Note: An electronic version of this Act is available in ComLaw ( http://www.comlaw.gov.au/ ) 
 
 
 
 
 
 
 
 
 
Intellectual P roperty Laws Amendment 
Act 2015  
 
No. 8, 2015  
 
 
 
 
 
An Act  to amend legislation relating to intellectual 
property, and for related purposes  
   
   
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  i 
 Contents  
1 Short title  ................................ ................................ ...........................  1 
2 Commencement  ................................ ................................ .................  2 
3 Schedule(s)  ................................ ................................ ........................  4 
Schedule  1—TRIPS Protocol interim waiver  5 
Part 1—Amendments  5 
Patents Act 1990  5 
Part 2—Application  21 
Schedule  2—TRIPS Protocol: later commencing amendments  22 
Patents Act 1990  22 
Schedule  3—Plant Breeder’s Rights Act 1994: Federal Circuit 
Court  23 
Plant Breeder’s Rights Act 1994  23 
Schedule  4—Australia New Zealand Single Economic Market  27 
Part 1—Amendments  27 
Designs Act 2003  27 
Patents Act 1990  27 
Plant Breeder’s Rights Act 1994  40 
Trade Marks Act 1995  41 
Part 2—Transitional provisions  44 
Schedule  5—Other amendments  47 
Part 1—Document retention  47 
Division  1—Amendments  47 
Designs Act 2003  47 
Patents Act 1990  47 
Trade Marks Act 1995  47 
Division  2—Application of amendments  47 
Part 2—Technical amendments  48 
Division  1—Amendments  48 
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ii Intellectual Property Laws Amendment Act 2015  No. 8, 201 5 
 Patents Act 1990  48 
Division  2—Application of amendments  50 
 
ComLaw Authoritative Act C2015A00008 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  1 
 
 
 
 
Intellectual Property Laws Amendment 
Act 2 015 
No. 8, 2015  
  
 
An Act  to amend legislation relating to intellectual 
property, and for related purposes  
[Assented to 25 February 2015 ] 
The Parliament of Australia enacts:  
1  Short title  
  This Act may be cited as the Intellectual Property Laws 
Amendment  Act 201 5. 
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2 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 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 tabl e. Any other statement in column 2 has effect 
according to its terms.  
 
Commencement information  
Column 1  Column 2  Column 3  
Provision(s)  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.  25 February 
2015  
2.  Schedule  1 The start of the day after the end of the 
period of 6 months beginning on the day this 
Act receives the Royal Assent.  25 August 2015  
3.  Schedule  2 The later of:  
(a) immediately after the start of the day 
after the end of the period of 6 months 
beginning on the day this Act receives 
the Royal Assent; and  
(b) immediately after Article 31bis of the 
Agreement on Trade -Related Aspects of 
Intellectual Property Rights set out in 
Annex  1C to t he Marrakesh Agreement 
Establishing the World Trade 
Organization, done at Marrakesh on 
15 April 1994, comes into force for 
Australia.  
However, the provision(s) do not commence 
at all if the event mentioned in paragraph  (b) 
does not occur.  
The Minister admi nistering the Patents Act 
1990  must announce by notice in the Gazette 
the day the event mentioned in paragraph  (b) 
occurs.   
4.  Schedule  3 The day after the end of the period of 6 
months beginning on the day this Act 
receives the Royal Assent.  25 August 2015  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  3 
 Commencement information  
Column 1  Column 2  Column 3  
Provision(s)  Commencement  Date/Details  
5.  Schedule  4 A single day to be fixed by Proclamation.  
However, if the provision(s) do not 
commence within the period of 24 months 
beginning on the day this Act receives the 
Royal Assent, the provision(s) are repealed 
on the day after the e nd of that period.   
6.  Schedule  5, 
Part 1 The day after this Act receives the Royal 
Assent.  26 February 
2015  
7.  Schedule  5, 
item 8 Immediately after the commencement of 
item 32 of Schedule  6 to the Intellectual 
Property Laws Amendment (Raising the 
Bar) Act 2012 . 15 April 20 13 
8.  Schedule  5, 
items  9 to 17 A single day to be fixed by Proclamation.  
However, if the provision(s) 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.  25 August 2015  
9.  Schedule  5, 
item 18 Immediately after the commencement of 
item 32 of Schedule  6 to the Intellectual 
Property Laws Amendment (Raising the 
Bar) Act 2012 . 15 April 20 13 
10.  Schedule  5, 
items 19 to 21 A single  day to be fixed by Proclamation.  
However, if the provision(s) 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.  25 August 2015  
11.  Schedule  5, 
item 22 The day this Act receives the Royal Assent.  25 February 
2015  
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.  
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4 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 3  Schedule(s)  
  Each Act that is specified in a Schedule to this Act is amended or 
repealed as set  out in the applicable items in the Schedule 
concerned, and any other item in a Schedule to this Act has effect 
according to its terms.  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  5 
 Schedule  1—TRIPS Protocol interim waiver  
Part 1—Amendments  
Patents Act 1990  
1  Section  3 (list of definitions)  
Omit “com pulsory licence”.  
2  Section  3 (list of definitions)  
Insert “eligible importing country”.  
3  Section  3 (list of definitions)  
Insert “patented pharmaceutical invention”.  
4  Section  3 (list of definitions)  
Insert “pharmaceutical product”.  
5  Section  3 (list of definitions)  
Insert “PPI”.  
6  Section  3 (list of definitions)  
Insert “PPI compulsory licence”.  
7  Section  3 (list of definitions)  
Insert “PPI order”.  
8  Section  3 (list of definitions)  
Insert “PPI order applicant”.  
9  Section  3 (list of definitions)  
Insert “TRIPS Agreement”.  
10  Section  3 (list of definitions)  
Insert “WTO General Council decision of 30  August 2003”.  
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6 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 11  Before subsection  70(5)  
Insert:  
Meaning of first regulatory approval date  
12  After subsection  70(5)  
Insert:  
 (5A)  For the purposes of paragraph  (5)(a), disregard an inclusion in the 
Australian Register of Therapeutic Goods of goods that contain, or 
consist of, a pharmaceutical substance if the inclusion was sought 
for the sole purpose of exporting the goods from Australia to 
address a pub lic health problem in an eligible importing country:  
 (a) in circumstances of national emergency or other 
circumstances of extreme urgency; or  
 (b) by the public non -commercial use of the goods.  
Note:  This subsection also applies in relation to an applicat ion for an 
extension of the term of a standard patent (see paragraph  71(2)(b)).  
Meaning of pre-TGA marketing approval  
13  At the end of paragraph  71(2)(b)  
Add “, as worked out under subsection  70(5A) (if applicable)”.  
14  Before section  133 
Insert:  
Part  1—Introduction  
   
132A   Simplified outline of this Chapter  
This Chapter provides for court orders requiring  the grant of 
compulsory licences in respect of  patented inventions . 
Special provision is made for compulsory licences  to exploit 
patented pharmaceutical inventions . This is to enable the 
manufacture of a pharmaceutical product  in Australia  for export to 
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  7 
 an eligible importing country,  to address  public health problems in 
that country.  
This Chapter also provides generally for the surrender of patents, 
and for court orders revoking patents.  
Part  2—Compulsory licences (general)  
   
132B   Simplified outline of this Part  
The Federal Court may make an order under this Part requiring the 
grant of a compulsory licence to work a patented invention.  
The court may order a  compulsory licence to be granted if the 
reasonable requirements of the public are not being met with 
respect to a patented invention . 
The reasonable requirements of the public relate, broadly speaking, 
to whether Australian trade or indus try is unreasonably affected by 
the actions of the patentee in relation to the manufacture or 
licensing of the invention (or the carrying on of a patented 
process).  
The court may also order a compulsory licence to be granted if the 
patentee has engaged in restrictive trade practices in connection 
with the patent under the Competition and Consumer Act 2010  or 
under an application law (within the meaning of that Act).  
The court may order a patent to be revoked  after an order for a 
compulsory licence has been made ( on the same grounds that apply 
to an order for a compulsory licence) . 
The patentee must be paid an agreed amount of remuneration, or an 
amount of remuneration determined by the court . 
15  Section  133 (heading)  
Repeal the heading, substitute:  
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8 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 133  Compulsory licences —general  
16  At the end of subsection  133(1)  
Add:  
Note:  For compulsory licences for the manufacture and export of patented 
pharmaceutical inventions to eligible importing countries, see Part  3. 
However, Part  3 does not prevent a compul sory licence from being 
ordered under this Part in relation to such an invention (see 
section  136C ). 
17  Section  134 (heading)  
Repeal the heading, substitute:  
134  Revocation of patent after grant of compulsory licence under 
section  133 
18  Subsection  134(1)  
After “compulsory licence”, insert “ordered under section  133”.  
19  After section  136A  
Insert:  
Part  3—Patented pharmaceutical invention 
compulsory licences (for manufacture  and 
export to eligible importing countries)  
Division  1—Introduction  
136B  Simplified outline of this Part  
The Federal Court may make an order under this Part requiring  the 
grant of a compulsory licence to exploit a patented pharmaceutical 
invention for manufacture and export to an eligible importing 
country . 
The court may orde r a compulsory licence to be granted if the 
proposed use of the pharmaceutical product is to address a public 
health issue in the eligible importing country:  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  9 
  (a) in a national emergency (or other extremely urgent 
circumstances); or  
 (b) by the public non -commercial use of the product.  
The order may be amended or r evoked by another order of the 
court . 
The patentee must be paid an agreed amount of remuneration, or an 
amount of remuneration determined by the court.  
136C   Relationship between Parts  2 and 3 
  This Part does not prevent a compulsory licence from being 
ordered under Part  2 in relation to a patented pharmaceutical 
invention.  
Division  2—Patented pharmaceutical invention 
compulsory licences  
136D   PPI compulsory licences —applications for orders  
Applic ation for order  
 (1) A person (the PPI order applicant ) may apply to the Federal Court 
for an order (the PPI order ) under section  136E  requiring the 
patentee of a patented pharmaceutical invention to grant the PPI 
order applicant a licence (a PPI compulsor y licence ) to exploit the 
invention to the extent necessary for the purposes of manufacturing 
a pharmaceutical product in Australia for export to an eligible 
importing country.  
Note 1:  A patented pharmaceutical invention may be a patented product or a 
patented process: see the definition of patented pharmaceutical 
invention  in Schedule  1. 
Note 2:  For remuneration in respect of a licence, see section  136J . 
 (2) However, a person cannot apply for an order in respect of an 
innovation patent unless the patent has been certified.  
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10 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 Statement —eligible importing country  
 (3) An application must include a copy of a statement made by or on 
behalf of, and with the authorisation of, the eligible importing 
country to the effect that it will take reasonable measures withi n its 
means, proportionate to its administrative capacities and to the risk 
of trade diversion, to prevent re -exportation from its territory of a 
pharmaceutical product imported into its territory in accordance 
with a PPI compulsory licence.  
Statement —impo rter 
 (4) If the pharmaceutical product is to be imported on behalf of, and 
with the authorisation of, the eligible importing country, an 
application must also include a copy of a statement made by the 
importer to the effect that it will take reasonable me asures within 
its means to prevent the pharmaceutical product from being used 
other than in accordance with a PPI compulsory licence.  
Parties  
 (5) The following are parties to proceedings on an application under 
this section:  
 (a) the PPI order applicant;  
 (b) the patentee;  
 (c) any person claiming an interest in the patent as exclusive 
licensee or otherwise;  
 (d) at the option of the eligible importing country —that country.  
136E   PPI compulsory licences —orders  
 (1) After hearing an application for a PPI or der under section  136D , 
the Federal Court may, subject to this Part, make the order sought 
if the court is satisfied of all of the following matters:  
 (a) the application is made in good faith;  
 (b) the pharmaceutical product is to be imported:  
 (i) by the  eligible importing country; or  
 (ii) by a person (the  third party importer ) on behalf of, and 
with the authorisation of, the eligible importing country;  
 (c) the proposed use of the pharmaceutical product is to address 
a public health problem in the eligi ble importing country:  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  11 
  (i) in circumstances of national emergency or other 
circumstances of extreme urgency; or  
 (ii) in other circumstances —by the public non -commercial 
use of the pharmaceutical product;  
 (d) exploiting the patented pharmaceutical invent ion is necessary 
to enable the import and proposed use of the pharmaceutical 
product as mentioned in paragraphs  (b) and (c);  
 (e) if subparagraph  (c)(ii) applies:  
 (i) the PPI order applicant has given the patentee a notice 
in the approved form seeking fro m the patentee an 
authorisation to exploit the patented pharmaceutical 
invention for public non -commercial use; and  
 (ii) during the 30 days beginning when the notice was 
given, the PPI order applicant has tried, without success, 
to obtain such an authoris ation from the patentee on 
reasonable terms and conditions;  
 (f) the notification requirements prescribed by regulation in 
relation to the import ation  of the pharmaceutical product into 
the eligible importing country have been complied with;  
 (g) the PPI o rder applicant, the eligible importing country and, if 
there is a third party importer, that importer, will take 
reasonable measures to prevent a pharmaceutical product that 
is exported from Australia in accordance with a PPI 
compulsory licence from being used for a purpose other than 
the purpose of addressing the public health problem 
mentioned in paragraph  (c). 
 (2) Without limiting the matters that the court may take into account in 
deciding whether it is satisfied of a matter mentioned in 
subsection  (1), the court must take into account any matters 
prescribed by regulation.  
 (3) A regulation  made for the purposes of paragraph  (1)(f) may:  
 (a) without limiting subsection  33(3A) of the Acts Interpretation 
Act 1901, prescribe different notification requir ements for the 
importation of pharmaceutical products into eligible 
importing countries  of different kinds ; and  
 (b) despite subsection  14(2) of the Legislative Instruments Act 
2003 , refer to  eligible importing countries (or different kinds 
of eligible imp orting countries)  by applying, adopting or 
incorporating, with or without modification, any matter 
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12 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 contained in any other instrument or other writing as in force 
or existing from time to time.  
136F   PPI compulsory licences —terms  
 (1) A PPI order must direc t that the PPI compulsory licence is granted 
on the following terms:  
 (a) no more than the quantity of the pharmaceutical product that 
is determined by the Federal Court to be necessary to meet 
the needs of the eligible importing country is manufactured;  
 (b) the entirety of the pharmaceutical product manufactured for 
that purpose is exported to that country;  
 (c) the pharmaceutical product is labelled and marked in 
accordance with the regulations;  
 (d) before shipment of the pharmaceutical product begins, the 
shipment information prescribed by regulation is made 
available on a website by, or on behalf of, the licensee for a 
minimum period prescribed by regulation;  
 (e) the duration of the licence is only for the period of time 
determined by the Federal Cour t to be necessary to address 
the public health problem concerned;  
 (f) the licence does not give the licensee, or a person authorised 
by the licensee, the exclusive right to exploit the patented 
pharmaceutical invention;  
 (g) the licence is to be assignabl e only in connection with an 
enterprise or goodwill in connection with which the licence is 
used;  
 (h) the licensee must give the Commissioner the information 
prescribed by regulation in relation to the licence in 
accordance with the regulations.  
 (2) A PP I order may also direct that the licence is to be granted on any 
other terms specified in the order, including terms covering:  
 (a) other requirements relating to the labelling and marking of 
the pharmaceutical product; and  
 (b) other information to be mad e available by the licensee and 
the way in which it is to be made available.  
 (3) However, a term specified in a PPI order must not be inconsistent 
with any regulations prescribed for the purposes of 
paragraph  (1)(c), (d) or (h).  
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 136G   PPI compulsory licences —amendment  
Application for order  
 (1) A person may apply to the Federal Court for an order amending  
any of the following terms of a PPI compulsory licence:  
 (a) the quantity of the pharmaceutical product concerned;  
 (b) how the pha rmaceutical product is labelled and marked;  
 (c) the duration of the licence;  
 (d) the information that is to be made available by the licensee 
and the way it is to be made available.  
Note:  For remuneration in respect of the licence as amended, see 
section  136J . 
Order  
 (2) The court may make  the order sought in relation to a term if it is 
satisfied that:  
 (a) it is just to do so in all the circumstances; and  
 (b) the legitimate interests of the following are not likely to be 
adversely affected by the amendment of the term:  
 (i) the patentee;  
 (ii) any person claiming an interest in the patent as 
exclusive licensee or otherwise;  
 (iii) the licensee;  
 (iv) the eligible importing country.  
 (3) However, an amended term must not be inconsistent with any 
regulations prescribed for the purposes of paragraph  136F (1)(c), 
(d) or (h).  
Parties  
 (4) The following are parties to any proceedings under this section:  
 (a) the applicant under subsection  (1); 
 (b) the patentee;  
 (c) any person claiming an interest in the patent as exclusive 
licensee or otherwise;  
 (d) the licensee;  
 (e) at the option of the eligible importing country —that country.  
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14 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 136H   PPI compulsory licences —revocation  
Application  
 (1) A person may apply to the Federal Court for an order revoking  a 
PPI c ompulsory licence.  
Note:  For remuneration in respect of the use of a PPI compulsory licence 
while it is in force, see section  136J . 
Federal Court may revoke licence  
 (2) The Federal Court may make the order sought  if the court is 
satisfied that:  
 (a) one o r more of the following applies:  
 (i) the substantive circumstances that justified the grant of 
the licence have ceased to exist and are unlikely to 
recur;  
 (ii) the licensee has not complied with the terms of the 
licence;  
 (iii) if an amount of remunerati on has been agreed or 
determined under section  136J —the amount has not 
been paid within the time agreed or determined; and  
 (b) the legitimate interests of the licensee or the eligible 
importing country are not likely to be adversely affected by 
the revocation.  
Parties  
 (3) The following are parties to any proceedings under this section:  
 (a) the applicant for revocation;  
 (b) the licensee;  
 (c) at the option of the eligible importing country —that country.  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  15 
 Division  3—Remuneration  
136J   PPI compulsory licences —remuneration  
Working out amount of remuneration  
 (1) The patentee is to be paid an amount agreed or determined under 
subsection  (3) in respect of the use of a patented pharmaceutical 
invention authorised by a PPI compulsory licence.  
 (2) For the p urposes of subsection  (1), the use of a patented 
pharmaceutical invention authorised by the PPI compulsory licence 
is: 
 (a) while it is in force —the use authorised by the licence as 
granted and as amended (from time to time) under 
section  136G ; or 
 (b) if it has ceased to be in force (whether because it was 
revoked or otherwise) —the actual use of the patented 
pharmaceutical invention under the licence while it was in 
force.  
 (3) For the purposes of subsection  (1), the amount is:  
 (a) an amount agreed betwee n the patentee and the PPI order 
applicant, licensee or former licensee (as the case requires); 
or 
 (b) if paragraph  (a) does not apply —an amount determined by 
the Federal Court to be adequate remuneration taking into 
account the economic value to the elig ible importing country 
of the use of the patented pharmaceutical invention 
authorised by the PPI compulsory licence.  
Application to make or amend a determination  
 (4) A person may apply to the Federal Court:  
 (a) to make a determination under paragraph  (3)(b); or  
 (b) to amend a determination made under that paragraph.  
Note:  Grounds for an application under paragraph  (b) may include the fact 
that the terms of the PPI compulsory licence have been amended, or 
the licence has been revoked.  
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16 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 Parties  
 (5) The fol lowing are parties to any proceedings under this section:  
 (a) the applicant for the determination or the amendment of the 
determination;  
 (b) the PPI order applicant;  
 (c) the licensee;  
 (d) the patentee of the patented pharmaceutical invention;  
 (e) any person claiming an interest in the patent as exclusive 
licensee or otherwise.  
Can PPI be exploited if remuneration is not agreed or determined?  
 (6) To avoid doubt, if the proposed use of the pharmaceutical product 
is to address a public health problem in the eligible importing 
country in circumstances of national emergency or other 
circumstances of extreme urgency, the licensee may exploit a 
patented pharmaceutical invention under a PPI compulsory licence, 
as granted or amended (as the case may be), whethe r or not an 
amount has been agreed or determined under this section.  
 (7) However, if the proposed use of the pharmaceutical product is to 
address a public health problem in the eligible importing country in 
other circumstances, by the public non -commercia l use of the 
pharmaceutical product, the licensee must not exploit a patented 
pharmaceutical invention under a PPI compulsory licence unless an 
amount has been agreed or determined under this section.  
Can PPI compulsory licence be revoked if remuneration i s not 
agreed or determined?  
 (8) To avoid doubt, a PPI compulsory licence may be revoked whether 
or not an amount has been agreed or determined under this section.  
Division  4—General  
136K   PPI compulsory licences —nature of orders  
  Without prejudice to any  other method of enforcement, a PPI order 
operates as if it were embodied in a deed granting or amending a 
licence and executed by the patentee and all other necessary 
parties.  
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 136L   PPI compulsory licences —consistency of orders with 
international agreemen ts 
  A PPI order must not be made that is inconsistent with a treaty 
between the Commonwealth and a foreign country.  
136M   PPI compulsory licences —applications heard together  
  Nothing in this Part prevents the Federal Court from dealing with 
the following  applications together:  
 (a) applications for different PPI orders, or for the amendment or 
revocation of such orders;  
 (b) applications for determinations under paragraph  136J (3)(b) 
for remuneration in relation to different PPI compulsory 
licences, or for  the amendment of such determinations.  
Part  4—Surrender and r evocation of patents  
   
136N  Simplified outline of this Part  
A patentee may offer to surrender a patent by giving the 
Commissioner written notice.  
The Commissioner  may accept the offer  of surren der, and revoke 
the patent, after hearing all interested parties. If court proceedings 
are pending in relation to the patent, leave of the court, or the 
consent of the parties, is required. The Commissioner must not 
accept the offer if a compulsory licence  ordered under Part  2 is in 
force in relation to the patent.  
In addition, a  court may revok e a patent on the following grounds:  
 (a) the patentee is not entitled to the patent;  
 (b) the invention is not a patentable invention;  
 (c) the patent was (broadly speaking) improperly obtained;  
 (d) the patent was (broadly speaking) obtained on the basis 
of a non -compliant specification.  
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18 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 20  Subsection  137(5)  
Omit “compulsory licence”, substitute “licence ordered under Part  2”. 
21  After section  138 
Insert:  
Part  5—Other matters  
   
138A   Simplified outline of this Part  
This Part deals with the parties to proceedings under this Chapter 
(other than proceedings under Part  3). 
This Part also enables the Commissioner to appear and be heard in 
all proceedings under this Ch apter.  
22  At the end of  subsection  139(1)  
Add: 
Note:  See Part  3 for details of parties to proceedings under that Part.  
23  Subsection  139(2)  
Omit “ section  133, 134 or 138”, substitute “ this Chapter ”. 
24  At the end of subsection  228(1)  
Add:  
 ; and (f)  for the purpose of carrying out or giving effect to the WTO 
General Council decision of 30  August 2003.  
25  After subsection  228(4)  
Insert:  
 (5) Despite subsection  14(2) of the Legislative Instruments Act 2003 , 
regulations made for the purposes of the definition of eligible 
importing country  in Schedule  1 may make provision in relation to 
a matter by applying, adopting or incorporating, with or without 
modification, any matter contained in any other instrument or other 
writing as in force or existing from time to time.  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  19 
 26  Schedule  1 (definition of compulsory licence ) 
Repeal the definition.  
27  Schedule  1 
Insert:  
eligible importing country  means a foreign country of a kind 
prescribed by regulation.  
Note:  A regulation  made for the purposes of this definition may make 
provision in relation to a matter by applying, adopting or 
incorporating, with or without modification, any matter contained in 
any other instrument or other writing as in force or existing from time 
to time (see subsection  228(5)).  
28  Schedule  1 
Insert:  
patented pharmaceutical invention , in relation to a pharmaceutical 
product, means:  
 (a) if the product is a patented product —the patented product; or  
 (b) if the product results from the use of a  patented process —the 
patented process.  
29  Schedule  1 
Insert:  
pharmaceutical product  means any patented product, or product 
manufactured through a patented process, of the pharmaceutical 
sector.  
Example:  Examples of a pharmaceutical product include:  
(a) active ingredients necessary for manufacturing such a product; 
and 
(b) diagnostic kits needed for using such a product.  
30  Schedule  1 
Insert:  
PPI is short for patented pharmaceutical invention.  
31  Schedule  1 
Insert:  
ComLaw Authoritative Act C2015A00008Schedule 1   TRIPS Protocol interim waiv er 
Part 1   Amendments  
 
 
20 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 PPI compulsory licence  has the meaning given by section  136D . 
32  Schedule  1 
Insert:  
PPI order has the meaning given by section  136D . 
33  Schedule  1 
Insert:  
PPI order applicant  has the meaning given by section  136D . 
34  Schedule  1 
Insert:  
TRIPS Agreement  means the Agreement on Trade -Related 
Aspects of Intellectual Property Rights set out in Annex 1C to the 
Marrakesh Agreement establishing the World Trade Organization, 
done at Marrakesh on 15  April 1994, as Annex 1C is in force for 
Australia from time to time.  
Note:  The WTO Agreement is in Aus tralian Treaty Series 1995 No.  8 
([1995] ATS 8) and could in 201 5 be viewed in the Australian 
Treaties Library on the AustLII website ( http:// www.austlii.edu.au).  
35  Schedule  1 
Insert:  
WTO General Council decision of 30  August 2003  means the 
decision of t he World Trade Organization General Council of 
30 August 2003 (including the Annex to the decision) on the 
implementation of paragraph  6 of the Doha Declaration on the 
TRIPS Agreement and public health.  
Note:  The decision could in 201 5 be viewed on the Wor ld Trade 
Organization website (http://www.wto.org).  
ComLaw Authoritative Act C2015A00008TRIPS Protocol interim waiver   Schedule 1  
Application   Part 2  
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  21 
 Part 2—Application  
36  Application of amendments  
(1) The amendments of the Patents Act 1990  made by this Schedule apply 
in relation to patents granted before, on and after the commencement of 
this Schedul e. 
(2) The amendments of sections  70 and 71 of the Patents Act 1990  made by 
this Schedule apply in relation to an application that is made on or after 
the commencement of this Schedule to include a pharmaceutical 
substance in the Australian Register of The rapeutic Goods.  
ComLaw Authoritative Act C2015A00008Schedule 2   TRIPS Protocol: later commencing amendments  
   
 
 
22 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 Schedule  2—TRIPS Protocol: later 
commencing amendments  
   
Patents Act 1990  
1  Section  3 (list of definitions)  
Omit “WTO General Council decision of 30  August 2003”.  
2  Paragraph 228(1)(f)  
Omit “WTO General Council decision of 30  August 2003”, substitute 
“TRIPS Agreement”.  
3  Schedule  1 (definition of WTO General Council decision of 
30 August 2003 ) 
Repeal the definition.  
ComLaw Authoritative Act C2015A00008Plant Breeder’s Rights Act 1994: Federal Circuit Court   Schedule 3  
   
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  23 
 Schedule  3—Plant Breeder’s Rights Act 1994: 
Federal Circuit Court  
   
Plant Breeder’s Rights Act 1994  
1  Subsection  3(1) (definition of Court ) 
Repeal the definition.  
2  Subsection  3(1) 
Insert:  
Federal Circuit Court  means the Federal Circuit Court of 
Australia.  
3  Subsection  3(1) 
Insert:  
Federal Court  means the Federal Court of Australia.  
4  Subsection  39(5)  
Repeal the s ubsection, substitute:  
 (5) Nothing in this section affects the power of:  
 (a) the Federal Court, or a Judge of that Court, under 
subsection  44A(2) of the AAT Act; or  
 (b) the Federal Circuit Court, or a Judge of that Court, under 
subsection  44A(2A) of tha t Act;  
where an appeal is begun in that court from a decision of the AAT.  
5  Subsection  50(7)  
Repeal the subsection, substitute:  
 (7) Nothing in this section affects the power of:  
 (a) the Federal Court, or a Judge of that Court, under 
subsection  44A(2) of  the AAT Act; or  
 (b) the Federal Circuit Court, or a Judge of that Court, under 
subsection  44A(2A) of that Act.  
ComLaw Authoritative Act C2015A00008Schedule 3   Plant Breeder’s Rights Act 1994: Federal Cir cuit Court  
   
 
 
24 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 6  Subsection  54(1)  
Omit “Court”, substitute “Federal Court or the Federal Circuit Court”.  
7  Subsections  54(3) and (4)  
Omit “Court” (wherever occurring), substitute “court”.  
8  Subsection  55(1)  
Omit “Court”, substitute “Federal Court or the Federal Circuit Court”.  
9  Subsections  55(3) and (4)  
Omit “Court”, substitute “court”.  
10  Section  56 (heading)  
Repeal the heading, substitute:  
56  Jurisdiction of the Federal Court  
11  Subsection  56(1)  
Omit “Court” (wherever occurring), substitute “Federal Court”.  
12  At the end of  subsection  56(1)  
Add: 
Note:  A matter may also be transferred to the Federal Court from the Federal 
Circuit Court: see section  39 of the Federal Circuit Court of Australia 
Act 1999 . 
13  Subsection  56(2)  
Repeal the subsection, substitute:  
 (2) That jurisdiction is exclusive of the jurisdiction of all other courts 
other than the jurisdiction of:  
 (a) the Federal Circuit Cour t under subsection  56A(2); and  
 (b) the High Court under section  75 of the Constitution.  
14  Subsection  56(3)  
Omit “Court” (wherever occurring), substitute “Federal Court”.  
ComLaw Authoritative Act C2015A00008Plant Breeder’s Rights Act 1994: Federal Circuit Court   Schedule 3  
   
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  25 
 15  Subsection  56(4)  
Omit “Court”, substitute “Federal Court”.  
16  Subsection  56(5)  
Omit “the Court”, substitute “the Federal Court”.  
17  Subsection  56(5)  
Omit “rules”, substitute “Rules”.  
Note:  This item fixes a typographical error.  
18  After section  56 
Insert:  
56A  Jurisdiction of Federal Circuit Court  
 (1) The Federal Circuit Court has jurisdiction with respect to matters 
in which actions may, under this Part, be begun in the Federal 
Circuit Court.  
Note:  A matter may also be transferred to the Federal Circuit Court from the 
Federal Court: see section  32AB of the Federal Court of Aust ralia Act 
1976 . 
 (2) That jurisdiction is exclusive of the jurisdiction of all other courts, 
other than the jurisdiction of:  
 (a) the Federal Court under subsection  56(2)  of this Act ; and  
 (b) the High Court under section  75 of the Constitution.  
 (3) The relief that the Federal Circuit Court may grant in an action or 
proceeding for infringement of PBR includes an injunction (subject 
to such terms, if any, as the Federal Circuit Court thinks fit) and, at 
the option of the plaintiff, either damages or an acc ount of profits.  
 (4) The regulations may make provision in relation to the practice and 
procedure of the Federal Circuit Court in actions under this Act, 
including provision prescribing the time within which any action 
may be begun, or any other act or th ing may be done, and 
providing for the extension of any such time.  
 (5) Subsection  (4) does not limit the power of the Judges of the 
Federal Circuit Court, or a majority of them, to make Rules of 
Court under section  81 of the  Federal Circuit Court of Austr alia 
ComLaw Authoritative Act C2015A00008Schedule 3   Plant Breeder’s Rights Act 1 994: Federal Circuit Court  
   
 
 
26 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 Act 1999  that are consistent with the regulations referred to in that 
subsection.  
19  Subsection  57(1)  
Omit “The Court”, substitute “A court”.  
20  Subsection  57(1)  
Omit “the Court”, substitute “the court”.  
21  Section  72 
Omit “the High Court Rules and  the Federal Court Rules”, substitute 
“Rules of Court of the High Court, the Federal Court or the Federal 
Circuit Court”.  
ComLaw Authoritative Act C2015A00008Australia New Zealand Single Economic Market   Schedule 4  
Amendments   Part 1  
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  27 
 Schedule  4—Australia New Zealand Single 
Economic Market  
Part 1—Amendments  
Designs Act 2003  
1  Section  145 
Before “Where”, insert “(1)” . 
2  Section  145 
After “Australia”, insert “or New Zealand”.  
3  Section  145 
Omit “post”, substitute “a prescribed means”.  
4  At the end of section  145 
Add:  
 (2) After the time specified in the regulations, a reference in this 
section to an address  includes a reference to an electronic address.  
 (3) The time specified under subsection  (2) must be later than the day 
on which the regulations are registered under the Legislative 
Instruments Act 2003 . 
 (4) For the purposes of this section, the question of whether an 
electronic address is in Australia is to be determined in accordance 
with the regulations.  
 (5) For the purposes of this section, the question of whether an 
electronic address is in New Zealand is to be determined in 
accordance with the regul ations.  
Patents Act 1990  
5  Section  3 (list of definitions)  
Insert “Board”.  
ComLaw Authoritative Act C2015A00008Schedu le 4  Australia New Zealand Single Economic Market  
Part 1   Amendments  
 
 
28 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 6  Section  3 (list of definitions)  
Insert “Director -General of IP Australia”.  
7  Section  3 (list of definitions)  
Insert “New Zealand Assistant Commissioner of Patents”.  
8  Section  3 (list of definitions)  
Insert “New Zealand Commissioner of Patents”.  
9  Section  3 (list of definitions)  
Insert “New Zealand delegate”.  
10  Section  3 (list of definitions)  
Insert “New Zealand Patents Minister”.  
11  Section  3 (list of definitions)  
Insert “N ew Zealand patents official”.  
12  Section  3 (list of definitions)  
Omit “Professional Standards Board”.  
13  Section  3 (list of definitions)  
Insert “Registrar of Companies of New Zealand”.  
14  Subsection  20(2)  
Omit “or an employee,”, substitute “an employee,  or a New Zealand 
delegate,”.  
15  At the end of section  20 
Add:  
 (3) For the purposes of this section, it is immaterial whether an act was 
done in New Zealand.  
16  At the end of section  183 
Add:  
ComLaw Authoritative Act C2015A00008Australia New Zealand Single Economic Market   Schedule 4  
Amendments   Part 1  
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  29 
  (3) The Designated Manager may disclose to the Registrar of 
Companies of New Zealand information (including personal 
information within the meaning of the Privacy Act 1988 ) that is:  
 (a) relevant to the functions conferred on the Registrar of 
Companies of New Zealand by or under the Companies Act 
1993 of New Zealan d; and  
 (b) obtained by the Designated Manager as a result of the 
performance of functions and duties, or the exercise of 
powers, in relation to incorporated patent attorneys.  
 (4) For the purposes of subsection  (3), it is immaterial whether the 
disclosure  takes place in New Zealand.  
 (5) The Commissioner may disclose to a New Zealand delegate 
information (including personal information within the meaning of 
the Privacy Act 1988 ) that is relevant to the exercise of the powers, 
or the performance of the func tions, delegated to the New Zealand 
delegate under subsection  209(1A).  
 (6) For the purposes of subsection  (5), it is immaterial whether the 
disclosure takes place in New Zealand.  
17  Paragraph 198(4)(a)  
Repeal the paragraph.  
18  Subsection  198(5)  
Omit “Pr ofessional Standards Board”, substitute “Board”.  
19  Subsections  198(7) and (8)  
Repeal the subsections, substitute:  
 (7) A reference in this section to conviction  of an offence includes a 
reference to:  
 (a) the making of an order under section  19B of the Crimes Act 
1914  in relation to the offence ; or 
 (b) the making of an order under a corresponding provision of a 
law of:  
 (i) a State; or  
 (ii) a Territory; or  
 (iii) New Zealand;  
  in relation to the offence.  
ComLaw Authoritative Act C2015A00008Schedule 4   Australia New Zealand Single Economic Market  
Part 1   Amendments  
 
 
30 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 20  At the end of section  198 
Add:  
New Zealand  
 (12) It is immaterial whether a matter mentioned in:  
 (a) paragraph  (4)(b), (c), (d), (e), (f) or (g); or  
 (b) subsection  (5); or  
 (c) paragraph  (9)(a), (b) or (c); or  
 (d) paragraph  (11)(b);  
concerns something that happened in New Zealand.  
21  Section  199 
Before “The name”, insert “(1)”.  
22  At the end of section  199 
Add:  
 (2) It is immaterial whether the prescribed grounds concern something 
that happened in New Zealand.  
23  Before subsection  209(1)  
Insert:  
Delegation to employees  
24  After subsection  209(1) 
Insert:  
Delegation to New Zealand patents officials  
 (1A)  The Commissioner may, by instrument, signed by him or her, 
delegate all or any of the Commissioner’s powers or functions 
under this Act to a New Zealand patents official.  
 (1B) A function or powe r delegated under subsection  (1A) may be 
performed or exercised by the delegate in New Zealand.  
25  Before subsection  209(2)  
Insert:  
ComLaw Authoritative Act C2015A00008Australia New Zealand Single Economic Market   Schedule 4  
Amendments   Part 1  
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  31 
 Direction or supervision  
26  Section  214 
Before “A document”, insert “(1)”.  
27  At the end of section  214 
Add:  
 (2) For the  purposes of this Act, a prescribed document is taken to 
have been filed with the Patent Office if the document is delivered 
or given to:  
 (a) the New Zealand Commissioner of Patents; or  
 (b) a New Zealand Assistant Commissioner of Patents; or  
 (c) a perso n who, under a law of New Zealand, is a delegate of 
the New Zealand Commissioner of Patents;  
in a prescribed manner.  
 (3) The regulations may provide that a document filed with the Patent 
Office because of subsection  (2) is taken to have been so filed at 
the time ascertained in accordance with the regulations.  
28  Section  221 
Before “Where”, insert “(1)”.  
29  Section  221 
After “Australia”, insert “or New Zealand”.  
30  Section  221 
Omit “post”, substitute “a prescribed means”.  
31  At the end of section  221 
Add: 
 (2) After the time specified in the regulations, a reference in this 
section to an address  includes a reference to an electronic address.  
 (3) The time specified under subsection  (2) must be later than the day 
on which the regulations are registered un der the Legislative 
Instruments Act 2003 . 
ComLaw Authoritative Act C2015A00008Schedule 4   Australia New Zealand Single Economic Market  
Part 1   Amendments  
 
 
32 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
  (4) For the purposes of this section, the question of whether an 
electronic address is in Australia is to be determined in accordance 
with the regulations.  
 (5) For the purposes of this section, the question of wh ether an 
electronic address is in New Zealand is to be determined in 
accordance with the regulations.  
32  After paragraph  223(1)(b)  
Insert:  
 (ba) a New Zealand delegate; or  
33  After subsection  223(1)  
Insert:  
 (1A)  For the purposes of subsection  (1), it is  immaterial whether a 
relevant act took place, or is to take place, in New Zealand.  
 (1B) For the purposes of subsection  (1), it is immaterial whether an error 
or omission took place in New Zealand.  
34  After subsection  224(3)  
Insert:  
 (3A)  For the purpose s of this section, it is immaterial whether a decision 
was made in New Zealand.  
35  Section  227 (heading)  
Repeal the heading, substitute:  
227  Fees payable under this Act  
36  At the end of section  227 
Add:  
 (6) For the purposes of this Act, if:  
 (a) a fee is declared by the regulations to be a fee to which this 
subsection applies; and  
 (b) the fee is paid to:  
 (i) the New Zealand Commissioner of Patents; or  
 (ii) a New Zealand Assistant Commissioner of Patents; or  
ComLaw Authoritative Act C2015A00008Australia New Zealand Single Economic Market   Schedu le 4 
Amendments   Part 1  
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  33 
  (iii) a person who, under a law of New Zea land, is a delegate 
of the New Zealand Commissioner of Patents; and  
 (c) the New Zealand Commissioner of Patents, the New Zealand 
Assistant Commissioner of Patents, or the delegate, as the 
case may be, is authorised to receive the fee on behalf of the 
Comm onwealth; and  
 (d) the fee is paid in New Zealand currency;  
then:  
 (e) the liability to pay the fee is discharged; and  
 (f) this Act has effect as if the fee had been paid in accordance 
with the regulations.  
 (7) For the purposes of subsection  (6), the amo unt of the fee in New 
Zealand currency is to be ascertained in accordance with the 
regulations.  
37  After section  227 
Insert:  
227AA   Receipt of fees payable under New Zealand law  
  The regulations may make provision for and in relation to 
authorising:  
 (a) the Commissioner; or  
 (b) a Deputy Commissioner; or  
 (c) an employee;  
to receive, on behalf of New Zealand, a specified fee payable under 
a specified law of New Zealand that relates to patents for 
inventions, so long as:  
 (d) the fee is paid in Australian  currency; and  
 (e) the amount of the fee in Australian currency is ascertained in 
accordance with the regulations.  
ComLaw Authoritative Act C2015A00008Schedule 4   Australia New Zealand Single Economic Market  
Part 1   Amendments  
 
 
34 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 227AB   Application of administrative law regime to decisions made 
in New Zealand  
Judicial review  
 (1) For the purposes of the application of  the Administrative Decisions 
(Judicial Review) Act 1977  to a decision under this Act, it is 
immaterial whether the decision was made in New Zealand.  
Note:  See also the Trans -Tasman Proceedings Act 2010 . 
 (2) For the purposes of subsection  (1), decision  has the same meaning 
as in the Administrative Decisions (Judicial Review) Act 1977 . 
Merits review  
 (3) For the purposes of the application of the Administrative Appeals 
Tribunal Act 1975 to a decision under this Act, it is immaterial 
whether the decision was  made in New Zealand.  
Note:  See also the Trans -Tasman Proceedings Act 2010 . 
 (4) For the purposes of subsection  (3), decision  has the same meaning 
as in the Administrative Appeals Tribunal Act 1975 . 
38  Section  227A (heading)  
Repeal the heading, substitute : 
227A   Trans -Tasman IP Attorneys Board  
39  Subsection  227A(1)  
Repeal the subsection, substitute:  
 (1) The body known immediately before the commencement of this 
subsection as the Professional Standards Board for Patent and 
Trade Marks Attorneys is continued in existence as the 
Trans -Tasman IP Attorneys Board.  
Note 1:  In this Act, Board  means the Trans -Tasman IP Attorneys Board —see 
Schedule  1. 
Note 2:  See also section  25B of the Acts Interpretation Act 1901 . 
ComLaw Authoritative Act C2015A00008Australia New Zeal and Single Economic Market   Schedule 4  
Amendments   Part 1  
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  35 
 40  Subsection  227A(2)  
Omit “Professional Standards Board” (wherever occurring), substitute 
“Board”.  
41  After subsection  227A(2)  
Insert:  
Membership of the Board  
 (2A)  The Board consists of the following members:  
 (a) a Chair;  
 (b) the Director -General of IP Australia;  
 (c) the New Zealand Commiss ioner of Patents;  
 (d) at least 2 members nominated by the New Zealand Patents 
Minister to represent the New Zealand patent attorney 
profession;  
 (e) at least 2 other members.  
 (2B) The total number of members of the Board must not exceed 10.  
Appointment o f members of the Board  
 (2C) Each member of the Board mentioned in paragraph  (2A)(a), (d) or 
(e) is to be appointed by the Minister by written instrument.  
Note:  For reappointment, see the Acts Interpretation Act 1901 . 
 (2D)  A person is not eligible for app ointment as a member of the Board 
mentioned in paragraph  (2A)(a), (d) or (e) unless the Minister is 
satisfied that the person has:  
 (a) substantial experience or knowledge; and  
 (b) significant standing;  
in at least one of the following fields:  
 (c) Austra lian patent attorney practice;  
 (d) New Zealand patent attorney practice;  
 (e) Australian trade mark attorney practice;  
 (f) the regulation of persons engaged in a prescribed occupation;  
 (g) public administration;  
 (h) academia.  
 (2E) A member of the Board holds office on a part -time basis.  
ComLaw Authoritative Act C2015A00008Schedule 4   Australia New Zealand Single Economic Market  
Part 1   Amendments  
 
 
36 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 Period of appointment for members of the Board  
 (2F) A member of the Board mentioned in paragraph  (2A)(a), (d) or (e) 
holds office for the period specified in the instrument of 
appointment. The period must not excee d: 
 (a) in the case of the member mentioned in paragraph  (2A)(a) —
3 years; or  
 (b) otherwise —5 years.  
Note:  For reappointment, see the Acts Interpretation Act 1901 . 
Appointment of deputy of Director -General of IP Australia  
 (2G)  The Director -General of IP A ustralia may appoint an APS 
employee to be his or her deputy for the purpose of attendance at 
one or more specified meetings of the Board.  
 (2H)  If: 
 (a) a person is the deputy of the Director -General of IP Australia 
for the purpose of attendance at a part icular meeting of the 
Board; and  
 (b) the Director -General of IP Australia is absent from the 
meeting;  
the person is entitled to attend the meeting and, when so attending, 
is taken to be a member of the Board.  
 (2J) A deputy of the Director -General of IP A ustralia is not entitled to 
any remuneration or allowances for attending a meeting of the 
Board (other than remuneration or allowances payable to the 
deputy in his or her capacity as an APS employee).  
Appointment of deputy of New Zealand Commissioner of Pa tents 
 (2K)  The New Zealand Commissioner of Patents may appoint a New 
Zealand patents official to be his or her deputy for the purpose of 
attendance at one or more specified meetings of the Board.  
 (2L) If: 
 (a) a person is the deputy of the New Zealand Co mmissioner of 
Patents for the purpose of attendance at a particular meeting 
of the Board; and  
 (b) the New Zealand Commissioner of Patents is absent from the 
meeting;  
ComLaw Authoritative Act C2015A00008Australia New Zealand Single Economic Market   Schedule 4  
Amendments   Part 1  
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  37 
 the person is entitled to attend the meeting and, when so attending, 
is taken to be a mem ber of the Board.  
 (2M)  A deputy of the New Zealand Commissioner of Patents is not 
entitled to any remuneration or allowances for attending a meeting 
of the Board (other than remuneration or allowances payable to the 
deputy in his or her capacity as a New Zealand patents official).  
42  Paragraph 227A(3)(a)  
Repeal the paragraph, substitute:  
 (a) the terms and conditions on which members of the Board 
mentioned in paragraph  (2A)(a), (d) or (e) hold office; and  
 (aa) the manner in which members of the Board mentioned in 
paragraph  (2A)(a), (d) or (e) may resign their appointments; 
and 
 (ab) the termination of the appointment of members of the Board 
mentioned in paragraph  (2A)(a), (d) or (e); and  
43  Paragraphs 227A(3)(b ) and (c)  
Omit “Professional Standards Board”, substitute “Board”.  
44  Subsections  227A(4) and (5)  
Omit “Professional Standards Board”, substitute “Board”.  
45  At the end of section  227A  
Add:  
 (7) The Board may perform its functions in Australia or New Zea land.  
46  Subparagraph 228(2)(r)(ia)  
Omit “Professional Standards Board”, substitute “Board”.  
47  After subsection  228(4)  
Insert:  
 (4A)  If the regulations confer a function on a person or body, the 
regulations may provide that the function may be performed  in 
Australia or New Zealand.  
ComLaw Authoritative Act C2015A00008Schedule 4   Australia New Zealand Single Economic Market  
Part 1   Amendments  
 
 
38 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
  (4B) If the regulations confer a power on a person or body, the 
regulations may provide that the power may be exercised in 
Australia or New Zealand.  
 (4C) If the regulations provide that application may be made to the 
Adminis trative Appeals Tribunal for review of a decision, the 
regulations may provide that it is immaterial whether the decision 
was made in New Zealand.  
 (4D)  The regulations may provide that it is immaterial whether an act or 
omission mentioned in the regulatio ns took place in New Zealand.  
 (4E) The regulations may provide that it is immaterial whether a matter 
mentioned in the regulations concerns something that took place in 
New Zealand.  
48  Schedule  1 
Insert:  
Board  means the Trans -Tasman IP Attorneys Board co ntinued in 
existence by section  227A.  
49  Schedule  1 (definition of company ) 
Repeal the definition, substitute:  
company  means:  
 (a) a company registered under the Corporations Act 2001 ; or 
 (b) a company registered under the Companies Act 1993 of New 
Zealand.  
50  Schedule  1 
Insert:  
Director -General of IP Australia  means the SES employee who 
holds or performs the duties of the position of Director -General of 
IP Australia.  
51  Schedule  1 (at the end of the definition of file) 
Add:  
Note:  See also section  214. 
ComLaw Authoritative Act C2015A00008Australia New Zealand Single Economic Market   Schedule 4  
Amendments   Part 1  
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  39 
 52  Schedule  1 
Insert:  
New Zealand Assistant  Commissioner of Patents  means a person 
who holds or performs the duties of an office or position of 
Assistant Commissioner of Patents under or in accordance with a 
law of New Zealand.  
53  Schedule  1 
Insert:  
New Zealand Commissioner of Patents  means the person who 
holds or performs the duties of the office or position of 
Commissioner of Patents under or in accordance with a law of 
New Zealand.  
54  Schedule  1 
Insert:  
New Zealand delegate  means a New Zealand pa tents official who 
is a delegate under subsection  209(1A).  
55  Schedule  1 
Insert:  
New Zealand Patents Minister  means the Minister of New 
Zealand who:  
 (a) under the authority of a warrant; or  
 (b) with the authority of the Prime Minister of New Zealand;  
is responsible for the administration of a law of New Zealand 
relating to the regulation of patent attorneys.  
56  Schedule  1 
Insert:  
New Zealand patents official  means a person:  
 (a) who is an employee in any part of the State services of New 
Zealand; and  
 (b) whose functions or duties relate to the administration of a law 
of New Zealand relating to patents for inventions.  
ComLaw Authoritative Act C2015A00008Schedule 4   Australia New Zealand Single Economic Market  
Part 1   Amendments  
 
 
40 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 57  Schedule  1 (definition of Professional Standards Board ) 
Repeal the definition.  
58  Schedule  1 
Insert:  
Registrar of Companies of New Z ealand  means the person who 
holds or performs the duties of the office or position of Registrar of 
Companies under or in accordance with the Companies Act 1993 
of New Zealand.  
Plant Breeder’s Rights Act 1994  
59  Subsection  3(1) 
Insert:  
address  has a meanin g affected by subsection  (2). 
60  Subsection  3(2) 
Repeal the subsection, substitute:  
Electronic address  
 (2) After the time specified in the regulations, a reference in this Act to 
an address  includes a reference to an electronic address.  
 (3) The time specified under subsection  (2) must be later than the day 
on which the regulations are registered under the Legislative 
Instruments Act 2003 . 
 (4) Subsection  (2) of this section does not apply to the following 
references to an address : 
 (a) a refe rence in subsection  26(2);  
 (b) the first reference in subsection  26(3).  
 (5) For the purposes of this Act, the question of whether an electronic 
address is in Australia is to be determined in accordance with the 
regulations.  
 (6) For the purposes of this Act, the question of whether an electronic 
address is in New Zealand is to be determined in accordance with 
the regulations.  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  41 
 61  After subsection  19(5)  
Insert:  
 (5A)  An address given under paragraph  (5)(c) must be an address in 
Australia or New Zealand.  
62  Subsection  21(5)  
After “Australia”, insert “or New Zealand”.  
63  Subsection  26(3)  
After “overseas”, insert “in a country other than New Zealand”.  
64  Subsection  26(3)  
After “Australia” (first occurring), insert “or New Zealand”.  
65  Subsection  26(3)  
Omit  “a postal address in Australia”, substitute “an address in Australia 
or New Zealand”.  
66  Subsection  31(3)  
After “Australia”, insert “or New Zealand”.  
67  Section  73 
Repeal the section, substitute:  
73  Service of documents  
  If: 
 (a) this Act provides for  a document to be served on, or given or 
sent to, a person; and  
 (b) the person has given the Secretary or the Registrar an address 
in Australia or New Zealand for service;  
the document may be served on, or given or sent to, the person by a 
prescribed mean s to that address.  
Trade Marks Act 1995  
68  Readers guide (list of terms defined in section  6) 
Insert the following term in its appropriate alphabetical position:  
ComLaw Authoritative Act C2015A00008Schedule 4   Australia New Zeal and Single Economic Market  
Part 1   Amendments  
 
 
42 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 “Board ”. 
69  Readers guide (list of terms defined in section  6) 
Omit “Professional Standards Board”.  
70  Subsection  6(1) 
Insert:  
Board  has the same meaning as in the Patents Act 1990 . 
71  Subsection  6(1) (definition of Professional Standards 
Board ) 
Repeal the definition.  
72  At the end of subsection  215(5)  
Add “or New Zealand”.  
73  Paragraph 215(6)(a)  
Repeal the paragraph, substitute:  
 (a) if the person has an address for service —the document may 
be served on, or given or sent to, the person by a prescribed 
means to that address; or  
74  Paragraph 215(6)(b)  
After “Australia” (first occurring), insert “or New Zealand”.  
75  Paragraph 215(6)(b)  
Omit “post”, substitute “a prescribed means”.  
76  Paragraph 215(6)(b)  
After “Australia” (second occurring), insert “or New Zealand”.  
77  At the end of section  215 
Add:  
 (8) After the time specifi ed in the regulations, a reference in this 
section to an address  includes a reference to an electronic address.  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  43 
  (9) The time specified under subsection  (8) must be later than the day 
on which the regulations are registered under the Legislative 
Instrument s Act 2003 . 
 (10) For the purposes of this section, the question of whether an 
electronic address is in Australia is to be determined in accordance 
with the regulations.  
 (11) For the purposes of this section, the question of whether an 
electronic address is in New Zealand is to be determined in 
accordance with the regulations.  
78  Subsection  228A(5)  
Omit “the Professional Standards Board”, substitute “the Board”.  
79  Subsection  228A(5) (note)  
Omit “ Professional Standards Board ”, substitute “ Board ”. 
80  Subparagraph 231(2)(ha)(ia)  
Omit “Professional Standards Board”, substitute “Board”.  
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Part 2   Transitional provisions  
 
 
44 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 Part 2—Transitional provisions  
81  Transitional —registration as a patent attorney  
(1) The Designated Manager must:  
 (a) register as a patent attorney an individual who, immediately 
before the commencement of this item:  
 (i) was registered as a patent attorney under a law of New 
Zealand; and  
 (ii) was not a registered patent attorney (within the meaning 
of the Patents Act 1990 ); and  
 (b) do so as soon as practicable after the commencement of this 
item.  
(2) The registration is to consist of entering the individual’s name in the 
Register of Patent Attorneys.  
(3) For the purposes of the Patents Act 1990 , the registration is taken to be 
under that Act.  
82  Transitional —qualific ation for registration as a patent 
attorney  
(1) A qualification specified in, or ascertained in accordance with, 
regulations made for the purposes of paragraph  198(4)(b) of the Patents 
Act 1990  may consist of passing examinations conducted in New 
Zealand, so long as:  
 (a) the examinations are specified in those regulations; and  
 (b) at least one of those examinations was passed before the 
commencement of this item; and  
 (c) the remaining examinations are passed before the end of the 
4-year period beginning at the commencement of this item.  
(2) Regulations authorised by subitem  (1) do not apply to examinations 
passed by an individual unless the individual applies for registration as 
a patent attorney under section  198 of the Patents Act 1990  within 6 
months a fter the completion of the last of those examinations.  
(3) Subitem  (1) does not limit paragraph  198(4)(b) of the Patents Act 1990.  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  45 
 83  Transitional —conduct of patent attorneys  
(1) Grounds prescribed for the purposes of section  199 of the Patents Act 
1990  may relate to conduct that took place in New Zealand before the 
commencement of this item.  
(2) Subitem  (1) does not limit section  199 of the Patents Act 1990 . 
84  Transitional —registration as a trade marks attorney  
(1) If: 
 (a) immediately before the comm encement of this item, an 
individual:  
 (i) was registered as a patent attorney under a law of New 
Zealand; and  
 (ii) was not a registered trade marks attorney (within the 
meaning of the Trade Marks Act 1995 ); and  
 (b) within 12 months after the commencemen t of this item, the 
individual applies to the Designated Manager to be registered 
as a trade marks attorney; and  
 (c) the application is in accordance with the regulations; and  
 (d) the individual satisfies the Designated Manager, in 
accordance with the re gulations, that the individual’s level of 
competency in trade marks law and practice is sufficient to 
warrant the individual becoming a registered trade marks 
attorney; and  
 (e) the individual has not been convicted of a prescribed offence 
during the 5 -year period ending when the application was 
made; and  
 (f) the individual is not under sentence of imprisonment for a 
prescribed offence;  
the Designated Manager must register the individual as a trade marks 
attorney.  
(2) The registration is to consist of entering the individual’s name in the 
Register of Trade Marks Attorneys.  
(3) For the purposes of the Trade Marks Act 1995 , the registration is taken 
to be under that Act.  
(4) The Governor -General may make regulations for the purposes of this 
item.  
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46 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 (5) It is immaterial whether a matter mentioned in paragraph  (1)(d), (e) or 
(f) concerns something that happened in New Zealand.  
(6) A reference in this item to conviction  of an offence includes a reference 
to: 
 (a) the making of an order under section  19B of the Crimes Act 
1914  in relation to the offence ; or 
 (b) the making of an order under a corresponding provision of a 
law of:  
 (i) a State; or  
 (ii) a Territory; or  
 (iii) New Zealand;  
  in relation to the offence.  
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Document retention   Part 1  
 
 
No. 8, 2015  Intellectual Property Laws Amendment Act 2015  47 
 Schedule  5—Other amendments  
Part 1—Document ret ention  
Division  1—Amendments  
Designs Act 2003  
1  Paragraph 69(3)(b)  
Omit “design; and”, substitute “design.”.  
2  Paragraph 69(3)(c)  
Repeal the paragraph.  
3  Paragraph 149(2)(o)  
Omit “fit; and”, substitute “fit.”.  
4  Paragraph 149(2)(p)  
Repeal the paragraph.  
Patents Act 1990  
5  Paragraph 228(2)(u)  
Repeal the paragraph.  
Trade Marks Act 1995  
6  Paragraph 231(2)(h)  
Repeal the paragraph.  
Division  2—Application of amendments  
7  Application of amendments  
The amendments made by this Part apply in relation to material and 
documents provided or filed before, on or after the commencement of 
this Part.  
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Part 2   Technical amendments  
 
 
48 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 Part 2—Technical amendments  
Division  1—Amendments  
Patents Act 1990  
8  Section  24 (heading)  
Repeal the heading, substitute:  
24  Validity not affected by making in formation available in certain 
circumstances  
9  Section  29A (note)  
Repeal the note.  
10  At the end of section  29A 
Add:  
 (6) An applicant is not entitled to ask that any action be taken, or that 
he or she be allowed to take any action, under this Act in rel ation 
to a PCT application unless the following requirements of 
subsection  (5) have been met (if applicable):  
 (a) a translation of the application into English has been filed;  
 (b) the prescribed documents have been filed;  
 (c) the prescribed fees have be en paid.  
Note:  A failure to comply with subsection  (5) may also result in the PCT 
application lapsing: see paragraph  142(2)(f).  
11  Subsection  29B(2)  
Omit “within the prescribed period”.  
12  Subsection  29B(6)  
Omit “ subsection  (1)”, substitute “the definition of Convention country  
in subsection  (5)”. 
13  Before subsection  40(2)  
Insert:  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  49 
 Requirements relating to complete specifications  
14  Before subsection  41(1)  
Insert:  
Provisional specifications  
 (1A)  A specification is taken to comply with subsection  40(1), so far as 
it requires a description of a micro -organism, if:  
 (a) the micro -organism is deposited with a prescribed depository 
institution in accordance with such provisions of the 
Budapest Treaty as are applicable; and  
 (b) the prescribed circumstances apply.  
Complete specifications  
15  Paragraph 43(2A)(b)  
After “discloses”, insert “, or a prescribed set of prescribed documents 
considered together disclose,”.  
16  After subsection  43(2A)  
Insert:  
 (2B) A prescribed document, or a prescribed set of prescribed 
documents considered together, is taken to disclose the invention in 
a claim as mentioned in paragraph  (2A)(b) so far as such disclosure 
requires a description of a micro -organism, if:  
 (a) the micro -organism is deposited wit h a prescribed depository 
institution in accordance with such provisions of the 
Budapest Treaty as are applicable; and  
 (b) the prescribed circumstances apply.  
17  At the end of subparagraph  101E(1)(a)(ix)  
Add “and”.  
18  Paragraph 119(3)(b)  
Omit “through a ny publication or use of the invention”.  
19  Subsection  178(4)  
Omit “ subsection  (1) or (2)”, substitute “this section”.  
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50 Intellectual Property Laws Amendment Act 2015  No. 8, 2015  
 20  Subsection  191A(4)  
Omit “a declaration, or rectify the Register, under this section”, 
substitute “a declaration under subsection  (2), or rectify the Register 
under subsection  (3),”. 
21  Paragraph 224(1)(a)  
Omit “or 142(2)(b)”.  
Division  2—Application of amendments  
22  Application of amendments  
(1) The amendments made by items  8 and 18 apply in relation to 
information that is made publ icly available at or after the time those 
items commence.  
(2) The amendments made by items  9, 10 and 11 apply in relation to 
applications made at or after the time those items commence.  
(3) The amendment made by item  14 applies in relation to provisional 
applications made at or after the time that item commences.  
(4) The amendments made by items  15 and 1 6 apply in relation to:  
 (a) patents for which the complete application is made at or after 
the time those items commen ce; and  
 (b) standard patents for which the application had been made 
before the time those items commence, if the applicant had 
not asked for an examination of the patent request and 
specification for the application under section  44 of the 
Patents Act 19 90 before that time; and  
 (c) innovation patents granted at or after the time those items 
commence, if the complete application to which the patent 
relates had been made before that time; and  
 (d) complete patent applications made at or after the time thos e 
items commence; and  
 (e) complete applications for standard patents made before the 
time those items commence, if the applicant had not asked 
for an examination of the patent request and specification for 
the application under section  44 of the Patents A ct 1990  
before that time; and  
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No. 8, 2015  Intellectual Property Laws Amendment Act 2015  51 
  (f) complete applications for innovation patents made before the 
time those items commence, if a patent had not been granted 
in relation to the application on or before that time; and  
 (g) innovation patents granted before th e time those items 
commence, if:  
 (i) the Commissioner had not decided to examine the 
complete specification relating to the patent under 
section  101A of the Patents Act 1990  before that time; 
and 
 (ii) the patentee or any other person had not asked the 
Commissioner to examine the complete specification 
relating to the patent under section  101A of the Patents 
Act 1990  before that time.  
(5) The amendment made by item  20 applies on and after the day that item 
commences in relation to patents granted before, o n or after that 
commencement.  
 
 
 
 
[Minister’s second reading speech made in — 
House of Representatives on 19 March 2014  
Senate on 25 November 2014 ] 
 
 
(36/14)  
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