Note: An electronic version of this Act is available on the Federal Register of Legislation 
(https://www.legislation.gov.au/ ) 
 
 
 
 
 
 
 
 
 
 
Intellectual Property Laws Amendment 
(Productivity Commission Response 
Part  1 and Other Measures)  Act 2018 
 
No. 77, 201 8 
 
 
 
 
 
An Act  to amend legislation relating to intellectual 
property, and for related purposes  
   
    
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  i 
 Contents  
1 Short title  ................................ ................................ ...........................  1 
2 Commencement  ................................ ................................ .................  2 
3 Schedules  ................................ ................................ ...........................  3 
Schedule  1—Responses to the Productivity Commission  4 
Part 1—Parallel importation  4 
Division  1—Amendments  4 
Copyright Act 1968  4 
Trade Marks Act 1995  4 
Division  2—Saving and application provisions  6 
Part 2—PBR in essentially derived varieties  7 
Plant Breeder’s Rights Act 1994  7 
Part 3—Period to apply for removal of trade marks from 
Register for non -use 25 
Trade Marks Act 1995  25 
Part 4—Notification of extension of standard patents relating 
to pharmaceutical substances  26 
Patents Act 1990  26 
Schedule  2—Other measures  27 
Part 1—Amending trade mark applications —non-legal persons  27 
Trade Marks Act 1995  27 
Part 2—Written requirements  28 
Division  1—Amendments  28 
Designs Act 2003  28 
Patents Act 1990  31 
Plant Breeder’s Rights Act 1994  33 
Trade Marks Act 1995  39 
Division  2—Application and saving provisions  40 
Part 3—Filing requirements  42  
 
ii Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Division  1—Amendments  42 
Designs Act 2003  42 
Patents Act 1990  45 
Plant Breeder’s Rights Act 1994  49 
Trade Marks Act 1995  51 
Division  2—Application, saving and transitional provisions  55 
Part 4—Signatures  58 
Patents Act 1990  58 
Part 5—Computerised decision -making  59 
Designs Act 2003  59 
Patents Act 1990  60 
Plant Breeder’s Rights Act 1994  62 
Trade Marks Act 1995  63 
Part 6—Addresses and service of documents  66 
Plant Breeder’s Rights Act 1994  66 
Part 7—Requirements for patent documents  68 
Patents Act 1990  68 
Part 8—Unjustified threats of infringement  72 
Division  1—Amendments  72 
Designs Act 2003  72 
Olympic Insignia Protection Act 1987  72 
Patents Act 1990  73 
Plant Breeder’s Rights Act 1994  73 
Trade Marks Act 1995  75 
Division  2—Application and saving provisions  76 
Part 9—Ownership of PBR and entries in the Register  78 
Plant Breeder’s Rights Act 1994  78 
Part 10—Trade mark oppositions  81 
Trade Marks Act 1995  81  
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  iii 
 Part 11—Further power to award damages under the Plant 
Breeder’s Rights Act  82 
Plant Breeder’s Rights Act 1994  82 
Part 12—Exclusive licensees in the Plant Breeder’s Rights Act  84 
Plant Breeder’s Rights Act 1994  84 
Part 13—Publishing personal information of registered patent 
or trade marks attorneys  87 
Division  1—Amendments  87 
Patents Act 1990  87 
Trade Marks Act 1995  88 
Division  2—Application provisions  89 
Part 14—Secretary’s role in the Plant Breeder’s Rights Act  90 
Plant Breeder’s Rights Act 1994  90 
Part 15—Seizure notices  96 
Division  1—Amendments  96 
Copyright Act 1968  96 
Olympic Insignia Protection Act 1987  96 
Trade Marks Act 1995  97 
Division  2—Application provisions  97 
Part 16—Prosecutions  99 
Division  1—Amendments  99 
Patents Act 1990  99 
Trade Marks Act 1995  99 
Division  2—Application provision  99 
Part 17—Updating references to Designs Act  100 
Olympic Insignia Protection Act 1987  100 
Part 18—Removing certain references to New Zealand  102 
Patents Act 1990  102 
Part 19—International Convention for the Protection of New 
Varieties of Plants  104  
 
iv Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Plant Breeder’s Rights Act 1994  104 
Part 20—Other amendments  107 
Patents Act 1990  107 
Plant Breeder’s Rights Act 1994  107 
Part 21—Repeals of Acts  108 
Patents Amendment (Patent Cooperation Treaty) Act 1979  108 
  
 
No. 77, 2018  Intellectual Property Laws A mendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  1 
 
 
 
 
Intellectual Property Laws Amendment 
(Productivity Commission Response Part 
1 and Other Measures) Act 2018  
No. 77, 2018  
  
 
An Act  to amend legislation relating to intellectual 
property, and for related purposes  
[Assented to 24 August  2018 ] 
The Parliament of Australia enacts:  
1  Short title  
  This Act is the  Intellectual Property Laws Amendment 
(Productivity Commission Response Part  1 and Other Measures)  
Act 201 8.    
   
 
 
2 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 2  Commencement  
 (1) Each provision of this Act specified in column 1 of  the table 
commences, or is taken to have commenced, in accordance with 
column 2 of the table. Any other statement in column 2 has effect 
according to its terms.  
 
Commencement information  
Column 1  Column 2  Column 3  
Provisions  Commencement  Date/Details  
1.  Sections  1 to 3 
and anything in 
this Act not 
elsewhere covered 
by this table  The day this Act receives the Royal Assent.  24 August 2018  
2.  Schedule  1, 
Part 1 The day after this Act receives the Royal 
Assent.  25 August 2018  
3.  Schedule  1, 
Parts  2 and 3  A single day to be fixed by Proclamation.  
However, if the provisions do not commence 
within the period of 6 months beginning on 
the day this Act receives the Royal Assent, 
they commence on the day after the end of 
that period.  24 February 
2019  
4.  Schedule  1, 
Part 4 The day after this Act receives the Royal 
Assent.  25 August 2018  
5.  Schedule  2, 
Part 1 The day after this Act receives the Royal 
Assent.  25 August 2018  
6.  Schedule  2, 
Parts  2 and 3  At the same time as the provisions covered 
by table i tem 3. 24 February 
2019  
7.  Schedule  2, 
Parts  4 and 5  The day after this Act receives the Royal 
Assent.  25 August 2018  
8.  Schedule  2, 
Parts  6 to 12  At the same time as the provisions covered 
by table item  3. 24 February 
2019  
9.  Schedule  2, 
Part 13 The day after this Act receives the Royal 
Assent.  25 August 2018  
10.  Schedule  2, 
Part 14 At the same time as the provisions covered 
by table item  3. 24 February 
2019     
   
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  3 
 Commencement information  
Column 1  Column 2  Column 3  
Provisions  Commencement  Date/Details  
11.  Schedule  2, 
Parts  15 to 21  The day after this Act receives the Royal 
Assent.  25 August 2018  
Note:  This table relates only to the provisions of this Act as originally 
enacted. It will not be amended to deal with any later amendments of 
this Act.  
 (2) Any information in column 3 of the table is not part of this Act. 
Information may be inserted in this column, or information in it 
may be edited, in any published version of this Act.  
3  Schedules  
  Legislation that is specified in a Schedule to this Act is amended or 
repealed as set out in the applicable items in the Schedule 
concerned, a nd any other item in a Schedule to this Act has effect 
according to its terms.  Schedule 1   Responses to the Productivity Commission  
Part 1   Parallel importation  
 
 
4 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Schedule  1—Responses to  the Productivity 
Commission  
Part 1—Parallel importation  
Division  1—Amendments  
Copyright Act 1968  
1  Section  198A  
Repeal the section.  
Trade Marks Act 1995  
2  After section  122 
Insert:  
122A   Exhaustion of a registered trade mark in relation to goods  
 (1) In spite of section  120, a person who uses a registered trade mark 
in relation to goods does not infringe the trade mark if:  
 (a) the goods are similar to goods in respect of which the trade 
mark is registered; and  
 (b) before the time of use, the person had made reasonable 
inquiries in relation to the trade mark; and  
 (c) at the time of use, a reasonable person, after making those 
inquiries, would have conc luded that the trade mark had been 
applied to, or in relation to, the goods by, or with the consent 
of, a person (a  relevant person ) who was, at the time of the 
application or consent (as the case may be):  
 (i) the registered owner of the trade mark; or  
 (ii) an authorised user  of the trade mark; or  
 (iii) a person permitted to use the trade mark by the 
registered owner; or  
 (iv) a person permitted to use the trade mark by an 
authorised user who has power to give such permission 
under paragraph  26(1)(f); or  Responses to the Productivity Commission   Schedule 1  
Parallel importation   Part 1  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  5 
  (v) a person with significant influence over the use of the 
trade mark by the registered owner or an authorised 
user; or  
 (vi) an associated entity (within the meaning of the 
Corporations Act 2001 ) of a relevant person mentioned 
in subparagraph  (i), (ii) , (iii), (iv) or (v).  
Note 1:  For goods that are similar , see subsection  14(1).  
Note 2:  For subparagraph  (c)(iv), an authorised user may, under 
paragraph  26(1)(f), subject to any agreement the authorised user has 
with the registered owner, permit another p erson to apply the trade 
mark to, or in relation to, goods in respect of which the trade mark is 
registered.  
 (2) A reference in paragraph  (1)(c) to consent to the application of a 
trade mark to, or in relation to, goods includes, without limitation, 
a reference to:  
 (a) consent subject to a condition (for example, a condition that 
the goods are to be sold only in a foreign country); and  
 (b) consent that can be reasonably inferred from the conduct of a 
relevant person.  
 (3) In determining whether a relevan t person mentioned in 
subparagraph  (1)(c)(iii) or (iv) was permitted to use the trade mark, 
disregard how that permission arose, for example:  
 (a) whether it arose directly or indirectly; or  
 (b) whether it arose by way of proprietary interest, contract, 
arrangement, understanding, a combination of those things, 
or otherwise.  
 (4) In determining whether a relevant person mentioned in 
subparagraph  (1)(c)(v) had significance influence over the use of a 
trade mark, disregard how that influence arose, for examp le: 
 (a) whether it arose directly or indirectly; or  
 (b) whether it arose by way of proprietary interest, contract, 
arrangement, understanding, a combination of those things, 
or otherwise.  
3  Section  123 (heading)  
Repeal the heading, substitute:  Schedule 1   Responses to the Productivity Commission  
Part 1   Parallel importation  
 
 
6 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 123  Services to which registered trade mark has been applied by or 
with consent of registered owner  
4  Subsection  123(1)  
Repeal the subsection.  
5  Subsection  123(2)  
Omit “(2)”.  
Division  2—Saving and a pplication provisions  
6  Saving and application provisions  
Copyright  
(1) Despite the repeal of section  198A of the Copyright Act 1968 by this 
Part, that section continues to apply in relation to proceedings begun 
under that Act before the commencement of this item.  
Trade marks  
(2) The amendments of the Trade Marks Act 1995 made by this Part apply 
in relation to an action for the infringement of a trade mark begun on or 
after the commencement of this item, even if the infringement of the 
trade mark is alleged to have occurred before that commencement.  Responses to the Productivity Commission   Schedule 1  
PBR in essentially derived varieties   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  7 
 Part 2—PBR in essentially derived varieties  
Plant Breeder ’s Rights Act 1994  
7  Subsection  3(1) 
Insert:  
commercial -in-confidence  has the meaning given by 
subsection  41B(4).  
essentially derived , in relation to a plant variety, has the meaning 
given by section  4. 
8  Subsection  3(1) (at the end of the definition of grantee ) 
Add:  
Note:  For declarations of essential derivation, see sections  40 and 41D.  
9  Subsection  3(1) 
Insert:  
hearing period  has the meaning given by subsection  41C(3).  
10  Section  4 (heading)  
Repeal the heading, substitute:  
4  Definition of essentially derived  
11  Section  4 
Omit “taken to be an essentially derived”, substitute “an essentially 
derived ”. 
12  At the end of section  4 
Add:  
Note:  For declarations of essential derivation, see sections  40 and 41D.  
13  Section  12 
Repeal the section, substitute:  Schedule 1   Responses to the Productivity Commission  
Part 2   PBR in essentially derived varieties  
 
 
8 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 12  Extension of PBR to cover essentially derived varieties  
  Subject to section  23 (exhaustion of PBR), if PBR is granted in a 
plant variety (the initial variety ), and a declaration is made that 
another plant variety is essentially derived from the initial variety, 
the right granted in the initial variety extends, with effect from the 
date of declaration, to that other plant variety.  
Note:  For declarations of essential derivation, see sections  40 and 41D.  
14  Paragraph 22(5)(b)  
Omit “under section  40”. 
15  At the end of subsection  22(5)  
Add:  
Note:  For declarations of essential derivation, see sections  40 and 41D.  
16  At the end of subsection  23(2)  
Add:  
Note:  For declarations of essential derivation  to which this subsection 
applies, see section  40. 
17  Subparagraph 34(4)(b)(ii)  
After “section  41”, insert “or 41E (both of which deal with test growing 
of essentially derived varieties)”.  
18  Section  40 (heading)  
Repeal the heading, substitute:  
40  Essential derivation for PBR -protected varieties —declaration  
19  Subsections  40(1) and (2)  
Repeal the subsection s, substitute:  
 (1) A person (an eligible person ) may make an application under 
subsection  (1A) if the person is:  
 (a) the grantee of PBR in a  plant variety; or  
 (b) an exclusive licensee of such a grantee.  Responses to the Productivity Commission   Schedule 1  
PBR in essentially deriv ed varieties   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  9 
  (1A)  An eligible person in relation to a plant variety (the initial variety ) 
may apply in writing to the Registrar for a declaration that another 
variety (the second variety ) is essentially derived from the initial 
variety if:  
 (a) another person is the grantee of, or has applied for, PBR in 
the second variety; and  
 (b) the eligible person is satisfied that the second variety is 
essentially derived from the initial variety; and  
 (c) the initi al variety has not itself been declared (under 
section  40 or 41D) to be essentially derived from another 
variety in which PBR has been granted.  
Note 1:  If the breeder of the second variety has not applied for, or been 
granted, PBR in the second variety, an  eligible person may apply 
under section  41A for a declaration that the second variety is 
essentially derived from the initial variety.  
Note 2:  If an application for PBR in the second variety is made after an 
application is made under section  41A in relati on to that variety, the 
application under section  41A may be treated as if it were an 
application under this section (see section  41F).  
 (1B) The Registrar  must notify the application under subsection  (1A) to 
each eligible person in relation to the initial  variety other than the 
applicant.  
 (1C) If an eligible person in relation to a plant variety (the initial 
variety ) applies for a declaration under subsection  (1A) in relation 
to another plant variety (the second variety ), that does not prevent 
another eli gible person in relation to the initial variety also 
applying for a declaration under that subsection in relation to the 
second variety.  
 (2) Nothing in this section implies that an eligible person in relation to 
a plant variety (the initial variety ) may n ot, in relation to an 
application by another person for PBR in another plant variety (the 
second variety ) that has been accepted but not finally determined:  
 (a) make an objection, under section  35, to the granting of PBR 
in the second variety; and  
 (b) in the alternative, if PBR is granted to another person in the 
second variety —apply under subsection  (1A) for a 
declaration that the second variety is essentially derived from 
the initial variety.  Schedule 1   Responses to the Productivity Commission  
Part 2   PBR in essentially derived varieties  
 
 
10 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 20  Subsection  40(6)  
Repeal the subsection, substitute:  
 (6) If the initial variety has itself been declared to be essentially 
derived from another variety, the Registrar must:  
 (a) refuse to declare the second variety essentially derived from 
the initial variety; and  
 (b) notify each eligible person in relation to the initial variety 
(including the applicant) of the refusal and the reasons for it.  
21  Subsection  40(9)  
Repeal the subsection, substitute:  
 (9) If the Registrar is not satisfied of that prima facie case, the 
Registrar must notify each eligible person in relation to the initial 
variety (including the applicant) that the Registrar  is not so 
satisfied, and of the reasons for not being so satisfied.  
22  Paragraph 40(10)(e)  
Repeal the paragraph, substitute:  
 (e) notify each eligible person in relation to the initial variety 
(including the applicant) of the declaration; and  
23  Paragraph 40(11)(a)  
Repeal the paragraph, substitute:  
 (a) notify each eligible person in relation to the initial variety 
(including the applicant) that he or she is so satisfied, and of  
the reasons for being so satisfied; and  
24  Subsection  40(12)  
After “a declaration”, insert “under this section”.  
25  At the end of section  40 (before the note)  
Add:  
Note 1:  Section  19 requires the grantee of PBR in a plant variety to take 
reasonable step s to ensure reasonable public access to the plant 
variety.  Responses to the Productivity Commission   Schedule 1  
PBR in essentially derived varieties   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  11 
 26  Section  40 (note)  
Omit “Note”, substitute “Note 2”.  
27  Section  41 (heading)  
Repeal the heading, substitute:  
41  Essential derivation for PBR -protected varieties —test growing  
28  Subsection  41(1) 
Repeal the subsection, substitute:  
 (1) This section applies if:  
 (a) an eligible person applies for a declaration under section  40 
in relation to a plant variety (the initial variety ) that another 
plant variety (the second variety ) is essentially deriv ed from 
the initial variety; and  
 (b) in the course of that application the applicant establishes a 
prima facie case that the second variety is essentially derived 
from the initial variety.  
 (1A)  On the basis of information supplied by the applicant and th e 
grantee of PBR in the second variety, the Registrar may decide that 
a test growing or further test growing is required to determine 
whether the prima facie case has been rebutted.  
Note:  A decision to require a test growing is reviewable by the AAT under 
section  77. 
 (1B) The Registrar must notify the decision to each of the following:  
 (a) the applicant;  
 (b) the grantee of PBR in the second variety.  
29  Paragraph 41(2)(a)  
Omit “grantee of PBR in the initial variety”, substitute “applicant”.  
30  Subsection  41(5)  
After “further test growing”, insert “under this section”.  
31  At the end of Part  3 
Add:  Schedule 1   Responses to the Product ivity Commission  
Part 2   PBR in essentially derived varieties  
 
 
12 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 41A  Essential derivation for non -PBR -protected second varieties —
application for declaration  
Circumstances in which application may be made  
 (1) A person (an eligible person ) may make an application under 
subsection  (2) if the person is:  
 (a) the grantee of PBR in a plant variety; or  
 (b) an exclusive licensee of such a grantee.  
 (2) An eligible person in relation to a plant variety (the initial va riety) 
may apply in writing to the Registrar for a declaration under 
section  41D that another variety (the second variety ) is essentially 
derived from the initial variety if:  
 (a) PBR has not been applied for, or granted, in the second 
variety; and  
 (b) the eligible person is satisfied that the second variety is 
essentially derived from the initial variety; and  
 (c) the initial variety has not itself been declared (under 
section  40 or 41D) to be essentially derived from another 
variety in which PBR has been  granted.  
Content of application  
 (3) The application must:  
 (a) be in the approved form; and  
 (b) be accompanied by such fee (if any) as is prescribed by the 
regulations in respect of the application.  
 (4) Without limiting what the approved form may requi re, the 
application must contain:  
 (a) such information as is required by the form that is relevant to 
establishing, on the balance of probabilities, that the second 
variety is:  
 (i) essentially derived from the initial variety; and  
 (ii) a registrable pla nt variety within the meaning of 
section  43; and  
 (b) either:  
 (i) such information as is required by the form that is 
necessary to enable the Registrar to notify the Responses to the Productivity Commission   Schedule 1  
PBR in essentially derived varieties   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  13 
 application to the person (or persons) the applicant 
reasonably believes to be the breede r of the second 
variety; or  
 (ii) evidence that the applicant cannot comply with 
subparagraph  (i), despite taking reasonable steps to 
obtain the information mentioned in that subparagraph.  
 (5) The Registrar must refuse to consider the application if satisfied 
that the applicant has failed to comply with subparagraph  (4)(b)(i), 
unless the Registrar is satisfied that the applicant, after taking 
reasonable steps to obtain the information mentioned in that 
subparagraph, cannot do so.  
 Note:  A decision under this subsection is reviewable by the AAT under 
section  77. 
Notifying other eligible persons and the breeder of the second 
variety  
 (6) The Registrar  must notify an application to:  
 (a) each eligib le person in relation to the initial variety other than 
the applicant; and  
 (b) if the application includes sufficient information for the 
Registrar to do so —the person (or persons) the applicant 
reasonably believes to be the breeder of the second variety.  
 (7) The notification of the application must include a statement to the 
effect that the application has been, or will be, published in the 
Plant Varieties Journal under subsection  41B(1).  
Multiple applications  
 (8) If an eligible person in relation to a plant variety (the initial 
variety ) applies for a declaration under subsection  (2) in relation to 
another plant variety (the second variety ), that does not prevent 
another eligible person in relation to the initial variety also 
applying for a declaration u nder that subsection in relation to the 
second variety.  Schedule 1   Responses to the Productivity Commission  
Part 2   PBR in essentially derived varieties  
 
 
14 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 41B  Essential derivation for non -PBR -protected varieties —
publication of applications  
 (1) As soon as practicable after an application under section  41A is 
made, the Registrar must publish a notificat ion of the application in 
the Plant Varieties Journal  including information about the 
applicant and the application, and any related information, 
prescribed by the regulations.  
 (2) At any time or times before making a decision on the application, 
the Regi strar may publish further notification of the application in 
the Plant Varieties Journal , including information (or updated 
information) about the matters prescribed by regulations made for 
the purposes of subsection  (1). 
 (3) However, the Registrar must n ot publish any information in a 
notification under subsection  (1) or (2) if the Registrar is satisfied 
that the information is commercial -in-confidence.  
Note:  A decision not to publish information for this reason is reviewable by 
the AAT under section  77. 
 (4) Information is commercial -in-confidence  if the applicant 
demonstrates to the Registrar that:  
 (a) release of the information would cause competitive detriment 
to the applicant; and  
 (b) the information is not in the public domain; and  
 (c) the informa tion is not required to be disclosed under another 
Australian law; and  
 (d) the information is not readily discoverable.  
 (5) However, this section does not apply if the Registrar refuses to 
consider an application under subsection  41A(5).  
Note:  Subsection  41A(5) requires the Registrar to refuse to consider an 
application if the applicant does not include sufficient information to 
enable the person (or persons) the applicant reasonably believes to be 
the breeder of the second variety to be notified, unless the Registrar is 
satisfied that the applicant took reasonable steps to obtain such 
information.  Responses to the Productivity Commission   Schedule 1  
PBR in essentially derived varieties   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  15 
 41C  Essential derivation for non -PBR -protected varieties —
opportunity to be heard  
Opportunity to be heard for interested persons  
 (1) Before making a decision i n relation to an application under 
section  41A for a declaration under section  41D that a plant variety 
(the second variety ) is essentially derived from another plant 
variety, the Registrar must give an opportunity to be heard under 
this section to the following persons (each of whom is an 
interested person ): 
 (a) a person notified under paragraph  41A(6)(b);  
 (b) another perso n who claims to have an interest in the second 
variety.  
Note:  Paragraph 41A(6)(b) provides for the Registrar to notify a person (or 
persons) the applicant reasonably believes to be the breeder of the 
second variety.  
 (2) Subsection  (1) only applies if the interested person gives the 
Registrar an address for service in Australia or New Zealand within 
the hearing period.  
 (3) The hearing period  is the period of 2 months after:  
 (a) if the Registrar notifies the application to a person (or 
persons) under parag raph 41A(6)(b) —the later of the 
following days:  
 (i) the day the application is notified;  
 (ii) the day notification of the application is last published 
in the Plant Varieties Journal ; or 
 (b) if the Registrar does not notify the application to a person ( or 
persons) under paragraph  41A(6)(b) —the day notification of 
the application is last published in the Plant Varieties 
Journal . 
Note:  The hearing period is the minimum period for considering the 
application (see sub section  41D(5)).  
Information given in acc ordance with the opportunity to be heard  
 (4) For the purposes of section  41D, information is given by an 
interested person in accordance with the person’s opportunity to be Schedule 1   Responses to the Productivity Commission  
Part 2   PBR in ess entially derived varieties  
 
 
16 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 heard if the information is given in accordance with regulations 
prescribed for th e purposes of this subsection.  
 (5) Regulations made for the purposes of subsection  (4) may, without 
limiting that subsection, include reasonable requirements in 
relation to the following:  
 (a) the giving of written information at the request of the 
Regist rar; 
 (b) the giving of oral information at a hearing convened by the 
Registrar;  
 (c) when, where and in what circumstances such a hearing may 
be convened;  
 (d) the practice and procedure for any such hearings, including 
provision for the Registrar to dete rmine such practice and 
procedure (whether generally or in relation to a particular 
hearing);  
 (e) the payment of any fees that are prescribed by the regulations 
in relation to the opportunity to be heard.  
Interested person declines the opportunity to be h eard 
 (6) For the purposes of section  41D, an interested person declines the 
opportunity to be heard if the person:  
 (a) gives the Registrar notice that the person does not want to be 
heard; or  
 (b) fails to give any information in accordance with the pers on’s 
opportunity to be heard under subsection  (4). 
41D  Essential derivation for non -PBR -protected varieties —
declaration  
Making the decision  
 (1) On an application under section  41A for a declaration under this 
section that a plant variety (the second vari ety) is essentially 
derived from another plant variety (the initial variety ), the 
Registrar may:  
 (a) declare in writing that the second variety is essentially 
derived from the initial variety; or  
 (b) refuse to make such a declaration.  Responses to the Productivity Commission   Schedule 1  
PBR in essentially derived varieties   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  17 
 Note 1:  A decision under this section is reviewable by the AAT under 
section  77. 
Note 2:  The Registrar must refuse to make a declaration under this section if 
the applicant fails to comply with a requirement under 
paragraph  41E(3)(a) in relation to a test growing.  
Note 3:  The Registrar must not make a decision under this section if an 
application for PBR in the second variety is made under section  24 
(see section  41F).  
 (2) The Registrar must make a declaration under subsection  (1) if, and 
only if:  
 (a) he or she is satisfi ed on the balance of probabilities that the 
second variety is:  
 (i) essentially derived from the initial variety; and  
 (ii) a registrable plant variety within the meaning of 
section  43; and  
 (b) the initial variety is not itself declared (under section  40 or 
this section) to be essentially derived from another plant 
variety.  
 (3) In deciding whether to make a declaration under subsection  (1), the 
Registrar must consider the following:  
 (a) the information in the application;  
 (b) any information given by an  interested person in accordance 
with the person’s opportunity to be heard under 
subsection  41C(4);  
 (c) any information obtained in a test growing conducted in 
accordance with section  41E; 
 (d) any other relevant information.  
 (4) For the purposes of maki ng the decision, the Registrar may draw 
an inference that is unfavourable to the interests of an interested 
person (within the meaning of section  41C) if the person, within 
the hearing period:  
 (a) does not give the Registrar an address for service for the  
purposes of subsection  41C(2); or  
 (b) declines the opportunity to be heard under subsection  41C(6).  Schedule 1   Responses to the Productivity Commission  
Part 2   PBR in essentially derived varieties  
 
 
18 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Time for making decision  
 (5) The Registrar must not make a decision in relation to the 
application before the end of the hearing period.  
Note:  For the he aring period, see subsection  41C(3).  
Notification of decision  
 (6) If the Registrar makes a decision under subsection  (1), the 
Registrar must notify the decision to the following:  
 (a) each eligible person within the meaning of section  41A 
(including the a pplicant);  
 (b) each interested person who is required to be given an 
opportunity to be heard under subsection  41C(1).  
 (7) A notification under subsection  (6) must include:  
 (a) a statement of reasons for the decision; and  
 (b) a statement to the effect that, subject to the AAT Act, 
application may be made to the AAT for review of the 
decision to which the notice relates by or on behalf of a 
person or persons whose interests are affected by the 
decision.  
Effect of declaration —reasonable public access  
 (8) While a declaration under this section that the second variety is 
essentially derived from the initial variety remains in force, 
section  19 applies in relation to the second variety as if the 
reference in subsection  19(4) to 2 years after the grant of PBR  were 
a reference to 2 years after the declaration was made.  
Note:  Section  19 requires the grantee of PBR in a plant variety to take 
reasonable steps to ensure reasonable public access to the plant 
variety.  
41E  Essential derivation for non -PBR -protected v arieties —test 
growing  
 (1) For the purposes of considering an application under section  41A 
for a declaration under section  41D that a plant variety (the second 
variety ) is essentially derived from another plant variety (the initial 
variety ), the Registrar  may conduct a test growing or further test Responses to the Productiv ity Commission   Schedule 1  
PBR in essentially derived varieties   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  19 
 growing to determine whether, on the balance of probabilities, the 
second variety is:  
 (a) essentially derived from the initial variety; and  
 (b) a registrable plant variety within the meaning of section  43. 
Note : A decision under this section is reviewable by the AAT under 
section  77. 
 (2) The Registrar must notify a decision to conduct a test growing to:  
 (a) the applicant; and  
 (b) each interested person who is required to be given an 
opportunity to be heard un der subsection  41C(1).  
 (3) To enable the Registrar to arrange a test growing, the notification 
must require:  
 (a) the applicant, within a reasonable period specified in the 
notification, to supply the Registrar with sufficient plants or 
sufficient propaga ting material of plants of the initial variety, 
and with any necessary information; and  
 (b) each interested person notified under paragraph  (2)(b), within 
a reasonable period specified in the notification, to supply the 
Registrar with sufficient plants or  sufficient propagating 
material of plants of the second variety, and with any 
necessary information.  
 (4) The notification must include a statement of the effect of 
subsections  (5) to (8).  
 (5) Despite subsection  41D(2), the Registrar must, under 
paragrap h 41D(1)(b), refuse to make the declaration applied for if 
the applicant fails to comply with a requirement under 
paragraph  (3)(a) of this section.  
 (6) For the purposes of making a decision under subsection  41D(1) in 
relation to the application, the Regis trar may draw an inference that 
is unfavourable to the interests of a person notified under 
paragraph  (2)(b) of this section if the person fails to comply with a 
requirement under paragraph  (3)(b) of this section.  
 (7) After completion of the test growing,  the Registrar must ensure 
that any propagating material of a variety used in, or resulting 
from, the test growing that is capable of being transported is Schedule 1   Responses to the Productivity Commission  
Part 2   PBR in essentially derived varieties  
 
 
20 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 delivered to the person by whom propagating material of that 
variety was supplied for the purpose of the test growing.  
 (8) The applicant must pay all costs associated with the test growing.  
41F  Essential derivation for non -PBR -protected varieties —
application lodged for PBR in second variety  
Decision to treat application under section  41A as an applicati on 
under section  40 
 (1) The Registrar must decide to treat an application under section  41A 
for a declaration under section  41D that a plant variety (the second 
variety ) is essentially derived from another variety (the initial 
variety ) as an application u nder section  40 in relation to those plant 
varieties if:  
 (a) an application for PBR in a plant variety (the PBR 
application ) is made under section  24; and  
 (b) the Registrar is satisfied that the plant variety in relation to 
which the PBR application is m ade is the same as the second 
variety.  
Note:  Section  40 provides for a declaration that a plant variety (the second 
variety) is essentially derived from another plant variety (the initial 
variety) if PBR has been applied for, or granted, in relation to the  
second variety.  
Effect of decision  
 (2) If the Registrar makes a decision under subsection  (1): 
 (a) the Registrar must not make a decision under section  41D in 
relation to the application under section  41A (the original 
application ); and  
 (b) the Registrar must treat the application under section  41A as 
if it were an application (the converted application ) made 
under section  40 in relation to the initial variety and the 
second variety, subject to this section.  
Notification of decision  
 (3) The Regi strar must notify the decision to the following persons:  Responses to the Productivity Commission   Schedule 1  
PBR in essentially derived varieties   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  21 
  (a) each eligible person, within the meaning of section  41A, in 
relation to the initial variety (including the applicant under 
section  41A);  
 (b) the applicant for PBR in the second variety;  
 (c) each interested person, other than the applicant for PBR in 
the second variety, who is required to be given an 
opportunity to be heard under subsection  41C(1).  
 (4) A notification under subsection  (3) must include:  
 (a) a statement of the reasons for the d ecision, and the effect of 
this section; and  
 (b) in the case of the notification given under paragraph  (3)(a) to 
the applicant under section  41A—a statement to the effect 
that the applicant under section  41A may provide additional 
information under subsec tion (6) within 2 months after the 
date of the notification.  
 (5) The Registrar must publish notice of the decision in the Plant 
Varieties Journal . 
Relevant information  
 (6) Within 2 months after a notification of the Registrar’s decision is 
given under subsection  (3) to the applicant under section  41A, the 
applicant under section  41A may give the Registrar any 
information that would have been required or allowed under 
subsections  40(4) and (5) had the original application been made 
under section  40. 
 (7) For the purpose of making a decision under section  40 in relation 
to the converted application, the Registrar may consider the 
following:  
 (a) for the purposes of a decision under subsection  40(7):  
 (i) any information in the original application; and  
 (ii) any additional information given in accordance with 
subsection  (6) of this section;  
 (b) for the purposes of a decision under subsection  40(10) or 
(11):  
 (i) any information in relation to the original application 
given by an interested person in accordan ce with the Schedule 1   Responses to the Productivity Commission  
Part 2   PBR in essentially derived varieties  
 
 
22 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 person’s opportunity to be heard under 
subsection  41C(4); and  
 (ii) any information in relation to the original application 
obtained in a test growing conducted in accordance with 
section  41E; and  
 (iii) any information mentioned in subsection  40(10) in 
relation to the converted application, including 
information obtained in a test growing conducted in 
accordance with section  41. 
Time for making decision  
 (8) The Registrar must not make a decision in relation to the converted 
application earlier  than 2 months after the day the notification is 
given under paragraph  (3)(a) to the applicant under section  41A.  
32  Paragraph 45(3)(c)  
Repeal the paragraph, substitute:  
 (c) the other variety is declared to be essentially derived from the 
initial variety ; 
33  At the end of subsection  45(3)  
Add:  
Note:  For declarations of essential derivation, see sections  40 and 41D.  
34  Subsection  46(2)  
Omit “the Secretary makes a declaration that a variety (the derived 
variety ) is”, substitute “a variety (the derived variety ) is declared to be”.  
35  At the end of subsections  46(2) and 47(2)  
Add:  
Note:  For declarations of essential derivation, see sections  40 and 41D.  
36  Paragraph 48(2)(c)  
Omit “requesting the Secretary to make a declaration under section  40”, 
substitu te “applying for a declaration”.  Responses to the Productivity Commission   Schedule 1  
PBR in e ssentially derived varieties   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  23 
 37  At the end of subsections  48(2), 50(3) and 53(2)  
Add:  
Note:  For declarations of essential derivation, see sections  40 and 41D.  
38  At the end of subsection  75(3) (before the penalty)  
Add:  
Note:  For declarations of essen tial derivation, see sections  40 and 41D.  
39  After subparagraph  77(1)(b)(xiii)  
Insert:  
 (xiiia)  under subsection  41A(5) to refuse to consider an 
application for a declaration of essential derivation; or  
 (xiiib)  under subsection  41B(3) to publish, or not to publish, 
information in a notification under subsection  41B(1) or 
(2); or  
 (xiiic)  under subsection  41D(1) to make, or to refuse to make, 
a declaration of essential derivation; or  
 (xiiid)  under section  41E to conduct, or not to conduct, a test 
growing;  or 
40  Subparagraph 80(2)(a)(ii)  
Repeal the subparagraph, substitute:  
 (ii) fees payable in respect of the making of applications for 
declarations of essential derivation, the examination of 
those applications and the making of those declarations, 
includi ng giving interested persons the opportunity to be 
heard in relation to applications for declarations under 
section  41D; and  
41  At the end of subsection  80(2)  
Add:  
Note:  For declarations of essential derivation, see sections  40 and 41D.  
42  Application of amendments  
 The amendments of the Plant Breeder’s Rights Act 1994  made by  this 
Part apply in relation to an application for a declaration under section  40 
or 41D of that Act that a plant variety is essentially derived from Schedule 1   Responses to the Productivity Commission  
Part 2   PBR in essentially derived varieties  
 
 
24 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 another plant va riety if the application is made on or after the day this 
item commences, whether the first -mentioned variety was bred or 
derived before, on or after that commencement.  Responses to the Productivity Commission   Schedule 1  
Period to apply for removal of trade marks from Register for non -use  Part 3  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  25 
 Part 3—Period to apply for removal of trade marks 
from Register for non -use 
Trade Marks  Act 1995  
43  At the end of subsection  92(4)  
Add:  
Note 3:  For when the registration of a trade mark is taken to have effect, see 
sections  72 and 239A.  
44  Subsection  92(5)  
Omit “an application (under subsection  (1) or (3)) to obtain the removal 
of a trade mark from the Register”, substitute “a non -use application”.  
45  Section  93 
Repeal the section, substitute:  
93  Time for making application  
 (1) A non -use application on the ground mentioned in 
paragraph  92(4)(a) may be made at any time after the filing date in 
respect of the application for the registration of the trade mark.  
Note:  For filing date  see section  6. 
 (2) A non -use application on the ground mentioned in 
paragraph  92(4)(b) may only be made after a period of 3 years 
beginning from the date the particulars of the trade mark were 
entered into the Register under section  69. 
Note:  The registration of a trade mark is taken to have effect earlier than the 
date the particulars of the trade mark are entered into the Register (see 
sections  72 and 239A).  
46  Application of amendments  
 Section  93 of the Trade Marks Act 1995 , as substituted by this Part, 
applies to a non -use application in relation to a trade mark if the filing 
date in respect of the application for the registration of the trade mark is 
on or after the day this item commences.  Schedule 1   Responses to the Productivity Commission  
Part 4   Notification of extension of standard patents relating to pharmaceutical 
substances  
 
 
26 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 4—Notification of extension of standard patents 
relating to pharmaceutical substances  
Patents Act 1990  
47  Section  76A 
Repeal the section.  Other measures   Schedule 2  
Amending trade mark applications —non-legal persons   Part 1  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  27 
 Schedule  2—Other measures  
Part 1—Amending trade mark applications —
non-legal  persons  
Trade Marks Act 1995  
1  At the end of section  65 
Add:  
 (8) Without limiting subsection  (7), if the application specifies an 
applicant without legal personality, an amendment may be made 
under that subsection to change the reference to the specifie d 
applicant to a reference to a person with legal personality if that 
person can be identified as having made the application.  Schedule 2   Other measures  
Part 2   Written requirements  
 
 
28 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 2—Written requirements  
Division  1—Amendments  
Designs Act 2003  
2  Subsection  24(1)  
Omit “give a written notice to the applica nt stating”, substitute “, by 
notification to the applicant, state”.  
3  Subsections  24(2) and (3)  
Repeal the subsections, substitute:  
 (2) If a purported design application does not meet the minimum filing 
requirements, the Registrar must notify the applic ant to that effect. 
The notification must:  
 (a) identify each minimum filing requirement that has not been 
met; and  
 (b) require the applicant to file the additional information 
required within 2 months, or such other period as is 
prescribed, from the date  of the notification.  
 (3) If the minimum filing requirements are not met within the period 
under paragraph  (2)(b), the application is taken never to have been 
filed.  
4  Paragraph 33(1)(b)  
Omit “a notice”, substitute “a notification”.  
5  Subparagraph 33(1) (b)(ii)  
Omit “the notice”, substitute “the notification”.  
6  Section  41 
Omit “give a written notice to the applicant stating”, substitute “notify 
the applicant”.  
7  Paragraph 41(a)  
Before “the matters”, insert “of”.  Other measures   Schedule 2  
Written requirements   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  29 
 8  Subparagraph 41(c)(ii)  
Omit “notice”,  substitute “notification”.  
9  Section  42 (heading)  
Repeal the heading, substitute:  
42  What happens after Registrar’s notification under section  41 
10  Subsection  42(1)  
Omit “written notice”, substitute “notification”.  
11  Subsection  42(3)  
Omit “notice”, substitute “notification”.  
12  Paragraph 42(5)(b)  
Omit “notice”, substitute “notification”.  
13  Subsection  43(2)  
Omit “a notice”, substitute “a notification”.  
14  Paragraph 43(2)(b)  
Omit “notice”, substitute “notification”.  
15  Subsection  43(3)  
Omit “in wr iting of a refusal under subsection  (1) or (2). The notice 
must set out”, substitute “of a refusal under subsection  (1) or (2) and 
of”. 
16  Paragraph 52(3)(a)  
Omit “give the relevant parties a notice stating”, substitute “notify the 
relevant parties”.  
17  Subsection  57(3)  
Omit “give a written notice to the applicant stating”, substitute “notify 
the applicant”.  Schedule 2   Other measures  
Part 2   Written requirements  
 
 
30 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 18  Paragraph 57(3)(a)  
Before “the matters”, insert “of”.  
19  Subparagraph 57(3)(c)(ii)  
Omit “notice”, substitute “notification”.  
20  Section  58 (hea ding)  
Repeal the heading, substitute:  
58  What happens after Registrar’s notification under section  57 
21  Subsection  58(1)  
Omit “written notice”, substitute “notification”.  
22  Subsection  58(3)  
Omit “notice”, substitute “notification”.  
23  Paragraph 58(5)(b)  
Omit “notice”, substitute “notification”.  
24  Paragraph 59(1)(a)  
Omit “notice”, substitute “a notification”.  
25  Paragraph 59(1)(b)  
Omit “notice”, substitute “notification”.  
26  Subsection  59(2)  
Omit “in writing of a refusal under subsection  (1). The notice must set 
out”, substitute “of a refusal under subsection  (1) and of”.  
27  Subsection  66(2)  
Omit “give written notice to that effect to the registered owner of the 
design”, substitute “notify the registered owner of the design to that  
effect”.  Other measures   Schedu le 2 
Written requirements   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  31 
 28  Subsection  67(2)  
Omit “give the relevant parties a notice stating”, substitute “notify the 
relevant parties”.  
29  Paragraph 67(2)(b)  
Before “the details”, insert “of”.  
30  Paragraph 68(2)(a)  
Omit “give the relevant parties a notice stating”, substitute “notify the 
relevant parties”.  
31  Paragraph 69(3)(a)  
Omit “inform”, substitute “notify”.  
32  Paragraph 138(2)(a)  
Omit “advise”, substitute “notify”.  
33  Before section  145 
Insert:  
144D   Notifications by Registrar under this Act or regulations  
 (1) If under this Act or the regulations the Registrar 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 Registrar may so notify the person by any means of 
communication  (including by electronic mea ns). 
Note:  Section  145 deals with the service etc. of documents on a person.  
 (2) However, the notification must be by a means of communication 
such that  the content of the notification is re adily accessible so as 
to be us able for subsequent reference.  
Patents Act 1990  
34  Subsection  27(2)  
Repeal the subsection, substitute:  Schedule 2   Other measures  
Part 2   Written requirements  
 
 
32 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
  (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 
electroni c form; and  
 (b) notifying the applicant for the patent that the copy is 
available.  
35  Subsection  28(4)  
Repeal the subsection, substitute:  
Commissioner must notify patentee of notice given  
 (4) The Commissioner must:  
 (a) notify the patentee of any matter  of which 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 cop y available to the patentee in an electronic 
form; and  
 (b) notifying the patentee that the copy is available.  
36  Paragraph 49(5)(a)  
Omit “in writing”.  
37  Subsection  49(7)  
Omit “in writing”.  
38  Paragraphs 74(2)(a) and (4)(a)  
Omit “in writing”.  Other measures   Schedule 2  
Written requirements   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  33 
 39  Subsection  76(2)  
Omit “in writing”.  
40  Paragraph 101E(1)(a)  
Omit “in writing”.  
41  Subsection  101E(3)  
Repeal the subsection.  
42  After section  220 
Insert:  
220A   Notifications by Commissioner under this Act  
 (1) If under this Act the Commissioner is requ ired 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 reference to th is Act includes the regulations (see Schedule  1). 
Note 2:  Section  221 deals with the service etc. of documents on a person.  
 (2) However, the notification must be by a means of communication 
such that the content of the notification is readily accessible s o as 
to be usable for subsequent reference.  
Plant Breeder ’s Rights Act 1994  
43  Subsection  19(6)  
Omit “give the grantee”.  
44  Paragraph 19(6)(a)  
Before “a”, insert “give the grantee”.  
45  Paragraph 19(6)(b)  
Omit “a written invitation”, substitute “by notification to the grantee, 
invite the grantee”.  Schedule 2   Other measures  
Part 2   Written requirements  
 
 
34 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 46  Paragraph 19(7)(b)  
Omit “give written notice of the decision to the grantee and to the 
person making the request”, substitute “notify the grantee, and the 
person making the request, of the decision”.  
47  Subparagraph 19(9)(b)(i)  
Omit “given written notice to”, substitute “notified”.  
48  Subsection  21(3)  
Omit “give written notice to the claimant and to the person who was the 
holder before the entry was made, stating that the entry has been made”, 
substitu te “notify the claimant, and the person who was the holder 
before the entry was made, that the entry has been made”.  
49  Paragraph 21(4)(a)  
Omit “give written notice to”, substitute “notify”.  
50  Subparagraph 21(4)(a)(i)  
Omit “telling the claimant”.  
51  Subparagraph 21(4)(a)(ii)  
Omit “setting out”, substitute “of”.  
52  Paragraph 21(4)(b)  
Omit “give written notice to”, substitute “notify”.  
53  Subparagraph 21(4)(b)(i)  
Omit “setting out”, substitute “of the”.  
54  Subparagraph 21(4)(b)(ii)  
Omit “telling the cl aimant”.  
55  Subparagraph 21(4)(b)(iii)  
Omit “setting out”, substitute “of”.  Other measures   Schedule 2  
Written requirements   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  35 
 56  Paragraph 30(4)(a)  
Omit “give written notice to the applicant telling the applicant”, 
substitute “notify the applicant”.  
57  Paragraph 30(5)(a)  
Omit “give written notice to th e applicant telling the applicant”, 
substitute “notify the applicant”.  
58  Paragraph 30(5)(a)  
Omit “setting out”, substitute “of”.  
59  Subsection  32(1)  
Omit “give written notice to”, substitute “notify”.  
60  Subsection  32(1)  
Omit “telling the person”.  
61  Subsection  32(2)  
Omit “give written notice to”, substitute “notify”.  
62  Paragraph 32(2)(a)  
Omit “telling the person”.  
63  Paragraph 32(2)(b)  
Omit “setting out”, substitute “of”.  
64  Subsection  32(3)  
Omit “give written notice to”, substitute “notify”.  
65  Paragraph 32(3)(a)  
Omit “setting out”, substitute “of the”.  
66  Paragraph 32(3)(b)  
Omit “telling the applicant”.  
67  Paragraph 32(3)(c)  
Omit “setting out”, substitute “of”.  Schedule 2   Other measures  
Part 2   Written requirements  
 
 
36 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 68  Subsection  32(4)  
Omit “give written notice of”, substitute “notify”.  
69  Para graphs 37(1)(d) and (e)  
Omit “give written notice of”, substitute “notify”.  
70  Subsection  37(2)  
Omit “notice”, substitute “notification”.  
71  Subsection  37(2A)  
Omit “a notice is sent”, substitute “a notification is given”.  
72  Subsection  37(2A)  
Omit “the requirements of the notice”, substitute “the requirements of 
the notification”.  
73  Paragraph 37(2A)(a)  
Omit “of service of the notice”, substitute “the notification is given”.  
74  Subsection  37(2B)  
Omit “notice issued”, substitute “notification given”.  
75  Paragraph 37(2B)(a)  
Omit “notice”, substitute “notification”.  
76  Subsection  37(3)  
Omit “notice”, substitute “notification”.  
77  Paragraph 39(1)(b)  
Omit “notice” (wherever occurring), substitute “notification”.  
78  Subsection  39(2)  
Omit “, in writing,”.  
79  Subsection  39(2)  
Omit “notice”, substitute “notification”.  Other measures   Schedule 2  
Written requirements   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  37 
 80  Subsection  39(3)  
Omit “notice” (wherever occurring), substitute “notification”.  
81  Paragraphs 40(8)(a) and (b)  
Omit “inform”, substitute “notify”.  
82  Paragraph 40(8)(b)  
Omit “informed”, substitute “notified”.  
83  Paragraph 40(10)(f)  
Omit “by notice in writing given to”, substitute “notify”.  
84  Paragraph 40(10)(f)  
Omit “, tell that grantee of the declaration and set out”, substitute “of 
the declaration and of”.  
85  Paragraph 40(11)(b)  
Omit “by notice in writing given to”, substitute “notify”.  
86  Paragraph 40(11)(b)  
Omit “, tell that grantee”.  
87  Subsection  41(2)  
Omit “notice”, substitute “notification”.  
88  Subsection  41(5)  
Omit “subsection  40(8) has effect as if the reference in that subsection 
to 30 days after being so informed were a reference to 30 days after 
being informed”, substitute “paragraph  40(8)(b) has effect as if the 
reference in that paragraph to 30 days after being so notified were a 
reference to 30 days after being noti fied”.  
89  Subsection  44(12)  
Omit “give written notice to”, substitute “notify”.  
90  Paragraph 44(12)(a)  
Omit “telling the applicant”.  Schedule 2   Other measures  
Part 2   Written requirements  
 
 
38 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 91  Paragraph 44(12)(b)  
Omit “setting out”, substitute “of”.  
92  Paragraph 50(2)(aa)  
Omit “notice”, substitute “notificat ion”.  
93  Subsection  50(3)  
Omit “by notice given to the grantee of the right that has been revoked 
or of the right that is affected by the giving of the declaration of 
essential derivation, tell that grantee of the decision and set out the 
reasons for the revocation”, substitute “notify the decision, and the 
reasons for the decision, to the grantee of the right that has been 
revoked or to the grantee of the right that was affected by the giving of 
the declaration of essential derivation”.  
94  Subsection  50(10) 
Omit “by notice in writing to”, substitute “notify”.  
95  Subsection  50(10)  
Omit “, tell the person of the decision and set out”, substitute “of the 
decision and of”.  
96  After section  72 
Insert:  
72A  Notifications by Registrar under this Act or regulat ions 
 (1) If under this Act or the regulations the Registrar 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 Registrar may so notify the person by any means of 
communi cation (including by electronic means).  
Note:  Section  73 deals with the service etc. of documents on a person.  
 (2) However, the notification must be by a means of communication 
such that the content of the notification is readily accessible so as 
to be usable for subsequent reference.  Other measures   Schedule 2  
Written requirements   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  39 
 97  Subparagraph 77(1)(b)(xi)  
Omit “issue a notice”, substitute “give a notification”.  
Trade Marks Act 1995  
98  Section  34 (heading)  
Repeal the heading, substitute:  
34  Notification of decision  
99  Paragraph 34(a)  
Omit “in writing”.  
100  Subsection  77(2)  
Omit “notice”, substitute “notification”.  
101  Section  80C (heading)  
Repeal the heading, substitute:  
80C  Notification about renewal  
102  Subsection  80E(2)  
Omit “notice”, substitute “notification”.  
103  Subsection  84A(4)  
Omit “notice”, substitute “notification”.  
104  Subsection  84A(4)  
Omit “in accordance with the regulations”.  
105  Subsection  95(1)  
Omit “notice”, substitute “a copy”.  
106  Section  111 (heading)  
Repeal the heading, substitute:  Schedule 2   Other measures  
Part 2   Written requirements  
 
 
40 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 111  Notification of applicatio n to be given to person recorded as 
claiming interest in trade mark etc.  
107  Paragraph 176(3)(a)  
Repeal the paragraph, substitute:  
 (a) notify the applicant of the Registrar’s decision under this 
section; and  
108  Paragraph 202(e)  
Omit “, as he or she considers fit,”.  
109  After section  214 
Insert:  
214A   Notifications by Registrar under this Act  
 (1) If under this Act the Registrar 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 Registrar may so notify the person by any means of 
communication (including by electronic means).  
Note 1:  A reference to this Act includes the regulations (see section  6). 
Note 2:  Section  215 deals with the service etc. of documents on a pers on. 
 (2) However, the notification must be by a means of communication 
such that the content of the notification is readily accessible so as 
to be usable for subsequent reference.  
Division  2—Application and saving provisions  
110  Designs  
(1) The amendments  of sections  24, 33, 41, 42, 43, 52, 57, 58, 59, 66, 67, 
68, 69 and 138 of the Designs Act 2003  made by this Part apply in 
relation to notifications occurring on or after the commencement of this 
item.  
(2) The Designs Act 2003 , as in force immediately befo re the 
commencement of this item, continues to apply on and after that Other measures   Schedule 2  
Written requirements   Part 2  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  41 
 commencement in relation to a notice given under subsection  24(1) or 
(2), section  41, paragraph  52(3)(a), subsection  57(3), 66(2) or 67(2) or 
paragraph  68(2)(a) of that Act before that commencement.  
111  Patents  
The amendments of sections  27, 28, 49, 74 and 76 of the Patents Act 
1990  made by this Part apply in relation to notifications occurring on or 
after the commencement of this item.  
112  Plant breeder’s rights  
(1) The amendment of p aragraph  19(6)(b) of the Plant Breeder’s Rights Act 
1994 made by this Part applies in relation to invitations made on or after 
the commencement of this item.  
(2) The amendments of paragraph  19(7)(b), subparagraph  19(9)(b)(i) and 
sections  21, 30, 32, 37, 39 , 40, 41, 44 and 50 of the Plant Breeder’s 
Rights Act 1994 made by this Part apply in relation to notifications 
occurring on or after the commencement of this item.  
(3) The Plant Breeder’s Rights Act 1994 , as in force immediately before the 
commencement of  this item, continues to apply on and after that 
commencement in relation to a notice given under paragraph  19(7)(b), 
subparagraph  19(9)(b)(i), subsection  21(3), paragraph  21(4)(a) or (b) or 
30(4)(a) or (5)(a), subsection  32(1), (2), (3) or (4), section  37, 
subsection  39(2), paragraph  40(10)(e) or (f) or (11)(a) or (b) or 
subsection  41(1), 44(12) or 50(3) or (10) of that Act before that 
commencement.  
113  Trade marks  
(1) The amendments of sections  34, 77, 80E, 84A, 176 and 202 of the 
Trade Marks Act 1995 made by this Part apply in relation to 
notifications occurring on or after the commencement of this item.  
(2) The Trade Marks Act 1995 , as in force immediately before the 
commencement of this item, continues to apply on and after that 
commencement in relat ion to a notice given under subsection  77(2), 
80E(2) or 84A(4) or paragraph  176(3)(a) of that Act before that 
commencement.  Schedule 2   Other measures  
Part 3   Filing requirements  
 
 
42 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 3—Filing requirements  
Division  1—Amendments  
Designs Act 2003  
114  Section  5 
Insert:  
preferred means : 
 (a) in relation to filing  a document with the Designs Office —
means the means specified under subsection  144A(4); or  
 (b) in relation to paying a fee —means the means specified under 
subsection  130A(4).  
115  After subsection  69(2)  
Insert:  
 (2A)  A person must not provide to the Regis trar material in the form of 
a physical article, other than a document, unless the Registrar has 
given the person an approval to do so.  
 (2B) If a person provides material to the Registrar under subsection  (1), 
the material may be accompanied by evidence, in the form of a 
declaration, of the publication of the material.  
Note:  The regulations deal with the making of declarations.  
116  After subsection  130(2)  
Insert:  
 (2A)  Without limiting subsection  (1), different fees may be prescribed 
for filing a document  with the Designs 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.  Other measures   Schedule 2  
Filing requirements   Part 3  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  43 
 Means of paying fee  
 (2C) A fee must be pai d by a means determined in an instrument under 
subsection  130A(1).  
Fees payable in accordance with the regulations  
117  Before subsection  130(4)  
Insert:  
Consequences of failure to pay fee  
118  At the end of Part  2 of Chapter  11 
Add:  
130A   Approved means of paying a fee  
 (1) For the purposes of subsection  130(2C), the Registrar 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 Registrar must publish a notic e, in accordance with the 
regulations, setting out the determination.  
 (4) The Registrar may, in a determination 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 legislative 
instrument.  
119  Section  144 
Repeal the section, substitute:  
144  Filing of documents  
  For the purposes of this Act and the regulations, a do cument may 
be filed with the Designs Office by a means determined in an 
instrument under subsection  144A(1).  Sched ule 2   Other measures  
Part 3   Filing requirements  
 
 
44 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 144A   Approved means of filing documents  
 (1) For the purposes of section  144, the Registrar may, by writing, 
determine one or more means for filin g a document with the 
Designs Office.  
 (2) The means may be an electronic means or any other means.  
 (3) The Registrar must publish a notice, in accordance with the 
regulations, setting out the determination.  
 (4) The Registrar may, in a determination unde r subsection  (1), specify 
that one or more means for filing a document with the Designs 
Office are preferred means.  
Note:  Under the regulations, reduced fees may be payable for filing a 
document by preferred means.  
 (5) A determination under subsection  (1) is not a legislative 
instrument.  
144B   Directions by Registrar for filing of documents  
 (1) The Registrar may, by writing, give a direction specifying the form 
in which a document is to be filed under this Act or the regulations.  
Note:  See also paragraph  149(2)(aa) (about regulations).  
 (2) Subsection  (1) does not apply in relation to a document that is 
required, under the regulations, to be in an approved form.  
 (3) The Registrar must publish a notice, in accordance with the 
regulations, setting out the d irection.  
 (4) A direction under subsection  (1) is not a legislative instrument.  
144C   Directions by Registrar for filing of evidence  
 (1) The Registrar may, by writing, give a direction in relation to the 
filing of evidence in connection with a matter ari sing under this 
Act or the regulations.  
Note:  See also paragraph  149(2)(ab) (about regulations).  Other measures   Schedule 2  
Filing requirements   Part 3  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  45 
  (2) Without limiting 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 
documents, 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 directi on under subsection  (1) 
may require that evidence in writing be in the form of a 
declaration.  
 (4) This section does not apply in relation to the provision of material 
under section  69 (about material relating to whether a registered 
design is new or disti nctive).  
 (5) The Registrar must publish a notice, in accordance with the 
regulations, setting out a direction under subsection  (1). 
 (6) A direction under subsection  (1) is not a legislative instrument.  
120  Before paragraph  149(2)(a)  
Insert:  
 (aa) making  provision for and in relation to the following:  
 (i) the requirements for filing a document under this Act or 
the regulations (including the requirement that the 
document must be in the form (if any) specified in a 
direction under section  144B);  
 (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 
 (ab) making provision for and in relation to the consequences of 
not complying with a direction under sec tion 144C; and  
Patents Act 1990  
121  Section  3 (list of definitions)  
Insert “preferred means”.  Schedule 2   Other measures  
Part 3   Filing requirements  
 
 
46 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 122  Section  214 
Repeal the section, substitute:  
214  Filing of documents  
  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).  
123  After section  214 
Insert:  
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 wi th 
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 Commissioner 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.  
 (5) A determination under subsection  (1) is not a legislati ve 
instrument.  
124  Before section  215 
Insert:  
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 th is Act includes the regulations (see Schedule  1). Other measures   Schedule 2  
Filing requirements   Part 3  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  47 
 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 notic e 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 limiting subsection  (1), a direction un der 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 
documents, 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.  
 (4) The Commissioner must publish a notice in the Offi cial Journal 
setting out a direction under subsection  (1). 
 (5) A direction under subsection  (1) is not a legislative instrument.  
125  After subsection  227(2)  
Insert:  
 (2A)  Without limiting subsection  (1), different fees may be prescribed 
for filing a docu ment with the Patent Office according to the means 
by which the document is filed.  Schedule 2   Other measures  
Part 3   Filing requirements  
 
 
48 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
  (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 dete rmined in an instrument under 
subsection  227AAA(1).  
126  After section  227 
Insert:  
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 determination under subsection  (1), 
specify that one or more means for p aying 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 legislative 
instrument.  
127  After paragraph  228(2)(b)  
Insert:  
 (ba) making provision for and in relation to the following:  
 (i) the requirements for filing a document under this Act 
(including the requirement 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 Other measures   Schedule 2  
Filing requirements   Part 3  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  49 
 128  Schedule  1 
Insert:  
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).  
Plant Breeder ’s Rights Act 1994  
129  Subsection  3(1) 
Insert:  
preferred means : 
 (a) in relation to lodging a document with, or giving a document 
to, the Registrar —means the means specified under 
subsection  72C(4); or  
 (b) in relation to paying a fee —means the mea ns specified under 
subsection  80A(4).  
130  Subsection  26(1)  
Repeal the subsection, substitute:  
 (1) An application for PBR in a plant variety must be in the approved 
form.  
131  Subsection  34(3)  
Repeal the subsection, substitute:  
 (3) The detailed descripti on must be in the approved form.  
132  Subsection  40(4)  
Repeal the subsection, substitute:  
 (4) An application for a declaration of essential derivation must:  
 (a) be in the approved form; and  
 (b) be accompanied by the prescribed fee in respect of the 
application.  Schedule 2   Other measures  
Part 3   Filing requirements  
 
 
50 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 133  Before section  73 
Insert:  
72B  Manner in which documents may be lodged with or given to 
Registrar  
  For the purposes of this Act and the regulations, a document may 
be lodged with, or given to, the Registrar by a means determined in 
an instrument under subsection  72C(1).  
72C  Approved means of lodging or giving documents  
 (1) For the purposes of section  72B, the Registrar may, by writing, 
determine one or more means for lodging a document with, or 
giving a document to, the Registrar.  
 (2) The means may be an electronic means or any other means.  
 (3) The Registrar must give public notice setting out the determination.  
 (4) The Registrar may, in a determination under subsection  (1), specify 
that one or more means for lodging a document with , or giving a 
document to, the Registrar are preferred means.  
Note:  Under the regulations, reduced fees may be payable for lodging or 
giving a document by preferred means.  
 (5) A determination under subsection  (1) is not a legislative 
instrument.  
134  At the end of subparagraph  80(2)(a)(iv)  
Add “and”.  
135  After subparagraph  80(2)(a)(iv)  
Insert:  
 (v) different fees for lodging a document with, or giving a 
document to, the Registrar according to the means by 
which the document is lodged or given; and  
 (vi) different amounts of a fee according to the means by 
which the fee is paid;  Other measures   Schedule 2  
Filing requirements   Part 3  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  51 
 136  Paragraph 80(2)(a)  
Omit “and the manner of payment of such fees”.  
137  At the end of section  80 
Add:  
 (3) A fee must be paid by a means determined in an instrument under 
subsec tion 80A(1).  
138  At the end of Part  8 
Add:  
80A  Approved means of paying a fee  
 (1) For the purposes of subsection  80(3), the Registrar may, by 
writing, determine one or more means for paying a fee.  
 (2) The means may be an electronic means or any other m eans.  
 (3) The Registrar must give public notice setting out the determination.  
 (4) The Registrar may, in a determination 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 legislative 
instrument.  
Trade Marks Act 1995  
139  Readers guide (list of terms defined in section  6) 
Insert “preferred means”.  
140  Subsection  6(1) 
Insert:  
preferred means : Schedule 2   Other measures  
Part 3   Filing requirements  
 
 
52 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
  (a) in relation to filing a document with the Trade Marks 
Office —means the means specified under 
subsection  213A(4); or  
 (b) in relation to paying a fee —means the means specified under 
subsection  223AA(4).  
141  Paragraph 52(2)(a)  
Omit “manner and”.  
142  Subsection  52A(2)  
Omit “in the prescribed manner and”.  
143  Paragraph 54A(1)(b)  
Omit “in the prescribed manner or”.  
144  Paragraph 96(2)(a)  
Omit “manner and”.  
145  Section  213 
Repeal the section, substitute:  
213  Filing of documents  
  For the purposes of this Act, a document may be filed with the 
Trade Marks Office by a means determined in an instrument under 
subsection  213A(1).  
213A   Approved means of filing documents  
 (1) For the purposes of section  213, the Re gistrar may, by writing, 
determine one or more means for filing a document with the Trade 
Marks Office.  
 (2) The means may be an electronic means or any other means.  
 (3) The Registrar must advertise the determination in the Official 
Journal.  Other measures   Schedule 2  
Filing requirements   Part 3  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  53 
  (4) The Registrar may, in a determination under subsection  (1), specify 
that one or more means for filing a document with the Trade Marks 
Office are preferred means.  
Note:  Under the regulations, reduced fees may be payable for filing a 
document by preferred me ans. 
 (5) A determination under subsection  (1) is not a legislative 
instrument.  
146  Before section  214 
Insert:  
213B   Directions by Registrar for filing of documents  
 (1) The Registrar may, by writing, give a direction specifying the form 
in which a docume nt is to be filed under this Act.  
Note 1:  A reference to this Act includes the regulations (see section  6). 
Note 2:  See also paragraph  231(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 Registrar must advertise the direction in the Official Journal.  
 (4) A direction under subsection  (1) is not a legislative instrument.  
213C   Directions by Registrar for filing of evidence  
 (1) The Registrar 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 section  6). 
Note 2:  See also paragraph  231(2)(bb) (about regulations).  
 (2) Without limiting 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 
documents, a re or are not permitted to be filed);  Schedule 2   Other measures  
Part 3   Filing requirements  
 
 
54 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
  (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.  
 (4) The Registrar must ad vertise a direction under subsection  (1) in the 
Official Journal.  
 (5) A direction under subsection  (1) is not a legislative instrument.  
147  After subsection  223(2)  
Insert:  
 (2A)  Without limiting subsection  (1), different fees may be prescribed 
for filing  a document with the Trade Marks 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.  
Means of paying fee  
 (2C) A fee that must be paid to the Registrar must be paid by a means 
determined in an instrument under subsection  223AA(1).  
Consequences of failure to pay fee  
148  After section  223 
Insert:  
223AA   Approved means of paying a fee  
 (1) For the purposes of subsectio n 223(2C), the Registrar 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 Registrar must advertise the determination in the Official 
Journal.  
 (4) The Registrar may, in a determination under subsection  (1), specify 
that one or more means for paying a fee are preferred means.  Other measures   Schedule 2  
Filing requirements   Part 3  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  55 
 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 legislative 
instrument.  
149  Before paragraph  231(2)(c)  
Insert:  
 (ba) provide for and in relation to the following:  
 (i) the requirements for filing a document under this Act 
(including the requirement that the document must be in 
the form (if any) spec ified in a direction under 
section  213B);  
 (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) provide for and in relation to the consequences o f not 
complying with a direction under section  213C; and  
Division  2—Application, saving and transitional 
provisions  
150  Designs  
(1) The amendment of section  69 of the Designs Act 2003  made by this Part 
applies in relation to the provision of material to the Registrar on or 
after the commencement of this item.  
(2) Subsection  130(2C) of the Designs Act 2003 , as inserted by this Part, 
applies in relation to fees paid on or after the comme ncement of this 
item.  
(3) Section  144 of the Designs Act 2003 , as substituted by this Part, applies 
in relation to documents filed on or after the commencement of this 
item.  
(4) Section  144B of the Designs Act 2003 , as inserted by this Part, applies 
in rel ation to documents filed on or after the commencement of this 
item.  Schedule 2   Other measures  
Part 3   Filing requirements  
 
 
56 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 (5) Section  144C of the Designs Act 2003 , as inserted by this Part, applies 
in relation to evidence filed on or after the commencement of this item.  
151  Patents  
(1) The repeal and substit ution of section  214 of the Patents Act 1990 made 
by this Part applies in relation to documents filed on or after the 
commencement of this item.  
(2) Section  214B of the Patents Act 1990 , as inserted by this Part, applies in 
relation to documents filed on o r after the commencement of this item.  
(3) Section  214C of the Patents Act 1990 , as inserted by this Part, applies in 
relation to evidence filed on or after the commencement of this item.  
(4) Subsection  227(2C) of the Patents Act 1990 , as inserted by this Part, 
applies in relation to fees paid on or after the commencement of this 
item.  
152  Plant breeder’s rights  
(1) The repeal and substitution of subsection  26(1) of the Plant Breeder’s 
Rights Act 1994  made by this Part applies in relation to applications 
made on or after the commencement of this item.  
(2) An approved form that was in effect immediately before the 
commencement of this item for the purposes of paragraph  26(1)(b) of 
the Plant Breeder’s Rights Act 1994 continues in force on and after that 
comme ncement as if it were an approved form in effect for the purposes 
of subsection  26(1) of that Act.  
(3) The repeal and substitution of subsection  34(3) of the Plant Breeder’s 
Rights Act 1994  made by this Part applies in relation to detailed 
descriptions giv en on or after the commencement of this item.  
(4) An approved form that was in effect immediately before the 
commencement of this item for the purposes of paragraph  34(3)(b) of 
the Plant Breeder’s Rights Act 1994 continues in force on and after that 
commen cement as if it were an approved form in effect for the purposes 
of subsection  34(3) of that Act.  Other measures   Schedule 2  
Filing requirements   Part 3  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  57 
 (5) The repeal and substitution of subsection  40(4) of the Plant Breeder’s 
Rights Act 1994  made by this Part applies in relation to applications 
made on or af ter the commencement of this item.  
(6) An approved form that was in effect immediately before the 
commencement of this item for the purposes of paragraph  40(4)(b) of 
the Plant Breeder’s Rights Act 1994 continues in force on and after that 
commencement as i f it were an approved form in effect for the purposes 
of paragraph  40(4)(a) of that Act.  
(7) The repeal and substitution of subsection  40(4) of the Plant Breeder’s 
Rights Act 1994  made by this Part does not affect the validity of any 
regulations prescribin g a fee for an application under subsection  40(1) 
of that Act that were in force immediately before the commencement of 
this item.  
(8) Section  72B of the Plant Breeder’s Rights Act 1994 , as inserted by this 
Part, applies in relation to documents lodged wit h, or given to, the 
Registrar on or after the commencement of this item.  
(9) Subsection  80(3) of the Plant Breeder’s Rights Act 1994 , as added by 
this Part, applies in relation to fees paid on or after the commencement 
of this item.  
153  Trade marks  
(1) Section  213 of the Trade Marks Act 1995 , as substituted by this Part, 
applies in relation to documents filed on or after the commencement of 
this item.  
(2) Section  213B of the Trade Marks Act 1995 , as inserted by this Part, 
applies in relation to documents filed on or after the commencement of 
this item.  
(3) Section  213C of the Trade Marks Act 1995 , as inserted by this Part, 
applies in relation to evidence filed on or after the commencement of 
this item.  
(4) Subsection  223(2C) of the Trade Marks Act 1995 , as inserted by this 
Part, applies in relation to fees paid on or after the commencement of 
this item.  Schedule 2   Other measures  
Part 4   Signatures  
 
 
58 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 4—Signatures  
Patents Act 1990  
154  Paragraph 151(4)(c)  
Omit “signed by the applicant”.  
155  Paragraph 176(c)  
Omit “signed by the applicant”.  
156  Application provision  
The amendments made by this Part apply in relation to a request 
referred to in paragraph  151(4)(c) or 176(c) of the Patents Act 1990  
filed on or after the commencement of this item.  Other measures   Schedule 2  
Computerised decision -making   Part 5  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  59 
 Part 5—Computerised decision -making  
Designs Act 20 03 
157  Section  129 
After:  
Part 3 contains offence provisions.  
insert:  
Part 3A deals with computerised decision -making.  
158  After Part  3 of Chapter  11 
Insert:  
Part  3A—Computerised decision -making  
   
135A   Computerised decision -making  
 (1) The Registrar may arrange for the use, under the Registrar’s 
control, of computer programs for any purposes for which the 
Registrar may, or must, under this Act or the regulations:  
 (a) make a decision; or  
 (b) exercise any power or comply 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 
complying with an obligation, to which paragraph  (b) 
applies.  
 (2) For the purposes of this Act and the regulations, the Registrar 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;  Schedule 2   Other measures  
Part 5   Computerised decision -making  
 
 
60 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 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 Registrar may substitute a decision for a decision the Registrar 
is taken to have made und er paragraph  (2)(a) if the Registrar is 
satisfied that the decision made by the operation of the computer 
program is incorrect.  
159  After subsection  136(1)  
Insert:  
 (1A)  If: 
 (a) the Registrar is taken to have made a decision (the initial 
decision ) under paragraph  135A(2)(a); and  
 (b) under subsection  (1) of this section, a person may apply to 
the Administrative Appeals Tribunal for review of the initial 
decision; and  
 (c) the Registrar, under subsection  135A(3), substitutes a 
decision for the initial deci sion;  
a person may apply to the Administrative Appeals Tribunal for 
review of the substituted decision.  
160  Subsection  136(2)  
Omit “If a decision mentioned in subsection  (1) is made”, substitute “If, 
under subsection  (1) or (1A), a person may apply to the  Administrative 
Appeals Tribunal for review of a decision”.  
Patents Act 1990  
161  After section  223 
Insert:  Other measures   Schedule 2  
Computerised decision -making   Part 5  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  61 
 223A   Computerised decision -making  
 (1) The Commissioner may arrange for the use, under the 
Commissioner’s control, of computer programs for any pur poses 
for which the Commissioner may, or must, under this Act:  
 (a) make a decision; or  
 (b) exercise any power or comply with any obligation; or  
 (c) do anything else related to making a decision to which 
paragraph  (a) applies or related to exercising a p ower, or 
complying with an obligation, to which paragraph  (b) 
applies.  
Note:  A reference to this Act includes the regulations (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 un der an arrangement made under 
subsection  (1). 
Substituted decisions  
 (3) The Commissioner may substitute a decision for 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.  
162  After subsection  224(1)  
Insert:  
 (1A)  If: 
 (a) the Commissioner is taken to have made a decision (the 
initial decision ) under paragraph  223A(2)(a); and  
 (b) under subsection  (1) of this section, application may be made 
to the Administrative Appeals Tribunal for review of the 
initial decision; and  Schedule 2   Other measures  
Part 5   Computerised decision -making  
 
 
62 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
  (c) the Commissioner, under subsection  223A(3), substitutes a 
decision for the initial decision;  
application may be made to the Administrative Appeals T ribunal 
for review of the substituted decision.  
163  Subsection  224(2)  
Omit “Where a person who makes a decision mentioned in 
subsection  (1) gives the person or persons affected by the decision 
written notice of the making of the decision”, substitute “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”.  
Plant Breeder ’s Rights Act 1994  
164  After section  76A 
Insert:  
76B  Computerised decision -making  
 (1) The Registrar may arrange for the use, under the Registrar’s 
control, of computer programs for any purposes for which the 
Registrar may, or must, under this Act or the regulations:  
 (a) make a decision; or  
 (b) exercise any power or comply 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 
complying with an obligation, to which paragraph  (b) 
applie s. 
 (2) For the purposes of this Act and the regulations, the Registrar 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;  Other measures   Schedule 2  
Computerised decision -making   Part 5  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  63 
 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 Registrar may substitute a decision for a deci sion the Registrar 
is taken to have made under paragraph  (2)(a) if the Registrar is 
satisfied that the decision made by the operation of the computer 
program is incorrect.  
Note:  A substituted decision under subsection  (4) may be reviewable by the 
AAT under  section  77. 
165  After subsection  77(1)  
Insert:  
 (1A)  If: 
 (a) the Registrar is taken to have made a decision (the initial 
decision ) under paragraph  76B(2)(a); and  
 (b) under subsection  (1) of this section, applications may be 
made to the AAT for review o f the initial decision; and  
 (c) the Registrar, under subsection  76B(3), substitutes a decision 
for the initial decision;  
applications may be made to the AAT for review of the substituted 
decision.  
166  Subsection  77(2)  
Omit “for a review of a decision ref erred to in subsection  (1)”, 
substitute “under subsection  (1) or (1A) of this section for a review of a 
decision”.  
167  Paragraph 77(3)(a)  
After “ subsection  (1)”, insert “or (1A)”.  
Trade Marks Act 1995  
168  After Division  2 of Part  21 
Insert:  Schedule 2   Other measures  
Part 5   Computerised decision -making  
 
 
64 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Division  2A—Computerised decision -making  
222A   Computerised decision -making  
 (1) The Registrar may arrange for the use, under the Registrar’s 
control, of computer programs for any purposes for which the 
Registrar may, or must, under this Act:  
 (a) make a decision; or  
 (b) exercise any power or comply 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 
complying with an obligation, to which paragraph  (b) 
applies.  
Note:  A reference to this Act includes the regulations (see section  6). 
 (2) For the purposes of this Act, the Registrar 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 Registrar may su bstitute a decision for a decision the Registrar 
is taken to have made under paragraph  (2)(a) if the Registrar is 
satisfied that the decision made by the operation of the computer 
program is incorrect.  
Review  
 (4) If: 
 (a) the Registrar is taken to have ma de a decision (the initial 
decision ) under paragraph  (2)(a); and  
 (b) under another provision of this Act, an application may be 
made to the Administrative Appeals Tribunal for review of 
the initial decision; and  Other measures   Schedule 2  
Computerised decision -making   Part 5  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  65 
  (c) the Registrar, under subsection  (3), substitutes a decision for 
the initial decision;  
an application may be made to the Administrative Appeals 
Tribunal for review of the substituted decision.  Schedule 2   Other mea sures  
Part 6   Addresses and service of documents  
 
 
66 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 6—Addresses and service of documents  
   
Plant Breeder ’s Rights Act 1994  
169  Subsection  3(4) 
Repe al the subsection, substitute:  
 (4) Subsection  (2) of this section does not apply to a reference to an 
address in subsection  26(2).  
170  At the end of subsection  19(5A)  
Add:  
Note:  After the time specified in regulations made for the purposes of 
subsection  3(2), the address may be an electronic address: see 
subsections  3(2), (5) and (6).  
171  Subsection  21(5) (before the note)  
Insert:  
Note 1:  After the time specified in regulations made for the purposes of 
subsection  3(2), the address may be an electronic ad dress: see 
subsections  3(2), (5) and (6).  
172  Subsection  21(5) (note)  
Omit “Note”, substitute “Note 2”.  
173  After subsection  26(1)  
Insert:  
 (1A)  Without limiting subsection  (1), the approved form must require 
the inclusion of an address in Australia or New Zealand for service, 
being an address that is in accordance with the requirements of the 
approved form.  
Note:  After the time specified in regulations made for the purposes of 
subsection  3(2), the address may be an electronic address: see 
subsections  3(2), (5) and (6).  
174  Subsection  26(3)  
Repeal the subsection.  Other measures   Schedule 2  
Addresses and service of documents   Part 6  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  67 
 175  Subsection  31(3)  
Omit “notices”, substitute “documents”.  
176  At the end of subsection  31(3)  
Add:  
Note:  After the time specified in regulations made for the purposes of 
subsection  3(2), the  address may be an electronic address: see 
subsections  3(2), (5) and (6).  
177  Subsection  31(4)  
Omit “notices”, substitute “documents”.  
178  At the end of section  73 
Add:  
Note:  After the time specified in regulations made for the purposes of 
subsection  3(2), the address may be an electronic address: see 
subsections  3(2), (5) and (6).  
179  Application provision  
The amendments of section  26 of the Plant Breeder’s Rights Act 1994 
made by this Part apply in relation to applications for PBR in a plant 
variety ma de on or after the commencement of this item.  Schedule 2   Other meas ures 
Part 7   Requirements for patent documents  
 
 
68 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 7—Requirements for patent documents  
Patents Act 1990  
180  Subsections  29(3) and (4)  
Repeal the subsections, substitute:  
 (3) A patent request in relation to a provisional application must:  
 (a) be in the approved form; and  
 (b) be in English; 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. 
181  Subsection  29A(2)  
After “drawings”, insert “, g raphics, photographs”.  
182  Subsection  40(3A)  
Omit “or drawings”, substitute “, drawings, graphics or photographs”.  
183  Paragraph 151(4)(f)  
Omit “and drawings”, substitute “, drawings, graphics and 
photographs”.  Other measures   Schedule 2  
Requirements for patent documents   Part 7  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  69 
 184  Paragraph 176(f)  
Omit “and drawings”, substitute “, drawings, graphics and 
photographs”.  
185  Subparagraph 228(2)(ha)(i)  
After “subsections  18(2) and (3)”, insert “and 29(4A) and (4B)”.  
186  Subparagraph 228(2)(ha)(ii)  
Omit “the application is in accordance with the requirements of the 
regulations relating to the preparation of documents for filing”, 
substitute “those formalities requirements are met”.  
187  Subparagraph 228(2)(i)(i)  
Omit “the requirements of subsection  29A(5) have been met”, substitute 
“the applicant has complied with su bsection  29A(5)”.  
188  Subparagraph 228(2)(i)(ii)  
Omit “the PCT application is in accordance with those requirements”, 
substitute “those requirements are met”.  
189  After paragraph  228(2)(i)  
Insert:  
 (ia) making provision for and in relation to:  
 (i) empow ering 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 s pecification being taken not to have 
been filed if such a direction is not complied with within 
a time specified in the regulations; and  
190  Paragraph 228(2)(j)  
After “ensure that the”, insert “patent request or”.  Schedule 2   Other measures  
Part 7   Requirements for patent documents  
 
 
70 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 191  Paragraph 228(2)(j)  
Omit “the requir ements of the regulations relating to the preparation of 
documents for filing”, substitute “the requirements of 
subsection  29(4A) or (4B)”.  
192  At the end of Chapter  22 
Add:  
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 provision 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.  
193  Schedule  1 (definition of specification ) 
Omit “and drawings”, substitute “, drawings, graphics and 
photographs”.  
194  Application and transitional provisions  
(1) The amendments of section  29 of the Patents Act 1990 made by this 
Part apply in relation to patent requests filed under subsection  29(1) of 
that Act on or after the commencement of this item.  
(2) An instrument approving a form and in force for the purposes of 
subsection  29(3) of the Patents Act 1990  immediately before the 
commencement of this item has effect on and after that commencement 
as if it were an instrument approving that form and in fo rce for the 
purposes of paragraph  29(3)(a) of that Act.  
(3) An instrument approving a form and in force for the purposes of 
subsection  29(4) of the Patents Act 1990  immediately before the Other measures   Schedule 2  
Requirements for patent documents   Part 7  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  71 
 commencement of this item has effect on and after that commencement 
as if it were an instrument approving that form and in force for the 
purposes of paragraph  29(4A)(a) of that Act.  
(4) An instrument approving a form and in force for the purposes of 
paragraph  3.2(1)(a) of the Patents Regulations  1991  immediately before 
the commencement of this item has effect on and after that 
commencement as if it were an instrument approving that form and in 
force for the purposes of paragraph  29(4)(a) of the Patents Act 1990 . 
(5) An instrument approving a form and in force for the purpos es of 
paragraph  3.2A(2)(a) of the Patents Regulations  1991  immediately 
before the commencement of this item has effect on and after that 
commencement as if it were an instrument approving that form and in 
force for the purposes of paragraph  29(4B)(a) of th e Patents Act 1990 . Schedule 2   Other measures  
Part 8  Unjustified threats of infringement  
 
 
72 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 8—Unjustified threats of infringement  
Division  1—Amendments  
Designs Act 2003  
195  After subsection  77(1)  
Insert:  
 (1A)  The court may include an additional amount in an assessment of 
damages sustained by the applicant as a result of  the unjustified 
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 respondent that occurred after the 
respondent made the thr eats; and  
 (d) any benefit shown to have accrued to the respondent because 
of the threats; and  
 (e) all other relevant matters.  
Olympic Insignia Protection Act 1987  
196  Division  3 of Part  3.4 (heading)  
Repeal the heading, substitute:  
Division  3—Unjustified threats  
197  Section  64 (heading)  
Repeal the heading, substitute:  
64  Unjustified threats of legal proceedings  
198  Paragraph 64(2)(a)  
Omit “AOC or the licensed user had no grounds for making the threat”, 
substitute “threat is unjustified”.  Other measures   Schedule 2  
Unjustified threats of infringement   Part 8  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  73 
 199  Section  65 (heading)  
Repeal the heading, substitute:  
65  Counterclaim  
Patents Act 1990  
200  After subsection  128(1)  
Insert:  
 (1A)  The court may include an additional amount in an assessment of 
damages sustained by the applicant as a result of the unjusti fiable 
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 p erson 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.  
Plant Breeder ’s Rights Act 1994  
201  Subsection  3(1) 
Insert:  
legal practitioner  means a barri ster or solicitor of the High Court 
or of the Supreme Court of a State or Territory.  
202  At the end of Part  5 
Add:  
57A  Application for relief from unjustified threats  
 (1) If a person is threatened by another person (the respondent ) with 
proceedings for infringement of PBR in a plant variety, or other Schedule 2   Other measur es 
Part 8   Unjustified threats of infringement  
 
 
74 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 similar proceedings, an aggrieved person (the applicant ) may 
apply to the Federal Court or Federal Circuit Court for:  
 (a) a declaration that the threats are unjustified; and  
 (b) an injunction against the continuance of the threats; and  
 (c) the recovery of any damages sustained by the applicant as a 
result of the threats.  
 (2) The Federal Court or Federal Circuit Court may include an 
additional amount in an assessment of damages susta ined by the 
applicant as a result of the unjustified 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 respondent that occurr ed after the 
respondent made the threats; and  
 (d) any benefit shown to have accrued to the respondent because 
of the threats; and  
 (e) all other relevant matters.  
 (3) A threat mentioned in subsection  (1) may be by means of circulars, 
advertisements or ot herwise.  
 (4) Subsection  (1) applies whether or not the respondent is the grantee 
of the PBR in the plant variety or an exclusive licensee of the 
grantee.  
57B  Court’s power to grant relief  
  The Federal Court or Federal Circuit Court may grant the relief 
sought by an applicant under section  57A, unless the respondent 
satisfies the Court that:  
 (a) the respondent is the grantee of the PBR in the plant variety 
or an exclusive licensee of the grantee; and  
 (b) the acts about which the threats were made infrin ge, or would 
infringe, the PBR in the plant variety.  
57C  Counterclaim for infringement  
 (1) The respondent in proceedings under section  57A may apply, by 
way of counter -claim, for relief to which the respondent would be Other measures   Schedule 2  
Unjustified threats of infringement   Part 8  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  75 
 entitled in separate proceedings ag ainst the applicant for 
infringement of the PBR in the plant variety.  
 (2) The provisions of this Act relating to proceedings for infringement 
of PBR in a plant variety apply, with the necessary changes, to a 
counter -claim under subsection  (1). 
57D  Notifi cation of PBR in a plant variety not a threat  
  The mere notification of the existence of PBR in a plant variety 
does not constitute a threat of proceedings for the purposes of 
section  57A.  
57E  Liability of legal practitioner  
  A legal practitioner is not  liable to proceedings under section  57A 
in respect of an act done in a professional capacity on behalf of a 
client.  
Trade Marks Act 1995  
203  Section  129 (heading)  
Repeal the heading, substitute:  
129  Application for relief from unjustified threats  
204  Paragraph 129(2)(a)  
Omit “defendant has no grounds for making the threat”, substitute 
“threat is unjustified”.  
205  After subsection  129(2)  
Insert:  
 (2A)  The court may include an additional amount in an assessment of 
damages the plaintiff has sustained b ecause of the defendant’s 
conduct, if the court considers it appropriate to do so having regard 
to: 
 (a) the flagrancy of the threat; and  
 (b) the need to deter similar threats; and  Schedule 2   Other me asures  
Part 8   Unjustified threats of infringement  
 
 
76 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
  (c) the conduct of the defendant that occurred after the defendant 
made t he threat; and  
 (d) any benefit shown to have accrued to the defendant because 
of the threat; and  
 (e) all other relevant matters.  
206  Subsection  129(5)  
Repeal the subsection.  
207  Section  130 (heading)  
Repeal the heading, substitute:  
130  Counterclaim fo r infringement  
208  At the end of Part  12 
Add:  
130A   Mere notification of registered trade mark not a threat  
  The mere notification of the existence of a registered trade mark 
does not constitute a threat to bring an action for the purposes of 
section  129. 
Division  2—Application and saving provisions  
209  Application and saving provisions  
Designs  
(1) The amendment of section  77 of the Designs Act 2003 made by this Part 
applies in relation to threats of the kind referred to in subsection  77(1) 
of that Act t hat are made on or after the commencement of this item.  
Olympic expressions  
(2) The amendments of section  64 of the Olympic Insignia Protection Act 
1987 made by this Part apply in relation to threats of the kind referred to 
in subsection  64(1) of that Act that are made on or after the 
commencement of this item.  Other measures   Schedule 2  
Unjustified threats of infringement   Part 8  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  77 
 Patents  
(3) The amendment of section  128 of the Patents Act 1990 made by this 
Part applies in relation to threats of the kind referred to in 
subsection  128(1) of that Act that are made on or after th e 
commencement of this item.  
Plant breeder’s rights  
(4) Section  57A of the Plant Breeder’s Rights Act 1994 , as added by this 
Schedule, applies in relation to threats of the kind referred to in 
subsection  57A(1) of that Act that are made on or after the 
commencement of this item.  
Trade marks  
(5) The amendments of section  129 of the Trade Marks Act 1995 made by 
this Part (except the repeal of subsection  129(5) of that Act) apply in 
relation to threats of the kind referred to in subsection  129(1) of that Act 
that are made on or after the commencement of this item.  
(6) Despite the repeal of subsection  129(5) of the Trade Marks Act 1995  
made by this Part, that subsection, as in force immediately before the 
commencement of this item, continues to apply on and afte r that 
commencement in relation to an action for infringement of a trade mark 
begun before that commencement.  Sched ule 2   Other measures  
Part 9   Ownership of PBR and entries in the Register  
 
 
78 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 9—Ownership of PBR and entries in the 
Register  
Plant Breeder ’s Rights Act 1994  
210  Subsection  3(1) 
Insert:  
relevant proceedings , in relation  to PBR in a plant variety, means 
proceedings in a court or in the AAT relating to:  
 (a) the grant of the PBR; or  
 (b) the infringement of the PBR; or  
 (c) a decision to revoke, or not to revoke, the PBR.  
211  Subsection  45(1)  
Omit “ subsections  (2) and (3) ”, substitute “ subsection  (3)”. 
212  At the end of subsection  45(1)  
Add:  
Note:  If PBR is granted to persons who make a joint application, the PBR is 
granted to those persons jointly: see subsection  44(11).  
213  Subsection  45(2)  
Repeal the subsection.  
214  At the end of Part  6 
Add:  
62A  Registrar’s power to rectify Register  
 (1) The Registrar may rectify the Register if the Registrar is satisfied, 
whether on application or otherwise, of any of the following:  
 (a) the omission of an entry from 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.  Other measures   Schedule 2  
Ownership of PBR and entries in the Register   Part 9  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  79 
 Form of application  
 (2) An application under subsection  (1) must be in the approved form.  
Further information  
 (3) The Registrar:  
 (a) may seek further information from any person for the 
purpose of considering an application under subsection  (1); 
and 
 (b) is not required to consider the application while seeking the 
further information.  
Persons to  be heard  
 (4) The Registrar must not rectify the Register under this section in 
relation to PBR in a plant variety without first giving the following 
persons a reasonable opportunity to be heard:  
 (a) in the case of an application to rectify the Register —the 
applicant;  
 (b) the grantee of the PBR as recorded in the Register;  
 (c) any other person the Registrar considers appropriate.  
Relevant proceedings pending  
 (5) The Registrar must not rectify the Register under this section in 
relation to PBR in a plan t variety while:  
 (a) relevant proceedings in relation to the PBR are pending; or  
 (b) proceedings in a court or in the AAT, relating to a decision 
under section  21 to amend, or refuse to amend, the Register 
in relation to the PBR, are pending.  
Note:  A dec ision under this section to rectify, or refuse to rectify, the 
Register is reviewable by the AAT under section  77. 
215  At the end of paragraph  77(1)(b)  
Add:  
 (xvii)  under section  62A to rectify, or refuse to rectify, the 
Register.  Schedule 2   Other measures  
Part 9   Ownership of PBR and entries in the Register  
 
 
80 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 216  Paragraph 80(2)(d)  
After “mistake”, insert “, or for any other purpose”.  
217  Application provision  
Section  62A of the Plant Breeder’s Rights Act 1994 , as added by this 
Part, applies in relation to:  
 (a) PBR in a plant variety granted before, on or after the 
commencement of this item; and  
 (b) entries made in the Register before, on or after that 
commencement.  Other measures   Schedule 2  
Trade mark oppositions   Part 10  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  81 
 Part 10—Trade mark oppositions  
Trade Marks Act 1995  
218  Paragraph 222(a)  
After “subsection”, insert “65A(4), 83A(4) or”.  
219  Subsection  231(3)  
Omit “and 92”, substitu te “, 65A, 83A and 96”.  
220  Application provision  
The amendment of paragraph  222(a) of the Trade Marks Act 1995  made 
by this Part applies in relation to a request referred to in 
subsection  65A(4) or 83A(4) of that Act that is made on or after the 
commence ment of this item.  Schedule 2   Other measures  
Part 11   Further power to award damages under the Plant Breeder’s Rights Act  
 
 
82 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 11—Further power to award damages under the 
Plant Breeder ’s Rights Act  
Plant Breeder ’s Rights Act 1994  
221  After subsection  56(3)  
Insert:  
 (3A)  The Federal Court may include an additional amount in an 
assessment of damages for an i nfringement of PBR, 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 PBR; and  
 (c) the conduct of the party that infringed the PBR that occurred:  
 (i) after the act constituting the infringement; or  
 (ii) after that party was informed that it had allegedly 
infringed the PBR; and  
 (d) any benefit shown to have accrued to that party because of 
the infringement; and  
 (e) all other relevant matters.  
222  After subsection  56A(3)  
Insert:  
 (3A)  The Federal Circuit Court may include an additional amount in an 
assessment of damages for an infringement of PBR, if the Court 
considers it appropriate to do so having regard to:  
 (a) the flagrancy of the infringeme nt; and  
 (b) the need to deter similar infringements of PBR; and  
 (c) the conduct of the party that infringed the PBR that occurred:  
 (i) after the act constituting the infringement; or  
 (ii) after that party was informed that it had allegedly 
infringed th e PBR; and  
 (d) any benefit shown to have accrued to that party because of 
the infringement; and  
 (e) all other relevant matters.  Other measures   Schedule 2  
Further power to award damages under the Plant Breeder’s Rights Act   Part 11  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  83 
 223  Application and transitional provision s 
(1) The amendments of sections  56 and 56A of the Plant Breeder’s Rights 
Act 1994 made by this Part apply in relation to infringements of PBR 
that occur on or after the commencement of that Part.  
(2) If, on or after the commencement of this Part, an action for infringement 
of PBR is begun in relation to conduct engaged in before and on or after 
that commencement, the Federal Court or the Federal Circuit Court may 
include an additional amount in an assessment of damages under 
subsection  56(3A) or 56A(3A) of the Plant Breeder’s Rights Act 1994 
only in relation to the conduct that was engaged in on or after 
commencement.  Schedule 2   Other measures  
Part 12   Exclusive licensees in the Plant Breeder’s Rights Act  
 
 
84 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 12—Exclusive licensees in the Plant Breeder ’s 
Rights Act  
Plant Breeder ’s Rights Act 1994  
224  Subsection  3(1) 
Insert:  
exclusive licensee  of the grantee of PBR in a plant variety means a 
licensee under a licence gra nted by the grantee that confers on the 
licensee, or on the licensee and persons authorised by the licensee, 
PBR in the plant variety to the exclusion of the grantee and all 
other persons.  
225  Section  18 (heading)  
Repeal the heading, substitute:  
18  Restr ictions on exercise of PBR in certain circumstances  
226  Paragraph 18(1)(b)  
Omit “variety;”, substitute “variety, or an exclusive licensee of the 
grantee;”.  
227  Paragraph 18(1)(c)  
After “grantee”, insert “, or an exclusive licensee of the grantee,”.  
228  Subsection  18(1)  
Omit “the grantee is not entitled”, substitute “neither the grantee, nor 
any exclusive licensee of the grantee, nor any other person authorised 
by the grantee or exclusive licensee, is entitled”.  
229  Subsection  18(3) ( paragraph  (a) of t he definition of 
equitable remuneration ) 
Omit “variety;”, substitute “variety, or an exclusive licensee of the 
grantee;”.  Other measures   Schedule 2  
Exclusive licensees in the Plant Breeder’s Rights Act   Part 12  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  85 
 230  Subsection  23(3)  
After “grantee of PBR”, insert “, or an exclusive licensee of the 
grantee,”.  
231  Paragraph 51(1)(b)  
Omit “54(3)”, substitute “54A(2)”.  
232  At the end of section  53 
Add:  
 (4) In this section, if a grantee of a PBR in a plant variety has granted 
an exclusive licence in relation to that right, a reference to the 
grantee is taken to be a reference to the exclusi ve licensee.  
233  At the end of subsection  54(1)  
Add “or an exclusive licensee of the grantee”.  
234  Subsections  54(2) to (4)  
Repeal the subsections, substitute:  
 (2) If an exclusive licensee of a grantee of PBR in a plant variety 
begins an action for infr ingement of that right, the licensee must 
make the grantee a defendant in the action, unless the grantee is 
joined as a plaintiff.  
 (3) A grantee who is made a defendant in an action is not liable for 
costs if the grantee does not take part in the proceedi ngs. 
235  After section  54 
Insert:  
54A  Counterclaims to actions for infringement  
 (1) A defendant in an action for infringement of PBR in a plant variety 
may apply, by way of counterclaim, for revocation of that right on 
the ground that:  
 (a) the variety was not a new plant variety; or  Schedule 2   Other measures  
Part 12   Exclusive licensees in the Plant Breeder’s Rights Act  
 
 
86 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
  (b) facts exist that would have resulted in the refusal of the grant 
of that right if they had been known to the Registrar before 
the grant of that right.  
 (2) If, in an action for infringement of PBR in a plant variety:  
 (a) the defendant applies, by way of counterclaim, for the 
revocation of that right; and  
 (b) the court is satisfied that a ground for revocation of that right 
exists;  
the court may make an order revoking that right.  
 (3) If the court revoked PBR in a plan t variety on the counterclaim of a 
defendant, the court may order the defendant to serve on the 
Registrar a copy of the order revoking that right.  
236  At the end of section  55 
Add:  
 (7) The grantee must be joined as a respondent in the proceedings.  
 (8) In this section:  
grantee  includes an exclusive licensee of the grantee.  
237  Application and transitional provisions  
(1) The amendments made by this Part apply in relation to conduct engaged 
in on or after the commencement of this Part.  
(2) If, on or after the commencement of this Part, an exclusive licensee of 
PBR in a plant variety begins an action for infringement of PBR in 
relation to conduct engaged in before and on or after that 
commencement, the Federal Court or the Federal Circuit Court may 
only gran t relief under section  56 or 56A of the Plant Breeder’s Rights 
Act 1994  in relation to the conduct that was engaged in on or after 
commencement.  Other measures   Schedule 2  
Publishing personal information of  registered patent or trade marks attorneys   Part 13  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  87 
 Part 13—Publishing personal information of 
registered patent or trade marks attorneys  
Division  1—Amendments  
Patents Act 1990  
238  After subsection  183(1)  
Insert:  
 (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 Manag er considers to be relevant to the 
Board’s functions.  
239  After section  227A  
Insert:  
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 the 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 addr ess 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 o r other 
political subdivision (however described) of that country in 
which the attorney’s work address is located;  
 (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 Schedule 2   Other measures  
Part 13   Publishing personal information of registered patent or trade marks  attorneys  
 
 
88 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Privacy Act 1988 ) that is about a registered patent attorney with the 
attorney’s written consent.  
Trade Marks Act 1995  
240  After section  229 
Insert:  
229AA   Designated Manager may disclose information to Board  
  The Designated Manager may disclose to the Board personal 
information:  
 (a) that is about a registered trade marks attorney; and  
 (b) that the Designated Manager considers to be relevan t to the 
Board’s functions.  
241  After section  229A  
Insert:  
229B   Publishing personal information of registered trade marks 
attorneys  
 (1) The Board may publish on its website any or all of the following 
personal information that is about a registered trad e marks 
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 located;  
 (e) the attorney’s work email address.  
 (2) Subsection  (1) does not prevent the Board from publishing on its 
website other personal information that is about a registered trade 
marks attorney with the attorney’s written consent.  Other measures   Schedule 2  
Publishing personal information of registered patent or trade marks attorneys   Part 13  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  89 
 Division  2—Application provisions  
242  Application provisions  
Patents  
(1) The amendments of the Patents Act 1990 made by this Part apply in 
relation to information about a registered patent attorney obtained 
before, on or after the commencement of this item (whether the attorney 
was registered under that Act before, on or after that commencement).  
Trade marks  
(2) The amendments of the Trade Marks Act 1995 made by this Part apply 
in relation to information about a registered trade marks attorney 
obtained before, on or after the commencement of this item (whether 
the at torney was registered under that Act before, on or after that 
commencement).  Schedule 2   Other measures  
Part 14   Secretary’s role in the Plant Breeder’s Rights Act  
 
 
90 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 14—Secretary ’s role in the Plant Breeder ’s 
Rights Act  
Plant Breeder ’s Rights Act 1994  
243  Subsection  3(1) (definition of approved form ) 
Repeal the definition, substitute:  
approved form , in relation to a provision of this Act, means a form 
approved in an instrument under subsection  (1B) for the purposes 
of that provision.  
244  Subsection  3(1) (definition of genetic resource centre ) 
Omit “Secretary”, substitute “Registrar”.  
245  Subsection  3(1) (definition of herbarium ) 
Omit “Secretary”, substitute “Registrar”.  
246  Subsection  3(1) (definition of Secretary ) 
Repeal the definition.  
247  After subsection  3(1A)  
Insert:  
 (1B) The Registrar may, by writing, approve a form for the purp oses of 
a provision of this Act.  
248  Subsection  8(1) 
Omit “Secretary”, substitute “Registrar”.  
249  Subsections  19(3) and (4) and (6) to (11)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
250  Subsection  24(1)  
Omit “Secretary”, substitute  “Registrar”.  
251  Subparagraph 26(2)(i)(iii)  
Omit “Secretary”, substitute “Registrar”.  Other measures   Schedule 2  
Secretary’s role in  the Plant Breeder’s Rights Act   Part 14  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  91 
 252  Subsections  28(1), (2) and (3)  
Omit “Secretary”, substitute “Registrar”.  
253  Subsections  29(3) and (4)  
Omit “Secretary”, substitute “Registrar”.  
254  Subsections  30(1) to (5)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
255  Subsections  31(1), (2), (4), (5) and (6)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
256  Subsections  32(1) to (5)  
Omit “Secretary” (wherever occurring), su bstitute “Registrar”.  
257  Subsection  33(2)  
Omit “Secretary”, substitute “Registrar”.  
258  Section  34 (heading)  
Repeal the heading, substitute:  
34  Detailed description in support of application to be given to 
Registrar  
259  Subsections  34(1), (2), (5) and  (6) 
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
260  Subsections  35(1) and (2)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
261  Paragraph 36(3)(d)  
Omit “Secretary”, substitute “Registrar”.  
262  Subsection  37(1)  
Omit “ Secretary” (wherever occurring), substitute “Registrar”.  Schedule 2   Other measures  
Part 14   Secretary’s role in the Plant Breeder’s Rights Act  
 
 
92 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 263  Subsection  37(2)  
Omit “Secretary’s”, substitute “Registrar’s”.  
264  Paragraph 37(2)(b)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
265  Subsections  37(2B), (3), (4), (6) and (7) 
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
266  Subsections  38(4) and (5)  
Omit “Secretary”, substitute “Registrar”.  
267  Subsection  38(5) (note)  
Omit “Secretary”, substitute “Registrar”.  
268  Subsections  39(1), (2) and (4)  
Omit “Sec retary” (wherever occurring), substitute “Registrar”.  
269  Subsections  40(3), (7), (8), (10) and (11)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
270  Subsections  41(2) and (5)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
271  Subsections  44(1), (2), (3), (4), (5), (6) and (9)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
272  Subsection  44(10)  
Omit “issue to that person by the Secretary”, substitute “issue to that 
person by the Registrar”.  
273  Subsection  44(10)  
Omit “the Secretary or”.  
274  Subsection  44(10)  
Omit “as the Secretary”, substitute “as the Registrar”.  Other measures   Schedule 2  
Secretary’s role in the Plant Breeder’s Rights Act   Part 14  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  93 
 275  Subsection  44(12)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
276  Subsection  46(1)  
Omit “Secretary”, substi tute “Registrar”.  
277  Subsections  47(1) and (2)  
Omit “Secretary”, substitute “Registrar”.  
278  Paragraph 49(3)(a)  
Omit “Secretary”, substitute “Registrar”.  
279  Subsections  50(1), (2), (3), (4), (5), (8), (9) and (10)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
280  Subsections  51(1) and (3)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
281  Section  52 
Omit “Secretary”, substitute “Registrar”.  
282  Subsection  58(3)  
Repeal the subsection, substitute:  
 (3) The Re gistrar has the functions and powers that are conferred on 
the Registrar by this Act or by the regulations.  
283  Subsection  59(2)  
Repeal the subsection.  
284  Subsection  59(4)  
Omit “the Minister or the Secretary under subsection  (1) or (2)”, 
substitute “the  Minister under subsection  (1)”. 
285  Subsection  59(5)  
Omit “person who originally delegated the corresponding power or 
function under subsection  (1) or (2)”, substitute “Minister”.  Schedule 2   Other measures  
Part 14   Secretary’s role in the Plant Breeder’ s Rights Act  
 
 
94 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 286  Paragraph 60(1)(a)  
Repeal the paragraph.  
287  Subsection  61(1)  
Omit “ Secretary”, substitute “Registrar”.  
288  Subsections  68(1), (2), (3) and (4)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
289  Subsection  70(1)  
Omit “Secretary” (wherever occurring), substitute “Registrar”.  
290  Section  71 
Omit “Secretary ” (wherever occurring), substitute “Registrar”.  
291  Paragraph 73(b)  
Omit “the Secretary or”.  
292  Subsection  75(1)  
Omit “the Secretary or”.  
293  Paragraph 77(1)(b)  
Omit “by the Secretary”, substitute “by the Registrar”.  
294  After subparagraph  77(1)(b)(iv)  
Insert:  
 (iva)  under section  21 to amend, or refuse to amend, the 
Register; or  
295  Subparagraphs  77(1)(b)(ix) and (x)  
Omit “Secretary”, substitute “Registrar”.  
296  Paragraph 77(1)(c)  
Repeal the paragraph.  
297  Subsection  77(3)  
Omit “Secretar y”, substitute “Registrar”.  Other measures   Schedule 2  
Secretary’s role in the Plant Breeder’s Rights Act   Part 14  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  95 
 298  Subparagraph 80(2)(a)(iv)  
Omit “Secretary”, substitute “Registrar”.  
299  Saving and transitional provisions  
(1) A thing done by, or in relation to, the Secretary under the Plant 
Breeder’s Rights Act 1994  before the commence ment of this item has 
effect on and after that commencement as if it had been done by, or in 
relation to, the Registrar.  
(2) A form approved by the Secretary and in force immediately before the 
commencement of this item for the purposes of a provision of t he Plant 
Breeder’s Rights Act 1994 has effect on and after that commencement 
as if it were a form approved by the Registrar in an instrument under 
subsection  3(1B) of that Act for the purposes of that provision.  
(3) Despite the repeal of paragraph  60(1)(a)  of the Plant Breeder’s Rights 
Act 1994 made by this Part, that paragraph, as in force immediately 
before the commencement of this item, continues in force on and after 
that commencement for the period of 12 months beginning on the day 
this item commences.  
(4) Paragraph 77(1)(c) of the Plant Breeder’s Rights Act 1994 , as in force 
immediately before the commencement of this item, continues to apply 
on and after that commencement in relation to a decision of the 
Registrar, before that commencement, under sect ion 21 of that Act to 
amend, or refuse to amend, the Register.  Schedule 2   Other measures  
Part 15   Seizure notices  
 
 
96 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 15—Seizure notices  
Division  1—Amendments  
Copyright Act 1968  
300  Subsection  135AC(1)  
Omit “either personally or by post, a written notice”, substitute “by any 
means of communication (including by electronic means), a notice”.  
301  Paragraphs 135AC(3)(c) and (d)  
Repeal the paragraphs, substitute:  
 (c) if the notice is given to the objector —state the name and the 
address of the place of business or residence of the importer 
(if known), unless the Comptroller -General of Customs is 
satisfied, for reasons of confidentiality, that it is not desirable 
to do so; and  
 (d) if the notice is given to the importer —state the name and the 
address of the place of business or residence of:  
 (i) the obj ector; or  
 (ii) if the objector has nominated a person to be the 
objector’s agent or representative for the purposes of 
this Division —that person;  
  unless the Comptroller -General of Customs is satisfied, for 
reasons of confidentiality, that it is not desi rable to do so.  
Olympic Insignia Protection Act 1987  
302  Subsection  55(1)  
Omit “either personally or by post, a written notice”, substitute “by any 
means of communication (including by electronic means), a notice”.  
303  Paragraph 55(2)(a)  
Repeal the parag raph, substitute:  
 (a) state the name and the address of the place of business or 
residence of the designated owner (if known), unless the Other measures   Schedule 2  
Seizure notices   Part 15  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  97 
 Comptroller -General of Customs is satisfied, for reasons of 
confidentiality, that it is not desirable to do so; and  
Trade Marks Act 1995  
304  Subsection  134(1)  
Omit “either personally or by post, a written notice”, substitute “by any 
means of communication (including by electronic means), a notice”.  
305  Paragraphs 134(3)(c) and (d)  
Repeal the paragraphs, substitute:  
 (c) if the notice is given to the objector —state the name and the 
address of the place of business or residence of the 
designated owner (if known), unless the Comptroller -General 
of Customs is satisfied, for reasons of confidentiality, that it 
is not desira ble to do so; and  
 (d) if the notice is given to the designated owner —state the name 
and the address of the place of business or residence of:  
 (i) the objector; or  
 (ii) if the objector has nominated a person to be the 
objector’s agent or representative f or the purposes of 
this Division —that person;  
  unless the Comptroller -General of Customs is satisfied, for 
reasons of confidentiality, that it is not desirable to do so.  
Division  2—Application provisions  
306  Application provisions  
Copyright  
(1) The amendments of section  135AC of the Copyright Act 1968  made by 
this Part apply in relation to notices given under subsection  135AC(1) 
of that Act on or after the commencement of this item.  
Olympic expressions  
(2) The amendments of section  55 of the Olympic Insignia Protection Act 
1987  made by this Part apply in relation to notices given under 
subsection  55(1) of that Act on or after the commencement of this item.  Schedule 2   Other measures  
Part 15   Seizure notices  
 
 
98 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Trade marks  
(3) The amendments of section  134 of the Trade Marks Act 1995  made by 
this Part appl y in relation to notices given under subsection  134(1) of 
that Act on or after the commencement of this item.  Other measures   Schedule 2  
Prosecutions   Part 16  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  99 
 Part 16—Prosecutions  
Division  1—Amendments  
Patents Act 1990  
307  Section  204 
Omit “or (5)”, substitute “, (5) or (6) or 201B(1) or (2)”.  
308  Sect ion 204 
After “202A”, insert “, 202B”.  
Trade Marks Act 1995  
309  Subsection  156(3A)  
Omit “the company” (first occurring).  
310  Before subsection  156(4)  
Insert:  
Common rules  
311  At the end of section  157A  
Add:  
Time for starting prosecutions  
 (9) Despite se ction  15B of the Crimes Act 1914 , a prosecution for an 
offence against this section may be started at any time within 5 
years after the offence was committed.  
Division  2—Application provision  
312  Application provision  
The amendments of section  204 of the Patents Act 1990 and of 
section  157A of the Trade Marks Act 1995  made by this Part apply in 
relation to offences committed on or after the commencement of this 
item.  Schedule 2   Other measures  
Part 17   Updating references to Designs Act  
 
 
100 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 17—Updating references to Designs Act  
Olympic Insignia Protection Act 1987  
313  Subse ction  2(1) (definition of Registrar ) 
Omit “ Designs Act 1906 ”, substitute “ Designs Act 2003 ”. 
314  Subsection  2(2) 
Repeal the subsection.  
315  Subsection  2(3) 
Omit “ Designs Act 1906 ” (wherever occurring), substitute “ Designs Act 
2003 ”. 
316  Paragraph 10(7)( e) 
Omit “ Designs Act 1906 ”, substitute “ Designs Act 2003 ”. 
317  Subsection  10(12) ( paragraph  (a) of the definition of 
published design ) 
Omit “ Designs Act 1906 ”, substitute “ Designs Act 2003 ”. 
318  Subsection  12(5)  
Omit “Section  36 of the Designs Act 1906 ”, substitute “Section  131 of 
the Designs Act 2003 ”. 
319  Section  13 
Omit “Section  8A of the Designs Act 1906 ”, substitute “Section  124 of 
the Designs Act 2003 ”. 
320  Section  18 (heading)  
Repeal the heading, substitute:  
18  Protected designs not to be registered under the Designs Act 2003  
321  Section  18 
Omit “ Designs Act 1906 ”, substitute “ Designs Act 2003 ”. Other measures   Schedule 2  
Updating  references to Designs Act   Part 17  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  101 
 322  Paragraphs 20(1)(b) and (3)(d)  
Omit “ Designs Act 1906 ”, substitute “ Designs Act 2003 ”. Schedule 2   Other measures  
Part 18   Removing certain references to New Zealand  
 
 
102 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 18—Removing certain  references to New 
Zealand  
Patents Act 1990  
323  Section  3 (list of definitions)  
Omit “New Zealand Assistant Commissioner of Patents”.  
324  Section  3 (list of definitions)  
Omit “New Zealand delegate”.  
325  Subsection  20(2)  
Omit “an employee, or a New Zeala nd delegate,”, substitute “or an 
employee,”.  
326  Subsection  20(3)  
Repeal the subsection.  
327  Subsections  183(5) and (6)  
Repeal the subsections.  
328  Subsections  209(1A) and (1B)  
Repeal the subsections.  
329  Subsection  214(1)  
Omit “(1)”.  
330  Subsections  214(2) and (3)  
Repeal the subsections.  
331  Paragraph 223(1)(ba)  
Repeal the paragraph.  
332  Subsections  223(1A) and (1B)  
Repeal the subsections.  Othe r measures   Schedule 2  
Removing certain references to New Zealand   Part 18  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  103 
 333  Subsection  224(3A)  
Repeal the subsection.  
334  Subsections  227(6) and (7)  
Repeal the subsections.  
335  Section  227AA  
Repeal the section.  
336  Schedule  1 (definitions of New Zealand Assistant 
Commissioner of Patents and New Zealand delegate ) 
Repeal the definitions.  Schedule 2   Other measures  
Part 19   International Convention for the Protection of New Vari eties of Plants  
 
 
104 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 19—International Convention for the Protection 
of New Varieties of Plants  
Plant Breeder ’s Rights Act 1994  
337  Subsection  3(1) 
Insert:  
1991 Act of the Convention means the Act of the International 
Convention for the Protection of New Varieties of Plants, done at 
Geneva on 19  March 1991, as that Act is in force for Australia 
from time to time.  
Note:  The text of the 1991 Act of the Convention is set out in Australian 
Treaty Series 2000 No.  6 ([2000] ATS 6). In 201 8, the text of a 
Convention in the Australian Treaty Series was accessible through the 
Australian Treaties Library on the Aust LII website 
(www.austlii.edu.au).  
Act of the Convention  means:  
 (a) the Act of the International Convention for the Protection of 
New Varieties of Plants, done at Geneva on 23  October 1978, 
as that Act is in force for Australia from time to time; or  
 (b) the 1991 Act of the Convention; or  
 (c) any other Act of that Convention determined by the Minister 
under subsection  (1A), as that Act is in force for Australia 
from time to time.  
Note:  The text of the Act mentioned in paragraph  (a) is set out in Australian  
Treaty Series 1989 No.  2 ([1989] ATS 2). In 201 8, the text of a 
Convention in the Australian Treaty Series was accessible through the 
Australian Treaties Library on the AustLII website 
(www.austlii.edu.au).  
338  Subsection  3(1) (definition of contracting party ) 
Omit “that is a party to the Convention”, substitute “in relation to which 
Australia has obligations under an Act of the Convention”.  
339  Subsection  3(1) (definition of Convention ) 
Repeal the definition.  Other measures   Schedule 2  
International Convention for the Protection of New Varieties of Plants   Part 19  
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  105 
 340  Subsection  3(1) (definition of PBR , twice occurring)  
Repeal the definitions, substitute:  
PBR  means:  
 (a) in relation to a plant variety registered (or to be registered) in 
Australia under this Act —the plant breeder’s right specified 
in section  11; or  
 (b) in relation to a plant variety regis tered (or to be registered) in 
another contracting party —a plant breeder’s right, 
corresponding to the right specified in section  11, conferred 
under the law of that contracting party; or  
 (c) in relation to a plant variety registered (or to be registered)  in 
a foreign country that is not a contracting party —a plant 
breeder’s right , corresponding to the right specified in 
section  11, conferred under the law of that foreign country.  
Note:  The Plant Breeder’s Rights Act 1994 , as in force before the commencement of this item, 
contained 2 definitions of PBR . 
341  Subsection  3(1) (definition of Union ) 
Omit “Convention”, substitute “1991 Act of the Convention”.  
342  After subsection  3(1) 
Insert:  
Act of the Convention  
 (1A)  The Mi nister may, by legislative instrument, make a determination 
for the purposes of paragraph  (c) of the definition of Act of the 
Convention in subsection  (1). 
343  Paragraph 10(a)  
Omit “the Convention” (first occurring), substitute “an Act of the 
Convention”.  
344  Paragraph 10(a)  
Omit “the Convention” (second occurring), substitute “that Act”.  
345  Subsection  29(4)  
Omit “3 years”, substitute “5 years”.  Schedule 2   Other measures  
Part 19   International Convention for the Protection of New Varieties of Plants  
 
 
106 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 346  Paragraph 43(6)(b)  
Omit “ in the territory of another contracting party”, substitute “ outside 
of Australi a”. 
347  Subsection  43(8)  
After “contracting party”, insert “, or in a foreign country that is not a 
contracting party”.  
348  Subsection  43(10) (definitions of authority and territory ) 
Repeal the definitions.  
349  Subsection  43(10) (definition of variety ) 
Omit “Convention”, substitute “1991 Act of the Convention”.  
350  Application  provision  
The amendments made by this Part apply in relation to a grant of PBR 
in a plant variety on or after the commencement of this item, whether 
the application for that right  is made before, on or after that 
commencement.  Other measures   Schedule 2  
Other amendments   Part 2 0 
 
 
No. 77, 2018  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  107 
 Part 20—Other amendments  
Patents Act 1990  
351  Subsection  222(2)  
Omit “, and of complete specifications which are open to public 
inspection”.  
Plant Breeder ’s Rights Act 1994  
352  Section  42 
Repeal the section.  
353  Subsection  49(2)  
Omit “appropriate”, substitute “to be necessary in the public interest”.  
354  Subsection  69(1)  
Omit “, 22(3) or 42(1)”, substitute “or 22(3)”.  Schedule 2   Other measures  
Part 21   Repeals of Acts  
 
 
108 Intellectual Propert y Laws Amendment (Productivity Commission 
Response Part  1 and Other Measures) Act 2018  No. 77, 2018  
 Part 21—Repeals of Acts  
Patents Amendment (Patent Cooperation Treaty) Act 1979  
355  The whole of the Act  
Repeal the Act.  
 
 
 
 
[Minister’s second reading speech made in — 
House of Representatives on 28 March 2018  
Senate on 27 June 2018 ] 
 
 
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