WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/AUS/P/5 
28 August 2007 
 (07-3603) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English/ 
 anglais/  inglés 
 
 
MAIN DEDICATED INTELLECTUAL PROPERTY  
LAWS AND REGULATIONS NOTIFIED UNDER  
ARTICLE 63.2 OF THE AGREEMENT 
 
AUSTRALIA 
 
 The present document reproduces the text
1 of the Patents Act 1990 - Act No.83 of 1990 as 
amended - Consolidated as on 1 April 2002, including  amendments up to Act 160 of 2001, notified by 
Australia under Article 63.2 of the Agreement (see document IP/N/1/AUS/2). 
 
 Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA  
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE  
DE L'ARTICLE 63:2 DE L'ACCORD 
 
AUSTRALIE 
 
 Le présent document contient le texte
1 de la Loi de 1990 sur les brevets – Loi n° 83 de 1990 
modifiée – texte récapitulatif du 1er avril 2002, y compris les modifications jusqu'à la Loi n° 160 
de 2001, notifiée par l'Australie au titre de l'article 63:2 de l'Accord (voir le document IP/N/1/AUS/2). 
 
 Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
 
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA  
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD  
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
 
AUSTRALIA 
 
 En el presente documento se reproduce el texto
1 de la Ley de Patentes de 1990 - Ley Nº 83 
de 1990 en su versión modificada - Compilada el 1º de abril de 2002, incluidas las modificaciones 
introducidas hasta la aprobación de la Ley 160 de 2001, notificado por Australia en virtud de lo 
dispuesto en el párrafo 2 del artículo 63 de l Acuerdo (véase el documento IP/N/1/AUS/2). 
                                                      
1 In English only/En anglais seulement/En inglés solamente.  IP/N/1/AUS/P/5 
Page 2  
 
  
 
 
Patents Act 1990 
 
Act No. 83 of 1990 as amended  
 
 This compilation was prepared on 1 April 2002  
taking into account amendments up to Act No. 160 of 2001 
 The text of any of those amendments not in force  on that date is appended in the Notes section  Prepared by the Office of Legislative Drafting, 
Attorney-General’s Department, Canberra  IP/N/1/AUS/P/5 
 Page 3 
 
 
  Contents 
 
Chapter 1—Introductory  
 
 1 Short title [ see Note 1] 
 2 Commencement [ see Note 1] 
 3 Definitions 
 4 What are the typical steps in getting and maintaining a standard patent? 
 5 Associated applications  6 Deposit requirements  7 Novelty and inventive step  8 Disclosure in basic applications  9 Secret use 
 10 Certain international applications to be  taken to have been given an international 
filing date 
 11 Act binds the Crown  12 Application of Act  12A Application of the Criminal Code  
 
Chapter 2—Patent rights, ownership and validity  
 Part 1—Patent rights 
 
 13 Exclusive rights given by patent 
 14 Assignment of patent 
 
Part 2—Ownership 
 
 15 Who may be granted a patent? 
 
 16 Co-ownership of patents   17 Directions to co-owners  Part 3—Validity 
 
Division 1—Validity 
 
 18 Patentable inventions  19 Certificate of validity 
 20 Validity of patent not guaranteed 
 21 Validity not implied by making or refusal of non-infringement declaration  
Division 2—Matters not affecting validity 
  22 Invalidity in relation to one claim not to  affect validity in relation to other claims 
 23 Validity not affected by publication etc. after priority date  24 Validity not affected by certain publication or use  25 Validity: patents of addition  26 Validity not affected in certain cases involving amendments  IP/N/1/AUS/P/5 
Page 4  
 
  Division 3—Notice of matters affecting validity 
 
 27 Notice of matters affecting validity of standard patents  28 Notice of matters affecting validity of innovation patents  Chapter 3—From application to acceptance 
 
Part 1—Patent applications 
 
Division 1—Applications 
 
 29 Application for patent  30 Filing date  31 Joint applicants  32 Disputes between applicants etc. 
 33 Applications by opponents etc. 
 34 Applications by eligible pers ons arising out of Court proceedings 
 35 Applications by eligible pers ons following revocation by Commissioner 
 36 Other applications by eligible persons  37 Complete application may be treated as provisional  38 Time for making complete application 
 
Division 2—Specifications 
 
 40 Specifications  41 Specifications: micro-organisms 
 42 Micro-organisms ceasing to be reasonably available 
 
Division 3—Priority dates 
 
 43 Priority dates  Part 2—Examination of standard patent requests and specifications 
 Division 1—Examination 
 
 44 Request for examination 
 45 Examination 
 46 Request for deferment of examination  
Division 2—Modified examination 
 
 47 Request for modified examination 
 48 Modified examination 
 
Part 3—Acceptance 
 Division 1—Acceptance of standard patents 
 
 49 Acceptance of patent request: standard patent 
 50 Application or grant may be refused in certain cases  51 Appeal   IP/N/1/AUS/P/5 
 Page 5 
 
 
  Division 2—Acceptance of innovation patents 
 
 52 Formalities check and acceptance of innovation patents  
Chapter 4—Publication 
 
 53 Publication of certain information about applicants etc.  54 Notice of publication  55 Documents open to public inspection  56 Certain documents not to be published 
 57 Effect of publication of complete specification 
 58 Result of search may be disclosed  
Chapter 5—Opposition to grant of standard patent 
  59 Opposition to grant of standard patent 
 60 Hearing and decision by Commissioner  
Chapter 6—Grant and term of patents 
 Part 1—Grant 
 
 61 Grant of standard patent   62 Grant and publication of innovation patent  63 Joint patentees  64 Grant: multiple applications 
 65 Date of patent 
 66 Sealing of duplicate of patent  
Part 2—Term 
 
 67 Term of standard patent 
 68 Term of innovation patent 
 
Part 3—Extension of term of standard pa tents relating to pharmaceutical substances 
 
 70 Applications for extension of patent 
 71 Form and timing of an application 
 72 Notification and public inspection of application  73 Withdrawal of application  74 Acceptance or refusal of application  75 Opposition to grant of extension  76 Grant of extension 
 76A Notification of extension to the Secretary, Health and Family Services 
 77 Calculation of term of extension  78 Exclusive rights of patentee are limited if extension granted 
 79 Rights of patentee if extension granted after patent expires  79A Commissioner not to make deci sion if court proceedings pending 
 
Chapter 6A—Divisional applications 
 
 79B Divisional applications prior to grant of patent IP/N/1/AUS/P/5 
Page 6  
 
   79C Divisional applications for innovation patents may be made after grant of an 
innovation patent 
 
Chapter 7—Patents of addition 
  80 Chapter does not apply to innovation patents 
 81 Grant of patent of addition  82 Revocation of patent and gran t of patent of addition instead 
 83 Term of patent of addition  85 Revocation of patent for main invention 
 86 Renewal fees not payable 
 87 Fees payable where patent of a ddition becomes an independent patent 
 
Chapter 8—PCT applications and convention applications 
 
Part 1—PCT applications  
 88 PCT applications  89 Modified application of Act  90 Publication of PCT applications   91 Application of certain pr ovisions to PCT applications 
 92 Notice of publication 
 93 Evidence of matters arising under PCT  
Part 2—Convention applications 
  94 Convention applicants may make Convention applications 
 95 Manner of making Convention application  96 Withdrawn, abandoned or refused applications  
Chapter 9—Re-examination of standard patents 
  96A Chapter does not apply to innovation patents 
 97 Re-examination of complete specifications  98 Report on re-examination  99 Statement by applicant or patentee  100 Copies of report to be given to court 
 100A Refusal to grant patent—re-examination before grant 
 101 Revocation of patent—re-examination after grant  
Chapter 9A—Examination, re-examination and opposition-innovation patents 
 Part 1—Examination of innovation patents 
 
 101A Examination may be requested or Commissioner may decide to examine  101B Examination of an innovation patent  101C How and when examination to be carried out  101D Commissioner to be given information on searches 
 101E Certificate of examination 
 101F Revocation of innovation patents following examination under section 101B 
  IP/N/1/AUS/P/5 
 Page 7 
 
 
  Part 2—Re-examination of innovation patents 
 
 101G Re-examination of complete sp ecifications of innovation patents 
 101H Patentee statements  101J Revocation of innovation patent following re-examination 
 101K Relevant proceedings and re-examination 
 101L Copies of report to be given to court  
Part 3—Opposition to innovation patents 
  101M Opposition to innovation patent 
 101N Hearing and decision by the Commissioner  101P Relevant pro ceedings and opposition 
 
Chapter 10—Amendments 
 
Part 1—Amendments that are not allowable 
 
 102 What amendments are not allowable?  103 Consent of mortgagee or exclusive licensee needed 
 Part 2—Amendments of patent requests, specifications and other filed documents  
 
 104 Amendments by applicants and patentees   105 Amendments directed by court   106 Amendments directed by Commissioner: patents  
 107 Amendments directed by Commissioner: applications for standard patents 
 109 Appeal  
Part 3—Miscellaneous 
 
 110 Advertisement of amendment of complete specification 
 112 Pending proceedings 
 113 Persons claiming under assignment or agreement   114 Priority date of certain amended claims  114A Objection cannot be take n to certain amended claims 
 115 Restriction on recovery of damages etc.  
 116 Interpretation of amended specifications  
 
Chapter 11—Infringement 
 Part 1—Infringement and infringement proceedings 
  117 Infringement by supply of products 
 118 Infringement exemptions: use in or on foreign vessels, aircraft or vehicles  119 Infringement exemptions: prior use  120 Infringement proceedings  121 Counter-claim for revocation of patent 
 121A Burden of proof—infringement of patent for a process 
 122 Relief for infringement of patent   123 Innocent infringement  IP/N/1/AUS/P/5 
Page 8  
 
  Part 2—Non-infringement declarations 
 
 124 Interpretation  125 Application for non-infringement declaration  126 Proceedings for non-infringement declarations 
 127 Effect of non-infringement declarations 
 
Part 3—Unjustified threats of infringement proceedings 
 
 128 Application for relief from unjustified threats 
 129 Court’s power to grant relief if threats rela ted to a standard patent or standard patent 
application 
129A    Threats related to an innovation patent  application or innovation patent and court’s 
             power to grant relief 
 130 Counter-claim for infringement 
 131 Notification of patent not a threat 
 132 Liability of legal practitioner or patent attorney  
Chapter 12—Compulsory licences and revocation of patents 
 
 133 Compulsory licences 
 134 Revocation of patent after grant of compulsory licence 
 135 Reasonable requirements of the public  136 Orders to be consistent with international agreements 
 137 Revocation on surrender of patent  138 Revocation of patents in other circumstances 
 139 Parties to proceedings 
 140 Commissioner to be given copies of orders  
Chapter 13—Withdrawal and lapsing of applications and ceasing of patents 
 
 141 Withdrawal of applications 
 142 Lapsing of applications 
 143 Ceasing of patents  143A Ceasing of innovation patents  143B Payment of fees   Chapter 14—Contracts  
 
 144 Void conditions   145 Termination of contract afte r patent ceases to be in force  
 146 Effect of Chapter   Chapter 15—Special provisions relating to associated technology  
 
 147 Certificate by Director as to associated technology  148 Lapsing etc. of applications  149 Revocation of direction 73 
 150 Restoration of lapsed application 
 151 Reinstatement of applicatio n as an international application 
 152 Notice of prohibitions or restrictions on publication  153 Effect of order   IP/N/1/AUS/P/5 
 Page 9 
 
 
  Chapter 16—Jurisdiction and powers of courts 
 
 154 Jurisdiction of Federal Court  155 Jurisdiction of other prescribed courts  156 Exercise of jurisdiction 
 157 Transfer of proceedings 
 158 Appeals  159 Commissioner may appear in appeals  160 Powers of Federal Court   Chapter 17—The Crown  Part 1—Introductory 
 
 161 Nominated persons and patentees 
 162 Commonwealth and State authorities 
 
Part 2—Exploitation by the Crown 
 
 163 Exploitation of inventions by Crown  164 Nominated person or patentee to be informed of exploitation 
 165 Remuneration and terms for exploitation  
 165A Exploitation of invention to cease under court order  166 Previous agreements inoperative   167 Sale of products   168 Supply of products by Commonwealth to foreign countries 
 169 Declarations that inventions have been exploited  
 170 Sale of forfeited articles   
Part 3—Acquisitions by and assignments to the Crown 
 
 171 Acquisition of inventions or patents by Commonwealth 
 172 Assignment of invention to Commonwealth 
 
Part 4—Prohibition orders 
 
 173 Prohibition of publication of information about inventions 
 174 Effect of prohibition orders 
 175 Disclosure of information to Commonwealth authority  176 International applications tr eated as applications under this Act 
 
Chapter 18—Miscellaneous offences 
  177 False representations about the Patent Office 
 178 False representations abou t patents or patented articles 
 179 Failure to comply with summons  180 Refusal to give evidence  181 Failure to produce documents or articles  
 182 Officers not to traffic in inventions 
 183 Unauthorised disclosure of information by employees etc.  184 Other unauthorised disclosures of information  185 Commissioner etc. not to prepare documents or search records  IP/N/1/AUS/P/5 
Page 10  
 
  Chapter 19—The Register and official documents 
 
 186 Register of Patents  187 Registration of particulars of patents etc.  188 Trusts not registrable 
 189 Power of patentee to deal with patent 
 190 Inspection of Register  191 False entries in Register  192 Orders for rectification of Register  193 Inspection of documents 
 194 Information obtainable from Commissioner 
 195 Evidence—the Register  196 Evidence—unregistered particulars  197 Evidence—certificate and copies of documents  Chapter 20—Patent Attorneys  Part 1—Registration, privileges and professional conduct 
 
 198 Registration of patent attorneys  199 Deregistration 
 200 Privileges 
 200A Designated Manager  
Part 2—Offences 
  201 Offences: unregistered persons etc. 
 202 Documents prepared by legal practitioners  202A Documents prepared by a member of a partnership  203 Attendance at patent attorney’s office  204 Time for starting prosecutions  Chapter 21—Administration 
 
 205 Patent Office and sub-offices  206 Patent Office seal  207 Commissioner of Patents 
 208 Deputy Commissioner of Patents 
 209 Delegation of Commissi oner’s powers and functions 
 210 Commissioner’s powers  211 Recovery of costs awarded by Commissioner  
Chapter 22—Miscellaneous 
 
 212 Copies of examination reports to be communicated  213 Making and signing applications etc.  214 Filing of documents  215 Death of applicant or nominated person 
 216 Exercise of discretionary power by Commissioner 
 217 Assessors  218 Costs where patent invalid in part  219 Security for costs  220 Costs of attendance of patent attorney  IP/N/1/AUS/P/5 
 Page 11 
 
 
   221 Service of documents 
 222 Publication of Official Journal etc. 
 223 Extensions of time  224 Review of decisions  225 Conduct of employees and agents of natural persons 
 226 Reproduction of published specifications does not infringe copyright 
 227 Fees  227A Professional Standards Board for Patent and Trade Marks Attorneys  228 Regulations  229 Consequential amendments 
 230 Repeal 
 
Chapter 23—Transitional and savings provisions 
 
 231 Application of Part III of 1989 Amending Act 
 233 Patents granted under 1952 Act 
 234 Applications under 1952 Act  235 Other applications a nd proceedings under 1952 Act 
 236 Micro-organisms  237 Orders, directions etc. under 1952 Act  238 The Commissioner and Deputy Commissioner 
 239 The Register of Patents and Register of Patent Attorneys 
 240 Registered patent attorneys  
Schedule 1—Dictionary 
 
Schedule 2—Consequential Amendments 
 Notes 
 
 IP/N/1/AUS/P/5 
Page 12  
 
  An Act relating to patents of inventions 
 Chapter 1—Introductory 
   
   
1  Short title [see Note 1] 
   This Act may be cited as the Patents Act 1990 . 
 2  Commencement [see Note 1] 
 
 (1) Subject to subsection (2), this Act comme nces on a day to be fixed by Proclamation. 
  (2) If this Act does not commence under sub section (1) within the period of 6 months 
beginning on the day on which it receives the Royal Assent, it commences on the first 
day after the end of that period. 
 
3  Definitions   
 
  The following expressions are defined, for the purposes of this Act or of a particular 
Chapter of this Act, in the dictionary in Schedule 1: 
 
application  
approved form associated 
technology 
Australia 
Australian continental shelf 
Australian Register of Therapeutic 
Goods 
authority 
basic application Budapest Treaty 
certified 
claim commencing day 
Commissioner 
compensable person complete specification 
compulsory licence 
Convention applicant Convention application 
Convention country 
deposit requirements depositary institution 
Deputy Commissioner 
Designated Manager 
Director 
eligible person employee 
examination 
exclusive licensee exploit 
Federal Court 
 file 
foreign aircraft foreign land vehicle 
foreign vessel 
formalities check 
infringement proceedings 
innovation patent interested party 
international application 
international depositary authority international filing date 
invention 
legal practitioner legal representative 
licence 
main invention modified examination 
nominated person 
non-infringement declaration Official Journal 
patent 
patent application patent area 
patent of addition 
Patent Office 
patent request 
patentable invention patented process 
patented product 
patentee PCT 
PCT application 
 permit 
pharmaceutical substance prescribed court 
prescribed depositary institution 
prior art base 
prior art information 
Professional Standards Board prohibition order 
provisional specification 
receiving Office re-examination 
Register 
registered registered patent attorney 
relevant authority 
relevant international application relevant proceedings 
rules relating to micro-organisms 
Safeguards Act sealed 
specification 
standard patent State 
Statute of Monopolies 
supply 
Territory 
therapeutic use this Act  
work 
1952 Act 1989 Amending Act 
 
  IP/N/1/AUS/P/5 
 Page 13 
 
 
  4  What are the typical steps in getting  and maintaining a standard patent?  
 
  The following diagram shows most of the typical steps involved in getting and 
maintaining a standard patent. The diag ram is intended for use only as a general 
introductory illustration and is not intended to  have any other effect. If there is an 
inconsistency between any ma tter contained in the diagram and a provision of this 
Act or the regulations, the provision prevails. 
 
5  Associated applications 
   For the purposes of this Act, a complete application is to be taken to be associated 
with a provisional application if, and only if, the patent request filed in respect of the complete application identifies the provisiona l application and contains a statement to 
the effect that the applications are associated. 
[Note: see sections 29 and 38 ] 
 
6  Deposit requirements 
 
  For the purposes of this Act, the deposit re quirements are to be taken to be satisfied in 
relation to a micro-organism to which a specification relates if, and only if: 
               (a) the micro-organism was, on or before the date of filing of the specification, 
deposited with a prescribed depositary in stitution in accordan ce with the rules 
relating to micro-organisms; and 
              (b) the specification includes,  at that date, such relevant information on the 
characteristics of the micro-organism as is known to the applicant; and 
              (c) at all times since the end of the prescribed period, the specification has 
included: 
                           (i) the name of a prescribed depositary  institution from which samples 
of the micro-organism are obtainable as provided by the rules relating 
to micro-organisms; and 
                          (iii) the file, accession or registration number of the deposit given by the 
institution; and 
 
              (d) at all times since the date of filing of the specification, samples of the 
micro-organism have been obtainable from a prescribed depositary institution 
as provided by those rules. 
 
[Note: see sections 41 and 42 ] 
 
7  Novelty and inventive step 
 
Novelty 
 
 (1) For the purposes of this Act, an inventi on is to be taken to be novel when compared 
with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately: 
              (a) prior art information (other than that mentioned in paragraph (c)) made 
publicly available in a single document or through doing a single act; 
             (b) prior art information (other than that mentioned in paragraph (c)) made 
publicly available in 2 or more rela ted documents, or through doing 2 or IP/N/1/AUS/P/5 
Page 14  
 
  more related acts, if the relationship between the documents or acts is such 
that a person skilled in the relevant art would treat them as a single source of 
that information; 
               (c) prior art information contained in a single specification of the kind mentioned 
in subparagraph (b)(ii) of the definition of prior art base  in Schedule 1. 
 
  Inventive step 
 
 (2) For the purposes of this Act, an invention is to be taken to involve an inventive step 
when compared with the prior art base unl ess the invention would have been obvious 
to a person skilled in the relevant art in the light of the common general knowledge as 
it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separa tely or together with the information mentioned in 
subsection (3). 
 
 (3) The information for the purposes of subsection (2) is: 
   (a) any single piece of prior art information; or   (b) a combination of any 2 or more pieces of prior art information;   being information that the skilled person mentioned in subsection (2) could, before 
the priority date of the relevant claim, be reasonably expected to have ascertained, 
understood, regarded as relevant and, in  the case of information mentioned in 
paragraph (b), combined as me ntioned in that paragraph. 
 
  Innovative step 
  (4) For the purposes of this Act, an invention is to be taken to involve an innovative step 
when compared with the prior art base unless the invention would , to a person skilled 
in the relevant art,  in the light of the common general knowledge as it existed in the 
patent area before the priority date of the relevant claim, only vary from the kinds of 
information set out in subsection (5) in ways  that make no substantial contribution to 
the working of the invention. 
 
 (5) For the purposes of subsection (4), th e information is of  the following kinds: 
               (a) prior art information made publicly available in a single document or through 
doing a single act; 
              (b) prior art information ma de publicly available in 2 or more related documents, 
or through doing 2 or more related acts, if the relationship between the 
documents or acts is such that a person skilled in the relevant art would treat 
them as a single source of that information. 
  (6) For the purposes of subsection (4), each ki nd of information set out in subsection (5) 
must be considered separately. 
 
[Notes: (1) For the meaning of document  see section 25 of the Acts Interpretation Act 1901.  
                (2) See also the definitions of prior art base  and prior art information  in Schedule 1: 
see also paragraph 18(1)(b) and subsection 98(1). ] 
  IP/N/1/AUS/P/5 
 Page 15 
 
 
  8  Disclosure in basic applications 
 
  Subject to the regulations, account must not be taken, for the purposes of this Act, of 
a disclosure in a specification or other document filed in respect of, and at the same time as, a basic application unless the following documents are filed within the 
prescribed period: 
   (a) a copy of the specification or document;               (b) if the specification or document is not in English—a translation of the 
specification or document into English. 
 
[Note: basic application  is defined in Schedule 1: see also Part 2 of Chapter 8 .] 
 
9  Secret use 
 
  For the purposes of this Act, the following acts are not to be taken to be secret use of 
an invention in the patent area: 
               (a) any use of the invention by or on behalf of, or with the authority of, the 
patentee or nominated person, or his or her predecessor in title to the 
invention, for the purpose of reasonable trial or experiment only; 
              (b) any use of the invention by or on behalf of, or with the authority of, the 
patentee or nominated person, or his or her predecessor in title to the invention, being use occurring solely in the course of a confidential disclosure of the invention by or on behalf of, or with the authority of, the 
patentee, nominated person, or predecessor in title; 
              (c) any other use of the invention by or on behalf of, or with the authority of, the 
patentee or nominated person, or his or her predecessor in title to the invention, for any purpose other than the purpose of trade or commerce; 
              (d) any use of the invention by or on behalf of the Commonwealth, a State, or a 
Territory where the patentee or nominated person, or his or her predecessor in 
title to the invention, has disclosed the invention, so far as claimed, to the 
Commonwealth, State or Territory. 
 
[Note: See also paragraph 18(1)(d) ] 
 
10  Certain international applications to be taken to have been given an international filing date 
 
 (1) Where: 
 
              (a) an international app lication specifies Australia as a designated State under 
Article 4(1)(ii) of the PCT; and 
              (b) the receiving Office does not  give the application an international filing date; 
and 
              (c) the Commissioner is  satisfied that the application should, under 
Article 25(2)(a) of the PCT, be treated as  if it had been given an international 
filing date; 
  the application is to be taken, for the purposes of this Act, to have been given an 
international filing date un der Article 11 of the PCT. 
 
  (2) This section does not apply to an intern ational application that was not filed in the 
receiving Office in English unless a translation of the application into English, verified in accordance with the regulations, has been filed. IP/N/1/AUS/P/5 
Page 16  
 
   
 (3) Where this section applies, the internati onal filing date of the application is to be 
taken to be the date that, in the opinion of the Commissioner, should have been given 
to the application as its interna tional filing date under the PCT. 
 
[Note: international filing date  is defined in Schedule 1: see also Chapter 8 .] 
 
11  Act binds the Crown 
 
 (1) This Act binds the Crown in right of the Commonwealth, of each of the States, of the 
Australian Capital Territory, of the Nort hern Territory and of Norfolk Island. 
  (2) Nothing in this Act makes the Crown liable to be prosecuted for an offence. 
 12  Application of Act 
 
  This Act extends to:    (a) each external Territory; and 
  (b) the Australian continental shelf; and 
  (c) the waters above the Australian continental shelf; and               (d) the airspace above Au stralia, each external Territory and the Australian 
continental shelf. 
 
12A  Application of the Criminal Code  
 
  Chapter 2 of the Criminal Code  applies to all offences created by this Act. 
 
Note: Chapter 2 of the Criminal Code  sets out the general principles of criminal responsibility. 
 
 
Chapter 2—Patent rights, ownership and validity 
 
Part 1—Patent rights 
   
13  Exclusive rights given by patent 
 
 (1) Subject to this Act, a patent gives the patentee the exclusive rights, during the term of 
the patent, to exploit the invention and to  authorise another person to exploit the 
invention. 
  (2) The exclusive rights are personal property and are capable of assignment and of 
devolution by law. 
 (3) A patent has effect throughout the patent area. 
 
14   Assignment of patent 
 
 (1) An assignment of a patent must be in writing signed by or on behalf of the assignor 
and assignee. 
 
 (2) A patent may be assigned for a place in, or part of, the patent area. 
  IP/N/1/AUS/P/5 
 Page 17 
 
 
  Part 2—Ownership 
   15  Who may be granted a patent? 
 
 (1) Subject to this Act, a patent for an invention may only be granted to a person who: 
 
  (a) is the inventor; or               (b) would, on the grant of a pa tent for the invention, be entitled to have the patent 
assigned to the person; or 
              (c) derives title to the in vention from the inventor or a person mentioned in 
paragraph (b); or 
              (d) is the legal representative of a deceased person mentioned in paragraph (a), 
(b) or (c). 
  (2) A patent may be granted to a person whethe r or not he or she is an Australian citizen. 
 
16  Co-ownership of patents 
 
 (1) Subject to any agreement to the cont rary, where there are 2 or more patentees: 
   (a) each of them is entitled to an equal undivided share in the patent; and 
              (b) each of them is entitled to exercise the exclusive rights given by the patent 
for his or her own benefit without accounting to the others; and 
              (c) none of them can grant a licence under the patent, or assign an interest in it, 
without the consent of the others. 
 
 (2) Where a patented product, or a product of  a patented method or process, is sold by 
any of 2 or more patentees, the buyer, a nd a person claiming through the buyer, may 
deal with the product as if it had been sold by all the patentees. 
  (3) This section does not affect the rights or obligations of a trustee or of the legal 
representative of a deceased person, or rights or obligations arising out of either of 
those relationships. 
 
17   Directions to co-owners 
 
 (1) Where there are 2 or more patentees, the Commissioner may, on the application of 
any of them, give such directions in  accordance with the application as the 
Commissioner thinks fit, being directions about: 
   (a) a dealing with the patent or an interest in it; or   (b) the grant of licences under the patent; or   (c) the exercise of a right under section 16 in relation to the patent. 
 
 (2) If a patentee fails to do anything necessary to carry out a direction under 
subsection (1) within 14 days after being asked in writing to do so by one of the other patentees, the Commissioner may, on the application of one of those other patentees, direct a person to do it in the name a nd on behalf of the defaulting patentee. 
 
 (3) Before giving a direction, the Commissioner must give an opportunity to be heard:                (a) in the case of an app lication by a patentee or pa tentees under subsection (1)—
to the other patentee or patentees; and IP/N/1/AUS/P/5 
Page 18  
 
    (b) in the case of an application under subsection (2)—to the defaulting patentee. 
  (4) The Commissioner must not give a direction that:                (a) affects the rights or obliga tions of a trustee or of the legal representative of a 
deceased person, or rights or obligati ons arising out of either of those 
relationships; or 
  (b) is inconsistent with the terms of an agreement between the patentees. 
 
Part 3—Validity 
 
Division 1—Validity  18  Patentable inventions 
 
Patentable inventions for the purposes of a standard patent 
 
 (1) Subject to subsection (2), an invention is a patentable invention for the purposes of a 
standard patent if the invention, so far as claimed in any claim: 
               (a) is a manner of manufacture within the meaning of section 6 of the Statute of 
Monopolies; and 
              (b) when compared with the pr ior art base as it existed before the priority date of 
that claim: 
    (i) is novel; and 
   (ii) involves an inventive step; and 
   (c) is useful; and               (d) was not secretly used in th e patent area before the priority date of that claim 
by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention. 
 
Patentable inventions for the purposes of an innovation patent 
 
 (1A) Subject to subsections (2) and (3), an  invention is a patentable invention for the 
purposes of an innovation patent if the inve ntion, so far as claimed in any claim: 
 
              (a) is a manner of manufacture within the meaning of section 6 of the Statute of 
Monopolies; and 
              (b) when compared with the pr ior art base as it existed before the priority date of 
that claim: 
 
   (i) is novel; and 
   (ii) involves an innovative step; and    (c) is useful; and               (d) was not secretly used in th e patent area before the priority date of that claim 
by, or on behalf of, or with the authority of, the patentee or nominated person 
or the patentee’s or nominated person’s predecessor in title to the invention. 
  (2) Human beings, and the biological processes for their generation, are not 
patentable inventions.  IP/N/1/AUS/P/5 
 Page 19 
 
 
  Certain inventions not patentable inventions for the purposes of an innovation patent 
 
 (3) For the purposes of an innovation patent, plants and animals, and the biological 
processes for the generation of plants and animals, are not patentable inventions. 
 
 (4) Subsection (3) does not apply if the invention is a microbiological process or a 
product of such a process. 
 
[Note: see also sections 7 and 9 .] 
 
19  Certificate of validity 
 
 (1) In any proceedings in a court in which the validity of a patent, or of a claim, is 
disputed, the court may certify that the valid ity of a specified claim was questioned. 
 
 (2) If a court issues a certificate, then, in any subsequent proceedi ngs for infringement of 
the claim concerned, or for the revocation of  the patent so far as it relates to that 
claim, the patentee, or any other person supporting the validity of the claim is, on obtaining a final order or judgment in his or her favour, entitled to full costs, charges 
and expenses as between solicitor and client, so far as that claim is concerned. 
  (3) Subsection (2) has effect subject to any direction by the court trying the proceedings. 
 
20  Validity of patent not guaranteed 
  (1) Nothing done under this Act or the PCT guarantees the granting of a patent, or that a 
patent is valid, in Australia or anywhere else. 
  (2) The Commonwealth, the Commissioner, a De puty Commissioner, or an employee, is 
not liable because of, or in connection with , doing any act under this Act or the PCT, 
or any proceedings consequent on doing any such act. 
 
21  Validity not implied by making or ref usal of non-infringement declaration 
 
  The making of, or refusal to make, a non- infringement declaration in respect of a 
claim of a patent does not imply that the claim is valid. 
 
Division 2—Matters not affecting validity 
 22  Invalidity in relation to one claim not to affect validity in relation to other claims 
   The invalidity of a patent in relation to a claim does not affect its validity in relation 
to any other claim. 
 
23  Validity not affected by public ation etc. after priority date 
   A patent is not invalid, so far as the invention is claimed in any claim, merely because 
of: 
               (a) the publication or use of the invention, so far as claimed in that claim, on or 
after the priority date of that claim; or 
              (b) the grant of another patent which claims the invention, so far as claimed in 
the first-mentioned claim, in a claim of the same or a later priority date. IP/N/1/AUS/P/5 
Page 20  
 
   
24  Validity not affected by certain publication or use 
 
 (1) For the purpose of deciding whether an invention is novel or involves an inventive 
step or an innovative step, the person making the decision must disregard: 
 
              (a) any information made pub licly available, through any publication or use of 
the invention in the prescribed circumst ances, by or with the consent of the 
nominated person or patentee, or the predecessor in title of the nominated person or patentee; and 
              (b) any information ma de publicly available without the consent of the 
nominated person or patentee, through an y publication or use of the invention 
by another person who derived the info rmation from the nominated person or 
patentee or from the predecessor in title of the nominated person or patentee; 
  but only if a patent application for the in vention is made within the prescribed period. 
 
 (2) For the purpose of deciding whether an invention is novel or involves an inventive 
step or an innovative step, the person making the decision must disregard: 
               (a) any information given by, or with the consent of, the nominated person or the 
patentee, or his or her predecessor in title , to any of the following, but to no 
other person or organisation: 
                            (i) the Commonwealth or a State or Territory, or an authority of the 
Commonwealth of a State or Territory; 
                           (ii) a person authorised by the Commonwealth or a State or Territory to 
investigate the invention; and 
               (b) anything done for the purpose of an investigation mentioned in 
subparagraph (a)(ii). 
 
25  Validity: patents of addition 
 
  Objection cannot be taken to a patent requ est or complete specification in respect of 
an application for a patent of addition, and a patent of addition is  not invalid, merely 
because the invention, so far as claimed, do es not involve an inventive step, having 
regard to the publication or use of the ma in invention during the prescribed period. 
 
26  Validity not affected in certain cases involving amendments 
 
 (1) Objection cannot be taken to a patent  request and specification that have been 
accepted, and a patent is not invalid, me rely because the specification claims an 
invention that was not the subject of the request, or that was not described or claimed 
in the specification as filed. 
  (2) Except in the case of an amendment made  in contravention of section 112, objection 
cannot be taken to a patent request and sp ecification that have been accepted, and a 
patent is not invalid, merely because an amendment of the specification has been 
made that was not allowable. 
  IP/N/1/AUS/P/5 
 Page 21 
 
 
  Division 3—Notice of matters affecting validity 
 27  Notice of matters affecting validity of standard patents 
 
 (1) A person may, within the prescribed period after a complete specification filed in 
relation to an application for a standard patent becomes open to public inspection, 
notify the Commissioner, in accordance with  the regulations, that the person asserts, 
for reasons stated in the notice, that th e invention concerned is not a patentable 
invention because it does not comply with paragraph 18(1)(b). 
 
 (2) The Commissioner must inform the applicant for the patent in writing of any matter 
of which the Commissioner is notified and send the applicant a copy of any document 
accompanying the notice. 
  (3) The Commissioner must otherwise consider  and deal with a notice in accordance with 
the regulations. 
  (4) A notice and any document accompanying it are open to public inspection.  
28  Notice of matters affecting validity of innovation patents 
 
Person may give notice of invalid ity of an innovation patent 
 
 (1) A person may notify the Commissioner that the person asserts, for reasons stated in 
the notice, that an innovation patent is invalid because the invention concerned does 
not comply with paragraph 18(1A)(b). 
 
When notice may be given 
 
 (2) A notice may only be given to the Commissioner under subsection (1) in respect of an 
innovation patent within the prescribed peri od after an innovation patent has been 
granted. 
 
How notice must be given 
 
 (3) Notice must be given in accordance with the regulations.  
Commissioner must inform patentee of notice given 
 
 (4) If the Commissioner receives a notice in  respect of an innovation patent, the 
Commissioner must inform the patentee, in writing, of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice. 
 
Commissioner to deal with notice in accordance with regulations 
 
 (5) The Commissioner must otherwise consider  and deal with a notice in accordance with 
the regulations. IP/N/1/AUS/P/5 
Page 22  
 
  Chapter 3—From application to acceptance 
 Part 1—Patent applications  Division 1—Applications 
 
29  Application for patent  
 (1) A person may apply for a patent for an invention by filing, in accordance with the 
regulations, a patent request and such  other documents as are prescribed. 
 
 (2) An application may be a provisional application or a complete application. 
  (3) A patent request in relation to a provisio nal application must be in the approved form 
and accompanied by a provisional specification. 
 
 (4) A patent request in relation to a complete  application must be in the approved form 
and accompanied by a complete specification. 
  (5) In this section: 
 
  person  includes a body of persons, whether incorporated or not. 
 
[Note: see also section 5 for requirements relating to associated applications .] 
 
30  Filing date 
 
  A patent application is to be taken to have been made on the filing date determined 
under the regulations. 
 31  Joint applicants 
 
  2 or more persons (within the meani ng of section 29) may make a joint patent 
application. 
 32  Disputes between applicants etc. 
 
  If a dispute arises between any 2 or more interested parties in relation to a patent 
application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the 
application to proceed in the name of one or more of the parties alone, or for 
regulating the manner in which it is to  proceed, or both, as the case requires. 
 
33  Applications by opponents etc. 
 
Opposition to standard patent if a person ot her than nominated person eligible for 
grant of patent 
 
 (1) If:    (a) an application has been made for a standard patent; and  IP/N/1/AUS/P/5 
 Page 23 
 
 
                (b) the grant of the standa rd patent is opposed under section 59 by one or more 
persons; and 
  (c) the Commissioner decides, under section 60, that:                             (i) one  or more opponents are eligible  persons in relation to the 
invention, so far as claimed in any claim of the opposed patent 
application (the original claim ); and 
                           (ii) the nominated person in respect of the application is not an eligible 
person in relation to the invention; and 
                           (iii) ther e is no other reason that a pate nt should not be granted; and 
 
              (d) a complete applica tion is made under section 29 by one or more of the 
eligible persons for a patent in relation to the invention; 
  the Commissioner may grant those eligible pe rsons a patent jointly for the invention, 
so far as so claimed. 
 
Opposition to standard patent if nominated p erson eligible for grant of patent with 
other persons 
 
 (2) If:  
  (a) an application has been made for a standard patent; and 
              (b) the grant of the patent is opposed under section 59 by one or more persons; 
and 
  (c) the Commissioner decides, under section 60:  
                           (i) that both the nominated person and one or more of the opponents are 
eligible persons in relation to the i nvention, so far as claimed in any 
claim of the opposed patent application (the original claim ); and 
                           (ii) that th ere is no other reason that a pate nt should not be granted; and 
               (d) a complete application is  made by one or more of  the eligible persons under 
section 29 for a patent in relation to the invention; 
  the Commissioner may grant a patent for the invention, so far as so claimed, to those 
eligible persons jointly. 
 
Opposition to innovation patent if patentee not  entitled to grant of patent but another 
person is 
 
 (3) If:    (a) an innovation patent is opposed under section 101M by one or more persons; 
              (b) the Commissioner decides, under section 101N, that the patentee is not 
entitled to the grant of the patent; and 
              (c) the Commissioner decide s that one or more of the opponents are eligible 
persons in relation to the invention the subject of the patent, so far as claimed 
in any claim of the patent  (the original claim ); and 
              (d) a complete application is  made by one or more of  the eligible persons under 
section 29 for a patent in relation to the invention; 
  the Commissioner may grant an innovation patent for the invention, so far as so 
claimed, to those eligible persons. 
 IP/N/1/AUS/P/5 
Page 24  
 
  Opposition to innovation patent if patentee entitled to grant of patent with other 
person 
 
 (4) If:  
              (a) an innovation patent is  opposed under section 101M by one or more persons; 
and 
              (b) the Commissioner decides that one or more of the opponents and the original 
patentee are eligible persons in relatio n to the invention the subject of the 
patent, so far as claimed in any claim of the patent  (the original claim ); and 
              (c) a complete application is  made by one or more of  the eligible persons under 
section 29 for a patent in relation to the invention; 
  the Commissioner may grant an innovation patent for the invention, so far as so 
claimed, to those eligible persons jointly. 
 
 (5) If the Commissioner grants a patent under subs ection (1), (2), (3) or (4), the claims of 
that patent granted have the same priority da te as that of the original claim referred to 
in the respective subsection. 
 
34  Applications by eligible persons  arising out of Court proceedings 
  (1) If, in any proceedings in a court relating to a patent (the first patent ), the court is 
satisfied either: 
               (a) that one or more persons are eligible persons in rela tion to an invention so far 
as claimed in any claim of the patent  (the original claim ) but that the 
patentee is not an eligible person; or 
              (b) that the patentee and anot her person or persons are el igible persons in relation 
to an invention so far as claimed in any claim of the first patent  (the original 
claim ); 
  the court, in addition to any other or der it may make in the proceedings, may, by 
order, declare that the persons who it is sat isfied are eligible persons are eligible 
persons in relation to that invention so far as so claimed. 
  (2) Subject to subsection (3), if a comple te application is made under section 29 by one 
or more declared persons, the Commissioner may grant a patent for the invention, so 
far as claimed in the original claim, to those declared persons jointly. 
 
 (3) If the Commissioner grants a patent under subsection (2), the claims of that patent 
have the same priority date as that of the original claim. 
 
35  Applications by eligible persons  following revocation by Commissioner 
  (1) If the Commissioner: 
   (a) revokes a patent under section 137; and   (b) is satisfied:  
                           (i) on app lication made by one or more persons in accordance with the 
regulations, that the persons are e ligible persons in relation to the 
invention concerned, so far as so claimed in any claim of the revoked 
patent  (the original claim ) and that the former patentee is not such an 
eligible person; or  IP/N/1/AUS/P/5 
 Page 25 
 
 
                             (ii) on app lication made by one or more persons in accordance with the 
regulations, that the persons and the former patentee are eligible persons in relation to the invention concerned, so far as is claimed in 
any claim of the revoked patent  (the original claim ); 
  the Commissioner may declare in writing that  the eligible persons are such eligible 
persons. 
  (1A) If a complete application is made under section 29 by one or more of the declared 
persons, the Commissioner may grant a patent for the invention, so far as so claimed, 
to those declared persons jointly. 
 
 (1B) If the Commissioner grants a patent under subsection (1A), the claims of that patent 
have the same priority date as that of the original claim as referred to in 
subsection (1). 
 
 (2) The Commissioner must not make a declaration without first giving the former 
patentee a reasonable opportunity to be heard. 
  (3) An appeal lies to the Federal Court ag ainst a decision of the Commissioner making, 
or refusing to make, a declaration. 
 36  Other applications by eligible persons 
 
 (1) If:                (a) a patent application has been made and, in the case of a complete application, 
the patent request and complete speci fication have not been accepted; and 
              (b) an application for a declaration by the Commissioner  is made by one or more 
persons (the section 36 applicants ) in accordance with the regulations; and 
              (c) the Commissioner is satis fied, in relation to an invention disclosed in the 
specification filed in relation to the application for the patent: 
 
                           (i) that the nominated person is not an eligible person, but that the 
section 36  applicants are eligible persons; or 
                           (ii) that  the nominated person is an el igible person, but that the 
section 36  applicants are also eligible persons; 
 
  the Commissioner may declare in writing that the persons who the Commissioner is 
satisfied are eligible persons are eligible persons in relation to the invention as so 
disclosed. 
  (2) The Commissioner may make a declara tion under subsection (1) whether or not the 
patent application lapses or is withdrawn. 
 
 (3) The Commissioner must not make a declaration under subsection (1) without first 
giving the nominated person a reasonable opportunity to be heard. 
  (4) If a complete application is made under section 29 by one or more of the declared 
persons, the priority date of the claims of  a patent for the invention granted to the 
person, or persons, as the case may be, must  be determined under the regulations. 
 (5) An appeal lies to the Federal Court ag ainst a decision by the Commissioner under this 
section. 
 IP/N/1/AUS/P/5 
Page 26  
 
  37  Complete application may be treated as provisional 
 
 (1) Where a complete application is made, the applicant may, at any time during the 
prescribed period, by written request, ask the Commissioner to direct that the application be treated as a provisional application. 
 
 (2) A person is not entitled to make a request if the patent request and specification filed 
in respect of the application have been accepted or have become open to public inspection. 
 
 (3) On receiving a request, the Commissioner must give a direction as asked. 
  (4) Where the Commissioner gives a direction, the complete application is to be taken, 
for the purposes of this Act, to be, and to ha ve always been, a provisional application. 
 38  Time for making complete application 
 
 (1) If an applicant makes a provisional application, the applicant may make one or more 
complete applications associated with the provisional application at any time within the prescribed period. 
 
  (2) In this section: 
 
  applicant  includes a person entitled to make a re quest under section 113 in relation to 
the relevant patent application. 
 
[Note: see also section 5 for requirements relating to associated applications .] 
 
Division 2—Specifications 
 
40  Specifications 
 
 (1) A provisional specification must describe the invention. 
  (2) A complete specification must: 
 
              (a) describe the invention fully, including the best method known to the 
applicant of performing the invention; and 
              (b) where it relates to an application for a standard patent—end with a claim or 
claims defining the invention; and 
              (c) where it relates to an application for an innovation patent—end with at least 
one and no more than 5 claims. 
  (3) The claim or claims must be clear and succinct and fairly based on the matter 
described in the specification. 
 
 (4) The claim or claims must relate to one invention only. 
 
41   Specifications: micro-organisms 
 
 (1) To the extent that an invention is a mi cro-organism, the complete specification is to 
be taken to comply with paragraph 40(2)(a), so far as it requires a description of the  IP/N/1/AUS/P/5 
 Page 27 
 
 
  micro-organism, if the deposit requiremen ts are satisfied in relation to the 
micro-organism. 
  (2) Where:  
              (a) an invention involves the use, modification or cultivation of a 
micro-organism, other than the micro-or ganism mentioned in subsection (1); 
and 
              (b) a person skilled in the re levant art in the patent area could not reasonably be 
expected to perform the invention without having a sample of the 
micro-organism before starting to perform the invention; and 
              (c) the micro-organism is  not reasonably available to a person skilled in the 
relevant art in the patent area; 
  the specification is to be taken to comply  with paragraph 40(2)(a), so far as it requires 
a description of the micro-organism, if, and only if, the deposit requirements are 
satisfied in relation to the micro-organism. 
  (3) For the purposes of this section, a micr o-organism may be ta ken to be reasonably 
available to a person even if it is not so available in the patent area. 
  (4) Where: 
 
              (a) the requirements specified in paragraph 6(c) or (d) cease to be satisfied in 
relation to a micro-organism; and 
              (b) steps are taken at a la ter time within the prescribed period in accordance with 
such provisions (if any) of the regulations as are applicable; and 
              (c) as a result of those st eps, if the period during which those requirements are 
not satisfied is disregarded, those require ments would be satisfied at that later 
time; 
  those requirements are to be taken to ha ve been satisfied during the period mentioned 
in paragraph (c), and such pr ovisions as are prescribed have effect for the protection 
or compensation of persons who availed them selves, or took definite steps by way of 
contract or otherwise to avail themselves, of the invention during that period. 
 
[Note: see also section 6 in relation to satisfaction of deposit requirements .] 
 
42  Micro-organisms ceasing to be reasonably available 
 
 (1) Where:                (a) a complete application has been made for a patent, or a patent has been 
granted for an invention of a kind me ntioned in paragraph 41(2)(a); and 
              (b) the relevant micro-orga nism was, at the date of filing of the complete 
specification, reasonably available (within the meaning of section 41) to a skilled person working in the releva nt art in the patent area; and 
  (c) the micro-organism has ceased to be so available; 
  a prescribed court or the Commissioner, on application made in accordance with the 
regulations, or the Commissioner, on his or her own motion, may declare that the specification does not comply with section 40 unless the deposit requirements are satisfied in relation to the micro-organism. 
 IP/N/1/AUS/P/5 
Page 28  
 
   (2) Where a declaration is made under subsection (1): 
   (a) this Act has effect in relation to the specification accordingly; and               (b) section 6 applies as if the references in that section to the date of filing of the 
specification were references to a date specified in the declaration for the 
purposes of this subsection. 
  (3) Subsection (2) does not limit the operation of section 223.   (4) Where: 
 
  (a) an application is made under subsection (1); or                           (b) the Commissioner proposes to make a declaration under that subsection on 
his or her own motion; 
  the applicant for the patent, or the patent ee, as the case may be, must be notified, in 
accordance with the regulations, of the app lication or proposal and is entitled to 
appear and be heard. 
  (5) A declaration by the Commissioner must be made in accordance with the regulations. 
  (6) An office copy of a declaration by a prescribed court must be served on the 
Commissioner by the Registrar or other appropriate officer of the court. 
  (7) An appeal lies to the Federal Court against a decision of the Commissioner under 
subsection (1). 
 
[Note: see also section 6 in relation to satisfaction of deposit requirements .] 
 
Division 3—Priority dates 
 
43  Priority dates  
 (1) Each claim of a specification must have a priority date.   (2) The priority date of a claim is: 
 
  (a) the date of filing of the specification; or               (b) where the regulations pr ovide for the determination of a different date as the 
priority date—the date dete rmined under the regulations. 
  (3) Where a claim defines more than one form  of an invention, th en, for the purposes of 
determining the priority date of the claim, it must be treated as if it were a separate 
claim for each form of the invention that is defined. 
  (4) The priority date of a claim of a specifi cation may be different from the priority date 
of any other claim of the specification. 
 
Priority date if claim arises from further application for an innovation patent 
provided for in section 79C 
 
 (5) If:   IP/N/1/AUS/P/5 
 Page 29 
 
 
                (a) an innovation patent h as been granted following an application provided for 
in section 79C; and 
              (b) a request for the examinat ion of the patent has been made within the period 
prescribed in the regulations; 
  the priority date of each claim in the specification is the date determined under the 
regulations. 
  (6) If:                (a) an innovation patent h as been granted following an application provided for 
in section 79C; and 
              (b) a request for the examin ation of the patent has not been made within the 
period prescribed in the regulations; 
  the priority date of each claim in the sp ecification must not be a date earlier than the 
date of filing of the application provided for in section 79C. 
 
Part 2—Examination of standard patent requests and specifications 
 Division 1—Examination  44  Request for examination 
 
 (1) Where a complete application for a standa rd patent has been made, the applicant may, 
within the prescribed period and in acco rdance with the regulations, ask for an 
examination of the patent request and sp ecification relating to the application. 
 
 (2) Where a complete application has been made for a standard patent, the Commissioner 
may, on one or more of the prescribed grounds and in accordance with the regulations, direct the applicant to ask, within the prescribed period, for an examination of the patent request and complete specification relating to the application. 
 
 (3) Where the patent request and specification relating to a complete application for a 
standard patent are open to public inspec tion, a person may, in accordance with the 
regulations, require the Commissioner to di rect the applicant to ask, within the 
prescribed period, for an examination of the request and specification. 
 
 (4) Where required under subsection (3), the Commissioner must give a direction 
accordingly, unless the applicant has already asked, or been directed to ask, for an 
examination of the patent request and specification. 
 
45  Examination 
  (1) Where an applicant asks for an examin ation of a patent request and complete 
specification  relating to an application for a standard patent, the Commissioner must 
examine the request and specification and report on: 
   (a) whether the specification complies with section 40; and 
              (b) whether, to the best of  his or her knowledge, the invention, so far as claimed, 
satisfies the criterion mentione d in paragraph 18(1)(a); and 
              (c) whether, to the best of  his or her knowledge, the invention, so far as claimed 
in any claim and when compared with the prior art base as it existed before 
the priority date of that claim: IP/N/1/AUS/P/5 
Page 30  
 
   
   (i) is novel; and    (ii) involves an inventive step; and    (d) such other matters (if any) as are prescribed. 
 
 (1A) For the purposes of paragraph (1)(c), the prior art base is to be taken not to include 
information made publicly available only thro ugh the doing of an act (whether in or 
out of the patent area). 
 
 (2) The examination must be carried out in accordance with the regulations. 
  (3) The applicant must inform the Commissi oner, in accordance with the regulations, of 
the results of any documentary searches, whether conducted in Australia or elsewhere, for the purposes of assessing the pa tentability of an invention disclosed in 
the complete specification or a corresponding application filed outside Australia that 
are carried out by or on behalf of the app licant, or the applican t’s predecessor in title, 
prior to the grant of the patent. 
 
46  Request for deferment of examination 
  (1) Where: 
   (a) a complete application for a standard patent has been made; and               (b) a prescribed application for a patent has been made in a prescribed foreign 
country; and 
              (c) a patent has not been granted in respect of the prescribed application; and 
               (d) the applicant has been directed by the Co mmissioner to ask for an 
examination of the patent request and specification relating to the application 
mentioned in paragraph (a), being a direction given on a ground prescribed 
for the purposes of this paragraph; 
  the applicant may, instead of asking for an examination as directed, ask for deferment 
of the examination. 
  (2) A request for deferment must be made in accordance with the regulations. 
  (3) Where a request for deferment is made: 
 
              (a) the examination of th e patent request and specification must be deferred 
accordingly; and 
              (b) the application does not lapse merely because of failure by the applicant to 
ask for an examination in accordance with the Commissioner’s direction. 
 Division 2—Modified examination  47  Request for modified examination 
 
 (1) Where: 
 
  (a) a complete application for a standard patent has been made; and               (b) a patent has been granted in a prescribed foreign country in respect of a 
prescribed application made in that country;  IP/N/1/AUS/P/5 
 Page 31 
 
 
    the applicant may, instead of asking for an examination, ask for a modified 
examination of the patent request and sp ecification relating to the application. 
  (2) The applicant may withdraw a request fo r a modified examination at any time before 
acceptance of the patent request and specifi cation and ask for an examination under 
section 44 instead. 
 
48  Modified examination 
 
 (1) When an applicant asks fo r a modified examination of a patent request and complete 
specification relating to an application fo r a standard patent, the Commissioner must 
examine the request and specification and report on: 
               (a) whether, to the best of  his or her knowledge, the invention, so far as claimed, 
satisfies the criterion mentione d in paragraph 18(1)(a); and 
              (b) whether, to the best of  his or her knowledge, the invention, so far as claimed 
in any claim and when compared with the prior art base as it existed before 
the priority date of that claim: 
    (i) is novel; and    (ii) involves an inventive step; and 
 
  (c) such other matters (if any) as are prescribed.   (1A) For the purposes of paragraph (1)(b), the prior art base is to be taken not to include 
information made publicly available only thro ugh the doing of an act (whether in or 
out of the patent area). 
  (2) The modified examination must be ca rried out in accordance with the regulations. 
 
Part 3—Acceptance 
 
Division 1—Acceptance of standard patents 
 49  Acceptance of patent request: standard patent   
 (1) Subject to section 50, the Commissioner must accept a patent request and complete 
specification relating to an application for a standard patent, if: 
               (a) the Commissioner is satisfi ed that the invention, so  far as claimed, satisfies 
the criteria mentioned in paragraph 18(1)(b); and 
  (b) the Commissioner considers that:  
                           (i) there is no lawful ground of objection (other than a ground in respect 
of paragraph 18(1)(b)) to the request and specification; or 
   (ii) any such ground of objection has been removed.   (2) If subsection (1) does not apply, the Commissioner may refuse to accept the request 
and specification. 
  (3) The Commissioner must, if asked to do  so by the applicant in writing, postpone 
acceptance of a patent request and complete specification until such day as the applicant specifies. IP/N/1/AUS/P/5 
Page 32  
 
   
 (4) The applicant cannot, for the purposes of sub section (3), specify a day that is after the 
end of the period prescribed for the purposes of paragraph 142(2)(e). 
  (5) Where the Commissioner accepts a patent request and complete specification relating 
to an application for a standard patent, the Commissioner must: 
   (a) notify the applicant in writing of the acceptance; and   (b) publish a notice of the acceptance in the  Official Journal . 
 
 (6) The notice mentioned in paragraph (5)(b) must: 
               (a) if the patent request and complete specification have been subjected to a 
modified examination—include a statem ent to the effect that the acceptance 
has resulted from a modified examination; and 
              (b) if the patent request  and complete specification have not already become 
open to public inspection—include a statem ent to the effect that the patent 
request and specification are open to public inspection. 
  (7) Where the Commissioner refuses to accept a patent request and complete 
specification relating to an application fo r a standard patent, the Commissioner must 
notify the applicant in writing of the reasons  for the refusal and publish a notice of the 
refusal in the Official Journal . 
 
50  Application or grant may be refused in certain cases 
  (1) The Commissioner may refuse to accept  a request and specification relating to a 
standard patent, or to grant a standard patent: 
   (a) for an invention the use of which would be contrary to law; or   (b) on the ground that the speci fication claims as an invention: 
 
                           (i) a substance that is capable of being used as food or medicine 
(whether for human beings or anim als and whether for internal or 
external use) and is a mere mixture of known ingredients; or 
   (ii) a process producing such a substance by mere admixture.  
 (2) The Commissioner may refuse to accept a specification relating to a standard patent 
containing a claim that includes the name of a person as the name, or part of the name, of the invention so far as claimed in that claim. 
 
51  Appeal 
   An appeal lies to the Federal Court against a decision of the Commissioner under this 
Division. 
 
Division 2—Acceptance of innovation patents 
 
52  Formalities check and accep tance of innovation patents 
 
 (1) If a complete application for an innova tion patent is made, the Commissioner must 
undertake a formalities check in respect of the application. 
  IP/N/1/AUS/P/5 
 Page 33 
 
 
  (2) If satisfied that the application passes th e formalities check, the Commissioner must 
accept the patent request and complete specification. 
 
Chapter 4—Publication 
   
53  Publication of certain information about applicants etc. 
 
  Where a patent application is made, the Commissioner must publish in the  Official 
Journal the prescribed information about the applicant and the application. 
 54  Notice of publication 
 
 (1) Where a complete specification filed in resp ect of an application for a standard patent 
(other than a PCT application) has not  become open to public inspection, the 
Commissioner must, if asked to do so by th e applicant, publish, in accordance with 
the regulations, a notice in the Official Journal that the complete specification is open 
to public inspection. 
  (2) If subsection 41(2) applies to a specifi cation, the applicant cannot make a request 
under subsection (1) in relation to the sp ecification unless the specification includes 
the particulars mentioned in paragraph 6(c). 
 
 (3) Where:                (a) a complete specification has been filed in respect of an application for a 
standard patent (other than a PCT application); and 
  (b) the prescribed period has ended; and 
  (c) the specification is not open to public inspection;   the Commissioner must publish a notice in the Official Journal that the specification 
is open to public inspection, unless the app lication has lapsed or been refused or 
withdrawn. 
 
 (4) Where: 
               (a) a divisional applicati on for a standard patent provided for in section 79B 
(other than a PCT application) is made in respect of an original application, 
whether a PCT application or not; and 
              (b) the complete specification filed in respect of the original application was 
open to public inspection when the divisional application was made; 
  the Commissioner must publish a notice in the Official Journal that the complete 
specification filed in respect of the divisiona l application is open to public inspection. 
  (5) Where a divisional application for a standard patent provided for in section 79B 
(other than a PCT application) is made in respect of an original application that is not 
a PCT application and: 
               (a) a notice is published in the Official Journal that the complete specification 
filed in respect of the original application is open to public inspection; or 
              (b) a notice is published in the Official Journal that the complete specification 
filed in respect of the divisional app lication is open to public inspection; 
  the Commissioner must also publish in the Official Journal a notice that: 
              (c) where paragraph (a) a pplies—the complete specification filed in respect of 
the divisional application is open to public inspection; or IP/N/1/AUS/P/5 
Page 34  
 
                (d) where paragraph (b) applies—the complete specification filed in respect of 
the original application is open to public inspection. 
  (6) Where:  
              (a) a divisional applicati on for a standard patent provided for in section 79B 
(other than a PCT application) is made in respect of an original application 
that is a PCT application; and 
              (b) a notice is published in the Official Journal that the complete specification 
filed in respect of the original app lication is open to public inspection; 
  the Commissioner must also publish in the Official Journal a notice that the complete 
specification filed in respect of the divisiona l application is open to public inspection. 
 
55  Documents open to public inspection 
  (1) Where a notice is published under section 54 or under subsection 62(3), the 
specification concerned, and such other documents (if any) as are prescribed, are open to public inspection. 
  (2) Where a notice is published under paragra ph 49(5)(b) in relation to an application for 
a standard patent, or under subsection 62(2) in relation to the grant of an innovation 
patent, the following documents are open to public inspection: 
               (a) all documents (other than prescribed documents) filed in relation to the 
application or the patent, whether befo re or after the acceptance or grant; 
              (b) all documents (other th an prescribed documents) filed, after the patent ceases, 
expires or is revoked, in relation to the former patent; 
              (c) copies of all documents relating to the application or patent (other than 
prescribed documents) given by the Commissioner to the applicant or patentee, or the former applicant or patentee; 
  being documents that have not already become open to public inspection.  
 (3) Subject to section 90, a specification, or other document, is to be  taken to have been 
published on the day on which it becomes ope n to public inspection unless it has been 
published otherwise before that day. 
 
56  Certain documents not to be published 
 
 (1) Except as otherwise provided by this Act, documents of the kind mentioned in 
section 55: 
   (a) must not be published or be open to public inspection; and 
              (b) are not liable to be in spected or produced before the Commissioner or in a 
legal proceeding unless the Commissioner, court, or any person having power 
to order inspection or production, dir ects that the inspection or production be 
allowed. 
  (2) Notice of an application for the producti on in legal proceedings of a document of the 
kind mentioned in section 55 must be given to the Commissioner, who is entitled to 
be heard on the application. 
  IP/N/1/AUS/P/5 
 Page 35 
 
 
  57  Effect of publication of complete specification 
 
 (1) After a complete specification relating to  an application for a standard patent has 
become open to public inspection and until a pa tent is granted on the application, the 
applicant has the same rights as he or she w ould have had if a patent for the invention 
had been granted on the day when the specifi cation became open to public inspection. 
  (3) Subsection (1) does not give the applicant a right to start proceedings in respect of the 
doing of an act unless: 
 
  (a) a patent is granted on the application; and 
              (b) the act would, if done  after the grant of the patent, have constituted an 
infringement of a claim of the specification. 
  (4) It is a defence to proceedings under subsection (1) in respect of an act done: 
 
  (a) after the complete specification became open to public inspection; and               (b) before the patent request was accepted:   if the defendant proves that a patent c ould not validly have been granted to the 
applicant in respect of the claims (as fra med when the act was done) that are alleged 
to have been infringed by the doing of the act. 
 
58  Result of search may be disclosed 
  The Commissioner may disclose the result of any search made for the purpose of 
making a report under this Act. 
 Chapter 5—Opposition to grant of standard patent 
   
59  Opposition to grant of standard patent 
 
  The Minister or any other person may, in accordance with the regulations, oppose the 
grant of a standard patent on one or more of the following grounds, but on no other 
ground: 
 
 (a) that the nominated person is either: 
    (i) not entitled to a grant of a patent for the invention; or 
                           (ii) entitled to a grant of a patent for the invention but only in 
conjunction with some other person; 
               (b) that the invention is not a patentable invention because it does not comply 
with paragraph 18(1)(a) or (b); 
              (c) that the specification f iled in respect of the complete application does not 
comply with subsection 40(2) or (3);  
  (d) that the invention is not a pa tentable invention under subsection 18(2). 
 
60  Hearing and decision by Commissioner 
  (1) Where the grant of a standard patent is opposed, the Commissi oner must decide the 
case in accordance with the regulations. 
  (2) The Commissioner must give the applicant and the opponent a reasonable opportunity 
to be heard before deciding a case. IP/N/1/AUS/P/5 
Page 36  
 
   
 (3) The Commissioner may, in deciding a case, take into account any ground on which 
the grant of a standard patent may be opposed, whether relied upon by the opponent 
or not. 
 
 (4) The applicant, and any opponent, may appeal to the Federal Court against a decision 
of the Commissioner under this section. 
 
Chapter 6—Grant and term of patents 
 
Part 1—Grant    
61  Grant of standard patent 
 
 (1) Subject to section 100A, the Commissione r must grant a standard patent, by sealing a 
standard patent in the approved form, if: 
   (a) there is no opposition to the grant; or               (b) in spite of oppositi on, the Commissioner’s decision, or the decision on 
appeal, is that a standard patent should be granted. 
 
 (2) A standard patent must be granted within the prescribed period. 
 
62  Grant and publication of innovation patent 
 
 (1) If: 
 
              (a) the Commissioner accepts a patent request and complete specification filed in 
respect of an application for an innovation patent; and 
              (b) a prohibition order is not in force under subsection 152(3) or 173(1) in 
relation to the application; 
  the Commissioner must grant the innovati on patent by sealing an innovation patent in 
the approved form. 
  (2) If an innovation patent is granted, the Commissioner must publish a notice in the 
Official Journal stating that: 
 
  (a) the innovation patent has been granted; and 
  (b) the patent request and complete sp ecification are open to public inspection. 
  (3) If:                (a) a divisional application provided for in section 79B is made for an innovation 
patent; and 
              (b) a notice is published in the Official Journal that the complete specification 
filed in respect of the divisional app lication is open to public inspection; 
  the Commissioner must also publish in the Official Journal a notice that the complete 
specification filed in respect of the original application on which the divisional 
application is based is ope n to public inspection. 
 
63  Joint patentees 
 
  A patent may be granted to 2 or  more nominated persons jointly.  IP/N/1/AUS/P/5 
 Page 37 
 
 
   
64  Grant: multiple applications 
 
 (1) Subject to this section, where there ar e 2 or more applications for patents for 
identical, or substantially identical, inven tions, the granting of a patent on one of 
those applications does not prevent the granting of a patent on any of the other 
applications. 
  (2) Where:  
              (a) an application for a standard  patent claims an invention that is the same as an 
invention that is the subject of a patent  and is made by the same inventor; and 
              (b) the relevant claim or cl aims in each of the complete specifications have the 
same priority date or dates; 
  a standard patent cannot be granted on the application. 
 
65  Date of patent 
 
  The date of a patent is:    (a) the date of filing of the relevant complete specification; or 
              (b) where the regulations pr ovide for the determination of a different date as the 
date of a patent—the date de termined under the regulations. 
 
66  Sealing of duplicate of patent 
  (1) The Commissioner may seal a duplicate of a patent if satisfied that the patent is lost, 
stolen, damaged or destroyed. 
  (2) If:                (a) the Commissioner is satisfied that particulars on a patent are incorrect 
because of an error or omission by the Commissioner; and 
              (b) the patent is returned to the Commissioner;   the Commissioner may seal a duplicate of the patent.  
Part 2—Term 
   
67  Term of standard patent 
 
  The term of a standard patent is  20 years from the date of the patent. 
 
68  Term of innovation patent 
 
  The term of an innovation patent is  8 years from the date of the patent. 
 
Part 3—Extension of term of standard pa tents relating to pharmaceutical substances 
 
70  Applications for extension of patent  
 (1) The patentee of a standard patent may apply to the Commissioner for an extension of 
the term of the patent if the requirements set out in subsections (2), (3) and (4) are 
satisfied. IP/N/1/AUS/P/5 
Page 38  
 
   
  (2) Either or both of the following conditions must be satisfied:                (a) one or more pharmaceutical substances per se  must in substance be disclosed 
in the complete specification of the pate nt and in substance fall within the 
scope of the claim or claims of that specification; 
              (b) one or more pharma ceutical substances when produced by a process that 
involves the use of recombinant DNA technology, must in substance be disclosed in the complete specification of the patent and in substance fall 
within the scope of the claim or claims of that specification. 
  (3) Both of the following conditions must be satisfied in relation to at least one of those 
pharmaceutical substances: 
 
              (a) goods containing, or co nsisting of, the substance must be included in the 
Australian Register of Therapeutic Goods; 
              (b) the period beginning on the date of the patent and ending on the first 
regulatory approval date for the substance must be at least 5 years. 
 
Note: Section 65 sets out the date of a patent. 
  (4) The term of the patent must not have been previously extended under this Division. 
  (5) For the purposes of this section, the first regulatory approval date , in relation to a 
pharmaceutical substance, is: 
               (a) if no pre-TGA marke ting approval was given in relation to the substance—
the date of commencement of the first inclusion in the Australian Register of Therapeutic Goods of goods that contai n, or consist of, the substance; or 
              (b) if pre-TGA marketing approval was given in relation to the substance—the 
date of the first approval. 
  (6) For the purposes of this section, pre-TGA marketing approval , in relation to a 
pharmaceutical substance, is an approval (however described) by a Minister, or a 
Secretary to a Department, to: 
               (a) market the substance, or a product containing the substance, in Australia; or               (b) import into Australia, for general marketing, the substance or a product 
containing the substance. 
 71  Form and timing of an application 
 
  Form of application 
 
 (1) An application for an extension of  the term of a standard patent must: 
 
  (a) be in the approved form; and               (b) be accompanied by such  documents (if any) as are ascertained in accordance 
with the regulations; and 
              (c) be accompanied by such  information (if any) as is  ascertained in accordance 
with the regulations. 
  For this purpose, document  includes a copy of a document.  IP/N/1/AUS/P/5 
 Page 39 
 
 
   
Timing of application 
 
 (2) An application for an extension of the te rm of a standard patent must be made during 
the term of the patent and within 6 months  after the latest of the following dates: 
 
  (a) the date the patent was granted;               (b) the date of commencement of the first inclusion in the Australian Register of 
Therapeutic Goods of goods that contain, or consist of, any of the pharmaceutical substances referre d to in subsection 70(3); 
  (c) the date of commencement of this section. 
 
72  Notification and public inspection of application 
 
  If a patentee makes an application for an ex tension of the term of  a standard patent, 
the Commissioner must publish in the Official Journal  a notice that the application 
has been made and is open to public inspection. 
 
73  Withdrawal of application 
 
 (1) A patentee who has applied for an extension of the term of a standard patent may, by 
notice in writing to the Commissioner, withdraw the application. 
  (2) If an application for an extension of the term of a standard patent is withdrawn, the 
Commissioner must publish in the Official Journal  a notice stating that the 
application has been withdrawn. 
 
74  Acceptance or refusal of application 
 
Acceptance 
 
 (1) If a patentee of a standard patent makes an  application for an extension of the term of 
the patent, the Commissioner must accept th e application if the Commissioner is 
satisfied that the requirements of sections 70 and 71 are satisfied in relation to the 
application. 
  (2) If the Commissioner accepts the a pplication, the Commissioner must: 
 
  (a) notify the applicant in writing of the acceptance; and   (b) publish a notice of the acceptance in the Official Journal. 
 
  Refusal 
  (3) The Commissioner must refuse to accept the application if the Commissioner is not 
satisfied that the requirements of sections 70 and 71 are satisfied in relation to the 
application. 
  (4) If the Commissioner refuses to accept th e application, the Commissioner must: 
 
  (a) notify the applicant in writing of the reasons for the refusal; and   (b) publish a notice of the refusal in the Official Journal . 
 IP/N/1/AUS/P/5 
Page 40  
 
  75  Opposition to grant of extension 
 
 (1) The Minister or any other person may, in accordance with the regulations, oppose the 
grant of an extension of the term of a sta ndard patent on the ground that one or more 
of the requirements of sections 70 and 71 are not satisfied in relation to the 
application for the extension. The Minister or other person may not oppose the grant 
of the extension on any other ground. 
  (2) If the grant of an extension of the term of a standard patent is opposed, the 
Commissioner must decide the case in accordance with the regulations. 
 
 (3) The Commissioner must give the applicant and the opponent a reasonable opportunity 
to be heard before deciding a case. 
  (4) The applicant, and any opponent, may appeal to the Federal Court against a decision 
of the Commissioner under this section. 
 
76  Grant of extension 
 
 (1) The Commissioner must grant an extension of the term of a standard patent if:  
  (a) there is no opposition to the grant; or 
              (b) in spite of oppositi on, the Commissioner’s decision, or the decision on 
appeal, is that the extension should be granted. 
  (2) If the Commissioner grants an extension,  the Commissioner must notify the applicant 
in writing of the grant and publish a notice of the grant in the Official Journal . 
 
76A  Notification of extension to the Secretary, Health and Family Services 
 
  In respect of each application for an extension approved by the Commissioner under 
section 76 in a financial year, the patent hol der must lodge with the Secretary of the 
Department, before the end of the followi ng financial year, a return setting out the 
following information: 
              (a) details of the amount and origin of any Commonwealth funds spent in the 
research and development of the drug which was the subject of the 
application; and 
           (b) the name of any body:     (i) with which the applicant has a contractual agreement; and    (ii) which is in receipt of Commonwealth funds; and  
              (c) the total amount spent on each type of research and development, including 
pre-clinical research and clinical trials, in respect of the drug which was the subject of the application. 
 
77  Calculation of term of extension 
 
 (1) If the Commissioner grants an extension of the term of a standard patent, the term of 
the extension is equal to: 
  IP/N/1/AUS/P/5 
 Page 41 
 
 
                (a) the period beginning on the date of the patent and ending on the earliest first 
regulatory approval date (as defined by section 70) in relation to any of the 
pharmaceutical substances referre d to in subsection 70(2); 
  reduced (but not below zero) by:   (b) 5 years. 
 
  Note: Section 65 sets out the date of a patent. 
  (2) However, the term of the extens ion cannot be longer than 5 years. 
 
78  Exclusive rights of patentee are limited if extension granted 
 
 (1) If the Commissioner grants an extension of the term of a standard patent, the 
exclusive rights of the patentee during the term of the extension are not infringed: 
 
  (a) by a person exploiting:                             (i) a pharmaceutical substance per se  that is in substance disclosed in the 
complete specification of the patent  and in substance falls within the 
scope of the claim or claims of that specification; or 
                           (ii) a pharmaceutical substance when produced by a process that involves 
the use of recombinant DNA technology, that is in substance disclosed in the complete specification of the patent and in substance falls within the scope of the claim or claims of that specification; 
   for a purpose other than therapeutic use; or 
 
  (b) by a person exploiting any form of the invention other than:                             (i) a pharmaceutical substance per se  that is in substance disclosed in the 
complete specification of the patent  and in substance falls within the 
scope of the claim or claims of that specification; or 
                           (ii) a pharmaceutical substance when produced by a process that involves 
the use of recombinant DNA technology, that is in substance disclosed in the complete specification of the patent and in substance falls within the scope of the claim or claims of that specification. 
 
 (2) If the Commissioner grants an extension of the term of a standard patent, the 
exclusive rights of the patentee after the grant of the extension are not infringed by a person exploiting: 
               (a) a pharmaceutical substance per se  that is in substance disclosed in the 
complete specification of the patent and in substance falls within the scope of 
the claim or claims of that specification; or 
              (b) a pharmaceutical substa nce when produced by a process that involves the use 
of recombinant DNA technology, that is in substance disclosed in the complete specification of the patent and in substance falls within the scope of 
the claim or claims of that specification; 
  solely for purposes in connection with:               (c) having goods included in the Australian Register of Therapeutic Goods, 
where the goods are intended for therapeutic use; or 
              (d) obtaining similar regulat ory approval under a law of a foreign country or of a 
part of a foreign country. 
 IP/N/1/AUS/P/5 
Page 42  
 
  79  Rights of patentee if extension granted after patent expires 
 
  If:    (a) a patentee applies for an extension of the term of a standard patent; and 
  (b) the term of the patent expires be fore the application is determined; and 
  (c) the extension is granted;   the patentee has, after the extension is gr anted, the same rights to start proceedings in 
respect of the doing of an act during the period: 
  (d) commencing on the expiration of the term of the patent; and 
  (e) ending on the day on which the extension was granted; 
  as if the extension had been granted at the time when the act was done.  
79A  Commissioner not to make decisi on if court proceedings pending 
   If: 
               (a) a patentee of a standard  patent applies for an extension of the term of the 
patent; and 
              (b) relevant proceedings in relation to the patent are pending;   the Commissioner must not make any decision under this Division in relation to the 
patent without the leave of the court. 
 
Chapter 6A—Divisional applications 
   79B  Divisional applications prior to grant of patent 
 
 (1) If a complete patent application for a pa tent is made (but has not lapsed or been 
refused or withdrawn), the applicant may, in accordance with the regulations, make a 
further complete application for a patent for an invention: 
               (a) disclosed in the sp ecification filed in respect of the first-mentioned 
application; and 
              (b) where the first-mentioned application is for a standard patent and at least 3 
months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal —falling 
within the scope of the claims of the accepted specification. 
 
 (1A) The reference to a complete patent a pplication first-mentioned in subsection (1) does 
not include a reference to a divisional application for an innovation patent provided for in section 79C. 
  (2) In this section:  
  applicant  has the same meaning as in section 38. 
 
79C  Divisional applications for innovation patents may be made after grant of an innovation 
patent 
 
Applications may be made 
 
 (1) A patentee of an innovation patent (the first patent ) may make a complete application 
for another innovation patent for a further invention disclosed in the first patent if the  IP/N/1/AUS/P/5 
 Page 43 
 
 
  invention was disclosed in the complete specification filed in respect of the 
application on which the first patent was sealed. 
 
When further applications must be made 
  (2) The patentee may only make the further complete application during the period that 
commences on the day an examination of the first patent begins and ends at the end 
of a period prescribed in the regulations. 
 
When does an examination begin? 
 
 (3) For the purposes of subsection (2), an examination of the patent begins: 
               (a) if the examination has been requested under paragraph 101A(b)—on the day 
the request was made; or 
              (b) if the Commissioner decided to examine the patent under 
paragraph 101A(a)—on the day the Co mmissioner made that decision. 
 
Chapter 7—Patents of addition 
     80  Chapter does not apply to innovation patents 
   This Chapter does not apply in relation to innovation patents. 
 
81  Grant of patent of addition 
  (1) Where: 
               (a) a patent for an invention (in this Chapter called the main invention ) has been 
applied for or granted; and 
              (b) the applicant or patentee (or a person authorised by the applicant or patentee) 
applies for a further patent for an improvement in, or modification of, the 
main invention; and 
              (c) the application for th at further patent is made in accordance with the 
regulations; 
  the Commissioner may, subject to this Act and the regulations, grant a patent of 
addition for the improvement or modification. 
 
 (2) A patent request and complete specificati on relating to an application for a patent of 
addition must not be examined before a re quest is made for the examination of the 
patent request and complete specification rela ting to the application for the patent for 
the main invention. 
 
 (3) A patent of addition must not be sealed before the patent for the main invention is 
sealed. 
  (4) An appeal lies to the Federal Court ag ainst a decision of the Commissioner under this 
section. 
 
82  Revocation of patent and grant of patent of addition instead 
 
 (1) Where:  IP/N/1/AUS/P/5 
Page 44  
 
                (a) an invention that is an  improvement in, or modification of, a main invention 
is the subject of an independent patent; and 
              (b) the patentee of the independ ent patent is also the patentee of the patent for the 
main invention; 
  the Commissioner may, on an application made by the patentee, revoke the 
independent patent and grant a patent  of addition for the improvement or 
modification. 
  (2) A patent of addition granted under this section must be given the same date as the 
date of the independent patent that is revoked. 
 
 (3) An appeal lies to the Federal Court against a decision of the Commissioner refusing 
an application under this section. 
 
83  Term of patent of addition 
 
Usual term 
 
 (1) The general rule is that a patent of a ddition remains in force for so long as the patent 
for the main invention remains in force. However, this rule is subject to the 
exceptions set out in subsections (3) and (4). 
 
 (2) The term of a patent of addition ma y be extended under Division 2 of Part 3 of 
Chapter 6, even though the patent for the main invention is not extended under that Division. 
 
Patent of addition extended 
 
 (3) If the term of a patent of addition is ex tended under Division 2 of Part 3 of Chapter 6: 
               (a) the extension begins at the end of the unextended term of the patent for the 
main invention; and 
              (b) when the extension be gins, the patent of additio n becomes an independent 
patent. 
 
Patent for main invention extended 
  (4) If: 
               (a) the term of the patent for the main invention is extended under Division 2 of 
Part 3 of Chapter 6; and 
              (b) the term of the pate nt of addition is not extended under that Division; 
  the term of the patent of addition expir es at the end of the unextended term of the 
patent for the main invention. 
 
85  Revocation of patent for main invention 
 
 (1) If the patent for the main invention is  revoked by a prescribed court, or by the 
Commissioner under section 101 or 137, the patent of addition becomes an 
independent patent unless otherwise ordered by: 
   (a) where the patent is revoked by a prescribed court—that court; or   (b) in any other case—the Commissioner.  IP/N/1/AUS/P/5 
 Page 45 
 
 
   
 (2) Where a patent of addition becomes an independent patent under this section, its term 
cannot be more than the unexpired part of the term of the patent for the main invention. 
 86  Renewal fees not payable 
 
  A fee is not payable for the renewal of a patent of addition.  
87  Fees payable where patent of addition becomes an independent patent 
 
  The fees payable after a patent of add ition becomes an independent patent, and the 
dates when they become payable, are to be determined by reference to the date of the 
independent patent. 
 Chapter 8—PCT applications and convention applications  Part 1—PCT applications    88  PCT applications 
  (1) Subject to this section, a PCT applicati on must, for the purposes of this Act other than 
this Part, be treated as a complete applica tion under this Act for a standard patent. 
  (3) The description, drawings and claims contained in a PCT application must be treated 
as a complete specification filed in respect of the application. 
 
 (4) The filing date of a PCT application is to  be taken to be its international filing date. 
  (5) For the purposes of this Act, an indica tion, in relation to a deposited micro-organism 
furnished under Rule 13 bis. 4, in relation to a PCT application, is to be taken to be 
included in the description contained in the PCT application even if the indication is 
contained in another document. 
  (6) The reference in subsection (5) to Rule 13 bis. 4 is a reference to Rule 13 bis. 4 of the 
Regulations mentioned in the definition of PCT  in Schedule 1. 
 
[Note: international filing date  is defined in Schedule 1: see also section 10 .] 
 
89  Modified application of Act 
  (1) A PCT application is to be taken to co mply with the prescribed requirements of this 
Act and the regulations that relate to patent applications for standard patents but is not 
to be taken, merely because of section 88, to comply with any other such 
requirements that apply to it. 
 
 (2) The description, drawings and claims contained in a PCT application are not to be 
taken, merely because of section 88, to co mply with the requirements of section 40. 
  (3) An applicant is not entitled to ask that any action be taken, or that he or she be 
allowed to take any action,  under this Act in relation to a PCT application unless: 
 IP/N/1/AUS/P/5 
Page 46  
 
                (a) if the application was not filed in the receiving Office in English—a 
translation of the application into Engl ish, verified in accordance with the 
regulations, has been filed; and 
              (b) in any case—the prescribed documents have been filed and the prescribed 
fees paid. 
 
 (4) If a translation of a PCT application has been filed, being a translation of the kind 
mentioned in paragraph (3)(a), the descrip tion and claims, and any matter associated 
with the drawings, contained in the applicati on are to be taken to have been amended, 
on the day on which the translation was filed, by substituting the translation of the 
description, claims and matter for the original. 
  (5) Where:    (a) a PCT application has been am ended under Article 19 of the PCT; or 
              (b) a PCT application in  respect of which Australia has been elected under 
Chapter II of the PCT within the period specified in Article 39 of the PCT has been amended under Article 34 of the PCT; or 
              (c) a PCT application h as been rectified under Rule 91 of the Regulations 
mentioned in the definition of PCT  in Schedule 1; 
  the description, drawings and claims contained in the application are, for the purposes 
of this Act, to be taken to have been am ended on the day on which that amendment or 
rectification was made. 
 
90  Publication of PCT applications 
   A PCT application is to be taken to have become open to public inspection, and to 
have been published in Australia: 
               (a) where a notice in  relation to the application is published under 
subsection 92(1) or (2)—on the day on which the notice is so published; or 
              (b) where a notice in  relation to the application is published under 
subsection 92(3)—on the day on which a copy of the application, as so 
published, is received in the Patent Office. 
 
91  Application of certain provisions to PCT applications 
   For the purposes of applying section 57 to a PCT application, references to the 
complete specification becoming open to pub lic inspection are references to the PCT 
application being taken to have become open to public inspection under section 90. 
 
92  Notice of publication 
  (1) Where, in relation to a PCT application that has not lapsed, or been withdrawn or 
refused: 
   (a) the applicant complies with subsection 89(3); and               (b) the applicant asks the Commissioner in writing to publish a notice in the 
Official Journal that the application is open to public inspection; and 
  (c) the application is not already open to public inspection;   the Commissioner must publish a notice in the Official Journal stating that a copy of 
the application is open to public inspection. 
  IP/N/1/AUS/P/5 
 Page 47 
 
 
   (2) Where: 
               (a) a PCT application that has not lapsed, or been withdrawn or refused, is to be 
treated as an application for a standard patent under this Act; and 
  (b) the applicant complies with subsection 89(3); and 
              (c) the period of 18 months af ter the priority date of the application has ended; 
and 
  (d) the application is not already open to public inspection;   the Commissioner must publish a notice in the Official Journal stating that a copy of 
the application is open to public inspection. 
 
 (3) Where:                (a) a copy of a PCT app lication, as published under Article 21 of the PCT, is 
received in the Patent Office; and 
  (b) the application has not lapsed, or been withdrawn or refused; and 
  (c) a notice has not been published under subsection (1) or (2);   the Commissioner must publish a notice in the Official Journal specifying the date on 
which the copy was so received and stating th at the copy is open to public inspection. 
   (4) Where a notice is published in the Official Journal under this section, a copy of the 
relevant application and of any othe r prescribed document is open to public 
inspection. 
 
93  Evidence of matters arising under PCT 
   A certificate signed by the Commissioner in relation to an international application, 
certifying that: 
               (a) any matter or thing requ ired or permitted by or under this Act or the PCT to 
be made or done has been made or done; or 
              (b) any matter or thing required by or under this Act or the PCT not to be made 
or done has not been made or done; 
  i s  prima facie evidence of the matters contained in the certificate. 
 
Part 2—Convention applications 
   
94  Convention applicants may make Convention applications 
 
 (1) A Convention applicant in relation to a basic application may make a Convention 
application, or 2 or more such applicants  may make a joint Convention application, 
within the prescribed period. 
 
 (2) Where 2 or more basic applications for protection in respect of inventions have been 
made in one or more Convention countries,  one Convention application may be made 
within the prescribed period by a Conventi on applicant in relation to those basic 
applications, or by 2 or more such entitle d applicants jointly, in respect of the 
inventions disclosed in the basic applications. 
 
95  Manner of making Convention application 
 
 (1) Subject to this section, a Convention application must be made and dealt with in the 
same way as any other patent application. IP/N/1/AUS/P/5 
Page 48  
 
   
 (2) A patent request relating to  a Convention application must: 
               (a) include the prescribed pa rticulars relating to the relevant basic application; 
and 
  (b) be accompanied by a complete specification. 
  (3) In addition to the complete specificati on, the prescribed documents must be filed 
within the prescribed period. 
 96   Withdrawn, abandoned or refused applications 
 
 (1) Where, at the time when a Convention appli cation is made in respect of an invention: 
               (a) an application has been made for protection in respect of the invention in a 
Convention country; and 
              (b) the application has been withdrawn, abandoned or refused without becoming 
open to public inspection; and 
              (c) the application has not been  used as the basis of claiming a right of priority in 
a Convention country under a law of that country corresponding to this Part; and 
              (d) a later application has been made by the same applicant for protection in 
respect of the invention in the Convention country in which the earlier application was made; 
  the applicant may ask the Commissioner to  disregard the earlier application for the 
purposes of this Part. 
 
 (2) Where an applicant makes a request under subsection (1): 
   (a) the earlier application must be disregarded; and               (b) neither the applicant nor any other applicant may use the earlier application 
as a basic application for the purposes of this Part. 
 
Chapter 9—Re-examination of standard patents 
   96A  Chapter does not apply to innovation patents 
   This Chapter does not apply in relation to innovation patents. 
 
97  Re-examination of complete specifications 
 
 (1) Subject to this section and the regulations, if:  
              (a) a request and complete sp ecification relating to an application for a patent has 
been accepted; and 
  (b) the patent has not been granted;   the Commissioner may re-examine the complete specification.  
 (2) Subject to this section and the regula tions, where a patent has been granted, the 
Commissioner may, and must if asked to do so by the patentee or any other person, 
re-examine the complete specification. 
  IP/N/1/AUS/P/5 
 Page 49 
 
 
   (3) Where the validity of a patent is disput ed in any proceedings before a prescribed 
court under this Act, the court may dir ect the Commissioner to re-examine the 
complete specification and the Commissioner must re-examine the specification accordingly. 
 
 (4) Where relevant proceedings in relation to a patent are pending, the Commissioner 
must not re-examine the complete specification relating to the patent under subsection (2). 
   (5) Where: 
 
              (a) the Commissioner has started to re-examine a complete specification relating 
to a patent under subsection (2); and 
  (b) relevant proceedings in relation to the patent are started;   the Commissioner must not continue the re-examination. 
 
98  Report on re-examination  
 
 (1) On re-examining a complete specification, the Commissioner must ascertain and 
report whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prio r art base as it existed before the priority 
date of that claim: 
   (a) is not novel; and   (b) does not involve an inventive step.  
 (2) For the purposes of subsection (1), the pr ior art base is to be taken not to include 
information made publicly available only thro ugh the doing of an act (whether in or 
out of the patent area). 
 
[Note: see also section 7 .] 
 
99  Statement by applicant or patentee 
 
 (1) Where the Commissioner reports adversely on a complete specification, the applicant 
or patentee may, within the prescribed period,  file a statement, in accordance with the 
regulations, disputing the whole or any part of the report. 
  (2) The applicant or patentee may file a statement whether or not the applicant or 
patentee takes steps to amend the complete  specification, or files a statement of 
amendments in accordance with a di rection under secti on 106 or 107. 
 
100  Copies of report to be given to court 
 
  A copy of a report under section 98, and of any statement filed under section 99 in 
relation to the report, must, where the re -examination was directed under subsection 
97(3), be given to the court that gave the direction. 
 
100A  Refusal to grant patent—re-examination before grant 
 
 (1) Where the Commissioner makes an adverse report on a re-examination under 
subsection 97(1), the Commissioner may refuse to grant the patent (see 
subsection 61(1)). IP/N/1/AUS/P/5 
Page 50  
 
   
 (2) The Commissioner cannot refuse to gr ant a patent under this section unless the 
Commissioner: 
   (a) has given the applicant a reasonable opportunity to be heard; and 
              (b) has, where appropriate, given the applicant a reasonable opportunity to 
amend the relevant specification for the purpose of removing any lawful ground of objection and the applicant has failed to do so. 
  (3) The applicant may appeal to the Federal Court against a decision of the 
Commissioner under this section. 
 
101  Revocation of patent—re-examination after grant 
 
 (1) Where the Commissioner makes an adverse report on a re-examination under 
subsection 97(2), the Commissioner may, by notice in writing, revoke the patent, 
either wholly or so far as it relates to a particular claim, as the case requires. 
   (2) The Commissioner must not revoke a patent under this section unless the 
Commissioner: 
 
  (a) has given the patentee a reasonable opportunity to be heard; and 
              (b) has, where appropriate, given the patentee a reasonable opportunity to amend 
the relevant specification for the purpose of removing any lawful ground of objection and the patentee has failed to do so. 
 
 (3) The Commissioner must not revoke a pa tent under this section while relevant 
proceedings in relation to that patent are pending. 
  (4) The patentee may appeal to the Federal Court against a decision of the Commissioner 
under this section. 
 Chapter 9A—Examination, re-examination and opposition-innovation patents  Part 1—Examination of innovation patents    101A  Examination may be requested or Commissioner may decide to examine 
 
  After the grant of an innovation patent, the Commissioner:    (a) may, if the Commissioner decides to do so; and   (b) must, if asked to do so, in writing, by the patentee or any other person;   examine the complete specification relating to an innovation patent. 
 
101B  Examination of an innovation patent 
 
What the Commissioner must do in examining a patent 
  (1) If the Commissioner examines an innovation patent under section 101A, the 
Commissioner must: 
  IP/N/1/AUS/P/5 
 Page 51 
 
 
                (a) examine the complete spec ification relating to the patent to determine if the 
patent is invalid and should be revoked because a ground set out in 
subsection (2), (4), (5), (6) or (7) is made out;  and 
  (b) report on the grounds set out in those subsections.   These are the only grounds for revocation under this section. 
 
Grounds for revocation relating to validity 
 
 (2) The grounds for revocation under subsection (1) include the following:  
  (a) that the specification does not comply with section 40; 
              (b) that the invention, so far as claimed, does not comply with 
paragraph 18(1A)(a) or (b); 
              (c) that the invention is no t a patentable invention under subsection 18(2) or (3); 
  (d) that the use of the invention would be contrary to law. 
 
 (3) For the purposes of working out whether the invention does not comply with 
paragraph 18(1A)(b), the prior art base (referr ed to in that paragraph) is to be taken 
not to include information made publicly available only through the doing of an act (whether in or out of the patent area). 
 
Revocation on ground that invention claims a substance capable of being used as 
food or medicine etc. 
 
 (4) A further ground for revocation is that the patent claims as an invention:  
             (a) a substance that is capab le of being used as food or medicine (whether for 
human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; or 
             (b) a process producing such a substance by mere admixture.  
Revocation on ground that patent includes a name 
 
 (5) A further ground for revocation is that the patent contains a claim that includes the 
name of a person as the name, or part of th e name, of the invention so far as it is 
claimed in that claim. 
 
Revocation on grounds of multiple patents for one invention 
 
 (6) A further ground for revocation is that:                (a) the innovation patent claims  an invention that is the same as an invention that 
is the subject of a patent and is  made by the same inventor; and 
              (b) the relevant claim or claims in respect of each patent  have the same priority 
date or dates. 
Revocation for grounds set out in the regulations 
 
 (7) A further ground for revocation is that the complete specification does not comply 
with such other matters (if any) as are prescribed. 
 
101C  How and when examination to be carried out 
 
  The examination under section 101B must be carried out: IP/N/1/AUS/P/5 
Page 52  
 
   
 (a) in accordance with the regulations; and  (b) within the period prescribed. 
 
101D  Commissioner to be given information on searches 
 
  The patentee must inform the Commissione r, in accordance with the regulations, of 
the results of any documentary searches, whether conducted in Australia or elsewhere, for the purposes of assessing the pa tentability of an invention disclosed in 
the complete specification or a corresponding application filed outside Australia that 
are carried out by or on behalf of the patentee, or the patentee’s predecessor in title, 
prior to the issue of a certificate of examination in respect of the patent. 
 
101E  Certificate of examination 
   If: 
               (a) after examining a patent under section 101B, the Commissioner decides in 
writing that he or she is satisfied that the invention, so far as claimed, complies with paragraph 18(1A)(b); and 
              (aa) after so examining th e patent, the Commissioner also decides in writing that 
he or she considers that: 
                            (i) a ground for the revocation of the patent (other than a ground in 
respect of paragraph 18(1A)(b)) has not been made out; or 
   (ii) any such ground has been removed; and 
 
  (b) the patent has not ceased under section 143A;   the Commissioner must:               (c) notify the  patentee  and the person who requested the examination (if that 
person is not the patentee)  that the patent  has been examined and that a 
certificate of examination is to be issued; and  
              (d) publish a notice of the examination having occurred  in the Official Journal ; 
and 
              (e) issue a certificate of ex amination to the patentee in the form approved by the 
Commissioner; and 
  (f) register the issue of the certificate. 
 
101F  Revocation of innovation patents following examination under section 101B 
 
 (1) If:                (a) the Commissioner considers that, after examining a patent under 
section 101B, a ground for the revocation of a patent has been made out and 
that the ground has not been removed; and 
  (b) the patent has not ceased under section 143A;   the Commissioner must revoke the patent.  
 (2) If the Commissioner revokes the patent: 
               (a) the Commissioner must notify the patentee and the person who requested the 
examination (if that person is not the patentee)  of the revocation; and 
  (b) register the revocation of the patent.  IP/N/1/AUS/P/5 
 Page 53 
 
 
   
 (3) The Commissioner must not revoke a patent under this section unless the 
Commissioner: 
   (a) has given the patentee a reasonable opportunity to be heard; and 
              (b) has, if appropriate, gi ven the patentee a reasonable opportunity to amend the 
relevant specification for the purposes of removing a ground for the revocation of the patent and the patentee has failed to do so. 
  (4) An appeal lies to the Federal Court against a decision of the Commissioner revoking 
a patent. 
 
Part 2—Re-examination of innovation patents 
   101G  Re-examination of complete specifications of innovation patents 
 
 (1) Subject to subsections 101K(2) and (3) and the regulations, after an innovation patent 
has been certified, the Commissioner: 
   (a) may, if the Commissioner decides to do so; and   (b) must, if asked to do so, in writing, by the patentee or any other person; 
  re-examine the complete specification relating to the patent. 
  (2) If the Commissioner re-examines an innovation patent under subsection (1):                (a) the Commissioner must re-examine the complete specification relating to the 
patent to determine if the patent is invalid and  should be revoked because a 
ground set out in subsection (3) is made out;  and 
              (b) the Commissioner must report on the grounds set out in subsection (3).   (3) The grounds for the revocation of the patent under subsection (2) are whether the 
invention, so far as claimed in any claim and when compared with the prior art base 
as it existed before the priority date of that claim: 
   (a) is not novel; and   (b) does not involve an innovative step.  
 (4) There are no other grounds for the re vocation of a patent under subsection (2). 
  (5) For the purposes of subsection (3), the pr ior art base is to be taken not to include 
information made publicly available only thro ugh the doing of an act (whether in or 
out of the patent area). 
 101H  Patentee statements 
 
 (1) If the Commissioner reports that, after re-examining a patent under section 101G, a 
ground for the revocation of the patent has been made out, the patentee may, within 
the prescribed period, file a statement, in  accordance with the regulations, disputing 
the whole or any part of the report. 
  (2) The patentee may file a statement whet her or not the patentee takes steps to amend 
the complete specification, or files a stat ement of amendments in accordance with a 
direction under section 106. IP/N/1/AUS/P/5 
Page 54  
 
   
101J  Revocation of innovation patent following re-examination 
 
 (1) If the Commissioner makes an adverse report on a re-examination under 
section 101G, the Commissioner may, by notice in writing, revoke the patent, either 
wholly or so far as it relates to a particular claim, as the case requires. 
  (2) If the Commissioner revokes the patent:                (a) the Commissioner must notify the patentee and the person who requested the 
examination (if that person is not the patentee)  of the revocation; and 
  (b) register the revocation of the patent.   (3) The Commissioner must not revoke a patent under this section unless:  
              (a) the Commissioner has given the patentee a reasona ble opportunity to be 
heard; and 
              (b) the Commissioner has considered the statement made by the patentee under 
section 101H (if any); and 
              (c) the Commissioner h as, if appropriate, given the patentee a reasonable 
opportunity to amend the relevant specification for the purpose of removing 
any ground for revocation and the patentee has failed to do so. 
  (4) The Commissioner must not revoke a pa tent under this section while relevant 
proceedings in relation to that patent are pending. 
 
 (5) The patentee may appeal to the Federal Court against a decision of the Commissioner 
under this section. 
 
101K  Relevant proceedings and re-examination 
 
 (1) If the validity of an innovation patent is disputed in any proceedings before a 
prescribed court under this Act, the court may direct the Commissioner to re-examine 
the complete specification relating to th e patent. If so directed, the Commissioner 
must re-examine the specification accordingly. 
  (2) If relevant proceedings in relation to an innovation patent are pending, the 
Commissioner must not re-examine the comp lete specification relating to the patent. 
  (3) If:                (a) the Commissioner has started to re-examine a complete specification relating 
to an innovation patent; and 
  (b) relevant proceedings in relation to the patent are started; 
  the Commissioner must not continue the re-examination.  
101L  Copies of report to be given to court 
   A copy of a report under paragraph 101G (2)(b), and of any statement filed under 
section 101H in relation to the report, must, if the re-examination was directed under subsection 101K(1), be given to the court that gave the direction.  IP/N/1/AUS/P/5 
 Page 55 
 
 
  Part 3—Opposition to innovation patents 
   101M  Opposition to innovation patent 
 
  The Minister, or any other person, may, in accordance with the regulations, oppose an 
innovation patent that has been certified  and seek the revocation of it, on one or more 
of the following grounds of invalidity, but on no other: 
   (a) that the patentee is either:    
   (i) not entitled to the patent; or 
                           (ii) entitled to the patent but only in conj unction with some other person; 
               (b) that the invention is not a patentable invention because it does not comply 
with paragraph 18(1A)(a) or (b); 
  (c) that the invention is not a patentab le invention under subsection 18(2) or (3); 
  (d) that the complete specification does not comply with subsection 40(2) or (3).  
101N  Hearing and decision by the Commissioner 
 
 (1) If an innovation patent has been opposed under section 101M, the Commissioner 
must decide the case in accordance with the regulations. 
  (2) The Commissioner must give the opponent and the patentee a reasonable opportunity 
to be heard before deciding the case. 
 
 (3) The Commissioner may, in deciding whether to revoke the patent, take into account 
any ground on which the grant of an innovation patent may be opposed, whether relied upon by the opponent or not. 
  (4) Subject to subsection (6), if the Commiss ioner is satisfied that a ground exists for the 
revocation of an innovation patent, the Commissioner may revoke the patent in 
writing either wholly or so far as it relates to a particular claim. 
  (5) If the Commissioner revokes the patent:                (a) the Commissioner must notify the patentee and the opponent of the 
revocation; and 
  (b) register the revocation of the patent.   (6) The Commissioner must not revoke a patent under this section unless the 
Commissioner has, where appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any ground for 
revocation and the patentee has failed to do so. 
  (7) The patentee, and any opponent, may app eal to the Federal Court against a decision 
of the Commissioner under this section. 
 101P  Relevant proceedings and opposition 
 
  If relevant proceedings in relation to an innovation patent are pending, the 
Commissioner must not make a decision under this Part in relation to the patent without the leave of the court. IP/N/1/AUS/P/5 
Page 56  
 
  Chapter 10—Amendments 
 Part 1—Amendments that are not allowable    102  What amendments are not allowable? 
 
  Amendment of complete specification not  allowable if amended specification would 
claim matter not in substance disclosed in the filed specification 
 
 (1) An amendment of a complete specification is not allowable if, as a result of the 
amendment, the specification would claim ma tter not in substance disclosed in the 
specification as filed. 
 
Certain amendments of complete specifica tion are not allowable after relevant time 
  (2) An amendment of a complete specification is not allowable after the relevant time if, 
as a result of the amendment: 
               (a) a claim of the specification would not in substance fall within the scope of 
the claims of the specification before amendment; or 
  (b) the specification would not comply with subsection 40(2) or (3). 
 
Meaning of relevant time
2 
 
 (2A) For the purposes of subsection (2), relevant time  means: 
 
              (a) in relation to an amendm ent proposed to a complete specification relating to a 
standard patent—after the specification has been accepted; or 
              (b) in relation to an amen dment proposed to a complete specification relating to 
an innovation patent—after the Comm issioner has made decisions under 
paragraphs 101E(a) and (aa) in respect of the patent. 
 
Amendment of innovation patent request not allowable in certain circumstances 
 
 (2B) An amendment to a patent request re lating to an innovation patent application  is not 
allowable if: 
 
  (a) the patent application was provided for in section 79C; and 
              (b) the effect of the proposed amendment would be to convert the application 
from an application for an innovation pate nt to an application for a standard 
patent. 
 
Amendments not allowable if information not provided 
 
 (2C) An amendment of a complete specificati on relating to a patent is not allowable if: 
               (a) the patentee or th e patentee’s predecessor in title failed to ensure the 
provision to the Commissioner of the information required by 
subsection 45(3) or section 101D in  relation to the patent; and 
                                                     
 
2 This heading has been placed in the correct position.  IP/N/1/AUS/P/5 
 Page 57 
 
 
                (b) the effect of the proposed amendment would be to remove a lawful ground of 
objection under paragraph 18(1)(b) or 18 (1A)(b) to the specification arising 
from the existence of some or all of the information not provided. 
  (3) This section does not apply to an amendm ent for the purpose of correcting a clerical 
error or an obvious mistake made in, or in relation to, a complete specification. 
 
103  Consent of mortgagee or exclusive licensee needed 
 
 (1) Where a person is registered as the mort gagee or exclusive licensee of a patent, an 
amendment of the complete specification is not allowable unless the mortgagee or 
licensee has consented, in wr iting, to the amendment. 
  (2) If a mortgagee or licensee refuses to  consent to a proposed amendment, the 
Commissioner may, on the application of the applicant or patentee, if satisfied that 
the consent has been unreasonably refused, dir ect that the consent of the mortgagee or 
licensee is not necessary. 
 
Part 2—Amendments of patent requests, specifications and other filed documents 
   104  Amendments by applicants and patentees 
 
 (1) An applicant for a patent or a patentee, ma y, subject to this Act, and subject to and in 
accordance with the regulations, ask th e Commissioner for leave to amend the 
relevant patent request or co mplete specification, or any other filed document, for any 
purpose including either or both of the following: 
 
              (a) removing a lawful gr ound of objection to the request or specification, 
whether that objection is raised in the course of an examination or re-examination or otherwise; 
  (b) correcting a clerical error or an obvious mistake.  
 (2) Where an applicant or patentee asks for l eave to amend a patent request or complete 
specification, or any other filed document,  the Commissioner must consider and deal 
with the request in accordance with the regulations. 
  (3) Subject to the regulations, the Commissioner may allow an amendment subject to 
conditions. 
  (4) The Minister or any other person ma y, subject to and in accordance with the 
regulations, oppose allowing an amendment. 
  (5) The Commissioner must not allow an amendment that is not allowable under 
section 102. 
  (6) On the allowance of an amendment, the am endment is to be taken to have been made. 
  (7) An appeal lies to the Federal Court, ag ainst a decision of the Commissioner allowing, 
or refusing to allow, a requested amendm ent, other than a prescribed decision. 
 IP/N/1/AUS/P/5 
Page 58  
 
  105  Amendments directed by court 
 
 (1) In any relevant proceedings in relation to a patent, the court may, on the application 
of the patentee, by order direct the amendment of the patent, the patent request or the complete specification in the manner specified in the order. 
 
 (2) An order may be made subject to such te rms (if any) as to costs, advertisements or 
otherwise, as the court thinks fit. 
  (3) The patentee must give notice of an application for an order to the Commissioner, 
who is entitled to appear and be heard, and must appear if the court directs. 
  (4) A court is not to direct an amendm ent that is not allowable under section 102. 
  (5) The patentee must file a copy of an order within the prescribed period. 
 
 (6) On the filing of a copy of an order, the patent, patent request or complete 
specification is to be taken to have been  amended in the manner specified in the 
order. 
 
106  Amendments directed by Commissioner: patents 
 
 (1) Where:    (a) a patent has been granted; and               (b) the Commissioner is satisfi ed that the patent is invalid on grounds that could 
be removed by appropriate amendments of the specification following: 
                            (i) in the case of a standard patent—re-examination of the patent; or                            (ii) in the case of an innovation patent —examination of, re-examination 
of, or opposition to, the patent; 
  the Commissioner may, in accordance with the regulations, direct the patentee to file, 
within such time as the Commissioner allows , a statement of proposed amendments 
of the specification for the purpose of removing those grounds. 
  (2) The Commissioner must not give a direction without first giving the patentee a 
reasonable opportunity to be heard. 
 
 (3) A patentee may, in accordance with the regulations, amend a statement of 
amendments. 
  (4) If the Commissioner is satisfied that th e amendments set out in a statement (or an 
amended statement) are allowable and woul d, if made, remove the grounds on which 
the patent is invalid, the Commissioner must allow the amendments. 
  (5) On the allowance of an amendment, the am endment is to be taken to have been made. 
 
107   Amendments directed by Commission er: applications for standard patents 
 
 (1) Where:    (a) a complete application for a standard patent has been made; and  IP/N/1/AUS/P/5 
 Page 59 
 
 
                (b) the Commissioner is satis fied that there are lawful grounds of objection to the 
patent request or complete specification, but that those grounds of objection could be removed by appropr iate amendments of the request or specification; 
and 
              (c) the applicant has not ta ken action to amend the request or specification so as 
to remove those grounds of objection; 
  the Commissioner may, in accordance with the regulations, direct the applicant to 
file, within such time as the Commissioner allows, a statement of proposed amendments of the request or specification for the purpose of removing those grounds of objection. 
 
 (2) The Commissioner must not give a direction without first giving the applicant a 
reasonable opportunity to be heard. 
  (3) An applicant may, in accordance with  the regulations, amend a statement of 
amendments. 
 (4) If the Commissioner is satisfied that th e amendments set out in a statement (or an 
amended statement) are allowable and would,  if made, remove all lawful grounds of 
objection to the patent request and complete specification, the Commissioner must allow the amendments. 
 (5) On the allowance of an amendment, the am endment is to be taken to have been made. 
 
109  Appeal 
 
  An appeal lies to the Federal Court against a direction of the Commissioner under 
section 106 or 107. 
 
Part 3—Miscellaneous 
   110  Advertisement of amendment of complete specification 
 
  An amendment of a complete specification th at is open to public inspection must be 
notified in the Official Journal . 
 
112  Pending proceedings 
 
  A complete specification relating to a patent must not be amended, except under 
section 105, while relevant proceedings in  relation to the patent are pending. 
 
113  Persons claiming under assignment or agreement 
 
 (1) Where, before a patent is granted, a pers on would, if the patent were then granted, be 
entitled under an assignment or agreement, or by operation of law, to: 
 
  (a) the patent or an interest in it; or   (b) an undivided share in the patent or in such an interest;   the Commissioner may, on a request ma de by the person in accordance with the 
regulations, direct that the application proceed in the name of the person, or in the 
name of the person and the applicant or the other joint applicant or applicants, as the 
case requires. 
  (2) Where the Commissioner gives a direction:  IP/N/1/AUS/P/5 
Page 60  
 
                (a) the person is to be taken to be the applicant, or a joint applicant, as the case 
requires; and 
              (b) the patent request is to  be taken to have been amended so as to request the 
grant of a patent to the person, either alone or as a joint patentee, as the case requires. 
 
114  Priority date of certain amended claims 
 
 (1) Where a claim of a complete specification claims matter that was in substance 
disclosed as a result of amending the specifica tion, the priority date of the claim must 
be determined under the regulations. 
 
114A  Objection cannot be taken to certain amended claims 
 
 (1) This section applies if: 
 
              (a) a complete specification (the original specification ) has been amended; and 
              (b) after the amendment, the amended specification claims matter that was in 
substance disclosed as a result of the amendment;  and 
              (c) after the filing date of the original specification there is a publication or use 
of the invention as described in  the original specification. 
 
 (2) If this section applies, objection cannot be  taken to the amended specification, and a 
patent is not invalid, on the ground that the invention, so far as claimed in the amended specification and havi ng regard to the publication or the use of the invention 
described in the original sp ecification, does not involve: 
 
  (a) in the case of a standard patent—an inventive step; or   (b) in the case of an innovation patent—an innovative step.  
115  Restriction on recovery of damages etc. 
  (1) Where a complete specification is amen ded after becoming open to public inspection, 
damages shall not be awarded, and an orde r shall not be made for an account of 
profits, in respect of any infringement of the patent before the date of the decision or 
order allowing or directing the amendment: 
 
              (a) unless the court is satisfied that the specification without the amendment was 
framed in good faith and with r easonable skill and knowledge; or 
              (b) if the claim of the sp ecification that was infringed is a claim mentioned under 
subsection 114(1). 
  (2) Subsection (1) has effect subject to subsections 57(3) and (4). 
 
116  Interpretation of amended specifications 
 
  The Commissioner or a court may, in interpreting a complete specification as 
amended, refer to the specification without amendment.  IP/N/1/AUS/P/5 
 Page 61 
 
 
  Chapter 11—Infringement 
 Part 1—Infringement and infringement proceedings    117  Infringement by supply of products 
 
 (1) If the use of a product by a person would infringe a patent, the supply of that product 
by one person to another is an infringeme nt of the patent by the supplier unless the 
supplier is the patentee or licensee of the patent. 
 
 (2) A reference in subsection (1) to the use of a product by a person is a reference to: 
               (a) if the product is capable of only one reasonable use, having regard to its 
nature or design—that use; or 
              (b) if the product is not a staple commercial product—any use of the product, if 
the supplier had reason to believe that the person would put it to that use; or 
              (c) in any case—the use of the product in accordance w ith any instructions for 
the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with 
the authority of the supplier. 
 118  Infringement exemptions: use in or on foreign vessels, aircraft or vehicles 
 
  The rights of a patentee are not infringed:                 (a) by using the patented invention on board a foreign vessel, in the body of the 
vessel, or in the machinery, tackle, apparatus or other accessories of the 
vessel, if the vessel comes into the patent area only temporarily or accidentally and the invention is used exclusively for the needs of the vessel; 
or 
               (b) by using the patented invention in the construction or working of a foreign 
aircraft or foreign land vehicle, or in the accessories of the aircraft or vehicle, 
if the aircraft or vehicle comes into the patent area only temporarily or 
accidentally. 
 
119  Infringement exemptions: prior use 
  (1) Where, immediately before the pr iority date of a claim, a person: 
   (a) was making a product or using a process claimed in that claim; or               (b) had taken definite steps (whether by way of contract or otherwise) to make 
that product or use that process; 
  the person may, despite the grant of a patent for the product or process so claimed, 
make the product, or use the process, (or continue to do so) in the patent area, without 
infringing the patent. 
  (2) Subject to subsection (3), subsection (1) does not apply if the person derived the 
subject-matter of the invention concerned from the patentee or the patentee’s 
predecessor in title in the invention. 
  (3) Subsection (2) does not prevent subsection (1) from applying if:  IP/N/1/AUS/P/5 
Page 62  
 
                (a) the person derived the subject-matter of the invention concerned from 
information that was made publicly ava ilable by or with the consent of the 
patentee, or the predecessor in title of the patentee; and 
              (b) the making of that information publicly available was through any 
publication or use of the invention in the prescribed circumstances mentioned 
in paragraph 24(1)(a). 
  (4) Subsection (1) does not apply if the pers on, before the relevant priority date, had 
stopped making the product or using the process (other than temporarily), or had abandoned (other than temporarily) the steps mentioned in paragraph (1)(b). 
 
120  Infringement proceedings 
 
 (1) Subject to subsection (1A), infringement proceedings may be started in a prescribed 
court, or in another court having jurisdicti on to hear and determine the matter, by the 
patentee or an exclusive licensee. 
  (1A) Infringement proceedings in respect of an innovation patent ca nnot be started unless 
the patent has been certified. 
  (2) If an exclusive licensee starts infringement  proceedings, the patentee must be joined 
as a defendant unless joined as a plaintiff. 
  (3) A patentee joined as a defendant is not liable for costs unless the patentee enters an 
appearance and takes part in the proceedings. 
 
 (4) Infringement proceedings must be started within: 
   (a) 3 years from the day on which th e relevant patent is granted; or 
  (b) 6 years from the day on which the infringing act was done;   whichever period ends later.  121  Counter-claim for revocation of patent 
 
 (1) A defendant in infringement proceedings may apply by way of counter-claim in the 
proceedings for the revocation of the patent. 
 
 (2) The provisions of this Act relating to pro ceedings for the revocati on of a patent apply, 
with the necessary changes, to a counter-claim. 
 
121A  Burden of proof—infringement of patent for a process 
 
 (1) This section applies only to a pate nt for a process for obtaining a product. 
 
 (2) If, in proceedings for infringement of a pa tent started by the patentee or the exclusive 
licensee: 
               (a) the defendant alleges that he or she has used a process different from the 
patented process to obtain a product ( defendant’s product ) identical to the 
product obtained by the patented process; and 
  (b) the court is satisfied that:   IP/N/1/AUS/P/5 
 Page 63 
 
 
                             (i) it is very likely that the defendant’s product was made by the 
patented process; and 
                           (ii) the patentee or exclusive licensee has taken reasonable steps to find 
out the process actually used by the defendant but has not been able to do so; 
  then, in the absence of proof to the contrary the onus for which is on the 
defendant, th defendant’s pr oduct is to be taken to have been obtained by the 
patented process. 
  (3) In deciding how the defendant is  to adduce evidence for the purposes of 
subsection (2), the court is to take into account the defendant’s legitimate interests in 
having business and manufacturing secrets protected. 
 
122  Relief for infringement of patent 
  (1) The relief which a court may grant for infringement of a patent includes an injunction 
(subject to such terms, if any, as the court thi nks fit) and, at the option of the plaintiff, 
either damages or an account of profits. 
  (2) On the application of either party, th e court may make such order for the inspection 
of any thing in or on any vehicle, vessel, aircraft or premises, and may impose such 
terms and give such directions about th e inspection, as the court thinks fit. 
 
123  Innocent infringement 
 
 (1) A court may refuse to award damages, or to make an order for an account of profits, 
in respect of an infringement of a patent if  the defendant satisfies the court that, at the 
date of the infringement, the defendant was not aware, and had no reason to believe, 
that a patent for the invention existed. 
  (2) If patented products, marked so as to indicat e that they are patented in Australia, were 
sold or used in the patent area to a s ubstantial extent before the date of the 
infringement, the defendant is to  be taken to have been aware of the existence of the 
patent unless the contrary is established. 
  (3) Nothing in this section affects a court’s po wer to grant relief by way of an injunction. 
 Part 2—Non-infringement declarations    124  Interpretation 
 
  In this Part: 
 
  patentee  includes an exclusive licensee. 
 
125  Application for non-infringement declaration 
 
 (1) A person who wishes to exploit an invention may apply to a prescribed court for a 
declaration that the exploitation of the invention would not infringe a claim of a 
particular complete specification. 
  (2) An application may be made:  IP/N/1/AUS/P/5 
Page 64  
 
                (a) at any time after the complete specification has become open to public 
inspection; and 
              (b) whether or not the nominated person or patentee has made any assertion to 
the effect that the exploitation of th e invention would infringe the claim. 
 
 (3) The nominated person or patentee must be joined as a respondent in the proceedings. 
 
126  Proceedings for non-infringement declarations 
 
 (1) A prescribed court must not make a non-infringement declaration unless a patent has 
been granted in respect of the relevant invention and: 
   (a) the applicant for the declaration:                             (i) has asked the nominated person or patentee in writing for a written 
admission that the proposed exploitation would not infringe a claim 
of the complete specification; and 
                           (ii) has given the nominated person or patentee full written particulars of 
the proposed exploitation; and 
                           (iii) has undertaken to pay a reasonable su m for the nominated person’s 
or patentee’s expenses in obtaining advice about whether the 
proposed exploitation would infringe the claim; and 
               (b) the nominated person or patentee has refused or failed to make the admission; 
and  
  (c) if the patent is an innovation patent—the patent has been certified. 
 
 (2) The validity of a claim cannot be ques tioned in proceedings for a non-infringement 
declaration. 
  (3) The costs of all parties in proceedings  for a non-infringement declaration must be 
paid by the applicant for the declar ation unless the court otherwise orders. 
 
127  Effect of non-infringement declarations 
 
  If:  
              (a) a nominated person or  patentee has given a person a written admission that 
the exploitation of an invention would not infringe a claim, or a prescribed 
court has made a non-infringement declaration in respect of an invention; and 
              (b) the patentee later gets an injunction restraining th e person from exploiting the 
invention as specified in the admission, or the declaration is revoked; 
  the person is not liable: 
              (c) to account to the patent ee for any profits, made by the person before the date 
on which the injunction was granted or the declaration was revoked, from the exploitation of the invention as specified in the admission or declaration; or 
              (d) to pay damages for an y loss suffered by the patentee before that date as a 
result of that exploitation.  IP/N/1/AUS/P/5 
 Page 65 
 
 
  Part 3—Unjustified threats of infringement proceedings 
   128  Application for relief from unjustified threats 
 
 (1) Where a person, by means of circulars, advertisements or otherwise, threatens a 
person with infringement proceedings, or  other similar proceedings, a person 
aggrieved may apply to a prescribed court, or to another court having jurisdiction to 
hear and determine the application, for: 
   (a) a declaration that the threats are unjustifiable; and 
  (b) an injunction against the continuance of the threats; and 
              (c) the recovery of any damages sustained by the applicant as a result of the 
threats. 
  (2) Subsection (1) applies whether or not th e person who made the threats is entitled to, 
or interested in, the patent or a patent application. 
 
129  Court’s power to grant relief if threats rela ted to a standard patent or standard patent 
application 
 
  If an application under section 128 for relief relates to threats made in respect of a 
standard patent or an application for a standard patent, the court may grant the 
applicant the relief applied for unless the r espondent satisfies the court that the acts 
about which the threats were made infringed, or would infringe: 
   (a) a claim that is not shown by the applicant to be invalid; or 
              (b) rights under section 57 in respect of a claim that is not shown by the applicant 
to be a claim that would be invalid if the patent had been granted. 
 
129A  Threats related to an innovation patent  application or innovation patent and court’s 
power to grant relief 
 
Certain threats of infringement proceedings are always unjustifiable 
 
 (1) If:    (a) a person: 
 
                           (i) has applied for an innovation patent, but the application has not been 
determined; or 
   (ii) has an innovation patent that has not been certified; and                (b) the person, by means of circulars, advertisements or otherwise, threatens a 
person with infringement proceedings or other similar proceedings in respect 
of the patent applied for, or the patent, as the case may be; 
  then, for the purposes of an application for relief under section 128 by the person 
threatened, the threats are unjustifiable. IP/N/1/AUS/P/5 
Page 66  
 
   
Courts power to grant relief in respect of threats made by the applicant for an 
innovation patent or the patentee of an uncertified innovation patent 
 
 (2) If an application under section 128 for relief relates to threats made in respect of an 
innovation patent that has not been certified or an application for an innovation 
patent, the court may grant the applicant the relief applied for. 
 
Courts power to grant relief in respect of threats made by the patentee of a certified 
innovation patent 
 
 (3) If an application under section 128 for relief relates to threats made in respect of a 
certified innovation patent, the court may gr ant the applicant the relief applied for 
unless the respondent satisfies the court that  the acts about which the threats were 
made infringed, or would infringe, a claim th at is not shown by the applicant to be 
invalid. 
 
130  Counter-claim for infringement 
 
 (1) The respondent in proceedings under section 128 may apply, by way of 
counter-claim, for relief to which the respondent would be entitled in separate 
proceedings for an infringement by the app licant of the patent to which the threats 
relate. 
  (2) Where the respondent applies by way of  counter-claim, the applicant may, without 
making a separate application under Chapte r 12, apply in the proceedings for the 
revocation of the patent. 
  (3) The provisions of this Act relating to  infringement proceedings apply, with the 
necessary changes, to a counter-claim. 
 
Note: Infringement proceedings cannot be commenced in respect of an innovation patent unless the 
patent has first been certifie d (see subsection 120(1A)). 
 
 (4) The provisions of this Act relating to proceedings under section 138 for the 
revocation of a patent apply, with the necessary changes, to an application under 
subsection (2). 
 
Note: Revocation proceedings under section 138 canno t be commenced in respect of an innovation 
patent unless the patent  has first been certified (see subsection 138(1A)) . 
 
131  Notification of patent not a threat 
 
  The mere notification of the existence of a patent, or an application for a patent, does 
not constitute a threat of proceedings for the purposes of section 128. 
 132  Liability of legal practitioner or patent attorney 
 
  A legal practitioner or a registered patent attorney is not liable to proceedings under 
section 128 in respect of an act done in his or her professional capacity on behalf of a client.  IP/N/1/AUS/P/5 
 Page 67 
 
 
  Chapter 12—Compulsory licences and revocation of patents 
   133  Compulsory licences 
 
 (1) Subject to subsection (1A), a person may a pply to a prescribed court, after the end of 
the prescribed period, for an order requiri ng the patentee to grant the applicant a 
licence to work the patented invention. 
  (1A) A person cannot apply for an order in respect of an innovation patent unless the 
patent has been certified. 
 
 (2) After hearing the application, the court ma y, subject to this section, make the order if 
satisfied that: 
               (a) the reasonable requireme nts of the public with respect to the patented 
invention have not been satisfied; and 
  (b) the patentee has given no satisfactory reason for failing to exploit the patent.   (3) An order must direct that the licence:                (a) is not to give the licensee, or a person authorised by the licensee, the 
exclusive right to work the patented invention; and 
              (b) is to be assignable only in connection with an enterprise or goodwill in 
connection with which the licence is used; 
  and may direct that the licence is to be  granted on any other terms specified in the 
order. 
 
 (3A) Before making the order, the court must be satisfied that the applicant has tried for a 
reasonable period, but without success, to obta in from the patentee in respect of the 
patented invention an authorisation to work the invention on reasonable terms and 
conditions. 
 
 (3B) If the patented invention cannot be wo rked by the applicant without his or her 
infringing another patent: 
               (a) the court is to make th e order only if the court is further satisfied that the 
patented invention involves an important  technical advance of considerable 
economic significance on the invention ( other invention ) to which the other 
patent relates; and 
 (b) the court must further order that the patentee of the other invention:  
                           (i) must grant to the applicant a licence to work the other invention 
insofar as is necessary to work the patented invention; and 
                           (ii) is to be  granted, if he or she so requires, a cross-licence on reasonable 
terms to work the patented invention; and 
               (c) the court must direct that the licence granted by the patentee of the other 
invention may be assigned by the applicant: 
 
                           (i) only if he or she assigns the licence granted in respect of the patented 
invention; and 
   (ii) only to the assignee of that licence.  IP/N/1/AUS/P/5 
Page 68  
 
   (4) An order operates, without prejudice to any other method of enforcement, as if it 
were embodied in a deed granting a licence a nd executed by the patentee and all other 
necessary parties. 
  (5) The patentee is to be paid in respect of a licence granted to the applicant under an 
order: 
   (a) such amount as is agreed betw een the patentee and the applicant; or 
              (b) if paragraph (a) does not apply—such amount as is determined by a 
prescribed court to be just and reasonable having regard to the economic 
value of the licence. 
  (6) The patentee or a prescribed court may revoke the licence if:                (a) the patentee and the licensee are agreed, or the court on application made by 
either party finds, that the circumstance s that justified the grant of the licence 
have ceased to exist and are unlikely to recur; and 
              (b) the legitimate interests of  the licensee are not likely to be adversely affected 
by the revocation. 
 
134  Revocation of patent after grant of compulsory licence 
 
 (1) Where a compulsory licence relating to a pa tent is granted, an interested person may 
apply to a prescribed court, after the end of the prescribed period, for an order revoking the patent. 
 
 (2) After hearing the application, the co urt may make the order if satisfied that: 
               (a) the reasonable requireme nts of the public with respect to the patented 
invention have not been satisfied; and 
              (b) the patentee has given no satisfactory reason for failing to exploit the patent.  135  Reasonable requirements of the public 
 
 (1) For the purposes of sections 133 and 134,  the reasonable requirements of the public 
with respect to a patented invention are to  be taken not to have been satisfied if: 
 
              (a) an existing trade or indu stry in Australia, or the establishment of a new trade 
or industry in Australia, is unfairly prejudiced, or the demand in Australia for the patented product, or for a product resulting from the patented process, is 
not reasonably met, because of the patentee’s failure: 
                            (i) to manufacture the patented product to an adequate extent, and 
supply it on reasonable terms; or 
                           (ii) to manuf acture, to an adequate extent, a part of the patented product 
that is necessary for the efficient working of the product, and supply 
the part on reasonable terms; or 
   (iii) to carry on the patented process to a reasonable extent; or 
   (iv) to grant licences on reasonable terms; or 
               (b) a trade or industry in Australia is unfairly prejudiced by the conditions 
attached by the patentee (whether before  or after the commencing day) to the  IP/N/1/AUS/P/5 
 Page 69 
 
 
  purchase, hire or use of the patented product, the use or working of the 
patented process; or 
              (c) if the patented invent ion is not being worked in Australia on a commercial 
scale, but is capable of being worked in Australia. 
 
 (2) If, where paragraph (1)(c) applies, the cour t is satisfied that the time that has elapsed 
since the patent was sealed has, because of the nature of the invention or some other 
cause, been insufficient to enable the invention to be worked in Australia on a 
commercial scale, the court may adjourn the hearing of the application for the period that the court thinks sufficient for that purpose. 
 
136  Orders to be consistent with international agreements 
 
  An order must not be made under section 133 or 134 that is inconsistent with a treaty 
between the Commonwealth and a foreign country. 
 
137  Revocation on surrender of patent 
 
 (1) A patentee may, at any time, by written notice to the Commissioner, offer to 
surrender the patent. 
 
 (2) The Commissioner must give notice of an offer in accordance with the regulations. 
  (3) After hearing all interested persons who notify the Commissione r in accordance with 
the regulations of their wish to be hear d, the Commissioner may accept the offer and 
revoke the patent. 
 
 (4) Where relevant proceedings in relation to a patent are pending, the Commissioner 
must not accept an offer to surrender the pate nt without either the leave of the court 
or the consent of the parties to the proceedings. 
  (5) Where a compulsory licence is in force in  relation to a patent, the Commissioner must 
not accept an offer to surrender the patent. 
 
138  Revocation of patents in other circumstances 
 
 (1) Subject to subsection (1A), the Minister or any other person may apply to a 
prescribed court for an order revoking a patent. 
  (1A) A person cannot apply for an order in respect of an innovation patent unless the 
patent has been certified. 
  (2) At the hearing of the application, the r espondent is entitled to be gin and give evidence 
in support of the patent and, if the applicant gives evidence disputing the validity of 
the patent, the respondent is entitled to reply. 
  (3) After hearing the application, the court may, by order, revoke the patent, either 
wholly or so far as it relates to a claim, on one or more of the following grounds, but 
on no other ground: 
   (a) that the patentee is not entitled to the patent;   (b) that the invention is not a patentable invention;   (c) that the patentee has contravened a condition in the patent; IP/N/1/AUS/P/5 
Page 70  
 
                (d) that the patent was obtained by fraud, false suggestion or misrepresentation; 
              (e) that an amendment of the patent request or the complete specification was 
made or obtained by fraud, false suggestion or misrepresentation; 
 (f) that the specification does not comp ly with subsection 40(2) or (3). 
 139  Parties to proceedings 
 
 (1) The patentee, and any person claiming an interest in the patent as exclusive licensee 
or otherwise, are parties to any pro ceedings under section 133, 134 or 138. 
 
 (2) In any proceedings under section 133, 134 or 138: 
               (a) the applicant must serve  a copy of the application on the Commissioner; and 
  (b) the Commissioner may appear and be heard in the proceedings.  140  Commissioner to be given copies of orders 
 
  An office copy of an order made under this Chapter must be served on the 
Commissioner by the Registrar or other appropriate officer of the court that made the order. 
 Chapter 13—Withdrawal and lapsing of applications and ceasing of patents    141  Withdrawal of applications  
 (1) A patent application may be withdraw n at any time except during a period prescribed 
for the purposes of this section. 
  (2) A patent application is to be treated as having been withdraw n if, and only if, the 
applicant lodges a written notice of w ithdrawal signed by the applicant. 
 
142  Lapsing of applications 
 
 (1) A provisional application for a patent lap ses at the end of the period prescribed for the 
purpose of section 38 or, if that period is extended, at the end of the period as so 
extended. 
 
 (2) A complete application for a standard patent lapses if: 
               (a) the applicant does not ask for an examination of the patent request and 
complete specification within the rele vant period prescribed for the purposes 
of subsection 44(1), (2) or (3), as the case requires; or 
              (c) the examination of the patent request and complete specification has been 
deferred under section 46 and the applicant does not ask for an examination 
within the period prescribed for the purposes of this paragraph; or 
              (d) the applicant does not pay a continuation fee for the application within the 
period prescribed for the purposes of this paragraph; or 
              (e) the patent request and complete specification are not accepted within the 
period prescribed for the purposes of this paragraph. 
  (3) A complete application for a standard pa tent lapses if the applicant does not comply 
with a direction of the Commissioner unde r section 107 within the time allowed by 
the Commissioner under that section.  IP/N/1/AUS/P/5 
 Page 71 
 
 
   
143  Ceasing of patents 
 
  A standard patent ceases if the patentee:  
  (a) does not pay a renewal fee for the pa tent within the prescribed period; or 
  (b) does not file the prescribed documents  (if any) within the prescribed period. 
 
143A  Ceasing of innovation patents 
   An innovation patent ceases if: 
               (a) the fee for filing the request and accompanying specification relating to an 
application for an innovation patent is not paid in accordance with the 
regulations; or 
              (b) after an examin ation of the patent has been requested under 
paragraph 101A(b), the patentee does not pay the prescribed fee for the examination within the prescribed period; or 
              (c) the Commissioner do es not make decisions unde r paragraphs 101E(a) and 
(aa) within the period prescribed for the purposes of this paragraph; or 
              (d) the patentee does not pa y a renewal fee for the patent within the prescribed 
period; or 
              (e) the patentee does not comply with a direction of the Commissioner under 
section 106 within the time allowed by the Commissioner under that section. 
 
143B  Payment of fees 
 
  To avoid doubt, a reference in this Chap ter to the payment of a continuation fee or 
renewal fee by the applicant or patentee is taken to include a reference to the payment 
of that fee by a person other than the applicant or patentee. 
 
Chapter 14—Contracts 
     
144  Void conditions 
 
 (1) A condition in a contract relating to the sale or lease of, or a licence to exploit, a 
patented invention is void if the effect of the condition would be: 
 
              (a) to prohibit or restrict the buyer, lessee or licensee from using a product or 
process (whether patented or not) supplie d or owned by a person other than 
the seller, lessor or licensor, or a nomin ee of the seller, lessor or licensor; or 
              (b) to require the buyer, lessee or licensee to acquire a product not protected by 
the patent from the seller, lessor or licen sor, or a nominee of the seller, lessor 
or licensor. 
  (1A) A condition in a contract relating to the sale or lease of, or a licence to exploit, an 
invention the subject of an innovation patent  is void if the effect of the condition 
would be to: 
 
              (a) prohibit the buyer, l essee or licensee from applying for examination of the 
patent; or 
              (b) impose restrictions on the circumstances in which the buyer, lessee or 
licensee may apply for examination of the patent. IP/N/1/AUS/P/5 
Page 72  
 
   
  (2) Subsection (1) does not apply if:                (a) the seller, lessor or licensor proves that, at the time the contract was made, 
the buyer, lessee or licensee had the option of buying the product, or 
obtaining a lease or licence, on reasonable terms without the condition; and 
              (b) the contract entitles th e buyer, lessee or licensee to be relieved of the liability 
to comply with the condition on giving the other party 3 months’ notice in writing and paying, in compensation for the relief: 
 
                           (i) in the ca se of a sale—such sum as is fixed by an arbitrator appointed 
by the Minister; or 
                           (ii) in th e case of a lease or licence—such rent or royalty as is so fixed 
for the rest of the term of the contract. 
 
 (3) A person is not stopped from applying for or obtaining relief in any proceedings 
under this Act merely because of an ad mission made by the person about the 
reasonableness of terms offered to the person as mentioned in paragraph (2)(a). 
  (4) It is a defence to proceedings for infring ement of a patent that the patented invention 
is, or was when the proceedings were started, the subject of a contract containing a 
provision, inserted by the patentee, that is void under this section. 
  (5) If the patentee offers the other parties to  a contract mentioned in subsection (4) a new 
contract that does not contain the void condition but that otherwise gives the parties 
the same rights as the existing contract, then , whether or not the other parties accept 
the new contract in place of the existing contract, subsection (4) ceases to apply, but the patentee is not entitled to damages or an account of profit for an infringement of the patent committed before the offer of the new contract. 
 
145  Termination of contract after patent ceases to be in force 
 
 (1) A contract relating to the lease of, or a licence to exploit, a patented invention may be 
terminated by either party, on giving 3 mont hs’ notice in writing to the other party, at 
any time after the patent, or all the patents,  by which the invention was protected at 
the time the contract was made, have ceased to be in force. 
 
 (2) Subsection (1) applies despite anything to th e contrary in that contract or in any other 
contract. 
 
146  Effect of Chapter 
   Nothing in this Chapter: 
               (a) affects a condition in a contract that prohibits a person from selling products 
other than those of a particular person; or 
  (b) validates a contract that would otherwise be invalid; or 
              (c) affects a right to terminate a contract, or to terminate a condition of a 
contract, being a condition exercisable independently of this section; or 
              (d) affects a condition in a contract for the lease of, or a licence to exploit, a 
patented product, that reserves to the lessor or licensor the right to supply new parts of the patented product that are required to put or keep it in repair.  IP/N/1/AUS/P/5 
 Page 73 
 
 
  Chapter 15—Special provisions relating to associated technology 
   147  Certificate by Director as to associated technology 
 
 (1) Where the Commissioner considers that a sp ecification in respect of an application 
may contain information of a kind referred to in the definition of  associated 
technology  in subsection 4(1) of the Safeguards Act, the Commissioner must give the 
Director written notice to that effect togeth er with a copy of the patent request and 
specification. 
 
 (2) On receiving a notice, the Director may, if satisfied that the specification contains 
information of that kind, issue a certificate to that effect. 
  (3) Where the Director is satisfied that:  
              (a) the possession by the a pplicant or the nominated person of the associated 
technology containing the information was not in accordance with a permit; or 
              (b) the communication of the information involved in making the application 
was not in accordance with an authority; 
  the Director may include in the certificate: 
              (c) if the application is not  a relevant international a pplication—a direction that 
the application should lapse; or 
              (d) if the application is a relevant international application—a direction that the 
application should not be treated as an international application. 
 
 (4) Where the Director issues a certificate, th e Director must give a copy of it to the 
Commissioner who must give a copy to the applicant. 
 
148  Lapsing etc. of applications 
 
 (1) Where: 
 
              (a) the Commissioner receives a copy of a certificate under subsection 147(2) in 
relation to an application; and 
  (b) the certificate includes a direction under subsection 147(3);   then, upon receipt by the Commissioner of that copy: 
              (c) if the application is not  a relevant international application—the application 
lapses; or 
              (d) if the application is a relevant international appli cation—the application must 
cease to be treated as an international application. 
   (2) Where an application has lapsed under this section, the Commissioner must publish a 
notice to that effect in the Official Journal . 
 
149  Revocation of direction 
 
  Where under section 148 an application has la psed, or has ceased to be treated as an 
international application, because of a direc tion by the Director under section 147, the 
applicant may apply in writing to the Director for the revocation of the direction and the Director may revoke the direction. 
 IP/N/1/AUS/P/5 
Page 74  
 
  150  Restoration of lapsed application 
 
 (1) Where an application has lapsed under sec tion 148, the applicant may, in writing, ask 
the Commissioner to restore it. 
 
 (2) On receiving a request, the Commissioner must restore the application if satisfied 
that: 
 
 (a) the relevant direction of the Director is no longer in force; and  (b) there is no other reason not to do so. 
 
 (3) Where the Commissioner restores an application, the Commissioner must publish a 
notice to that effect in the  Official Journal . 
  (4) Where an application is restored under th is section, such provisions as are prescribed 
have effect for the protection or compen sation of persons who exploited (or took 
definite steps by contract or otherwise to e xploit) the relevant invention after the lapse 
of the application and before the day on which its restoration was notified in the 
Official Journal . 
  (5) Proceedings cannot be started under section 57 in respect of anything done during the 
period from and including the day on which the application lapsed to and including 
the day on which its restoration was notified in the Official Journal . 
 
151  Reinstatement of application as an international application 
  (1) Where a relevant international applicati on has ceased to be treated as an international 
application under section 148, the applican t may ask the Commissioner in writing to 
reinstate it. 
  (2) On receiving a request, the Commissioner must reinstate the application as an 
international application if satisfied that: 
 
  (a) the relevant direction of the Director is no longer in force; and   (b) there is no other reason not to do so.   (3) Where the Commissioner reinstates an appli cation as an international application, the 
application must be treated as an international application. 
  (4) Where:                 (a) the relevant internationa l application specifies Australia as a designated State; 
and 
               (b) the Commissioner cannot reinstate the application merely because, under the 
PCT, it is to be considered as having been withdrawn; and 
               (c) the applicant files, within the prescribed period, a written request signed by 
the applicant that the application be treated as an application under this Act for a standard patent; and 
               (d) the applicant files an y prescribed documents and pays the prescribed fee; 
then, except as otherwise prescribed: 
   (e) the application must be treated as requested; and                (f) the description, claims and drawings in the application must be treated as a 
complete specification filed in respect of the application; and  IP/N/1/AUS/P/5 
 Page 75 
 
 
                 (g) the application and complete specification must be treated as having been 
filed on the date on which the relevant international application was filed. 
 
152  Notice of prohibitions or restrictions on publication 
  (1) Where the Director issues a certificate unde r section 147 in relation to an application, 
the Director may give written notice to the Commissioner of any prohibitions or 
restrictions on the publication or comm unication of the information in the 
specification, or in a relevant abstract, that the Director considers appropriate. 
 
 (2) On receiving a notice, the Commissioner must take such steps as are necessary or 
expedient to give effect to it. 
  (3) Without limiting the generality of subsection (2), the Commissioner may, by written 
order, prohibit or restrict the publication or communication of information about the 
subject-matter of the application, whether generally or in relation to a particular 
person or class of persons. 
  (4) A person must not, except in accord ance with the written consent of the 
Commissioner, publish or communicate inform ation in contravention of an order. 
 
  Penalty: Imprisonment for 2 years. 
 
153  Effect of order 
 
 (1) Where an order is in force in relation to an application for a standard patent, the 
application may proceed up to the acceptan ce of the patent request and complete 
specification, but the complete specifi cation must not be made open to public 
inspection, the acceptance must not be notified in the Official Journal and a patent 
must not be granted on the application. 
  (2) While an order is in force in relation to an application for an innovation patent, the 
application may proceed up to the acceptan ce of the patent request and complete 
specification but a patent must not be granted on the application. 
  (3) Where an order in relation to an appli cation for a standard patent has been revoked 
after the acceptance of the patent request and complete specification, the acceptance 
must be notified in the Official Journal within the prescribed period. 
  (4) Nothing in this Act prevents disclosing in formation about an invention to the Director 
for the purpose of obtaining advice on whether an order should be made, amended or revoked. 
 Chapter 16—Jurisdiction and powers of courts    154  Jurisdiction of Federal Court 
 
 (1) The Federal Court has jurisdiction with respect to matters arising under this Act. 
 
 (2) The jurisdiction of the Federal Court to hear and determine appeals against decisions 
or directions of the Commissioner is exclus ive of the jurisdiction of any other court 
except the jurisdiction of the High Court under section 75 of the Constitution. 
 IP/N/1/AUS/P/5 
Page 76  
 
   (3) A prosecution for an offence against this Ac t must not be started in the Federal Court. 
 
155  Jurisdiction of other prescribed courts 
 
 (1) Each prescribed court (other than the Fe deral Court) has jurisdiction with respect to 
matters arising under this Act in respect of which proceedings may, under this Act, be 
started in a prescribed court. 
  (2) The jurisdiction conferred by subsection (1) on the Supreme Court of a Territory is 
conferred: 
 
              (a) in the case of proceedi ngs for the infringement of a patent or proceedings 
under subsection 125(1) or section 128, or a matter arising under this Act that 
may be heard and determined in the course of such proceedings—to the extent that the Constitution permits; and 
              (b) in any other case—only in relation to proceedings instituted by a natural 
person who is resident in the Territory, or a corporation that has its principal 
place of business in the Territory, at th e time the proceedings are started. 
 
156  Exercise of jurisdiction 
   The jurisdiction of a prescribed court under section 154 or 155 is to be exercised by a 
single judge. 
 
157  Transfer of proceedings 
  (1) A prescribed court in which proceedings under this Act have been started may, on the 
application of a party made at any stage in the proceedings, by order, transfer the proceedings to another prescribed court havi ng jurisdiction to hear and determine the 
proceedings. 
  (2) Where a court transfers proceedings to another court: 
 
               (a) all documents of record relevant to those proceedings filed in the transferring 
court shall be sent to the other court by the Registrar or other appropriate 
officer of the transferring court; and 
              (b) the other court shall pr oceed as if the proceedings had been started in the 
other court and as if the same steps in the proceedings had been taken there as 
had been taken in the transferring court. 
 
158  Appeals 
 
 (1) An appeal lies to the Federal Court against a judgment or order of: 
 
  (a) another prescribed court exerci sing jurisdiction under this Act; or 
  (b) any other court in proceedings under subsection 120(1) or section 128. 
  (2) Except with the leave of the Federal Court,  an appeal does not lie to the Full Court of 
the Federal Court against a judgment or orde r of a single judge of the Federal Court 
in the exercise of its jurisdiction to hear  and determine appeals from decisions or 
directions of the Commissioner. 
  IP/N/1/AUS/P/5 
 Page 77 
 
 
   (3) With the special leave of the High Court,  an appeal lies to the High Court against a 
judgment or order referred to in subsection (1). 
  (4) Except as otherwise provided by this section, an appeal does not lie against a 
judgment or order referred to in subsection (1). 
 
159  Commissioner may appear in appeals 
 
  The Commissioner may appear and be heard at the hearing of an appeal to the Federal 
Court against a decision or direction of the Commissioner even if the Commissioner 
is not a party to the appeal. 
 
160  Powers of Federal Court 
 
  On hearing an appeal against a decision or direction of the Commissioner, the Federal 
Court may do any one or more of the following: 
   (a) admit further evidence orally, or on affidavit or otherwise;               (b) permit the examination and cross-examination of witnesses, including 
witnesses who gave evidence before the Commissioner; 
  (c) order an issue of fact to be tried as it directs; 
  (d) affirm, reverse or vary the Commissioner’s decision or direction; 
              (e) give any judgment, or make  any order, that, in all the circumstances, it thinks 
fit; 
  (f) order a party to pay costs to another party.  Chapter 17—The Crown  Part 1—Introductory    161  Nominated persons and patentees  
  A reference in this Chapter to a no minated person or to a patentee includes a 
reference to the successor in title of the nomin ated person or patentee or an exclusive 
licensee of the nominated person or patentee. 
 
162  Commonwealth and State authorities 
 
  A reference in this Chapter to the Comm onwealth includes a reference to an authority 
of the Commonwealth and a reference to a St ate includes a reference to an authority 
of a State. 
 
Part 2—Exploitation by the Crown 
   
163  Exploitation of inventions by Crown  
 (1) Where, at any time after a patent applic ation has been made, the invention concerned 
is exploited by the Commonwealth or a State (or by a person authorised in writing by 
the Commonwealth or a State) for the serv ices of the Commonwealth or the State, the 
exploitation is not an infringement: 
               (a) if the application is  pending—of the nominated person’s rights in the 
invention; or IP/N/1/AUS/P/5 
Page 78  
 
    (b) if a patent has been granted for the invention—of the patent. 
  (2) A person may be authorised for the purposes of subsection (1):    (a) before or after any act for which th e authorisation is given has been done; and 
  (b) before or after a patent has been granted for the invention; and 
              (c) even if the person is directly or indirectly authorised by the nominated person 
or patentee to exploit the invention. 
  (3) Subject to section 168, an invention is  taken for the purposes of this Part to be 
exploited for services of the Commonwealth or  of a State if the exploitation of the 
invention is necessary for the proper provis ion of those services within Australia. 
 
164  Nominated person or patentee to be informed of exploitation 
   As soon as practicable after an inventio n has been exploited under subsection 163(1), 
the relevant authority must inform the a pplicant and the nominated person, or the 
patentee, of the exploitation and give him or her any information about the exploitation that he or she from time to time reasonably requires, unless it appears to the relevant authority that it would be contrary to the public interest to do so. 
 165  Remuneration and terms for exploitation 
 
 (2) The terms for the exploitation of th e invention (including terms concerning the 
remuneration payable to the nominated person or the patentee) are such terms as are agreed, or determined by a method agreed, between the relevant authority and the 
nominated person or the patentee or, in th e absence of agreement, as are determined 
by a prescribed court on the application of either party. 
  (3) For the purposes of subsection (2), the te rms, or the method, may be agreed before, 
during or after the exploitation. 
 
 (4) When fixing the terms, the court may take into account any compensation that a 
person interested in the invention or the pate nt has received, directly or indirectly, for 
the invention from the relevant authority. 
 
165A  Exploitation of invention to cease under court order 
 
 (1) A prescribed court may, on the applica tion of the nominated person or the patentee, 
declare that the exploitation of the inven tion by the Commonwealth or the State is 
not, or is no longer, necessary for the proper provision of services of the Commonwealth or of the State if the court is satisfied that, in all the circumstances of the case, it is fair and reasonable to make the declaration. 
 
 (2) The court may further order that the Co mmonwealth or the State is to cease to exploit 
the invention: 
   (a) on and from the day specified in the order; and 
  (b) subject to any conditions specified in the order. 
  In making the order, the court is to en sure that the legitimate interests of the 
Commonwealth or of the State are not adversely affected by the order. 
  IP/N/1/AUS/P/5 
 Page 79 
 
 
  166  Previous agreements inoperative 
 
  An agreement or licence (whether made or given before or after the commencement 
of this Act) fixing the terms on which a person other than the Commonwealth or a 
State may exploit an invention is inoperative with respect to the exploitation, after the 
commencement of this Act, of the in vention under subsection 163(1), unless the 
agreement or licence has been approved: 
   (a) if the relevant authority is the Commonwealth—by the Minister; or   (b) if the relevant authority is a Stat e—by the Attorney-General of the State. 
 
167  Sale of products 
 
 (1) The right to exploit an invention under subsection 163(1) includes the right to sell 
products made in exercise of that right. 
 
 (2) Where under subsection 163(1) the sale of products is not an infringement of: 
   (a) a patent; or   (b) a nominated person’s rights in the products;   the buyer, and any person claiming through  the buyer, is entitled to deal with the 
products as if the relevant authority were  the patentee or the nominated person. 
 
168  Supply of products by Commonwealth to foreign countries 
 
  Where the Commonwealth has made an agreement with a foreign country to supply 
to that country products required for the defence of the country: 
                (a) the use of a product or process by the Commonwealth, or by a person 
authorised in writing by the Commonwealth, for the supply of that product is to be taken, for the purposes of this Chapter, to be use of the product or 
process by the Commonwealth for the services of the Commonwealth; and 
               (b) the Commonwealth or the authorised person may sell those products to the 
country under the agreement; and 
               (c) the Commonwealth or the authorised person may sell to any person any of 
the products that are not required for the purpose for which they were made. 
 169  Declarations that inventions have been exploited 
 
 (1) Subject to subsection (4), a patentee w ho considers that the patented invention has 
been exploited under subsection 163(1) may apply to a prescribed court for a declaration to that effect. 
 
 (2) In proceedings under subsection (1): 
   (a) the alleged relevant au thority is the defendant; and 
              (b) the alleged relevant authority may apply by way of counter-claim in the 
proceedings, for the revocation of the patent. 
 
 (3) The provisions of this Act relating to the revocation of patents apply, with the 
necessary changes, to a counter-claim. 
 IP/N/1/AUS/P/5 
Page 80  
 
   (4) An application under subsection (1) in re spect of an innovation patent cannot be made 
unless the patent has been certified. 
 
170  Sale of forfeited articles 
   Nothing in this Chapter affects the right  of the Commonwealth or a State, or of a 
person deriving title directly or indirectly from the Commonwealth or a State, to sell 
or use an article forfeited under a law of the Commonwealth or the State. 
 
Part 3—Acquisitions by and assignments to the Crown 
   
171  Acquisition of inventions or patents by Commonwealth 
 
 (1) The Governor-General may direct that a pate nt, or an invention that is the subject of a 
patent application, be ac quired by the Commonwealth. 
 
 (2) When a direction is given, all rights in respect of the patent or the invention are, by 
force of this subsection, transferred to and vested in the Commonwealth. 
  (3) Notice of the acquisition must be:  
  (a) given to the applicant and the nominated person, or the patentee; and 
              (b) published in the Official Journal and the Gazette unless, in the case of the 
acquisition of an invention that is the su bject of an application for a patent, a 
prohibition order, or an order under section 152, is in force in respect of the application. 
 
 (4) The Commonwealth must pay a compensab le person such compensation as is agreed 
between the Commonwealth and the person or , in the absence of agreement, as is 
determined by a prescribed court on the application of either of them. 
 
172  Assignment of invention to Commonwealth 
 
 (1) An inventor, or an inventor’s successo r in title, may assign the invention, and any 
patent granted or to be granted fo r the invention, to the Commonwealth. 
  (2) The assignment and all covenants and ag reements in the assignment are valid and 
effectual, even if valuable considerati on has not been given for the assignment, and 
may be enforced by proceedings in the name of the Minister. 
 
Part 4—Prohibition orders 
   173  Prohibition of publication of information about inventions 
 
 (1) Subject to any directions of the Minister, the Commissioner may, if it appears to the 
Commissioner to be necessary or expedient to do so in the interests of the defence of 
the Commonwealth, by written order: 
 
              (a) prohibit or restrict th e publication of information about the subject-matter of 
an application for a patent (including  an international application); or 
              (b) prohibit or restrict access to a micro-organism deposited for the purposes of 
section 41 with a prescribed depositary institution situated in Australia. 
  IP/N/1/AUS/P/5 
 Page 81 
 
 
   (2) A person must not contravene a proh ibition order except in accordance with the 
written consent of the Commissioner. 
   Penalty: Imprisonment for 2 years.  
 (3) A reference in subsection (1) to giving access to a micro-organism includes a 
reference to giving a sample of the micro-organism. 
 
174  Effect of prohibition orders 
  (1) While a prohibition order is in force in re lation to an application for a standard patent, 
the application may proceed up to the accepta nce of the patent request and complete 
specification, but the complete specifi cation must not be made open to public 
inspection, the acceptance must not be notified in the Official Journal and a patent 
must not be granted on the application. 
 
 (2) Where a prohibition order in relation to an application for a standard patent is 
revoked after the acceptance of the patent request and complete specification, the 
acceptance must be notified in the Official Journal within the prescribed period. 
  (3) While a prohibition order is in force in relation to an application for an innovation 
patent, the application may proceed up to the acceptance of the patent request and 
complete specification, but a patent mu st not be granted on the application. 
 
175  Disclosure of information to Commonwealth authority 
   Nothing in this Act prevents disclosing information about an invention, or giving 
access to, or a sample of, a micro-organism to a department or authority of the Commonwealth for the purpose of obtaining advice on whether a prohibition order should be made, am ended or revoked. 
 
176  International applications treated as applications under this Act 
 
  Where:    (a) an international application specifies Australia as a designated State; and               (b) as a result of a prohibition order or of anything done in reliance on 
section 175, the application is, under the PCT, to be considered as having 
been withdrawn; and 
              (c) the applicant files, w ithin the prescribed period, a written request signed by 
the applicant that the application be treated as an application under this Act for a standard patent; and 
  (d) the applicant files any prescribed  documents and pays the prescribed fee; 
  then, except as otherwise prescribed: 
  (e) the application must be treated as requested; and               (f) the description, claims and drawings in the application must be treated as a 
complete specification filed in respect of the application; and 
              (g) the application and specification must be treated as having been filed on the 
date on which the international application was filed. 
 IP/N/1/AUS/P/5 
Page 82  
 
  Chapter 18—Miscellaneous offences 
     177  False representations about the Patent Office 
 
 (1) A person must not use, in connection with his or her business, words that would 
reasonably lead to the belief that his or her office is, or is officially connected with, 
the Patent Office. 
   Penalty: $3,000.  
 (2) Without limiting subsection (1), a person who: 
               (a) places, or allows to be  placed, on the building in which his or her office is 
situated; or 
  (b) uses when advertising his or her office or business; or 
  (c) places on a document, as a description of his or her office or business; 
  the words “Patent Office” or “Office fo r obtaining patents”, or words of similar 
import, whether alone or together with other words, is guilty of an offence against that subsection. 
 
178  False representations about patents or patented articles 
 
 (1) A person must not falsely represent that he  or she, or another person, is the patentee 
of an invention. 
   Penalty: $6,000. 
 
 (1A) A person must not falsely represent that he  or she, or another person, is the patentee 
of an innovation patent that has been certified. 
   Penalty: 60 penalty units.  
 (2) A person must not falsely represent that an article sold by him or her is patented in 
Australia, or is the subject of an a pplication for a patent in Australia. 
   Penalty: $6,000.  
 (3) Without limiting subsection (2): 
               (a) a person is to be taken to  represent that an article is patented in Australia if 
the word “patent” or “patented”, the wo rds “provisional patent”, or any other 
word or words implying that a patent  for the article has been obtained in 
Australia, are stamped, engraved or impressed on, or otherwise applied to, the 
article; and 
              (b) a person is to be take n to represent that an article is the subject of an 
application for a patent in Australia if the words “patent applied for” or 
“patent pending”, or any other word or words implying that an application for a patent for the article has been made in Australia, are stamped, engraved or 
impressed on, or otherwise applied to, the article. 
  (4) A prosecution must not be started for an offence against subsection (1) or (2) without 
the consent of the Minister, or a person authorised by the Minister. 
  IP/N/1/AUS/P/5 
 Page 83 
 
 
  179  Failure to comply with summons 
 
 (1) A person who:    (a) is summoned by the Commissioner to appear as a witness; and 
  (b) has been offered payment of reasonable expenses; 
  must not fail to comply with the summons.    Penalty: $1,000.  
 (2) Subsection (1) does not apply if the person has a lawful excuse. 
 
Note: A defendant bears an evidential burden in relation to the matter in subsection (2), see 
subsection 13.3(3) of the Criminal Code . 
 
180  Refusal to give evidence 
  (1) A person who appears before the Commissioner must not refuse: 
   (a) to be sworn or to make an affirmation; or   (b) to answer questions that the person is lawfully required to answer.    Penalty: $3,000. 
 
 (2) Subsection (1) does not apply if the person has a lawful excuse.  
Note: A defendant bears an evidential burden in relation to the matter in subsection (2), see 
subsection 13.3(3) of the Criminal Code . 
 
181  Failure to produce documents or articles 
 
 (1) A person who:    (a) is required by the Commissioner to produce a document or article; and 
  (b) has been offered payment of reasonable expenses; 
  must not fail to produce it.    Penalty: $3,000.  
 (2) Subsection (1) does not apply if the person has a lawful excuse. 
 
Note: A defendant bears an evidential burden in relation to the matter in subsection (2), see 
subsection 13.3(3) of the Criminal Code . 
 
182  Officers not to traffic in inventions 
  (1) The Commissioner, a Deputy Commissione r or an employee must not buy, sell, 
acquire or traffic in: 
   (a) an invention or patent, whether gr anted in Australia or anywhere else; or 
              (b) a right to, or licence under, a patent, whether granted in Australia or 
anywhere else. 
 
  Penalty: $6,000. IP/N/1/AUS/P/5 
Page 84  
 
   
 (2) A purchase, sale, acquisition, assignment or transfer made or entered into in 
contravention of this section is void. 
  (3) This section does not apply to the inventor or to an acquisition by bequest or 
devolution by law. 
 
183  Unauthorised disclosure of information by employees etc. 
 
  The Commissioner, each Deputy Commissioner and each employee must not disclose 
information about a matter that has been or  is being dealt with under this Act or the 
1952 Act unless required or authorised to do so  by this Act, a written direction of the 
Commissioner or an order of a court. 
 
184  Other unauthorised disclosures of information 
 
  A person to whom section 71 of the Safeguards Act applies must not disclose 
information about a matter that has been or  is being dealt with under this Act or the 
1952 Act unless required or authorised to do so  by the Safeguards Act, this Act, a 
written direction of the Director or an order of a court. 
 
  Penalty: Imprisonment for 2 years. 
 
185  Commissioner etc. not to prepare documents or search records 
 
  The Commissioner, a Deputy Commissioner or an employee must not: 
 
  (a) prepare, or help to prepare:     (i) a specification; or                            (ii) any other document relating to a specification (other than a document 
which is in an approved form); 
  unless the Commissioner, Deputy Commissioner or the employee is the 
inventor in respect of the specification; or 
               (b) search the records of the Patent Office otherwise than in his or her official 
capacity. 
 
  Penalty: 10 penalty units.  
Chapter 19—The Register and official documents 
   186  Register of Patents 
  (1) A Register of Patents is to be kept at the Patent Office. The Register is to contain 2 
parts as follows: 
   (a) a part dealing with standard patents; and 
  (b) a part dealing with innovation patents. 
  (2) The Register may be kept wholly or partly by use of a computer.   (3) If the Register is kept wholly or partly by use of a computer:  IP/N/1/AUS/P/5 
 Page 85 
 
 
   
              (a) references in this Act to an entry in the Register ar e to be read as including 
references to a record of particulars kept by use of the computer and comprising the Register or part of the Register; and 
              (b) references in this Act to particulars being registered, or entered in the 
Register, are to be read as including refe rences to the keeping of a record of 
those particulars as part of the Register by use of the computer; and 
              (c) references in this Act to the rectification of the Register are to be read as 
including references to the rectification of the record of particulars kept by use of the computer and comprising the Register or part of the Register. 
 
187  Registration of particulars of patents etc. 
 
 (1) Particulars of standards patents in forc e, and other prescribed particulars relating to 
standard patents (if any), must be registered in that part of the Register dealing with 
standard patents. 
  (2) Particulars of innovation patents in for ce, and other prescribed particulars relating to 
innovation patents (if any), must be registered in that part of the Register dealing with innovation patents. 
 188  Trusts not registrable 
 
  Notice of any kind of trust relating to a patent or licence is not receivable by the 
Commissioner and must not be registered. 
 189  Power of patentee to deal with patent 
 
 (1) A patentee may, subject only to any right s appearing in the Register to be vested in 
another person, deal with the patent as the absolute owner of it and give good 
discharges for any consideration for any such dealing. 
 
 (2) This section does not protect a person w ho deals with a patentee otherwise than as a 
purchaser in good faith for value and without notice of any fraud on the part of the 
patentee. 
  (3) Equities in relation to a patent may be  enforced against the patentee except to the 
prejudice of a purchaser in good faith for value. 
 
190  Inspection of Register 
 
 (1) The Register must be available for in spection at the Patent Office by any person 
during the hours that it is open for business. 
 
 (2) If a record of particulars is kept by use of a computer, subsection (1) is to be taken to 
be complied with, to the extent that the Re gister consists of those particulars, by 
giving members of the public access to a co mputer terminal which they can use to 
inspect the particulars, either on a screen or in the form of a computer printout. 
 
191  False entries in Register 
 
  A person must not:  IP/N/1/AUS/P/5 
Page 86  
 
    (a) make a false entry in the Register; or 
  (b) cause a false entry to be made in the Register; or               (c) tender in evidence a documen t that falsely purports to be a copy of or extract 
from an entry in the Register. 
 
  Penalty: Imprisonment for 2 years. 
 
192  Orders for rectification of Register 
 
 (1) A person aggrieved by: 
 
  (a) the omission of an entry from the Register; or   (b) an entry made in the Register without sufficient cause; or   (c) an entry wrongly existing in the Register; or   (d) an error or defect in an entry in the Register; 
  may apply to a prescribed court for an order to rectify the Register. 
  (2) On hearing an application, the court may:                (a) decide any question which it is necessary or expedient to decide in 
connection with the rectification of the Register; and 
  (b) make any order it thinks fit for the rectification of the Register. 
  (3) The Commissioner:    (a) must be given notice of an application; and 
  (b) may appear and be heard in the proceedings; and 
  (c) must appear if directed to do so by the court.   (4) An office copy of an order must be served on the Commissioner by the Registrar or 
other appropriate officer of the court. 
 
 (5) On receiving an office copy of an order, the Commissioner must rectify the Register 
accordingly. 
 
193  Inspection of documents 
   All documents filed in connection with th e registration of prescribed particulars under 
section 187 must be available for inspection at  the Patent Office by any person during 
the hours when it is open for business. 
 
194  Information obtainable from Commissioner 
   The Commissioner may give any person information about: 
   (a) a patent; or   (b) an application for a patent that is open to public inspection; or   (c) any prescribed document or matter. 
 
195  Evidence—the Register 
 
 (1) The Register is prima facie evidence of any particulars registered in it. 
  IP/N/1/AUS/P/5 
 Page 87 
 
 
   (2) If the Register is wholly or partly kept by use of a computer, a document signed by 
the Commissioner reproducing in writing all or any of the particulars comprising the 
Register, or that part of it, is admissible in any proceedings as prima facie evidence of 
those particulars. 
 196  Evidence—unregistered particulars 
 
  A document in respect of which particulars have not been entered in the Register is 
not admissible in any proceedings in proof of the title to a patent or to an interest in a 
patent unless: 
 
              (a) the court or tribunal before which the proceedi ngs are brought otherwise 
directs; or 
  (b) the proceedings are:  
 (i) for an order under section 192; or 
 (ii) to enforce equities in relation to a patent or licence. 
 
197  Evidence—certificate and copies of documents 
 
 (1) A signed certificate to the effect that: 
 
             (a) anything required or perm itted by this Act or the 1952 Act to be done or not 
to be done had or had not been done on a date specified in the certificate; or 
             (b) a document in the Pate nt Office or its library was available for public 
inspection on a date specified in the certificate; 
  i s  prima facie evidence of the matters in the certificate. 
  (2) A signed copy of or signed extract from th e Register is admissible in any proceedings 
as if it were the original. 
  (3) A signed copy of or signed extract from a document in the Patent Office or its library 
is admissible in any proceedings as if it were the original. 
  (4) In this section: 
 
  signed  means signed by the Commissioner. 
 
Chapter 20—Patent Attorneys 
 Part 1—Registration, privileges and professional conduct    198  Registration of patent attorneys 
  (1) A Register of Patent Attorneys is to be kept by the Designated Manager. 
 
Note: Designated Manager  is defined by section 200A. 
 
 (2) The Register of Patent Attorneys may be kept wholly or partly by use of a computer.   (3) If the Register of Patent Attorneys is kept wholly or partly by use of a computer, 
references in this Act to an entry in the Regi ster of Patent Attorneys are to be read as 
including references to a record of par ticulars kept by use of the computer and IP/N/1/AUS/P/5 
Page 88  
 
  comprising the Register of Patent Attorneys or part of the Register of Patent 
Attorneys. 
  (4) The Designated Manager must regist er as a patent attorney a person who: 
 
  (a) is ordinarily resident in Australia; and 
              (b) holds such qualifica tions as are specified in, or ascertained in accordance 
with, the regulations; and 
  (c) has been employed as prescribed fo r not less than the prescribed period; and 
  (d) is of good fame, integrity and character; and 
              (e) has not been convicted of a prescribed offence during the previous 5 years; 
and 
    (f) is not under sentence of imprisonment for a prescribed offence.   The registration is to consist of entering the person’s name in the Register of Patent 
Attorneys. 
 
 (5) A qualification specified in, or ascertain ed in accordance with, regulations made for 
the purposes of paragraph (4)(b) may consis t of passing an examination conducted by 
the Professional Standards Board. This s ubsection does not limit paragraph (4)(b). 
  (6) Paragraphs (4)(e) and (f) do not limit paragraph (4)(d). 
 
 (7) For the purposes of this section, a person is taken to be ordinarily resident  in 
Australia if: 
   (a) the person has his or her home in Australia; or 
              (b) Australia is the country of his or her permanent abode even though he or she 
is temporarily absent from Australia; 
  but the person is taken not to be ordinarily resident in Australia if he or she resides in 
Australia for a special or temporary purpose only. 
  (8) A reference in this section to convicti on of an offence includes a reference to the 
making of an order under section 19B of the Crimes Act 1914 , or a corresponding 
provision of a law of a State or a Territory, in relation to the offence. 
 
199  Deregistration 
   The name of a person registered as a patent attorney may be removed from the 
Register of Patent Attorneys in the pr escribed manner and on the prescribed grounds. 
 
200  Privileges  
 
 (1) A registered patent attorney: 
 
              (a) is entitled to prep are all documents, transact all business and conduct all 
proceedings for the purposes of this Act; and 
  (b) has such other rights and privileges as are prescribed.  
 (2) A communication between a registered patent attorney and the attorney’s client in 
intellectual property matters,, and any record or documen t made for the purposes of 
such a communication, are privileged to the same extent as a communication between a solicitor and his or her client. 
  IP/N/1/AUS/P/5 
 Page 89 
 
 
   (3) Nothing in this section authorises a regi stered patent attorney to prepare a document 
to be issued from or filed in a court or to transact business, or conduct proceedings, in 
a court. 
  (4) In this section:  
intellectual property matters  means: 
   (a) matters relating to patents; or   (b) matters relating to trade marks; or 
  (c) matters relating to designs; or 
  (d) any related matters.  
200A  Designated Manager 
   For the purposes of this Act, a person  is the Designated Manager if the person 
occupies, or is acting in, a position that: 
   (a) is usually occupied by an SES employee; and               (b) has been declared by th e Secretary to the Department, in writing, to be the 
position of Designated Manager. 
 
Part 2—Offences 
   201  Offences: unregistered persons etc.   
  (1) A person must not carry on business, practise or act as a patent attorney unless the 
person is a registered patent a ttorney or a legal practitioner. 
   Penalty: $3,000.   (2) The members of a partnership must not carry on business, practise or act as patent 
attorneys unless at least one member is a registered patent attorney or a legal 
practitioner. 
   Penalty: $3,000.  
 (3) A person must not describe himself or herself, or hold himself or herself out, or 
permit himself or herself to be described or held out, as a patent attorney, or agent for 
obtaining patents unless the person is a registered patent attorney. 
   Penalty: $3,000.  
 (4) The members of a partnership must not  describe the partnership, or hold the 
partnership out, or permit the partnershi p to be described or held out, as patent 
attorneys, or agents for obtaining patents,  unless at least one member is a registered 
patent attorney. 
 
  Penalty: 30 penalty units. 
  (5) A company must not carry on business, practise, act, describe itself or hold itself out, 
or permit itself to be described or held out,  as a patent attorney or agent for obtaining 
patents. IP/N/1/AUS/P/5 
Page 90  
 
   
  Penalty: $15,000.   (6) It is not an offence against subsection (1 ), (2) or (5) if the legal representative of a 
deceased patent attorney: 
 
              (a) carries on the patent a ttorney’s business for not more than 3 years after the 
patent attorney’s death or for any further period allowed by a prescribed 
court; and 
              (b) is a registered patent attorney, or employs a registered patent attorney to 
manage the business on his or her behalf. 
  (7) For the purposes of this section, a person or company is taken to carry on business, 
practise or act as a patent attorney if, and only if, the person or company does, or undertakes to do, on behalf of someone else, any of the following in Australia for 
gain: 
   (a) applying for or obtaining pate nts in Australia or anywhere else; 
              (b) preparing specifications or other documents for the purposes of this Act or 
the patent law of another country;  
              (c) giving advice (other than  advice of a scientific or technical nature) about the 
validity, or infringement, of patents. 
  (8) A person does not commit an offence agai nst subsection (1) in respect of anything 
done, or undertaken to be done, by the person in the capacity of employee for: 
 
  (a) in any case—the person’s employer; or 
              (b) if the person’s employ er is a member of a related company group—another 
member of the group. 
  (9) A company that is a member of a related company group does not commit an offence 
against subsection (5) in respect of anyt hing done, or undertaken to be done, by the 
company for another member of the group. 
  (10) In this section: 
 
  related company group  means a group of 2 or more companies, where each member 
of the group is related to each other member of the group. 
  (11) For the purposes of this section, the qu estion of whether a company is related to 
another company is to be determined in the same manner as that question is determined under the Corporations Act 2001 . 
 202  Documents prepared by legal practitioners 
 
  A legal practitioner must not prepare a specification, or a document relating to an 
amendment of a specification, unless: 
 
              (a) the practitioner is acting unde r the instructions of a registered patent attorney; 
or 
  (b) the amendment has been directed by an order under section 105.    Penalty: $3,000.  IP/N/1/AUS/P/5 
 Page 91 
 
 
   
202A  Documents prepared by a member of a partnership 
 
  A person who is:  
  (a) a member of a partnership; and 
  (b) not a registered patent attorney;   must not prepare a specification, or a document relating to an amendment of a 
specification, unless: 
              (c) the person is acting unde r the instructions or supervision of a registered 
patent attorney; or 
  (d) the amendment has been directed by an order under section 105.    Penalty: 30 penalty units.  203  Attendance at patent attorney’s office 
 
  A registered patent attorney must not practise, act, or hold himself or herself out as 
practising or acting, as a patent attorney , at an office or place of business where 
specifications or other documents are prepared for the purposes of this Act, unless he or she, or another registered patent atto rney, is in regular attendance at, and in 
continuous charge of, that office or place. 
   Penalty: $3,000.  
204  Time for starting prosecutions  
 
  Despite section 15B of the Crimes Act 1914 , a prosecution for an offence against 
subsection 201(1), (2), (3), (4) or (5), or  section 202, 202A or 203, may be started at 
any time within 5 years after the offence was committed. 
 
Chapter 21—Administration 
    
205  Patent Office and sub-offices 
 
 (1) For the purposes of this Act, there is to be an office called the Patent Office. 
 (2) There is to be a sub-office of the Patent Office in each State. 
 
206  Patent Office seal 
 
  There is to be a seal of the Patent Office and impressions of the seal must be 
judicially noticed. 
 207  Commissioner of Patents 
 
 (1) There is to be a Commissioner of Patents.   (2) The Commissioner has such powers and functions as are conferred on him or her 
under this Act or any other Act. 
 
208  Deputy Commissioner of Patents 
 
 (1) There is to be at least one Deputy Commissioner of Patents. IP/N/1/AUS/P/5 
Page 92  
 
   
 (2) Subject to any direction by the Comm issioner, a Deputy Commissioner has all the 
powers and functions of the Commissioner under this Act or any other Act, except the Commissioner’s powers of delegation under section 209. 
 
 (3) A power or function of the Commissioner under this Act or any other Act, when 
exercised by a Deputy Commissioner, is to be taken, for the purposes of this Act or any other Act, to have been exercised by the Commissioner. 
  (4) The exercise of a power or function of the Commissioner under this Act or any other 
Act by a Deputy Commissioner does not prevent the exercise of the power or 
function by the Commissioner. 
  (5) Where, under this Act or any other Act, the exercise of a power or function by the 
Commissioner, or the operation of a provision of this Act or any other Act, is 
dependent on the opinion, belief or state of mind of the Commissioner in relation to a 
matter, that power or function may be exercised by a Deputy Commissioner, and that provision may operate, as the case may be, on the opinion, belief or state of mind of the Deputy Commissioner in relation to that matter. 
 
209  Delegation of Commissioner’s powers and functions 
 
 (1) The Commissioner may, by instrument, signe d by him or her, delegate all or any of 
the Commissioner’s powers or functions under this Act or any other Act to a 
prescribed employee, or a prescribed class of employees. 
 
 (2) A delegate must, if so required by the instrument of delegation, exercise or perform a 
delegated power or function under the dir ection or supervision of the Commissioner 
or an employee specified in the instrument. 
 
210  Commissioner’s powers 
   The Commissioner may, for the purposes of this Act: 
   (a) summon witnesses; and   (b) receive written or oral evidence on oath or affirmation; and   (c) require the production of documents or articles; and 
  (d) award costs against a party to proceedings before the Commissioner. 
 
211  Recovery of costs awarded by Commissioner 
 
  Costs awarded by the Commissioner against a party are recoverable as a debt.  Chapter 22—Miscellaneous     212  Copies of examination reports to be communicated 
 
  A copy of each report relating to an ex amination or a re-examination under this Act 
must, subject to Chapters 15 and 17, be given to the applicant or patentee, as the case 
requires. 
  IP/N/1/AUS/P/5 
 Page 93 
 
 
  213  Making and signing applications etc.   
 
  An application, notice or request required or permitted under this Act to be made or 
signed by a person may be made or signed, on behalf of that person, by a registered 
patent attorney. 
 
214  Filing of documents 
 
  A document may be filed with the Patent  Office by delivering the document to a 
sub-office of the Patent Office either persona lly or by post or by any other prescribed 
means. 
 
215  Death of applicant or nominated person 
 
 (1) If an applicant dies before a patent is granted on the application, his or her legal 
representative may proceed with the application. 
  (2) If a nominated person dies before a patent  is granted on the application, the patent 
may be granted to his or her legal representative. 
  (3) Where, at any time after a patent is gr anted, the Commissioner is satisfied that the 
patentee had died (or, in the case of a body corporate, had ceased to exist) before the 
patent was granted, the Commissioner may amend the patent by substituting for the 
name of the patentee the name of the pers on to whom the patent should have been 
granted. 
 
 (4) An amendment by the Commissioner has eff ect, and is to be taken always to have had 
effect, accordingly. 
 
216  Exercise of discretionary power by Commissioner 
 
 (1) The Commissioner must not exercise a discretionary power under this Act adversely 
to any person applying for the exercise of that power without first giving that person a 
reasonable opportunity to be heard. 
  (2) Subsection (1) does not apply in relation to the Commissioner’s power to direct an 
applicant to request an examination. 
 
217  Assessors 
 
  A prescribed court may, if it thinks fit, ca ll in the aid of an assessor to assist it in the 
hearing and trial or determination of  any proceedings under this Act. 
 218  Costs where patent invalid in part 
 
  In any proceedings in which the validity of a patent is disputed, the court may, if it is 
satisfied that some of the claims in the co mplete specification which are alleged to be 
invalid are not invalid but that other clai ms are invalid, apportion the costs between 
the parties to the proceedings as it thinks just. 
 
219  Security for costs 
 
  If a person who neither resides nor carries on business in Australia: IP/N/1/AUS/P/5 
Page 94  
 
   
  (a) gives notice of opposition under this Act; or   (b) appeals to the Federal Court;   the Commissioner or the Federal Court, as the case may be, may require the person to 
give security for the costs of the proceeding or appeal and, where such security is not 
given to the satisfaction of the Commissione r or the Federal Court, as the case may 
be, may dismiss the proceeding or appeal. 
 
220  Costs of attendance of patent attorney  
   Where, at the hearing of proceedings unde r this Act, a registered patent attorney 
attends in court for the purpose of assisting a party in the conduct of the hearing and an order is made for payment of the costs of that party, those costs may include an 
allowance for that attendance. 
 221  Service of documents 
 
  Where this Act provides for a document to be served on, or given or sent to, a person 
and the person has given the Commissioner an address in Australia for service of documents, the document may be served on, or  given or sent to, the person by post to 
that address. 
 
222  Publication of Official Journal etc. 
 
 (1) The Commissioner shall issue periodically an official journal containing such matters 
as are prescribed and such other matters (if any) as the Commissioner thinks fit. 
 
 (2) The Commissioner must make arrangements for selling copies of the Official 
Journal , and of complete specifications which are open to public inspection. 
  (3) The Commissioner may prepare, publish and sell such documents relating to 
inventions and patents as the Commissioner thinks fit. 
 
223  Extensions of time 
 
 (1) Where, because of an error or omission by the Commissioner, a Deputy 
Commissioner or an employee, a relevant act  that is required to be done within a 
certain time is not, or cannot be, done within that time, the Commissioner must 
extend the time for doing the act. 
  (2) Where, because of:                (a) an error or omission by the person concerned or by his or her agent or 
attorney; or 
              (b) circumstances beyond the control of the person concerned;   a relevant act that is required to be d one within a certain time is not, or cannot be, 
done within that time, the Commissioner ma y, on application made by the person 
concerned in accordance with the regulat ions, extend the time for doing the act. 
 
 (2A) If:                (a) a relevant act that is required to be done within a certain time is not done 
within that time; and  IP/N/1/AUS/P/5 
 Page 95 
 
 
                (b) the Commissioner is sa tisfied that the person concerned took due care, as 
required in the circumstances, to ensure the doing of the act within that time; 
  the Commissioner must, on application made by the person concerned in accordance 
with the regulations and within the prescrib ed period, extend the time for doing the 
act. 
 
 (2B) An extension of time under subsection (2A) cannot exceed the period prescribed for 
the purposes of this subsection. 
  (3) The time allowed for doing a relevant act  may be extended, whether before or after 
that time has expired. 
  (3A) Despite subsection (3), the time allo wed for doing a relevant act may be extended 
under subsection (2A) only after that time has expired. 
 
 (4) The Commissioner must advertise in the Official Journal : 
 
 (a) an application made for an extension of time for more than 3 months; or 
              (b) an application made fo r an extension of time for doing a prescribed relevant 
act in prescribed circumstances. 
 
 (6) Subject to subsection (6A), a person may, as prescribed, oppose the granting under 
subsection (2) or (2A) of the application. 
  (6A) If the Commissioner is satisfied that an application under subsection (2) or (2A) 
would not be granted even in the ab sence of opposition under subsection (6): 
 
              (a) the Commissioner need  not advertise the application in accordance with 
subsection (4); and 
  (b) the application cannot be opposed, despite subsection (6); and   (c) the Commissioner must refuse to grant the application.  
 (7) Where: 
               (a) a patent application lapses, or a patent ceases, because of a failure to do one 
or more relevant acts within the time allowed; and 
  (b) the time for doing that act or those acts is extended; 
  the application or patent must be treated as having been restored. 
  (8) Where:                (a) a provisional patent a pplication lapses under subsection 142(1) at the end of 
the period prescribed for the purposes of section 38; and 
  (b) that period is extended; 
the application must be treated as if it had not lapsed. 
  (9) Where the Commissioner grants:  
  (a) an extension of more than 3 months for doing a relevant act; or 
              (b) an extension of time for doing a prescribed relevant act in prescribed 
circumstances; 
  the prescribed provisions have effect for the protection or compensation of persons 
who, before the day on which the applicati on for extension of time is advertised under IP/N/1/AUS/P/5 
Page 96  
 
  subsection (4), exploited (or took definite st eps by way of contract or otherwise to 
exploit) the invention concerned because of the failure to do the relevant act within 
the time allowed, the lapsing of the patent  application or the ceasing of the patent, as 
the case may be. 
 
 (10) Infringement proceedings cannot be brought in respect of an infringement committed: 
               (a) between the day on whic h the patent application lapses and the day on which 
it is restored; or 
              (b) between the day on which the patent ceases and the day on which it is 
restored. 
  (11) In this section: 
 
  relevant act  means an action (other than a prescrib ed action) in relation to a patent, a 
patent application, or any proceedings under this Act (other than court proceedings), 
and includes the making of a Convention a pplication within the time allowed for 
making such applications. 
 
224  Review of decisions  
  (1) Application may be made to the Admi nistrative Appeals Tribunal for review of: 
               (a) a decision of the Commissioner under section 10, 17, 32, 33, 52 or 66, 
subsection 74(3) or 103(2), section 113, subsection 137(3), paragraph 
142(2)(b), subsection 150(2), 151(2), 152( 2) or 152(3), or section 173, 215 or 
223; or 
              (b) a decision of the D esignated Manager under section 198 not to register a 
person as a patent attorney; or 
              (c) a decision of the Director under subsection 147(2) or (3), section 149 or 
subsection 152(1). 
 
  (2) Where a person who makes a decision me ntioned in subsection (1) gives the person 
or persons affected by the decision written notice of the making of the decision, the notice must include a statement to the effect that, subject to the Administrative 
Appeals Tribunal Act 1975 , application may be made to the Administrative Appeals 
Tribunal for review of the decision to which the notice relates by or on behalf of the 
person or persons whose interests are affected by the decision. 
  (3) Failure to comply with subsection (2) in relation to a decision does not affect the 
validity of the decision. 
  (4) In this section:  
  decision  has the same meaning as in the Administrative Appeals Tribunal Act 1975 . 
 
225  Conduct of employees and agents of natural persons 
  (3) Where it is necessary to establish, for the purposes of a prosecution for an offence 
under this Act, the state of mind of a person other than a company in relation to particular conduct, it is sufficient to show: 
  IP/N/1/AUS/P/5 
 Page 97 
 
 
                (a) that the conduct was engage d in by a servant or agent of the person within the 
scope of his or her actual or apparent authority; and 
 (b) that the servant or agent had the state of mind. 
  (4) Any conduct engaged in on  behalf of a person other than a company by the person’s 
servant or agent within the scope of his or her actual or apparent authority is to be 
taken, for the purposes of a prosecution for an  offence under this Act, to have been 
engaged in also by the person, unless th e person establishes that he or she took 
reasonable precautions and exercised due diligence to avoid the conduct. 
 
 (5) A reference in this section to an offe nce under this Act includes a reference to an 
offence created by: 
   (a) section 6 of the Crimes Act 1914  that relates to this Act or the regulations; or 
              (b) section 11.1, 11.2, 11.4 or 11.5 of the Criminal Code that relates to this Act 
or the regulations. 
  (6) Where:    (a) a person other than a company is c onvicted of an offence under this Act; and 
              (b) the person would not have been convicted of the offence but for 
subsections (3) and (4); 
  the person is not liable to be punished by imprisonment for that offence.   (7) A reference in subsection (3) to the state of mind of a person includes a reference to:  
  (a) the knowledge, intention, opinio n, belief or purpose of the person; and 
  (b) the person’s reasons for the in tention, opinion, belief or purpose. 
  (9) A reference in this section to engaging  in conduct includes a reference to failing or 
refusing to engage in conduct. 
 
Note: For provisions relating to proof of offences  by bodies corporate, see Part 2.5 of the Criminal 
Code . 
 
226  Reproduction of published specifications does not infringe copyright 
 
  The reproduction in 2 dimensions of the w hole or part of a provisional or complete 
specification that is open to public inspec tion does not constitute an infringement of 
any copyright subsisting under the Copyright Act 1968 in any literary or artistic work. 
 
227  Fees 
 
 (1) The prescribed fees are payable in accordance with the regulations. 
 
 (2) Without limiting subsection (1), different fees may be prescribed in respect of the 
doing of an act according to the time when the act is done. 
  (3) The regulations may provide  for the consequences (for the purposes of this Act) of 
failing to pay a fee in accordance with the regulations. 
 IP/N/1/AUS/P/5 
Page 98  
 
  Note: Some provisions of this Act provide expressly or implicitly fo r the consequences of failing to 
pay a fee (for example, see s ubsections 89(3) and 142(2), sect ion 143, subsection 151(4) and 
section 176). Regulations cannot provide for cons equences inconsistent with those provisions. 
 
 (4) In particular, the regulations may provide that, for the purposes of this Act: 
 
              (a) an act is not to be done, or is taken not to have been done, if the fee for doing 
the act is not paid in accordance with the regulations; or 
              (b) a document is not filed, or is taken not to have been filed, if the fee for filing 
the document is not paid in acco rdance with the regulations; or 
              (c) a patent application lapses,  or is taken to have lapsed, if the fee for filing the 
request and accompanying specification is not paid in accordance with the 
regulations. 
  (5) Subsection (4) does not limit subsection (3).  227A  Professional Standards Board for Patent and Trade Marks Attorneys 
 
 (1) The Professional Standards Board for Patent and Trade Marks Attorneys is 
established. 
 
 (2) The Professional Standards Board has the following functions: 
               (a) such functions as are conferred on the Professional Standards Board by this 
Act or the Trade Marks Act 1995 ; 
              (b) such functions as are conferred on the Professional Standards Board by 
regulations made for the purposes of  any of the following provisions: 
                            (i) paragr aph 198(4)(b) of this Act (which deals with the qualifications 
of patent attorneys); 
                           (ii) section 199 of this Act (which deals with  the deregistration of patent 
attorneys); 
                           (iii) para graph 228(2)(r) of this Act (which deals with the professional 
conduct of patent attorneys); 
                           (iv) paragraph 228A(4)(a) of the Trade Marks Act 1995 (which deals 
with the qualifications of trade marks attorneys); 
                           (v) section 228B of the Trade Marks Act 1995  (which deals with the 
deregistration of trade marks attorneys); 
                           (vi) paragraph 231(2)(ha) of the Trade Marks Act 1995  (which deals with 
the professional conduct of trade marks attorneys); 
               (c) to do anything incidental to or conducive to the performance of any of the 
above functions. 
 
 (3) The regulations may make provision for and in relation to:    (a) the constitution and membership of  the Professional Standards Board; and 
              (b) the manner in which the Professional Standards Board is to perform its 
functions; and 
              (c) the procedure to be follo wed at or in relation to meetings of the Professional 
Standards Board, including (but not limited to) matters with respect to: 
    (i) the convening of meetings of the Board; and  IP/N/1/AUS/P/5 
 Page 99 
 
 
                             (ii) the number of members of the Board who are to constitute a quorum; 
and 
                           (iii) the selection of a member of the Board to preside at a meeting of the 
Board; and 
                           (iv) the ma nner in which questions arising at a meeting of the Board are 
to be decided. 
  (4) A member of the Professional Standards Bo ard is to be paid such remuneration as is 
determined by the Remuneration Tribunal. If no determination of that remuneration 
by the Tribunal is in operation, the member  is to be paid such remuneration as is 
prescribed. 
  (5) A member of the Professional Standards Bo ard is to be paid such allowances as are 
prescribed. 
 (6) Subsections (4) and (5) have effect subject to the Remuneration Tribunal Act 1973 . 
 
228  Regulations 
 
 (1) The Governor-General may make regul ations, not inconsistent with this Act: 
   (a) prescribing matters required or perm itted by this Act to be prescribed; and 
              (b) prescribing matters nec essary or convenient to be prescribed for carrying out 
or giving effect to this Act; and 
              (c) prescribing matters necessary or convenient to be prescribed for the conduct 
of any business relating to the Patent Office; and 
              (d) for the purpose of carrying out or giving effect to the Budapest Treaty; and 
              (e) for the purpose of carrying out or giving effect to the PCT, whether in 
relation to PCT applications or otherwise. 
  (2) Without limiting subsection (1), that subsection includes the power to make 
regulations: 
 
              (a) making provision for and in relation to the procedures for the examination of 
a patent request and complete speci fication and the re-examination of a 
complete specification; and 
              (b) making provision for and in relation to the reports to be made in relation to an 
examination and a re-examination; and 
              (c) making provision for and in relation to the amendment of patent requests, 
provisional and complete specifica tions, and other filed documents: 
    (i) to correct a clerical  error or obvious mistake; or 
                           (ii) to remove a lawful ground of objection, whether the objection is 
raised in the course of examination or re-examination or otherwise; 
or 
 (iii) for any other purpose; and 
               (e) making provision for and in relation to the amendment of an entry in the 
Register to correct a clerical error or an obvious mistake, or for any other 
purpose; and 
              (f) making provision for and in  relation to the amendment of a patent to correct a 
clerical error or an obvious mistake; and 
              (g) making provision for and in relation to the preparation, filing and publication 
of abstracts of complete specifications; and IP/N/1/AUS/P/5 
Page 100  
 
   (h) making provision for and in re lation to opposition proceedings; and 
              (ha) setting out the form alities checking process for innovation patents including, 
in particular, the following matters: 
                            (i) specifying the formalities requirements (including compliance with 
the requirements of subsections 18(2)  and (3)) that must be met in 
respect of an application for an innovation patent; and 
                           (ii) empowering the Commissioner to direct an applicant for an 
innovation patent to do such things as are necessary to ensure that the 
application is in accordance with th e requirements of the regulations 
relating to the preparation of documents for filing; and 
                           (iii) providing for the lapsing of the application if such a direction is not 
complied with within a time specified in the regulations; and 
                           (iv) providing for the restoration of an application that has so lapsed; and  
              (j) empowering the Commissioner to direct an applicant for a standard patent to 
do such things as are necessary to ensure  that the complete specification is in 
accordance with the requirements of the regulations relating to the preparation of documents for filing and: 
                            (i) providing for the lapsing of the application if such a direction is not 
complied with within a time specified in the regulations; and 
                           (ii) providing for the restoration of an application that has so lapsed; and                (k) empowering the Commiss ioner to hear and determine the question whether a 
person is an interested person for the purpose of doing any act permitted to be 
done under this Act by an interested person; and 
              (m) providing for appeals against decisions of the Commissioner made under the 
regulations; and 
              (n) making provision for and in relation to the practice and procedure of 
prescribed courts in proceedings under this Act, including provision prescribing the time within which any proceeding may be started or anything 
else may be done, and providing for the extension of any such time; and 
              (p) requiring persons to make statutory declarations in relation to patent 
applications or patents or in proceed ings under this Act (not being court 
proceedings); and 
              (q) making provision for and in relation to the making of a declaration, or the 
doing of an act, under this Act on behalf  of a person who, because of infancy 
or physical or mental disability, is unable to make the declaration or do the act; and 
              (r) for the control of the professional conduct of registered patent attorneys and 
the practice of the profession and, for that purpose, making provision for and 
in relation to all or any of the following: 
 
                           (i) making complaints, and hearing charges, against registered patent 
attorneys about their professional conduct; 
                           (ii) imposing penalties on registered patent attorneys, including issuing a 
reprimand and suspending or cancelling registration; 
 (iii) summoning witnesses; 
                           (iv) requiring persons to give evidence on oath (whether orally or 
otherwise); 
                           (v) administering oaths to persons giving evidence (whether orally or 
otherwise);  IP/N/1/AUS/P/5 
 Page 101 
 
 
                             (vi)  requiring persons to produce documents or articles; and 
   (s) making provision for and in relation to:                             (i) the depos it for the purposes of this Act, the Budapest Treaty, or both, 
of micro-organisms with prescribed depositary institutions and the 
storage and testing of, and furnishing of samples of, micro-organisms by those institutions; and 
                          (ii) the char ging of fees by prescribed depos itary institutions situated in 
Australia in relation to the matters described in subparagraph (i); and 
                          (iii) the maki ng of reports by prescribed depositary institutions situated in 
Australia in relation to those matters; and 
                          (iv) the powers and functions of the Commissioner in relation to 
prescribed depositary institutions w ith respect to those matters; and 
 
              (t) modifying the operation of  this Act in relation to PCT applications that are 
treated as patent applications under this Act by excluding, varying, or substituting different provisions for, sp ecified provisions of this Act; and 
              (u) making provision for and in relation to the destruction of documents relating 
to applications for patents filed not less than 25 years before the time of 
destruction; and 
              (w) making provision for and in  relation to the refund, in specified circumstances, 
of the whole or part of a fee paid in respect of the filing of a document; and 
              (y) making provision for and in relation to the remission of, or the exemption of 
specified classes of persons from the payment of, the whole or part of a fee; and 
              (z) prescribing penalties for offences against the regulations not exceeding a fine 
of $1,000; and 
              (za) making such transitional and savings provisions as are necessary or 
convenient as a result of the repeal of the 1952 Act and the enactment of this 
Act. 
 
 (3) The regulations may make provision for ma tters referred to in paragraph (2)(s) by 
empowering the Commissioner, on behalf of the Commonwealth, to enter into agreements with prescribed depositary ins titutions with respect to those matters. 
  (4) Regulations made under paragraph (2)( s) and subsection (3) may make different 
provision with respect to different matters dealt with by or under those regulations, 
but this subsection shall not be taken to limit a power to make regulations conferred 
by any other provision of this Act. 
  (5) The Governor-General is to make regu lations setting out the English texts of the 
Budapest Treaty and the PCT as in force for Australia on the commencing day, and 
afterwards such regulations as are necessary to keep those English texts in an 
up-to-date form. 
  (6) The Governor-General may make regulations setting out the English text of a treaty 
relating to the protection of inventions to which Australia is a party (other than the 
Budapest Treaty or the PCT), being the E nglish text of the treaty as in force for 
Australia when the regulations are made, and afterwards such regulations as are 
necessary to keep that English text in an up-to-date form. 
 IP/N/1/AUS/P/5 
Page 102  
 
   (7) Despite the repeal of the 1952 Act by this Act, regulations made under 
paragraph (2)(za) may provide for the conti nued operation of specified provisions of 
the 1952 Act in relation to prescribed persons or matters, or in prescribed circumstances. 
 229  Consequential amendments 
 
  The Acts specified in Schedule 2 ar e amended as set out in that Schedule. 
 
230  Repeal 
 
  T h e  Patents Act 1952  is repealed. 
 
Chapter 23—Transitional and savings provisions 
    
231  Application of Part III of 1989 Amending Act  
  Nothing in this Act affects the continue d operation of Part III of the 1989 Amending 
Act. 
 
233  Patents granted under 1952 Act 
 
 (1) Subject to this Chapter and the regulations , this Act applies in relation to a standard 
patent or a petty patent granted under the 1952 Act as if the patent had been granted 
under this Act. 
 
 (2) A patent mentioned in subsection (1) does not have effect in any place in which it did 
not have effect immediately before the commencing day. 
  (3) Chapter 9 of this Act does not appl y in relation to a patent mentioned in 
subsection (1). 
 
 (4) Objection cannot be taken to a patent me ntioned in subsection (1), and such a patent 
is not invalid, so far as the invention is claimed in any claim, on any ground that would not have been available against the patent under the 1952 Act. 
 
234  Applications under 1952 Act 
 
 (1) Where, before the commencing day:                (a) a patent applicati on and provisional specification had been lodged under 
the 1952 Act; and 
              (b) a complete specification had not been lodged under that Act in respect of the 
application; and 
  (c) the application had not been withdrawn;   then, subject to this Chapter and the regul ations, this Act applies in relation to the 
application on and after that day as if it we re a provisional application under this Act. 
 
 (2) Where, before the commencing day: 
   (a) a patent application had been lodged under the 1952 Act; and 
              (b) a complete specification, or a petty patent specification, had been lodged 
under that Act in respect of the application; and  IP/N/1/AUS/P/5 
 Page 103 
 
 
                (c) the application had not been withdrawn or finally dealt with; 
  then, subject to this Chapter and the re gulations, this Act applies on and after that 
day: 
              (d) in relation to the app lication as if it were a comp lete application made under 
this Act; and 
              (e) in relation to the petty patent specification as if it were a complete 
specification filed under this Act in respect of the application. 
  (3) Chapter 5 of this Act does not apply in  relation to an application mentioned in 
subsection (2), but Part V of the 1952 Ac t, as in force immediately before the 
commencing day, continues to apply in relation to such an application. 
  (4) Chapter 9 of this Act does not apply in relation to:    (a) an application mentioned in subsection (2); or 
  (b) a patent granted on such an application. 
  (5) Objection cannot be taken to:    (a) an application mentioned in subsection (2); or   (b) a patent granted on such an application; 
  and such a patent is not invalid, so far as  the invention is claimed in any claim, on any 
ground that would not have been available against the application or patent, as the 
case may be, under the 1952 Act. 
  (6) A petty patent specification to which subsection (2) applies cannot be amended under 
this Act so as to include more than one claim. 
 
235  Other applications and proceedings under 1952 Act 
 
 (1) Subject to this Chapter and the regul ations, this Act applies, on and after the 
commencing day, to any application, requ est, action or proceeding made or started 
under the 1952 Act and not finally dealt with or determined under th at Act before that 
day as if the application, request, action or proceeding had been made or started under a corresponding provision of this Act. 
  (2) Subsection (1) does not apply in relation to an application covered by section 234 of 
this Act. 
 
236  Micro-organisms 
 
  Sections 41 and 42 of this Act do not apply in relation to a specification lodged 
before 7 July 1987. 
 
237   Orders, directions etc. under 1952 Act 
 
  Any report, order or direction made or given under the 1952 Act and in force 
immediately before the commencing day conti nues to have effect on and after that 
day as if it had been made or given unde r a corresponding provision of this Act. 
 IP/N/1/AUS/P/5 
Page 104  
 
  238  The Commissioner and Deputy Commissioner 
 
  The persons holding office as Commissione r of Patents and Deputy Commissioner of 
Patents immediately before the commencing day continue to hold those respective 
offices on and after that day. 
 
239  The Register of Patents and Register of Patent Attorneys 
 
 (1) On and after the commencing day, the Re gister of Patents under the 1952 Act is to be 
taken to form part of the Register of Patents under this Act. 
 
 (2) On and after the commencing day, the Register of Patent Attorneys under the 1952 
Act is to be taken to form part of the Re gister of Patent Attorneys under this Act. 
 
240  Registered patent attorneys 
 
  This Act applies, on and after the commenc ing day, in relation to a person who was, 
immediately before that day, a registered patent attorney under the 1952 Act as if the 
person had been registered as a patent attorney under this Act.  IP/N/1/AUS/P/5 
 Page 105 
 
 
  Schedule 1—Dictionary  
Section 3  
 
 In this Act, unless the contrary intention appears:  
 
application , in Chapter 15, means a patent applicati on, and includes a relevant international 
application. 
 
approved form  means a form approved by the Commissioner for the purposes of the provision in 
which the expression appears. 
 
associated technology  has the same meaning as in the Safeguards Act. 
 
Australia  includes each external Territory. 
 
Australian continental shelf  means the continental shelf,  within the meaning of the Seas and 
Submerged Lands Act 1973 , adjacent to the coast of Australia (including the coast of any island 
forming part of a State or Territory). 
 
Australian Register of Therapeutic Goods  means the register maintained under section 17 of the 
Therapeutic Goods Act 1989 . 
 
authority , in Chapter 15, has the same m eaning as in the Safeguards Act. 
 
basic application  means an application for protection in resp ect of an invention, being an application 
made in a Convention country. 
 
Budapest Treaty  means the Budapest Treaty on the Inte rnational Recognition of the Deposit of 
Microorganisms for the Purposes of Patent Procedur e signed at Budapest on 28 April 1977, as that 
treaty is in force for Australia from time to time, t ogether with the Regulations annexed to that treaty, 
as those Regulations are in force for Australia from time to time. 
 
certified , in respect of an innovation patent other than in section 19, means a certificate of 
examination issued by the Commissioner under pa ragraph 101E(e) in respect of the patent. 
 
claim  means: 
  (a) when used as a noun in relation to a pate nt—a claim (including a dependent claim) of 
the specification relating to the complete a pplication on which the patent was granted; 
and  
 (b) when used as a noun otherwise than in  relation to a patent—a claim (including a 
dependent claim) of a complete specification; and  
 (c) when used as a verb—to claim in a claim (including a dependent claim) of a complete 
specification. 
 
commencing day  means the day on which this Act commences. 
 
Commissioner  means the Commissioner of Patents. 
 IP/N/1/AUS/P/5 
Page 106  
 
  compensable person  means: 
  (a) in relation to a patent acquired by the Commonwealth—the patentee and any person 
recorded in the Register as having an interest in the patent; and  
 (b) in relation to an invention that is th e subject of a patent application and is so 
acquired—the nominated person in relation to the application. 
 
complete specification means (other than in section 116) a specifi cation filed in respect of a complete 
patent application or, if the specification has been  amended, the complete specification as amended. 
 
compulsory licence  means a licence granted under an order made under section 133. 
 
Convention applicant , in relation to a basic application,  means a person (or a body of persons, 
whether incorporated or not) who:  
 (a) has made the basic application; or  
 (b) is the assignee of that applicant; or   (c) would, on the grant of a patent on that application, be entitled to have the patent 
assigned to the person; or  
 (d) is the legal representative of a person men tioned in paragraph (a), (b) or (c); or  
 (e) has the consent of a person mentioned in paragraph (a), (b), (c) or (d) to make a 
Convention application based on that basic application. 
 
Convention application  means a patent application made under Part 2 of Chapter 8. 
 
Convention country  means a foreign country declared by th e regulations to be a Convention country 
for the purposes of this Act. 
 
deposit requirements  means the requirements specified in paragraphs 6(a) to (d), inclusive. 
 
depositary institution  means a body or institution that receives, accepts and stores micro-organisms 
and furnishes samples of micro-organisms.  
Deputy Commissioner  means a Deputy Commissioner of Patents. 
 
Designated Manager  has the meaning given by section 200A. 
 
Director  means the Director of Safeguards. 
 
eligible person , in relation to an invention, means a person to whom a patent for the invention may be 
granted under section 15. 
 
employee  means a person, other than the Commissioner or a Deputy Commissioner, who: 
 
 (a) is a person engaged under the Public Service Act 1999 and is employed in the Patent 
Office; or  
 (b) is not such a person but performs services, in the Patent Office, for or on behalf of the 
Commonwealth. 
  IP/N/1/AUS/P/5 
 Page 107 
 
 
  examination  means: 
  (a) in relation to a patent request and a complete specification relating to a standard 
patent—an examination of the request and specification under section 45, or a 
modified examination of the request and specification under section 48; or 
 (b) in relation to an innovation patent—an examination of the complete specification 
relating to the patent under section 101B. 
 
exclusive licensee  means a licensee under a licence grante d by the patentee and conferring on the 
licensee, or on the licensee and persons authorised by the licensee, the right to exploit the patented 
invention throughout the patent area to the ex clusion of the patentee and all other persons. 
 
exploit , in relation to an invention, includes: 
  (a) where the invention is a product—make, hire, sell or otherwise dispose of the 
product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it 
for the purpose of doing any of those things; or  
 (b) where the invention is a method or process—use the method or process or do any act 
mentioned in paragraph (a) in respect of a product resulting from such use. 
 
Federal Court  means the Federal Court of Australia. 
 
file means file with the Patent Office. 
 
foreign aircraft  means an aircraft registered in a prescribed foreign country. 
 
foreign land vehicle  means a land vehicle owned by a person ordinarily resident in a prescribed 
foreign country. 
 
foreign vessel  means a vessel registered in a prescribed foreign country. 
 
formalities check means, in respect of an application for an innovation patent, the checking process 
undertaken under section 52 using the process set out in the regulations. 
 
infringement proceedings  means proceedings for infringement of a patent. 
 
innovation patent means letters patent for an i nvention granted under section 62. 
 
interested party , in relation to a patent application, mean s the applicant or a joint applicant, or a 
person who claims to be entitled to the grant of a pate nt on the application, either alone or jointly with 
another person. 
 
international application  has the same meaning as in the PCT. 
 
international depositary authority  has the same meaning as in the Budapest Treaty. 
 
international filing date , in relation to an international application, means: 
 (a) the date given to the international a pplication as its international filing date under 
Article 11 of the PCT; or  
 (b) if that date is revised under Article 14 of  the PCT—that international filing date as so 
revised. 
 [See also section 10]  
 IP/N/1/AUS/P/5 
Page 108  
 
  invention  means any manner of new manufacture the subject  of letters patent and grant of privilege 
within section 6 of the Statute of Monopolies, and includes an alleged invention. 
 
legal practitioner  means a barrister or solicitor of the High Court or of the Supreme Court of a State 
or Territory.  
legal representative , in relation to a deceased person, means a person to whom probate of the will of 
the deceased person, letters of administration of the estate of the deceased person, or any other similar grant, has been granted, whether in Australia or anywhere else, but does not include such a person 
who, under the terms of the grant, is not entitled to  do an act in relation to which the expression is 
used. 
 
licence  means a licence to exploit, or to authori se the exploitation of, a patented invention. 
 
main invention  has the meaning given in section 81. 
 
modified examination , in relation to a patent request and complete specification relating to an 
application for a standard patent, means an ex amination of the request and specification under 
section 48. 
 
nominated person  means the person identified in a patent re quest as the person to whom the patent is 
to be granted. 
 
non-infringement declaration  means a declaration mentioned in subsection 125(1). 
 
Official Journal  means the official journal mentioned in section 222. 
 
patent  means a standard patent or an innovation patent. 
 
patent application  means an application for a standard patent or an application for an innovation 
patent. 
 
patent area  means: 
  (a) Australia; and   (b) the Australian continental shelf; and   (c) the waters above the Australian continental shelf; and  
 (d) the airspace above Australia a nd the Australian continental shelf. 
 
patent of addition  means letters patent for an invention gr anted under Chapter 7 and includes, for the 
purposes of section 25, a patent of addition that has become an independent patent under section 83. 
 
Patent Office  means the Patent Office established under this Act. 
 
patent request  means a request for the grant of a patent to a nominated person. 
 
patentable invention  means an invention of the kind mentioned in section 18. 
 
patented process  means a process in respect of which a pate nt has been granted and is in force. 
 
patented product  means a product in respect of which a patent has been granted and is in force. 
  IP/N/1/AUS/P/5 
 Page 109 
 
 
  patentee  means the person for the time being entered in the Register as the grantee or proprietor of a 
patent. 
 
PCT  means the Patent Cooperation Treaty signed at W ashington on 19 June 1970, as that treaty is in 
force for Australia from time to time, together with  the Regulations annexed to that treaty, as those 
Regulations are in force for Australia from time to time. 
 
PCT application  means an international application: 
  (a) in which Australia is sp ecified as a designated State under Article 4(1)(ii) of the PCT; 
and  
 (b) which has been given an international filing date. 
 
permit , in Chapter 15, has the same meaning as in the Safeguards Act. 
 
pharmaceutical substance  means a substance (including a mixture or compound of substances) for 
therapeutic use whose application (or one  of whose applications) involves:  
  (a) a chemical interaction, or physico-chem ical interaction, with a human physiological 
system; or  
 (b) action on an infectious agent, or on a toxin or other poison, in a human body; 
 but does not include a substance that is solely for use in  in vitro diagnosis or in vitro testing. 
 
prescribed court  means the Federal Court, the Supreme Court of a State, the Supreme Court of the 
Australian Capital Territory, the Supreme Court of the Northern Territory or the Supreme Court of 
Norfolk Island.  
prescribed depositary institution  means: 
  (a) an international depositary authority,  whether in or outside Australia; or  
 (b) any other depositary institution in Austra lia that is prescribed for the purposes of this 
paragraph. 
 
prior art base  means: 
 (a) in relation to deciding whether an invention does or does not involve an inventive 
step or an innovative step: 
 
             (i) information in a document th at is publicly available, whether in or out of the 
patent area; and 
             (ii) information made public ly available through doing an act, whether in or out 
of the patent area. 
  (b) in relation to deciding whether an invention is or is not novel: 
 
  (i) information of a kind men tioned in paragraph (a); and  
              (ii) information contained in a published specification filed in respect of a 
complete application where: 
 
                           (A) if the information is, or were to be, the subject of a claim of the 
specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and  
                           (B) the specification was published after the priority date of the claim 
under consideration; and IP/N/1/AUS/P/5 
Page 110  
 
                             (C) the information was contained in the specification on its filing date 
and when it was published. 
 
 [Note: For the meaning of document  see section 25 of the Acts Interpretation Act 1901 .]  
 
prior art information  means: 
 
 (a) for the purposes of subsection 7(1)—information that is part of the prior art base in 
relation to deciding whether an i nvention is or is not novel; and  
 (b) for the purposes of subsection 7(3)—information that is part of the prior art base in 
relation to deciding whether an invention does or does not involve an inventive step; and  
 (c) for the purposes of subsection 7(5)—information that is part of the prior art base in 
relation to deciding whether an invention does or does not involve an innovative step. 
 
Professional Standards Board  means the Professional Standards Board for Patent and Trade Marks 
Attorneys established by section 227A.  
prohibition order  means an order under section 173. 
 
provisional specification  means a specification filed in respect of a provisional patent application. 
 
receiving Office  has the same meaning as in the PCT. 
 
re-examination means: 
  (a) in relation to a complete specification relating to an application for a standard 
patent—the re-examination of the comple te specification under Chapter 9; and 
 (b) in relation to an innovation patent—the re-examination of the innovation patent under 
Part 2 of Chapter 9A. 
 
Register  means the Register of Patents mentioned in section 186. 
 
registered , in relation to a patent, means entered in the Register of Patents. 
 
registered patent attorney  means a person registered as a patent attorney under this Act. 
 
relevant authority  means: 
 
 (a) in relation to the exploitation of an  invention by or for the Commonwealth—the 
Commonwealth; and  
 (b) in relation to the exploitation of an invention by or for a State—that State. 
 
relevant international application , in Chapter 15, means an interna tional application in relation to 
which the Patent Office is the receiving Office (even if  Australia is not specified in the application as 
a designated State under Article 4(1)(ii) of the PCT). 
 
relevant proceedings , in relation to a patent, means court proceedings: 
  (a) for infringement of the patent; or  
 (b) for revocation of the patent; or  
 (c) in which the validity of the patent, or of a claim, is in dispute. 
  IP/N/1/AUS/P/5 
 Page 111 
 
 
  rules relating to micro-organisms  means such provisions of the Budapest Treaty, and such provisions 
made by or under regulations made  under section 228, as are applicable. 
 
Safeguards Act  means the  Nuclear Non-Proliferation (Safeguards) Act 1987 . 
 
sealed  means sealed with the seal of the Patent Office. 
 
specification , in relation to an international application,  means the description, claims and drawings 
contained in the application. 
 
standard patent  means letters patent for an invention granted under section 61. 
 
State , in Chapter 17, includes the Australian Capital Territory, the Northern Territory and Norfolk 
Island. 
 
Statute of Monopolies  means the Imperial Act known as The Statute of Monopolies. 
 
supply  includes: 
  (a) supply by way of sale, exchange, lease, hire or hire-purchase; and  (b) offer to supply (incl uding supply by way of sale, exchange, lease, hire or 
hire-purchase). 
 
Territory  means a Territory in which this Act applies or to which this Act extends. 
 
therapeutic use  means use for the purpose of:  
 
 (a) preventing, diagnosing, curing or alleviating a disease, ailment, defect or injury in 
persons; or  
 (b) influencing, inhibiti ng or modifying a physiological process in persons; or  
 (c) testing the susceptibility of persons to a disease or ailment. 
 
this Act  includes the regulations. 
 
work , in relation to a patent ed invention, means: 
  (a) where the invention is a product—make or import the product; or  
 (b) where the invention is a method or process—use the method or process or do any act 
mentioned in paragraph (a) in respect of a product resulting from such use. 
 
1952 Act  means the Patents Act 1952 . 
 
1989 Amending Act  means the Patents Amendment Act 1989 . IP/N/1/AUS/P/5 
Page 112  
 
  Schedule 2—Consequential Amendments 
Section 229 
 
 
Note: 
 
The amendments made by this Schedule are incorporated in the 
compilations on SCALEplus. 
 
Companies Act 1981 
 Designs Act 1906   
Jurisdiction of Courts (Cross-vesting) Act 1987  
 Nuclear Non-Proliferation (Safeguards) Act 1987   Sales Tax Assessment Act (No. 1) 1930  
 
Trade Marks Act 1955   Industry, Technology and Commerce Legislation Amendment Act (No. 2) 1989 (No. 10, 1990) 
 
For access to the wording of the amen dments made by this Schedule, see 
Act No. 83, 1990. 
 
 
  IP/N/1/AUS/P/5 
 Page 113 
 
 
  Notes to the Patents Act 1990 
 
Note 1 
 
The Patents Act 1990  as shown in this compilation comprises Act No. 83, 1990 amended as indicated 
in the Tables below.  
The Patents Act 1990  was modified by the Patents Regulations 1991 (1991 No. 71 as amended) .  The 
modifications are not incorporated in this compilation.  For application, saving or transitional provisions made by the Corporations (Repeals, Consequentials 
and Transitionals) Act 2001, see  Act No. 55, 2001. 
 
All relevant information pertaining to appli cation, saving or transitional provisions prior 
to 27 July 1998 is not included in this compilation. For subsequent information see Table A. 
 
Table of Acts 
 
Act Number  
and year Date  
of Assent Date of 
commencement Application, 
saving or transitional provisions 
Patents Act 1990 
 83, 1990 30 Oct 1990 30 Apr 1991  
Industry, Technology and 
Commerce Legislation Amendment Act 1991 
 66, 1991 15 June 1991 S. 26: (a) — 
Industry, Technology and 
Regional Development Legislation Amendment Act 1994 
 58, 1994 9 Apr 1994 29 June 1994 ( see 
Gazette 1994, 
No. S211) — 
Industry, Science and 
Technology Legislation Amendment Act 1994 108, 1994 12 July 1994 Div. 2 of Part 2 (ss. 
4-6): 9 Aug 1994 Div. 5 of Part 2 (ss. 13-15): 13 July 1994 Remainder: Royal Assent 
 — 
Patents (World Trade 
Organization Amendments) Act 1994 154, 1994 13 Dec 1994 Ss. 4-7 and 12: 1 July 
1995 Remainder: 10 Jan 1995 
 Ss. 3, 7, 8, 
10, 12, 13 and 17  
Intellectual Property Laws 
Amendment Act 1998 100, 1998 27 July 1998 Schedules 1 and 2: 
27 Jan 1999 Remainder: Royal Assent Sch. 1 
(item 8), Sch. 2 (items 31, 32) and Sch. 3 (item 4) [see Table 
A] 
 IP/N/1/AUS/P/5 
Page 114  
 
  Public Employment 
(Consequential and Transitional) Amendment Act 1999 146, 1999 11 Nov 1999 Schedule 1 
(items 728-730): 5 Dec 1999 ( see 
Gazette  1999, 
No. S584)  (b) 
 — 
Patents Amendment 
(Innovation Patents) Act 2000 140, 2000 24 Nov 2000 24 May 2001  Sch. 2 (am. 
by 99, 2001, Sch. 2) [see 
Table A] 
as amended by     
Trade Marks and Other 
Legislation Amendment 
Act 2001 
 99, 2001 22 Aug 2001 Schedule 2: (c) — 
Corporations (Repeals, 
Consequentials and Transitionals) Act 2001 55, 2001 28 June 2001 Ss. 4-14 and 
Schedule 3 (item 401): 15 July 2001 (see Gazette  2001, 
No. S285) (d) 
 Ss. 4-14 
Industry, Science and 
Resources Legislation Amendment (Application of Criminal Code) Act 2001 
 140, 2001 1 Oct 2001 2 Oct 2001 S. 4 [ see 
Table A] 
Patents Amendment Act 2001 160, 2001 1 Oct 2001 Schedule 1: 1 Apr 
2002 Schedule 2: (e) 
Remainder: Royal Assent Sch. 1 
(items 13, 32, 33) [ see 
Table A] 
  IP/N/1/AUS/P/5 
 Page 115 
 
 
  Act Notes 
 
 
(a) Subsection 2(4) of the Industry, Technology and Commerce Legislation Amendment Act 1991  provides as follows: 
 
 (4) The amendments of the Patents Act 1990  are taken to commence, or to  have commenced, immediately 
after the commencement of the Patents Act 1990 . 
 
(b) The Patents Act 1990  was amended by Schedule 1 (items 728-730) only of the Public Employment (Consequential 
and Transitional) Amendment Act 1999 , subsections 2(1) and (2) of  which provide as follows: 
 
 (1) In this Act, commencing time means the time when the Public Service Act 1999  commences. 
 
 (2) Subject to this section, this Act commences at the commencing time. 
 
(c) The Patents Amendment (Innovation Patents) Act 2000  was amended by Schedule 2 only of the Trade Marks and 
Other Legislation Amendment Act 2001 , subsection 2(3) of which provides as follows: 
 
 (3) Schedule 2 commences, or is taken to have commenced, immediately after the commencement of the 
Patents Amendment (Innovation Patents) Act 2000 . 
 
 The Patents Amendment (Innovation Patents) Act 2000  came into operation on 24 May 2001. 
 
(d) The Patents Act 1990  was amended by Schedule 3 (item 401) only of the Corporations (Repea ls, Consequentials 
and Transitionals) Act 2001 , subsection 2(3) of which provides as follows: 
 
 (3) Subject to subsections (4) to (10), Schedule 3 commences, or is taken to have commenced, at the same 
time as the Corporations Act 2001 . 
 
(e) Subsection 2(4) of the Patents Amendment Act 2001  provides as follows: 
 
 (4) Schedule 2 is taken to have commenced  immediately after the commencement of the Patents 
Amendment (Innovation Patents) Act 2000 . 
 
 The Patents Amendment (Innovation Patents) Act 2000  came into operation on 24 May 2001. IP/N/1/AUS/P/5 
Page 116  
 
  Table of Amendments 
  ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
Provision affected How affected 
Chapter 1  
S. 3 .................................. am. Nos. 108 and 154, 19 94; No. 100, 1998; No. 140, 2000 
S. 4 .................................. rs. No. 140, 2000 S. 6 .................................. am. No. 100, 1998 Subheads. to s. 7(1), (2) .. ad. No. 140, 2000 S. 7 .................................. am. No. 140, 2000; No. 160, 2001 S. 12A ............................. ad. No. 140, 2001 Chapter 2  
Subhead. to s. 18(1) ........ ad. No. 140, 2000 S. 18 ................................ am. No. 140, 2000 S. 24 ................................ am. No. 140, 2000 S. 28 ................................ rs. No. 140, 2000 Chapter 3  
Ss. 33, 34......................... rs. No. 140, 2000 S. 35 ................................ am. No. 140, 2000 S. 36 ................................ rs. No. 140, 2000 S. 39 ................................ rep. No. 140, 2000 S. 40 ................................ am. No. 140, 2000 S. 43 ................................ am. No. 140, 2000 Heading to Part 2 of Chapt. 3  rs. No. 140, 2000 S. 45 ................................ am. No. 140, 2000; No. 160, 2001 S. 48 ................................ am. No. 140, 2000; No. 160, 2001 Heading to Div. 1 of Part 3  
of Chapt. 3  ad. No. 140, 2000 
S. 49 ................................ am. No. 140, 2000; No. 160, 2001 
Ss. 50, 51......................... rs. No. 140, 2000 Heading to Div. 2 of Part 3  
of Chapt. 3 ad. No. 140, 2000 
S. 52 ................................ rs. No. 140, 2000 
Chapter 4  
Ss. 54, 55......................... am. No. 140, 2000 S. 56 ................................ am. No. 66, 1991 S. 57 ................................ am. No. 140, 2000 Chapter 5  
Heading to Chapt. 5 ........ rs. No. 140, 2000 S. 59 ................................ am. No. 140, 2000 Chapter 6  
S. 61 ............................... am. No. 160, 2001 S. 62 ................................ rs. No. 140, 2000 S. 64 ................................ am. No. 140, 2000 S. 66 ................................ am. No. 140, 2000 S. 67 ................................ am. No. 154, 1994 S. 68 ................................ rs. No. 140, 2000 Heading to Part 3 of Chapt. 6  rs. No. 140, 2000 Heading to Div. 1 of Part 3  
of Chapt. 6 rep. No. 154, 1994 
ad. No. 100, 1998 rep. No. 140, 2000 
Div. 1 of Part 3 of Chapt. 6  
(s. 69) rep. No. 140, 2000 
S. 69 ................................ rep. No. 140, 2000  IP/N/1/AUS/P/5 
 Page 117 
 
 
   
ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
Provision affected How affected 
Heading to Div. 2 of Part 3  
of Chapt. 6 rep. No. 140, 2000 
Div. 2 of Part 3 of Chapt. 6  
(ss. 70-79) rep. No. 154, 1994 
Div. 2 of Part 3 of Chapt. 6  
(ss. 70-76, 76A, 77-79, 79A) ad. No. 100, 1998 
Ss. 70-76 ......................... rep. No. 154, 1994 
ad. No. 100, 1998 
S. 76A ............................. ad. No. 100, 1998 Ss. 77-79 ......................... rep. No. 154, 1994 
ad. No. 100, 1998 
S. 79A ............................. ad. No. 100, 1998 Chapter 6A  
Chapt 6A ......................... 
(ss. 79B, 79C) ad. No. 140, 2000 
Ss. 79B, 79C ................... ad. No. 140, 2000 
Chapter 7  
S. 80 ................................ rs. No. 140, 2000 S. 83 ................................ am. No. 154, 1994 
 rs. No. 100, 1998 
S. 84 ................................ rep. No. 154, 1994 Chapter 8  
Ss. 88, 89......................... am. No. 140, 2000 Chapter 9  
Heading to Chapt. 9 ....... rs. No. 140, 2000 S. 96A ............................. ad. No. 140, 2000 S. 97 ................................ am. No. 66, 1991; No. 160, 2001 S. 98 ................................ am. No. 140, 2000; No. 160, 2001 S. 99 ................................ am. No. 140, 2000 S. 100, ............................. am. No. 66, 1991 S. 100A .......................... ad. No. 160, 2001 Heading to s. 101 ........... rs. No. 160, 2001 S. 101 .............................. am. No. 66, 1991 Chapter 9A  
Chapt. 9A ........................ 
(ss. 101A-101P) ad. No. 140, 2000 
S. 101A ........................... ad. No. 140, 2000 
S. 101B............................ ad. No. 140, 2000  
 am. No. 160, 2001 
S. 101C............................ ad. No. 140, 2000 S. 101D ........................... ad. No. 140, 2000 
 rs. No. 160, 2001 
S. 101E............................ ad. No. 140, 2000 
 am. No. 160, 2001 
S. 101F............................ ad. No. 140, 2000 S. 101G ........................... ad. No. 140, 2000 
 am. No. 160, 2001 
Ss. 101H-101P ................ ad. No. 140, 2000 Chapter 10  
Subhead. to s. 102(1) ...... ad. No. 140, 2000 S. 102 .............................. am. No. 140, 2000; No. 160, 2001 S. 106 .............................. am. No. 140, 2000 Heading to s. 107 ............ am. No. 140, 2000 S. 107 .............................. am. No. 140, 2000 S. 108 .............................. rep. No. 140, 2000 IP/N/1/AUS/P/5 
Page 118  
 
  ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
Provision affected How affected 
S. 109 .............................. am. No. 140, 2000 
S. 111 .............................. rep. No. 140, 2000 
S. 114 .............................. am. No. 140, 2000 S. 114A ........................... ad. No. 140, 2000 Chapter 11  
S. 119 ............................. am. No. 160, 2001 S. 120 .............................. am. No. 140, 2000 S. 121A ........................... ad. No. 154, 1994 S. 126 .............................. am. No. 140, 2000 S. 129 .............................. rs. No. 140, 2000 S. 129A ........................... ad. No. 140, 2000 S. 130 .............................. am. No. 140, 2000 Notes to s. 130(3), (4) ..... ad. No. 140, 2000 Chapter 12  
S. 133 .............................. am. No. 154, 1994; No. 140, 2000 Heading to s. 134 ............ am. No. 140, 2000 S. 134 .............................. am. No. 140, 2000 S. 138 .............................. am. No. 140, 2000 Chapter 13  
S. 141 .............................. rs. No. 140, 2000 S. 142 .............................. am. No. 140, 2000; No. 160, 2001 S. 143A ........................... ad. No. 140, 2000 
 am. No. 160, 2001 
S. 143B ........................... ad. No. 160, 2001 Chapter 14  
S. 144 .............................. am. No. 140, 2000 Chapter 15  
S. 151 .............................. am. No. 140, 2000 S. 153 .............................. am. No. 140, 2000 Chapter 17  
S. 163 .............................. am. No. 154, 1994 S. 165 .............................. am. No. 154, 1994 S. 165A ........................... ad. No. 154, 1994 S. 169 .............................. am. No. 140, 2000 S. 174 .............................. am. No. 140, 2000 S. 176 .............................. am. No. 140, 2000 Chapter 18  
S. 178 .............................. am. No. 140, 2000 Ss. 179-181 ..................... am. No. 140, 2001 S. 185 .............................. rs. No. 100, 1998 Chapter 19  
S. 186 .............................. am. No. 140, 2000 S. 187 .............................. rs. No. 140, 2000 S. 191 .............................. am. No. 140, 2001 Chapter 20  
S. 198 .............................. rs. No. 100, 1998 S. 200 .............................. am. No. 100, 1998 S. 200A ........................... ad. No. 100, 1998 
 rs. No. 146, 1999 
S. 201 .............................. am. No. 100, 1998; No. 55, 2001 S. 202A ........................... ad. No. 100, 1998 S. 204 .............................. am. No. 100, 1998; No. 140, 2000  IP/N/1/AUS/P/5 
 Page 119 
 
 
   
ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
Provision affected How affected 
Chapter 21  
Ss. 207-209 ..................... am. No. 58, 1994 
Chapter 22  
S. 213 .............................. am. No. 100, 1998 S. 220 .............................. am. No. 100, 1998 S. 223 .............................. am. No. 66, 1991; No. 154,  1994; No. 140, 2000; No. 160, 2001 
S. 224 .............................. am. No. 100, 1998; No. 140, 2000 Heading to s. 225 ............ rs. No. 140, 2001 S. 225 .............................. am. No. 140, 2001 Note to s. 225 .................. ad. No. 140, 2001 S. 227 .............................. am. No. 100, 1998; No. 140, 2000 S. 227A ........................... ad. No. 100, 1998 S. 228 .............................. am. No. 140, 2000 Chapter 23  
S. 232 .............................. rep. No. 154, 1994 S. 233 .............................. am. No. 66, 1991 Schedule 1  
Schedule 1....................... am. No. 66, 1991; Nos. 58, 108 and 154, 1994; No. 100, 1998; 
No. 146, 1999; No. 140, 2000; No. 160, 2001 
 IP/N/1/AUS/P/5 
Page 120  
 
  Table A 
 
Application, saving or transitional provisions 
 
Intellectual Property Laws Amendment Act 1998 (No. 100, 1998) 
 
Schedule 1 
 
8  Application of amendments 
  The amendments made by this Schedule apply to: 
   (a) standard patents granted on or after the commencement of this item; and 
              (b) standard patents grante d before the commencement of this item (other than a 
standard patent granted for a term of 16  years and whose term at the time of 
the grant was due to end before 1 July 1995). 
 
Schedule 2 
 
31  Transitional—Register of Patent Attorneys 
  After the commencement of this item, the Regist er of Patent Attorneys kept under section 198 
of the Patents Act 1990  (as in force immediately before that commencement) is taken to form 
part of the Register of Patent Attorneys kept under section 198 of that Act as amended by this 
Schedule. 
 32  Transitional—registered patent attorneys 
 
(1) This item applies to a person who was, immedi ately before the commencement of this item, a 
registered patent attorney within the meaning of the Patents Act 1990 . 
 (2) The Patents Act 1990  has effect, after the commencement of this item, in relation to the 
person, as if the person had been registered as  a patent attorney under section 198 of the 
Patents Act 1990  as amended by this Schedule. 
 
Schedule 3 
 
4  Application  
 Section 227 of the Patents Act 1990  as amended by item 3 of this Schedule applies only in 
relation to a fee payable under that Act in respect of the doing of an act or the filing of a document that is to occur on or after the commencement of that item. 
 Patents Amendment (Innovation Patents) Act 2000  (No. 140, 2000) 
 
Schedule 2 
 1  Definitions 
 
 In this Schedule: 
 
 commencement day  means the day this Act commences. 
  IP/N/1/AUS/P/5 
 Page 121 
 
 
   new law  means the Patents Act 1990 as amended by this Act. 
 
 old law  means the Patents Act 1990 , and the regulations made under it, in force immediately 
before this Act commences. 
 
 petty patent  means letters patent for an invention granted under section 62 of the old law. 
 
2  Saving and application provisions relating to old law 
 
(1) Despite the amendments and repeals made by th is Act, the old law continues to apply, with 
the exceptions set out in the following subitems, to: 
  (a) petty patents in force immediat ely before the commencement day; and 
 (b) petty patents the term of which has expired before the commencement day; and 
 (c) applications for petty patents made before the commencement day but not decided 
upon by the Commissioner before that day; and 
 (d) petty patents granted on or after the co mmencement day on applications for a patent 
made before the commencement day. 
  The old law continues to apply as if those amendments and repeals had not been made. 
 
Exception—fees payable in respect of petty  patents after the commencement day 
 
(2) The amendments made by items 89 and 90 of Sche dule 1 are incorporated into the old law in 
relation to fees payable in respect of petty patents on or after the commencement day. 
  Exception—under subsection 33(2) of the old la w only innovation patents may be granted 
 
(3) Despite subsection 33(2) of the old law providing that the Commissioner may grant a person 
who applies for a petty patent if the matters listed in paragraphs 33( 2)(a), (b) and (c) are 
satisfied, the Commissioner, on or after the co mmencement day, may only grant the person an 
innovation patent. 
 
 Exception—under sections 34, 35 and 36 of the old law only innovation patents or standard 
patents may be granted 
 
(4) Despite section 34, 35 and 36 of the old law providing that the Commissioner may grant a 
person a patent, the Commissioner, on or after the commencement day, may only grant a 
person an innovation patent  or a standard patent. 
 
Note: Under the old law, patent  means a standard patent or a petty patent. This subitem ove rrides that meaning for grants 
of patent that the Commissioner make s on or after the commencement day. 
 
 Exception—divisional applications made after commencement day 
 
(5) Despite subsection 39(1) of the old law providi ng that a further complete application may be 
made for a standard patent or a petty pate nt, on or after the commencement day a further 
complete application may only be made, as provi ded for in that subsection, for a standard 
patent or an innovation patent. 
 
(6) Despite subsection 39(2) of the old law providing  that a patentee of a petty patent may make a 
further complete application for a petty pate nt, on or after the commencement day a further IP/N/1/AUS/P/5 
Page 122  
 
  complete application may only be made as provi ded for in that subsection for an innovation 
patent. 
3  Transitional—applications for petty patent s made before the commencement day may be 
converted to innovation patents or standard patents 
 (1) If, before the commencement day: 
  (a) a person files a complete application in respect of a petty patent; and  (b) a patent has not been accepted in respect of that application;  then, after that day, the person may conve rt the application, as provided for under 
subsection 104(2) of the old law. 
 (2) However, despite subsection 104(2) of the old law providing that the application may be for a 
standard patent or a petty patent, an applicati on may only be made for a standard patent or an 
innovation patent.  
 
4  Transitional—Register of Patents 
 
 Despite the continuation of section 186 of the old law by subitem 2(1):  (a) entries on the Register of Patents imme diately before the commencement day relating 
to petty patents are included, after that day,  in the Register in the part dealing with 
standard patents; and 
 (b) after that day, entries relating to petty pa tents are to be entered in the Register in the 
part dealing with standard patents. 
 
Note: Section 186 of the new law provides for the Register of Pa tents to have 2 parts: one dealing with entries relating to 
standard patents and the other dealing with  entries relating to innovation patents. 
 
5  Continuity of Register of Patents not affected 
 
 To avoid doubt, the continuity of the Register  of Patents and the entries on it, are unaffected 
by the amendments made by this Act. 
 
6  Other transitional matters relating to innova tion patents and petty patents may be provided 
for in the regulations 
 
 The Governor-General may make regulations, not  inconsistent with this Act or the new law , 
prescribing other transitional matters, apart fro m transitional matters provided for in this 
Schedule, that are necessary or convenient  for carrying out or giving effect to: 
 
 (a) the introduction of the innovation patent scheme; and  (b) the limited continuation of the petty pate nt scheme as provided for in this Schedule. 
 
7  Application 
 
(1) The amendments made by items 86, 87, 89 a nd 90 of Schedule 1 do not apply in relation to 
fees that were due and payable before the day on which this Act commences. 
 (2) The amendments made by items 86, 87, 89 a nd 90 of Schedule 1 do not apply in relation to 
fees paid before the day on which this Act co mmences (even if they were not due until that 
day or a later day). 
  IP/N/1/AUS/P/5 
 Page 123 
 
 
  8  Saving of regulations for subsection 223(9) 
 
(1) Regulations in force for the purposes of subsection 223(9) of the Patents Act 1990  
immediately before the day on which this Act commences continue to have effect on and after 
that day as if they had been made for the purposes of that subsection as amended by this 
Schedule. 
 (2) Subitem 1 does not prevent the repeal or amendm ent of regulations continued by that subitem. 
 
_______________ 
 
Industry, Science and Resources Legislation Ame ndment (Application of Criminal Code) Act 2001 
 (No. 140, 2001) 
 
 
4  Application of amendments  
 (1) Each amendment made by this Act applies to acts and omissions that take place after 
the amendment commences. 
  (2) For the purposes of this section, if an act or omission is alleged to have taken place 
between 2 dates, one before and one on or after the day on which a particular 
amendment commences, the act or omission is alleged to have taken place before the amendment commences. 
 
_______________ 
 
Patents Amendment Act 2001 (No. 160, 2001) 
  
Schedule 1 
 
13  Application 
  The amendments made by this Part apply in relation to: 
  (a) patents for which the complete applicati on is made on or after the day on which this 
Schedule commences; and 
 (b) the making of complete applications fo r patents on or after the day on which this 
Schedule commences. 
 
32  Application 
 
(1) The amendments made by items 14 and 24 of th is Schedule apply in relation to an application 
if the patent request and complete specificati on in relation to that application has not been 
accepted under subsection 49(1) of the Patents Act 1990  before the commencement of this 
Schedule. 
 (2) The amendment made by item 15 of this Sche dule applies in relation to the acceptance of a 
patent request and complete specifi cation under subsection 49(1) of the Patents Act 1990  on 
or after the commencement of this Schedule. 
 IP/N/1/AUS/P/5 
Page 124  
 
  (3) The amendments made by items 16, 17 and 18 of  this Schedule apply in relation to the grant 
of a patent on or after the commencement of this Schedule. 
 (4) The amendment made by item 19 of this Schedule applies in relation to a patent unless the 
Commissioner has started examination of  the patent under section 101B of the Patents 
Act 1990  before the commencement of this Schedule. 
 (5) The amendments made by items 20, 21 and 25 of  this Schedule apply in relation to decisions 
of the Commissioner made under section 101E of the Patents Act 1990  on or after the 
commencement of this Schedule. 
 
(6) The amendment made by item 23 of this Schedule applies in relation to a patent if the date of 
the patent is the date on which this  Schedule commences or a later date. 
 (7) The amendments made by items 27, 28, 29, 30 and 31 of this Schedule apply in relation to 
applications made under section 223 of the Patents Act 1990  on or after the commencement 
of this Schedule. 
 
33  Saving of regulations 
 
(1) Regulations in force for th e purposes of a provision of the Patents Act 1990  immediately 
before the day on which this Schedule commences  continue to have effect on and after that 
day as if they had been made for the purposes of  that provision as amended by this Schedule. 
 
(2) Subitem (1) does not prevent the repeal or amendment of regulations continued by that 
subitem. 
__________