the use of recomb inant DNA technology, 
that is in substance disclosed in the complete 
specification of the patent and in substance falls within 
the scope of the claim or claims of that specification;  
  for a purpose other than therapeutic use; or  
 (b) by a person exploitin g any form of the invention other than:  
 (i) a pharmaceutical substance per se  that is in substance 
disclosed in the complete specification of the patent and 
in substance falls within the scope of the claim or claims 
of that specification; or  
 (ii) a pharm aceutical substance when produced by a process 
that involves the use of recombinant DNA technology, 
that is in substance disclosed in the complete 
specification of the patent and in substance falls within 
the scope of the claim or claims of that specificat ion. 
79  Rights of patentee if extension granted after patent expires  
  If: 
 (a) a patentee applies for an extension of the term of a standard 
patent; and  
 (b) the term of the patent expires before the application is 
determined; and  
 (c) the extension is g ranted;  
the patentee has, after the extension is granted, the same rights to 
start proceedings in respect of the doing of an act during the 
period:  
 (d) commencing on the expiration of the term of the patent; and  
 (e) ending on the day on which the extensi on was granted;  
as if the extension had been granted at the time when the act was 
done.  
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Section 79A 
 
62 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 79A  Commissioner not to make decision if court proceedings 
pending  
  If: 
 (a) a patentee of a standard patent applies for an extension of the 
term of the patent; and  
 (b) relevant proceedings in relation to the patent are pending;  
the Commissioner must not make any decision under this Part in 
relation to the patent without the leave of the court.  
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Section 79B 
 
 Patents Act 1990  63 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  6A—Divisional applications  
   
   
79B  Divisional applications prior to grant of patent  
 (1) If: 
 (a) a complete application (the first application ) for a patent is 
made; and  
 (b) the first application is not a divisional application for an 
innovation patent provided for in section  79C;  
the a pplicant may make a further complete application for a patent 
for an invention disclosed in the specification filed in relation to 
the first application.  
 (2) The further complete application:  
 (a) must be made in accordance with the regulations made for 
the purposes of this subsection; and  
 (b) must include the prescribed particulars.  
 (3) The further complete application can only be made during the 
period:  
 (a) starting on the day the first application is made; and  
 (b) ending when any of the following ha ppens:  
 (i) the first application lapses;  
 (ii) the first application is refused;  
 (iii) the first application is withdrawn;  
 (iv) a period prescribed by the regulations for the purposes 
of this subparagraph ends.  
 (4) In this section:  
applicant  has the sa me meaning as in section  38. 
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Section 79C 
 
64 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 79C  Divisional applications for innovation patents may be made 
after grant of an innovation patent  
Applications may be made  
 (1) A patentee of an innovation patent (the first patent ) may make a 
complete application for another  innovation patent for a further 
invention disclosed in the first patent if the invention was disclosed 
in the complete specification filed in respect of the application on 
which the first patent was granted . 
 (1A)  The further complete application:  
 (a) must be made in accordance with the regulations made for 
the purposes of this subsection; and  
 (b) must include the prescribed particulars.  
 (2) The patentee may make the further complete application only 
during the period:  
 (a) starting when an examination of the first patent begins; and  
 (b) ending when any of the following happens:  
 (i) the term of the first patent ends;  
 (ii) the first patent is revoked;  
 (iii) the first patent ceases;  
 (iv) a period prescribed by the regulations for the purposes 
of this subparagraph ends.  
When does an examination begin?  
 (3) For the purposes of subsection  (2), an examination of the patent 
begins:  
 (a) if the examination has been requested under 
paragraph  101A(b) —on the day the request was made; or  
 (b) if the Commissioner  decided to examine the patent under 
paragraph  101A(a) —on the day the Commissioner made that 
decision.  
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Section 80 
 
 Patents Act 1990  65 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  7—Patents of addition  
   
   
80  Chapter  does not apply to innovation patents  
  This Chapter  does not apply in relation to innovation patents.  
81  Grant of patent of addition  
 (1) Where:  
 (a) a patent for an invention (in this Chapter  called the main 
invention ) has been applied for or granted; and  
 (b) the applicant or patente e (or a person authorised by the 
applicant or patentee) applies for a fur ther patent for an 
improvement in, or modification of, the main invention; and  
 (c) the application for that further patent is made in accordance 
with the regulations;  
the Commissioner may, subject to this Act and the regulations, 
grant a patent of additio n 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 
complete specification relating to the application for the patent for 
the main invention.  
 (3) A patent of addition must not be granted  before the patent for the 
main invention is granted . 
 (4) An appeal lies to the Federal Court against a decision of the 
Commissioner under this  section.  
82  Revocation of patent and grant of patent of addition instead  
 (1) Where:  
 (a) an invention that is an improvement in, or modification of, a 
main invention is the subject of an independent patent; and  
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Section 83 
 
66 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (b) the patentee of the independent paten t 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 u nder 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.  
83  Term of patent of addition  
Usual term  
 (1) The general rule is that a patent of addition remains in force for so 
long as the patent for the main invention remains in force. 
However, this rule is subject to the exceptions set out in 
subsections  (3) and (4).  
 (2) The term of a patent of addition may be extended under Part  3 of 
Chapter  6, even though the patent for the main invention is not 
extended under that Part . 
Patent of addition extended  
 (3) If the term of a patent of addition is extended under Part  3 of 
Chapter  6: 
 (a) the exten sion begins at the end of the unextended term of the 
patent for the main invention; and  
 (b) when the extension begins, the patent of addition becomes an 
independent patent.  
Patent for main invention extended  
 (4) If: 
 (a) the term of the patent for the ma in invention is extended 
under Part  3 of Chapter  6; and  
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Section 85 
 
 Patents Act 1990  67 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (b) the term of the patent of addition is not extended under that 
Part; 
the term of the patent of addition expires at the end of the 
unextended term of the patent for the main invention.  
85  Revocati on of patent for main invention  
 (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.  
86  Renewal fees not payable  
  A fee is not payable for the renewal of a patent of addition.  
87  Fees payable where patent of addition becomes an independent 
patent  
  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.  
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Section 96A 
 
68 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  9—Re-examination of standard 
patents  
   
   
96A  Chapter  does not apply to innovation patents  
  This Chapter  does not apply in r elation to innovation patents.  
97  Re-examination of complete specifications  
 (1) Subject to this section and the regulations, if:  
 (a) a request and complete specification relating to an 
application for a patent has been accepted; and  
 (b) the patent has not been granted;  
the Commissioner may re -examine the complete 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 -examin e the complete 
specification.  
 (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 
Commissioner must re -examine t he specification accordingly.  
 (3A)  The re -examination must be carried out in accordance with the 
regulations.  
 (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). 
 (5) Where:  
 (a) the Commissioner has started to re -examine a complete 
specification relating to a patent under subsection  (2); and  
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Section 98 
 
 Patents Act 1990  69 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (b) relevant proceedings in relation to the patent are started;  
the Commissioner must not continue the re -examination.  
98  Report on re -examination  
  On re -examining a complete specification, the Commissioner must 
ascertain and report on:  
 (a) whether the specification does not comply with 
subsection  40(2) or (3); and  
 (b) whether, to the best of his or her knowledge, the invention, so 
far as claimed, does not satisfy the criteria mentioned in 
paragraph  18(1)(a), (b) or (c); and  
 (c) whether the invention is not a patentable invention under 
subsection  18(2).  
99  Statement by applicant or patente e 
 (1) 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 applican t or patentee may file a statement whether or not the 
applicant or patentee takes steps to amend the complete 
specification, or files a statement of amendments in accordance 
with a direction under section  106 or 107.  
100  Copies of report to be given to co urt 
  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.  
100A   Refusal to grant pate nt—re-examination before grant  
 (1) The Commissioner may refuse to grant a patent if the 
Commissioner:  
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Section 101 
 
70 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (a) makes an adverse report on a re -examination of the relevant 
specification under subsection  97(1); and  
 (b) is satisfied, on the balance of probabili ties, that there is a 
lawful ground of objection to the specification.  
 (2) The Commissioner cannot refuse to grant a patent under this 
section unless the Commissioner:  
 (a) has given the applicant a reasonable opportunity to be heard; 
and 
 (b) has, where appropriate, given the applicant a reasonable 
opportunity to amend the relevant specification for the 
purpose of removing any lawful ground of objection and the 
applicant has failed to do so.  
 (3) The applicant may appeal to the Federal Court against a dec ision of 
the Commissioner under this section.  
101  Revocation of patent —re-examination after grant  
 (1) The Commissioner may, by notice in writing, revoke a patent, 
either wholly or so far as it relates to a particular claim, if the 
Commissioner:  
 (a) make s an adverse report on a re -examination of the relevant 
specification under subsection  97(2); and  
 (b) is satisfied, on the balance of probabilities, that there is a 
lawful ground of objection to the relevant specification.  
 (2) The Commissioner must not revoke a patent under this section 
unless the Commissioner:  
 (a) has given the patentee a reasonable opportunity to be heard; 
and 
 (b) has, where appropriate, given the patentee a reasonable 
opportunity to amend the relevant specification for the 
purpose o f 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.  
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Section 101 
 
 Patents Act  1990  71 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (4) The patentee may appeal to the Federal  Court against a decision of 
the Commissioner under this section.  
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Part 1   Examination of innovation patents  
   
 
Section 101A 
 
72 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  9A—Examination, re -examination 
and opposition -innovation patents  
Part  1—Examination of innovation patents  
   
101A   Examination may be requested or Commissioner may decide 
to examine  
  After the grant of an innovation patent, the Commissioner:  
 (a) may, if the Commissioner decides to do so; and  
 (b) must, if asked to do so, in writing, by the patentee or any 
other person;  
examine the complete specification relating to an innovation 
patent. 
101B   Examination of an innovation patent  
What the Commissioner must do in examining a patent  
 (1) If the Commissioner decides, or is asked, to examine an innovation 
patent under section  101A, the Commissioner must:  
 (a) examine the complete specifica tion relating to the patent to 
ascertain the matters set out in subsection  (2); and  
 (b) report on those matters.  
Matters for examination and report  
 (2) The matters in this subsection are whether:  
 (a) the specification complies with subsections  40(2) to (4); and  
 (b) the invention, so far as claimed, complies with paragraphs 
18(1A)(a), (b) and (c); and  
 (c) the invention is a patentable invention under 
subsections  18(2) and (3); and  
 (d) the use of the invention would not be contrary to law; and  
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Section 101C  
 
 Patents Act 1990  73 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (e) the patent does not claim as an invention a substance that 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; and  
 (f) the patent does not clai m as an invention a process producing 
such a substance by mere admixture; and  
 (g) the patent does not contain a claim that includes the name of 
a person as the name, or part of the name, of the invention so 
far as it is claimed in that claim; and  
 (h) the patent does not claim an invention that is the same as an 
invention that is the subject of a patent and is made by the 
same inventor, where the relevant claim or claims in respect 
of each patent have the same priority date or dates; and  
 (i) the complete specification complies with such other matters 
(if any) as are prescribed for the purpose of this paragraph.  
101C   How and when examination to be carried out  
  The examination under section  101B must be carried out:  
 (a) in accordance with the regulations;  and 
 (b) within the period prescribed.  
101E   Certificate of examination  
 (1) This section applies to an innovation patent if:  
 (a) after examining the patent under section  101B, the 
Commissioner decides that he or she is satisfied, on the 
balance of proba bilities, as to the following:  
 (i) the specification complies with subsections  40(2) to (4);  
 (ii) the invention, so far as claimed, complies with 
paragraphs 18(1A)(a), (b) and (c);  
 (iii) the invention is a patentable invention under 
subsections  18(2) an d (3);  
 (iv) the use of the invention would not be contrary to law;  
 (v) the patent does not claim as an invention a substance 
that is capable of being used as food or medicine 
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Section 101EA  
 
74 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 (whether for human beings or animals and whether for 
internal or external use) and is a mere mixture of known 
ingredients;  
 (vi) the patent does not claim as an invention a process 
producing such a substance by mere admixture;  
 (vii) the patent does not contain a claim that includes the 
name of a person as the name, or part of the na me, of 
the invention so far as it is claimed in that claim;  
 (viii)  the patent does not claim an invention that is the same 
as an invention that is the subject of a patent and is 
made by the same inventor, where the relevant claim or 
claims in respect of e ach patent have the same priority 
date or dates;  
 (ix) the complete specification complies with such other 
matters (if any) as are prescribed for the purpose of 
paragraph  101B(2)(i);  and 
 (b) the patent has not ceased under section  143A.  
 (2) If this secti on applies, the Commissioner must:  
 (a) notify the patentee and the person who requested the 
examination (if that person is not the patentee) that the patent 
has been examined and that a certificate of examination is to 
be issued; and  
 (b) publish a notice of the examination having occurred in the 
Official Journal ; and  
 (c) issue a certificate of examination to the patentee in the 
approved form; and  
 (d) register the issue of the certificate.  
101EA   Revocation of certificate of examination  
 (1) The Commissioner may revoke a certificate of examination issued 
in relation to an innovation patent if the Commissioner is satisfied, 
on the balance of probabilities, that:  
 (a) the certificate of examination should not have been issued, 
taking account  of all the circumstances that existed when the 
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Section 101F  
 
 Patents Act 1990  75 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 certificate was issued (whether or not the Commissioner 
knew then of their existence); and  
 (b) it is reasonable to revoke the certificate, taking account of all 
the circumstances; and  
 (c) there are no relev ant proceedings pending.  
 (2) If the Commissioner revokes the certificate:  
 (a) all of the provisions of section  101E are taken, after 
revocation, to have never operated in relation to the patent; 
and 
 (b) the Commissioner must continue to examine and repo rt on 
the patent under section  101B; and  
 (c) sections  101E and 101F continue to apply in relation to the 
patent.  
101F   Revocation of innovation patents following examination under 
section  101B  
 (1) The Commissioner must revoke a patent if:  
 (a) the patent  has been examined under section  101B; and  
 (b) section  101E does not apply to the patent; and  
 (c) the patent has not ceased under section  143A.  
 (2) If the Commissioner revokes the patent:  
 (a) the Commissioner must notify the patentee and the person 
who requested the examination (if that person is not the 
patentee)  of the revocation; and  
 (b) register the revocation of the patent.  
 (3) The Commissioner must not revoke a patent under this section 
unless the Commissioner:  
 (a) has given the patentee a reas onable opportunity to be heard; 
and 
 (b) has, if appropriate, given the patentee a reasonable 
opportunity to amend the relevant specification for the 
purposes of removing a ground for the revocation of the 
patent and the patentee has failed to do so.  
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Section 101F  
 
76 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (4) An appeal lies to the Federal Court against a decision of the 
Commissioner revoking a patent.  
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Section 101G  
 
 Patents Act 1990  77 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  2—Re-examination of innovation patents  
   
101G   Re-examination of complete specifications of innovation 
patents  
 (1) Subject to subsections  101K(2) and (3) and the regulations, after an 
innovation patent has been certified, the Commissioner:  
 (a) may, if the Commissioner decides to do so; and  
 (b) must, if asked to do so, in writing, by the patentee or any 
other person;  
re-examine the complete specification r elating to the patent.  
 (1A)  The re -examination must be carried out in accordance with the 
regulations.  
 (2) If the Commissioner re -examines an innovation patent under 
subsection  (1): 
 (a) the Commissioner must re -examine the complete 
specification relatin g to the patent to determine if the patent 
is invalid and  should be revoked because a ground set out in 
subsection  (3) is made out;  and 
 (b) the Commissioner must report on the grounds set out in 
subsection  (3). 
 (3) The grounds for the revocation of the p atent under subsection  (2) 
are as follows:  
 (a) that the specification filed in respect of the complete 
application does not comply with subsection  40(2) or (3);  
 (b) that the invention, so far as claimed, does not comply with 
paragraph  18(1A)(a), (b) or ( c); 
 (c) that the invention is not a patentable invention under 
subsection  18(2) or (3).  
 (4) There are no other grounds for the revocation of a patent under 
subsection  (2). 
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Section 101H  
 
78 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 101H   Patentee statements  
 (1) If the Commissioner reports that, after re -examining a patent under 
section  101G, a ground for the revocation of the patent has been 
made out, the 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 patentee may file a statement whether or not the patentee takes 
steps to amend the complete specification, or files a statement of 
amendments in accordance with a direction under section  106. 
101J   Revocation of innovation patent following re -examination  
 (1) The Commissioner may, by notice in writing, revoke a patent, 
either wholly or so far as it relates to a particular claim, if the 
Commissioner:  
 (a) makes an adverse report on a re -examination of the relevant 
specification under section  101G; and  
 (b) is satisfied, on the balance of probabilities, that there is a 
ground of revocation of the patent.  
 (2) If the Commissioner revokes the patent:  
 (a) the Commissioner must notify the patentee and the person 
who requested the examination (if that person is not the 
patentee)  of the revocation; and  
 (b) register the revocation of the patent.  
 (3) The Commissioner must not revoke a patent under this section 
unless:  
 (a) the Commissioner has given the patentee a reasonable 
opportunity to be heard; and  
 (b) the C ommissioner has considered the statement made by the 
patentee under section  101H (if any); and  
 (c) the Commissioner has, if appropriate, given the patentee a 
reasonable opportunity to amend the relevant specification 
for the purpose of removing any ground  for revocation and 
the patentee has failed to do so.  
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Section 101K  
 
 Patents Act 1990  79 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (4) The Commissioner must not revoke a patent under this section 
while relevant proceedings in relation to that patent are pending.  
 (5) The patentee may appeal to the Federal Court against a decision of 
the Commissioner under this section.  
101K   Relevant proceedings and re -examination  
 (1) If the validity of an innovation 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 
relating to the patent. If so directed, the Commissioner must 
re-examine the specification accordingly.  
 (2) If relevant proceedings in relation to an innovation patent are 
pending, the Commissioner must not re -examine the comple te 
specification relating to the patent.  
 (3) If: 
 (a) the Commissioner has started to re -examine a complete 
specification relating to an innovation patent; and  
 (b) relevant proceedings in relation to the patent are started;  
the Commissioner must not cont inue the re -examination.  
101L   Copies of report to be given to court  
  A copy of a report under paragraph  101G(2)(b), and of any 
statement filed under section  101H in relation to the report, must, if 
the re -examination was directed under subsection  101K(1) , be 
given to the court that gave the direction.  
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Part 3   Opposition to innovation patents  
   
 
Section 101M  
 
80 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  3—Opposition to innovation patents  
   
101M   Opposition to innovation patent  
  The Minister, or any other person, may, in accordance with the 
regulations, oppose an innovation patent that has been certified and 
seek the revocation of it, on one or more of the following grounds 
of invalidity, but on no other:  
 (a) that the patentee is either:  
 (i) not entitled to the patent; or  
 (ii) entitled to the patent but only in conjunction with some 
other person;  
 (b) that the complete specification does not comply with 
subsection  40(2) or (3);  
 (c) that the invention is not a patentable invention because it 
does not comply with paragraph  18(1A)(a), (b) or (c);  
 (d) that the invention is not a patentable in vention under 
subsection  18(2) or (3).  
101N   Hearing and decision by the Commissioner  
 (1) If an innovation patent has been opposed under section  101M, the 
Commissioner must decide the case in accordance with the 
regulations.  
 (2) The Commissioner must giv e the opponent and the patentee a 
reasonable opportunity to be heard before deciding the case.  
 (3) The Commissioner may, in deciding whether to revoke the patent, 
take into account any ground on which the grant of an innovation 
patent may be opposed, whet her relied upon by the opponent or 
not. 
 (4) Subject to subsection  (6), if the Commissioner is satisfied , on the 
balance of probabilities,  that a ground exists for the revocation of 
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Section 101P  
 
 Patents Act 1990  81 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 an innovation patent, the Commissioner may revoke the patent in 
writing ei ther wholly or so far as it relates to a particular claim.  
 (5) If the Commissioner revokes the patent:  
 (a) the Commissioner must notify the patentee and the opponent 
of the revocation; and  
 (b) register the revocation of the patent.  
 (6) The Commissioner  must not revoke a patent under this section 
unless the Commissioner has, where appropriate, given the 
patentee a reasonable opportunity to amend the relevant 
specification for the purpose of removing any ground for 
revocation and the patentee has failed t o do so.  
 (7) The patentee, and any opponent, may appeal to the Federal Court 
against a decision of the Commissioner under this section.  
101P   Relevant proceedings and opposition  
  If relevant proceedings in relation to an innovation patent are 
pending, th e Commissioner must not make a decision under this 
Part in relation to the patent without the leave of the court.  
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Part 1   Amendments that are not allowable  
   
 
Section 102 
 
82 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  10—Amendments  
Part  1—Amendments that are not allowable  
   
102  What amendments are not allowable?  
Amendment of complete specification not allowable if amended 
specification claims or discloses matter extending beyond that 
disclosed in certain documents  
 (1) An amendment of a complete specification is not allowable if, as a 
result of the amendment, the specification would claim or disclos e 
matter that extends beyond that disclosed in the following 
documents taken together:  
 (a) the complete specification as filed;  
 (b) other prescribed documents (if any).  
Certain amendments of complete specification are not allowable 
after relevant time  
 (2) An amendment of a complete specification is not allowable after 
the relevant time if, as a result of the amendment:  
 (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 comply with subsection  40(2) or 
(3). 
Meaning of relevant time1 
 (2A)  For the purposes of subsection  (2), relevant time  means:  
 (a) in relation to an amendment proposed to a complete 
specification relating to a standard patent —after the 
specification has been accepted; or  
                                                      
1 This heading has been placed in the correct position.  
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Section 103 
 
 Patents Act 1990  83 
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  (b) in relation to an amendment proposed to a complete 
specification relating to an innovation patent —after the 
Commissioner has made a decision under 
paragraph  101E(1)(a)  in respect of the patent.  
Amen dment of innovation patent request not allowable in certain 
circumstances  
 (2B) An amendment to a patent request relating to an innovation patent 
application  is not allowable if:  
 (a) the patent application was provided for in section  79C; and  
 (b) the eff ect of the proposed amendment would be to convert 
the application from an application for an innovation patent 
to an application for a standard patent.  
Amendments of a kind prescribed by regulations not allowable  
 (2D)  An amendment of a patent request or a  complete specification is 
not allowable if it is of a kind prescribed by regulations made for 
the purposes of this section.  
Section does not apply in certain cases  
 (3) This section does not apply to an amendment for the purposes of:  
 (a) correcting a cle rical error or an obvious mistake made in, or 
in relation to, a complete specification; or  
 (b) complying with paragraph  6(c) (about deposit requirements).  
103  Consent of mortgagee or exclusive licensee needed  
 (1) Where a person is registered as the mort gagee or exclusive licensee 
of a patent, an amendment of the complete specification is not 
allowable unless the mortgagee or licensee has consented, in 
writing, to the amendment.  
 (2) If a mortgagee or licensee refuses to consent to a proposed 
amendment, t he Commissioner may, on the application of the 
applicant or patentee, if satisfied  on the balance of probabilities  
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Section 103 
 
84 Patents Act 1990   
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 that the consent has been unreasonably refused, direct that the 
consent of the mortgagee or licensee is not necessary.  
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Section 104 
 
 Patents Act 1990  85 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  2—Amendments of p atent requests, 
specifications and other filed documents  
   
104  Amendments by applicants and patentees  
 (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 specification, or any other filed document, for any 
purpose including either 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 do cument, the 
Commissioner must consider and deal with the request in 
accordance with the regulations.  
 (4) The Minister or any other person may, subject to and in accordance 
with the regulations, oppose allowing an amendment.  
 (5) 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 all ow, a requested 
amendment, other than a prescribed decision.  
105  Amendments directed by court  
Order for amendment during relevant proceedings  
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Section 106 
 
86 Patents Act 1990   
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  (1) In any relevant proceedings in relation to a patent, the court may, 
on the application of the patentee, by o rder direct the amendment 
of the patent request or the complete specification in the manner 
specified in the order.  
Order for amendment during an appeal  
 (1A)  If an appeal is made to the Federal Court against a decision or 
direction of the Commissioner in relation to a patent application, 
the Federal Court may, on the application of the applicant for the 
patent, by order direct the amendment of the patent request or the 
complete specification in the manner specified in the order.  
Orders for amendment genera lly 
 (2) An order  under subsection  (1) or (1A)  may be made subject to such 
terms (if any) as to costs, advertisements or otherwise, as the court 
thinks fit.  
 (3) The applicant for an order under subsection  (1) or (1A)  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. 
 (5) The applicant  must file a copy of an order within the prescribed 
period.  
 (6) On the filing of a copy of an order, the patent request or complete 
specification is to be taken to have been amended in the manner 
specified in the order.  
106  Amendments directed by Commissioner:  patents  
 (1) Where:  
 (a) a patent has been granted; and  
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Section 107 
 
 Patents Act 1990  87 
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  (b) the Commissioner is satisfied , on the balance of probabilities,  
that the patent is invalid on grounds that could be removed 
by appropriate amendments of the specification following:  
 (i) in the case of a standard patent —re-examination of the 
patent; or  
 (ii) in the case of an innovation patent —examination of, 
re-examination of, or opposition to, the patent;  
the Commissioner may, in accordance with the regulations, direct 
the patentee to file, wit hin 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 he ard. 
 (3) A patentee may, in accordance with the regulations, amend a 
statement of amendments.  
 (4) If the Commissioner is satisfied , on the balance of probabilities,  
that the amendments set out in a statement (or an amended 
statement) are allowable and wo uld, if made, remove the grounds 
on which the 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.  
107  Amendments directed by Commissioner: applications for 
standard patents  
 (1) Where:  
 (a) a complete application for a standard patent has been made; 
and 
 (b) the Commissioner is satisfied , on the balance of probabilities,  
that there are lawful grounds of objection to the patent 
request or complete specification , but that those grounds of 
objection could be removed by appropriate amendments of 
the request or specification; and  
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Section 109 
 
88 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (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 Commiss ioner 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 , on the balance of pr obabilities,  
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.  
109  Appeal  
  An appeal lies to the Federal Court against a direction of the 
Commissioner under section  106 or 107.  
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Section 110 
 
 Patents Act 1990  89 
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 Part  3—Miscellaneous  
   
110  Advertisement of amendment of c omplete specification  
  An amendment of a complete specification that is open to public 
inspection must be notified in the Official Journal . 
112  Pending proceedings  
  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.  
112A   Decisions on appeal  
  A complete specification relating to a patent application must not 
be amended, except under section  105, if:  
 (a) an appeal against a decision or direction of the Commissioner 
has been made to the Federal Court in relation to the 
specification; and  
 (b) the appeal, and any proceedings resulting from it, have not 
been finally determined, withdrawn or otherwise disposed of.  
113  Persons claiming under assignmen t or agreement  
 (1) Where, before a patent is granted, a person would, if the patent 
were then granted, be entitled under an assignment or agreement, 
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 
accordance 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.  
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Section 114 
 
90 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (2) Where the Commissioner gives a direction:  
 (a) the person is to be taken to be the applicant, or a joint 
applicant, as the case requires; and  
 (b) the patent request is to be taken to have been amended so as 
to reque st the grant of a patent to the person, either alone or 
as a joint patentee, as the case requires.  
114  Priority date of claims of certain amended specifications  
 (1) This section applies if:  
 (a) a complete specification has been amended; and  
 (b) the ame ndment was not allowable under subsection  102(1); 
and 
 (c) as a result of the amendment, a claim of the amended 
specification claims an invention that:  
 (i) was not disclosed by the complete specification as filed 
in a manner that was clear enough and comp lete enough 
for the invention to be performed by a person skilled in 
the relevant art; but  
 (ii) is disclosed in that manner by the amended 
specification.  
 (2) If this section applies, the priority date of the claim must be 
determined under the regulations.  
114A   Objection cannot be taken to certain amended specifications  
 (1) This section applies if:  
 (a) a complete specification (the original specification ) has been 
amended; and  
 (b) the amendment was not allowable under subsection  102(1); 
and 
 (ba) as a result of the amendment, a claim of the amended 
specification claims an invention that was not disclosed by 
the original specification as filed in a manner that was clear 
enough and complete enough for the invention to be 
performed by a person s killed in the relevant art; and  
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Section 115 
 
 Patents Act 1990  91 
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  (c) after the filing date of the original specification there is a 
publication or use of the invention as described in the 
original specification.  
 (2) If this section applies, objection cannot be taken to the amended 
speci fication, and a patent is not invalid, on the ground that the 
invention, so far as claimed in the amended specification and 
having regard to the publication or the use of the invention 
described in the original specification, does not involve:  
 (a) in the case of a standard patent —an inventive step; or  
 (b) in the case of an innovation patent —an innovative step.  
115  Restriction on recovery of damages etc.  
 (1) Where a complete specification is amended after becoming 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) a nd (4).  
116  Interpretation of amended specifications  
  The Commissioner or a court may, in interpreting a complete 
specification as amended, refer to the specification without 
amendment.  
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Section 117 
 
92 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  11—Infringement  
Part  1—Infringement and infringement 
proceed ings 
   
117  Infringement by supply of products  
 (1) 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 believe 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 t o 
use the product, given to the person by the supplier or 
contained in an advertisement published by or with the 
authority of the supplier.  
118  Infringement exemptions: use in or on foreign vessels, aircraft 
or vehicles  
  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 t he invention 
is used exclusively for the needs of the vessel; or  
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Section 119 
 
 Patents Act 1990  93 
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  (b) by using the patented invention in the construction or 
working of a foreign aircraft or foreign land vehicle, or in the 
accessories of the aircraft or vehicle, if the aircraft or vehicle  
comes into the patent area only temporarily or accidentally.  
119  Infringement exemptions: prior use  
 (1) A person may, without infringing a patent, do an act that exploits a 
product, method or process and would infringe the patent apart 
from this subsect ion, if immediately before the priority date of the 
relevant claim the person:  
 (a) was exploiting the product, method or process in the patent 
area; or  
 (b) had taken definite steps (contractually or otherwise) to 
exploit the product, method or process in  the patent area.  
Note 1:  This section applies in relation to a patent granted as a result of an 
application filed on or after the commencement of Schedule  6 to the 
Intellectual Property Laws Amendment Act 2006  (which repealed and 
substituted this section) . 
Note 2:  Section  119 of this Act as in force before the commencement of that 
Schedule  continues to apply in relation to patents granted as a result of 
earlier applications.  
 (2) Subsection  (1) does not apply if, before the priority date, the 
person:  
 (a) had stopped (except temporarily) exploiting the product, 
method or process in the patent area; or  
 (b) had abandoned (except temporarily) the steps to exploit the 
product, method or process in the patent area.  
Limit for product, method or process derived f rom patentee  
 (3) Subsection  (1) does not apply to a product, method or process the 
person derived from the patentee or the patentee’s predecessor in 
title in the patented invention unless the person derived the 
product, method or process from information that was made 
publicly available:  
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Section 119 
 
94 Patents Act 1990   
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  (a) by or with the consent of the patentee or the patentee’s 
predecessor in title; and  
 (b) in the prescribed circumstances mentioned in 
paragraph  24(1)(a).  
Exemption for successors in title  
 (4) A person (the disposer ) may dispose of the whole of the disposer’s 
entitlement under subsection  (1) to do an act without infringing a 
patent to another person (the recipient ). If the disposer does so, this 
section applies in relation to the recipient as if the references in 
subsec tions  (1), (2) and (3) to the person were references to:  
 (a) the disposer; or  
 (b) if the disposer’s entitlement arose because of one or more 
previous applications of this subsection —the first person:  
 (i) who was entitled under subsection  (1) (applying of its 
own force) to do an act without infringing the patent; 
and 
 (ii) to whom the disposer’s entitlement is directly or 
indirectly attributable.  
Definition  
 (5) In this section:  
exploit  includes:  
 (a) in relation to a product:  
 (i) make, hire, sell or ot herwise dispose of the product; and  
 (ii) offer to make, hire, sell or otherwise dispose of the 
product; and  
 (iii) use or import the product; and  
 (iv) keep the product for the purpose of doing an act 
described in subparagraph  (i), (ii) or (iii); and  
 (b) in relation to a method or process:  
 (i) use the method or process; and  
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Section 119A  
 
 Patents Act 1990  95 
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  (ii) do an act described in subparagraph  (a)(i), (ii), (iii) or 
(iv) with a product resulting from the use of the method 
or process.  
119A   Infringement exemptions: acts for obtaining  regulatory 
approval of pharmaceuticals  
 (1) The rights of a patentee of a pharmaceutical patent are not 
infringed by a person exploiting an invention claimed in the patent 
if the exploitation is solely for:  
 (a) purposes connected with obtaining the inclu sion in the 
Australian Register of Therapeutic Goods of goods that:  
 (i) are intended for therapeutic use; and  
 (ii) are not medical devices, or therapeutic devices, as 
defined in the Therapeutic Goods Act 1989 ; or 
 (b) purposes connected with obtaining si milar regulatory 
approval under a law of a foreign country or of a part of a 
foreign country.  
 (2) Subsection  (1) does not apply to the export from Australia of goods 
for purposes described in paragraph  (1)(b) unless the term of the 
patent has been extende d under Part  3 of Chapter  6 and the goods 
consist of or contain:  
 (a) a pharmaceutical substance per se  that is in substance 
disclosed in the complete specification of the patent and in 
substance falls within the scope of the claim or claims of that 
specification; or  
 (b) a pharmaceutical substance when produced by a process that 
involves the use of recombi nant DNA technology, that is in 
substance disclosed in the complete specification of the 
patent and in substance falls within the scope of the claim or 
claims of that specification.  
Note:  Part 3 of Chapter  6 provides for the extension of the term of standa rd 
patents claiming pharmaceutical substances.  
 (3) In this section:  
pharmaceutical patent  means a patent claiming:  
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Section 119B  
 
96 Patents Act 1990   
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  (a) a pharmaceutical substance; or  
 (b) a method, use or product relating to a pharmaceutical 
substance, including any of the following:  
 (i) a method for producing a raw material needed to 
produce the substance;  
 (ii) a product that is a raw material needed to produce the 
substance;  
 (iii) a product that is a pro -drug, metabolite or derivative of 
the substance.  
119B   Infringement exemptions : acts for obtaining regulatory 
approval (non -pharmaceuticals)  
 (1) A person may, without infringing a patent, do an act that would 
infringe the patent apart from this subsection, if the act is done 
solely for:  
 (a) purposes connected with obtaining an app roval required by a 
law of the Commonwealth or of a State or Territory to 
exploit a product, method or process; or  
 (b) purposes connected with obtaining a similar approval under a 
law of another country or region.  
 (2) This section does not apply in relat ion to a pharmaceutical patent 
within the meaning of subsection  119A(3).  
119C   Infringement exemptions: acts for experimental purposes  
 (1) A person may, without infringing a patent for an invention, do an 
act that would infringe the patent apart from this  subsection, if the 
act is done for experimental purposes relating to the subject matter 
of the invention.  
 (2) For the purposes of this section, experimental purposes  relating to 
the subject matter of the invention include, but are not limited to, 
the fol lowing:  
 (a) determining the properties of the invention;  
 (b) determining the scope of a claim relating to the invention;  
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Section 120 
 
 Patents Act 1990  97 
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  (c) improving or modifying the invention;  
 (d) determining the validity of the patent or of a claim relating to 
the invention;  
 (e) determining whether the patent for the invention would be, or 
has been, infringed by the doing of an act.  
120  Infringement proceedings  
 (1) Subject to subsection  (1A), infringement proceedings may be 
started in a prescribed court, or in another court havi ng jurisdiction 
to hear and determine the matter, by the patentee or an exclusive 
licensee.  
 (1A)  Infringement proceedings in respect of an innovation patent cannot 
be started unless the patent has been certified.  
 (2) If an exclusive licensee starts infringement proceedings, the 
patentee must be joined as a defendant unless 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 p roceedings 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.  
121  Counter -claim for revocation of patent  
 (1) A defenda nt 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. 
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Section 121A  
 
98 Patents Act 1990   
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 121A   Burden of proof —infringement of patent for a process  
 (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.  
 (3) In deciding how the defendant is to adduce evidence for the 
purposes of subsection  (2), the court is to take into a ccount the 
defendant’s legitimate interests in having business and 
manufacturing secrets protected.  
122  Relief for infringement of patent  
 (1) The relief which a court may grant for infringement of a patent 
includes an injunction (subject to such terms, i f any, as the court 
thinks fit) and, at the option of the plaintiff, either damages or an 
account of profits.  
 (1A)  A court may include an additional amount in an assessment of 
damages for an infringement of a patent, if the court considers it 
appropriate to do so having regard to:  
 (a) the flagrancy of the infringement; and  
 (b) the need to deter similar infringements of patents; and  
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Section 123 
 
 Patents Act 1990  99 
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  (c) the conduct of the party that infringed the patent that 
occurred:  
 (i) after the act constituting the infringement; or  
 (ii) after that party was informed that it had allegedly 
infringed the patent; and  
 (d) any benefit shown to have accrued to that party because of 
the infringement; and  
 (e) all other relevant matters.  
 (2) On the application of either party, the court ma y 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.  
123  Innocent infringement  
 (1) A court may refuse to aw ard 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 t he 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 by 
way of an injunction.  
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Section 124 
 
100 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  2—Non-infringement declarations  
   
124  Interpretation  
  In this Part:  
patentee  includes an exclusive licensee.  
125  Application for non -infringement declaration  
 (1) A person who has done, is doing, or is intending to do an act may 
apply to a prescribed court for a declaration that the doing of the 
act does not, or would not, infrin ge a patent.  
 (2) An application may be made:  
 (a) for a declaration in relation to an invention claimed in a 
standard patent —at any time after the patent has been 
granted; and  
 (b) for a declaration in relation to an innovation patent —at any 
time after th e patent has been certified; and  
 (c) whether or not the patentee has made any assertion to the 
effect that the doing of the act has or would infringe the 
claim.  
 (3) The patentee must be joined as a respondent in the proceedings.  
126  Proceedings for non -infringement declarations  
 (1) A prescribed court must not make a non -infringement declaration 
unless:  
 (a) the applicant for the declaration:  
 (i) has asked the patentee in writing for a written admission 
that the doing of the act has not infringed, or wo uld not 
infringe, the patent; and  
 (ii) has given the patentee full written particulars of the act 
done, or proposed to be done; and  
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Section 127 
 
 Patents Act 1990  101 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (iii) has undertaken to pay a reasonable sum for the 
patentee’s expenses in obtaining advice about whether 
the act has inf ringed or would infringe the claim; and  
 (b) the patentee has refused or failed to make the admission.  
 (2) The court may make orders as to costs as the court thinks fit.  
127  Effect of non -infringement declarations  
  If: 
 (a) a patentee has given a person  a written admission that the 
doing of an act has not infringed, or 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 doing the act as specified in the admission, or the 
declaration is revoked;  
the person is not liable:  
 (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 revok ed, from the doing of the act 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 the doing of that act.  
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Section 128 
 
102 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  3—Unjustified threats of infringement 
proceedings  
   
128  Application for relief from unjustified threats  
 (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 t o 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 appl icant as a 
result of the threats.  
 (1A)  The court may include an additional amount in an assessment of 
damages sustained by the applicant as a result of the unjustifiable 
threats, if the court considers it appropriate to do so having regard 
to: 
 (a) the flagrancy of the threats; and  
 (b) the need to deter similar threats; and  
 (c) the conduct of the person who made the threats, being 
conduct that occurred after the person made the threats; and  
 (d) any benefit shown to have accrued to the person who made 
the threats because of the threats; and  
 (e) all other relevant matters.  
 (2) Subsection  (1) applies whether or not the person who made the 
threats is entitled to, or interested in, the patent or a patent 
application.  
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Section 129 
 
 Patents Act 1990  103 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 129  Court’s power to grant relief if threats related to a standard 
patent or standard patent application  
  If an application under section  128 for relief relates to threats made 
in respect of a standard patent or an application for a standard 
patent, the court may grant the applicant the reli ef 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 the 
patent had been granted.  
129A   Threats related to an innovation patent application or 
innovation patent and court’s power to grant relief  
Certain threats of infringement proceedings are always 
unjustifiable  
 (1) If: 
 (a) a person:  
 (i) has applied for an innovation patent, but the application 
has not been determined; or  
 (ii) has an innovation patent that has not been certified; and  
 (b) the person, by means of circulars, advertisemen ts or 
otherwise, threatens a person with infringement proceedings 
or other similar proceedings in respect of the patent applied 
for, or the patent, as the case may be;  
then, for the purposes of an application for relief under section  128 
by the person threatened, the threats are unjustifiable.  
Courts power to grant relief in respect of threats made by the 
applicant for an innovation patent or the patentee of an uncertified 
innovation patent  
 (2) If an application under section  128 for relief relates to threats made 
in respect of an innovation patent that has not been certified or an 
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Section 130 
 
104 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 application for an innovation patent, the court may grant the 
applicant the relief applied for.  
Courts power to grant relief in respect of threats made by the 
patentee of a c ertified innovation patent  
 (3) If an application under section  128 for relief relates to threats made 
in respect of a certified innovation patent, the court may grant the 
applicant the relief applied for unless the respondent satisfies the 
court that the acts about which the threats were made infringed, or 
would infringe, a claim that is not shown by the applicant to be 
invalid.  
130  Counter -claim for infringement  
 (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 necessary changes, to a counter -claim.  
Note:  Infringement proceedings cannot be c ommenced in respect of an 
innovation patent unless the patent has first been certified (see 
subsection  120(1A)).  
 (4) The provisions of this Act relating to proceedings under 
section  138 for the revocation of a patent apply, with the necessary 
changes, to an application under subsection  (2). 
Note:  Revocation proceedings under section  138 cannot be commenced in 
respect of an innovation patent unless the patent has first been 
certified (see subsection  138(1A)) . 
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Section 131 
 
 Patent s Act 1990  105 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 131  Notification of patent not a threat  
  The m ere 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. 
132  Liability of legal practitioner or patent attorney  
  A legal practitioner or a registered paten t attorney is not liable to 
proceedings under section  128 in respect of an act done in a 
professional capacity on behalf of a client.  
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Section 132A  
 
106 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  12—Compulsory licences and 
revocation of patents  
Part  1—Introduction  
   
132A   Simplified outline of this Chapter  
This Chapter provides for court orders requiring the grant of 
compulsory licences in respect of patented inventions.  
Special provision is made for compulsory licences to exploit 
patented pharmaceutical inventions. This is to enable the 
manufacture of a pha rmaceutical product in Australia for export to 
an eligible importing country, to address public health problems in 
that country.  
This Chapter also provides generally for the surrender of patents, 
and for court orders revoking patents.  
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Section 132B  
 
 Patents Act 1990  107 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  2—Compulsory lic ences (general)  
   
132B   Simplified outline of this Part  
The Federal Court may make an order under this Part requiring the 
grant of a compulsory licence to work a patented invention.  
The court may order a compulsory licence to be granted if the 
reasonable requirements of the public are not being met with 
respect to a patented invention.  
The reasonable requirements of the public relate, broadly speaking, 
to whether Australian trade or industry is unreasonably affected by 
the actions of the patentee in relation to the manufacture or 
licensing of the invention (or the carrying on of a patented 
process).  
The court may also order a compulsory licence to be granted if the 
patentee has engaged in restrictive trade practices in connection 
with the patent under  the Competition and Consumer Act 2010  or 
under an application law (within the meaning of that Act).  
The court may order a patent to be revoked after an order for a 
compulsory licence has been made (on the same grounds that apply 
to an order for a compulso ry licence).  
The patentee must be paid an agreed amount of remuneration, or an 
amount of remuneration determined by the court.  
133  Compulsory licences —general  
 (1) Subject to subsection  (1A), a person may apply to the Federal 
Court , after the end of the p rescribed period, for an order requiring 
the patentee to grant the applicant a licence to work the patented 
invention.  
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Section 133 
 
108 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Note:  For compulsory licences for the manufacture and export of patented 
pharmaceutical inventions to eligible importing countries, see P art 3. 
However, Part  3 does not prevent a compulsory licence from being 
ordered under this Part in relation to such an invention (see 
section  136C).  
 (1A)  A person cannot apply for an order in respect of an innovation 
patent unless the patent has been cert ified.  
 (2) After hearing the application, the court may, subject to this section, 
make the order if satisfied that:  
 (a) all the following conditions exist:  
 (i) the applicant has tried for a reasonable period, but 
without success, to obtain from the pate ntee an 
authorisation to work the invention on reasonable terms 
and conditions;  
 (ii) the reasonable requirements of the public with respect to 
the patented invention have not been satisfied;  
 (iii) the patentee has given no satisfactory reason for failing  
to exploit the patent; or  
 (b) the patentee has contravened, or is contravening, Part  IV of 
the Competition and Consumer Act 2010  or an application 
law (as defined in section  150A of that Act) in connection 
with 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; 
and 
 (b) is to be assignable only in connection with an enterprise or 
goodwill in connection with which the licence i s used;  
and may direct that the licence is to be granted on any other terms 
specified in the order.  
 (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 
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Section 133 
 
 Patents Act 1990  109 
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 the invention ( other invention ) to which the other patent 
relates; and  
 (b) the court must further order that the pa tentee 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 invention; 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.  
 (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.  
 (5) The patentee is to be pai d 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 the Federal Court  to be just and reasonable 
having regard to the economic value of the licence  and the 
desirability of discouraging contraventions of Part  IV of the 
Competition and Consumer Act 2010  or an application la w 
(as defined in section  150A of that Act) . 
 (6) The p atentee or the Federal 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 unlik ely to recur; and  
 (b) the legitimate interests of the licensee are not likely to be 
adversely affected by the revocation.  
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Section 134 
 
110 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 134  Revocation of patent after grant of compulsory licence under 
section  133 
 (1) Where a compulsory licence ordered under section  133 relating to 
a patent is granted, an interested person may apply to the Federal 
Court , after the end of the prescribed period, for an order revoking 
the patent.  
 (2) After hearing the application, the court may make the order if 
satisfied that:  
 (a) both: 
 (i) the reasonable requirements of the public with respect to 
the patented invention have not been satisfied; and  
 (ii) the patentee has given no satisfactory reason for failing 
to exploit the patent; or  
 (b) the patentee is contravening Part  IV of the Competition and 
Consumer Act 2010  or an application la w (as defined in 
section  150A of that Act) in connection with the patent.  
135  Reasonable requirements of the public  
 (1) For the purposes of sections  133 and 134, the reasonable 
requirements of the pub lic 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 th e 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 patented 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 product, and supply the part on 
reasonable terms; or  
 (iii) to carry on the patented process to a reasonable extent; 
or 
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Section 136 
 
 Patents Act 1990  111 
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  (iv) to grant licences on reas onable 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 granted  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.  
136  Orders to be consis tent with international agreements  
  An order must not be made under section  133 or 134 that is 
inconsistent with a treaty between the Commonwealth and a 
foreign country.  
136A   Dealing with allegation of contravention of application law  
  Proceedings under  section  133 or 134 involving an allegation of 
contravention of an application law that is a law of a State must be 
dealt with as if the law were a law of the Commonwealth.  
Note:  Those proceedings are in the Federal Court, which can only exercise 
the judic ial power of the Commonwealth. This section lets the court 
deal comprehensively with the proceedings without the need for a 
court of the State to determine whether the application law has been 
contravened.  
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Section 136B  
 
112 Patents A ct 1990   
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 Part  3—Patented pharmaceutical invention 
compulsory licences (for manufacture and 
export to eligible importing countries)  
Division  1—Introduction  
136B   Simplified outline of this Part  
The Federal Court may make an order under this Part requiring the 
grant of a compulsory licence to exploit a pate nted pharmaceutical 
invention for manufacture and export to an eligible importing 
country.  
The court may order a compulsory licence to be granted if the 
proposed use of the pharmaceutical product is to address a public 
health issue in the eligible importin g country:  
 (a) in a national emergency (or other extremely urgent 
circumstances); or  
 (b) by the public non -commercial use of the product.  
The order may be amended or revoked by another order of the 
court.  
The patentee must be paid an agreed amount of rem uneration, or an 
amount of remuneration determined by the court.  
136C   Relationship between Parts  2 and 3  
  This Part does not prevent a compulsory licence from being 
ordered under Part  2 in relation to a patented pharmaceutical 
invention.  
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Section 136D  
 
 Patents Act 1990  113 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Division  2—Paten ted pharmaceutical invention 
compulsory licences  
136D   PPI compulsory licences —applications for orders  
Application for order  
 (1) A person (the PPI order applicant ) may apply to the Federal Court 
for an order (the PPI order ) under section  136E requiring the 
patentee of a patented pharmaceutical invention to grant the PPI 
order applicant a licence (a PPI compulsory licence ) to exploit the 
invention to the extent necessary for the purposes of manufacturing 
a pharmaceutical product in Australi a for export to an eligible 
importing country.  
Note 1:  A patented pharmaceutical invention may be a patented product or a 
patented process: see the definition of patented pharmaceutical 
invention  in Schedule  1. 
Note 2:  For remuneration in respect of a lice nce, see section  136J.  
 (2) However, a person cannot apply for an order in respect of an 
innovation patent unless the patent has been certified.  
Statement —eligible importing country  
 (3) An application must include a copy of a statement made by or on 
behal f of, and with the authorisation of, the eligible importing 
country to the effect that it will take reasonable measures within its 
means, proportionate to its administrative capacities and to the risk 
of trade diversion, to prevent re -exportation from its territory of a 
pharmaceutical product imported into its territory in accordance 
with a PPI compulsory licence.  
Statement —importer  
 (4) If the pharmaceutical product is to be imported on behalf of, and 
with the authorisation of, the eligible importing count ry, an 
application must also include a copy of a statement made by the 
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Section 136E  
 
114 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 importer to the effect that it will take reasonable measures within 
its means to prevent the pharmaceutical product from being used 
other than in accordance with a PPI compulsory licenc e. 
Parties  
 (5) The following are parties to proceedings on an application under 
this section:  
 (a) the PPI order applicant;  
 (b) the patentee;  
 (c) any person claiming an interest in the patent as exclusive 
licensee or otherwise;  
 (d) at the option of the  eligible importing country —that country.  
136E   PPI compulsory licences —orders  
 (1) After hearing an application for a PPI order under section  136D, 
the Federal Court may, subject to this Part, make the order sought 
if the court is satisfied of all of the following matters:  
 (a) the application is made in good faith;  
 (b) the pharmaceutical product is to be imported:  
 (i) by the eligible importing country; or  
 (ii) by a person (the  third party importer ) on behalf of, and 
with the authorisation of, the eligi ble importing country;  
 (c) the proposed use of the pharmaceutical product is to address 
a public health problem in the eligible importing country:  
 (i) in circumstances of national emergency or other 
circumstances of extreme urgency; or  
 (ii) in other cir cumstances —by the public non -commercial 
use of the pharmaceutical product;  
 (d) exploiting the patented pharmaceutical invention is necessary 
to enable the import and proposed use of the pharmaceutical 
product as mentioned in paragraphs  (b) and (c);  
 (e) if subparagraph  (c)(ii) applies:  
 (i) the PPI order applicant has given the patentee a notice 
in the approved form seeking from the patentee an 
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Section 136F  
 
 Patents Act 1990  115 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 authorisation to exploit the patented pharmaceutical 
invention for public non -commercial use; and  
 (ii) during t he 30 days beginning when the notice was 
given, the PPI order applicant has tried, without success, 
to obtain such an authorisation from the patentee on 
reasonable terms and conditions;  
 (f) the notification requirements prescribed by regulation in 
relatio n to the importation of the pharmaceutical product into 
the eligible importing country have been complied with;  
 (g) the PPI order applicant, the eligible importing country and, if 
there is a third party importer, that importer, will take 
reasonable measures to prevent a pharmaceutical product that 
is exported from Australia in accordance with a PPI 
compulsory licence fr om being used for a purpose other than 
the purpose of addressing the public health problem 
mentioned in paragraph  (c). 
 (2) Without limiting the matters that the court may take into account in 
deciding whether it is satisfied of a matter mentioned in 
subse ction  (1), the court must take into account any matters 
prescribed by regulation.  
 (3) A regulation made for the purposes of paragraph  (1)(f) may:  
 (a) without limiting subsection  33(3A) of the Acts Interpretation 
Act 1901 , prescribe different notification  requirements for the 
importation of pharmaceutical products into eligible 
importing countries of different kinds; and  
 (b) despite subsection  14(2) of the Legislation Act 2003 , refer to 
eligible importing countries (or different kinds of eligible 
importin g countries) by applying, adopting or incorporating, 
with or without modification, any matter contained in any 
other instrument or other writing as in force or existing from 
time to time.  
136F   PPI compulsory licences —terms  
 (1) A PPI order must direct tha t the PPI compulsory licence is granted 
on the following terms:  
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Section 136F  
 
116 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (a) no more than the quantity of the pharmaceutical product that 
is determined by the Federal Court to be necessary to meet 
the needs of the eligible importing country is manufactured;  
 (b) the entirety of the pharmaceutical product manufactured for 
that purpose is exported to that country;  
 (c) the pharmaceutical product is labelled and marked in 
accordance with the regulations;  
 (d) before shipment of the pharmaceutical product begins, the 
shipment information prescribed by regulation is made 
available on a website by, or on behalf of, the licensee for a 
minimum period prescribed by regulation;  
 (e) the duration of the licence is only for the period of time 
determined by the Federal Court to be necessary to address 
the public health problem concerned;  
 (f) the licence does not give the licensee, or a person authorised 
by the licensee, the exclusive right to exploit the patented 
pharmaceutical invention;  
 (g) the licence is to be assignable onl y in connection with an 
enterprise or goodwill in connection with which the licence is 
used;  
 (h) the licensee must give the Commissioner the information 
prescribed by regulation in relation to the licence in 
accordance with the regulations.  
 (2) A PPI ord er may also direct that the licence is to be granted on any 
other terms specified in the order, including terms covering:  
 (a) other requirements relating to the labelling and marking of 
the pharmaceutical product; and  
 (b) other information to be made ava ilable by the licensee and 
the way in which it is to be made available.  
 (3) However, a term specified in a PPI order must not be inconsistent 
with any regulations prescribed for the purposes of 
paragraph  (1)(c), (d) or (h).  
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Section 136G  
 
 Patents Act 1990  117 
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 136G   PPI compulsory licences —amendment  
Application for order  
 (1) A person may apply to the Federal Court for an order amending 
any of the following terms of a PPI compulsory licence:  
 (a) the quantity of the pharmaceutical product concerned;  
 (b) how the pharmaceutical product is labelled and marked;  
 (c) the duration of the licence;  
 (d) the information that is to be made available by the licensee 
and the way it is to be made available.  
Note:  For remuneration in respect of the licence as amended, see 
section  136J.  
Order  
 (2) The c ourt may make the order sought in relation to a term if it is 
satisfied that:  
 (a) it is just to do so in all the circumstances; and  
 (b) the legitimate interests of the following are not likely to be 
adversely affected by the amendment of the term:  
 (i) the patentee;  
 (ii) any person claiming an interest in the patent as 
exclusive licensee or otherwise;  
 (iii) the licensee;  
 (iv) the eligible importing country.  
 (3) However, an amended term must not be inconsistent with any 
regulations prescribed for the p urposes of paragraph  136F(1)(c), 
(d) or (h).  
Parties  
 (4) The following are parties to any proceedings under this section:  
 (a) the applicant under subsection  (1); 
 (b) the patentee;  
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Section 136H  
 
118 Patents Act 1990   
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  (c) any person claiming an interest in the patent as exclusive 
licensee or otherwise;  
 (d) the licensee;  
 (e) at the option of the eligible importing country —that country.  
136H   PPI compulsory licences —revocation  
Application  
 (1) A person may apply to the Federal Court for an order revoking a 
PPI compulsory licence.  
Note:  For remuneration in respect of the use of a PPI compulsory licence 
while it is in force, see section  136J.  
Federal Court may revoke licence  
 (2) The Federal Court may make the order sought if the court is 
satisfied that:  
 (a) one or more of the following applies:  
 (i) the substantive circumstances that justified the grant of 
the licence have ceased to exist and are unlikely to 
recur;  
 (ii) the licensee has not complied with the terms of the 
licence;  
 (iii) if an amount of remuneration has been agreed or 
determined under section  136J —the amount has not 
been paid within the time agreed or determined; and  
 (b) the legitimate interests of the licensee or the eligible 
importing country are not likely to be adversely affected by 
the revocation.  
Parties  
 (3) The f ollowing are parties to any proceedings under this section:  
 (a) the applicant for revocation;  
 (b) the licensee;  
 (c) at the option of the eligible importing country —that country.  
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Patented pharmaceutical invention compulsory licences (for manufacture and export to 
eligible importing countries)   Part 3  
Remuneration   Division 3  
 
Section 136J  
 
 Patents Act 1990  119 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Division  3—Remuneration  
136J   PPI compulsory licences —remuneration  
Working out amount of remuneration  
 (1) The patentee is to be paid an amount agreed or determined under 
subsection  (3) in respect of the use of a patented pharmaceutical 
invention authorised by a PPI compulsory licence.  
 (2) For the purposes of subsection  (1), the  use of a patented 
pharmaceutical invention authorised by the PPI compulsory licence 
is: 
 (a) while it is in force —the use authorised by the licence as 
granted and as amended (from time to time) under 
section  136G; or  
 (b) if it has ceased to be in force ( whether because it was 
revoked or otherwise) —the actual use of the patented 
pharmaceutical invention under the licence while it was in 
force.  
 (3) For the purposes of subsection  (1), the amount is:  
 (a) an amount agreed between the patentee and the PPI ord er 
applicant, licensee or former licensee (as the case requires); 
or 
 (b) if paragraph  (a) does not apply —an amount determined by 
the Federal Court to be adequate remuneration taking into 
account the economic value to the eligible importing country 
of the use of the patented pharmaceutical invention 
authorised by the PPI compulsory licence.  
Application to make or amend a determination  
 (4) A person may apply to the Federal Court:  
 (a) to make a determination under paragraph  (3)(b); or  
 (b) to amend a determ ination made under that paragraph.  
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Part 3   Patented pharmaceutical invention compulsory licences (for manufacture and 
export to eligible importing countries)  
Division 3   Remuneration  
 
Section 136J  
 
120 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Note:  Grounds for an application under paragraph  (b) may include the fact 
that the terms of the PPI compulsory licence have been amended, or 
the licence has been revoked.  
Parties  
 (5) The following are parties to any proceedings under this section:  
 (a) the applicant for the determination or the amendment of the 
determination;  
 (b) the PPI order applicant;  
 (c) the licensee;  
 (d) the patentee of the patented pharmaceutical invention;  
 (e) any person claiming an interes t in the patent as exclusive 
licensee or otherwise.  
Can PPI be exploited if remuneration is not agreed or determined?  
 (6) To avoid doubt, if the proposed use of the pharmaceutical product 
is to address a public health problem in the eligible importing 
country in circumstances of national emergency or other 
circumstances of extreme urgency, the licensee may exploit a 
patented pharmaceutical invention under a PPI compulsory licence, 
as granted or amended (as the case may be), whether or not an 
amount has bee n agreed or determined under this section.  
 (7) However, if the proposed use of the pharmaceutical product is to 
address a public health problem in the eligible importing country in 
other circumstances, by the public non -commercial use of the 
pharmaceutica l product, the licensee must not exploit a patented 
pharmaceutical invention under a PPI compulsory licence unless an 
amount has been agreed or determined under this section.  
Can PPI compulsory licence be revoked if remuneration is not 
agreed or determined ? 
 (8) To avoid doubt, a PPI compulsory licence may be revoked whether 
or not an amount has been agreed or determined under this section.  
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General   Division 4  
 
Section 136K  
 
 Patents Act 1990  121 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Division  4—General  
136K   PPI compulsory licences —nature of orders  
  Without prejudice to any other method of enforceme nt, a PPI order 
operates as if it were embodied in a deed granting or amending a 
licence and executed by the patentee and all other necessary 
parties.  
136L   PPI compulsory licences —consistency of orders with 
international agreements  
  A PPI order must not be made that is inconsistent with a treaty 
between the Commonwealth and a foreign country.  
136M   PPI compulsory licences —applications heard together  
  Nothing in this Part prevents the Federal Court from dealing with 
the following applications together:  
 (a) applications for different PPI orders, or for the amendment or 
revocation of such orders;  
 (b) applications for determinations under paragraph  136J(3)(b) 
for remuneration in relation to different PPI compulsory 
licences, or for the amendment of such determinations.  
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Part 4   Surrender and revocation of patents  
   
 
Section 136N  
 
122 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  4—Surrender and revocation of patents  
   
136N   Simplified outline of this Part  
A patentee may offer to surrender a patent by giving the 
Commissioner written notice.  
The Commissioner may accept the offer of surrender, and revoke 
the patent, after hearing all interested parties. If court proceedings 
are pending in relation to the patent, leave of the court, or the 
consent of the parties, is required. The Commissioner must not 
accept the offer if a compulsory licence ordered under Part  2 is in 
force in relation to the patent.  
In addition, a court may revoke a patent on the following grounds:  
 (a) the patentee is not entitled to the patent;  
 (b) the invention is not a patentable invention;  
 (c) the patent was (broadly speaking) improperly  obtained;  
 (d) the patent was (broadly speaking) obtained on the basis 
of a non -compliant specification.  
137  Revocation on surrender of patent  
 (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 Commissioner 
in accordance with the regulations of their wish to be heard, the 
Commissioner may accept the offer and re voke the patent.  
 (4) Where relevant proceedings in relation to a patent are pending, the 
Commissioner must not accept an offer to surrender the patent 
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Surrender and revocation of patents   Part 4  
   
 
Section 138 
 
 Patents Act 1990  123 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 without either the leave of the court or the consent of the parties to 
the proceedings.  
 (5) Where a licence ordered under Part  2 is in force in relation to a 
patent, the Commissioner must not accept an offer to surrender the 
patent.  
138  Revocation of patents in other circumstances  
 (1) Subject to subsection  (1A), the Minister or any other person may 
apply to a prescribed court for an order revoking a patent.  
 (1A)  A person cannot apply for an order in respect of an innovation 
patent unless the patent has been certified.  
 (2) At the hearing of the application, the respondent is entitled to begin 
and give evi dence 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 rel ates to a claim, on one or 
more of the following grounds, but on no other ground:  
 (a) that the patentee is not entitled to the patent;  
 (b) that the invention is not a patentable invention;  
 (d) that the patent was obtained by fraud, false suggestion or 
misrepresentation;  
 (e) that an amendment of the patent request or the complete 
specification was made or obtained by fraud, false suggestion 
or misrepresentation;  
 (f) that the specification does not comply with subsection  40(2) 
or (3).  
 (4) A court must n ot make an order under subsection  (3) on the ground 
that the patentee is not entitled to the patent unless the court is 
satisfied that, in all the circumstances, it is just and equitable to do 
so. 
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Part 5   Other matters  
   
 
Section 138A  
 
124 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  5—Other matters  
   
138A   Simplified outline of this Part  
This Part deals with the parties to proceedings under this Chapter 
(other than proceedings under Part  3). 
This Part also enables the Commissioner to appear and be heard in 
all proceedings under this Chapter.  
139  Parties t o proceedings  
 (1) The patentee, and any person claiming an interest in the patent as 
exclusive licensee or otherwise, are parties to any proceedings 
under section  133, 134 or 138.  
Note:  See Part  3 for details of parties to proceedings under that Part.  
 (2) In any proceedings under this Chapter : 
 (a) the applicant must serve a copy of the application on the 
Commissioner; and  
 (b) the Commissioner may appear and be heard in the 
proceedings.  
140  Commissioner to be given copies of orders  
  An office copy of a n 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.  
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Section 141 
 
 Patents Act 1990  125 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  13—Withdrawal and lapsing of 
applications and ceasing of patents  
   
   
141  Withdrawal of applications  
 (1) A patent application, other than a PCT application, may be 
withdrawn if all of the following conditions are met:  
 (a) the applicant lodges a written notice of withdrawal signed by 
the applicant;  
 (b) if the application has  been opposed under section  59—the 
Commissioner has consented to the withdrawal;  
 (c) if the regulations prescribe a period within which an 
application must not be withdrawn —the withdrawal will not 
occur within the prescribed period.  
 (2) The regulations may prescribe circumstances in which PCT 
applications may be withdrawn, or are to be taken to be withdrawn.  
142  Lapsing of applications  
 (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 peri od 
prescribed for the purposes of subsection  44(1), (2) or (3), as 
the case requires; or  
 (d) the applicant does not pay a continuation fee for the 
application 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 
paragraph ; or 
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Section 143 
 
126 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (f) if the application is a PCT application —prescribed 
circumstances apply to the application.  
 (3) A complete application for a standard patent la pses 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.  
143  Ceasing of patents  
  A standard patent ceases if the patentee:  
 (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.  
143A   Ceasing of innovation patents  
  An innovation patent ceases if:  
 (a) the fee for filing the request and accompanying s pecification 
relating to an application for an innovation patent is not paid 
in accordance with the regulations; or  
 (b) after an examination of the patent has been requested under 
paragraph  101A(b), the patentee does not pay the prescribed 
fee for the exa mination within the prescribed period; or  
 (c) the Commissioner does not make a decision under 
paragraph  101E(1)(a)  within the period prescribed for the 
purposes of this paragraph; or  
 (d) the patentee does not pay a renewal fee for the patent within 
the p rescribed period; or  
 (e) the patentee does not comply with a direction of the 
Commissioner under section  106 within the time allowed by 
the Commissioner under that section.  
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Section 143B  
 
 Patents Act 1990  127 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 143B   Payment of fees  
  To avoid doubt, a reference in this Chapter  to the payment  of a 
continuation fee or renewal fee by the applicant or patentee is 
taken to include a reference to the payment of that fee by a person 
other than the applicant or patentee.  
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Section 144 
 
128 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  14—Contracts  
   
   
144  Void conditions  
 (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 o r 
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 nomin ee of the seller, lessor or licensor.  
 (1A)  A condition in a contract relating to the sale or lease of, or a 
licence to exploit, an invention the subject of an innovation patent 
is void if the effect of the condition would be to:  
 (a) prohibit the buyer, l essee or licensee from applying for 
examination of the patent; or  
 (b) impose restrictions on the circumstances in which the buyer, 
lessee or licensee may apply for examination of the patent.  
 (2) Subsection  (1) does not apply if:  
 (a) the seller, lessor o r 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 l icensee to be 
relieved of the liability to comply with the condition on 
giving the other party 3 months’ notice in writing and paying, 
in compensation for the relief:  
 (i) in the case of a sale —such sum as is fixed by an 
arbitrator appointed by the Ministe r; 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.  
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Section 145 
 
 Patents Act 1990  129 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (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 subj ect 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 
subsection  (4) a new contract that does not contain the void 
condition but that ot herwise 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.  
145  Termination of contract after patent ceases to be in force  
 (1) A contract relating to the lease of, or a licence to exploit, a 
patented invention may be termi nated by 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) appli es despite anything to the contrary in that 
contract or in any other contract.  
146  Effect of Chapter  
  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; o r 
 (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 
independently of this section; or  
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Section 146 
 
130 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (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.  
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Section 147 
 
 Patents Act 1990  131 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  15—Special provisions relating to 
associated  technology  
   
   
147  Certificate by Director as to associated technology  
 (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 cont ains information of that kind, issue a certificate to 
that effect.  
 (3) Where the Director is satisfied that:  
 (a) the possession by the applicant or the nominated person of 
the associated technology containing the information was not 
in accordance with a permit; or  
 (b) the communication of the information involved in making the 
application was not in accordance with an authority;  
the Director may include in the certificate:  
 (c) if the application is not a relevant international application —
a direction th at 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.  
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Section 148 
 
132 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 148  Lapsing etc. of applications  
 (1) Where:  
 (a) the Commissioner receives a copy of a certificate under 
subsection  147(2) in relation to an application; and  
 (b) the certificate in cludes a direction under subsection  147(3);  
then, upon receipt by the Commissioner of that copy:  
 (c) if the application is not a relevant international application —
the application lapses; or  
 (d) if the application is a relevant international application —the 
application must cease to be treated as an international 
application.  
 (2) Where an application has lapsed under this section, the 
Commissioner must publish a notice to that effect in the Official 
Journal . 
149  Revocation of direction  
  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.  
150  Restoration of lapsed application  
 (1) Where an application has lapsed under section  148, the applicant 
may, in writing, ask the Commissioner to restore it.  
 (2) On receiving a request, the Commissioner must restore the 
application if satisfied , on the balance of probabilities,  that: 
 (a) the relevant direction of the Director is no longer in force; 
and 
 (b) there is no other reason not to do so.  
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Section 151 
 
 Patents Act 1990  133 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (3) Where the Commissioner restores an application, the 
Commissioner mu st 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 compensation of 
persons who exploited (or took definite steps by contr act 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 . 
 (5) 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 
restoration was notified in the Official Journal . 
151  Reinstatement of application as an international application  
 (1) Where a relevant internatio nal application has ceased to be treated 
as an international application under section  148, the applicant may 
ask the Commissioner in writing to reinstate it.  
 (2) On receiving a request, the Commissioner must reinstate the 
application as an international application if satisfied , on the 
balance of probabilities,  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 reinstates an application as an 
international ap plication, the application must be treated as an 
international 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  
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Section 152 
 
134 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (c) the applicant files, within the prescribed period, a written 
request that the application be treated as an application under 
this Act for a standard 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 , drawings, graphics and photographs  
in the application must be treated as a complet e 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 
international application was filed.  
152  Notice of prohibitions or restrictions  on publication  
 (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 publication 
or communication of the informatio n 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 the generality of subsection  (2), the 
Commissioner may, by written order, prohibit or restrict the 
publication or communication of information about the 
subject -matter of the application, whether generally or in relation 
to a particular person or class of persons.  
 (4) A pe rson 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.  
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Section 153 
 
 Patents Act 1990  135 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 153  Effect of order  
 (1) Where an order is in force in relation to an app lication 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 inspection, the 
acceptance must not be notified in the Officia l Journal  and a patent 
must not be granted on the application.  
 (2) While an order is in force in relation to an application for an 
innovation patent, the application may proceed up to the 
acceptance of the patent request and complete specification but a 
patent must not be granted on the application.  
 (3) Where an order in relation to an application for a standard patent 
has been revoked after the acceptance of the patent request and 
complete specification, the acceptance must be notified in the 
Official Jo urnal  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.  
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Section 154 
 
136 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  16—Jurisdiction and powers o f 
courts  
   
   
154  Jurisdiction of Federal Court  
 (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 exclusive 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.  
155  Jurisdiction of other prescribed courts  
 (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.  
 (2) The jurisdictio n 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  
determined 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 
corporation that has its principal p lace of business in the 
Territory, at the time the proceedings are started.  
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Section 156 
 
 Patents A ct 1990  137 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 156  Exercise of jurisdiction  
  The jurisdiction of a prescribed court under section  154 or 155 is to 
be exercised by a single judge.  
157  Transfer of proceedings  
 (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 
proceedings.  
 (2) Where a court 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 had 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.  
158  Appeals  
 (1) An appeal lies to the Federal C ourt against a judgment or order of:  
 (a) another prescribed court exercising jurisdiction under this 
Act; or  
 (b) any other court in proceedings under subsection  120(1) or 
section  128. 
 (2) Except with the leave of the Federal Court, an appeal does not li e 
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 t he High Court, an appeal lies to the High 
Court against a judgment or order referred to in subsection  (1). 
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Section 159 
 
138 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (4) Except as otherwise provided by this section, an appeal does not lie 
against a judgment or order referred to in subsection  (1). 
159  Commissione r may appear in appeals  
  The Commissioner may appear and be heard at the hearing of an 
appeal to the Federal Court against a decision or direction of the 
Commissioner even if the Commissioner is not a party to the 
appeal.  
160  Powers of Federal Court  
  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 further evidence orally, or on affidavit or otherwise;  
 (b) permit the examination and cross -examination of witnes ses, 
including witnesses who gave evidence before the 
Commissioner;  
 (c) order an issue of fact to be tried as it directs;  
 (d) affirm, reverse or vary the Commissioner’s decision or 
direction;  
 (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.  
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Introductory   Part 1  
   
 
Section 161 
 
 Patents Act 1990  139 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  17—The Crown  
Part  1—Introductory  
   
161  Nominated persons and patentees  
  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.  
162  Commonwealth and State authorities  
  A reference in this Chapter  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.  
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Part 2   Exploitation by the Crown  
   
 
Section 163 
 
140 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  2—Exploitation by the Crown  
   
163  Exploitation of inventions by Crown  
 (1) Where, at any time after a patent application has been made, the 
invention concerned is exploited by the Commonwealth or a Stat e 
(or by a person authorised in writing by the Commonwealth or a 
State) for the services of the Commonwealth or the State, the 
exploitation is not an infringement:  
 (a) if the application is pending —of the nominate d 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; a nd 
 (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.  
 (3) Subject to section  168, an invention is taken for the p urposes 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.  
164  Nominated person or patentee to be informed of exploitat ion 
  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 exploitation and 
give him or her any information about the exploi tation 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.  
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Exploitation by the Crown   Part 2  
   
 
Section 165 
 
 Patents Act 1990  141 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 165  Remuneration and terms for exploitation  
 (2) The terms for the exploitation of the inve ntion (including terms 
concerning the remuneration payable to the nominated person or 
the patentee) are such terms as are agreed, or determined by a 
method agreed, between the relevant authority and the nominated 
person or the patentee or, in the absence o f 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 ta ke 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.  
165A   Exploitation of invention to cease under court order  
 (1) 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 circumstances 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 specif ied 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.  
166  Previous agreements inoperative  
  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 
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Section 167 
 
142 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 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 
Minister; or  
 (b) if the relevant authority is a  State —by the Attorney -General 
of the State.  
167  Sale of products  
 (1) The right to exploit an invention under subsection  163(1) includes 
the right to sell products made in exercise of that right.  
 (2) Where under subsection  163(1) 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.  
168  Supply of products by Commonwealth to foreign countries  
  Where the Commonwealth has made an agreement with a foreign 
country to supply to that country products required for the defence 
of the country:  
 (a) the use of a product or process by the Comm onwealth, 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 
Commonwealth 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.  
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Exploitation by the Crown   Part 2  
   
 
Section 169 
 
 Patents Act 1990  143 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 169  Declarations that inventions have been exploited  
 (1) Subject to subsection  (4), a patentee who considers that the 
patented invention has been exploited under subsection  163(1) 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.  
 (4) An application under subsection  (1) in respect of an innovation 
patent cannot be made unless the patent has been certified.  
170  Sale of forfeited articles  
  Nothing in this Chapter  affects the right of the Commonwealth 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.  
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Part 3   Acquisitions by and assignments to th e Crown  
   
 
Section 171 
 
144 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  3—Acquisitions by and assignments to the 
Crown  
   
171  Acquisition of inventions or patents by Commonwealth  
 (1) The Governor -General may direct that a patent, or an invention 
that is the subject 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, by 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  
 (b) published in the Official Journal  and the Gazette  unless, in 
the case of the acquisition of an invention that is the subject 
of an application for a patent, a prohibition order, or an order 
under section  152, is in force in respec t 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.  
172  Assignment of invention to Commonwealth  
 (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 agreement s in the 
assignment are valid and effectual, even if valuable consideration 
has not been given for the assignment, and may be enforced by 
proceedings in the name of the Minister.  
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Prohibition orders   Part 4  
   
 
Section 173 
 
 Patents Act 1990  145 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  4—Prohibition orders  
   
173  Prohibition of publication of information a bout inventions  
 (1) Subject to any directions of the Minister, the Commissioner may, if 
it appears to the Commissioner to be necessary or expedient to do 
so in the interests of the defence of the Commonwealth, by written 
order:  
 (a) prohibit or restrict t he 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 
institution 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.  
174  Effect of prohibition orders  
 (1) 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 pa tent request and complete specification, but the 
complete 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 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.  
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Part 4   Prohibition orders  
   
 
Section 175 
 
146 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (3) While  a prohibition order is in force in relation to an application 
for an innovation patent, the application may proceed up to the 
acceptance of the patent request and complete specification, but a 
patent must not be granted on the application.  
175  Disclosure  of information to Commonwealth authority  
  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 o n whether a prohibition order should be made, 
amended or revoked.  
176  International applications treated as applications under this Act  
  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 that the application be treated as  an application under 
this Act for a standard 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, clai ms, drawings, graphics and photographs  
in the application must be treated as a complete specification 
filed in respect of the application; and  
 (g) the application and specification must be treated as having 
been filed on the date on which the internationa l application 
was filed.  
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Section 177 
 
 Patents Act 1990  147 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  18—Miscellaneous offences  
   
   
177  False representations about the Patent Office  
 (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:  30 penalty units.  
 (2) Without limiting subsection  (1), a person who:  
 (a) places, or allows to be placed, 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 document, 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, commits  an offence against that subsection.  
178  False representations about patents or patented articles  
 (1) A person must not falsely represent that he or she, or another 
person, is the patentee of an invention.  
Penalty:  60 penalty units.  
 (1A)  A person must n ot falsely represent that he or she, or another 
person, is the patentee of an innovation patent that has been 
certified.  
Penalty:  60 penalty units.  
 (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:  60 penalty units.  
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Section 182 
 
148 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (3) Without limiting subsection  (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 
“prov isional 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 
or words implying that an application for a patent for the 
article has been made in Australia, are stamped, engraved or 
impres sed on, or otherwise applied to, the article.  
 (4) A prosecution must not be started for an offence against this 
section  without the consent of the Minister, or a person authorised 
by the Minister.  
182  Officers not to traffic in inventions  
 (1) The Commis sioner, a Deputy Commissioner or an employee must 
not buy, sell, acquire or traffic in:  
 (a) an invention or patent, whether granted in Australia or 
anywhere else; or  
 (b) a right to, or licence under, a patent, whether granted in 
Australia or anywhere els e. 
Penalty:  60 penalty units.  
 (2) A purchase, sale, acquisition, assignment or transfer made or 
entered into in contravention of this section is void.  
 (3) This section does not apply to the inventor or to an acquisition by 
bequest or devolution by law.  
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Section 183 
 
 Patents Act 1990  149 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 183  Unauthorised disclosure of information by employees etc.  
 (1) 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 Commissioner or an order of a court.  
 (1A)  The Designated Manager may disclose to the Board personal 
information (within the meaning of the Privacy Act 1988 ): 
 (a) that is about a registered patent attorney; and  
 (b) that the Designated Manager considers to be relevant to the 
Board’s functions.  
 (2) The Designated Manager may disclose to the Australian Securities 
and Investments Commission information (including personal 
information within the  meaning of the Privacy Act 1988 ) that is:  
 (a) relevant to the functions of the Commission; and  
 (b) obtained by the Designated Manager as a result of the 
performance of functions and duties, or the exercise of 
powers, in relation to incorporated patent attorneys.  
 (3) The Designated Manager may disclose to the Registrar of 
Companies of New Zealand information (including personal 
information within the meaning of the Privacy Act 1988 ) that is:  
 (a) relevant to the functions conferred on the Registrar of 
Companies of New Zealand by or under the Companies Act 
1993 of New Zealand; and  
 (b) obtained by the Designated Manager as a result of the 
performance of functions and duties, or the exercise of 
powers, in relation to incorporated patent attorneys.  
 (4) For the purposes of subsection  (3), it is immaterial whether the 
disclosure takes place in New Zealand.  
184  Other unauthorised disclosures of information  
  A person to whom section  71 of the Safeguards Act applies must 
not disclose information about a matter  that has been or is being 
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Section 185 
 
150 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 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.  
185  Commissioner et c. not to prepare documents or search records  
  The Commissioner, a Deputy Commissioner or an employee must 
not: 
 (a) prepare, or help to prepare:  
 (i) a specification; or  
 (ii) any other document relating to a specification (other 
than a document which is  in an approved form);  
  unless the Commissioner, Deputy Commissioner or the 
employee is the inventor in respect of the specification; or  
 (b) search the records of the Patent Office otherwise than in his 
or her official capacity.  
Penalty:  10 penalty units . 
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Section 186 
 
 Patents Act 1990  151 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  19—The Register and official 
documents  
   
   
186  Register of Patents  
 (1) A Register of Patents is to be kept at the Patent Office. The 
Register is to contain 2 parts as follows:  
 (a) a part dealing with standard patents; and  
 (b) a part dealing  with innovation patents.  
 (2) The Register may be kept wholly or partly by use of a computer.  
 (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 reference s 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 
entered 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 t he computer and 
comprising the Register or part of the Register.  
187  Registration of particulars of patents etc.  
 (1) Particulars of standards patents in force, and other prescribed 
particulars relating to standard patent s (if any), must be registered 
in that part of the Register dealing with standard patents.  
 (2) Particulars of innovation patents in force, and other prescribed 
particulars relating to innovation patent s (if any), must be 
registered in that part of the Register dealing with innovation 
patents. 
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Section 188 
 
152 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 188  Trusts not registrable  
  Notice of any kind of trust relating to a patent or licence is not 
receivable by the Commissioner and must not be registered.  
189  Power of patentee to deal with patent  
 (1) A patentee may, subject only to any rights appe aring 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.  
 (2A) Despite subsection  (1), the recording in the Register of a right that 
is a PPSA security interest does not affect a dealing with a patent.  
 (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.  
 (4) Subsection  (3) does not apply in relation to an equity that is a 
PPSA security interest.  
Note:  The Personal Property Securities Act 2009  deals with the rights of 
purchasers of personal property (including intellectual property such 
as patents) that is subject to PPSA security interests. That Act also 
provides for the priority and enforcement of PPSA security interests. 
See the following provisions of that Act:  
(a) Part 2.5 (taking personal property free of security interests);  
(b) Part 2.6 (priority between security interests);  
(c) Chapter  4 (enforcement of security interests).  
190  Inspection of Register  
 (1) The Register must be available for inspection at the Patent Office 
by any person during the hours that it is open for business.  
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Section 191 
 
 Patents Act 1990  153 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (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.  
191  False entries in Register  
  A person mus t not:  
 (a) make a false entry in the Register; or  
 (b) cause a false entry to be made in the Register; or  
 (c) tender in evidence a document that falsely purports to be a 
copy of or extract from an entry in the Register.  
Penalty:  Imprisonment for 2 years.  
191A   Commissioner’s power to rectify register  
 (1) The Commissioner may rectify the Register if the Commissioner is 
satisfied, on the balance of probabilities, whether on application or 
otherwise, of any of the following:  
 (a) the omission of an entry fr om the Register;  
 (b) an entry made in the Register without sufficient cause;  
 (c) an entry wrongly existing in the Register;  
 (d) an error or defect in an entry in the Register.  
 (2) The Commissioner must, on application, make a declaration as to a 
person ’s entitlement to a patent, or a share in a patent, if the 
Commissioner is satisfied, on the balance of probabilities, that the 
Register does not properly record a person’s entitlement to a 
patent, or a share in a patent:  
 (a) because the patent, or a shar e in the patent, was granted to a 
person who was not entitled to it; or  
 (b) because the patent, or a share in the patent, was not granted 
to a person who was entitled to it; or  
 (c) for any other reason.  
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Section 192 
 
154 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (3) If the Commissioner makes a declaration under subsection  (2), the 
Commissioner must rectify the Register accordingly.  
 (4) The Commissioner must not make a declaration under 
subsection  (2), or rectify the Register under subsection  (3), without 
first giving the following persons a reasonable opportunit y to be 
heard:  
 (a) the person whose entitlement is not properly recorded by the 
Register;  
 (b) any person whose entitlement to the patent, or a share in the 
patent, is recorded in the Register.  
 (5) The Commissioner must not make a declaration or rectify the 
Register under this section while relevant proceedings in relation to 
the patent are pending.  
 (6) An appeal lies to the Federal Court against a decision of the 
Commissioner:  
 (a) to make, or refuse to make, a declaration; or  
 (b) to rectify, or not re ctify, the Register;  
under this section.  
192  Orders for rectification of Register  
 (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 existin g 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 order it thinks fit for the rectification of the 
Register.  
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Section 193 
 
 Patents Act 1990  155 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (3) The Commissioner:  
 (a) must be given notice of an application; and  
 (b) may appear and be heard in the proceedings ; and  
 (c) must appear if directed to do so by the court.  
 (4) An office copy of an order must be served on the Commissioner by 
the Registrar or other appropriate officer of the court.  
 (5) On receiving an office copy of an order, the Commissioner must 
rectify the Register accordingly.  
193  Inspection of documents  
  All documents filed in connection with the registration of 
prescribed particulars under section  187 must be available for 
inspection at the Patent Office by any person during the hours 
when it i s open for business.  
194  Information obtainable from Commissioner  
  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 
 (c) any prescribed document or matter.  
195  Evidence —the Register  
 (1) The Register is prima facie  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 par ticulars comprising the Register, or that part of it, 
is admissible in any proceedings as prima facie  evidence of those 
particulars.  
 (3) This section does not apply in relation to any particulars registered 
in the Register in relation to a PPSA security i nterest.  
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Section 196 
 
156 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Note:  Certain particulars relating to registrations in respect of PPSA security 
interests under the Personal Property Securities Act 2009  are 
admissible in evidence: see section  174 of that Act.  
196  Evidence —unregistered particulars  
 (1) A document in respect of which particulars have not been entered 
in the Register 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.  
 (2) However, subsection  (1) does not restrict the admissibility in any 
proceedings of a document in relat ion to a PPSA security interest.  
Note:  Certain particulars relating to registrations in respect of PPSA security 
interests under the Personal Property Securities Act 2009  are 
admissible in evidence: see section  174 of that Act.  
197  Evidence —certificate an d copies of documents  
 (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 Pate nt Office or its library was available 
for public inspection on a date specified in the certificate;  
is prima facie  evidence of the matters in the certificate.  
 (2) A signed copy of or signed extract from the Register is admissible 
in any proceedings 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:  
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Section 197AA  
 
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 signed  means signed by the Commissioner.  
197AA   Evidence of matters arising under PCT  
  A certificate signed by the Commissioner in relation to 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.  
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Section 198 
 
158 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapter  20—Patent Attorneys  
Part  1—Registration, privilege s and professional 
conduct  
   
198  Registration of patent attorneys  
 (1) A Register of Patent Attorneys is to be kept by the Designated 
Manager.  
Note:  Designated Manager  is defined by section  200A.  
 (2) The Register of Patent Attorneys may be kept wholly or partly by 
use of a computer.  
 (3) If the Register of Patent Attorneys is kept wholly or partly by use 
of a computer, references in this Act to an entry in the Register of 
Patent Attorneys are to be read as including references to a record 
of particulars  kept by use of the computer and comprising the 
Register of Patent Attorneys or part of the Register of Patent 
Attorneys.  
Registration of individuals  
 (4) The Designated Manager must register as a patent attorney an 
individual  who:  
 (b) holds such qualific ations as are specified in, or ascertained in 
accordance with, the regulations; and  
 (c) has been employed as prescribed for not less than the 
prescribed period; and  
 (d) is of good fame, integrity and character; and  
 (e) has not been convicted of a prescr ibed offence during the 
previous 5 years; and  
 (f) is not under sentence of imprisonment for a prescribed 
offence ; and  
 (g) meets any other requirements prescribed by the regulations.  
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Section 198 
 
 Patents Act 1990  159 
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 The registration is to consist of entering the individual’s  name in 
the Register of Patent Attorneys.  
 (5) A qualification specified in, or ascertained in accordance with, 
regulations made for the purposes of paragraph  (4)(b) may consist 
of passing an examination conducted by the Board . This subsection 
does not li mit paragraph  (4)(b).  
 (6) Paragraphs  (4)(e) and (f) do not limit paragraph  (4)(d).  
 (7) A reference in this section to conviction  of an offence includes a 
reference to:  
 (a) the making of an order under section  19B of the Crimes Act 
1914  in relation to th e offence ; or 
 (b) the making of an order under a corresponding provision of a 
law of:  
 (i) a State; or  
 (ii) a Territory; or  
 (iii) New Zealand;  
  in relation to the offence.  
Registration of companies  
 (9) The Designated Manager must register as a patent attorney a 
company that:  
 (a) has at least one patent attorney director; and  
 (b) has given the Designated Manager written notice in the 
approved form of its intention to act as a patent attorney; and  
 (c) meets the requirements (if any) prescribed by the regulations.  
The registration is to consist of entering the company’s name in the 
Register of Patent Attorneys.  
 (10) A company registered as a patent attorney is an incorporated 
patent attorney . 
 (11) A patent attorney director  of a company is an individu al who is 
both:  
 (a) a registered patent attorney; and  
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Section 199 
 
160 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (b) a validly appointed director of the company.  
New Zealand  
 (12) It is immaterial whether a matter mentioned in:  
 (a) paragraph  (4)(b), (c), (d), (e), (f) or (g); or  
 (b) subsection  (5); or  
 (c) paragraph  (9)(a), (b) or (c); or  
 (d) paragraph  (11)(b);  
concerns something that happened in New Zealand.  
199  Deregistration  
 (1) The name of a person registered as a patent attorney may be 
removed from the Register of Patent Attorneys in the prescribed 
manner and on the prescribed grounds.  
 (2) It is immaterial whether the prescribed grounds concern something 
that happened in New Zealand.  
200  Privileges  
 (1) A registered patent attorney:  
 (a) is entitled to prepare all documents, transact all business a nd 
conduct all proceedings for the purposes of this Act; and  
 (b) has such other rights and privileges as are prescribed.  
 (2) A communication made for the dominant purpose of a registered 
patent attorney providing intellectual property advice to a client is 
privileged in the same way, and to the same extent, as a 
communication made for the dominant purpose of a legal 
practitioner providing legal advice to a client.  
 (2A)  A record or document made for the dominant purpose of a 
registered patent attorney pro viding intellectual property advice to 
a client is privileged in the same way, and to the same extent, as a 
record or document made for the dominant purpose of a legal 
practitioner providing legal advice to a client.  
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Section 200A  
 
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  (2B) A reference in subsection  (2) or (2A) to a registered patent attorney 
includes a reference to an individual authorised to do patents work 
under a law of another country or region, to the extent to which the 
individual is authorised to provide intellectual property advice of 
the kind provi ded. 
 (2C) Intellectual property advice  means advice in relation to:  
 (a) patents; or  
 (b) trade marks; or  
 (c) designs; or  
 (d) plant breeder’s rights; or  
 (e) any related matters.  
 (3) Nothing in this section authorises a registered 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.  
200A   Designated Manager  
  For the purposes of this Act, a person is the Designated Manager if 
the person occupies, or is acting in, a position that:  
 (a) is usually occupied by an SES employee; and  
 (b) has been declared by the Secretary of  the Department, in 
writing, to be the position of Designated Manager.  
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Section 201 
 
162 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Part  2—Offences  
   
201  Acting or holding out without being registered  
Individu als 
 (1) An individual commits an offence if:  
 (a) the individual carries on business, practises or acts as a patent 
attorney; and  
 (b) the individual is not a registered patent attorney or a legal 
practitioner.  
Penalty:  30 penalty units.  
 (2) An individua l commits an offence if:  
 (a) the individual describes himself or herself, or holds himself 
or herself out, or permits himself or herself to be described or 
held out, as a patent attorney or agent for obtaining patents; 
and 
 (b) the individual is not a reg istered patent attorney.  
Penalty:  30 penalty units.  
Partnerships  
 (3) A member of a partnership commits an offence if:  
 (a) the member carries on business, practises or acts as a patent 
attorney; and  
 (b) none of the members of the partnership is a registe red patent 
attorney or a legal practitioner.  
Penalty:  30 penalty units.  
 (4) A member of a partnership commits an offence if:  
 (a) the member describes the partnership, or holds the 
partnership out, or permits the partnership to be described or 
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Section 201 
 
 Patents Act 1990  163 
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 held out, a s a patent attorney, or agent for obtaining patents; 
and 
 (b) none of the members of the partnership is a registered patent 
attorney.  
Penalty:  30 penalty units.  
Companies  
 (5) A company commits an offence if:  
 (a) the company carries on business, practises  or acts as a patent 
attorney; and  
 (b) the company is not a registered patent attorney or 
incorporated legal practice.  
Penalty:  150 penalty units.  
 (6) A company commits an offence if:  
 (a) the company describes itself, or holds itself out, or permits 
itself to be described or held out, as a patent attorney, or 
agent for obtaining patents; and  
 (b) the company is not a registered patent attorney.  
Penalty:  150 penalty units.  
Exception —legal representatives  
 (7) Subsections  (1), (3) and (5) do not apply in r elation to the business 
of a registered patent attorney who is deceased if the business:  
 (a) is carried on, within 3 years of the death of the patent 
attorney, or such further time allowed by a prescribed court, 
by the legal representative of the deceased  registered patent 
attorney; and  
 (b) is managed by a registered patent attorney on behalf of the 
legal representative.  
Note:  The defendant bears an evidential burden in relation to the matters in 
subsection  (7). See subsection  13.3(3) of the Criminal Code . 
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Section 201A  
 
164 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Exception —employees  
 (8) Subsections  (1) and (2) do not apply in relation to anything done 
by a person, as an employee, for:  
 (a) his or her employer; or  
 (b) if the person’s employer is a member of a related company 
group —another member of the group.  
Note: The defendant bears an evidential burden in relation to the matters in 
subsection  (8). See subsection  13.3(3) of the Criminal Code . 
Exception —related company groups  
 (9) Subsections  (5) and (6) do not apply in relation to anything done 
by a member of a  related company group for another member of 
the group.  
Note:  The defendant bears an evidential burden in relation to the matter in 
subsection  (9). See subsection  13.3(3) of the Criminal Code . 
Whether a company is related to another company  
 (10) For the p urposes of this section, the question of whether a company 
is related to another company is to be determined in the same 
manner as that question is determined under the Corporations Act 
2001 . 
201A   When a person carries on business, practises or acts as a 
patent attorney  
 (1) For the purposes of section  201, a person is taken to carry on 
business, practise or act as a patent attorney if, and only if, the 
person does, or undertakes to do, patents wo rk in Australia.  
 (2) Patents work  means one or more of the following done, on behalf 
of someone else, for gain:  
 (a) applying for or obtaining patents in Australia or anywhere 
else; 
 (b) preparing specifications or other documents for the purposes 
of this  Act or the patent law of another country;  
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Section 201B  
 
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  (c) giving advice (other than advice of a scientific or technical 
nature) about the validity, or infringement, of patents.  
201B   Incorporated patent attorney must have a patent attorney 
director  
Offence —failing to notify lack of patent attorney director  
 (1) An incorporated patent attorney commits an offence if the 
incorporated patent attorney:  
 (a) does not have a patent attorney director; and  
 (b) does not notify the Designated Manager of that within 7 
days.  
Penalty:  150 penalty units.  
Offence —acting after 7 days without patent attorney director  
 (2) An incorporated patent attorney commits an offence if the 
incorporated patent attorney:  
 (a) does not have a patent attorney director; and  
 (b) has not had a patent  attorney director during the previous 7 
days; and  
 (c) carries on business, practises or acts as a patent attorney.  
Penalty:  150 penalty units.  
Designated Manager may appoint a registered patent attorney  
 (3) If an incorporated patent attorney does not ha ve a patent attorney 
director, the Designated Manager may, by writing, appoint another 
registered patent attorney to take charge of the patents work of the 
incorporated patent attorney.  
 (4) The appointment may be made only with the consent of the other 
registered patent attorney.  
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Section 202 
 
166 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Effect of appointment  
 (5) A registered patent attorney holding an appointment under 
subsection  (3) (the appointed attorney ) is taken, for the purposes 
of this Act, to be a patent attorney director of the incorporated 
patent attor ney. 
 (6) However, for the purposes of the Corporations Act 2001 : 
 (a) the appointed  attorney is not a director of the incorporated 
patent attorney only because:  
 (i) the appointed  attorney takes charge of the patents work 
of the incorporated patent attorn ey; and  
 (ii) the appointed  attorney is taken, for the purposes of this 
Act, to be a patent attorney director of the incorporated 
patent attorney; and  
 (b) the Designated Manager is not a director of the incorporated 
patent attorney only because the Designated Manager 
appointed the appointed  attorney.  
Designated Manager may remove incorporated patent attorney 
from Register  
 (7) If an incorporated patent attorney does not have a patent attorney 
director, the Designated Manager may remove the incorporat ed 
patent attorney from the Register.  
202  Documents prepared by legal practitioners  
  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 instr uctions of a registered 
patent attorney; or  
 (b) the amendment has been directed by an order under 
section  105. 
Penalty:  30 penalty units.  
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Section 202A  
 
 Patents Act 1990  167 
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 202A   Documents prepared by a member of a partnership  
  A person who is:  
 (a) a member of a partnership; and  
 (b) not a registered patent attorney;  
must not prepare a specification, or a document relating to an 
amendment of a specification, unless:  
 (c) the person is acting under the instructions or supervision of a 
registered patent attorney; or  
 (d) the amendment has b een directed by an order under 
section  105. 
Penalty:  30 penalty units.  
202B   Documents prepared by incorporated patent attorneys and 
incorporated legal practices  
  An incorporated patent attorney or an incorporated legal practice 
commits an offence if:  
 (a) an employee or member of the incorporated patent attorney 
or incorporated legal practice prepares a specification, or a 
document relating to an amendment of a specification; and  
 (b) the employee or member is not a registered patent attorney; 
and 
 (c) the specification or document is not prepared:  
 (i) under the instructions or supervision of an individual 
who is a registered patent attorney; or  
 (ii) as directed by an order under section  105. 
Penalty:  150 penalty units.  
203  Attendance at patent attorn ey’s office  
  A registered patent attorney commits an offence if:  
 (a) the registered patent attorney practises, acts, or holds himself, 
herself or itself out as practising or acting, as a patent 
attorney, at an office or place of business where 
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Section 204 
 
168 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 specificat ions or other documents are prepared for the 
purposes of this Act; and  
 (b) there is not an individual who is a registered patent attorney:  
 (i) in regular attendance at that office or place; and  
 (ii) in continuous charge of the patents work done at that 
office or place.  
Penalty:  30 penalty units.  
204  Time for starting prosecutions  
  Despite section  15B of the Crimes Act 1914 , a prosecution for an 
offence against subsection  201(1), (2), (3), (4) , (5) or (6) or 
201B(1) or (2) , or section  202, 202A , 202B  or 203, may be started 
at any time within 5  years after the offence was committed.  
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Section 205 
 
 Patents Act 1990  169 
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 Chapter  21—Administration  
   
   
205  Patent Office and sub -offices  
 (1) For the purposes of this Act, there is to be an office called the 
Patent Office.  
 (2) The Commissioner  may establish one or more sub -offices of the 
Patent Office as the Commissioner considers appropriate.  
 (3) The Commissioner may abolish any such sub -offices.  
206  Patent Office seal  
  There is to be a seal of the Patent Office and impressions of the 
seal must be judicially noticed.  
207  Commissioner of Patents  
 (1) There is to be a Commissioner of Patents.  
 (2) The Commissioner has such powers and functions as are conferred 
on him or her under this Act or any other Act.  
208  Deputy Commissioner of Patents  
 (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 
Commissioner under this Act or any other Act, except the 
Commissioner’s powers  of delegation under section  209. 
 (3) A power or function of the Commissioner under this Act or any 
other Act, when exercised by a Deputy Commissioner, is to be 
taken, for the purposes of this Act or any other Act, to have been 
exercised by the Commission er. 
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Section 209 
 
170 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (4) The exercise of a power or function of the Commissioner under 
this Act or any other Act by a Deputy Commissioner does not 
prevent the exercise of the power or function by the Commissioner.  
 (5) Where, under this Act or any other Act, the exercise of a power or 
function by the Commissioner, or the operation of a provision of 
this Act or any other 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.  
209  Delegation of Commissioner’s powers and functions  
Delegation to employees  
 (1) The Commiss ioner may, by instrument, signed by him or her, 
delegate all or any of the Commissioner’s powers or functions 
under this Act or any other Act to a prescribed employee, or a 
prescribed class of employees.  
Direction or supervision  
 (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.  
210  Commissioner’s powers  
Commissioner’s powers  
 (1) The Commis sioner 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  
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Section 210 
 
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  (d) award costs against a party to proceedings before the 
Comm issioner.  
Exercise of power to summon witnesses  
 (2) The Commissioner must not summon a witness under 
paragraph  (1)(a) unless:  
 (a) the Commissioner is satisfied, on the balance of probabilities, 
of the following matters:  
 (i) the witness has a substantial  interest in the proceedings 
before the Commissioner;  
 (ii) the witness is likely to provide oral evidence of 
substantial relevance to a matter before the 
Commissioner;  
 (iii) receiving oral evidence from the witness is necessary or 
desirable in all the ci rcumstances; and  
 (b) the Commissioner notifies the witness of the actions the 
Commissioner may take under section  210A if the witness 
fails or refuses to comply with the summons.  
 (3) The Commissioner may summon a witness under paragraph  (1)(a) 
whether the witness is in or out of the patent area.  
Exercise of power to require production of document or article  
 (4) The Commissioner must not require a person to produce a 
document or article under paragraph  (1)(c) unless:  
 (a) the Commissioner is satisfied, on the balance of probabilities, 
of the following matters:  
 (i) the person has a substantial interest in the proceedings 
before the Commissioner;  
 (ii) the document or article is likely to be of substantial 
relevance to a matter before the Commissioner; an d 
 (b) the Commissioner notifies the person of the actions the 
Commissioner may take under section  210A if the person 
fails or refuses to comply with the requirement.  
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Section 210A  
 
172 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (5) The Commissioner may require a person to produce a document or 
article under paragra ph (1)(c) whether the person is in or out of the 
patent area.  
Exercise of powers in relation to bodies corporate  
 (6) The Commissioner’s powers in subsection  (1) to make a 
requirement of a person extend, if the person is a body corporate, 
to making that re quirement of any person who is an officer, agent 
or employee of the body corporate.  
210A   Sanctions for non -compliance with Commissioner’s 
requirements  
 (1) The Commissioner may take one or more of the actions listed in 
subsection  (2) in relation to a pers on if:  
 (a) the Commissioner summons the person to appear as a 
witness under paragraph  210(1)(a) or requires the person to 
produce a document or article under paragraph  210(1)(c); and  
 (b) the person refuses or fails to comply with the summons or 
requireme nt; and  
 (c) the Commissioner is satisfied, on the balance of probabilities, 
that it is appropriate in the circumstances to take the action.  
 (2) The actions the Commissioner may take are:  
 (a) if the person is an applicant for a patent —a refusal to grant 
the patent (see subsection  61(1); and  
 (b) the drawing of an inference unfavourable to the person’s 
interest in proceedings before the Commissioner; and  
 (c) actions of a kind that are prescribed by the regulations.  
 (3) In deciding whether it is appropria te to take the action, the 
Commissioner must consider the following:  
 (a) whether the person has a reasonable excuse for refusing or 
failing to comply with the summons or requirement;  
 (b) whether the person has been offered payment of reasonable 
expenses associated with complying with the summons or 
requirement;  
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Section 211 
 
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  (c) any other matter the Commissioner considers to be relevant.  
211  Recovery of costs awarded by Commissioner  
  Costs awarded by the Commissioner against a party are 
recoverable as a debt.  
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Section 212 
 
174 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Chapte r 22—Miscellaneous  
   
   
212  Copies of examination reports to be communicated  
  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 req uires.  
213  Making and signing applications etc.  
  An application, notice or request required or permitted under this 
Act to be made or signed by a person may be made or signed, on 
behalf of that person, by a registered patent attorney.  
214  Filing of docu ments  
  For the purposes of this Act, a document may be filed with the 
Patent Office by a means determined in an instrument under 
subsection  214A(1).  
214A   Approved means of filing documents  
 (1) For the purposes of section  214, the Commissioner may, by 
writing, determine one or more means for filing a document with 
the Patent Office.  
 (2) The means may be an electronic means or any other means.  
 (3) The Commissioner must publish a notice in the Official Journal  
setting out the determination.  
 (4) The Com missioner may, in a determination under subsection  (1), 
specify that one or more means for filing a document with the 
Patent Office are preferred means.  
Note:  Under the regulations, reduced fees may be payable for filing a 
document by preferred means.  
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Section 214B  
 
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  (5) A determination under subsection  (1) is not a legislative 
instrument.  
214B   Directions by Commissioner for filing of documents  
 (1) The Commissioner may, by writing, give a direction specifying the 
form in which a document is to be filed under this Act.  
Note 1:  A reference to this Act includes the regulations (see Schedule  1). 
Note 2:  See also paragraph  228(2)(ba) (about regulations).  
 (2) Subsection  (1) does not apply in relation to a document that is 
required to be in an approved form.  
 (3) The Commissioner must publish a notice in the Official Journal  
setting out the direction.  
 (4) A direction under subsection  (1) is not a legislative instrument.  
214C   Directions by Commissioner for filing of evidence  
 (1) The Commissioner may, by writing, give  a direction in relation to 
the filing of evidence in connection with a matter arising under this 
Act. 
Note 1:  A reference to this Act includes the regulations (see Schedule  1). 
Note 2:  See also paragraph  228(2)(bb) (about regulations).  
 (2) Without limiti ng subsection  (1), a direction under that subsection 
may relate to the following:  
 (a) the number of copies of evidence to be filed;  
 (b) the form in which evidence is to be filed (including the 
circumstances in which physical articles, other than 
document s, are or are not permitted to be filed);  
 (c) the means by which evidence is to be filed.  
 (3) Without limiting paragraph  (2)(b), a direction under subsection  (1) 
may require that evidence in writing be in the form of a 
declaration.  
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Section 215 
 
176 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (4) The Commissioner must publish a notice in the Official Journal 
setting out a direction under subsection  (1). 
 (5) A direction under subsection  (1) is not a legislative instrument.  
215  Death of applicant or nominated person  
 (1) If an applicant dies before a patent is gran ted 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 granted to his or her legal 
representative.  
 (3) Where, at any time a fter a patent is granted, the Commissioner is 
satisfied , on the balance of probabilities,  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 Register by  
substi tuting 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.  
216  Exercise of discretionary power by Com missioner  
 (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 Commissioner’s 
power to direct an applicant to request an examination.  
217  Assessors  
  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 u nder this Act.  
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Section 218 
 
 Patents Act 1990  177 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 218  Costs where patent invalid in part  
  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.  
219  Security for costs  
  If a person who neither resides nor carries on business in Australia:  
 (a) gives notice of opposition under t his 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 Com missioner or the Federal Court, as the case may be, may 
dismiss the proceeding or appeal.  
220  Costs of attendance of patent attorney  
  Where, at the hearing of proceedings under this Act, a registered 
patent attorney attends in court for the purpose of a ssisting 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.  
220A   Notifications by Commissioner under this Act  
 (1) If under this Act the Commissioner  is required or permitted:  
 (a) to notify a person of a matter; or  
 (b) to notify a person that the person is required to do a thing;  
the Commissioner may so notify the person by any means of 
communication (including by electronic means).  
Note 1:  A referen ce to this Act includes the regulations (see Schedule  1). 
Note 2:  Section  221 deals with the service etc. of documents on a person.  
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Section 221 
 
178 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (2) However, the notification must be by a means of communication 
such that the content of the notification is readily acce ssible so as 
to be usable for subsequent reference.  
221  Service of documents  
 (1) 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  or New Zealand  for se rvice of documents, the 
document may be served on, or given or sent to, the person by a 
prescribed means  to that address.  
 (2) After the time specified in the regulations, a reference in this 
section to an address  includes a reference to an electronic address.  
 (3) The time specified under subsection  (2) must be later than the day 
on which the regulations are registered under the Legislation Act 
2003 . 
 (4) For the purposes of this section, the question of whether a n 
electronic address is in Australia is to be determined in accordance 
with the regulations.  
 (5) For the purposes of this section, the question of whether an 
electronic address is in New Zealand is to be determined in 
accordance with the regulations.  
222  Publication of Official Journal  etc. 
 (1) The Commissioner shall issue periodically an official journal 
containing such matters as are prescribed and such other matter s (if 
any) as the Commissioner thinks fit.  
 (2) The Commissioner must make arrangements  for selling copies of 
the Official Journal . 
 (3) The Commissioner may prepare, publish and sell such documents 
relating to inventions and patents as the Commissioner thinks fit.  
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Section 222A  
 
 Patents Act 1990  179 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 222A   Doing act when Patent Office reopens after end of period 
otherwise prov ided for doing act  
 (1) If the last day of a period provided by this Act (except this section) 
for doing an act is a day when the Patent Office, or a sub -office of 
the Patent Office  (if any) , is not open for business, the act may be 
done in prescribed circ umstances on the next day when the office 
or sub -office is open for business.  
 (2) For the purposes of this section, the Patent Office, or a sub -office 
of the Patent Office, is taken not to be open for business on a day:  
 (a) declared by regulations to be a day on which the office or 
sub-office is not open for business; or  
 (b) declared, by a prescribed person in writing published in the 
prescribed way, to be a day on which the office or sub -office 
is not open for business.  
Declarations  
 (3) A declaration m entioned in paragraph  (2)(a) or (b) may identify the 
day by reference to its being declared a public holiday by or under 
a law of a State or Territory. This does not limit the way the 
declaration may identify the day.  
 (4) A declaration mentioned in paragr aph (2)(b):  
 (a) may be made before, on or after the day; and  
 (b) is not a legislative instrument.  
Relationship with other law  
 (5) This section has effect despite the rest of this Act.  
 (6) Subsection  36(2) of the Acts Interpretation Act 1901  does not 
apply in relation to the act mentioned in subsection  (1) of this 
section.  
Exception for prescribed act  
 (7) This section does not apply to a prescribed act.  
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Section 223 
 
180 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Note:  Subsection  36(2) of the Acts Interpretation Act 1901  is relevant to a 
prescribed act.  
223  Exte nsions of time  
 (1) The Commissioner must extend the time for doing a relevant act 
that is required to be done within a certain time if the act is not, or 
cannot be, done within that time because of an error or omission 
by: 
 (a) the Commissioner or a Deput y Commissioner; or  
 (b) an employee; or  
 (c) a person providing, or proposing to provide, services for the 
benefit of the Patent Office ; or 
 (d) the receiving Office; or  
 (e) the International Bureau of the World Intellectual Property 
Organization.  
 (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.  
 (2A)  If: 
 (a) a relevant act that is required to be done within a certain time 
is not done wi thin that time; and  
 (b) the Commissioner is satisfied , on the balance of probabilities,  
that the person concerned took due care, as required in the 
circumstances, to ensure the doing of the act within that time;  
the Commissioner must, on application made by the person 
concerned in accordance with the regulations and within the 
prescribed period, extend the time for doing the act.  
 (2B) An extension of time under subsection  (2A) cannot exceed the 
period prescribed for the purposes of this subsection.  
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Section 223 
 
 Patents Act 1990  181 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (3) The time allowed for doing a relevant act may be extended, 
whether before or after that time has expired.  
 (3A)  Despite subsection  (3), the time allowed for doing a relevant act 
may be extended under subsection  (2A) only after that time has 
expired.  
 (4) The Commissioner must advertise in the Official Journal : 
 (a) an application made for an extension of time for more than 3 
months; or  
 (b) an application made for an extension of time for doing a 
prescribed relevant act in prescribed circumstances.  
 (6) Subject to subsection  (6A), a person  may, as prescribed, oppose the 
granting under subsection  (2) or (2A) of the application.  
 (6A)  If the Commissioner is satisfied , on the balance of probabilities,  
that an application under subsection  (2) or (2A) would not b e 
granted even in the absence of opposition under subsection  (6): 
 (a) the Commissioner need not advertise the application in 
accordance with subsection  (4); and  
 (b) the application cannot be opposed, despite subsection  (6); 
and 
 (c) the Commissioner must  refuse to grant 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 
allowed; and  
 (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:  
 (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 applic ation must be treated as if it had not lapsed.  
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Section 223A  
 
182 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (9) Where the Commissioner grants:  
 (a) an extension of more than 3 months for doing a relevant act; 
or 
 (b) an extension of time for doing a prescribed relevant act in 
prescribed circumstances;  
the prescribe d 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), 
exploite d (or took definite steps by way of contract or otherwise to 
exploit) the invention concerned because of the failure to do the 
relevant act within the time allowed, the lapsing of the patent 
application or the ceasing of the patent, as the case may be.  
 (10) Infringement proceedings cannot be brought in respect of an 
infringemen t 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 
applications.  
223A   Comp uterised decision -making  
 (1) The Commissioner may arrange for the use, under the 
Commissioner’s control, of computer programs for any purposes 
for which the Commissioner may, or must, under this Act:  
 (a) make a decision; or  
 (b) exercise any power or com ply with any obligation; or  
 (c) do anything else related to making a decision to which 
paragraph  (a) applies or related to exercising a power, or 
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Section 224 
 
 Patents Act 1990  183 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 complying with an obligation, to which paragraph  (b) 
applies.  
Note:  A reference to this Act includes the regu lations (see Schedule  1). 
 (2) For the purposes of this Act, the Commissioner is taken to have:  
 (a) made a decision; or  
 (b) exercised a power or complied with an obligation; or  
 (c) done something else related to the making of a decision or 
the exercise of a power or the compliance with an obligation;  
that was made, exercised, complied with or done by the operation 
of a computer program under an arrangement made under 
subsection  (1). 
Substituted decisions  
 (3) The Commissioner may substitute a decision fo r a decision the 
Commissioner is taken to have made under paragraph  (2)(a) if the 
Commissioner is satisfied that the decision made by the operation 
of the computer program is incorrect.  
224  Review of decisions  
 (1) Application may be made to the Administ rative Appeals Tribunal 
for review of:  
 (a) a decision of the Commissioner under section  10, 17, 32, 33  
or 52, subsection  56(1)(b), 74(3)  or 103(2), section  113, 
subsection  137(3), paragraph  141(1)(b) , subsection  150(2), 
151(2), 152(2) or 152(3), or section  173, 215 or 223; or  
 (b) a decision of the Designated Manager under section  198 not 
to register a person as a patent attorney; or  
 (c) a decision of the Director under subsection  147(2) or (3), 
section  149 or subsection  152(1).  
 (1A)  If: 
 (a) the C ommissioner is taken to have made a decision (the 
initial decision ) under paragraph  223A(2)(a); and  
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Section 225 
 
184 Patents Ac t 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (b) under subsection  (1) of this section, application may be made 
to the Administrative Appeals Tribunal for review of the 
initial decision; and  
 (c) the C ommissioner, under subsection  223A(3), substitutes a 
decision for the initial decision;  
application may be made to the Administrative Appeals Tribunal 
for review of the substituted decision.  
 (2) If, under subsection  (1) or (1A), application may be made to  the 
Administrative Appeals Tribunal for review of a decision and a 
written notice of the decision is given to a person whose interests 
are affected by the decision , the notice must include a statement to 
the effect that, subject to the Administrative Appe als 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 . 
225  Conduct of employees and agents of natural persons  
 (3) Wher e 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 wi thin the scope of his or 
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Section 226 
 
 Patents Act 1990  185 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 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 
conduct.  
 (5) A reference in this section to an offence under this Act includes a 
reference to an offence created by:  
 (a) section  6 of the Crimes Act 1914  that relates to this Act or the 
regulations; or  
 (b) sectio n 11.1, 11.2, 11.2A, 11.4 or 11.5 of the Criminal Code  
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 b ut 
for subsections  (3) and (4);  
the person is not liable to be punished by imprisonment for that 
offence.  
 (7) A reference in subsection  (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 
purpose.  
 (9) A reference in this section to engaging in conduct includes a 
reference to failing or refusing to engage in conduct.  
Note:  For provisions relating to proof of  offences by bodies corporate, see 
Part 2.5 of the Criminal Code . 
226  Documents open to public inspection do not infringe copyright  
 (1) If a document mentioned in subsection  (2) is open to public 
inspection, doing any of the following in relation to the whole or 
part of the document does not constitute an infringement of any 
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Section 227 
 
186 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 copyright subsisting under the Copyright Act 1968  in any literary 
or artistic work:  
 (a) reproducing the document in two -dimensional form;  
 (b) communicating (within the meaning of th at Act) the 
document to the public;  
 (c) translating (within the meaning of that Act) the document.  
 (2) The documents are:  
 (a) a provisional specification; and  
 (b) a complete specification; and  
 (c) a prescribed document.  
 (3) If a reproduction of an unpublished work is made as a result of a 
document being open to public inspection, the supply or 
communication of the reproduction does not constitute the 
publication of the work for the purposes of the Copyright Act 1968 . 
227  Fees payable under this Act  
 (1) The prescribed fees are payable in accordance with the regulations.  
 (2) Without limiting subsection  (1), different fees may be prescribed in 
respect of the doing of an act according to the time when the act is 
done.  
 (2A)  Without limiting subsection  (1), different fees may be prescribed 
for filing a document with the Patent Office according to the means 
by which the document is filed.  
 (2B) Without limiting subsection  (1), different amounts of a fee may be 
prescribed according  to the means by which the fee is paid.  
 (2C) A fee must be paid by a means determined in an instrument under 
subsection  227AAA(1).  
 (3) The regulations may provide for the consequences (for the 
purposes of this Act) of failing to pay a fee in accordance w ith the 
regulations.  
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Section 227AAA  
 
 Patents Act 1990  187 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Note:  Some provisions of this Act provide expressly or implicitly for the 
consequences of failing to pay a fee (for example, see 
subsections  29A(5)  and 142(2), section  143, subsection  151(4) and 
section  176). Regulations cannot provide  for consequences 
inconsistent with those provisions.  
 (4) In particular, the regulations may provide that, for the purposes of 
this Act:  
 (a) an act is not to be done, or is taken not to have been done, if 
the fee for doing the act is not paid in accordan ce with the 
regulations; or  
 (b) a document is not filed, or is taken not to have been filed, if 
the fee for filing the document is not paid in accordance with 
the regulations; or  
 (c) a patent application lapses, or is taken to have lapsed, if the 
fee for  filing the request and accompanying specification is 
not paid in accordance with the regulations.  
 (5) Subsection  (4) does not limit subsection  (3). 
227AAA   Approved means of paying a fee  
 (1) For the purposes of subsection  227(2C), the Commissioner may, 
by writing, determine one or more means for paying a fee.  
 (2) The means may be an electronic means or any other means.  
 (3) The Commissioner must publish a notice in the Official Journal  
setting out the determination.  
 (4) The Commissioner may, in a deter mination under subsection  (1), 
specify that one or more means for paying a fee are preferred 
means.  
Note:  Under the regulations, the amount of a fee may be reduced for paying 
the fee by preferred means.  
 (5) A determination under subsection  (1) is not a le gislative 
instrument.  
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Section 227AB  
 
188 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 227AB   Application of administrative law regime to decisions made 
in New Zealand  
Judicial review  
 (1) For the purposes of the application of the Administrative Decisions 
(Judicial Review) Act 1977  to a decision under this Act, it is 
immaterial whether the decision was made in New Zealand.  
Note:  See also the Trans -Tasman Proceedings Act 2010 . 
 (2) For the purposes of subsection  (1), decision  has the same meaning 
as in the Administrative Decisions (Judicial Review) Act 1977 . 
Merits review  
 (3) For the purposes of the application of the Administrative Appeals 
Tribunal Act 1975  to a decision under this Act, it is immaterial 
whether the decision was made in New Zealand.  
Note:  See also the Trans -Tasman Proceedings Act 2010 . 
 (4) For the purposes of subsection  (3), decision  has the same meaning 
as in the Administrative Appeals Tribunal Act 1975 . 
227A   Trans -Tasman IP Attorneys Board  
 (1) The body known immediately before the commencement of this 
subsectio n as the Professional Standards Board for Patent and 
Trade Marks Attorneys is continued in existence as the 
Trans -Tasman IP Attorneys Board.  
Note 1:  In this Act, Board  means the Trans -Tasman IP Attorneys Board —see 
Schedule  1. 
Note 2:  See also section  25B o f the Acts Interpretation Act 1901 . 
 (2) The Board  has the following functions:  
 (a) such functions as are conferred on the Board  by this Act or 
the Trade Marks Act 1995 ; 
 (b) such functions as are conferred on the Board  by regulations 
made for the purpose s of any of the following provisions:  
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Section 227A  
 
 Patents Act 1990  189 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (i) paragraph  198(4)(b) of this Act (which deals with the 
qualifications of patent attorneys);  
 (ii) section  199 of this Act (which deals with the 
deregistration of patent attorneys);  
 (iii) paragraph  228(2)(r) of thi s Act (which deals with the 
professional conduct of patent attorneys);  
 (iv) paragraph  228A(4)(a) of the Trade Marks Act 1995  
(which deals with the qualifications of trade marks 
attorneys);  
 (v) section  228B of the Trade Marks Act 1995  (which deals 
with th e deregistration of trade marks attorneys);  
 (vi) paragraph  231(2)(ha) of the Trade Marks Act 1995  
(which deals with the professional conduct of trade 
marks attorneys);  
 (c) to do anything incidental to or conducive to the performance 
of any of the above functions.  
Membership of the Board  
 (2A)  The Board consists of the following members:  
 (a) a Chair;  
 (b) the Director -General of IP Australia;  
 (c) the New Zealand Commissioner of Patents;  
 (d) at least 2 members nominated by the New Zealand Patents 
Minister to represent the New Zealand patent attorney 
profession;  
 (e) at least 2 other members.  
 (2B) The total number of members of the Board must not exceed 10.  
Appointment of members of the Board  
 (2C) Each member of the Board mentioned in paragraph  (2A)(a), (d) or 
(e) is to be appointed by the Minister by written instrument.  
Note:  For reappointment, see the Acts Interpretation Act 1901 . 
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Section 227A  
 
190 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (2D)  A person is not eligible for appointment as a member of the Board 
mentioned in paragraph  (2A)(a), (d) or (e) un less the Minister is 
satisfied that the person has:  
 (a) substantial experience or knowledge; and  
 (b) significant standing;  
in at least one of the following fields:  
 (c) Australian patent attorney practice;  
 (d) New Zealand patent attorney practice;  
 (e) Australian trade mark attorney practice;  
 (f) the regulation of persons engaged in a prescribed occupation;  
 (g) public administration;  
 (h) academia.  
 (2E) A member of the Board holds office on a part -time basis.  
Period of appointment for members of the B oard 
 (2F) A member of the Board mentioned in paragraph  (2A)(a), (d) or (e) 
holds office for the period specified in the instrument of 
appointment. The period must not exceed:  
 (a) in the case of the member mentioned in paragraph  (2A)(a) —
3 years; or  
 (b) otherwise —5 years.  
Note:  For reappointment, see the Acts Interpretation Act 1901 . 
Appointment of deputy of Director -General of IP Australia  
 (2G)  The Director -General of IP Australia may appoint an APS 
employee to be his or her deputy for the purpose of att endance at 
one or more specified meetings of the Board.  
 (2H)  If: 
 (a) a person is the deputy of the Director -General of IP Australia 
for the purpose of attendance at a particular meeting of the 
Board; and  
 (b) the Director -General of IP Australia is absent from the 
meeting;  
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Section 227A  
 
 Patents Act 1990  191 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 the person is entitled to attend the meeting and, when so attending, 
is taken to be a member of the Board.  
 (2J) A deputy of the Director -General of IP Australia is not entitled to 
any remuneration or allowances for attending a mee ting of the 
Board (other than remuneration or allowances payable to the 
deputy in his or her capacity as an APS employee).  
Appointment of deputy of New Zealand Commissioner of Patents  
 (2K)  The New Zealand Commissioner of Patents may appoint a New 
Zealand patents official to be his or her deputy for the purpose of 
attendance at one or more specified meetings of the Board.  
 (2L) If: 
 (a) a person is the deputy of the New Zealand Commissioner of 
Patents for the purpose of attendance at a particular meeting 
of the Board; and  
 (b) the New Zealand Commissioner of Patents is absent from the 
meeting;  
the person is entitled to attend the meeting and, when so attending, 
is taken to be a member of the Board.  
 (2M)  A deputy of the New Zealand Commissioner of Patents is  not 
entitled to any remuneration or allowances for attending a meeting 
of the Board (other than remuneration or allowances payable to the 
deputy in his or her capacity as a New Zealand patents official).  
 (3) The regulations may make provision for and in relation to:  
 (a) the terms and conditions on which members of the Board 
mentioned in paragraph  (2A)(a), (d) or (e) hold office; and  
 (aa) the manner in which members of the Board mentioned in 
paragraph  (2A)(a), (d) or (e) may resign their appointments; 
and 
 (ab) the termination of the appointment of members of the Board 
mentioned in paragraph  (2A)(a), (d) or (e); and  
 (b) the manner in which the Board  is to perform its functions; 
and 
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Section 227B  
 
192 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (c) the procedure to be followed at or in relation to meetings of 
the Board, including (but not limited to) matters with respect 
to: 
 (i) the convening of meetings of the Board; and  
 (ii) the number of members of the Board who are to 
constitute a quorum; and  
 (iii) the selection of a member of the Board to preside at a 
meeting  of the Board; and  
 (iv) the manner in which questions arising at a meeting of 
the Board are to be decided.  
 (4) A member of the Board  is to be paid such remuneration as is 
determined by the Remuneration Tribunal. If no determination of 
that remuneration b y the Tribunal is in operation, the member is to 
be paid such remuneration as is prescribed.  
 (5) A member of the Board  is to be paid such allowances as are 
prescribed.  
 (6) Subsections  (4) and (5) have effect subject to the Remuneration 
Tribunal Act 1973 . 
 (7) The Board may perform its functions in Australia or New Zealand.  
227B   Publishing personal information of registered patent attorneys  
 (1) The Board may publish on its website any or all of the following 
personal information (within the meaning of th e Privacy Act 1988 ) 
that is about a registered patent attorney:  
 (a) the name of the attorney;  
 (b) the country in which the attorney’s work address is located;  
 (c) if the attorney’s work address is located in Australia —the 
State or Territory in which the  attorney’s work address is 
located;  
 (d) if the attorney’s work address is located in a foreign 
country —the state, territory, province, region or other 
political subdivision (however described) of that country in 
which the attorney’s work address is locat ed; 
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  (e) the attorney’s work email address.  
 (2) Subsection  (1) does not prevent the Board from publishing on its 
website other personal information (within the meaning of the 
Privacy Act 1988 ) that is about a registered patent attorney with the 
attorney’s  written consent.  
228  Regulations  
 (1) The Governor -General may make regulations, not inconsistent with 
this Act:  
 (a) prescribing matters required or permitted by this Act to be 
prescribed; and  
 (b) prescribing matters necessary or convenient to be presc ribed 
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 
Budap est Treaty; and  
 (e) for the purpose of carrying out or giving effect to the PCT, 
whether in relation to PCT applications or otherwise ; and  
 (f) for the purpose of carrying out or giving effect to the TRIPS 
Agreement . 
 (2) Without limiting subsection  (1), that subsection includes the power 
to make regulations:  
 (aa) making provision for and in relation to:  
 (i) the procedures for conducting a preliminary search and 
opinion in relation to a patent request and complete 
specification; and  
 (ii) the reports to be made in relation to the preliminary 
search and opinion; and  
 (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  
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  (b) making provision for and in relation to the reports to be made 
in relation to an examination and a re -examination; and  
 (ba) making provision for and in relation to the following:  
 (i) the requirements for filing a document under this Act 
(including the re quirement that the document must be in 
the form (if any) specified in a direction under 
section  214B);  
 (ii) the consequences of a document not being in 
accordance with an approved form or not complying 
with the requirements referred to in subparagraph  (i); 
and 
 (bb) making provision for and in relation to the consequences of 
not complying with a direction under section  214C; 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  
 (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  
 (g) making provision for and in relation to the preparation, filing 
and publication of abstra cts of complete specifications; and  
 (h) making provision for and in relation to opposition 
proceedings; and  
 (ha) setting out the formalities checking process for innovation 
patents including, in particular, the following matters:  
 (i) specifying the form alities requirements (including 
compliance with the requirements of subsections  18(2) 
and (3)  and 29(4A) and (4B) ) that must be met in 
respect of an application for an innovation patent; and  
 (ii) empowering the Commissioner to direct an applicant for 
an innovation patent to do such things as are necessary 
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 to ensure that those formalities requirements are met ; 
and 
 (iii) providing for the lapsing of the application if such a 
direction is not complied with within a time specified in 
the regulations; and  
 (iv) providing for the restoration of an application that has 
so lapsed; and  
 (i) setting out the checking process for PCT applications 
including, in particular, the following matters:  
 (i) specifying the requirements that must be met in respect 
of a PCT appl ication, once the applicant has complied 
with subsection  29A(5) ; 
 (ii) empowering the Commissioner to direct an applicant to 
do such things as are necessary to ensure that those 
requirements are met ; 
 (iii) providing for the lapsing of the PCT application if such 
a direction is not complied with within a time specified 
in the regulations;  
 (ia) making provision for and in relation to:  
 (i) empowering the Commissioner, in relation to a 
provisional patent application, to direct the applicant to 
do such things  as are necessary to ensure that the 
provisional specification complies with the 
requirements of subsection  29(4); and  
 (ii) the provisional specification being taken not to have 
been filed if such a direction is not complied with within 
a time specified in the regulations; and  
 (j) empowering the Commissioner to direct an applicant for a 
standard patent to do such things as are necessary to ensure 
that the  patent request or  complete specification is in 
accordance with the requirements of subsection  29(4A)  or 
(4B) 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  
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  (ii) providing for the restoration of an application that has 
so lapsed; and  
 (k) empowering the Commi ssioner 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 unde r 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 d one, 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 
disability, is unable to make the declaration or do the act; and  
 (r) for the control of the professiona l 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:  
 (i) making complaints, and hearing charges, against 
registered patent attorneys about t heir professional 
conduct;  
 (ia) assessing the professional conduct of registered patent 
attorneys by reference to standards of practice 
established by the Board  from time to time;  
 (ii) imposing penalties on registered patent attorneys, 
including issuing a reprimand and suspending or 
cancelling registration;  
 (iii) summoning witnesses;  
 (iv) requiring persons to give evidence on oath (whether 
orally or otherwise);  
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  (v) administering oaths to persons giving evidence (whether 
orally or otherwise);  
 (vi) requiring persons to produce documents or articles; and  
 (s) making 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 te sting of, 
and furnishing of samples of, micro -organisms by those 
institutions; and  
 (ii) the charging of fees by prescribed depositary 
institutions situated in Australia in relation to the 
matters described in subparagraph  (i); and  
 (iii) the making of rep orts by prescribed depositary 
institutions situated in Australia in relation to those 
matters; and  
 (iv) the powers and functions of the Commissioner in 
relation to prescribed depositary institutions with 
respect to those matters; and  
 (t) modifying the op eration of this Act in relation to PCT 
applications that are treated as patent applications under this 
Act by excluding, varying, or substituting different 
provisions for, specified provisions of this Act; and  
 (w) making provision for and in relation to t he 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 w hole or part of a fee; and  
 (z) prescribing penalties for offences against the regulations not 
exceeding a fine of 10 penalty units ; and  
 (za) making such transitional and savings provisions as are 
necessary 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 
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 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 m ake regulations conferred by any other 
provision of this Act.  
 (4A)  If the regulations confer a function on a person or body, the 
regulations may provide that the function may be performed in 
Australia or New Zealand.  
 (4B) If the regulations confer a powe r on a person or body, the 
regulations may provide that the power may be exercised in 
Australia or New Zealand.  
 (4C) If the regulations provide that application may be made to the 
Administrative Appeals Tribunal for review of a decision, the 
regulations m ay provide that it is immaterial whether the decision 
was made in New Zealand.  
 (4D)  The regulations may provide that it is immaterial whether an act or 
omission mentioned in the regulations took place in New Zealand.  
 (4E) The regulations may provide that  it is immaterial whether a matter 
mentioned in the regulations concerns something that took place in 
New Zealand.  
 (5) Despite subsection  14(2) of the Legislation Act 2003 , regulations 
made for the purposes of the definition of eligible importing 
country  in Schedule  1 may make provision in relation to a matter 
by applying, adopting or incorporating, with or without 
modification, any matter contained in any other instrument or other 
writing as in force or existing from time to time.  
 (7) Despite the repeal  of the 1952 Act by this Act, regulations made 
under paragraph  (2)(za) may provide for the continued operation of 
specified provisions of the 1952 Act in relation to prescribed 
persons or matters, or in prescribed circumstances.  
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 229  Instrument determining  formalities requirements for patent 
documents  
 (1) The Commissioner may, by written instrument, determine 
formalities requirements for the purposes of the following:  
 (a) paragraphs 29(4A)(d) and (4B)(c);  
 (b) a provision of the regulations, if that provi sion refers to this 
section.  
 (2) The Commissioner must publish a notice in the Official Journal  
setting out the determination.  
 (3) A determination under subsection  (1) is not a legislative 
instrument.  
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Section 231 
 
200 Patents Act 1990   
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 Chapter  23—Transitional and savings 
provisions  
   
   
231  Application of Part  III of 1989 Amending Act  
  Nothing in this Act affects the continued operation of Part  III of the 
1989 Amending Act.  
233  Patents granted under 1952 Act  
 (1) Subject 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  (1) does not have effect in any 
place in which it did not have effect immediately before the 
commenci ng day.  
 (3) Chapter  9 of this Act does not apply in relation to a patent 
mentioned in subsection  (1). 
 (4) Objection cannot be taken to a patent mentioned in subsection  (1), 
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 patent under the 1952 Act.  
234  Applications under 1952 Act  
 (1) Where, before the commencing day:  
 (a) a patent application and provisional specification had been 
lodged under the 1952 Ac t; and  
 (b) a complete specification had not been lodged under that Act 
in respect of the application; and  
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  (c) the application had not been withdrawn;  
then, subject to this Chapter  and the regulations, this Act applies in 
relation to the application on an d 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 lodge d under that Act in respect of the application; and  
 (c) the application had not been withdrawn or finally dealt with;  
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 w ere a complete 
application 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 ap plication 
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 menti oned 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 in vention 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.  
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 235  Other applications and proceedings under 1952 Act  
 (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 star ted 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  (1) does not apply in relation to an application covered 
by section  234 of this Act.  
236  Micro -organisms  
  Sections  41 and 42 of this Act do not apply in relation to a 
specification lodged before 7  July 1987.  
237  Orders, directions etc. under 1952 Act  
  Any report, order or d irection 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.  
238  The Commissioner and Deputy Commis sioner  
  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.  
239  The Register of Patents and Register of Patent Att orneys  
 (1) On and after the commencing day, the Register of Patents under 
the 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 b e taken to form part of the Register of 
Patent Attorneys under this Act.  
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 240  Registered patent attorneys  
  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 registered as 
a patent attorney under this Act.  
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204 Patents Act 1990   
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 Schedule  1—Dictionary  
Section  3 
   
  In this Act, unless the contrary intention appears:  
application , in Chapter  15, means a patent application, and 
includes a relevant international application.  
approved form  means a form approved by the Commissioner for 
the purposes of the provision in which the expression appears.  
associated technology  has the same meaning as in the Safeguards 
Act. 
Australia  includes each external Territory.  
Australian continental shelf  means the continental shelf  adjacent 
to the coast of Australia (including the coast of any island forming 
part of a State or Territory).  
Australian Register of Therapeutic Goods  means  the register 
maintained under section  9A of the Therapeutic Goods Act 1989 . 
authority , in Chapter  15, has the same meaning as in the 
Safeguards Act.  
basic application  means an application for protection in respect of 
an invention, being an application mad e in a Convention country.  
Board  means the Trans -Tasman IP Attorneys Board continued in 
existence by section  227A.  
Budapest Treaty  means the Budapest Treaty on the International 
Recognition of the Deposit of Microorganisms for the Purposes of 
Patent Proced ure signed at Budapest on 28  April 1977, as that 
treaty is in force for Australia from time to time, together with the 
Regulations annexed to that treaty, as those Regulations are in 
force for Australia from time to time.  
Note:  The text of the Treaty is se t out in Australian Treaty Series 1987 No.  9 
([1987] ATS 9). In 2011, the text of a Treaty in the Australian Treaty 
Series was accessible through the Australian Treaties Library on the 
AustLII website (www.austlii.edu.au).  
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 certified , in respect of an innov ation patent other than in 
section  19, means a certificate of examination issued by the 
Commissioner under paragraph  101E(2)(c)  in respect of the patent.  
claim  means:  
 (a) when used as a noun in relation to a patent —a claim 
(including a dependent claim) of  the specification relating to 
the complete application on which the patent was granted; 
and  
 (b) when used as a noun otherwise than in relation to a patent —a 
claim (including a dependent claim) of a complete 
specification; and  
 (c) when used as a verb —to claim in a claim (including a 
dependent claim) of a complete specification.  
commencing day  means the day on which this Act commences.  
Commissioner  means the Commissioner of Patents.  
company  means:  
 (a) a company registered under the Corporations Act 2001 ; or 
 (b) a company registered under the Companies Act 1993 of New 
Zealand.  
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 invention that is the subject of a patent 
application and is so acquired —the nominated person in 
relation to the application.  
complete specification  means (other than in section  116) a 
specification filed in respect of a complete pate nt application or, if 
the specification has been amended, the complete specification as 
amended.  
Convention applicant , in relation to a basic application, means a 
perso n (or a body of persons, whether incorporated or not) who:  
 (a) has made the basic appli cation; or  
 (b) is the assignee of that applicant; or  
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206 Patents Act 1990   
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  (c) would, on the grant of a patent on that application, be entitled 
to have the patent assigned to the person; or  
 (d) is the legal representative of a person mentioned in 
paragraph  (a), (b) or (c); or  
 (e) has the consent of a person mentioned in paragraph  (a), (b), 
(c) or (d) to make a Convention application based on that 
basic application.  
Convention application  means a patent application made under 
Part 1 of Chapter  3. 
Convention country  has the meaning given by section  29B.  
deposit requirements  means the requirements specified in 
paragraphs 6(a) to (d), inclusive.  
depositary institution  means a body or institution that receives, 
accepts and stores micro -organisms and furnishes sam ples of 
micro -organisms.  
Deputy Commissioner  means a Deputy Commissioner of Patents.  
Designated Manager  has the meaning given by section  200A.  
Director  means the Director of Safeguards.  
director  of a company has the same meaning as in the 
Corporations Act 2001 . 
Director -General of IP Australia  means the SES employee who 
holds or performs the duties of the position of Director -General of 
IP Australia.  
eligible importing country  means a foreign country of a kind 
prescribed by regulation.  
Note:  A regulation ma de for the purposes of this definition may make 
provision in relation to a matter by applying, adopting or 
incorporating, with or without modification, any matter contained in 
any other instrument or other writing as in force or existing from time 
to time (see subsection  228(5)).  
eligible person , in relation to an invention, means a person to 
whom a patent for the invention may be granted under section  15. 
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 employee  means a person, other than the Commissioner or a 
Deputy Commissioner, who:  
 (a) is a person e ngaged under the Public Service Act 1999  and is 
employed in the Patent Office; or  
 (b) is not such a person but performs services, in the Patent 
Office, for or on behalf of the Commonwealth.  
examination  means:  
 (a) in relation to a patent request and a co mplete specification 
relating to a standard patent —an examination of the request 
and specification under section  45; or  
 (b) in relation to an innovation patent —an examination of the 
complete specification relating to the patent under 
section  101B.  
exclusi ve licensee  means a licensee under a licence granted by the 
patentee and conferring on the licensee, or on the licensee and 
persons authorised by the licensee, the right to exploit the patented 
invention throughout the patent area to the exclusion of the 
patentee and all other persons.  
exploit , in relation to an invention, includes:  
 (a) where the invention is a product —make, hire, sell or 
otherwise dispose of the product, offer to make, sell, hire or 
otherwise dispose of it, use or import it, or keep it fo r the 
purpose of doing any of those things; 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.  
Federal Court  means the Federal Court of Australia.  
file means file with the Patent Office.  
Note:  See also section  214. 
foreign 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 prescribed foreign country.  
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208 Patents Act 1990   
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 foreign vessel  means a vessel registered in a prescribed foreign 
country.  
formalities check  means, in respect of an application for an 
innovation patent, the checking process undertaken under 
section  52 using the process set out in the regulations.  
incorporated legal practice  means a body corporate recognised 
under a law of the Commonwealth, a State or a Territory as an 
incorporated legal practice (however described).  
incorporated patent attorney  has the meaning gi ven by 
subsection  198(10).  
infringement proceedings  means proceedings for infringement of 
a patent.  
innovation patent  means letters patent for an invention granted 
under section  62. 
intellectual property advice  has the meaning given by 
subsection  200(2C).  
interested party , in relation to a patent application, means the 
applicant or a joint applicant, or a person who claims to be entitled 
to the grant of a patent on the application, either alone or jointly 
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 filing date , in relation to an international application, 
means the date given to the international application as its 
internati onal filing date under the PCT.  
invention  means any manner of new manufacture the subject of 
letters patent and grant of privilege within section  6 of the Statute 
of Monopolies, and includes an alleged invention.  
legal practitioner  means a barrister or sol icitor of the High Court 
or of the Supreme Court of a State or Territory.  
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 legal representative , in relation to a deceased person, means a 
person to whom probate of the will of the deceased person, letters 
of administration of the estate of the deceased per son, or any 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 entitled to do an act in relation to which the 
expression is used.  
licence  means a licenc e to exploit, or to authorise the exploitation 
of, a patented invention.  
main invention  has the meaning given in section  81. 
New Zealand Commissioner of Patents  means the person who 
holds or performs the duties of the office or position of 
Commissioner of Patents under or in accordance with a law of 
New Zealand.  
New Zealand Patents Minister  means the Minister of New 
Zealand who:  
 (a) under the authority of a warrant; or  
 (b) with the authority of the Prime Minister of New Zealand;  
is responsible for the administration of a law of New Zealand 
relating to the regulation of patent attorneys.  
New Zealand patents official  means a person:  
 (a) who is an employee in any part of the State services of New 
Zealand; and  
 (b) whose functions or duties relate to the a dministration of a law 
of New Zealand relating to patents for inventions.  
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 Journal  means the official journal mentioned in 
section  222. 
patent  means a standard patent or an innovation patent.  
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210 Patents Act 1990   
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 patent application  means an application for a standard patent or an 
applicati on for an innovation 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 att orney director  has the meaning given by 
subsection  198(11).  
patent of addition  means letters patent for an invention granted 
under Chapter  7 and includes, for the purposes of section  25, a 
patent of addition that has become an independent patent under 
section 83. 
Patent Office  means the Patent Office established under this Act.  
patent request  means a request for the grant of a patent to a 
nominated person.  
patentable invention  means an invention of the kind mentioned in 
section  18. 
patented pharmaceutical i nvention , in relation to a pharmaceutical 
product, means:  
 (a) if the product is a patented product —the patented product; or  
 (b) if the product results from the use of a patented process —the 
patented process.  
patented process  means a process in respect of  which a patent has 
been granted and is in force.  
patented product  means a product in respect of which a patent has 
been granted and is in force.  
patentee  means the person for the time being entered in the 
Register as the grantee or proprietor of a patent.  
patents work  has the meaning given by subsection  201A(2).  
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 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 th ose 
Regulations are in force for Australia from time to time.  
Note:  The text of the Treaty is set out in Australian Treaty Series 1980 No.  6 
([1980] ATS 6). In 2011, the text of a Treaty in the Australian Treaty 
Series was accessible through the Australian  Treaties Library on the 
AustLII website (www.austlii.edu.au).  
PCT application  means an international application in which 
Australia is specified as a designated State under Article 4(1)(ii) of 
the PCT.  
permit , in Chapter  15, has the same meaning as in the  Safeguards 
Act. 
pharmaceutical product  means any patented product, or product 
manufactured through a patented process, of the pharmaceutical 
sector.  
Example:  Examples of a pharmaceutical product include:  
(a) active ingredients necessary for manufacturing such a product; 
and 
(b) diagnostic kits needed for using such a product.  
pharmaceutical substance  means a substance (including a mixture 
or compound of substances) for therapeutic use whose application 
(or one of whose applications) involves:  
 (a) a chemi cal interaction, or physico -chemical interaction, with 
a human physiological system; or  
 (b) action on an infectious agent, or on a toxin or other poison, in 
a human body;  
but does not include a substance that is solely for use in  in vitro  
diagnosis or in vitro  testing.  
PPI is short for patented pharmaceutical invention.  
PPI compulsory licence  has the meaning given by section  136D.  
PPI order  has the meaning given by section  136D.  
PPI order applicant  has the meaning given by section  136D.  
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212 Patents Act 1990   
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 PPSA security inte rest (short for Personal Property Securities Act 
security interest) means a security interest within the meaning of 
the Personal Property Securities Act 2009  and to which that Act 
applies, other than a transitional security interest within the 
meaning of t hat Act.  
Note 1:  The Personal Property Securities Act 2009  applies to certain security 
interests in personal property. See the following provisions of that 
Act: 
(a) section  8 (interests to which the Act does not apply);  
(b) section  12 (meaning of security interest ); 
(c) Chapter  9 (transitional provisions).  
Note 2:  For the meaning of transitional security interest , see section  308 of 
the Personal Property Securities Act 2009 . 
preferred means : 
 (a) in relation to filing a document with the Patent Office —
means  the means specified under subsection  214A(4); or  
 (b) in relation to paying a fee —means the means specified under 
subsection  227AAA(4).  
preliminary search and opinion , in relation to a patent request and 
complete specification relating to an application for a standard 
patent, means search and opinion under section  43A.  
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 Territory or the Supreme Cou rt of 
Norfolk Island.  
prescribed depositary institution  means:  
 (a) an international depositary authority, whether in or outside 
Australia; or  
 (b) any other depositary institution in Australia that is prescribed 
for the purposes of this paragraph.  
prior art base  means:  
 (a) in relation to deciding whether an invention does or does not 
involve an inventive step or an innovative step:  
 (i) information in a document that is publicly available, 
whether in or out of the patent area; and  
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 Patents Act 1990  213 
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  (ii) information made publicly available through doing an 
act, whether in or out of the patent area.  
 (b) in relation to deciding whether an invention is or is not novel:  
 (i) information of a kind mentioned in paragraph  (a); and  
 (ii) information contained in a published spec ification filed 
in respect of a complete application where:  
 (A) if the information is, or were to be, the subject 
of a claim of the specification, the claim has, or 
would have, a priority date earlier than that of 
the claim under consideration; and  
 (B) the specification was published  on or  after the 
priority date of the claim under consideration; 
and 
 (C) the information was contained in the 
specification on its filing date.  
[Note: For the meaning of document  see section  2B of the Acts 
Interpretation Act  1901 .] 
prior art information  means:  
 (a) for the purposes of subsection  7(1)—information that is part 
of the prior art base in relation to deciding whether an 
invention is or is not novel; and  
 (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 inventive step; and  
 (c) for the purposes of subsection  7(5)—information that is part 
of the prior art base in relation to decidin g whether an 
invention does or does not involve an innovative step.  
prohibition order  means an order under section  173. 
provisional specification  means a specification filed in respect of a 
provisional patent application.  
receiving Office  has the same mean ing as in the PCT.  
re-examination  means:  
 (a) in relation to a complete specification relating to an 
application for a standard patent —the re -examination of the 
complete specification under Chapter  9; and  
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214 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
  (b) in relation to an innovation patent —the re -examination of the 
innovation patent under Part  2 of Chapter  9A. 
Register  means the Register of Patents mentioned in section  186. 
registered , in relation to a patent, means entered in the Register of 
Patents.  
registered patent attorney  means a person regis tered as a patent 
attorney under this Act.  
Registrar of Companies of New Zealand  means the person who 
holds or performs the duties of the office or position of Registrar of 
Companies under or in accordance with the Companies Act 1993 
of New Zealand.  
relate d company group  means a group of 2 or more companies, 
where each member of the group is related to each other member 
of the group.  
relevant authority  means:  
 (a) in relation to the exploitation of an invention by or for the 
Commonwealth —the Commonwealth; a nd  
 (b) in relation to the exploitation of an invention by or for a 
State —that State.  
relevant international application , in Chapter  15, means an 
international application in relation to which the Patent Office is 
the receiving Office (even if Australia i s not specified in the 
application as a designated State under Article 4(1)(ii) of the PCT).  
relevant proceedings , in relation to a patent, means court 
proceedings:  
 (a) for infringement of the patent; or  
 (b) for revocation of the patent; or  
 (c) in whi ch the validity of the patent, or of a claim, is in dispute.  
rules relating to micro -organisms  means such provisions of the 
Budapest Treaty, and such provisions made by or under regulations 
made under section  228, as are applicable.  
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 Patents Act 1990  215 
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 Safeguards Act  means th e Nuclear Non -Proliferation (Safeguards) 
Act 1987 . 
specification , in relation to an international application, means the 
description, claims , drawings, graphics and photographs  contained 
in the application.  
standard patent  means letters patent for an inven tion granted under 
section  61. 
State , in Chapter  17, includes the Australian Capital Territory, the 
Northern Territory and Norfolk Island.  
Statute of Monopolies  means the Imperial Act known as The 
Statute of Monopolies.  
supply  includes:  
 (a) supply by way of sale, exchange, lease, hire or hire -purchase; 
and 
 (b) offer to supply (including supply by way of sale, exchange, 
lease, hire or hire -purchase).  
Territory  means a Territory in which this Act applies or to which 
this Act extends.  
therapeutic use  means use for the purpose of:  
 (a) preventing, diagnosing, curing or alleviating a disease, 
ailment, defect or injury in persons; or  
 (b) influencing, inhibiting or modifying a physiological process 
in persons; or  
 (c) testing the susceptibility of per sons to a disease or ailment.  
this Act  includes the regulations.  
TRIPS Agreement  means the Agreement on Trade -Related 
Aspects of Intellectual Property Rights set out in Annex 1C to the 
Marrakesh Agreement establishing the World Trade Organization, 
done at Marrakesh on 15  April 1994, as Annex 1C is in force for 
Australia from time to time.  
Note:  The WTO Agreement is in Australian Treaty Series 1995 No.  8 
([1995] ATS 8) and could in 2015 be viewed in the Australian 
Treaties Library on the AustLII website (htt p://www.austlii.edu.au).  
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216 Patents Act 1990   
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 work , in relation to a patented invention, means:  
 (a) where the invention is a product —make 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 . 
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Endnotes  
 
 
Endnote 1 —About the endnotes  
 
 Patents Act 1990  217 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Endnotes  
Endnote 1 —About the endnotes  
The endnotes provide information about this compilation and the compiled law.  
The following endnotes are included in every compilation:  
Endnote 1 —About the endnotes  
Endnote 2 —Abbreviation key  
Endnote 3 —Legislation history  
Endnote 4 —Amendment history  
Abbreviation key —Endnote 2  
The abbreviation key se ts out abbreviations that may be used in the endnotes.  
Legislation history and amendment history —Endnotes 3 and 4  
Amending laws are annotated in the legislation history and amendment history.  
The legislation history in endnote 3 provides information about each law that 
has amended (or will amend) the compiled law. The information includes 
commencement details for amending laws and details of any application, saving 
or transitional provisions that are not included in this compilation.  
The amendment history i n endnote 4 provides information about amendments at 
the provision (generally section or equivalent) level. It also includes information 
about any provision of the compiled law that has been repealed in accordance 
with a provision of the law.  
Editorial cha nges 
The Legislation Act 2003  authorises First Parliamentary Counsel to make 
editorial and presentational changes to a compiled law in preparing a 
compilation of the law for registration. The changes must not change the effect 
of the law. Editorial changes take effect from the compila tion registration date.  
If the compilation includes editorial changes, the endnotes include a brief 
outline of the changes in general terms. Full details of any changes can be 
obtained from the Office of Parliamentary Counsel.  
Misdescribed amendments  
A mi sdescribed amendment is an amendment that does not accurately describe 
the amendment to be made. If, despite the misdescription, the amendment can 
be given effect as intended, the amendment is incorporated into the compiled 
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Endnotes  
 
 
Endnote 1 —Abou t the endnotes  
 
218 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 law and the abbreviation “(md)” added to the details of the amendment included 
in the amendment history.  
If a misdescribed amendment cannot be given effect as intended, the 
abbreviation “(md not incorp)” is added to the details of the amendment 
included in the amendment history.  
 
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Endnotes  
 
 
Endnote 2 —Abbreviation key  
 
 Patents Act 1990  219 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Endnot e 2—Abbreviation key  
 
ad = added or inserted  o = order(s)  
am = amended  Ord = Ordinance  
amdt = amendment  orig = original  
c = clause(s)  par = paragraph(s)/subparagraph(s)  
C[x] = Compilation No. x      /sub-subparagraph(s)  
Ch = Chapter(s)  pres = present  
def = definition(s)  prev = previous  
Dict = Dictionary  (prev…) = previously  
disallowed = disallowed by Parliament  Pt = Part(s)  
Div = Division(s)  r = regulation(s)/rule(s)  
ed = editorial change  reloc = relocated  
exp = expires/expired or ceases/ceased to  have  renum = renumbered  
    effect  rep = repealed  
F = Federal Register of Legislation  rs = repealed and substituted  
gaz = gazette  s = section(s)/subsection(s)  
LA = Legislation Act 2003  Sch = Schedule(s)  
LIA = Legislative Instruments Act 2003  Sdiv = Subdivision(s)  
(md) = misdescribed amendment can be given  SLI = Select Legislative Instrument  
    effect  SR = Statutory Rules  
(md not incorp) = misdescribed amendment  Sub-Ch = Sub -Chapter(s)  
    cannot be given effect  SubPt = Subpart(s)  
mod = modified/modification  underlining  = whole or part not  
No. = Number(s)      commenced or to be commenced  
 
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Endnotes  
 
 
Endnote 3 —Legislation history  
 
220 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Endnote 3 —Legislation history  
 
Act Number 
and year  Assent  Commencement  Application, 
saving and 
transitional 
provisions  
Patents Act 1990  83, 1990  30 Oct 
1990  30 Apr 1991  (s 2(2))   
Industry, Technology 
and Commerce 
Legislation Amendment 
Act 1991  66, 1991  15 June 
1991  s 26: 30 Apr 1991 
(s 2(4))  — 
Industry, Technology 
and Regional 
Development Legislation 
Amendment Act 1994  58, 1994  9 Apr 1994  Sch: 29 June 1994 ( s 2 
and gaz 1994, No  S211)  — 
Industry, Science and 
Technology Legislation 
Amendment Act 1994  108, 1994  12 July 
1994  s 16–19: 12  July 1994 
(s 2(1))  — 
Patents (World Trade 
Organization 
Amendments) Act 1994  154, 1994  13 Dec 
1994  s 4–7 and 12: 1  July 
1995  (s 2) 
Remainder: 10  Jan 1995  
(s 2) s 3, 7, 8, 10, 12, 
13, 17 
Intellectual Property 
Laws Amendment Act 
1998  100, 1998  27 July 
1998  Sch 1 and 2 (items  10–
32): 27 Jan 1999  (s 2(3), 
(5)) 
Sch 3 : 27 July 1998 
(s 2(1))  Sch 1 (item  8), 
Sch 2 (items  31, 
32) and  Sch 3 
(item  4) 
Public Employment 
(Consequential and 
Transitional) 
Amendment Act 1999  146, 1999  11 Nov 
1999  Sch 1 (items  728–730): 5 
Dec 1999 ( s 2(1), (2) and 
gaz 1999, No  S584)  — 
Patents Amendment 
(Innovation Patents) Act 
2000  140, 2000  24 Nov 
2000  Sch 1  and 2 : 24 May 
2001  (s 2(2))  Sch 2  
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Endnotes  
 
 
Endnote 3 —Legislation history  
 
 Patents Act 1990  221 
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 Act Number 
and year  Assent  Commencement  Application, 
saving and 
transitional 
provisions  
as amended by      
Trade Marks and 
Other Legislation 
Amendment Act 2001  99, 2001  22 Aug 
2001  Sch 2: 24 May 2001 
(s 2(3))  — 
Intellectual Property 
Laws Amendment Act 
2003  48, 2003  26 June 
2003  Sch 2 (item  8): 24 May 
2001 (s  2(1) item  5) — 
Corporations (Repeals, 
Consequentials and 
Transitionals) Act 2001  55, 2001  28 June 
2001  s 4–14 and Sch  3 
(item  401): 15  July 2001 
(s 2(1) and gaz  2001, No  
S285)  s 4–14 
Industry, Science and 
Resources Legislation 
Amendment 
(Application of Criminal 
Code) Act 2001  140, 2001  1 Oct 2001  s 4 and Sch 1 (items  86–
98): 2 Oct 2001  (s 2) s 4 
Patents Amendment Act 
2001  160, 2001  1 Oct 2001  Sch 1: 1 Apr 2002  
(s 2(3))  
Sch 2: 24 May 2001 
(s 2(4))  Sch 1 (items  13, 
32, 33)  
Intellectual Property 
Laws Amendment Act 
2003  48, 2003  26 June 
2003  Sch 1 (item  2): 24  July 
2003  (s 2(2))  
Sch 2 (items  1–5): 26 
Aug 2003  (s 2(3))  Sch 2 (item  5) 
US Free Trade 
Agreement 
Implementation Act 
2004  120, 2004  16 Aug 
2004  Sch 8: 16 Aug 2004  
(s 2(1) item  8) Sch 8 (item  3) 
Statute Law Revision 
Act 2005  100, 2005  6 July 2005  Sch 1 (items  31–37): 
24 May 2001 (s  2(1) 
item 20) — 
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Endnotes  
 
 
Endnote 3 —Legislation history  
 
222 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Act Number 
and year  Assent  Commencement  Application, 
saving and 
transitional 
provisions  
Intellectual Property 
Laws Amendment Act 
2006  106, 2006  27 Sept 
2006  Sch 5, 6, 8 and 9: 28  
Sept 2006  (s 2(1) 
items  7, 9) 
Sch 7: 25  Oct 2006  
(s 2(1) item  8) 
Sch 10 and 12 (item  4): 
27 Mar 2007  (s 2(1) 
items  10, 12)  
Sch 16 (item  1): 4 Oct 
2002 (s  2(1) item 14) Sch 5 (item  2), 
Sch 6 (item  2), 
Sch 7 (item  4), 
Sch 8 (item  9), 
Sch 9 (item  2) and 
Sch 10 (item  3) 
Personal Property 
Securities 
(Consequential 
Amendments) Act 2009  131, 2009  14 Dec 
2009  Sch 2 (items  8–15): 30  
Jan 2012  (s 2(1) item  1) Sch 2 (item  15) 
Crimes Legislation 
Amendment (Serious 
and Organised Crime) 
Act (No.  2) 2010  4, 2010  19 Feb 
2010  Sch 10 (item  22): 20  Feb 
2010  (s 2(1) item  13) — 
Statute Law Revision 
Act 2010  8, 2010  1 Mar 2010  Sch 1 (item  39): 1 Mar 
2010 (s 2(1) item  4) — 
Personal Property 
Securities (Corporations 
and Other Amendments) 
Act 2010  96, 2010  6 July 2010  Sch 3 (item  16): 30 Jan 
2012 (s 2(1) item  13) — 
Trade Practices 
Amendment (Australian 
Consumer Law) Act 
(No. 2) 2010  103, 2010  13 July 
2010  Sch 6 (items  1, 82): 
1 Jan 2011  (s 2(1) 
items  3, 5) — 
Statute Law Revision 
Act 2011  5, 2011  22 Mar 
2011  Sch 7 (items  108, 109): 
19 Apr 2011  (s 2(1) 
item 18) — 
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Endnotes  
 
 
Endnote 3 —Legislation history  
 
 Patents Act 1990  223 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Act Number 
and year  Assent  Commencement  Application, 
saving and 
transitional 
provisions  
Acts Interpretation 
Amendment Act 2011  46, 2011  27 June 
2011  Sch 2 (items  905–907) 
and Sch  3 (items  10, 11): 
27 Dec 2011  (s 2(1) 
items  7, 12)  Sch 3 (items  10, 
11) 
Intellectual Property 
Laws Amendment 
(Raising the Bar) Act 
2012  35, 2012  15 Apr 
2012  Sch 1, Sch  3 (items  1–
16, 32(1) –(6), 33), Sch  4 
(items  1–36) and Sch  6 
(items  23–86, 88 –103, 
133, 134): 15 Apr 2013  
(s 2(1) items  2, 4, 5, 7)  
Sch 2 and Sch  6 
(item  87): 16  Apr 2012  
(s 2(1) items  3, 6) Sch 1 (items  55, 
56), Sch 2 
(item  2), Sch 3 
(items  32(1) –(6), 
33) and Sch 6 
(items  133, 134)  
Statute Law Revision 
Act 2013  103, 2013  29 June 
2013  Sch 4 (item s 17, 18): 
29 June 2013 (s 2(1) 
item 16) — 
Statute Law Revision 
Act (No.  1) 2014  31, 2014  27 May 
2014  Sch 1 (items  53, 54): 
24 June 2014  (s 2(1) 
item 2) — 
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Endnotes  
 
 
Endnote 3 —Legislation history  
 
224 Patents Act 1990   
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 Act Number 
and year  Assent  Commencement  Application, 
saving and 
transitional 
provisions  
Intellectual Property 
Laws Amendment Act 
2015  8, 2015  25 Feb 
2015  Sch 1  and Sch 5 
(items  9–17, 19 –21): 
25 Aug 2015  (s 2(1) 
items 2, 8, 10 ) 
Sch 2: 23 Jan 2017 
(s 2(1) item  3) 
Sch 4 (items  5–58, 81 –
83): 24 Feb 2017  (s 2(1) 
item 5) 
Sch 5 (items  5, 7): 
26 Feb 2015  (s 2(1) 
item 6) 
Sch 5 (item s 8, 18): 15 
Apr 2013 (s 2(1) items  7, 
9) 
Sch 5 (item  22): 25 Feb 
2015  (s 2(1) item  11) Sch 1 (item  36), 
Sch 4 (items  81–
83) and Sch 5 
(item s 7, 22) 
Norfolk Island 
Legislation Amendment 
Act 2015  59, 2015  26 May 
2015  Sch 2 (item  298): 1  July 
2016 (s 2(1) item  5) 
Sch 2 (items  356–396): 
18 June 2015 (s  2(1) 
item 6) Sch 2 (items  356–
396) 
as amended by      
Territories Legislation 
Amendment Act 2016  33, 2016  23 Mar 
2016  Sch 2: 24 Mar 2016 
(s 2(1) item  2) — 
Acts and Instruments 
(Framework Reform) 
(Consequential 
Provisions) Act 2015  126, 2015  10 Sept 
2015  Sch 1 (items  472–474): 5 
Mar 2016 (s 2(1) item  2) 
Sch 1 (item  673): 24 Feb 
2017  (s 2(1) item  3) — 
Statute Law Revision 
Act (No.  1) 2016  4, 2016  11 Feb 
2016  Sch 4 (items  1, 228) : 10 
Mar 2016 (s 2(1) item  6) — 
Statute Update Act 2016  61, 2016  23 Sept 
2016  Sch 1 (item  361): 21 Oct 
2016 (s 2(1) item  1) — 
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Endnotes  
 
 
Endnote 3 —Legislation history  
 
 Patents Act 1990  225 
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 Act Number 
and year  Assent  Commencement  Application, 
saving and 
transitional 
provisions  
Intellectual Property 
Laws Amendment 
(Productivity 
Commission Response 
Part 1 and Other 
Measures) Act 2018  77, 2018  24 Aug 
2018  Sch 1 (item  47) and Sch 
2 (items  154–156, 16 1–
163, 238, 239, 242, 307, 
308, 312, 323 –336, 351): 
25 Aug 2018 (s 2 (1) 
items  4, 7, 9 , 11) 
Sch 2 (items  34–42, 111, 
121–128, 151, 180–194, 
200, 209 ): 24 Feb 2019  
(s 2(1) item s 6, 8) Sch 2 (items  111, 
151, 156, 194, 
209, 242, 312)  
 
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Endnotes  
 
 
Endnote 4 —Amendment his tory 
 
226 Patents Act 1990   
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 Endnote 4 —Amendment history  
 
Provision affected  How affected  
Chapter  1  
s 3 ................................ ..................   am No 108 , 1994; No  154, 1994; No  100, 1998; No  140, 2000; 
No 48, 2003; No  131, 2009 ; No 35, 2012 ; No 8, 2015 ; No 77, 2018  
s 4 ................................ ..................   rs No 140, 2000  
 rep No  35, 2012  
s 6 ................................ ..................   am No  100, 1998  
s 7 ................................ ..................   am No  140, 2000; No  160, 2001 ; No 46, 2011; No 35, 2012  
s 7A ................................ ...............   ad No  35, 2012  
s 8 ................................ ..................   rep No  35, 2012  
s 9 ................................ ..................   am No  35, 2012  
s 10 ................................ ................   am No  35, 2012  
s 11 ................................ ................   am No 59, 2015  
s 12A ................................ .............   ad No  140, 2001  
Chapter  2  
Part  3  
Division  1  
s 18 ................................ ................   am No  140, 2000  
s 20 ................................ ................   am No 8, 2015 ; No 77, 2018  
Division  2  
s 22A  ................................ .............   ad No  35, 2012  
s 24 ................................ ................   am No  140, 2000; No  8, 2010; No  35, 2012, No 8, 2015  
s 26 ................................ ................   am No  35, 2012  
Division  3  
s 27 ................................ ................   am No 77, 2018  
s 28 ................................ ................   rs No 140, 2000  
 am No 77, 2018  
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Endnotes  
 
 
Endnote 4 —Amendment history  
 
 Patents Act 1990  227 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
Chapter  3  
Part  1  
Division  1  
s 29 ................................ ................   am No  35, 2012 ; No 77, 2018  
s 29A  ................................ .............   ad No  35, 2012  
 am No 8, 2015 ; No 77, 2018  
s 29B  ................................ .............   ad No  35, 2012  
 am No 8, 2015 ; No 126, 2015  
s 30 ................................ ................   am No  35, 2012  
s 32 ................................ ................   am No  35, 2012  
s 33 ................................ ................   rs No  140, 2000  
s 34 ................................ ................   rs No  140, 2000  
s 35 ................................ ................   am No  140, 2000; No  35, 2012  
s 36 ................................ ................   rs No  140, 2000  
 am No  35, 2012; No  31, 2014  
s 38 ................................ ................   am No  35, 2012  
s 39 ................................ ................   rep No  140, 2000  
Division  2  
s 40 ................................ ................   am No  140, 2000; No  106, 2006; No  35, 2012 ; No 8, 2015 ; No 77,  
2018  
s 41 ................................ ................   am No 8, 2015  
Division  3  
s 43 ................................ ................   am No  140, 2000; No  35, 2012 ; No 8, 2015  
s 43AA  ................................ ..........   ad No  35, 2012  
Part  2  
Part 2 heading ................................   rs No  140, 2000  
Division  1A  
Division  1A ................................ ...  ad No  35, 2012  
s 43A  ................................ .............   ad No  35, 2012  
Division  1  
s 45 ................................ ................   am No  140, 2000;  No 160, 2001; No  48, 2003; No  35, 2012  
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Endnotes  
 
 
Endnote 4 —Amendment history  
 
228 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
s 46 ................................ ................   rep No  35, 2012  
Division  2 ................................ ......  rep No  35, 2012  
s 47 ................................ ................   rep No  35, 2012  
s 48 ................................ ................   am No  140, 2000; No  160, 2001  
 rep No  35, 2012  
Part  3  
Division  1  
Division  1 heading  ........................   ad No  140, 2000  
s 49 ................................ ................   am No  140, 2000; No 160, 2001; No  35, 2012 ; No 77, 2018  
s 49A  ................................ .............   ad No  35, 2012  
s 50 ................................ ................   rs No  140, 2000  
s 50A  ................................ .............   ad No  35, 2012  
s 51 ................................ ................   rs No  140, 2000  
 am No  35, 2012  
Division  2  
Division  2 heading  ........................   ad No  140, 2000  
s 52 ................................ ................   rs No  140, 2000  
 am No  35, 2012  
Chapter  4  
s 53 ................................ ................   rs No  35, 2012  
s 54 ................................ ................   am No  140, 2000  
s 55 ................................ ................   am No  140, 2000; No  35, 2012  
s 56 ................................ ................   am No  66, 1991  
s 56A  ................................ .............   ad No  35, 2012  
s 57 ................................ ................   am No  140, 2000; No  35, 2012; No  31, 2014  
Chapter  5  
Chapter  5 heading  .........................   rs No  140, 2000  
s 59 ................................ ................   am No  140, 2000; No  120, 2004  
s 60 ................................ ................   am No  35, 2012  
Authorised Version C2019C00088 registered 25/02/2019 
Endnotes  
 
 
Endnote 4 —Amendment history  
 
 Patents Act 1990  229 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
Chapter  6  
Part  1  
s 61 ................................ ................   am No  160, 2001; No  35, 2012  
s 62 ................................ ................   rs No  140, 2000  
 am No  35, 2012  
s 64 ................................ ................   am No  140, 2000  
s 66 ................................ ................   am No  140, 2000  
 rep No  35, 2012  
Part  2  
s 67 ................................ ................   am No  154, 1994  
s 68 ................................ ................   rs No  140, 2000  
Part  3  
Part 3 heading ................................   rs No  140, 2000  
Division  1 heading  ........................   rep No  154, 1994  
 ad No  100, 1998  
 rep No  140, 2000  
Division  1 ................................ ......  rep No  140, 2000  
s 69 ................................ ................   rep No  140, 2000  
Division  2 heading  ........................   rep No  140, 2000  
Division  2 ................................ ......  rep No  154, 1994  
 ad No  100, 1998  
s 70 ................................ ................   rep No 154, 1994  
 ad No  100, 1998  
 am No  100, 2005: No  5, 2011; No 8, 2015  
s 71 ................................ ................   rep No  154, 1994  
 ad No  100, 1998  
 am No 8, 2015  
s 72 ................................ ................   rep No  154, 1994  
 ad No  100, 1998  
s 73 ................................ ................   rep No  154, 1994  
 ad No  100, 1998  
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Endnotes  
 
 
Endnote 4 —Amendment history  
 
230 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
s 74 ................................ ................   rep No  154, 1994  
 ad No  100, 1998  
 am No  35, 2012 ; No 77, 2018  
s 75 ................................ ................   rep No  154, 1994  
 ad No  100, 1998  
s 76 ................................ ................   rep No  154, 1994  
 ad No  100, 1998  
 am No 77, 2018  
s 76A  ................................ .............   ad No  100, 1998  
 rep No 77, 2018  
s 77 ................................ ................   rep No  154, 1994  
 ad No  100, 1998  
s 78 ................................ ................   rep No  154, 1994  
 ad No  100, 1998  
 am No  106, 2006  
s 79 ................................ ................   rep No  154, 1994  
 ad No  100, 1998  
s 79A  ................................ .............   ad No  100, 1998  
 am No  100, 2005  
Chapter  6A  
Chapter  6A ................................ ....  ad No  140, 2000  
s 79B  ................................ .............   ad No  140, 2000  
 rs No  35, 2012  
s 79C  ................................ .............   ad No  140, 2000  
 am No  106, 2006; No  35, 2012  
Chapter  7  
s 80 ................................ ................   rs No  140, 2000  
s 81 ................................ ................   am No  35, 2012  
s 83 ................................ ................   am No  154, 1994  
 rs No  100, 1998  
 am No  100, 2005  
Authorised Version C2019C00088 registered 25/02/2019 
Endnotes  
 
 
Endnote 4 —Amendment history  
 
 Patents Act 1990  231 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
s 84 ................................ ................   rep No  154, 1994  
Chapter  8 ................................ .......  rep No  35, 2012  
s 88 ................................ ................   am No  140, 2000  
 rep No  35, 2012  
s 89 ................................ ................   am No  140, 2000  
 rep No  35, 2012  
s 90 ................................ ................   rep No  35, 2012  
s 91 ................................ ................   rep No  35, 2012  
s 92 ................................ ................   rep No  35, 2012  
s 93 ................................ ................   rep No  35, 2012  
s 94 ................................ ................   rep No  35, 2012  
s 95 ................................ ................   rep No  35, 2012  
s 96 ................................ ................   rep No  35, 2012  
Chapter  9  
Chapter  9 heading  .........................   rs No  140, 2000  
s 96A  ................................ .............   ad No  140, 2000  
s 97 ................................ ................   am No  66, 1991; No  160, 2001; No 35, 2012  
s 98 ................................ ................   am No  140, 2000; No  160, 2001  
 rs No  35, 2012  
s 99 ................................ ................   am No  140, 2000  
s 100  ................................ ..............   am No  66, 1991  
s 100A  ................................ ...........   ad No  160, 2001  
 am No  35, 2012  
s 101  ................................ ..............   am No  66, 1991; No  160, 2001; No  35, 2012  
Chapter  9A  
Chapter  9A ................................ ....  ad No  140, 2000  
Part  1  
s 101A  ................................ ...........   ad No  140, 2000  
s 101B  ................................ ...........   ad No  140, 2000  
 am No  160, 2001  
 rs No  35, 2012  
Authorised Version C2019C00088 registered 25/02/2019 
Endnotes  
 
 
Endnote 4 —Amendment history  
 
232 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
s 101C  ................................ ...........   ad No  140, 2000  
s 101D  ................................ ...........   ad No  140, 2000  
 rs No  160, 2001; No  48, 2003  
 rep No  35, 2012  
s 101E  ................................ ...........   ad No  140, 2000  
 am No  160, 2001 ; No 8, 2015  
 rs No  35, 2012  
 am No 77, 2018  
s 101EA  ................................ .........   ad No  35, 2012  
s 101F  ................................ ............   ad No  140, 2000  
 am No  35, 2012  
Part  2  
s 101G  ................................ ...........   ad No  140, 2000  
 am No  160, 2001; No  35, 2012  
s 101H  ................................ ...........   ad No  140, 2000  
s 101J  ................................ ............   ad No  140, 2000  
 am No  35, 2012  
s 101K  ................................ ...........   ad No  140, 2000  
s 101L  ................................ ...........   ad No 140, 2000  
Part  3  
s 101M  ................................ ..........   ad No  140, 2000  
 rs No  35, 2012  
s 101N  ................................ ...........   ad No  140, 2000  
 am No  35, 2012  
s 101P  ................................ ............   ad No  140, 2000  
Chapter  10  
Part  1  
s 102  ................................ ..............   am No  140, 2000; No  160, 2001; No  35, 2012  
s 103  ................................ ..............   am No  35, 2012  
Part  2  
s 104  ................................ ..............   am No  120, 2004  
Authorised Version C2019C00088 registered 25/02/2019 
Endnotes  
 
 
Endnote 4 —Amendment history  
 
 Patents Act 1990  233 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
s 105  ................................ ..............   am No  35, 2012  
s 106  ................................ ..............   am No  140, 2000; No  35, 2012  
s 107  ................................ ..............   am No  140, 2000; No  35, 2012  
s 108  ................................ ..............   rep No  140, 2000  
s 109  ................................ ..............   am No  140, 2000  
Part  3  
s 111  ................................ ..............   rep No  140, 2000  
s 112A  ................................ ...........   ad No  35, 2012  
s 114  ................................ ..............   am No  140, 2000  
 rs No  35, 2012  
s 114A  ................................ ...........   ad No  140, 2000  
 am No  35, 2012  
Chapter  11  
Part  1  
s 119  ................................ ..............   am No  160, 2001  
 rs No  106, 2006  
 am No 8, 2015  
s 119A  ................................ ...........   ad No  106, 2006  
s 119B  ................................ ...........   ad No  35, 2012  
s 119C  ................................ ...........   ad No  35, 2012  
s 120  ................................ ..............   am No  140, 2000  
s 121A  ................................ ...........   ad No  154, 1994  
s 122  ................................ ..............   am No 106, 2006  
Part  2  
s 125  ................................ ..............   rs No  35, 2012  
s 126  ................................ ..............   am No  140, 2000  
 rs No  35, 2012  
s 127  ................................ ..............   rs No  35, 2012  
Part  3  
s 128  ................................ ..............   am No 77, 2018  
s 129  ................................ ..............   rs No  140, 2000  
Authorised Version C2019C00088 registered 25/02/2019 
Endnotes  
 
 
Endnote 4 —Amendment history  
 
234 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
s 129A  ................................ ...........   ad No  140, 2000  
s 130  ................................ ..............   am No  140, 2000  
s 132  ................................ ..............   am No  35, 2012  
Chapter  12  
Part  1  
Part 1 ................................ .............   ad No 8, 2015  
s 132A  ................................ ...........   ad No 8, 2015  
Part  2  
Part 2 heading ................................   ad No 8, 2015  
s 132B  ................................ ...........   ad No 8, 2015  
s 133  ................................ ..............   am No  154, 1994; No  140, 2000; No  106, 2006; No  103, 2010; No 8, 
2015  
s 134  ................................ ..............   am No  140, 2000; No  106, 2006; No  103, 2010; No 8, 2015  
s 135 ................................ ..............   am No  35, 2012  
s 136A  ................................ ...........   ad No  106, 2006  
Part  3  
Part 3 ................................ .............   ad No 8, 2015  
Division  1  
Division  1 ................................ ......  ad No 8, 2015  
s 136B  ................................ ...........   ad No 8, 2015  
s 136C  ................................ ...........   ad No 8, 2015  
Division  2  
Division  2 ................................ ......  ad No 8, 2015  
s 136D  ................................ ...........   ad No 8, 2015  
s 136E  ................................ ...........   ad No 8, 2015  
 am No 126, 2015  
s 136F  ................................ ............   ad No 8, 2015  
s 136G  ................................ ...........   ad No 8, 2015  
s 136H  ................................ ...........   ad No 8, 2015  
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Endnotes  
 
 
Endnote 4 —Amendment history  
 
 Patents Act 1990  235 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
Division  3  
Division  3 ................................ ......  ad No 8, 2015  
s 136J  ................................ ............   ad No 8, 2015  
Division  4  
Division  4 ................................ ......  ad No 8, 2015  
s 136K  ................................ ...........   ad No 8, 2015  
s 136L  ................................ ...........   ad No 8, 2015  
s 136M  ................................ ..........   ad No 8, 2015  
Part  4  
Part 4 heading ................................   ad No 8, 2015  
s 136N  ................................ ...........   ad No 8, 2015  
s 137  ................................ ..............   am No 8, 2015  
s 138  ................................ ..............   am No  140, 2000; No  120, 2004; No  35, 2012  
Part  5  
Part 5 heading ................................   ad No 8, 2015  
s 138A  ................................ ...........   ad No 8, 2015  
s 139  ................................ ..............   am No 8, 2015  
Chapter  13  
s 141  ................................ ..............   rs No  140, 2000  
 am No  35, 2012  
s 142  ................................ ..............   am No  140, 2000; No  160, 2001; No  35, 2012  
s 143A  ................................ ...........   ad No  140, 2000  
 am No  160, 2001; No  35, 2012  
s 143B  ................................ ...........   ad No  160, 2001  
Chapter  14  
s 144  ................................ ..............   am No  140, 2000  
Chapter  15  
s 150  ................................ ..............   am No  35, 2012  
s 151  ................................ ..............   am No  140, 2000; No  35, 2012 ; No 77, 2018  
s 153  ................................ ..............   am No  140, 2000  
Authorised Version C2019C00088 registered 25/02/2019 
Endnotes  
 
 
Endnote 4 —Amendment history  
 
236 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
Chapter  17  
Part  2  
s 163  ................................ ..............   am No  154, 1994  
s 165  ................................ ..............   am No  154, 1994  
s 165A  ................................ ...........   ad No  154, 1994  
s 169  ................................ ..............   am No  140, 2000  
Part  4  
s 174  ................................ ..............   am No  140, 2000  
s 176  ................................ ..............   am No  140, 2000 ; No 77, 2018  
Chapter  18  
s 177  ................................ ..............   am No 35, 2012 ; No 4, 2016  
s 178  ................................ ..............   am No  140, 2000; No  35, 2012; No 8, 2015  
s 179  ................................ ..............   am No  140, 2001  
 rep No  35, 2012  
s 180  ................................ ..............   am No  140, 2001  
 rep No  35, 2012  
s 181  ................................ ..............   am No  140, 2001  
 rep No  35, 2012  
s 182  ................................ ..............   am No  35, 2012  
s 183  ................................ ..............   am No  35, 2012; No 8, 2015 ; No 77, 2018  
s 185  ................................ ..............   rs No  100, 1998  
Chapter  19  
s 186  ................................ ..............   am No  140, 2000  
s 187  ................................ ..............   rs No  140, 2000  
s 189  ................................ ..............   am No  131, 2009  
s 191  ................................ ..............   am No  140, 2001  
s 191A  ................................ ...........   ad No  35, 2012; No 8, 2015  
s 195 ................................ ..............   am No  131, 2009  
s 196 ................................ ..............   am No  131, 2009  
s 197AA  ................................ ........   ad No  35, 2012  
Authorised Version C2019C00088 registered 25/02/2019 
Endnotes  
 
 
Endnote 4 —Amendment histor y 
 
 Patents Act 1990  237 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
Chapter  20  
Part  1  
s 198  ................................ ..............   rs No  100, 1998  
 am No  35, 2012; No 8, 2015  
s 199  ................................ ..............   am No 8, 2015  
s 200  ................................ ..............   am No  100, 1998; No  35, 2012  
s 200A  ................................ ...........   ad No  100, 1998  
 rs No  146, 1999  
 am No  5, 2011  
Part  2  
s 201  ................................ ..............   am No  100, 1998; No  55, 2001  
 rs No  35, 2012  
s 201A  ................................ ...........   ad No  35, 2012  
s 201B  ................................ ...........   ad No  35, 2012  
s 202  ................................ ..............   am No  35, 2012  
s 202A  ................................ ...........   ad No  100, 1998  
s 202B  ................................ ...........   ad No  35, 2012  
s 203  ................................ ..............   rs No  35, 2012  
s 204  ................................ ..............   am No  100, 1998; No  140, 2000 ; No 77, 2018  
Chapter  21  
s 205  ................................ ..............   am No  35, 2012  
s 207 ................................ ..............   am No  58, 1994  
s 208 ................................ ..............   am No  58, 1994  
s 209  ................................ ..............   am No  58, 1994; No 8, 2015 ; No 77, 2018  
s 210  ................................ ..............   am No  35, 2012  
s 210A  ................................ ...........   ad No  35, 2012  
Chapter  22  
s 213  ................................ ..............   am No  100, 1998  
s 214  ................................ ..............   rs No  35, 2012  
 am No 8, 2015 ; No 77, 2018  
 rs No 77, 2018  
Authorised Version C2019C00088 registered 25/02/2019 
Endnotes  
 
 
Endnote 4 —Amendment history  
 
238 Patents Act 1990   
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
s 214A  ................................ ...........   ad No 77, 2018  
s 214B ................................ ...........   ad No 77, 2018  
s 214C ................................ ...........   ad No 77, 2018  
s 215  ................................ ..............   am No  35, 2012  
s 220  ................................ ..............   am No  100, 1998  
s 220A  ................................ ...........   ad No 77, 2018  
s 221  ................................ ..............   am No 8, 2015 ; No 126, 2015  
s 222  ................................ ..............   am No 77, 2018  
s 222A  ................................ ...........   ad No  106, 2006  
 am No  35, 2012  
s 223  ................................ ..............   am No  66, 1991; No  154, 1994; No  140, 2000; No  160, 2001; No  48, 
2003; No  35, 2012; No 8, 2015 ; No 77, 2018  
s 223A  ................................ ...........   ad No 77, 2018  
s 224  ................................ ..............   am No  100, 1998; No  140, 2000; No  35, 2012; No 8, 2015 ; No 77, 
2018  
s 225  ................................ ..............   am No  140, 2001; No  4, 2010  
s 226  ................................ ..............   rs No 35, 2012  
s 227  ................................ ..............   am No  100, 1998; No  140, 2000; No  35, 2012; No 8, 2015 ; No 77, 
2018  
s 227AAA  ................................ .....  ad No 77, 2018  
s 227AA  ................................ ........   ad No 8, 2015  
 rep No 77, 2018  
s 227AB  ................................ ........   ad No 8, 2015  
s 227A  ................................ ...........   ad No  100, 1998  
 am No 8, 2015  
s 227B  ................................ ...........   ad No 77, 2018  
s 228  ................................ ..............   am No  140, 2000; No  35, 2012; No 8, 2015 ; No 126, 2015 ; No 61, 
2016 ; No 77, 2018  
s 229  ................................ ..............   rep No  103, 2013  
 ad No 77, 2018  
s 230  ................................ ..............   rep No  103, 2013  
Authorised Version C2019C00088 registered 25/02/2019 
Endnotes  
 
 
Endnote 4 —Amendment history  
 
 Patents Act 1990  239 
Compilation No. 43 Compilation date: 24/2/19  Registered: 25/2/19  
 Provision affected  How affected  
Chapter  23  
s 232  ................................ ..............   rep No  154, 1994  
s 233  ................................ ..............   am No  66, 1991  
Schedule  1  
Schedule  1 ................................ .....  am No  66, 1991; No 58, 1994; No 108, 1994; No 154, 1994; No  100, 
1998; No  146, 1999; No  140, 2000; No  160, 2001; No  48, 2003; 
No 106, 2006; No  131, 2009; No  96, 2010; No  46, 2011; No  35, 
2012; No 8, 2015 ; No 77, 2018  
Schedule  2 ................................ .....  rep No  103, 2013  
 
Authorised Version C2019C00088 registered 25/02/2019