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  2 and Other Measures) Act 2020 
 
No. 9, 2020 
 
 
 
 
 
An Act  to amend legislation  relating to intellectual 
property , and for related purposes  
   
   
Authorised Version C2020A00009Authorised Version C2020A00009 
 
No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  i 
 Contents  
1 Short title  ................................ ................................ ...........................  1 
2 Commencement  ................................ ................................ .................  2 
3 Schedules  ................................ ................................ ...........................  2 
4 Review of the accessibility of patents  ................................ ................  3 
Schedule  1—Responses to the Productivity Commission  4 
Part 1—Object of the Act  4 
Patents Act 1990  4 
Part 2—Innovation patents  5 
Patents Act 1990  5 
Schedule  2—Crown use of patents  7 
Part 1—Amendments  7 
Patents Act 1990  7 
Part 2—Application and transitional provisions  14 
Schedule  3—Crown use of designs  16 
Part 1—Amendments  16 
Designs Act 2003  16 
Part 2—Application and transitional provisions  22 
Schedule  4—Compulsory licences  24 
Patents Act 1990  24 
Schedule  5—Seals  30 
Patents Act 1990  30 
Trade Marks Act 1995  30 
Schedule  6—Specifications  31 
Patents Act 1990  31 
Schedule  7—Protection of information  35 
Patents Act 1990  35 
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ii Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 Schedule  8—International applications  36 
Patents Act 1990  36 
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No. 9, 2020  Intellectual Pr operty Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  1 
 
 
 
 
Intellectual Property Laws Amendment 
(Productivity Commission Response Part 
2 and Other Measures) Act 2020  
No. 9, 2020  
  
 
An Act  to amend legislation relating to intellectual 
property, and for related purposes  
[Assented to 26 February 2020 ] 
The Parliament of Australia enacts:  
1  Short title  
  This Act is the Intellectual Property Laws Amendment 
(Productivity Commission Respon se Part  2 and Other Measures) 
Act 20 20. 
Authorised Version C2020A00009   
   
 
 
2 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 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 
accord ing 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.  26 February 
2020  
2.  Schedule  1, 
Part 1 The day after this Act receives the Royal 
Assent.  27 February 
2020  
3.  Schedule  1, 
Part 2 The day after the end of the period of 1 8 
months beginning on the day this Act 
receives the Royal Assent.  26 August 2021  
4.  Schedule s 2 to 
7 The day after this Act receives the Royal 
Assent.  27 February 
2020  
5.  Schedule  8 The day after the end of the period of 6 
months beginning on the day this Act 
receives the Royal Assent.  26 August 2020  
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, and any other item in a Schedule to this Act has effect 
according  to its terms.  
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  3 
 4  Review of the accessibility of patents  
 (1) The Minister must cause a review of the accessibility of patents for 
small and medium sized enterprises within 3 months of the 
commencement of this section.  
 (2) Without limiting the matters the  review should consider, the 
persons conducting the review must examine:  
(a) the cost of applications for patents; and  
(b) processing times of patents; and  
(c) advice provided by the Australian Government with respect 
to the patent application process; and  
(d) awareness o f the patent application process.  
 (3) The persons conducting the review must provide the Minister with 
a written report of the review within 12 months of the 
commencement of the review.  
 (4) The Minister must cause  copies of the report to be tabled in each 
House of the Parliament within 15 sitting days of that House after 
the report is given to the Minister.  
Authorised Version C2020A00009Schedule 1   Responses to the Productivity Commission  
Part 1   Object of the Act  
 
 
4 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 Schedule  1—Responses to the Productivity 
Commission  
Part 1—Object of the Act  
Patents Act 1990  
1  After section  2 
Insert:  
2A  Object of this Act  
  The object of this Act is to provide a patent system in Australia 
that promotes economic wellbeing through technological 
innovation and the transfer and dissemination of technology. In 
doing so, the patent system balance s over time the interests of 
produce rs, owners  and users of technology and the public.  
Authorised Version C2020A00009Responses to the Productivity Commission   Schedule 1  
Innovation patents   Part 2  
 
 
No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  5 
 Part 2—Innovation patents  
Patents Act 1990  
2  Section  3 (list of definitions)  
Insert “priority date”.  
3  Subsection  43(2)  
Omit “priority date”, substitute “ priority date ”. 
4  At the end of section  52 
Add:  
 (3) It is a requirement of the formalities check that the date of the 
patent (if granted) would be a date before the day this subsection 
commences.  
Note 1:  This subsection was inserted by the Intellectual Property Laws 
Amendment (Productivity Commission R esponse Part  2 and Other 
Measures) Act 20 20. 
Note 2:  For the date of the patent, see section  65 and regulations made for the 
purposes of paragraph  65(b).  
Note 3:  Other requirements of the formalities check are specified in 
regulations made for the purposes  of paragraph  228(2)(ha).  
5  After paragraph  101B(2)(h)  
Insert:  
 (ha) each claim in the complete specification has a priority date 
that is before the day this paragraph commences; and  
6  At the end of subsection  101B(2)  
Add:  
Note:  Paragraph 101B(2)(ha) was inserted by the Intellectual Property Laws 
Amendment (Productivity Commission Response Part  2 and Other 
Measures) Act 20 20. 
7  After subparagraph  101E(1)(a)(viii)  
Insert:  
Authorised Version C2020A00009Schedule 1   Responses to the P roductivity Commission  
Part 2   Innovation patents  
 
 
6 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
  (viiia)  each claim in the complete specification has a pri ority 
date that is before the day paragraph  101B(2)(ha) 
commences;  
8  At the end of subsection  101E(1)  
Add:  
Note:  Paragraph 101B(2)(ha) was inserted by the Intellectual Property Laws 
Amendment (Productivity Commission Response Part  2 and Other 
Measures) Ac t 2020. 
9  Schedule  1 
Insert:  
priority date  has the meaning given by subsection  43(2).  
Authorised Version C2020A00009Crown use of patents   Schedule 2  
Amendments   Part 1  
 
 
No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
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 Schedule  2—Crown use of patents  
Part 1—Amendments  
Patents Act 1990  
1  Section  3 (list of definitions)  
Insert “exploited for Crown purposes”.  
2  Section  3 (list of definitions)  
Insert “relevant Minister”.  
3  Section  3 (list of definitions)  
Insert “services”.  
4  Section  3 (list of definitions)  
Omit “State”.  
5  Before section  161 
Insert:  
160A   When an invention is exploited for Crown purposes  
 (1) An invention is exploited for Crown purposes  if: 
 (a) the invention is exploited for the services of a relevant 
authority; and  
 (b) the exploitation is by:  
 (i) the relevant authority; or  
 (ii) if a person is authorised, in writing, by the relevant 
authority for the purpo ses of this subparagraph —the 
person for the relevant authority.  
 (2) A person may be authorised for the purposes of 
subparagraph  (1)(b)(ii):  
 (a) before or after a patent has been granted for the invention; 
and 
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8 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
  (b) even if the person is directly or indire ctly authorised by the 
nominated person or patentee to exploit the invention.  
 (3) Subject to section  168, an invention is taken to be exploited for the 
services of a relevant authority if the exploitation of the invention 
is necessary for the proper provi sion of those services within 
Australia.  
 (4) Services  of a relevant authority includes:  
 (a) if the relevant authority is the Commonwealth —services that 
are: 
 (i) primarily provided or funded by the Commonwealth; or  
 (ii) primarily provided or funded by t he Commonwealth 
and one or more of the States  or Territories ; and  
 (b) if the relevant authority is a State  or Territory —services that 
are: 
 (i) primarily provided or funded by the State  or Territory ; 
or 
 (ii) primarily provided or funded by the State or Territory 
and one or more of the other States or Territories or the 
Commonwealth.  
6  Section  162 
Repeal the section . 
7  Section  163 
Repeal the section, substitute:  
163  Crown exploitation of inventions —general rule  
 (1) Exploitation of an invention in the c ircumstances mentioned in 
subsection  (3) is not an infringement of:  
 (a) if a patent application for the invention is pending —the 
nominated person’s rights in the invention; or  
 (b) if a patent has been granted for the invention —the patent.  
 (2) Despite subsection  (1), if terms relating to the exploitation of the 
invention have been agreed or determined in accordance with 
section  165, the exploitation is an infringement unless the terms are 
complied with.  
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
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  (3) The circumstances are as follows:  
 (a) the re levant Minister considers that the relevant authority has 
tried for a reasonable period, but without success, to obtain 
from the applicant and the nominated person, or the patentee, 
an authorisation to exploit  the invention on reasonable terms;  
 (b) the re levant Minister approves, in writing, the exploitation;  
 (c) the invention is exploited for Crown purposes;  
 (d) if the exploitation is by a person authorised by a relevant 
authority for the purposes of subparagraph  160A(1)(b)(ii) —
the person is authorised by the relevant authority before the 
exploitation starts;  
 (e) at least 14 days before the exploitation starts, the relevant 
authority gives the applicant and the nominated person, or the 
patentee:  
 (i) a copy of the approval referred to in paragraph  (b); and 
 (ii) a written statement of reasons  for approving the 
exploitation.  
Note:  Section  25D of the Acts Interpretation Act 1901  sets out rules about 
the contents of a statement of reasons.  
 (4) An approval given under paragraph  (3)(b) is not a legislative 
instrument.  
 (5) Relevant Minister  means:  
 (a) in relation to the exploitation of an invention by or for the 
Commonwealth —the Minister; or  
 (b) in relation to the exploitation of an invention by or for  a 
State —the Attorney -General of the State ; or 
 (c) in relation to the exploitation of an invention by or for a 
Territory —the Attorney -General of the Territory.  
163A   Crown exploitation of inventions —emergencies  
 (1) Exploitation of an invention in the circumstances mentioned in 
subsection  (3) is not an infring ement of:  
 (a) if a patent application for the invention is pending —the 
nominated person’s rights in the invention; or  
 (b) if a patent has been granted for the invention —the patent.  
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Part 1   Amendments  
 
 
10 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
  (2) Despite subsection  (1), if terms relating to the exploitation of the  
invention have been agreed or determined in accordance with 
section  165, the exploitation is an infringement unless the terms are 
complied with.  
 (3) The circumstances are as follows:  
 (a) the relevant Minister considers that the exploitation is 
required because of an emergency;  
 (b) the relevant Minister approves, in writing, the exploitation 
before the exploitation starts;  
 (c) the invention is exploited for Crown purposes;  
 (d) if the exploitation is by a person authorised by a relevant 
authority for th e purposes of subparagraph  160A(1)(b)(ii) —
the person is authorised by the relevant authority before the 
exploitation starts.  
 (4) As soon as practicable after the relevant Minister approves the 
proposed exploitation, the relevant Minister must give the 
applicant and the nominated person, or the patentee:  
 (a) a copy of the approval referred to in paragraph  (3)(b); and  
 (b) a written s tatement of reasons for approving the exploitation.  
Note:  Section  25D of the Acts Interpretation Act 1901  sets out rules about 
the contents of a statement of reasons.  
 (5) An approval given under paragraph  (3)(b) is not a legislative 
instrument.  
8  Section  164 (heading)  
Repeal the heading, substitute:  
164  Crown exploitation of inventions —information to be gi ven by 
relevant authority  
9  Section  164 
Omit “under subsection  163(1)”, substitute “in the circumstances 
mentioned in subsection  163(3) or 163A(3 )”. 
10  Section  165 (heading)  
Repeal the heading, substitute:  
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Amendment s  Part 1  
 
 
No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  11 
 165  Crown exploitation of inventions —terms (inc luding 
remuneration)  
11  Subsection  165(2)  
Repeal the subsection, substitute:  
 (1) The terms for the exploitation of an invention in the circumstances 
mentioned in subsection  163(3) or 163A( 3), including terms 
concerning the remuneration payable to the nom inated person or 
the patentee, are such terms:  
 (a) as are agreed, or determined by a method agreed, between the 
relevant authority and the nominated person or the patentee; 
or 
 (b) in the absence of agreement —as are determined by a 
prescribed court on the  application of the relevant authority, 
or the nominated person or the patentee.  
 (2) Without limiting paragraph  (1)(b), the prescribed court must 
determine an amount of remuneration that is just and reasonable, 
having regard to the economic value of the e xploitation of the 
invention and any other matter the court considers relevant.  
12  Subsection  165(3)  
Omit “ subsection  (2)”, substitute “this section”.  
13  Subsection  165(3)  
After “agreed”, insert “or determined”.  
14  Section  165A (heading)  
Repeal the head ing, substitute:  
165A   Crown exploitation of inventions —court order to cease  
15  Subsection  165A(1)  
Omit “by the Commonwealth or the State”, substitute “in the 
circumstances mentioned in subsection  163(3) or 163A( 3)”. 
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Part 1   Amendments  
 
 
12 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 16  Subsection  165A(1)  
Omit “ of the Commonwealth or of the State”, substitute “ of the relevant 
authority concerned”.  
17  Subsection  165A(2)  
Omit “Commonwealth or the State”, substitute “relevant authority”.  
18  Subsection  165A(2)  
Omit “Commonwealth or of the State”, substitute “relevant auth ority”.  
19  Section  166 
Repeal the section, substitute:  
166  Certain a greement  and licences  inoperative  unless approved by 
relevant Minister  
 (1) An agreement or licence setting the terms on which a person other 
than a relevant authority may exploit an inv ention is inoperative 
with respect to the exploitation of the invention in the 
circumstances mentioned in subsection  163(3) or 163A( 3). 
 (2) Subsection  (1) does not apply if the agreement or licence has been 
approved in writing by the relevant Minister.  
20  Subsections  167(1) and (2)  
Omit  “under subsection  163(1)”, substitute  “under subsection  163(1) or 
163A( 1)”. 
21  Section  169 
Repeal the section.  
22  Section  170 
Omit “or a State” (wherever occurring), substitute “, a State or a 
Territory”.  
23  Section  170 
Omit “or the State”, substitute “, the State or the Territory”.  
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Amendments   Part 1  
 
 
No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  13 
 24  Schedule  1 
Insert:  
exploited for Crown purposes  has the meaning given by 
subsection  160A(1).  
25  Schedule  1 (definition of relevant authority ) 
Repeal the definition, substitute:  
relevant authority  means:  
 (a) in relation to the exploitation of an invention by or for the 
Commonwealth or an authority of the Commonwealth —the 
Commonwealth; or  
 (b) in relation to the exploitation of an invention by or for a State 
or an authority of a State —the State; or  
 (c) in relation to the exploitation of an invention by or for a 
Territory or an authority of a Territory —the Territory.  
26  Schedule  1 
Insert:  
relevant Minister  has the meaning given by subsection  163(5). 
services  of a relevant authority  has a m eaning affected by 
subsection  160A(4).  
27  Schedule  1 (definition of State ) 
Repeal the definition.  
Authorised Version C2020A00009Schedule 2   Crown use of patents  
Part 2   Application and transitional provisions  
 
 
14 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 Part 2—Application and transitional provisions  
28  Definition  
 In this Part:  
amended Act  means the Patents Act 1990  as in force after the 
commencement of this Schedule.  
29  Application of amendments  
(1) The amendments of the Patents Act 1990  (other than section  166 of the 
Act) made by Part  1 of this Schedule apply in relation to inventions that 
start to be exploited fo r Crown purposes on or after the  day this 
Schedule co mmence s. 
(2) The amendment of section  166 of the Patents Act 1990  made by Part  1 
of this Schedule applies in relation to : 
 (a) agreements made or licences given before, on or after the day 
this Schedule commences; and  
 (b) the exploitation of inventions that occurs on or after the day 
this Schedule commences.  
30  Transitional —authorised person  
An authorisation of a person that is in force for the purposes of 
section  163 of the Patents Act 1990  immediately  before the 
commencement of this Schedule continues in force as if:  
 (a) the person had been authorised for the purposes of 
subparagraph  160A(1)(b)(ii) of the amended Act; and  
 (b) paragraph  163(3)(d) of the amended Act were satisfied in 
relation to the pe rson.  
31  Transitional —negotiations  
If, before the commencement of this Schedule, a relevant authority has 
tried, for a period, but without success, to obtain from an applicant and 
a nominated person, or a patentee, an authorisation to  exploit  an 
invention  on reasonable terms, the relevant Minister must take that 
period into account in considering whether the condition in 
paragraph  163(3)(a) of the amended Act is satisfied in relation to the 
exploitation of the invention.  
Authorised Version C2020A00009Crown use of patents   Schedule 2  
Application and transitional pr ovisions   Part 2  
 
 
No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  15 
 32  Transitional —agreements and det erminations  
An agreement or determination that is in force for the purposes of 
subsection  165(2) of the Patents Act 1990  immediately before the 
commencement of this Schedule continues in force on and after that 
commencement as if it had been made for the purposes of 
subsection  165(1) of the amended Act.  
Authorised Version C2020A00009Schedule 3   Crown use of designs  
Part 1   Amendments  
 
 
16 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 Schedule  3—Crown use of designs  
Part 1—Amendments  
Designs Act 2003  
1  Section  5 
Insert:  
relevant authority  means:  
 (a) in relation to the use of a design by or for the 
Commonwealth —the Commonwealth; or  
 (b) in relation to the use of a desi gn by or for a State —that State; 
or 
 (c) in relation to the use of a design by or for a Territory —that 
Territory.  
relevant Minister  has the meaning given by subsection  96(5). 
services  of a relevant authority  has a meaning affected by 
subsection  95(5). 
used for Crown purposes  has the meaning given by 
subsection  95(2). 
2  Subsection  95(2)  
Repeal the subsection , substitute:  
 (2) A design is used for Crown purposes  if: 
 (a) the design is used  for the services of a relevant authority ; and  
 (b) the use is by:  
 (i) the relevant authority ; or 
 (ii) if a person is authorised, in writing, by the re levant 
authority for the purposes of this subparagraph —the 
person for the relevant authority.  
 (3) A person may be authorised for the purposes of 
subparagraph  (2)(b)(ii):  
 (a) before or after the registration of the design ; and  
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Amendments   Part 1  
 
 
No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  17 
  (b) even if the person is d irectly or indirectly authorised by the 
entitled p erson  in relation to the design, or the registered 
owner of the design, to use the design . 
 (4) Subject to section  105, a design is taken to b e used for the services 
of a relevant authority if the use of th e design  is necessary for the 
proper provision of those services within Australia.  
 (5) Services  of a relevant authority includes:  
 (a) if the relevant authority is the Commonwealth —services that 
are: 
 (i) primarily provided or funded by the Commonwealth; or 
 (ii) primarily provided or funded by the Commonwealth 
and one or more of the States  or Territories ; and  
 (b) if the relevant authority is a State  or Territory —services that 
are: 
 (i) primarily provided or funded by the State  or Territory ; 
or 
 (ii) primarily provided or funded by the State or Territory 
and one or more of the other States or Territories or the 
Commonwealth.  
3  Section  96 
Repeal the section, substitute:  
96  Crown use of design s—general rule  
 (1) Use of a design in the circumstances men tioned in subsection  (3) is 
not an infringement of a registered design.  
 (2) Despite subsection  (1), if terms relating to the use of the design 
have been agreed or determined in accordance with section  98, the 
use of the design is an infringement unless th e terms are complied 
with.  
 (3) The circumstances are as follows:  
 (a) the relevant Minister considers that the relevant authority has 
tried for a reasonable period, but without success, to obtain 
from the applicant or entitled person , or the registered ow ner, 
an authorisation to use the design on reasonable terms;  
Authorised Version C2020A00009Schedule 3   Crown use of designs  
Part 1   Amendments  
 
 
18 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
  (b) the relevant Minister approves, in writing, the use of the 
design ; 
 (c) the design is used for Crown purposes;  
 (d) if the use of the design is by a person authorised by a relevant 
authority  for the purposes of subparagraph  95(2)(b)(ii) —the 
person is authorised by the relevant authority before the use 
starts;  
 (e) at least 14 days before the use starts, the relevant authority 
gives the applicant and the entitled person, or the registered 
owne r: 
 (i) a copy of the approval referred to in paragraph  (b); and  
 (ii) a written statement of reasons for approving the use of 
the design . 
Note:  Section  25D of the Acts Interpretation Act 1901  sets out rules about 
the contents of a statement of reasons.  
 (4) An approval given under paragraph  (3)(b) is not a legislative 
instrument.  
 (5) Relevant Minister  means:  
 (a) in relation to the use of a design  by or for the 
Commonwealth —the Minister; or  
 (b) in relation to the use of a design by or for a State —the 
Attorney -General  of the State; or  
 (c) in relation to the use of a design by or for a Territory —the 
Attorney -General of the Territory.  
96A  Crown use of designs —emergencies  
 (1) Use of a design in the circumstances mentioned in subsection  (3) is 
not an infringement of a registered design.  
 (2) Despite subsection  (1), if terms relating to the use of the design 
have been agreed or determined in accordance with section  98, the 
use of the design is an infringement unless the terms are complied 
with.  
 (3) The circumstances are as follows:  
 (a) the relevant Minister considers that the use of the design  is 
required because of an emergency;  
Authorised Version C2020A00009Crown use of designs   Schedule 3  
Amendments   Part 1  
 
 
No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  19 
  (b) the relevant Minister approves, in writing, the use of the 
design  before the use starts;  
 (c) the design is used f or Cr own purposes;  
 (d) if the use of the design  is by a person authorised by a relevant 
authority for the purposes of subparagraph  95(2)(b)(ii) —the 
person is authorised by the relevant authority before the use 
starts.  
 (4) As soon as practicable after the rele vant Minister approves the 
proposed use of the design , the relevant Minister must give the 
applicant and the entitled person , or the registered owner : 
 (a) a copy of the approval referred to in paragraph  (3)(b); and  
 (b) a written statement of reasons for approving the use of the 
design . 
Note:  Section  25D of the Acts Interpretation Act 1901  sets out rules about 
the contents of a statement of reasons.  
 (5) An approval given under paragraph  (3)(b) is not a legislative 
instrument.  
4  Subsection  97(1)  
Omit “under section  96, the Commonwealth or a State”, substitute “in 
the circumstances mentioned in subsection  96(3) or 96A( 3), the relevant 
authority”.  
5  Subsection  97(2)  
Omit “Commonwealth or a State”, substitute “relevant authority”.  
6  Subsection  97(2)  
Omit “Commonwealth or State”, substitute “relevant authority”.  
7  Section  98 
Repeal the section , substitute:  
98  Crown use of designs —terms (including remuneration)  
 (1) The terms for the  use of a design  in the circumstances mentioned in 
subsection  96(3) or 96A (3), including terms concerning the 
Authorised Version C2020A00009Schedule 3   Crown use of designs  
Part 1   Amendments  
 
 
20 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 remuneration payable to the entitled person or the registered 
owner , are such terms:  
 (a) as are agreed, or determined by a method agreed, between the 
relevant authority and the entitled person or the registered  
owner ; or 
 (b) in the absence of agreement —as are determined by a 
prescribed court on the application of the relevant authority, 
or the entitled person or the registered owner . 
 (2) Without limiting paragraph  (1)(b), the prescribed court must 
determine an amount of remuneration that is just and reasonable, 
having regard to the economic value of the use of the design  and 
any other matter the court considers relevant.  
 (3) A person may not apply to a prescribed court for a determination 
under paragraph  (1)(b) in relation to a design unless a certificate of 
examination has been issued in relation to the design.  
 (4) The prescribed court may, in determining the terms of use, t ake 
into consideration compensation that a person interested in the 
design has received, directly or indirectly, from the relevant 
authority in respect of the design.  
 (5) For the purposes of this section, the terms, or the method, may be 
agreed or determi ned before, during or after the use of the design.  
8  Section  99 
Repeal the section, substitute:  
99  Certain agreement and licences inoperative unless approved by 
relevant Minister  
 (1) An agreement or licence setting the terms on which a person other 
than a relevant authority may use a design is inoperative with 
respect to the use of the design  in the circumstances mentioned in 
subsection  96(3) or 96A( 3). 
 (2) Subsection  (1) does not apply if the agreement or licence has been 
approved in writing by the rel evant Minister.  
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
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 9  Section s 100 and  101 
Repeal the section s. 
10  Section  102 (heading)  
Repeal the heading, substitute:  
102  Crown use of design s—court order to cease  
11  Subsection  102(1) 
Omit “by the Commonwealth or State”, substitute “in the circumstance s 
mentioned in subsection  96(3) or 96A(3)”. 
12  Subsection  102(1) 
Omit “ of the Commonwealth or State”, substitute “ of the relevant 
authority concerned”.  
13  Subsection  102(3) 
Omit “Commonwealth or the State”, substitute “relevant authority”.  
14  Subsection  102(4)  
Omit “Commonwealth or State”, substitute “relevant authority”.  
15  Section  103 
After “under section  96”, insert “ in the circumstances mentioned in 
subsection  96(3) or 96A( 3)”. 
16  Section  103 
Omit “Commonwealth or the State”, substitute “relevant a uthority”.  
17  Section  104 
Omit “or of a State”, substitute “, a State or a Territory”.  
18  Section  104 
Omit “or a State”, substitute “, a State or a Territory”.  
19  Section  104 
Omit “or the State”, substitute “, the State or the Territory”.  
Authorised Version C2020A00009Schedule 3   Crown use of designs  
Part 2   Application and transitional provisions  
 
 
22 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 Part 2—Application and transitional provisions  
20  Definition s 
 In this Part:  
amended Act  means the Designs Act 2003  as in force after the 
commencement of this Schedule.  
21  Application of amendments  
(1) The amendments of the Designs Act 2003  (other than section  99) made 
by Part  1 of this Schedule apply in relation to designs that start to be 
used for Crown purposes on or after the day this Schedule commences.  
(2) The amendment of section  99 of the Designs Act 2003  made by Part  1 
of this Schedule applies in relati on to:  
 (a) agreements made or licences given before, on or after the day 
this Schedule commences; and  
 (b) the use of designs that occurs on or after the day this 
Schedule commences.  
22  Transitional —authorised person  
An authorisation of a person that is in force for the purposes of 
section  96 of the Designs  Act 2003  immediately before the 
commencement of this Schedule continues in force as if:  
 (a) the person had been authorised for the purposes of 
subparagraph  95(2)(b)(ii) of the amended Act; and  
 (b) paragraph  96(3)(d) of the amended Act were satisfied in 
relation to the person.  
23  Transitional —negotiations  
If, before the commencement of this Schedule, a relevant authority has 
tried, for a period, but without success, to obtain from an applicant or an 
entitled person, or a registered owner, an authorisation to use a design 
on reasonable terms, the relevant Minister must take that period into 
account in considering whether the condition in paragraph  96(3)(a) of 
the amended Act is satisfied in relatio n to the use of the design.  
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
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 24  Transitional —agreements and determinations  
An agreement or determination that is in force for the purposes of 
subsection  98(1) of the Designs Act 2003  immediately before the 
commencement of this Schedule continues in force o n and after that 
commencement as if it had been made for the purposes of 
subsection  98(1) of the amended Act.  
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24 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 Schedule  4—Compulsory licences  
   
Patents Act 1990  
1  Section  132B  
Omit “to work”, substitute “to exploit”.  
2  Section  132B  
Omit : 
The court may order a compulsory licence to be granted if the 
reasonable requirements of the public are not being met with 
respect to a patented invention.  
The reasonable requirements of the public relate, broadly speaking, 
to whether Australian trade or industry is unr easonably 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).  
substitute:  
The court may order a compulsory licence to be granted if certain 
conditions are met, inc luding that demand in Australia for the 
invention is not being met on reasonable terms, authorisation to 
exploit the invention is essential to meet that demand and it is in 
the public interest  to grant the licence . If the person seeking the 
compulsory licence is the patentee of another invention and is 
seeking the licence to exploit that other invention, the court must 
also be satisfied that the other invention involves an important 
technical advance of considerable economic significance on the 
original  invention.  
3  Before subsection  133(1)  
Insert:  
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
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 Application for an order granting a compulsory licence  
4  Subsection  133(1)  
Omit “to work”, substitute “to exploit”.  
5  Subsection  133(1)  
After “patented invention”, insert “(the original invention )”. 
6  Subs ection s 133(2) , (3) and (3B)  
Repeal the subsection s, substitute:  
Making an order  
 (2) After hearing the application, the court may make the order if 
satisfied that:  
 (a) all of the conditions in subsection  (3) exist; or  
 (b) the patentee has contravened, o r is contravening, Part  IV of 
the Competition and Consumer Act 2010  or an application 
law (as defined in section  150A of that Act) in connection 
with the patent.  
 (3) The conditions in this subsection are:  
 (a) demand in Australia for the original inventio n is not being 
met on reasonable terms; and  
 (b) authorisation to exploit the original invention is essential to 
meet th at demand; and  
 (c) the applicant has tried for a reasonable period, but without 
success, to obtain authority from the patentee to exploit the 
original invention on reasonable terms and conditions; and  
 (d) the patentee has given no satisfactory reason for failing to 
exploit the patent  to the extent necessary to meet the demand 
for the original invention in Australia ; and  
 (e) it is i n the public interest to provide the applicant with 
authorisation to exploit the original invention, having regard 
to the following:  
 (i) the benefits to the public from meeting the demand for 
the original  invention;  
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26 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
  (ii) the commercial costs and benefits  to the patentee and 
the applicant from providing authorisation to exploit the 
original  invention;  
 (iii) any other matters the court considers relevant, including 
matters relating to greater competition and any impact 
on innovation; and  
 (f) if the applic ant is the patentee of another invention (the 
dependent invention ) and is seeking the authorisation for the 
purposes of exploiting  the dependent invention:  
 (i) the dependent invention cannot be exploited  by the 
applicant without exploiting the original in vention; and  
 (ii) the dependent invention involves an important technical 
advance of considerable economic significance on the 
original invention.  
Form of order  
 (3A) If the applicant is the patentee of the dependent invention, the order 
must:  
 (a) require the patentee to grant to the applicant a licence to 
exploit  the original invention only to the extent necessary to 
exploit  the dependent invention; and  
 (b) if the patentee so requires —require the applicant to grant to 
the patentee a licence on rea sonable terms to exploit  the 
dependent invention.  
 (3B) An order must direct that a licence:  
 (a) is not to give the licensee, or a person authorised by the 
licensee, the exclusive right to exploit the original invention  
or the dependent invention (if applicable ); and  
 (b) is to be assignable only in connection with an enterprise or 
goodwill in connection with which the licence is used.  
 (3C) An order may direct that a licence is to be granted on any other 
terms specified in the order that the court thinks fit. Such terms 
must be consistent with the public interest, having regard to the 
matters specified in paragraph  (3)(e).  
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
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 Effect of order  
7  Paragraph 133(5)(b)  
Repeal the paragraph, substitute:  
 (b) if paragraph  (a) does not apply —such amount as is 
determi ned by the Federal Court to be just and reasonable, 
having regard to:  
 (i) the economic value of the licence; and  
 (ii) if the order is made because the court is satisfied that 
the patentee has contravened, or is contravening, Part  IV 
of the Competition an d Consumer Act 2010  or an 
application law (as defined in section  150A of that Act) 
in connection with the patent —the desirability of 
discouraging contraventions of that Part or an 
application law; and  
 (iii) the right of the patentee to obtain a return on investment 
commensurate with the regulatory and commercial risks 
involved in developing the invention; and  
 (iv) the public interest in ensuring that demand in Australia 
for the original invention is met on reasonable terms.  
8  Before subsection  133(6)  
Insert:  
Revocation of licence  
9  Subsection  133(6)  
Omit “revoke the licence”, substitute “revoke a licence”.  
10  At the end of section  133 
Add:  
 (7) If: 
 (a) the licence is revoked by the Federal Court; and  
 (b) the order granting the licence required a li cence (the 
cross -licence ) to be granted in accordance with 
paragraph  (3A)(b); 
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28 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 the Federal Court must consider whether to revoke the 
cross -licence.  
11  Paragraph 134(2)(a)  
Repeal the paragraph, substitute:  
 (a) all of the following apply:  
 (i) demand in Australia for the original invention is 
continuing to not be met on reasonable terms;  
 (ii) the patentee has given no satisfactory reason for failing 
to exploit the patent to the extent necessary to meet the 
demand for the ori ginal invention in Australia;  
 (iii) it is in the public interest to revoke the patent , having 
regard to the matters in subsection  (3); or  
12  At the end of section  134 
Add:  
 (3) The matters are as follows:  
 (a) the benefits to the public from meeting the demand for the 
original invent ion; 
 (b) the commercial costs and benefits to the patentee and the 
applicant from revoking the patent;  
 (c) any other matters the court considers relevant, including 
matters relating to greater competition and any impact on 
innovation.  
13  Section  135 
Repeal the section.  
14  Schedule  1 (definition of work ) 
Repeal the definition.  
15  Application of amendments  
(1) The amendments of section  133 of the Patents Act 1990  made by this 
Schedule apply in relation to an application for an order made on or 
after the day this Schedule  commences . 
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
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 (2) The amendment of section  134 of the Patents Act 1990  made by this 
Schedule appl ies in relation to an application for an order revoking a 
patent made on or after the day this Schedule  commences , if the order 
granting a compulsory licence relating to the patent was made under 
section  133 of that Act after that  day. 
(3) The repeal of section  135 of the Patents Act 1990  by this Schedule does 
not affect an application or an order mad e under section  133 or 134 of 
that Act if the application was made before the day this Schedule 
commences . 
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30 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 Schedule  5—Seals  
   
Patents Act 1990  
1  Section  206 
Before “There”, insert “(1)”.  
2  At the end of section  206 
Add:  
 (2) The seal of the Patent Office may be kept and used in elect ronic 
form.  
Trade Marks Act 1995  
3  Section  200 
Before “There”, insert “(1)”.  
4  At the end of section  200 
Add:  
 (2) The seal of the Trade Marks  Office may be kept and used in 
electronic form.  
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
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 Schedule  6—Specifications  
   
Patents Act 1990  
1  Paragraph 59(c)  
Omit “or (3)”, substitute “, (3) or (3A)”.  
2  Paragraph 98(a)  
Omit “or (3)”, substitute “, (3) or (3A)”.  
3  Paragraph 10 1G(3)(a) 
Omit “or (3)”, substitute “, (3) or (3A)”.  
4  Paragraph 101M(b)  
Omit “or (3)”, substitute “, (3) or (3A)”.  
5  Paragraph 102(2)(b)  
Omit “or (3)”, substitute “, (3) or (3A)”.  
6  Paragraph 138(3)(f)  
Omit “or (3)”, substitute “, (3) or (3A)”.  
7  Application of amendments  
(1) The amendment of section  59 of the Patents Act 1990  made by this 
Schedule applies  in relatio n to an opposition,  filed on or after the day 
this Schedule commences, to the grant of a standard patent based on : 
 (a) a complete  application  made on or after 15  April 2013; or  
 (b) a complete application for a standard patent made before 
15 April 2013, 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 1990  before 
that day.  
(2) The amendment of section  98 of the Patents Act 1990  made by this 
Schedule applies in  relation to a re-examination  started  on or after the 
day this Schedule commences, if the re -examination is of a complete 
specification:  
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32 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
  (a) that relates to a standard patent for which the complete 
application was made on or after 15  April 2013; or  
 (b) that relates to a standard patent for which the complete 
application had been made before 15  April 2013, 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 1990  before that day; or  
 (c) that relates to a complete application made on or after 
15 April 2013; or  
 (d) that relates to a complete application for a standard patent 
made before 15  April 2013, if the applicant had not asked for 
an examination of the patent r equest and specification for the 
application under section  44 of the Patents Act 1990  before 
that day.  
(3) The amendment of section  101G of the Patents Act 1990  made by this 
Schedule applies in  relation to : 
 (a) innovation patents granted on or after 15  April 2013; or  
 (b) innovation patents granted before 15  April 2013, 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 day; or  
 (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 day.  
(4) The amendment of section  101M of the Patents Act 1990  made by this 
Schedule appl ies in relation to  an opposition , filed on or after the day 
this Schedule commences, to: 
 (a) an innovation patent granted on or after 15  April 2013; or  
 (b) an innovation patent granted before 15  April 2013, 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 day; or  
 (ii) the patentee or any other person had not asked the 
Commissioner to examine the complete specification 
relating to the patent unde r section  101A of the Patents 
Act 1990  before that day.  
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  33 
 (5) The amendment of section  102 of the Patents Act 1990  made by this 
Schedule applies in relation to an amendment of complete specifications 
directed or requested to be made on or after the day this Sche dule 
commences, if the amendment relates  to: 
 (a) a patent for which the complete application is made on or 
after 15 April 2013; or  
 (b) a standard patent for which the  complete  application had 
been made before 15 April 2013 , 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 1990  before that day; or  
 (c) an innovation patent granted on or after 15 April 2013;  or 
 (d) a complete patent application made on or after 15 April 2013 ; 
or 
 (e) a complete application for a standard patent made before 
15 April 2013 , 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 1990  before 
that day; or  
 (f) an innovation patent granted before 15 April 2013 , 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 day; or  
 (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 day.  
(6) The amendment of section  138 of the Patents Act 1990  made by this 
Schedule applies in relation to an application for an order  revoking 
patent s made on or after the day this Schedule commences, if the 
application relates to:  
 (a) a patent for which the complete application is made on or 
after 15  April 2013; or  
 (b) a stand ard patent for which the complete application had 
been made before 15  April 2013, 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 1990  before that day; or  
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34 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
  (c) an innovation patent granted on or after 15  April 2013;  or 
 (d) an innovation patent granted before 15  April 2013, if:  
 (i) the Commissioner had not decided to examine the 
complete specification relating to the patent under 
section  101A of the Patents Ac t 1990  before that day; or  
 (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 day.  
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No. 9, 2020  Intellectual Property Laws Amendment (Productivity Commission 
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 Schedule  7—Protection of information  
   
Patents Act 1990  
1  At the end of section  55 
Add:  
 (4) This section is subject to subsection  56(3).  
2  Section  56 (heading)  
Repeal the heading, substitute:  
56  Certain documents and information not to be published or open 
to public inspection  
3  At the end of section  56 
Add:  
 (3) If the Commissioner reasonably believes that information 
contained in a document of a kind mentioned in section  55 should 
not be published or be open to public inspection, the Commissioner 
may arrange for a copy of the document that does not contain the 
information to be published or open to public inspection.  
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36 Intellectual Property Laws Amendment (Productivity Commission 
Response Part  2 and Other Measures) Act 2020  No. 9, 2020  
 Schedule  8—International applications  
   
Patents Act 1990  
1  Subsection  10(2)  
Repeal the subsection, substitute:  
 (2) This section does not apply to an internation al application that was 
not filed in the receiving Office in English unless the following 
documents have been filed:  
 (a) a translation of the application into English;  
 (b) if required by the regulations —a certificate of verification 
(within the meaning o f the regulations) of the translation.  
2  Application of amendment  
The amendment of subsection  10(2) of the Patents Act 1990  made by this 
Schedule applies in relation to an application filed on or after the day this 
Schedule commences.  
 
 
 
 
[Minister’s second reading speech made in — 
Senate on 25 July 2019  
House of Representatives on 5 February 2020 ] 
 
 
 
(121/19)  
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