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This is a Bill, not an Act. For current law, see the Acts databases.
2013-2014
The Parliament of the
Commonwealth of Australia
HOUSE OF REPRESENTATIVES
Presented and read a first time
Intellectual Property Laws Amendment
Bill 2014
No. , 2014
(Industry)
A Bill for an Act to amend legislation relating to
intellectual property, and for related purposes
No. , 2014
Intellectual Property Laws Amendment Bill 2014
i
Contents
1
Short title ........................................................................................... 1
2
Commencement ................................................................................. 1
3
Schedule(s) ........................................................................................ 3
Schedule 1--TRIPS Protocol interim waiver
5
Part 1--Amendments
5
Patents Act 1990
5
Part 2--Application
21
Schedule 2--TRIPS Protocol: later commencing amendments
22
Patents Act 1990
22
Schedule 3--Plant Breeder's Rights Act 1994: Federal Circuit
Court
23
Plant Breeder's Rights Act 1994
23
Schedule 4--Australia New Zealand Single Economic Market
27
Part 1--Amendments
27
Designs Act 2003
27
Patents Act 1990
27
Plant Breeder's Rights Act 1994
40
Trade Marks Act 1995
41
Part 2--Transitional provisions
44
Schedule 5--Other amendments
47
Part 1--Document retention
47
Division 1--Amendments
47
Designs Act 2003
47
Patents Act 1990
47
Trade Marks Act 1995
47
Division 2--Application of amendments
47
Part 2--Technical amendments
48
Division 1--Amendments
48
ii
Intellectual Property Laws Amendment Bill 2014
No. , 2014
Patents Act 1990
48
Division 2--Application of amendments
50
No. , 2014
Intellectual Property Laws Amendment Bill 2014
1
A Bill for an Act to amend legislation relating to
1
intellectual property, and for related purposes
2
The Parliament of Australia enacts:
3
1 Short title
4
This Act may be cited as the Intellectual Property Laws
5
Amendment Act 2014.
6
2 Commencement
7
(1) Each provision of this Act specified in column 1 of the table
8
commences, or is taken to have commenced, in accordance with
9
column 2 of the table. Any other statement in column 2 has effect
10
according to its terms.
11
12
2
Intellectual Property Laws Amendment Bill 2014
No. , 2014
Commencement information
Column 1
Column 2
Column 3
Provision(s)
Commencement
Date/Details
1. Sections 1 to 3
and anything in
this Act not
elsewhere covered
by this table
The day this Act receives the Royal Assent.
2. Schedule 1
The start of the day after the end of the
period of 6 months beginning on the day this
Act receives the Royal Assent.
3. Schedule 2
The later of:
(a) immediately after the start of the day
after the end of the period of 6 months
beginning on the day this Act receives
the Royal Assent; and
(b) immediately after Article 31bis of the
Agreement on Trade-Related Aspects of
Intellectual Property Rights set out in
Annex 1C to the Marrakesh Agreement
Establishing the World Trade
Organization, done at Marrakesh on
15 April 1994, comes into force for
Australia.
However, the provision(s) do not commence
at all if the event mentioned in paragraph (b)
does not occur.
The Minister administering the Patents Act
1990 must announce by notice in the Gazette
the day the event mentioned in paragraph (b)
occurs.
4. Schedule 3
The day after the end of the period of 6
months beginning on the day this Act
receives the Royal Assent.
5. Schedule 4
A single day to be fixed by Proclamation.
However, if the provision(s) do not
commence within the period of 24 months
beginning on the day this Act receives the
Royal Assent, the provision(s) are repealed
on the day after the end of that period.
No. , 2014
Intellectual Property Laws Amendment Bill 2014
3
Commencement information
Column 1
Column 2
Column 3
Provision(s)
Commencement
Date/Details
6. Schedule 5,
Part 1
The day after this Act receives the Royal
Assent.
7. Schedule 5,
item 8
Immediately after the commencement of
item 32 of Schedule 6 to the Intellectual
Property Laws Amendment (Raising the
Bar) Act 2012.
15 April 2013
8. Schedule 5,
items 9 to 17
A single day to be fixed by Proclamation.
However, if the provision(s) do not
commence within the period of 6 months
beginning on the day this Act receives the
Royal Assent, they commence on the day
after the end of that period.
9. Schedule 5,
item 18
Immediately after the commencement of
item 32 of Schedule 6 to the Intellectual
Property Laws Amendment (Raising the
Bar) Act 2012.
15 April 2013
10. Schedule 5,
items 19 to 21
A single day to be fixed by Proclamation.
However, if the provision(s) do not
commence within the period of 6 months
beginning on the day this Act receives the
Royal Assent, they commence on the day
after the end of that period.
11. Schedule 5,
item 22
The day this Act receives the Royal Assent.
Note:
This table relates only to the provisions of this Act as originally
1
enacted. It will not be amended to deal with any later amendments of
2
this Act.
3
(2) Any information in column 3 of the table is not part of this Act.
4
Information may be inserted in this column, or information in it
5
may be edited, in any published version of this Act.
6
3 Schedule(s)
7
Each Act that is specified in a Schedule to this Act is amended or
8
repealed as set out in the applicable items in the Schedule
9
4
Intellectual Property Laws Amendment Bill 2014
No. , 2014
concerned, and any other item in a Schedule to this Act has effect
1
according to its terms.
2
TRIPS Protocol interim waiver Schedule 1
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
5
Schedule 1
--TRIPS Protocol interim waiver
1
Part 1
--Amendments
2
Patents Act 1990
3
1 Section 3 (list of definitions)
4
Omit "compulsory licence".
5
2 Section 3 (list of definitions)
6
Insert "eligible importing country".
7
3 Section 3 (list of definitions)
8
Insert "patented pharmaceutical invention".
9
4 Section 3 (list of definitions)
10
Insert "pharmaceutical product".
11
5 Section 3 (list of definitions)
12
Insert "PPI".
13
6 Section 3 (list of definitions)
14
Insert "PPI compulsory licence".
15
7 Section 3 (list of definitions)
16
Insert "PPI order".
17
8 Section 3 (list of definitions)
18
Insert "PPI order applicant".
19
9 Section 3 (list of definitions)
20
Insert "TRIPS Agreement".
21
10 Section 3 (list of definitions)
22
Insert "WTO General Council decision of 30 August 2003".
23
Schedule 1 TRIPS Protocol interim waiver
Part 1 Amendments
6
Intellectual Property Laws Amendment Bill 2014
No. , 2014
11 Before subsection 70(5)
1
Insert:
2
Meaning of first regulatory approval date
3
12 After subsection 70(5)
4
Insert:
5
(5A) For the purposes of paragraph (5)(a), disregard an inclusion in the
6
Australian Register of Therapeutic Goods of goods that contain, or
7
consist of, a pharmaceutical substance if the inclusion was sought
8
for the sole purpose of exporting the goods from Australia to
9
address a public health problem in an eligible importing country:
10
(a) in circumstances of national emergency or other
11
circumstances of extreme urgency; or
12
(b) by the public non-commercial use of the goods.
13
Note:
This subsection also applies in relation to an application for an
14
extension of the term of a standard patent (see paragraph 71(2)(b)).
15
Meaning of pre-TGA marketing approval
16
13 At the end of paragraph 71(2)(b)
17
Add ", as worked out under subsection 70(5A) (if applicable)".
18
14 Before section 133
19
Insert:
20
Part 1--Introduction
21
22
132A Simplified outline of this Chapter
23
This Chapter provides for court orders requiring the grant of
24
compulsory licences in respect of patented inventions.
25
Special provision is made for compulsory licences to exploit
26
patented pharmaceutical inventions. This is to enable the
27
manufacture of a pharmaceutical product in Australia for export to
28
TRIPS Protocol interim waiver Schedule 1
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
7
an eligible importing country, to address public health problems in
1
that country.
2
This Chapter also provides generally for the surrender of patents,
3
and for court orders revoking patents.
4
Part 2--Compulsory licences (general)
5
6
132B Simplified outline of this Part
7
The Federal Court may make an order under this Part requiring the
8
grant of a compulsory licence to work a patented invention.
9
The court may order a compulsory licence to be granted if the
10
reasonable requirements of the public are not being met with
11
respect to a patented invention.
12
The reasonable requirements of the public relate, broadly speaking,
13
to whether Australian trade or industry is unreasonably affected by
14
the actions of the patentee in relation to the manufacture or
15
licensing of the invention (or the carrying on of a patented
16
process).
17
The court may also order a compulsory licence to be granted if the
18
patentee has engaged in restrictive trade practices in connection
19
with the patent under the Competition and Consumer Act 2010 or
20
under an application law (within the meaning of that Act).
21
The court may order a patent to be revoked after an order for a
22
compulsory licence has been made (on the same grounds that apply
23
to an order for a compulsory licence).
24
The patentee must be paid an agreed amount of remuneration, or an
25
amount of remuneration determined by the court.
26
15 Section 133 (heading)
27
Repeal the heading, substitute:
28
Schedule 1 TRIPS Protocol interim waiver
Part 1 Amendments
8
Intellectual Property Laws Amendment Bill 2014
No. , 2014
133 Compulsory licences--general
1
16 At the end of subsection 133(1)
2
Add:
3
Note:
For compulsory licences for the manufacture and export of patented
4
pharmaceutical inventions to eligible importing countries, see Part 3.
5
However, Part 3 does not prevent a compulsory licence from being
6
ordered under this Part in relation to such an invention (see
7
section 136C).
8
17 Section 134 (heading)
9
Repeal the heading, substitute:
10
134 Revocation of patent after grant of compulsory licence under
11
section 133
12
18 Subsection 134(1)
13
After "compulsory licence", insert "ordered under section 133".
14
19 After section 136A
15
Insert:
16
Part 3--Patented pharmaceutical invention
17
compulsory licences (for manufacture and
18
export to eligible importing countries)
19
Division 1--Introduction
20
136B Simplified outline of this Part
21
The Federal Court may make an order under this Part requiring the
22
grant of a compulsory licence to exploit a patented pharmaceutical
23
invention for manufacture and export to an eligible importing
24
country.
25
The court may order a compulsory licence to be granted if the
26
proposed use of the pharmaceutical product is to address a public
27
health issue in the eligible importing country:
28
TRIPS Protocol interim waiver Schedule 1
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
9
(a)
in a national emergency (or other extremely urgent
1
circumstances); or
2
(b)
by the public non-commercial use of the product.
3
The order may be amended or revoked by another order of the
4
court.
5
The patentee must be paid an agreed amount of remuneration, or an
6
amount of remuneration determined by the court.
7
136C Relationship between Parts 2 and 3
8
This Part does not prevent a compulsory licence from being
9
ordered under Part 2 in relation to a patented pharmaceutical
10
invention.
11
Division 2--Patented pharmaceutical invention
12
compulsory licences
13
136D PPI compulsory licences--applications for orders
14
Application for order
15
(1) A person (the PPI order applicant) may apply to the Federal Court
16
for an order (the PPI order) under section 136E requiring the
17
patentee of a patented pharmaceutical invention to grant the PPI
18
order applicant a licence (a PPI compulsory licence) to exploit the
19
invention to the extent necessary for the purposes of manufacturing
20
a pharmaceutical product in Australia for export to an eligible
21
importing country.
22
Note 1:
A patented pharmaceutical invention may be a patented product or a
23
patented process: see the definition of patented pharmaceutical
24
invention in Schedule 1.
25
Note 2:
For remuneration in respect of a licence, see section 136J.
26
(2) However, a person cannot apply for an order in respect of an
27
innovation patent unless the patent has been certified.
28
Schedule 1 TRIPS Protocol interim waiver
Part 1 Amendments
10
Intellectual Property Laws Amendment Bill 2014
No. , 2014
Statement--eligible importing country
1
(3) An application must include a copy of a statement made by or on
2
behalf of, and with the authorisation of, the eligible importing
3
country to the effect that it will take reasonable measures within its
4
means, proportionate to its administrative capacities and to the risk
5
of trade diversion, to prevent re-exportation from its territory of a
6
pharmaceutical product imported into its territory in accordance
7
with a PPI compulsory licence.
8
Statement--importer
9
(4) If the pharmaceutical product is to be imported on behalf of, and
10
with the authorisation of, the eligible importing country, an
11
application must also include a copy of a statement made by the
12
importer to the effect that it will take reasonable measures within
13
its means to prevent the pharmaceutical product from being used
14
other than in accordance with a PPI compulsory licence.
15
Parties
16
(5) The following are parties to proceedings on an application under
17
this section:
18
(a) the PPI order applicant;
19
(b) the patentee;
20
(c) any person claiming an interest in the patent as exclusive
21
licensee or otherwise;
22
(d) at the option of the eligible importing country--that country.
23
136E PPI compulsory licences--orders
24
(1) After hearing an application for a PPI order under section 136D,
25
the Federal Court may, subject to this Part, make the order sought
26
if the court is satisfied of all of the following matters:
27
(a) the application is made in good faith;
28
(b) the pharmaceutical product is to be imported:
29
(i) by the eligible importing country; or
30
(ii) by a person (the third party importer) on behalf of, and
31
with the authorisation of, the eligible importing country;
32
(c) the proposed use of the pharmaceutical product is to address
33
a public health problem in the eligible importing country:
34
TRIPS Protocol interim waiver Schedule 1
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
11
(i) in circumstances of national emergency or other
1
circumstances of extreme urgency; or
2
(ii) in other circumstances--by the public non-commercial
3
use of the pharmaceutical product;
4
(d) exploiting the patented pharmaceutical invention is necessary
5
to enable the import and proposed use of the pharmaceutical
6
product as mentioned in paragraphs (b) and (c);
7
(e) if subparagraph (c)(ii) applies:
8
(i) the PPI order applicant has given the patentee a notice
9
in the approved form seeking from the patentee an
10
authorisation to exploit the patented pharmaceutical
11
invention for public non-commercial use; and
12
(ii) during the 30 days beginning when the notice was
13
given, the PPI order applicant has tried, without success,
14
to obtain such an authorisation from the patentee on
15
reasonable terms and conditions;
16
(f) the notification requirements prescribed by regulation in
17
relation to the importation of the pharmaceutical product into
18
the eligible importing country have been complied with;
19
(g) the PPI order applicant, the eligible importing country and, if
20
there is a third party importer, that importer, will take
21
reasonable measures to prevent a pharmaceutical product that
22
is exported from Australia in accordance with a PPI
23
compulsory licence from being used for a purpose other than
24
the purpose of addressing the public health problem
25
mentioned in paragraph (c).
26
(2) Without limiting the matters that the court may take into account in
27
deciding whether it is satisfied of a matter mentioned in
28
subsection (1), the court must take into account any matters
29
prescribed by regulation.
30
(3) A regulation made for the purposes of paragraph (1)(f) may:
31
(a) without limiting subsection 33(3A) of the Acts Interpretation
32
Act 1901, prescribe different notification requirements for the
33
importation of pharmaceutical products into eligible
34
importing countries of different kinds; and
35
(b) despite subsection 14(2) of the Legislative Instruments Act
36
2003, refer to eligible importing countries (or different kinds
37
of eligible importing countries) by applying, adopting or
38
incorporating, with or without modification, any matter
39
Schedule 1 TRIPS Protocol interim waiver
Part 1 Amendments
12
Intellectual Property Laws Amendment Bill 2014
No. , 2014
contained in any other instrument or other writing as in force
1
or existing from time to time.
2
136F PPI compulsory licences--terms
3
(1) A PPI order must direct that the PPI compulsory licence is granted
4
on the following terms:
5
(a) no more than the quantity of the pharmaceutical product that
6
is determined by the Federal Court to be necessary to meet
7
the needs of the eligible importing country is manufactured;
8
(b) the entirety of the pharmaceutical product manufactured for
9
that purpose is exported to that country;
10
(c) the pharmaceutical product is labelled and marked in
11
accordance with the regulations;
12
(d) before shipment of the pharmaceutical product begins, the
13
shipment information prescribed by regulation is made
14
available on a website by, or on behalf of, the licensee for a
15
minimum period prescribed by regulation;
16
(e) the duration of the licence is only for the period of time
17
determined by the Federal Court to be necessary to address
18
the public health problem concerned;
19
(f) the licence does not give the licensee, or a person authorised
20
by the licensee, the exclusive right to exploit the patented
21
pharmaceutical invention;
22
(g) the licence is to be assignable only in connection with an
23
enterprise or goodwill in connection with which the licence is
24
used;
25
(h) the licensee must give the Commissioner the information
26
prescribed by regulation in relation to the licence in
27
accordance with the regulations.
28
(2) A PPI order may also direct that the licence is to be granted on any
29
other terms specified in the order, including terms covering:
30
(a) other requirements relating to the labelling and marking of
31
the pharmaceutical product; and
32
(b) other information to be made available by the licensee and
33
the way in which it is to be made available.
34
(3) However, a term specified in a PPI order must not be inconsistent
35
with any regulations prescribed for the purposes of
36
paragraph (1)(c), (d) or (h).
37
TRIPS Protocol interim waiver Schedule 1
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
13
136G PPI compulsory licences--amendment
1
Application for order
2
(1) A person may apply to the Federal Court for an order amending
3
any of the following terms of a PPI compulsory licence:
4
(a) the quantity of the pharmaceutical product concerned;
5
(b) how the pharmaceutical product is labelled and marked;
6
(c) the duration of the licence;
7
(d) the information that is to be made available by the licensee
8
and the way it is to be made available.
9
Note:
For remuneration in respect of the licence as amended, see
10
section 136J.
11
Order
12
(2) The court may make the order sought in relation to a term if it is
13
satisfied that:
14
(a) it is just to do so in all the circumstances; and
15
(b) the legitimate interests of the following are not likely to be
16
adversely affected by the amendment of the term:
17
(i) the patentee;
18
(ii) any person claiming an interest in the patent as
19
exclusive licensee or otherwise;
20
(iii) the licensee;
21
(iv) the eligible importing country.
22
(3) However, an amended term must not be inconsistent with any
23
regulations prescribed for the purposes of paragraph 136F(1)(c),
24
(d) or (h).
25
Parties
26
(4) The following are parties to any proceedings under this section:
27
(a) the applicant under subsection (1);
28
(b) the patentee;
29
(c) any person claiming an interest in the patent as exclusive
30
licensee or otherwise;
31
(d) the licensee;
32
(e) at the option of the eligible importing country--that country.
33
Schedule 1 TRIPS Protocol interim waiver
Part 1 Amendments
14
Intellectual Property Laws Amendment Bill 2014
No. , 2014
136H PPI compulsory licences--revocation
1
Application
2
(1) A person may apply to the Federal Court for an order revoking a
3
PPI compulsory licence.
4
Note:
For remuneration in respect of the use of a PPI compulsory licence
5
while it is in force, see section 136J.
6
Federal Court may revoke licence
7
(2) The Federal Court may make the order sought if the court is
8
satisfied that:
9
(a) one or more of the following applies:
10
(i) the substantive circumstances that justified the grant of
11
the licence have ceased to exist and are unlikely to
12
recur;
13
(ii) the licensee has not complied with the terms of the
14
licence;
15
(iii) if an amount of remuneration has been agreed or
16
determined under section 136J--the amount has not
17
been paid within the time agreed or determined; and
18
(b) the legitimate interests of the licensee or the eligible
19
importing country are not likely to be adversely affected by
20
the revocation.
21
Parties
22
(3) The following are parties to any proceedings under this section:
23
(a) the applicant for revocation;
24
(b) the licensee;
25
(c) at the option of the eligible importing country--that country.
26
TRIPS Protocol interim waiver Schedule 1
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
15
Division 3--Remuneration
1
136J PPI compulsory licences--remuneration
2
Working out amount of remuneration
3
(1) The patentee is to be paid an amount agreed or determined under
4
subsection (3) in respect of the use of a patented pharmaceutical
5
invention authorised by a PPI compulsory licence.
6
(2) For the purposes of subsection (1), the use of a patented
7
pharmaceutical invention authorised by the PPI compulsory licence
8
is:
9
(a) while it is in force--the use authorised by the licence as
10
granted and as amended (from time to time) under
11
section 136G; or
12
(b) if it has ceased to be in force (whether because it was
13
revoked or otherwise)--the actual use of the patented
14
pharmaceutical invention under the licence while it was in
15
force.
16
(3) For the purposes of subsection (1), the amount is:
17
(a) an amount agreed between the patentee and the PPI order
18
applicant, licensee or former licensee (as the case requires);
19
or
20
(b) if paragraph (a) does not apply--an amount determined by
21
the Federal Court to be adequate remuneration taking into
22
account the economic value to the eligible importing country
23
of the use of the patented pharmaceutical invention
24
authorised by the PPI compulsory licence.
25
Application to make or amend a determination
26
(4) A person may apply to the Federal Court:
27
(a) to make a determination under paragraph (3)(b); or
28
(b) to amend a determination made under that paragraph.
29
Note:
Grounds for an application under paragraph (b) may include the fact
30
that the terms of the PPI compulsory licence have been amended, or
31
the licence has been revoked.
32
Schedule 1 TRIPS Protocol interim waiver
Part 1 Amendments
16
Intellectual Property Laws Amendment Bill 2014
No. , 2014
Parties
1
(5) The following are parties to any proceedings under this section:
2
(a) the applicant for the determination or the amendment of the
3
determination;
4
(b) the PPI order applicant;
5
(c) the licensee;
6
(d) the patentee of the patented pharmaceutical invention;
7
(e) any person claiming an interest in the patent as exclusive
8
licensee or otherwise.
9
Can PPI be exploited if remuneration is not agreed or determined?
10
(6) To avoid doubt, if the proposed use of the pharmaceutical product
11
is to address a public health problem in the eligible importing
12
country in circumstances of national emergency or other
13
circumstances of extreme urgency, the licensee may exploit a
14
patented pharmaceutical invention under a PPI compulsory licence,
15
as granted or amended (as the case may be), whether or not an
16
amount has been agreed or determined under this section.
17
(7) However, if the proposed use of the pharmaceutical product is to
18
address a public health problem in the eligible importing country in
19
other circumstances, by the public non-commercial use of the
20
pharmaceutical product, the licensee must not exploit a patented
21
pharmaceutical invention under a PPI compulsory licence unless an
22
amount has been agreed or determined under this section.
23
Can PPI compulsory licence be revoked if remuneration is not
24
agreed or determined?
25
(8) To avoid doubt, a PPI compulsory licence may be revoked whether
26
or not an amount has been agreed or determined under this section.
27
Division 4--General
28
136K PPI compulsory licences--nature of orders
29
Without prejudice to any other method of enforcement, a PPI order
30
operates as if it were embodied in a deed granting or amending a
31
licence and executed by the patentee and all other necessary
32
parties.
33
TRIPS Protocol interim waiver Schedule 1
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
17
136L PPI compulsory licences--consistency of orders with
1
international agreements
2
A PPI order must not be made that is inconsistent with a treaty
3
between the Commonwealth and a foreign country.
4
136M PPI compulsory licences--applications heard together
5
Nothing in this Part prevents the Federal Court from dealing with
6
the following applications together:
7
(a) applications for different PPI orders, or for the amendment or
8
revocation of such orders;
9
(b) applications for determinations under paragraph 136J(3)(b)
10
for remuneration in relation to different PPI compulsory
11
licences, or for the amendment of such determinations.
12
Part 4--Surrender and revocation of patents
13
14
136N Simplified outline of this Part
15
A patentee may offer to surrender a patent by giving the
16
Commissioner written notice.
17
The Commissioner may accept the offer of surrender, and revoke
18
the patent, after hearing all interested parties. If court proceedings
19
are pending in relation to the patent, leave of the court, or the
20
consent of the parties, is required. The Commissioner must not
21
accept the offer if a compulsory licence ordered under Part 2 is in
22
force in relation to the patent.
23
In addition, a court may revoke a patent on the following grounds:
24
(a)
the patentee is not entitled to the patent;
25
(b)
the invention is not a patentable invention;
26
(c)
the patent was (broadly speaking) improperly obtained;
27
(d)
the patent was (broadly speaking) obtained on the basis
28
of a non-compliant specification.
29
Schedule 1 TRIPS Protocol interim waiver
Part 1 Amendments
18
Intellectual Property Laws Amendment Bill 2014
No. , 2014
20 Subsection 137(5)
1
Omit "compulsory licence", substitute "licence ordered under Part 2".
2
21 After section 138
3
Insert:
4
Part 5--Other matters
5
6
138A Simplified outline of this Part
7
This Part deals with the parties to proceedings under this Chapter
8
(other than proceedings under Part 3).
9
This Part also enables the Commissioner to appear and be heard in
10
all proceedings under this Chapter.
11
22 At the end of subsection 139(1)
12
Add:
13
Note:
See Part 3 for details of parties to proceedings under that Part.
14
23 Subsection 139(2)
15
Omit "section 133, 134 or 138", substitute "this Chapter".
16
24 At the end of subsection 228(1)
17
Add:
18
; and (f) for the purpose of carrying out or giving effect to the WTO
19
General Council decision of 30 August 2003.
20
25 After subsection 228(4)
21
Insert:
22
(5) Despite subsection 14(2) of the Legislative Instruments Act 2003,
23
regulations made for the purposes of the definition of eligible
24
importing country in Schedule 1 may make provision in relation to
25
a matter by applying, adopting or incorporating, with or without
26
modification, any matter contained in any other instrument or other
27
writing as in force or existing from time to time.
28
TRIPS Protocol interim waiver Schedule 1
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
19
26 Schedule 1 (definition of compulsory licence)
1
Repeal the definition.
2
27 Schedule 1
3
Insert:
4
eligible importing country means a foreign country of a kind
5
prescribed by regulation.
6
Note:
A regulation made for the purposes of this definition may make
7
provision in relation to a matter by applying, adopting or
8
incorporating, with or without modification, any matter contained in
9
any other instrument or other writing as in force or existing from time
10
to time (see subsection 228(5)).
11
28 Schedule 1
12
Insert:
13
patented pharmaceutical invention, in relation to a pharmaceutical
14
product, means:
15
(a) if the product is a patented product--the patented product; or
16
(b) if the product results from the use of a patented process--the
17
patented process.
18
29 Schedule 1
19
Insert:
20
pharmaceutical product means any patented product, or product
21
manufactured through a patented process, of the pharmaceutical
22
sector.
23
Example: Examples of a pharmaceutical product include:
24
(a) active ingredients necessary for manufacturing such a product;
25
and
26
(b) diagnostic kits needed for using such a product.
27
30 Schedule 1
28
Insert:
29
PPI is short for patented pharmaceutical invention.
30
31 Schedule 1
31
Insert:
32
Schedule 1 TRIPS Protocol interim waiver
Part 1 Amendments
20
Intellectual Property Laws Amendment Bill 2014
No. , 2014
PPI compulsory licence has the meaning given by section 136D.
1
32 Schedule 1
2
Insert:
3
PPI order has the meaning given by section 136D.
4
33 Schedule 1
5
Insert:
6
PPI order applicant has the meaning given by section 136D.
7
34 Schedule 1
8
Insert:
9
TRIPS Agreement means the Agreement on Trade-Related
10
Aspects of Intellectual Property Rights set out in Annex 1C to the
11
Marrakesh Agreement establishing the World Trade Organization,
12
done at Marrakesh on 15 April 1994, as Annex 1C is in force for
13
Australia from time to time.
14
Note:
The WTO Agreement is in Australian Treaty Series 1995 No. 8
15
([1995] ATS 8) and could in 2014 be viewed in the Australian
16
Treaties Library on the AustLII website (http://www.austlii.edu.au).
17
35 Schedule 1
18
Insert:
19
WTO General Council decision of 30 August 2003 means the
20
decision of the World Trade Organization General Council of
21
30 August 2003 (including the Annex to the decision) on the
22
implementation of paragraph 6 of the Doha Declaration on the
23
TRIPS Agreement and public health.
24
Note:
The decision could in 2014 be viewed on the World Trade
25
Organization website (http://www.wto.org).
26
TRIPS Protocol interim waiver Schedule 1
Application Part 2
No. , 2014
Intellectual Property Laws Amendment Bill 2014
21
Part 2
--Application
1
36 Application of amendments
2
(1)
The amendments of the Patents Act 1990 made by this Schedule apply
3
in relation to patents granted before, on and after the commencement of
4
this Schedule.
5
(2)
The amendments of sections 70 and 71 of the Patents Act 1990 made by
6
this Schedule apply in relation to an application that is made on or after
7
the commencement of this Schedule to include a pharmaceutical
8
substance in the Australian Register of Therapeutic Goods.
9
Schedule 2 TRIPS Protocol: later commencing amendments
22
Intellectual Property Laws Amendment Bill 2014
No. , 2014
Schedule 2
--TRIPS Protocol: later
1
commencing amendments
2
3
Patents Act 1990
4
1 Section 3 (list of definitions)
5
Omit "WTO General Council decision of 30 August 2003".
6
2 Paragraph 228(1)(f)
7
Omit "WTO General Council decision of 30 August 2003", substitute
8
"TRIPS Agreement".
9
3 Schedule 1 (definition of WTO General Council decision of
10
30 August 2003)
11
Repeal the definition.
12
Plant Breeder's Rights Act 1994: Federal Circuit Court Schedule 3
No. , 2014
Intellectual Property Laws Amendment Bill 2014
23
Schedule 3
--Plant Breeder's Rights Act 1994:
1
Federal Circuit Court
2
3
Plant Breeder's Rights Act 1994
4
1 Subsection 3(1) (definition of Court)
5
Repeal the definition.
6
2 Subsection 3(1)
7
Insert:
8
Federal Circuit Court means the Federal Circuit Court of
9
Australia.
10
3 Subsection 3(1)
11
Insert:
12
Federal Court means the Federal Court of Australia.
13
4 Subsection 39(5)
14
Repeal the subsection, substitute:
15
(5) Nothing in this section affects the power of:
16
(a) the Federal Court, or a Judge of that Court, under
17
subsection 44A(2) of the AAT Act; or
18
(b) the Federal Circuit Court, or a Judge of that Court, under
19
subsection 44A(2A) of that Act;
20
where an appeal is begun in that court from a decision of the AAT.
21
5 Subsection 50(7)
22
Repeal the subsection, substitute:
23
(7) Nothing in this section affects the power of:
24
(a) the Federal Court, or a Judge of that Court, under
25
subsection 44A(2) of the AAT Act; or
26
(b) the Federal Circuit Court, or a Judge of that Court, under
27
subsection 44A(2A) of that Act.
28
Schedule 3 Plant Breeder's Rights Act 1994: Federal Circuit Court
24
Intellectual Property Laws Amendment Bill 2014
No. , 2014
6 Subsection 54(1)
1
Omit "Court", substitute "Federal Court or the Federal Circuit Court".
2
7 Subsections 54(3) and (4)
3
Omit "Court" (wherever occurring), substitute "court".
4
8 Subsection 55(1)
5
Omit "Court", substitute "Federal Court or the Federal Circuit Court".
6
9 Subsections 55(3) and (4)
7
Omit "Court", substitute "court".
8
10 Section 56 (heading)
9
Repeal the heading, substitute:
10
56 Jurisdiction of the Federal Court
11
11 Subsection 56(1)
12
Omit "Court" (wherever occurring), substitute "Federal Court".
13
12 At the end of subsection 56(1)
14
Add:
15
Note:
A matter may also be transferred to the Federal Court from the Federal
16
Circuit Court: see section 39 of the Federal Circuit Court of Australia
17
Act 1999.
18
13 Subsection 56(2)
19
Repeal the subsection, substitute:
20
(2) That jurisdiction is exclusive of the jurisdiction of all other courts
21
other than the jurisdiction of:
22
(a) the Federal Circuit Court under subsection 56A(2); and
23
(b) the High Court under section 75 of the Constitution.
24
14 Subsection 56(3)
25
Omit "Court" (wherever occurring), substitute "Federal Court".
26
Plant Breeder's Rights Act 1994: Federal Circuit Court Schedule 3
No. , 2014
Intellectual Property Laws Amendment Bill 2014
25
15 Subsection 56(4)
1
Omit "Court", substitute "Federal Court".
2
16 Subsection 56(5)
3
Omit "the Court", substitute "the Federal Court".
4
17 Subsection 56(5)
5
Omit "rules", substitute "Rules".
6
Note:
This item fixes a typographical error.
7
18 After section 56
8
Insert:
9
56A Jurisdiction of Federal Circuit Court
10
(1) The Federal Circuit Court has jurisdiction with respect to matters
11
in which actions may, under this Part, be begun in the Federal
12
Circuit Court.
13
Note:
A matter may also be transferred to the Federal Circuit Court from the
14
Federal Court: see section 32AB of the Federal Court of Australia Act
15
1976.
16
(2) That jurisdiction is exclusive of the jurisdiction of all other courts,
17
other than the jurisdiction of:
18
(a) the Federal Court under subsection 56(2) of this Act; and
19
(b) the High Court under section 75 of the Constitution.
20
(3) The relief that the Federal Circuit Court may grant in an action or
21
proceeding for infringement of PBR includes an injunction (subject
22
to such terms, if any, as the Federal Circuit Court thinks fit) and, at
23
the option of the plaintiff, either damages or an account of profits.
24
(4) The regulations may make provision in relation to the practice and
25
procedure of the Federal Circuit Court in actions under this Act,
26
including provision prescribing the time within which any action
27
may be begun, or any other act or thing may be done, and
28
providing for the extension of any such time.
29
(5) Subsection (4) does not limit the power of the Judges of the
30
Federal Circuit Court, or a majority of them, to make Rules of
31
Court under section 81 of the Federal Circuit Court of Australia
32
Schedule 3 Plant Breeder's Rights Act 1994: Federal Circuit Court
26
Intellectual Property Laws Amendment Bill 2014
No. , 2014
Act 1999 that are consistent with the regulations referred to in that
1
subsection.
2
19 Subsection 57(1)
3
Omit "The Court", substitute "A court".
4
20 Subsection 57(1)
5
Omit "the Court", substitute "the court".
6
21 Section 72
7
Omit "the High Court Rules and the Federal Court Rules", substitute
8
"Rules of Court of the High Court, the Federal Court or the Federal
9
Circuit Court".
10
Australia New Zealand Single Economic Market Schedule 4
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
27
Schedule 4
--Australia New Zealand Single
1
Economic Market
2
Part 1
--Amendments
3
Designs Act 2003
4
1 Section 145
5
Before "Where", insert "(1)".
6
2 Section 145
7
After "Australia", insert "or New Zealand".
8
3 Section 145
9
Omit "post", substitute "a prescribed means".
10
4 At the end of section 145
11
Add:
12
(2) After the time specified in the regulations, a reference in this
13
section to an address includes a reference to an electronic address.
14
(3) The time specified under subsection (2) must be later than the day
15
on which the regulations are registered under the Legislative
16
Instruments Act 2003.
17
(4) For the purposes of this section, the question of whether an
18
electronic address is in Australia is to be determined in accordance
19
with the regulations.
20
(5) For the purposes of this section, the question of whether an
21
electronic address is in New Zealand is to be determined in
22
accordance with the regulations.
23
Patents Act 1990
24
5 Section 3 (list of definitions)
25
Insert "Board".
26
Schedule 4 Australia New Zealand Single Economic Market
Part 1 Amendments
28
Intellectual Property Laws Amendment Bill 2014
No. , 2014
6 Section 3 (list of definitions)
1
Insert "Director-General of IP Australia".
2
7 Section 3 (list of definitions)
3
Insert "New Zealand Assistant Commissioner of Patents".
4
8 Section 3 (list of definitions)
5
Insert "New Zealand Commissioner of Patents".
6
9 Section 3 (list of definitions)
7
Insert "New Zealand delegate".
8
10 Section 3 (list of definitions)
9
Insert "New Zealand Patents Minister".
10
11 Section 3 (list of definitions)
11
Insert "New Zealand patents official".
12
12 Section 3 (list of definitions)
13
Omit "Professional Standards Board".
14
13 Section 3 (list of definitions)
15
Insert "Registrar of Companies of New Zealand".
16
14 Subsection 20(2)
17
Omit "or an employee,", substitute "an employee, or a New Zealand
18
delegate,".
19
15 At the end of section 20
20
Add:
21
(3) For the purposes of this section, it is immaterial whether an act was
22
done in New Zealand.
23
16 At the end of section 183
24
Add:
25
Australia New Zealand Single Economic Market Schedule 4
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
29
(3) The Designated Manager may disclose to the Registrar of
1
Companies of New Zealand information (including personal
2
information within the meaning of the Privacy Act 1988) that is:
3
(a) relevant to the functions conferred on the Registrar of
4
Companies of New Zealand by or under the Companies Act
5
1993 of New Zealand; and
6
(b) obtained by the Designated Manager as a result of the
7
performance of functions and duties, or the exercise of
8
powers, in relation to incorporated patent attorneys.
9
(4) For the purposes of subsection (3), it is immaterial whether the
10
disclosure takes place in New Zealand.
11
(5) The Commissioner may disclose to a New Zealand delegate
12
information (including personal information within the meaning of
13
the Privacy Act 1988) that is relevant to the exercise of the powers,
14
or the performance of the functions, delegated to the New Zealand
15
delegate under subsection 209(1A).
16
(6) For the purposes of subsection (5), it is immaterial whether the
17
disclosure takes place in New Zealand.
18
17 Paragraph 198(4)(a)
19
Repeal the paragraph.
20
18 Subsection 198(5)
21
Omit "Professional Standards Board", substitute "Board".
22
19 Subsections 198(7) and (8)
23
Repeal the subsections, substitute:
24
(7) A reference in this section to conviction of an offence includes a
25
reference to:
26
(a) the making of an order under section 19B of the Crimes Act
27
1914 in relation to the offence; or
28
(b) the making of an order under a corresponding provision of a
29
law of:
30
(i) a State; or
31
(ii) a Territory; or
32
(iii) New Zealand;
33
in relation to the offence.
34
Schedule 4 Australia New Zealand Single Economic Market
Part 1 Amendments
30
Intellectual Property Laws Amendment Bill 2014
No. , 2014
20 At the end of section 198
1
Add:
2
New Zealand
3
(12) It is immaterial whether a matter mentioned in:
4
(a) paragraph (4)(b), (c), (d), (e), (f) or (g); or
5
(b) subsection (5); or
6
(c) paragraph (9)(a), (b) or (c); or
7
(d) paragraph (11)(b);
8
concerns something that happened in New Zealand.
9
21 Section 199
10
Before "The name", insert "(1)".
11
22 At the end of section 199
12
Add:
13
(2) It is immaterial whether the prescribed grounds concern something
14
that happened in New Zealand.
15
23 Before subsection 209(1)
16
Insert:
17
Delegation to employees
18
24 After subsection 209(1)
19
Insert:
20
Delegation to New Zealand patents officials
21
(1A) The Commissioner may, by instrument, signed by him or her,
22
delegate all or any of the Commissioner's powers or functions
23
under this Act to a New Zealand patents official.
24
(1B) A function or power delegated under subsection (1A) may be
25
performed or exercised by the delegate in New Zealand.
26
25 Before subsection 209(2)
27
Insert:
28
Australia New Zealand Single Economic Market Schedule 4
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
31
Direction or supervision
1
26 Section 214
2
Before "A document", insert "(1)".
3
27 At the end of section 214
4
Add:
5
(2) For the purposes of this Act, a prescribed document is taken to
6
have been filed with the Patent Office if the document is delivered
7
or given to:
8
(a) the New Zealand Commissioner of Patents; or
9
(b) a New Zealand Assistant Commissioner of Patents; or
10
(c) a person who, under a law of New Zealand, is a delegate of
11
the New Zealand Commissioner of Patents;
12
in a prescribed manner.
13
(3) The regulations may provide that a document filed with the Patent
14
Office because of subsection (2) is taken to have been so filed at
15
the time ascertained in accordance with the regulations.
16
28 Section 221
17
Before "Where", insert "(1)".
18
29 Section 221
19
After "Australia", insert "or New Zealand".
20
30 Section 221
21
Omit "post", substitute "a prescribed means".
22
31 At the end of section 221
23
Add:
24
(2) After the time specified in the regulations, a reference in this
25
section to an address includes a reference to an electronic address.
26
(3) The time specified under subsection (2) must be later than the day
27
on which the regulations are registered under the Legislative
28
Instruments Act 2003.
29
Schedule 4 Australia New Zealand Single Economic Market
Part 1 Amendments
32
Intellectual Property Laws Amendment Bill 2014
No. , 2014
(4) For the purposes of this section, the question of whether an
1
electronic address is in Australia is to be determined in accordance
2
with the regulations.
3
(5) For the purposes of this section, the question of whether an
4
electronic address is in New Zealand is to be determined in
5
accordance with the regulations.
6
32 After paragraph 223(1)(b)
7
Insert:
8
(ba) a New Zealand delegate; or
9
33 After subsection 223(1)
10
Insert:
11
(1A) For the purposes of subsection (1), it is immaterial whether a
12
relevant act took place, or is to take place, in New Zealand.
13
(1B) For the purposes of subsection (1), it is immaterial whether an error
14
or omission took place in New Zealand.
15
34 After subsection 224(3)
16
Insert:
17
(3A) For the purposes of this section, it is immaterial whether a decision
18
was made in New Zealand.
19
35 Section 227 (heading)
20
Repeal the heading, substitute:
21
227 Fees payable under this Act
22
36 At the end of section 227
23
Add:
24
(6) For the purposes of this Act, if:
25
(a) a fee is declared by the regulations to be a fee to which this
26
subsection applies; and
27
(b) the fee is paid to:
28
(i) the New Zealand Commissioner of Patents; or
29
(ii) a New Zealand Assistant Commissioner of Patents; or
30
Australia New Zealand Single Economic Market Schedule 4
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
33
(iii) a person who, under a law of New Zealand, is a delegate
1
of the New Zealand Commissioner of Patents; and
2
(c) the New Zealand Commissioner of Patents, the New Zealand
3
Assistant Commissioner of Patents, or the delegate, as the
4
case may be, is authorised to receive the fee on behalf of the
5
Commonwealth; and
6
(d) the fee is paid in New Zealand currency;
7
then:
8
(e) the liability to pay the fee is discharged; and
9
(f) this Act has effect as if the fee had been paid in accordance
10
with the regulations.
11
(7) For the purposes of subsection (6), the amount of the fee in New
12
Zealand currency is to be ascertained in accordance with the
13
regulations.
14
37 After section 227
15
Insert:
16
227AA Receipt of fees payable under New Zealand law
17
The regulations may make provision for and in relation to
18
authorising:
19
(a) the Commissioner; or
20
(b) a Deputy Commissioner; or
21
(c) an employee;
22
to receive, on behalf of New Zealand, a specified fee payable under
23
a specified law of New Zealand that relates to patents for
24
inventions, so long as:
25
(d) the fee is paid in Australian currency; and
26
(e) the amount of the fee in Australian currency is ascertained in
27
accordance with the regulations.
28
Schedule 4 Australia New Zealand Single Economic Market
Part 1 Amendments
34
Intellectual Property Laws Amendment Bill 2014
No. , 2014
227AB Application of administrative law regime to decisions made
1
in New Zealand
2
Judicial review
3
(1) For the purposes of the application of the Administrative Decisions
4
(Judicial Review) Act 1977 to a decision under this Act, it is
5
immaterial whether the decision was made in New Zealand.
6
Note:
See also the Trans-Tasman Proceedings Act 2010.
7
(2) For the purposes of subsection (1), decision has the same meaning
8
as in the Administrative Decisions (Judicial Review) Act 1977.
9
Merits review
10
(3) For the purposes of the application of the Administrative Appeals
11
Tribunal Act 1975 to a decision under this Act, it is immaterial
12
whether the decision was made in New Zealand.
13
Note:
See also the Trans-Tasman Proceedings Act 2010.
14
(4) For the purposes of subsection (3), decision has the same meaning
15
as in the Administrative Appeals Tribunal Act 1975.
16
38 Section 227A (heading)
17
Repeal the heading, substitute:
18
227A Trans-Tasman IP Attorneys Board
19
39 Subsection 227A(1)
20
Repeal the subsection, substitute:
21
(1) The body known immediately before the commencement of this
22
subsection as the Professional Standards Board for Patent and
23
Trade Marks Attorneys is continued in existence as the
24
Trans-Tasman IP Attorneys Board.
25
Note 1:
In this Act, Board means the Trans-Tasman IP Attorneys Board--see
26
Schedule 1.
27
Note 2:
See also section 25B of the Acts Interpretation Act 1901.
28
Australia New Zealand Single Economic Market Schedule 4
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
35
40 Subsection 227A(2)
1
Omit "Professional Standards Board" (wherever occurring), substitute
2
"Board".
3
41 After subsection 227A(2)
4
Insert:
5
Membership of the Board
6
(2A) The Board consists of the following members:
7
(a) a Chair;
8
(b) the Director-General of IP Australia;
9
(c) the New Zealand Commissioner of Patents;
10
(d) at least 2 members nominated by the New Zealand Patents
11
Minister to represent the New Zealand patent attorney
12
profession;
13
(e) at least 2 other members.
14
(2B) The total number of members of the Board must not exceed 10.
15
Appointment of members of the Board
16
(2C) Each member of the Board mentioned in paragraph (2A)(a), (d) or
17
(e) is to be appointed by the Minister by written instrument.
18
Note:
For reappointment, see the Acts Interpretation Act 1901.
19
(2D) A person is not eligible for appointment as a member of the Board
20
mentioned in paragraph (2A)(a), (d) or (e) unless the Minister is
21
satisfied that the person has:
22
(a) substantial experience or knowledge; and
23
(b) significant standing;
24
in at least one of the following fields:
25
(c) Australian patent attorney practice;
26
(d) New Zealand patent attorney practice;
27
(e) Australian trade mark attorney practice;
28
(f) the regulation of persons engaged in a prescribed occupation;
29
(g) public administration;
30
(h) academia.
31
(2E) A member of the Board holds office on a part-time basis.
32
Schedule 4 Australia New Zealand Single Economic Market
Part 1 Amendments
36
Intellectual Property Laws Amendment Bill 2014
No. , 2014
Period of appointment for members of the Board
1
(2F) A member of the Board mentioned in paragraph (2A)(a), (d) or (e)
2
holds office for the period specified in the instrument of
3
appointment. The period must not exceed:
4
(a) in the case of the member mentioned in paragraph (2A)(a)--
5
3 years; or
6
(b) otherwise--5 years.
7
Note:
For reappointment, see the Acts Interpretation Act 1901.
8
Appointment of deputy of Director-General of IP Australia
9
(2G) The Director-General of IP Australia may appoint an APS
10
employee to be his or her deputy for the purpose of attendance at
11
one or more specified meetings of the Board.
12
(2H) If:
13
(a) a person is the deputy of the Director-General of IP Australia
14
for the purpose of attendance at a particular meeting of the
15
Board; and
16
(b) the Director-General of IP Australia is absent from the
17
meeting;
18
the person is entitled to attend the meeting and, when so attending,
19
is taken to be a member of the Board.
20
(2J) A deputy of the Director-General of IP Australia is not entitled to
21
any remuneration or allowances for attending a meeting of the
22
Board (other than remuneration or allowances payable to the
23
deputy in his or her capacity as an APS employee).
24
Appointment of deputy of New Zealand Commissioner of Patents
25
(2K) The New Zealand Commissioner of Patents may appoint a New
26
Zealand patents official to be his or her deputy for the purpose of
27
attendance at one or more specified meetings of the Board.
28
(2L) If:
29
(a) a person is the deputy of the New Zealand Commissioner of
30
Patents for the purpose of attendance at a particular meeting
31
of the Board; and
32
(b) the New Zealand Commissioner of Patents is absent from the
33
meeting;
34
Australia New Zealand Single Economic Market Schedule 4
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
37
the person is entitled to attend the meeting and, when so attending,
1
is taken to be a member of the Board.
2
(2M) A deputy of the New Zealand Commissioner of Patents is not
3
entitled to any remuneration or allowances for attending a meeting
4
of the Board (other than remuneration or allowances payable to the
5
deputy in his or her capacity as a New Zealand patents official).
6
42 Paragraph 227A(3)(a)
7
Repeal the paragraph, substitute:
8
(a) the terms and conditions on which members of the Board
9
mentioned in paragraph (2A)(a), (d) or (e) hold office; and
10
(aa) the manner in which members of the Board mentioned in
11
paragraph (2A)(a), (d) or (e) may resign their appointments;
12
and
13
(ab) the termination of the appointment of members of the Board
14
mentioned in paragraph (2A)(a), (d) or (e); and
15
43 Paragraphs 227A(3)(b) and (c)
16
Omit "Professional Standards Board", substitute "Board".
17
44 Subsections 227A(4) and (5)
18
Omit "Professional Standards Board", substitute "Board".
19
45 At the end of section 227A
20
Add:
21
(7) The Board may perform its functions in Australia or New Zealand.
22
46 Subparagraph 228(2)(r)(ia)
23
Omit "Professional Standards Board", substitute "Board".
24
47 After subsection 228(4)
25
Insert:
26
(4A) If the regulations confer a function on a person or body, the
27
regulations may provide that the function may be performed in
28
Australia or New Zealand.
29
Schedule 4 Australia New Zealand Single Economic Market
Part 1 Amendments
38
Intellectual Property Laws Amendment Bill 2014
No. , 2014
(4B) If the regulations confer a power on a person or body, the
1
regulations may provide that the power may be exercised in
2
Australia or New Zealand.
3
(4C) If the regulations provide that application may be made to the
4
Administrative Appeals Tribunal for review of a decision, the
5
regulations may provide that it is immaterial whether the decision
6
was made in New Zealand.
7
(4D) The regulations may provide that it is immaterial whether an act or
8
omission mentioned in the regulations took place in New Zealand.
9
(4E) The regulations may provide that it is immaterial whether a matter
10
mentioned in the regulations concerns something that took place in
11
New Zealand.
12
48 Schedule 1
13
Insert:
14
Board means the Trans-Tasman IP Attorneys Board continued in
15
existence by section 227A.
16
49 Schedule 1 (definition of company)
17
Repeal the definition, substitute:
18
company means:
19
(a) a company registered under the Corporations Act 2001; or
20
(b) a company registered under the Companies Act 1993 of New
21
Zealand.
22
50 Schedule 1
23
Insert:
24
Director-General of IP Australia means the SES employee who
25
holds or performs the duties of the position of Director-General of
26
IP Australia.
27
51 Schedule 1 (at the end of the definition of file)
28
Add:
29
Note:
See also section 214.
30
Australia New Zealand Single Economic Market Schedule 4
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
39
52 Schedule 1
1
Insert:
2
New Zealand Assistant Commissioner of Patents means a person
3
who holds or performs the duties of an office or position of
4
Assistant Commissioner of Patents under or in accordance with a
5
law of New Zealand.
6
53 Schedule 1
7
Insert:
8
New Zealand Commissioner of Patents means the person who
9
holds or performs the duties of the office or position of
10
Commissioner of Patents under or in accordance with a law of
11
New Zealand.
12
54 Schedule 1
13
Insert:
14
New Zealand delegate means a New Zealand patents official who
15
is a delegate under subsection 209(1A).
16
55 Schedule 1
17
Insert:
18
New Zealand Patents Minister means the Minister of New
19
Zealand who:
20
(a) under the authority of a warrant; or
21
(b) with the authority of the Prime Minister of New Zealand;
22
is responsible for the administration of a law of New Zealand
23
relating to the regulation of patent attorneys.
24
56 Schedule 1
25
Insert:
26
New Zealand patents official means a person:
27
(a) who is an employee in any part of the State services of New
28
Zealand; and
29
(b) whose functions or duties relate to the administration of a law
30
of New Zealand relating to patents for inventions.
31
Schedule 4 Australia New Zealand Single Economic Market
Part 1 Amendments
40
Intellectual Property Laws Amendment Bill 2014
No. , 2014
57 Schedule 1 (definition of Professional Standards Board)
1
Repeal the definition.
2
58 Schedule 1
3
Insert:
4
Registrar of Companies of New Zealand means the person who
5
holds or performs the duties of the office or position of Registrar of
6
Companies under or in accordance with the Companies Act 1993
7
of New Zealand.
8
Plant Breeder's Rights Act 1994
9
59 Subsection 3(1)
10
Insert:
11
address has a meaning affected by subsection (2).
12
60 Subsection 3(2)
13
Repeal the subsection, substitute:
14
Electronic address
15
(2) After the time specified in the regulations, a reference in this Act to
16
an address includes a reference to an electronic address.
17
(3) The time specified under subsection (2) must be later than the day
18
on which the regulations are registered under the Legislative
19
Instruments Act 2003.
20
(4) Subsection (2) of this section does not apply to the following
21
references to an address:
22
(a) a reference in subsection 26(2);
23
(b) the first reference in subsection 26(3).
24
(5) For the purposes of this Act, the question of whether an electronic
25
address is in Australia is to be determined in accordance with the
26
regulations.
27
(6) For the purposes of this Act, the question of whether an electronic
28
address is in New Zealand is to be determined in accordance with
29
the regulations.
30
Australia New Zealand Single Economic Market Schedule 4
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
41
61 After subsection 19(5)
1
Insert:
2
(5A) An address given under paragraph (5)(c) must be an address in
3
Australia or New Zealand.
4
62 Subsection 21(5)
5
After "Australia", insert "or New Zealand".
6
63 Subsection 26(3)
7
After "overseas", insert "in a country other than New Zealand".
8
64 Subsection 26(3)
9
After "Australia" (first occurring), insert "or New Zealand".
10
65 Subsection 26(3)
11
Omit "a postal address in Australia", substitute "an address in Australia
12
or New Zealand".
13
66 Subsection 31(3)
14
After "Australia", insert "or New Zealand".
15
67 Section 73
16
Repeal the section, substitute:
17
73 Service of documents
18
If:
19
(a) this Act provides for a document to be served on, or given or
20
sent to, a person; and
21
(b) the person has given the Secretary or the Registrar an address
22
in Australia or New Zealand for service;
23
the document may be served on, or given or sent to, the person by a
24
prescribed means to that address.
25
Trade Marks Act 1995
26
68 Readers guide (list of terms defined in section 6)
27
Insert the following term in its appropriate alphabetical position:
28
Schedule 4 Australia New Zealand Single Economic Market
Part 1 Amendments
42
Intellectual Property Laws Amendment Bill 2014
No. , 2014
"Board".
1
69 Readers guide (list of terms defined in section 6)
2
Omit "Professional Standards Board".
3
70 Subsection 6(1)
4
Insert:
5
Board has the same meaning as in the Patents Act 1990.
6
71 Subsection 6(1) (definition of Professional Standards
7
Board)
8
Repeal the definition.
9
72 At the end of subsection 215(5)
10
Add "or New Zealand".
11
73 Paragraph 215(6)(a)
12
Repeal the paragraph, substitute:
13
(a) if the person has an address for service--the document may
14
be served on, or given or sent to, the person by a prescribed
15
means to that address; or
16
74 Paragraph 215(6)(b)
17
After "Australia" (first occurring), insert "or New Zealand".
18
75 Paragraph 215(6)(b)
19
Omit "post", substitute "a prescribed means".
20
76 Paragraph 215(6)(b)
21
After "Australia" (second occurring), insert "or New Zealand".
22
77 At the end of section 215
23
Add:
24
(8) After the time specified in the regulations, a reference in this
25
section to an address includes a reference to an electronic address.
26
Australia New Zealand Single Economic Market Schedule 4
Amendments Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
43
(9) The time specified under subsection (8) must be later than the day
1
on which the regulations are registered under the Legislative
2
Instruments Act 2003.
3
(10) For the purposes of this section, the question of whether an
4
electronic address is in Australia is to be determined in accordance
5
with the regulations.
6
(11) For the purposes of this section, the question of whether an
7
electronic address is in New Zealand is to be determined in
8
accordance with the regulations.
9
78 Subsection 228A(5)
10
Omit "the Professional Standards Board", substitute "the Board".
11
79 Subsection 228A(5) (note)
12
Omit "Professional Standards Board", substitute "Board".
13
80 Subparagraph 231(2)(ha)(ia)
14
Omit "Professional Standards Board", substitute "Board".
15
Schedule 4 Australia New Zealand Single Economic Market
Part 2 Transitional provisions
44
Intellectual Property Laws Amendment Bill 2014
No. , 2014
Part 2
--Transitional provisions
1
81 Transitional
--registration as a patent attorney
2
(1)
The Designated Manager must:
3
(a) register as a patent attorney an individual who, immediately
4
before the commencement of this item:
5
(i) was registered as a patent attorney under a law of New
6
Zealand; and
7
(ii) was not a registered patent attorney (within the meaning
8
of the Patents Act 1990); and
9
(b) do so as soon as practicable after the commencement of this
10
item.
11
(2)
The registration is to consist of entering the individual's name in the
12
Register of Patent Attorneys.
13
(3)
For the purposes of the Patents Act 1990, the registration is taken to be
14
under that Act.
15
82 Transitional
--qualification for registration as a patent
16
attorney
17
(1)
A qualification specified in, or ascertained in accordance with,
18
regulations made for the purposes of paragraph 198(4)(b) of the Patents
19
Act 1990 may consist of passing examinations conducted in New
20
Zealand, so long as:
21
(a) the examinations are specified in those regulations; and
22
(b) at least one of those examinations was passed before the
23
commencement of this item; and
24
(c) the remaining examinations are passed before the end of the
25
4-year period beginning at the commencement of this item.
26
(2)
Regulations authorised by subitem (1) do not apply to examinations
27
passed by an individual unless the individual applies for registration as
28
a patent attorney under section 198 of the Patents Act 1990 within 6
29
months after the completion of the last of those examinations.
30
(3)
Subitem (1) does not limit paragraph 198(4)(b) of the Patents Act 1990.
31
Australia New Zealand Single Economic Market Schedule 4
Transitional provisions Part 2
No. , 2014
Intellectual Property Laws Amendment Bill 2014
45
83 Transitional
--conduct of patent attorneys
1
(1)
Grounds prescribed for the purposes of section 199 of the Patents Act
2
1990 may relate to conduct that took place in New Zealand before the
3
commencement of this item.
4
(2)
Subitem (1) does not limit section 199 of the Patents Act 1990.
5
84 Transitional
--registration as a trade marks attorney
6
(1)
If:
7
(a) immediately before the commencement of this item, an
8
individual:
9
(i) was registered as a patent attorney under a law of New
10
Zealand; and
11
(ii) was not a registered trade marks attorney (within the
12
meaning of the Trade Marks Act 1995); and
13
(b) within 12 months after the commencement of this item, the
14
individual applies to the Designated Manager to be registered
15
as a trade marks attorney; and
16
(c) the application is in accordance with the regulations; and
17
(d) the individual satisfies the Designated Manager, in
18
accordance with the regulations, that the individual's level of
19
competency in trade marks law and practice is sufficient to
20
warrant the individual becoming a registered trade marks
21
attorney; and
22
(e) the individual has not been convicted of a prescribed offence
23
during the 5-year period ending when the application was
24
made; and
25
(f) the individual is not under sentence of imprisonment for a
26
prescribed offence;
27
the Designated Manager must register the individual as a trade marks
28
attorney.
29
(2)
The registration is to consist of entering the individual's name in the
30
Register of Trade Marks Attorneys.
31
(3)
For the purposes of the Trade Marks Act 1995, the registration is taken
32
to be under that Act.
33
(4)
The Governor-General may make regulations for the purposes of this
34
item.
35
Schedule 4 Australia New Zealand Single Economic Market
Part 2 Transitional provisions
46
Intellectual Property Laws Amendment Bill 2014
No. , 2014
(5)
It is immaterial whether a matter mentioned in paragraph (1)(d), (e) or
1
(f) concerns something that happened in New Zealand.
2
(6)
A reference in this item to conviction of an offence includes a reference
3
to:
4
(a) the making of an order under section 19B of the Crimes Act
5
1914 in relation to the offence; or
6
(b) the making of an order under a corresponding provision of a
7
law of:
8
(i) a State; or
9
(ii) a Territory; or
10
(iii) New Zealand;
11
in relation to the offence.
12
Other amendments Schedule 5
Document retention Part 1
No. , 2014
Intellectual Property Laws Amendment Bill 2014
47
Schedule 5
--Other amendments
1
Part 1
--Document retention
2
Division 1
--Amendments
3
Designs Act 2003
4
1 Paragraph 69(3)(b)
5
Omit "design; and", substitute "design.".
6
2 Paragraph 69(3)(c)
7
Repeal the paragraph.
8
3 Paragraph 149(2)(o)
9
Omit "fit; and", substitute "fit.".
10
4 Paragraph 149(2)(p)
11
Repeal the paragraph.
12
Patents Act 1990
13
5 Paragraph 228(2)(u)
14
Repeal the paragraph.
15
Trade Marks Act 1995
16
6 Paragraph 231(2)(h)
17
Repeal the paragraph.
18
Division 2
--Application of amendments
19
7 Application of amendments
20
The amendments made by this Part apply in relation to material and
21
documents provided or filed before, on or after the commencement of
22
this Part.
23
Schedule 5 Other amendments
Part 2 Technical amendments
48
Intellectual Property Laws Amendment Bill 2014
No. , 2014
Part 2
--Technical amendments
1
Division 1
--Amendments
2
Patents Act 1990
3
8 Section 24 (heading)
4
Repeal the heading, substitute:
5
24 Validity not affected by making information available in certain
6
circumstances
7
9 Section 29A (note)
8
Repeal the note.
9
10 At the end of section 29A
10
Add:
11
(6) An applicant is not entitled to ask that any action be taken, or that
12
he or she be allowed to take any action, under this Act in relation
13
to a PCT application unless the following requirements of
14
subsection (5) have been met (if applicable):
15
(a) a translation of the application into English has been filed;
16
(b) the prescribed documents have been filed;
17
(c) the prescribed fees have been paid.
18
Note:
A failure to comply with subsection (5) may also result in the PCT
19
application lapsing: see paragraph 142(2)(f).
20
11 Subsection 29B(2)
21
Omit "within the prescribed period".
22
12 Subsection 29B(6)
23
Omit "subsection (1)", substitute "the definition of Convention country
24
in subsection (5)".
25
13 Before subsection 40(2)
26
Insert:
27
Other amendments Schedule 5
Technical amendments Part 2
No. , 2014
Intellectual Property Laws Amendment Bill 2014
49
Requirements relating to complete specifications
1
14 Before subsection 41(1)
2
Insert:
3
Provisional specifications
4
(1A) A specification is taken to comply with subsection 40(1), so far as
5
it requires a description of a micro-organism, if:
6
(a) the micro-organism is deposited with a prescribed depository
7
institution in accordance with such provisions of the
8
Budapest Treaty as are applicable; and
9
(b) the prescribed circumstances apply.
10
Complete specifications
11
15 Paragraph 43(2A)(b)
12
After "discloses", insert ", or a prescribed set of prescribed documents
13
considered together disclose,".
14
16 After subsection 43(2A)
15
Insert:
16
(2B) A prescribed document, or a prescribed set of prescribed
17
documents considered together, is taken to disclose the invention in
18
a claim as mentioned in paragraph (2A)(b) so far as such disclosure
19
requires a description of a micro-organism, if:
20
(a) the micro-organism is deposited with a prescribed depository
21
institution in accordance with such provisions of the
22
Budapest Treaty as are applicable; and
23
(b) the prescribed circumstances apply.
24
17 At the end of subparagraph 101E(1)(a)(ix)
25
Add "and".
26
18 Paragraph 119(3)(b)
27
Omit "through any publication or use of the invention".
28
19 Subsection 178(4)
29
Omit "subsection (1) or (2)", substitute "this section".
30
Schedule 5 Other amendments
Part 2 Technical amendments
50
Intellectual Property Laws Amendment Bill 2014
No. , 2014
20 Subsection 191A(4)
1
Omit "a declaration, or rectify the Register, under this section",
2
substitute "a declaration under subsection (2), or rectify the Register
3
under subsection (3),".
4
21 Paragraph 224(1)(a)
5
Omit "or 142(2)(b)".
6
Division 2
--Application of amendments
7
22 Application of amendments
8
(1)
The amendments made by items 8 and 18 apply in relation to
9
information that is made publicly available at or after the time those
10
items commence.
11
(2)
The amendments made by items 9, 10 and 11 apply in relation to
12
applications made at or after the time those items commence.
13
(3)
The amendment made by item 14 applies in relation to provisional
14
applications made at or after the time that item commences.
15
(4)
The amendments made by items 15 and 16 apply in relation to:
16
(a) patents for which the complete application is made at or after
17
the time those items commence; and
18
(b) standard patents for which the application had been made
19
before the time those items commence, if the applicant had
20
not asked for an examination of the patent request and
21
specification for the application under section 44 of the
22
Patents Act 1990 before that time; and
23
(c) innovation patents granted at or after the time those items
24
commence, if the complete application to which the patent
25
relates had been made before that time; and
26
(d) complete patent applications made at or after the time those
27
items commence; and
28
(e) complete applications for standard patents made before the
29
time those items commence, if the applicant had not asked
30
for an examination of the patent request and specification for
31
the application under section 44 of the Patents Act 1990
32
before that time; and
33
Other amendments Schedule 5
Technical amendments Part 2
No. , 2014
Intellectual Property Laws Amendment Bill 2014
51
(f) complete applications for innovation patents made before the
1
time those items commence, if a patent had not been granted
2
in relation to the application on or before that time; and
3
(g) innovation patents granted before the time those items
4
commence, if:
5
(i) the Commissioner had not decided to examine the
6
complete specification relating to the patent under
7
section 101A of the Patents Act 1990 before that time;
8
and
9
(ii) the patentee or any other person had not asked the
10
Commissioner to examine the complete specification
11
relating to the patent under section 101A of the Patents
12
Act 1990 before that time.
13
(5)
The amendment made by item 20 applies on and after the day that item
14
commences in relation to patents granted before, on or after that
15
commencement.
16