INTELLECTUAL PROPERTY LAWS AMENDMENT (PRODUCTIVITY COMMISSION RESPONSE PART 1 AND OTHER MEASURES) BILL 2018

2016-2017-2018

The Parliament of the

Commonwealth of Australia

HOUSE OF REPRESENTATIVES

Presented and read a first time

Intellectual Property Laws Amendment

(Productivity Commission Response

Part 1 and Other Measures) Bill 2018

No. , 2018

(Jobs and Innovation)

A Bill for an Act to amend legislation relating to

intellectual property, and for related purposes

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Contents

Short title ........................................................................................... 1

Commencement ................................................................................. 1

Schedules ........................................................................................... 3

Schedule 1--Responses to the Productivity Commission

Part 1--Parallel importation

Division 1--Amendments

Copyright Act 1968

Trade Marks Act 1995

Division 2--Saving and application provisions

Part 2--PBR in essentially derived varieties

Plant Breeder's Rights Act 1994

Part 3--Period to apply for removal of trade marks from

Trade Marks Act 1995

Part 4--Notification of extension of standard patents relating

to pharmaceutical substances

Patents Act 1990

Schedule 2--Other measures

Part 1--Amending trade mark applications--non-legal persons

Trade Marks Act 1995

Part 2--Written requirements

Division 1--Amendments

Designs Act 2003

Patents Act 1990

Plant Breeder's Rights Act 1994

Trade Marks Act 1995

Division 2--Application and saving provisions

Part 3--Filing requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Division 1--Amendments

Designs Act 2003

Patents Act 1990

Plant Breeder's Rights Act 1994

Trade Marks Act 1995

Division 2--Application, saving and transitional provisions

Part 4--Signatures

Patents Act 1990

Part 5--Computerised decision-making

Designs Act 2003

Patents Act 1990

Plant Breeder's Rights Act 1994

Trade Marks Act 1995

Part 6--Addresses and service of documents

Plant Breeder's Rights Act 1994

Part 7--Requirements for patent documents

Patents Act 1990

Part 8--Unjustified threats of infringement

Division 1--Amendments

Designs Act 2003

Olympic Insignia Protection Act 1987

Patents Act 1990

Plant Breeder's Rights Act 1994

Trade Marks Act 1995

Division 2--Application and saving provisions

Part 9--Ownership of PBR and entries in the Register

Plant Breeder's Rights Act 1994

Part 10--Trade mark oppositions

Trade Marks Act 1995

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

iii

Part 11--Further power to award damages under the Plant

Breeder's Rights Act

Plant Breeder's Rights Act 1994

Part 12--Exclusive licensees in the Plant Breeder's Rights Act

Plant Breeder's Rights Act 1994

Part 13--Publishing personal information of registered patent

or trade marks attorneys

Division 1--Amendments

Patents Act 1990

Trade Marks Act 1995

Division 2--Application provisions

Part 14--Secretary's role in the Plant Breeder's Rights Act

Plant Breeder's Rights Act 1994

Part 15--Seizure notices

Division 1--Amendments

Copyright Act 1968

Olympic Insignia Protection Act 1987

Trade Marks Act 1995

Division 2--Application provisions

Part 16--Prosecutions

100

Division 1--Amendments

100

Patents Act 1990

100

Trade Marks Act 1995

100

Division 2--Application provision

101

Part 17--Updating references to Designs Act

102

Olympic Insignia Protection Act 1987

102

Part 18--Removing certain references to New Zealand

104

Patents Act 1990

104

Part 19--International Convention for the Protection of New

Varieties of Plants

106

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Plant Breeder's Rights Act 1994

106

Part 20--Other amendments

109

Patents Act 1990

109

Plant Breeder's Rights Act 1994

109

Part 21--Repeals of Acts

110

Patents Amendment (Patent Cooperation Treaty) Act 1979

110

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

A Bill for an Act to amend legislation relating to

intellectual property, and for related purposes

The Parliament of Australia enacts:

1 Short title

This Act is the Intellectual Property Laws Amendment

(Productivity Commission Response Part 1 and Other Measures)

Act 2018.

2 Commencement

(1) Each provision of this Act specified in column 1 of the table

commences, or is taken to have commenced, in accordance with

column 2 of the table. Any other statement in column 2 has effect

according to its terms.

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Commencement information

Column 1

Column 2

Column 3

Provisions

Commencement

Date/Details

1. Sections 1 to 3

and anything in

this Act not

elsewhere covered

by this table

The day this Act receives the Royal Assent.

2. Schedule 1,

Part 1

The day after this Act receives the Royal

Assent.

3. Schedule 1,

Parts 2 and 3

A single day to be fixed by Proclamation.

However, if the provisions do not commence

within the period of 6 months beginning on

the day this Act receives the Royal Assent,

they commence on the day after the end of

that period.

4. Schedule 1,

Part 4

The day after this Act receives the Royal

Assent.

5. Schedule 2,

Part 1

The day after this Act receives the Royal

Assent.

6. Schedule 2,

Parts 2 and 3

At the same time as the provisions covered

by table item 3.

7. Schedule 2,

Parts 4 and 5

The day after this Act receives the Royal

Assent.

8. Schedule 2,

Parts 6 to 12

At the same time as the provisions covered

by table item 3.

9. Schedule 2,

Part 13

The day after this Act receives the Royal

Assent.

10. Schedule 2,

Part 14

At the same time as the provisions covered

by table item 3.

11. Schedule 2,

Parts 15 to 21

The day after this Act receives the Royal

Assent.

Note:

This table relates only to the provisions of this Act as originally

enacted. It will not be amended to deal with any later amendments of

this Act.

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

(2) Any information in column 3 of the table is not part of this Act.

Information may be inserted in this column, or information in it

may be edited, in any published version of this Act.

3 Schedules

Legislation that is specified in a Schedule to this Act is amended or

repealed as set out in the applicable items in the Schedule

concerned, and any other item in a Schedule to this Act has effect

according to its terms.

Schedule 1 Responses to the Productivity Commission

Part 1 Parallel importation

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Schedule 1--Responses to the Productivity

Commission

Part 1--Parallel importation

Division 1

--Amendments

Copyright Act 1968

1 Section 198A

Repeal the section.

Trade Marks Act 1995

2 After section 122

Insert:

122A Exhaustion of a registered trade mark in relation to goods

(1) In spite of section 120, a person who uses a registered trade mark

in relation to goods does not infringe the trade mark if:

(a) the goods are similar to goods in respect of which the trade

mark is registered; and

(b) before the time of use, the person had made reasonable

inquiries in relation to the trade mark; and

inquiries, would have concluded that the trade mark had been

applied to, or in relation to, the goods by, or with the consent

of, a person (a relevant person) who was, at the time of the

application or consent (as the case may be):

(i) the registered owner of the trade mark; or

(ii) an authorised user of the trade mark; or

(iii) a person permitted to use the trade mark by the

registered owner; or

(iv) a person permitted to use the trade mark by an

authorised user who has power to give such permission

under paragraph 26(1)(f); or

Responses to the Productivity Commission Schedule 1

Parallel importation Part 1

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

(v) a person with significant influence over the use of the

trade mark by the registered owner or an authorised

user; or

(vi) an associated entity (within the meaning of the

Corporations Act 2001) of a relevant person mentioned

in subparagraph (i), (ii), (iii), (iv) or (v).

Note 1:

For goods that are similar, see subsection 14(1).

Note 2:

For subparagraph (c)(iv), an authorised user may, under

paragraph 26(1)(f), subject to any agreement the authorised user has

with the registered owner, permit another person to apply the trade

mark to, or in relation to, goods in respect of which the trade mark is

registered.

(2) A reference in paragraph (1)(c) to consent to the application of a

trade mark to, or in relation to, goods includes, without limitation,

a reference to:

(a) consent subject to a condition (for example, a condition that

the goods are to be sold only in a foreign country); and

(b) consent that can be reasonably inferred from the conduct of a

relevant person.

(3) In determining whether a relevant person mentioned in

subparagraph (1)(c)(iii) or (iv) was permitted to use the trade mark,

disregard how that permission arose, for example:

(a) whether it arose directly or indirectly; or

(b) whether it arose by way of proprietary interest, contract,

arrangement, understanding, a combination of those things,

or otherwise.

(4) In determining whether a relevant person mentioned in

subparagraph (1)(c)(v) had significance influence over the use of a

trade mark, disregard how that influence arose, for example:

(a) whether it arose directly or indirectly; or

(b) whether it arose by way of proprietary interest, contract,

arrangement, understanding, a combination of those things,

or otherwise.

3 Section 123 (heading)

Repeal the heading, substitute:

Schedule 1 Responses to the Productivity Commission

Part 1 Parallel importation

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

123 Services to which registered trade mark has been applied by or

with consent of registered owner

4 Subsection 123(1)

Repeal the subsection.

5 Subsection 123(2)

Omit "(2)".

Division 2

--Saving and application provisions

6 Saving and application provisions

Copyright

(1)

Despite the repeal of section 198A of the Copyright Act 1968 by this

Part, that section continues to apply in relation to proceedings begun

under that Act before the commencement of this item.

Trade marks

(2)

The amendments of the Trade Marks Act 1995 made by this Part apply

in relation to an action for the infringement of a trade mark begun on or

after the commencement of this item, even if the infringement of the

trade mark is alleged to have occurred before that commencement.

Responses to the Productivity Commission Schedule 1

PBR in essentially derived varieties Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 2--PBR in essentially derived varieties

Plant Breeder's Rights Act 1994

7 Subsection 3(1)

Insert:

commercial-in-confidence has the meaning given by

subsection 41B(4).

essentially derived, in relation to a plant variety, has the meaning

given by section 4.

8 Subsection 3(1) (at the end of the definition of grantee)

Add:

Note:

For declarations of essential derivation, see sections 40 and 41D.

9 Subsection 3(1)

Insert:

hearing period has the meaning given by subsection 41C(3).

10 Section 4 (heading)

Repeal the heading, substitute:

4 Definition of essentially derived

11 Section 4

Omit "taken to be an essentially derived", substitute "an essentially

derived".

12 At the end of section 4

Add:

Note:

For declarations of essential derivation, see sections 40 and 41D.

13 Section 12

Repeal the section, substitute:

Schedule 1 Responses to the Productivity Commission

Part 2 PBR in essentially derived varieties

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

12 Extension of PBR to cover essentially derived varieties

Subject to section 23 (exhaustion of PBR), if PBR is granted in a

plant variety (the initial variety), and a declaration is made that

another plant variety is essentially derived from the initial variety,

the right granted in the initial variety extends, with effect from the

date of declaration, to that other plant variety.

Note:

For declarations of essential derivation, see sections 40 and 41D.

14 Paragraph 22(5)(b)

Omit "under section 40".

15 At the end of subsection 22(5)

Add:

Note:

For declarations of essential derivation, see sections 40 and 41D.

16 At the end of subsection 23(2)

Add:

Note:

For declarations of essential derivation to which this subsection

applies, see section 40.

17 Subparagraph 34(4)(b)(ii)

After "section 41", insert "or 41E (both of which deal with test growing

of essentially derived varieties)".

18 Section 40 (heading)

Repeal the heading, substitute:

40 Essential derivation for PBR-protected varieties--declaration

19 Subsections 40(1) and (2)

Repeal the subsections, substitute:

(1) A person (an eligible person) may make an application under

subsection (1A) if the person is:

(a) the grantee of PBR in a plant variety; or

(b) an exclusive licensee of such a grantee.

Responses to the Productivity Commission Schedule 1

PBR in essentially derived varieties Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

(1A) An eligible person in relation to a plant variety (the initial variety)

may apply in writing to the Registrar for a declaration that another

variety (the second variety) is essentially derived from the initial

variety if:

(a) another person is the grantee of, or has applied for, PBR in

the second variety; and

(b) the eligible person is satisfied that the second variety is

essentially derived from the initial variety; and

section 40 or 41D) to be essentially derived from another

variety in which PBR has been granted.

Note 1:

If the breeder of the second variety has not applied for, or been

granted, PBR in the second variety, an eligible person may apply

under section 41A for a declaration that the second variety is

essentially derived from the initial variety.

Note 2:

If an application for PBR in the second variety is made after an

application is made under section 41A in relation to that variety, the

application under section 41A may be treated as if it were an

application under this section (see section 41F).

(1B) The Registrar must notify the application under subsection (1A) to

each eligible person in relation to the initial variety other than the

applicant.

(1C) If an eligible person in relation to a plant variety (the initial

variety) applies for a declaration under subsection (1A) in relation

to another plant variety (the second variety), that does not prevent

another eligible person in relation to the initial variety also

applying for a declaration under that subsection in relation to the

second variety.

(2) Nothing in this section implies that an eligible person in relation to

a plant variety (the initial variety) may not, in relation to an

application by another person for PBR in another plant variety (the

second variety) that has been accepted but not finally determined:

(a) make an objection, under section 35, to the granting of PBR

in the second variety; and

(b) in the alternative, if PBR is granted to another person in the

second variety--apply under subsection (1A) for a

declaration that the second variety is essentially derived from

the initial variety.

Schedule 1 Responses to the Productivity Commission

Part 2 PBR in essentially derived varieties

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

20 Subsection 40(6)

Repeal the subsection, substitute:

(6) If the initial variety has itself been declared to be essentially

derived from another variety, the Registrar must:

(a) refuse to declare the second variety essentially derived from

the initial variety; and

(b) notify each eligible person in relation to the initial variety

(including the applicant) of the refusal and the reasons for it.

21 Subsection 40(9)

Repeal the subsection, substitute:

(9) If the Registrar is not satisfied of that prima facie case, the

Registrar must notify each eligible person in relation to the initial

variety (including the applicant) that the Registrar is not so

satisfied, and of the reasons for not being so satisfied.

22 Paragraph 40(10)(e)

Repeal the paragraph, substitute:

(e) notify each eligible person in relation to the initial variety

(including the applicant) of the declaration; and

23 Paragraph 40(11)(a)

Repeal the paragraph, substitute:

(a) notify each eligible person in relation to the initial variety

(including the applicant) that he or she is so satisfied, and of

the reasons for being so satisfied; and

24 Subsection 40(12)

After "a declaration", insert "under this section".

25 At the end of section 40 (before the note)

Add:

Note 1:

Section 19 requires the grantee of PBR in a plant variety to take

reasonable steps to ensure reasonable public access to the plant

variety.

Responses to the Productivity Commission Schedule 1

PBR in essentially derived varieties Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

26 Section 40 (note)

Omit "Note", substitute "Note 2".

27 Section 41 (heading)

Repeal the heading, substitute:

41 Essential derivation for PBR-protected varieties--test growing

28 Subsection 41(1)

Repeal the subsection, substitute:

(1) This section applies if:

(a) an eligible person applies for a declaration under section 40

in relation to a plant variety (the initial variety) that another

plant variety (the second variety) is essentially derived from

the initial variety; and

(b) in the course of that application the applicant establishes a

prima facie case that the second variety is essentially derived

from the initial variety.

(1A) On the basis of information supplied by the applicant and the

grantee of PBR in the second variety, the Registrar may decide that

a test growing or further test growing is required to determine

whether the prima facie case has been rebutted.

Note:

A decision to require a test growing is reviewable by the AAT under

section 77.

(1B) The Registrar must notify the decision to each of the following:

(a) the applicant;

(b) the grantee of PBR in the second variety.

29 Paragraph 41(2)(a)

Omit "grantee of PBR in the initial variety", substitute "applicant".

30 Subsection 41(5)

After "further test growing", insert "under this section".

31 At the end of Part 3

Add:

Schedule 1 Responses to the Productivity Commission

Part 2 PBR in essentially derived varieties

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

41A Essential derivation for non-PBR-protected second varieties--

application for declaration

Circumstances in which application may be made

(1) A person (an eligible person) may make an application under

subsection (2) if the person is:

(a) the grantee of PBR in a plant variety; or

(b) an exclusive licensee of such a grantee.

(2) An eligible person in relation to a plant variety (the initial variety)

may apply in writing to the Registrar for a declaration under

section 41D that another variety (the second variety) is essentially

derived from the initial variety if:

(a) PBR has not been applied for, or granted, in the second

variety; and

(b) the eligible person is satisfied that the second variety is

essentially derived from the initial variety; and

section 40 or 41D) to be essentially derived from another

variety in which PBR has been granted.

Content of application

(3) The application must:

(a) be in the approved form; and

(b) be accompanied by such fee (if any) as is prescribed by the

regulations in respect of the application.

(4) Without limiting what the approved form may require, the

application must contain:

(a) such information as is required by the form that is relevant to

establishing, on the balance of probabilities, that the second

variety is:

(i) essentially derived from the initial variety; and

(ii) a registrable plant variety within the meaning of

section 43; and

(b) either:

(i) such information as is required by the form that is

necessary to enable the Registrar to notify the

Responses to the Productivity Commission Schedule 1

PBR in essentially derived varieties Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

application to the person (or persons) the applicant

reasonably believes to be the breeder of the second

variety; or

(ii) evidence that the applicant cannot comply with

subparagraph (i), despite taking reasonable steps to

obtain the information mentioned in that subparagraph.

(5) The Registrar must refuse to consider the application if satisfied

that the applicant has failed to comply with subparagraph (4)(b)(i),

unless the Registrar is satisfied that the applicant, after taking

reasonable steps to obtain the information mentioned in that

subparagraph, cannot do so.

Note:

A decision under this subsection is reviewable by the AAT under

section 77.

Notifying other eligible persons and the breeder of the second

variety

(6) The Registrar must notify an application to:

(a) each eligible person in relation to the initial variety other than

the applicant; and

(b) if the application includes sufficient information for the

Registrar to do so--the person (or persons) the applicant

reasonably believes to be the breeder of the second variety.

(7) The notification of the application must include a statement to the

effect that the application has been, or will be, published in the

Plant Varieties Journal under subsection 41B(1).

Multiple applications

(8) If an eligible person in relation to a plant variety (the initial

variety) applies for a declaration under subsection (2) in relation to

another plant variety (the second variety), that does not prevent

another eligible person in relation to the initial variety also

applying for a declaration under that subsection in relation to the

second variety.

Schedule 1 Responses to the Productivity Commission

Part 2 PBR in essentially derived varieties

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

41B Essential derivation for non-PBR-protected varieties--

publication of applications

(1) As soon as practicable after an application under section 41A is

made, the Registrar must publish a notification of the application in

the Plant Varieties Journal including information about the

applicant and the application, and any related information,

prescribed by the regulations.

(2) At any time or times before making a decision on the application,

the Registrar may publish further notification of the application in

the Plant Varieties Journal, including information (or updated

information) about the matters prescribed by regulations made for

the purposes of subsection (1).

(3) However, the Registrar must not publish any information in a

notification under subsection (1) or (2) if the Registrar is satisfied

that the information is commercial-in-confidence.

Note:

A decision not to publish information for this reason is reviewable by

the AAT under section 77.

(4) Information is commercial-in-confidence if the applicant

demonstrates to the Registrar that:

(a) release of the information would cause competitive detriment

to the applicant; and

(b) the information is not in the public domain; and

Australian law; and

(d) the information is not readily discoverable.

(5) However, this section does not apply if the Registrar refuses to

consider an application under subsection 41A(5).

Note:

Subsection 41A(5) requires the Registrar to refuse to consider an

application if the applicant does not include sufficient information to

enable the person (or persons) the applicant reasonably believes to be

the breeder of the second variety to be notified, unless the Registrar is

satisfied that the applicant took reasonable steps to obtain such

information.

Responses to the Productivity Commission Schedule 1

PBR in essentially derived varieties Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

41C Essential derivation for non-PBR-protected varieties--

opportunity to be heard

Opportunity to be heard for interested persons

(1) Before making a decision in relation to an application under

section 41A for a declaration under section 41D that a plant variety

(the second variety) is essentially derived from another plant

variety, the Registrar must give an opportunity to be heard under

this section to the following persons (each of whom is an

interested person):

(a) a person notified under paragraph 41A(6)(b);

(b) another person who claims to have an interest in the second

variety.

Note:

Paragraph 41A(6)(b) provides for the Registrar to notify a person (or

persons) the applicant reasonably believes to be the breeder of the

second variety.

(2) Subsection (1) only applies if the interested person gives the

Registrar an address for service in Australia or New Zealand within

the hearing period.

(3) The hearing period is the period of 2 months after:

(a) if the Registrar notifies the application to a person (or

persons) under paragraph 41A(6)(b)--the later of the

following days:

(i) the day the application is notified;

(ii) the day notification of the application is last published

in the Plant Varieties Journal; or

(b) if the Registrar does not notify the application to a person (or

persons) under paragraph 41A(6)(b)--the day notification of

the application is last published in the Plant Varieties

Journal.

Note:

The hearing period is the minimum period for considering the

application (see subsection 41D(5)).

Information given in accordance with the opportunity to be heard

(4) For the purposes of section 41D, information is given by an

interested person in accordance with the person's opportunity to be

Schedule 1 Responses to the Productivity Commission

Part 2 PBR in essentially derived varieties

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

heard if the information is given in accordance with regulations

prescribed for the purposes of this subsection.

(5) Regulations made for the purposes of subsection (4) may, without

limiting that subsection, include reasonable requirements in

relation to the following:

(a) the giving of written information at the request of the

Registrar;

(b) the giving of oral information at a hearing convened by the

Registrar;

be convened;

(d) the practice and procedure for any such hearings, including

provision for the Registrar to determine such practice and

procedure (whether generally or in relation to a particular

hearing);

(e) the payment of any fees that are prescribed by the regulations

in relation to the opportunity to be heard.

Interested person declines the opportunity to be heard

(6) For the purposes of section 41D, an interested person declines the

opportunity to be heard if the person:

(a) gives the Registrar notice that the person does not want to be

heard; or

(b) fails to give any information in accordance with the person's

opportunity to be heard under subsection (4).

41D Essential derivation for non-PBR-protected varieties--

declaration

Making the decision

(1) On an application under section 41A for a declaration under this

section that a plant variety (the second variety) is essentially

derived from another plant variety (the initial variety), the

Registrar may:

(a) declare in writing that the second variety is essentially

derived from the initial variety; or

(b) refuse to make such a declaration.

Responses to the Productivity Commission Schedule 1

PBR in essentially derived varieties Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Note 1:

A decision under this section is reviewable by the AAT under

section 77.

Note 2:

The Registrar must refuse to make a declaration under this section if

the applicant fails to comply with a requirement under

paragraph 41E(3)(a) in relation to a test growing.

Note 3:

The Registrar must not make a decision under this section if an

application for PBR in the second variety is made under section 24

(see section 41F).

(2) The Registrar must make a declaration under subsection (1) if, and

only if:

(a) he or she is satisfied on the balance of probabilities that the

second variety is:

(i) essentially derived from the initial variety; and

(ii) a registrable plant variety within the meaning of

section 43; and

(b) the initial variety is not itself declared (under section 40 or

this section) to be essentially derived from another plant

variety.

(3) In deciding whether to make a declaration under subsection (1), the

Registrar must consider the following:

(a) the information in the application;

(b) any information given by an interested person in accordance

with the person's opportunity to be heard under

subsection 41C(4);

accordance with section 41E;

(d) any other relevant information.

(4) For the purposes of making the decision, the Registrar may draw

an inference that is unfavourable to the interests of an interested

person (within the meaning of section 41C) if the person, within

the hearing period:

(a) does not give the Registrar an address for service for the

purposes of subsection 41C(2); or

(b) declines the opportunity to be heard under subsection 41C(6).

Schedule 1 Responses to the Productivity Commission

Part 2 PBR in essentially derived varieties

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Response Part 1 and Other Measures) Bill 2018

No. , 2018

Time for making decision

(5) The Registrar must not make a decision in relation to the

application before the end of the hearing period.

Note:

For the hearing period, see subsection 41C(3).

Notification of decision

(6) If the Registrar makes a decision under subsection (1), the

Registrar must notify the decision to the following:

(a) each eligible person within the meaning of section 41A

(including the applicant);

(b) each interested person who is required to be given an

opportunity to be heard under subsection 41C(1).

(7) A notification under subsection (6) must include:

(a) a statement of reasons for the decision; and

(b) a statement to the effect that, subject to the AAT Act,

application may be made to the AAT for review of the

decision to which the notice relates by or on behalf of a

person or persons whose interests are affected by the

decision.

Effect of declaration--reasonable public access

(8) While a declaration under this section that the second variety is

essentially derived from the initial variety remains in force,

section 19 applies in relation to the second variety as if the

reference in subsection 19(4) to 2 years after the grant of PBR were

a reference to 2 years after the declaration was made.

Note:

Section 19 requires the grantee of PBR in a plant variety to take

reasonable steps to ensure reasonable public access to the plant

variety.

41E Essential derivation for non-PBR-protected varieties--test

growing

(1) For the purposes of considering an application under section 41A

for a declaration under section 41D that a plant variety (the second

variety) is essentially derived from another plant variety (the initial

variety), the Registrar may conduct a test growing or further test

Responses to the Productivity Commission Schedule 1

PBR in essentially derived varieties Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

growing to determine whether, on the balance of probabilities, the

second variety is:

(a) essentially derived from the initial variety; and

(b) a registrable plant variety within the meaning of section 43.

Note:

A decision under this section is reviewable by the AAT under

section 77.

(2) The Registrar must notify a decision to conduct a test growing to:

(a) the applicant; and

(b) each interested person who is required to be given an

opportunity to be heard under subsection 41C(1).

(3) To enable the Registrar to arrange a test growing, the notification

must require:

(a) the applicant, within a reasonable period specified in the

notification, to supply the Registrar with sufficient plants or

sufficient propagating material of plants of the initial variety,

and with any necessary information; and

(b) each interested person notified under paragraph (2)(b), within

a reasonable period specified in the notification, to supply the

Registrar with sufficient plants or sufficient propagating

material of plants of the second variety, and with any

necessary information.

(4) The notification must include a statement of the effect of

subsections (5) to (8).

(5) Despite subsection 41D(2), the Registrar must, under

paragraph 41D(1)(b), refuse to make the declaration applied for if

the applicant fails to comply with a requirement under

paragraph (3)(a) of this section.

(6) For the purposes of making a decision under subsection 41D(1) in

relation to the application, the Registrar may draw an inference that

is unfavourable to the interests of a person notified under

paragraph (2)(b) of this section if the person fails to comply with a

requirement under paragraph (3)(b) of this section.

(7) After completion of the test growing, the Registrar must ensure

that any propagating material of a variety used in, or resulting

from, the test growing that is capable of being transported is

Schedule 1 Responses to the Productivity Commission

Part 2 PBR in essentially derived varieties

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

delivered to the person by whom propagating material of that

variety was supplied for the purpose of the test growing.

(8) The applicant must pay all costs associated with the test growing.

41F Essential derivation for non-PBR-protected varieties--

application lodged for PBR in second variety

Decision to treat application under section 41A as an application

under section 40

(1) The Registrar must decide to treat an application under section 41A

for a declaration under section 41D that a plant variety (the second

variety) is essentially derived from another variety (the initial

variety) as an application under section 40 in relation to those plant

varieties if:

(a) an application for PBR in a plant variety (the PBR

application) is made under section 24; and

(b) the Registrar is satisfied that the plant variety in relation to

which the PBR application is made is the same as the second

variety.

Note:

Section 40 provides for a declaration that a plant variety (the second

variety) is essentially derived from another plant variety (the initial

variety) if PBR has been applied for, or granted, in relation to the

second variety.

Effect of decision

(2) If the Registrar makes a decision under subsection (1):

(a) the Registrar must not make a decision under section 41D in

relation to the application under section 41A (the original

application); and

(b) the Registrar must treat the application under section 41A as

if it were an application (the converted application) made

under section 40 in relation to the initial variety and the

second variety, subject to this section.

Notification of decision

(3) The Registrar must notify the decision to the following persons:

Responses to the Productivity Commission Schedule 1

PBR in essentially derived varieties Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

(a) each eligible person, within the meaning of section 41A, in

relation to the initial variety (including the applicant under

section 41A);

(b) the applicant for PBR in the second variety;

the second variety, who is required to be given an

opportunity to be heard under subsection 41C(1).

(4) A notification under subsection (3) must include:

(a) a statement of the reasons for the decision, and the effect of

this section; and

(b) in the case of the notification given under paragraph (3)(a) to

the applicant under section 41A--a statement to the effect

that the applicant under section 41A may provide additional

information under subsection (6) within 2 months after the

date of the notification.

(5) The Registrar must publish notice of the decision in the Plant

Varieties Journal.

Relevant information

(6) Within 2 months after a notification of the Registrar's decision is

given under subsection (3) to the applicant under section 41A, the

applicant under section 41A may give the Registrar any

information that would have been required or allowed under

subsections 40(4) and (5) had the original application been made

under section 40.

(7) For the purpose of making a decision under section 40 in relation

to the converted application, the Registrar may consider the

following:

(a) for the purposes of a decision under subsection 40(7):

(i) any information in the original application; and

(ii) any additional information given in accordance with

subsection (6) of this section;

(b) for the purposes of a decision under subsection 40(10) or

(11):

(i) any information in relation to the original application

given by an interested person in accordance with the

Schedule 1 Responses to the Productivity Commission

Part 2 PBR in essentially derived varieties

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

person's opportunity to be heard under

subsection 41C(4); and

(ii) any information in relation to the original application

obtained in a test growing conducted in accordance with

section 41E; and

(iii) any information mentioned in subsection 40(10) in

relation to the converted application, including

information obtained in a test growing conducted in

accordance with section 41.

Time for making decision

(8) The Registrar must not make a decision in relation to the converted

application earlier than 2 months after the day the notification is

given under paragraph (3)(a) to the applicant under section 41A.

32 Paragraph 45(3)(c)

Repeal the paragraph, substitute:

initial variety;

33 At the end of subsection 45(3)

Add:

Note:

For declarations of essential derivation, see sections 40 and 41D.

34 Subsection 46(2)

Omit "the Secretary makes a declaration that a variety (the derived

variety) is", substitute "a variety (the derived variety) is declared to be".

35 At the end of subsections 46(2) and 47(2)

Add:

Note:

For declarations of essential derivation, see sections 40 and 41D.

36 Paragraph 48(2)(c)

Omit "requesting the Secretary to make a declaration under section 40",

substitute "applying for a declaration".

Responses to the Productivity Commission Schedule 1

PBR in essentially derived varieties Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

37 At the end of subsections 48(2), 50(3) and 53(2)

Add:

Note:

For declarations of essential derivation, see sections 40 and 41D.

38 At the end of subsection 75(3) (before the penalty)

Add:

Note:

For declarations of essential derivation, see sections 40 and 41D.

39 After subparagraph 77(1)(b)(xiii)

Insert:

(xiiia) under subsection 41A(5) to refuse to consider an

application for a declaration of essential derivation; or

(xiiib) under subsection 41B(3) to publish, or not to publish,

information in a notification under subsection 41B(1) or

(2); or

(xiiic) under subsection 41D(1) to make, or to refuse to make,

a declaration of essential derivation; or

(xiiid) under section 41E to conduct, or not to conduct, a test

growing; or

40 Subparagraph 80(2)(a)(ii)

Repeal the subparagraph, substitute:

(ii) fees payable in respect of the making of applications for

declarations of essential derivation, the examination of

those applications and the making of those declarations,

including giving interested persons the opportunity to be

heard in relation to applications for declarations under

section 41D; and

41 At the end of subsection 80(2)

Add:

Note:

For declarations of essential derivation, see sections 40 and 41D.

42 Application of amendments

The amendments of the Plant Breeder's Rights Act 1994 made by this

Part apply in relation to an application for a declaration under section 40

or 41D of that Act that a plant variety is essentially derived from

Responses to the Productivity Commission Schedule 1

Period to apply for removal of trade marks from Register for non-use Part 3

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 3--Period to apply for removal of trade marks

from Register for non-use

Trade Marks Act 1995

43 At the end of subsection 92(4)

Add:

Note 3:

For when the registration of a trade mark is taken to have effect, see

sections 72 and 239A.

44 Subsection 92(5)

Omit "an application (under subsection (1) or (3)) to obtain the removal

of a trade mark from the Register", substitute "a non-use application".

45 Section 93

Repeal the section, substitute:

93 Time for making application

(1) A non-use application on the ground mentioned in

paragraph 92(4)(a) may be made at any time after the filing date in

respect of the application for the registration of the trade mark.

Note:

For filing date see section 6.

(2) A non-use application on the ground mentioned in

paragraph 92(4)(b) may only be made after a period of 3 years

beginning from the date the particulars of the trade mark were

entered into the Register under section 69.

Note:

The registration of a trade mark is taken to have effect earlier than the

date the particulars of the trade mark are entered into the Register (see

sections 72 and 239A).

46 Application of amendments

Section 93 of the Trade Marks Act 1995, as substituted by this Part,

applies to a non-use application in relation to a trade mark if the filing

date in respect of the application for the registration of the trade mark is

on or after the day this item commences.

Other measures Schedule 2

Amending trade mark applications--non-legal persons Part 1

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Schedule 2--Other measures

Part 1--Amending trade mark applications--

non-legal persons

Trade Marks Act 1995

1 At the end of section 65

Add:

(8) Without limiting subsection (7), if the application specifies an

applicant without legal personality, an amendment may be made

under that subsection to change the reference to the specified

applicant to a reference to a person with legal personality if that

person can be identified as having made the application.

Schedule 2 Other measures

Part 2 Written requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Part 2--Written requirements

Division 1

--Amendments

Designs Act 2003

2 Subsection 24(1)

Omit "give a written notice to the applicant stating", substitute ", by

notification to the applicant, state".

3 Subsections 24(2) and (3)

Repeal the subsections, substitute:

(2) If a purported design application does not meet the minimum filing

requirements, the Registrar must notify the applicant to that effect.

The notification must:

(a) identify each minimum filing requirement that has not been

met; and

(b) require the applicant to file the additional information

required within 2 months, or such other period as is

prescribed, from the date of the notification.

(3) If the minimum filing requirements are not met within the period

under paragraph (2)(b), the application is taken never to have been

filed.

4 Paragraph 33(1)(b)

Omit "a notice", substitute "a notification".

5 Subparagraph 33(1)(b)(ii)

Omit "the notice", substitute "the notification".

6 Section 41

Omit "give a written notice to the applicant stating", substitute "notify

the applicant".

Other measures Schedule 2

Written requirements Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

7 Paragraph 41(a)

Before "the matters", insert "of".

8 Subparagraph 41(c)(ii)

Omit "notice", substitute "notification".

9 Section 42 (heading)

Repeal the heading, substitute:

42 What happens after Registrar's notification under section 41

10 Subsection 42(1)

Omit "written notice", substitute "notification".

11 Subsection 42(3)

Omit "notice", substitute "notification".

12 Paragraph 42(5)(b)

Omit "notice", substitute "notification".

13 Subsection 43(2)

Omit "a notice", substitute "a notification".

14 Paragraph 43(2)(b)

Omit "notice", substitute "notification".

15 Subsection 43(3)

Omit "in writing of a refusal under subsection (1) or (2). The notice

must set out", substitute "of a refusal under subsection (1) or (2) and

of".

16 Paragraph 52(3)(a)

Omit "give the relevant parties a notice stating", substitute "notify the

relevant parties".

Schedule 2 Other measures

Part 2 Written requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

17 Subsection 57(3)

Omit "give a written notice to the applicant stating", substitute "notify

the applicant".

18 Paragraph 57(3)(a)

Before "the matters", insert "of".

19 Subparagraph 57(3)(c)(ii)

Omit "notice", substitute "notification".

20 Section 58 (heading)

Repeal the heading, substitute:

58 What happens after Registrar's notification under section 57

21 Subsection 58(1)

Omit "written notice", substitute "notification".

22 Subsection 58(3)

Omit "notice", substitute "notification".

23 Paragraph 58(5)(b)

Omit "notice", substitute "notification".

24 Paragraph 59(1)(a)

Omit "notice", substitute "a notification".

25 Paragraph 59(1)(b)

Omit "notice", substitute "notification".

26 Subsection 59(2)

Omit "in writing of a refusal under subsection (1). The notice must set

out", substitute "of a refusal under subsection (1) and of".

Other measures Schedule 2

Written requirements Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

27 Subsection 66(2)

Omit "give written notice to that effect to the registered owner of the

design", substitute "notify the registered owner of the design to that

effect".

28 Subsection 67(2)

Omit "give the relevant parties a notice stating", substitute "notify the

relevant parties".

29 Paragraph 67(2)(b)

Before "the details", insert "of".

30 Paragraph 68(2)(a)

Omit "give the relevant parties a notice stating", substitute "notify the

relevant parties".

31 Paragraph 69(3)(a)

Omit "inform", substitute "notify".

32 Paragraph 138(2)(a)

Omit "advise", substitute "notify".

33 Before section 145

Insert:

144D Notifications by Registrar under this Act or regulations

(1) If under this Act or the regulations the Registrar is required or

permitted:

(a) to notify a person of a matter; or

(b) to notify a person that the person is required to do a thing;

the Registrar may so notify the person by any means of

communication (including by electronic means).

Note:

Section 145 deals with the service etc. of documents on a person.

(2) However, the notification must be by a means of communication

such that the content of the notification is readily accessible so as

to be usable for subsequent reference.

Schedule 2 Other measures

Part 2 Written requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Patents Act 1990

34 Subsection 27(2)

Repeal the subsection, substitute:

(2) The Commissioner must:

(a) notify the applicant for the patent of any matter of which the

Commissioner is notified under subsection (1); and

(b) give the applicant for the patent a copy of any document

accompanying the notice under subsection (1).

(2A) Without limiting paragraph (2)(b), the Commissioner may give the

copy by:

(a) making the copy available to the applicant for the patent in an

electronic form; and

(b) notifying the applicant for the patent that the copy is

available.

35 Subsection 28(4)

Repeal the subsection, substitute:

Commissioner must notify patentee of notice given

(4) The Commissioner must:

(a) notify the patentee of any matter of which the Commissioner

is notified under subsection (1); and

(b) give the patentee a copy of any document accompanying the

notice under subsection (1).

(4A) Without limiting paragraph (4)(b), the Commissioner may give the

copy by:

(a) making the copy available to the patentee in an electronic

form; and

(b) notifying the patentee that the copy is available.

36 Paragraph 49(5)(a)

Omit "in writing".

Other measures Schedule 2

Written requirements Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

37 Subsection 49(7)

Omit "in writing".

38 Paragraphs 74(2)(a) and (4)(a)

Omit "in writing".

39 Subsection 76(2)

Omit "in writing".

40 Paragraph 101E(1)(a)

Omit "in writing".

41 Subsection 101E(3)

Repeal the subsection.

42 After section 220

Insert:

220A Notifications by Commissioner under this Act

(1) If under this Act the Commissioner is required or permitted:

(a) to notify a person of a matter; or

(b) to notify a person that the person is required to do a thing;

the Commissioner may so notify the person by any means of

communication (including by electronic means).

Note 1:

A reference to this Act includes the regulations (see Schedule 1).

Note 2:

Section 221 deals with the service etc. of documents on a person.

(2) However, the notification must be by a means of communication

such that the content of the notification is readily accessible so as

to be usable for subsequent reference.

Plant Breeder's Rights Act 1994

43 Subsection 19(6)

Omit "give the grantee".

Schedule 2 Other measures

Part 2 Written requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

44 Paragraph 19(6)(a)

Before "a", insert "give the grantee".

45 Paragraph 19(6)(b)

Omit "a written invitation", substitute "by notification to the grantee,

invite the grantee".

46 Paragraph 19(7)(b)

Omit "give written notice of the decision to the grantee and to the

person making the request", substitute "notify the grantee, and the

person making the request, of the decision".

47 Subparagraph 19(9)(b)(i)

Omit "given written notice to", substitute "notified".

48 Subsection 21(3)

Omit "give written notice to the claimant and to the person who was the

holder before the entry was made, stating that the entry has been made",

substitute "notify the claimant, and the person who was the holder

before the entry was made, that the entry has been made".

49 Paragraph 21(4)(a)

Omit "give written notice to", substitute "notify".

50 Subparagraph 21(4)(a)(i)

Omit "telling the claimant".

51 Subparagraph 21(4)(a)(ii)

Omit "setting out", substitute "of".

52 Paragraph 21(4)(b)

Omit "give written notice to", substitute "notify".

53 Subparagraph 21(4)(b)(i)

Omit "setting out", substitute "of the".

Other measures Schedule 2

Written requirements Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

54 Subparagraph 21(4)(b)(ii)

Omit "telling the claimant".

55 Subparagraph 21(4)(b)(iii)

Omit "setting out", substitute "of".

56 Paragraph 30(4)(a)

Omit "give written notice to the applicant telling the applicant",

substitute "notify the applicant".

57 Paragraph 30(5)(a)

Omit "give written notice to the applicant telling the applicant",

substitute "notify the applicant".

58 Paragraph 30(5)(a)

Omit "setting out", substitute "of".

59 Subsection 32(1)

Omit "give written notice to", substitute "notify".

60 Subsection 32(1)

Omit "telling the person".

61 Subsection 32(2)

Omit "give written notice to", substitute "notify".

62 Paragraph 32(2)(a)

Omit "telling the person".

63 Paragraph 32(2)(b)

Omit "setting out", substitute "of".

64 Subsection 32(3)

Omit "give written notice to", substitute "notify".

65 Paragraph 32(3)(a)

Omit "setting out", substitute "of the".

Schedule 2 Other measures

Part 2 Written requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

66 Paragraph 32(3)(b)

Omit "telling the applicant".

67 Paragraph 32(3)(c)

Omit "setting out", substitute "of".

68 Subsection 32(4)

Omit "give written notice of", substitute "notify".

69 Paragraphs 37(1)(d) and (e)

Omit "give written notice of", substitute "notify".

70 Subsection 37(2)

Omit "notice", substitute "notification".

71 Subsection 37(2A)

Omit "a notice is sent", substitute "a notification is given".

72 Subsection 37(2A)

Omit "the requirements of the notice", substitute "the requirements of

the notification".

73 Paragraph 37(2A)(a)

Omit "of service of the notice", substitute "the notification is given".

74 Subsection 37(2B)

Omit "notice issued", substitute "notification given".

75 Paragraph 37(2B)(a)

Omit "notice", substitute "notification".

76 Subsection 37(3)

Omit "notice", substitute "notification".

77 Paragraph 39(1)(b)

Omit "notice" (wherever occurring), substitute "notification".

Other measures Schedule 2

Written requirements Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

78 Subsection 39(2)

Omit ", in writing,".

79 Subsection 39(2)

Omit "notice", substitute "notification".

80 Subsection 39(3)

Omit "notice" (wherever occurring), substitute "notification".

81 Paragraphs 40(8)(a) and (b)

Omit "inform", substitute "notify".

82 Paragraph 40(8)(b)

Omit "informed", substitute "notified".

83 Paragraph 40(10)(f)

Omit "by notice in writing given to", substitute "notify".

84 Paragraph 40(10)(f)

Omit ", tell that grantee of the declaration and set out", substitute "of

the declaration and of".

85 Paragraph 40(11)(b)

Omit "by notice in writing given to", substitute "notify".

86 Paragraph 40(11)(b)

Omit ", tell that grantee".

87 Subsection 41(2)

Omit "notice", substitute "notification".

88 Subsection 41(5)

Omit "subsection 40(8) has effect as if the reference in that subsection

to 30 days after being so informed were a reference to 30 days after

being informed", substitute "paragraph 40(8)(b) has effect as if the

reference in that paragraph to 30 days after being so notified were a

reference to 30 days after being notified".

Schedule 2 Other measures

Part 2 Written requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

89 Subsection 44(12)

Omit "give written notice to", substitute "notify".

90 Paragraph 44(12)(a)

Omit "telling the applicant".

91 Paragraph 44(12)(b)

Omit "setting out", substitute "of".

92 Paragraph 50(2)(aa)

Omit "notice", substitute "notification".

93 Subsection 50(3)

Omit "by notice given to the grantee of the right that has been revoked

or of the right that is affected by the giving of the declaration of

essential derivation, tell that grantee of the decision and set out the

reasons for the revocation", substitute "notify the decision, and the

reasons for the decision, to the grantee of the right that has been

revoked or to the grantee of the right that was affected by the giving of

the declaration of essential derivation".

94 Subsection 50(10)

Omit "by notice in writing to", substitute "notify".

95 Subsection 50(10)

Omit ", tell the person of the decision and set out", substitute "of the

decision and of".

96 After section 72

Insert:

72A Notifications by Registrar under this Act or regulations

(1) If under this Act or the regulations the Registrar is required or

permitted:

(a) to notify a person of a matter; or

(b) to notify a person that the person is required to do a thing;

Other measures Schedule 2

Written requirements Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

the Registrar may so notify the person by any means of

communication (including by electronic means).

Note:

Section 73 deals with the service etc. of documents on a person.

(2) However, the notification must be by a means of communication

such that the content of the notification is readily accessible so as

to be usable for subsequent reference.

97 Subparagraph 77(1)(b)(xi)

Omit "issue a notice", substitute "give a notification".

Trade Marks Act 1995

98 Section 34 (heading)

Repeal the heading, substitute:

34 Notification of decision

99 Paragraph 34(a)

Omit "in writing".

100 Subsection 77(2)

Omit "notice", substitute "notification".

101 Section 80C (heading)

Repeal the heading, substitute:

80C Notification about renewal

102 Subsection 80E(2)

Omit "notice", substitute "notification".

103 Subsection 84A(4)

Omit "notice", substitute "notification".

104 Subsection 84A(4)

Omit "in accordance with the regulations".

Schedule 2 Other measures

Part 2 Written requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

105 Subsection 95(1)

Omit "notice", substitute "a copy".

106 Section 111 (heading)

Repeal the heading, substitute:

111 Notification of application to be given to person recorded as

claiming interest in trade mark etc.

107 Paragraph 176(3)(a)

Repeal the paragraph, substitute:

(a) notify the applicant of the Registrar's decision under this

section; and

108 Paragraph 202(e)

Omit ", as he or she considers fit,".

109 After section 214

Insert:

214A Notifications by Registrar under this Act

(1) If under this Act the Registrar is required or permitted:

(a) to notify a person of a matter; or

(b) to notify a person that the person is required to do a thing;

the Registrar may so notify the person by any means of

communication (including by electronic means).

Note 1:

A reference to this Act includes the regulations (see section 6).

Note 2:

Section 215 deals with the service etc. of documents on a person.

(2) However, the notification must be by a means of communication

such that the content of the notification is readily accessible so as

to be usable for subsequent reference.

Other measures Schedule 2

Written requirements Part 2

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Division 2

--Application and saving provisions

110 Designs

(1)

The amendments of sections 24, 33, 41, 42, 43, 52, 57, 58, 59, 66, 67,

68, 69 and 138 of the Designs Act 2003 made by this Part apply in

relation to notifications occurring on or after the commencement of this

item.

(2)

The Designs Act 2003, as in force immediately before the

commencement of this item, continues to apply on and after that

commencement in relation to a notice given under subsection 24(1) or

(2), section 41, paragraph 52(3)(a), subsection 57(3), 66(2) or 67(2) or

paragraph 68(2)(a) of that Act before that commencement.

111 Patents

The amendments of sections 27, 28, 49, 74 and 76 of the Patents Act

1990 made by this Part apply in relation to notifications occurring on or

after the commencement of this item.

112

Plant breeder's rights

(1)

The amendment of paragraph 19(6)(b) of the Plant Breeder's Rights Act

1994 made by this Part applies in relation to invitations made on or after

the commencement of this item.

(2)

The amendments of paragraph 19(7)(b), subparagraph 19(9)(b)(i) and

sections 21, 30, 32, 37, 39, 40, 41, 44 and 50 of the Plant Breeder's

Rights Act 1994 made by this Part apply in relation to notifications

occurring on or after the commencement of this item.

(3)

The Plant Breeder's Rights Act 1994, as in force immediately before the

commencement of this item, continues to apply on and after that

commencement in relation to a notice given under paragraph 19(7)(b),

subparagraph 19(9)(b)(i), subsection 21(3), paragraph 21(4)(a) or (b) or

30(4)(a) or (5)(a), subsection 32(1), (2), (3) or (4), section 37,

subsection 39(2), paragraph 40(10)(e) or (f) or (11)(a) or (b) or

subsection 41(1), 44(12) or 50(3) or (10) of that Act before that

commencement.

Schedule 2 Other measures

Part 2 Written requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

113 Trade marks

(1)

The amendments of sections 34, 77, 80E, 84A, 176 and 202 of the

Trade Marks Act 1995 made by this Part apply in relation to

notifications occurring on or after the commencement of this item.

(2)

The Trade Marks Act 1995, as in force immediately before the

commencement of this item, continues to apply on and after that

commencement in relation to a notice given under subsection 77(2),

80E(2) or 84A(4) or paragraph 176(3)(a) of that Act before that

commencement.

Other measures Schedule 2

Filing requirements Part 3

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 3--Filing requirements

Division 1

--Amendments

Designs Act 2003

114 Section 5

Insert:

preferred means:

(a) in relation to filing a document with the Designs Office--

means the means specified under subsection 144A(4); or

(b) in relation to paying a fee--means the means specified under

subsection 130A(4).

115 After subsection 69(2)

Insert:

(2A) A person must not provide to the Registrar material in the form of

a physical article, other than a document, unless the Registrar has

given the person an approval to do so.

(2B) If a person provides material to the Registrar under subsection (1),

the material may be accompanied by evidence, in the form of a

declaration, of the publication of the material.

Note:

The regulations deal with the making of declarations.

116 After subsection 130(2)

Insert:

(2A) Without limiting subsection (1), different fees may be prescribed

for filing a document with the Designs Office according to the

means by which the document is filed.

(2B) Without limiting subsection (1), different amounts of a fee may be

prescribed according to the means by which the fee is paid.

Schedule 2 Other measures

Part 3 Filing requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Means of paying fee

(2C) A fee must be paid by a means determined in an instrument under

subsection 130A(1).

Fees payable in accordance with the regulations

117 Before subsection 130(4)

Insert:

Consequences of failure to pay fee

118 At the end of Part 2 of Chapter 11

Add:

130A Approved means of paying a fee

(1) For the purposes of subsection 130(2C), the Registrar may, by

writing, determine one or more means for paying a fee.

(2) The means may be an electronic means or any other means.

(3) The Registrar must publish a notice, in accordance with the

regulations, setting out the determination.

(4) The Registrar may, in a determination under subsection (1), specify

that one or more means for paying a fee are preferred means.

Note:

Under the regulations, the amount of a fee may be reduced for paying

the fee by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

119 Section 144

Repeal the section, substitute:

144 Filing of documents

For the purposes of this Act and the regulations, a document may

be filed with the Designs Office by a means determined in an

instrument under subsection 144A(1).

Other measures Schedule 2

Filing requirements Part 3

No. , 2018

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Response Part 1 and Other Measures) Bill 2018

144A Approved means of filing documents

(1) For the purposes of section 144, the Registrar may, by writing,

determine one or more means for filing a document with the

Designs Office.

(2) The means may be an electronic means or any other means.

(3) The Registrar must publish a notice, in accordance with the

regulations, setting out the determination.

(4) The Registrar may, in a determination under subsection (1), specify

that one or more means for filing a document with the Designs

Office are preferred means.

Note:

Under the regulations, reduced fees may be payable for filing a

document by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

144B Directions by Registrar for filing of documents

(1) The Registrar may, by writing, give a direction specifying the form

in which a document is to be filed under this Act or the regulations.

Note:

See also paragraph 149(2)(aa) (about regulations).

(2) Subsection (1) does not apply in relation to a document that is

required, under the regulations, to be in an approved form.

(3) The Registrar must publish a notice, in accordance with the

regulations, setting out the direction.

(4) A direction under subsection (1) is not a legislative instrument.

144C Directions by Registrar for filing of evidence

(1) The Registrar may, by writing, give a direction in relation to the

filing of evidence in connection with a matter arising under this

Act or the regulations.

Note:

See also paragraph 149(2)(ab) (about regulations).

Schedule 2 Other measures

Part 3 Filing requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

(2) Without limiting subsection (1), a direction under that subsection

may relate to the following:

(a) the number of copies of evidence to be filed;

(b) the form in which evidence is to be filed (including the

circumstances in which physical articles, other than

documents, are or are not permitted to be filed);

(3) Without limiting paragraph (2)(b), a direction under subsection (1)

may require that evidence in writing be in the form of a

declaration.

(4) This section does not apply in relation to the provision of material

under section 69 (about material relating to whether a registered

design is new or distinctive).

(5) The Registrar must publish a notice, in accordance with the

regulations, setting out a direction under subsection (1).

(6) A direction under subsection (1) is not a legislative instrument.

120 Before paragraph 149(2)(a)

Insert:

(aa) making provision for and in relation to the following:

(i) the requirements for filing a document under this Act or

the regulations (including the requirement that the

document must be in the form (if any) specified in a

direction under section 144B);

(ii) the consequences of a document not being in

accordance with an approved form or not complying

with the requirements referred to in subparagraph (i);

and

(ab) making provision for and in relation to the consequences of

not complying with a direction under section 144C; and

Patents Act 1990

121 Section 3 (list of definitions)

Insert "preferred means".

Other measures Schedule 2

Filing requirements Part 3

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

122 Section 214

Repeal the section, substitute:

214 Filing of documents

For the purposes of this Act, a document may be filed with the

Patent Office by a means determined in an instrument under

subsection 214A(1).

123 After section 214

Insert:

214A Approved means of filing documents

(1) For the purposes of section 214, the Commissioner may, by

writing, determine one or more means for filing a document with

the Patent Office.

(2) The means may be an electronic means or any other means.

(3) The Commissioner must publish a notice in the Official Journal

setting out the determination.

(4) The Commissioner may, in a determination under subsection (1),

specify that one or more means for filing a document with the

Patent Office are preferred means.

Note:

Under the regulations, reduced fees may be payable for filing a

document by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

124 Before section 215

Insert:

214B Directions by Commissioner for filing of documents

(1) The Commissioner may, by writing, give a direction specifying the

form in which a document is to be filed under this Act.

Note 1:

A reference to this Act includes the regulations (see Schedule 1).

Schedule 2 Other measures

Part 3 Filing requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Note 2:

See also paragraph 228(2)(ba) (about regulations).

(2) Subsection (1) does not apply in relation to a document that is

required to be in an approved form.

(3) The Commissioner must publish a notice in the Official Journal

setting out the direction.

(4) A direction under subsection (1) is not a legislative instrument.

214C Directions by Commissioner for filing of evidence

(1) The Commissioner may, by writing, give a direction in relation to

the filing of evidence in connection with a matter arising under this

Act.

Note 1:

A reference to this Act includes the regulations (see Schedule 1).

Note 2:

See also paragraph 228(2)(bb) (about regulations).

(2) Without limiting subsection (1), a direction under that subsection

may relate to the following:

(a) the number of copies of evidence to be filed;

(b) the form in which evidence is to be filed (including the

circumstances in which physical articles, other than

documents, are or are not permitted to be filed);

(3) Without limiting paragraph (2)(b), a direction under subsection (1)

may require that evidence in writing be in the form of a

declaration.

(4) The Commissioner must publish a notice in the Official Journal

setting out a direction under subsection (1).

(5) A direction under subsection (1) is not a legislative instrument.

125 After subsection 227(2)

Insert:

(2A) Without limiting subsection (1), different fees may be prescribed

for filing a document with the Patent Office according to the means

by which the document is filed.

Other measures Schedule 2

Filing requirements Part 3

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

(2B) Without limiting subsection (1), different amounts of a fee may be

prescribed according to the means by which the fee is paid.

(2C) A fee must be paid by a means determined in an instrument under

subsection 227AAA(1).

126 After section 227

Insert:

227AAA Approved means of paying a fee

(1) For the purposes of subsection 227(2C), the Commissioner may,

by writing, determine one or more means for paying a fee.

(2) The means may be an electronic means or any other means.

(3) The Commissioner must publish a notice in the Official Journal

setting out the determination.

(4) The Commissioner may, in a determination under subsection (1),

specify that one or more means for paying a fee are preferred

means.

Note:

Under the regulations, the amount of a fee may be reduced for paying

the fee by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

127 After paragraph 228(2)(b)

Insert:

(ba) making provision for and in relation to the following:

(i) the requirements for filing a document under this Act

(including the requirement that the document must be in

the form (if any) specified in a direction under

section 214B);

(ii) the consequences of a document not being in

accordance with an approved form or not complying

with the requirements referred to in subparagraph (i);

and

(bb) making provision for and in relation to the consequences of

not complying with a direction under section 214C; and

Schedule 2 Other measures

Part 3 Filing requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

128 Schedule 1

Insert:

preferred means:

(a) in relation to filing a document with the Patent Office--

means the means specified under subsection 214A(4); or

(b) in relation to paying a fee--means the means specified under

subsection 227AAA(4).

Plant Breeder's Rights Act 1994

129 Subsection 3(1)

Insert:

preferred means:

(a) in relation to lodging a document with, or giving a document

to, the Registrar--means the means specified under

subsection 72C(4); or

(b) in relation to paying a fee--means the means specified under

subsection 80A(4).

130 Subsection 26(1)

Repeal the subsection, substitute:

(1) An application for PBR in a plant variety must be in the approved

form.

131 Subsection 34(3)

Repeal the subsection, substitute:

(3) The detailed description must be in the approved form.

132 Subsection 40(4)

Repeal the subsection, substitute:

(4) An application for a declaration of essential derivation must:

(a) be in the approved form; and

(b) be accompanied by the prescribed fee in respect of the

application.

Other measures Schedule 2

Filing requirements Part 3

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

133 Before section 73

Insert:

72B Manner in which documents may be lodged with or given to

Registrar

For the purposes of this Act and the regulations, a document may

be lodged with, or given to, the Registrar by a means determined in

an instrument under subsection 72C(1).

72C Approved means of lodging or giving documents

(1) For the purposes of section 72B, the Registrar may, by writing,

determine one or more means for lodging a document with, or

giving a document to, the Registrar.

(2) The means may be an electronic means or any other means.

(3) The Registrar must give public notice setting out the determination.

(4) The Registrar may, in a determination under subsection (1), specify

that one or more means for lodging a document with, or giving a

document to, the Registrar are preferred means.

Note:

Under the regulations, reduced fees may be payable for lodging or

giving a document by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

134 At the end of subparagraph 80(2)(a)(iv)

Add "and".

135 After subparagraph 80(2)(a)(iv)

Insert:

(v) different fees for lodging a document with, or giving a

document to, the Registrar according to the means by

which the document is lodged or given; and

(vi) different amounts of a fee according to the means by

which the fee is paid;

Schedule 2 Other measures

Part 3 Filing requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

136 Paragraph 80(2)(a)

Omit "and the manner of payment of such fees".

137 At the end of section 80

Add:

(3) A fee must be paid by a means determined in an instrument under

subsection 80A(1).

138 At the end of Part 8

Add:

80A Approved means of paying a fee

(1) For the purposes of subsection 80(3), the Registrar may, by

writing, determine one or more means for paying a fee.

(2) The means may be an electronic means or any other means.

(3) The Registrar must give public notice setting out the determination.

(4) The Registrar may, in a determination under subsection (1), specify

that one or more means for paying a fee are preferred means.

Note:

Under the regulations, the amount of a fee may be reduced for paying

the fee by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

Trade Marks Act 1995

139 Readers guide (list of terms defined in section 6)

Insert "preferred means".

140 Subsection 6(1)

Insert:

preferred means:

Other measures Schedule 2

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Response Part 1 and Other Measures) Bill 2018

(a) in relation to filing a document with the Trade Marks

Office--means the means specified under

subsection 213A(4); or

(b) in relation to paying a fee--means the means specified under

subsection 223AA(4).

141 Paragraph 52(2)(a)

Omit "manner and".

142 Subsection 52A(2)

Omit "in the prescribed manner and".

143 Paragraph 54A(1)(b)

Omit "in the prescribed manner or".

144 Paragraph 96(2)(a)

Omit "manner and".

145 Section 213

Repeal the section, substitute:

213 Filing of documents

For the purposes of this Act, a document may be filed with the

Trade Marks Office by a means determined in an instrument under

subsection 213A(1).

213A Approved means of filing documents

(1) For the purposes of section 213, the Registrar may, by writing,

determine one or more means for filing a document with the Trade

Marks Office.

(2) The means may be an electronic means or any other means.

(3) The Registrar must advertise the determination in the Official

Journal.

Schedule 2 Other measures

Part 3 Filing requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

(4) The Registrar may, in a determination under subsection (1), specify

that one or more means for filing a document with the Trade Marks

Office are preferred means.

Note:

Under the regulations, reduced fees may be payable for filing a

document by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

146 Before section 214

Insert:

213B Directions by Registrar for filing of documents

(1) The Registrar may, by writing, give a direction specifying the form

in which a document is to be filed under this Act.

Note 1:

A reference to this Act includes the regulations (see section 6).

Note 2:

See also paragraph 231(2)(ba) (about regulations).

(2) Subsection (1) does not apply in relation to a document that is

required to be in an approved form.

(3) The Registrar must advertise the direction in the Official Journal.

(4) A direction under subsection (1) is not a legislative instrument.

213C Directions by Registrar for filing of evidence

(1) The Registrar may, by writing, give a direction in relation to the

filing of evidence in connection with a matter arising under this

Act.

Note 1:

A reference to this Act includes the regulations (see section 6).

Note 2:

See also paragraph 231(2)(bb) (about regulations).

(2) Without limiting subsection (1), a direction under that subsection

may relate to the following:

(a) the number of copies of evidence to be filed;

(b) the form in which evidence is to be filed (including the

circumstances in which physical articles, other than

documents, are or are not permitted to be filed);

Other measures Schedule 2

Filing requirements Part 3

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

(3) Without limiting paragraph (2)(b), a direction under subsection (1)

may require that evidence in writing be in the form of a

declaration.

(4) The Registrar must advertise a direction under subsection (1) in the

Official Journal.

(5) A direction under subsection (1) is not a legislative instrument.

147 After subsection 223(2)

Insert:

(2A) Without limiting subsection (1), different fees may be prescribed

for filing a document with the Trade Marks Office according to the

means by which the document is filed.

(2B) Without limiting subsection (1), different amounts of a fee may be

prescribed according to the means by which the fee is paid.

Means of paying fee

(2C) A fee that must be paid to the Registrar must be paid by a means

determined in an instrument under subsection 223AA(1).

Consequences of failure to pay fee

148 After section 223

Insert:

223AA Approved means of paying a fee

(1) For the purposes of subsection 223(2C), the Registrar may, by

writing, determine one or more means for paying a fee.

(2) The means may be an electronic means or any other means.

(3) The Registrar must advertise the determination in the Official

Journal.

(4) The Registrar may, in a determination under subsection (1), specify

that one or more means for paying a fee are preferred means.

Schedule 2 Other measures

Part 3 Filing requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Note:

Under the regulations, the amount of a fee may be reduced for paying

the fee by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

149 Before paragraph 231(2)(c)

Insert:

(ba) provide for and in relation to the following:

(i) the requirements for filing a document under this Act

(including the requirement that the document must be in

the form (if any) specified in a direction under

section 213B);

(ii) the consequences of a document not being in

accordance with an approved form or not complying

with the requirements referred to in subparagraph (i);

and

(bb) provide for and in relation to the consequences of not

complying with a direction under section 213C; and

Division 2

--Application, saving and transitional

provisions

150 Designs

(1)

The amendment of section 69 of the Designs Act 2003 made by this Part

applies in relation to the provision of material to the Registrar on or

after the commencement of this item.

(2)

Subsection 130(2C) of the Designs Act 2003, as inserted by this Part,

applies in relation to fees paid on or after the commencement of this

item.

(3)

Section 144 of the Designs Act 2003, as substituted by this Part, applies

in relation to documents filed on or after the commencement of this

item.

(4)

Section 144B of the Designs Act 2003, as inserted by this Part, applies

in relation to documents filed on or after the commencement of this

item.

Other measures Schedule 2

Filing requirements Part 3

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

(5)

Section 144C of the Designs Act 2003, as inserted by this Part, applies

in relation to evidence filed on or after the commencement of this item.

151 Patents

(1)

The repeal and substitution of section 214 of the Patents Act 1990 made

by this Part applies in relation to documents filed on or after the

commencement of this item.

(2)

Section 214B of the Patents Act 1990, as inserted by this Part, applies in

relation to documents filed on or after the commencement of this item.

(3)

Section 214C of the Patents Act 1990, as inserted by this Part, applies in

relation to evidence filed on or after the commencement of this item.

(4)

Subsection 227(2C) of the Patents Act 1990, as inserted by this Part,

applies in relation to fees paid on or after the commencement of this

item.

152

Plant breeder's rights

(1)

The repeal and substitution of subsection 26(1) of the Plant Breeder's

Rights Act 1994 made by this Part applies in relation to applications

made on or after the commencement of this item.

(2)

An approved form that was in effect immediately before the

commencement of this item for the purposes of paragraph 26(1)(b) of

the Plant Breeder's Rights Act 1994 continues in force on and after that

commencement as if it were an approved form in effect for the purposes

of subsection 26(1) of that Act.

(3)

The repeal and substitution of subsection 34(3) of the Plant Breeder's

Rights Act 1994 made by this Part applies in relation to detailed

descriptions given on or after the commencement of this item.

(4)

An approved form that was in effect immediately before the

commencement of this item for the purposes of paragraph 34(3)(b) of

the Plant Breeder's Rights Act 1994 continues in force on and after that

commencement as if it were an approved form in effect for the purposes

of subsection 34(3) of that Act.

Schedule 2 Other measures

Part 3 Filing requirements

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

(5)

The repeal and substitution of subsection 40(4) of the Plant Breeder's

Rights Act 1994 made by this Part applies in relation to applications

made on or after the commencement of this item.

(6)

An approved form that was in effect immediately before the

commencement of this item for the purposes of paragraph 40(4)(b) of

the Plant Breeder's Rights Act 1994 continues in force on and after that

commencement as if it were an approved form in effect for the purposes

of paragraph 40(4)(a) of that Act.

(7)

The repeal and substitution of subsection 40(4) of the Plant Breeder's

Rights Act 1994 made by this Part does not affect the validity of any

regulations prescribing a fee for an application under subsection 40(1)

of that Act that were in force immediately before the commencement of

this item.

(8)

Section 72B of the Plant Breeder's Rights Act 1994, as inserted by this

Part, applies in relation to documents lodged with, or given to, the

Registrar on or after the commencement of this item.

(9)

Subsection 80(3) of the Plant Breeder's Rights Act 1994, as added by

this Part, applies in relation to fees paid on or after the commencement

of this item.

153 Trade marks

(1)

Section 213 of the Trade Marks Act 1995, as substituted by this Part,

applies in relation to documents filed on or after the commencement of

this item.

(2)

Section 213B of the Trade Marks Act 1995, as inserted by this Part,

applies in relation to documents filed on or after the commencement of

this item.

(3)

Section 213C of the Trade Marks Act 1995, as inserted by this Part,

applies in relation to evidence filed on or after the commencement of

this item.

(4)

Subsection 223(2C) of the Trade Marks Act 1995, as inserted by this

Part, applies in relation to fees paid on or after the commencement of

this item.

Other measures Schedule 2

Signatures Part 4

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 4--Signatures

Patents Act 1990

154 Paragraph 151(4)(c)

Omit "signed by the applicant".

155 Paragraph 176(c)

Omit "signed by the applicant".

156 Application provision

The amendments made by this Part apply in relation to a request

referred to in paragraph 151(4)(c) or 176(c) of the Patents Act 1990

filed on or after the commencement of this item.

Schedule 2 Other measures

Part 5 Computerised decision-making

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Part 5--Computerised decision-making

Designs Act 2003

157 Section 129

After:

Part 3 contains offence provisions.

insert:

Part 3A deals with computerised decision-making.

158 After Part 3 of Chapter 11

Insert:

Part 3A--Computerised decision-making

135A Computerised decision-making

(1) The Registrar may arrange for the use, under the Registrar's

control, of computer programs for any purposes for which the

Registrar may, or must, under this Act or the regulations:

(a) make a decision; or

(b) exercise any power or comply with any obligation; or

paragraph (a) applies or related to exercising a power, or

complying with an obligation, to which paragraph (b)

applies.

(2) For the purposes of this Act and the regulations, the Registrar is

taken to have:

(a) made a decision; or

(b) exercised a power or complied with an obligation; or

Other measures Schedule 2

Computerised decision-making Part 5

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

the exercise of a power or the compliance with an obligation;

that was made, exercised, complied with or done by the operation

of a computer program under an arrangement made under

subsection (1).

Substituted decisions

(3) The Registrar may substitute a decision for a decision the Registrar

is taken to have made under paragraph (2)(a) if the Registrar is

satisfied that the decision made by the operation of the computer

program is incorrect.

159 After subsection 136(1)

Insert:

(1A) If:

(a) the Registrar is taken to have made a decision (the initial

decision) under paragraph 135A(2)(a); and

(b) under subsection (1) of this section, a person may apply to

the Administrative Appeals Tribunal for review of the initial

decision; and

decision for the initial decision;

a person may apply to the Administrative Appeals Tribunal for

review of the substituted decision.

160 Subsection 136(2)

Omit "If a decision mentioned in subsection (1) is made", substitute "If,

under subsection (1) or (1A), a person may apply to the Administrative

Appeals Tribunal for review of a decision".

Patents Act 1990

161 After section 223

Insert:

Schedule 2 Other measures

Part 5 Computerised decision-making

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

223A Computerised decision-making

(1) The Commissioner may arrange for the use, under the

Commissioner's control, of computer programs for any purposes

for which the Commissioner may, or must, under this Act:

(a) make a decision; or

(b) exercise any power or comply with any obligation; or

paragraph (a) applies or related to exercising a power, or

complying with an obligation, to which paragraph (b)

applies.

Note:

A reference to this Act includes the regulations (see Schedule 1).

(2) For the purposes of this Act, the Commissioner is taken to have:

(a) made a decision; or

(b) exercised a power or complied with an obligation; or

the exercise of a power or the compliance with an obligation;

that was made, exercised, complied with or done by the operation

of a computer program under an arrangement made under

subsection (1).

Substituted decisions

(3) The Commissioner may substitute a decision for a decision the

Commissioner is taken to have made under paragraph (2)(a) if the

Commissioner is satisfied that the decision made by the operation

of the computer program is incorrect.

162 After subsection 224(1)

Insert:

(1A) If:

(a) the Commissioner is taken to have made a decision (the

initial decision) under paragraph 223A(2)(a); and

(b) under subsection (1) of this section, application may be made

to the Administrative Appeals Tribunal for review of the

initial decision; and

Other measures Schedule 2

Computerised decision-making Part 5

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Response Part 1 and Other Measures) Bill 2018

decision for the initial decision;

application may be made to the Administrative Appeals Tribunal

for review of the substituted decision.

163 Subsection 224(2)

Omit "Where a person who makes a decision mentioned in

subsection (1) gives the person or persons affected by the decision

written notice of the making of the decision", substitute "If, under

subsection (1) or (1A), application may be made to the Administrative

Appeals Tribunal for review of a decision and a written notice of the

decision is given to a person whose interests are affected by the

decision".

Plant Breeder's Rights Act 1994

164 After section 76A

Insert:

76B Computerised decision-making

(1) The Registrar may arrange for the use, under the Registrar's

control, of computer programs for any purposes for which the

Registrar may, or must, under this Act or the regulations:

(a) make a decision; or

(b) exercise any power or comply with any obligation; or

paragraph (a) applies or related to exercising a power, or

complying with an obligation, to which paragraph (b)

applies.

(2) For the purposes of this Act and the regulations, the Registrar is

taken to have:

(a) made a decision; or

(b) exercised a power or complied with an obligation; or

the exercise of a power or the compliance with an obligation;

Schedule 2 Other measures

Part 5 Computerised decision-making

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

that was made, exercised, complied with or done by the operation

of a computer program under an arrangement made under

subsection (1).

Substituted decisions

(3) The Registrar may substitute a decision for a decision the Registrar

is taken to have made under paragraph (2)(a) if the Registrar is

satisfied that the decision made by the operation of the computer

program is incorrect.

Note:

A substituted decision under subsection (4) may be reviewable by the

AAT under section 77.

165 After subsection 77(1)

Insert:

(1A) If:

(a) the Registrar is taken to have made a decision (the initial

decision) under paragraph 76B(2)(a); and

(b) under subsection (1) of this section, applications may be

made to the AAT for review of the initial decision; and

for the initial decision;

applications may be made to the AAT for review of the substituted

decision.

166 Subsection 77(2)

Omit "for a review of a decision referred to in subsection (1)",

substitute "under subsection (1) or (1A) of this section for a review of a

decision".

167 Paragraph 77(3)(a)

After "subsection (1)", insert "or (1A)".

Trade Marks Act 1995

168 After Division 2 of Part 21

Insert:

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Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Division 2A--Computerised decision-making

222A Computerised decision-making

(1) The Registrar may arrange for the use, under the Registrar's

control, of computer programs for any purposes for which the

Registrar may, or must, under this Act:

(a) make a decision; or

(b) exercise any power or comply with any obligation; or

paragraph (a) applies or related to exercising a power, or

complying with an obligation, to which paragraph (b)

applies.

Note:

A reference to this Act includes the regulations (see section 6).

(2) For the purposes of this Act, the Registrar is taken to have:

(a) made a decision; or

(b) exercised a power or complied with an obligation; or

the exercise of a power or the compliance with an obligation;

that was made, exercised, complied with or done by the operation

of a computer program under an arrangement made under

subsection (1).

Substituted decisions

(3) The Registrar may substitute a decision for a decision the Registrar

is taken to have made under paragraph (2)(a) if the Registrar is

satisfied that the decision made by the operation of the computer

program is incorrect.

Review

(4) If:

(a) the Registrar is taken to have made a decision (the initial

decision) under paragraph (2)(a); and

(b) under another provision of this Act, an application may be

made to the Administrative Appeals Tribunal for review of

the initial decision; and

Other measures Schedule 2

Addresses and service of documents Part 6

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Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 6--Addresses and service of documents

Plant Breeder's Rights Act 1994

169 Subsection 3(4)

Repeal the subsection, substitute:

(4) Subsection (2) of this section does not apply to a reference to an

address in subsection 26(2).

170 At the end of subsection 19(5A)

Add:

Note:

After the time specified in regulations made for the purposes of

subsection 3(2), the address may be an electronic address: see

subsections 3(2), (5) and (6).

171 Subsection 21(5) (before the note)

Insert:

Note 1:

After the time specified in regulations made for the purposes of

subsection 3(2), the address may be an electronic address: see

subsections 3(2), (5) and (6).

172 Subsection 21(5) (note)

Omit "Note", substitute "Note 2".

173 After subsection 26(1)

Insert:

(1A) Without limiting subsection (1), the approved form must require

the inclusion of an address in Australia or New Zealand for service,

being an address that is in accordance with the requirements of the

approved form.

Note:

After the time specified in regulations made for the purposes of

subsection 3(2), the address may be an electronic address: see

subsections 3(2), (5) and (6).

Schedule 2 Other measures

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Response Part 1 and Other Measures) Bill 2018

No. , 2018

174 Subsection 26(3)

Repeal the subsection.

175 Subsection 31(3)

Omit "notices", substitute "documents".

176 At the end of subsection 31(3)

Add:

Note:

After the time specified in regulations made for the purposes of

subsection 3(2), the address may be an electronic address: see

subsections 3(2), (5) and (6).

177 Subsection 31(4)

Omit "notices", substitute "documents".

178 At the end of section 73

Add:

Note:

After the time specified in regulations made for the purposes of

subsection 3(2), the address may be an electronic address: see

subsections 3(2), (5) and (6).

179 Application provision

The amendments of section 26 of the Plant Breeder's Rights Act 1994

made by this Part apply in relation to applications for PBR in a plant

variety made on or after the commencement of this item.

Other measures Schedule 2

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Response Part 1 and Other Measures) Bill 2018

Part 7--Requirements for patent documents

Patents Act 1990

180 Subsections 29(3) and (4)

Repeal the subsections, substitute:

(3) A patent request in relation to a provisional application must:

(a) be in the approved form; and

(b) be in English; and

(4) The provisional specification referred to in paragraph (3)(c) must:

(a) be in the approved form; and

(b) be in English.

(4A) A patent request in relation to a complete application must:

(a) be in the approved form; and

(b) be in English; and

(d) comply with the formalities requirements determined in an

instrument under section 229.

(4B) The complete specification referred to in paragraph (4A)(c) must:

(a) be in the approved form; and

(b) be in English; and

instrument under section 229.

181 Subsection 29A(2)

After "drawings", insert ", graphics, photographs".

182 Subsection 40(3A)

Omit "or drawings", substitute ", drawings, graphics or photographs".

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Part 7 Requirements for patent documents

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

183 Paragraph 151(4)(f)

Omit "and drawings", substitute ", drawings, graphics and

photographs".

184 Paragraph 176(f)

Omit "and drawings", substitute ", drawings, graphics and

photographs".

185 Subparagraph 228(2)(ha)(i)

After "subsections 18(2) and (3)", insert "and 29(4A) and (4B)".

186 Subparagraph 228(2)(ha)(ii)

Omit "the application is in accordance with the requirements of the

regulations relating to the preparation of documents for filing",

substitute "those formalities requirements are met".

187 Subparagraph 228(2)(i)(i)

Omit "the requirements of subsection 29A(5) have been met", substitute

"the applicant has complied with subsection 29A(5)".

188 Subparagraph 228(2)(i)(ii)

Omit "the PCT application is in accordance with those requirements",

substitute "those requirements are met".

189 After paragraph 228(2)(i)

Insert:

(ia) making provision for and in relation to:

(i) empowering the Commissioner, in relation to a

provisional patent application, to direct the applicant to

do such things as are necessary to ensure that the

provisional specification complies with the

requirements of subsection 29(4); and

(ii) the provisional specification being taken not to have

been filed if such a direction is not complied with within

a time specified in the regulations; and

190 Paragraph 228(2)(j)

After "ensure that the", insert "patent request or".

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Response Part 1 and Other Measures) Bill 2018

191 Paragraph 228(2)(j)

Omit "the requirements of the regulations relating to the preparation of

documents for filing", substitute "the requirements of

subsection 29(4A) or (4B)".

192 At the end of Chapter 22

Add:

229 Instrument determining formalities requirements for patent

documents

(1) The Commissioner may, by written instrument, determine

formalities requirements for the purposes of the following:

(a) paragraphs 29(4A)(d) and (4B)(c);

(b) a provision of the regulations, if that provision refers to this

section.

(2) The Commissioner must publish a notice in the Official Journal

setting out the determination.

(3) A determination under subsection (1) is not a legislative

instrument.

193 Schedule 1 (definition of specification)

Omit "and drawings", substitute ", drawings, graphics and

photographs".

194 Application and transitional provisions

(1)

The amendments of section 29 of the Patents Act 1990 made by this

Part apply in relation to patent requests filed under subsection 29(1) of

that Act on or after the commencement of this item.

(2)

An instrument approving a form and in force for the purposes of

subsection 29(3) of the Patents Act 1990 immediately before the

commencement of this item has effect on and after that commencement

as if it were an instrument approving that form and in force for the

purposes of paragraph 29(3)(a) of that Act.

(3)

An instrument approving a form and in force for the purposes of

subsection 29(4) of the Patents Act 1990 immediately before the

Schedule 2 Other measures

Part 7 Requirements for patent documents

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

commencement of this item has effect on and after that commencement

as if it were an instrument approving that form and in force for the

purposes of paragraph 29(4A)(a) of that Act.

(4)

An instrument approving a form and in force for the purposes of

paragraph 3.2(1)(a) of the Patents Regulations 1991 immediately before

the commencement of this item has effect on and after that

commencement as if it were an instrument approving that form and in

force for the purposes of paragraph 29(4)(a) of the Patents Act 1990.

(5)

An instrument approving a form and in force for the purposes of

paragraph 3.2A(2)(a) of the Patents Regulations 1991 immediately

before the commencement of this item has effect on and after that

commencement as if it were an instrument approving that form and in

force for the purposes of paragraph 29(4B)(a) of the Patents Act 1990.

Other measures Schedule 2

Unjustified threats of infringement Part 8

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 8--Unjustified threats of infringement

Division 1

--Amendments

Designs Act 2003

195 After subsection 77(1)

Insert:

(1A) The court may include an additional amount in an assessment of

damages sustained by the applicant as a result of the unjustified

threats, if the court considers it appropriate to do so having regard

to:

(a) the flagrancy of the threats; and

(b) the need to deter similar threats; and

respondent made the threats; and

(d) any benefit shown to have accrued to the respondent because

of the threats; and

(e) all other relevant matters.

Olympic Insignia Protection Act 1987

196 Division 3 of Part 3.4 (heading)

Repeal the heading, substitute:

Division 3--Unjustified threats

197 Section 64 (heading)

Repeal the heading, substitute:

64 Unjustified threats of legal proceedings

198 Paragraph 64(2)(a)

Omit "AOC or the licensed user had no grounds for making the threat",

substitute "threat is unjustified".

Schedule 2 Other measures

Part 8 Unjustified threats of infringement

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

199 Section 65 (heading)

Repeal the heading, substitute:

65 Counterclaim

Patents Act 1990

200 After subsection 128(1)

Insert:

(1A) The court may include an additional amount in an assessment of

damages sustained by the applicant as a result of the unjustifiable

threats, if the court considers it appropriate to do so having regard

to:

(a) the flagrancy of the threats; and

(b) the need to deter similar threats; and

conduct that occurred after the person made the threats; and

(d) any benefit shown to have accrued to the person who made

the threats because of the threats; and

(e) all other relevant matters.

Plant Breeder's Rights Act 1994

201 Subsection 3(1)

Insert:

legal practitioner means a barrister or solicitor of the High Court

or of the Supreme Court of a State or Territory.

202 At the end of Part 5

Add:

57A Application for relief from unjustified threats

(1) If a person is threatened by another person (the respondent) with

proceedings for infringement of PBR in a plant variety, or other

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similar proceedings, an aggrieved person (the applicant) may

apply to the Federal Court or Federal Circuit Court for:

(a) a declaration that the threats are unjustified; and

(b) an injunction against the continuance of the threats; and

result of the threats.

(2) The Federal Court or Federal Circuit Court may include an

additional amount in an assessment of damages sustained by the

applicant as a result of the unjustified threats, if the Court considers

it appropriate to do so having regard to:

(a) the flagrancy of the threats; and

(b) the need to deter similar threats; and

respondent made the threats; and

(d) any benefit shown to have accrued to the respondent because

of the threats; and

(e) all other relevant matters.

(3) A threat mentioned in subsection (1) may be by means of circulars,

advertisements or otherwise.

(4) Subsection (1) applies whether or not the respondent is the grantee

of the PBR in the plant variety or an exclusive licensee of the

grantee.

57B Court's power to grant relief

The Federal Court or Federal Circuit Court may grant the relief

sought by an applicant under section 57A, unless the respondent

satisfies the Court that:

(a) the respondent is the grantee of the PBR in the plant variety

or an exclusive licensee of the grantee; and

(b) the acts about which the threats were made infringe, or would

infringe, the PBR in the plant variety.

57C Counterclaim for infringement

(1) The respondent in proceedings under section 57A may apply, by

way of counter-claim, for relief to which the respondent would be

Schedule 2 Other measures

Part 8 Unjustified threats of infringement

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

entitled in separate proceedings against the applicant for

infringement of the PBR in the plant variety.

(2) The provisions of this Act relating to proceedings for infringement

of PBR in a plant variety apply, with the necessary changes, to a

counter-claim under subsection (1).

57D Notification of PBR in a plant variety not a threat

The mere notification of the existence of PBR in a plant variety

does not constitute a threat of proceedings for the purposes of

section 57A.

57E Liability of legal practitioner

A legal practitioner is not liable to proceedings under section 57A

in respect of an act done in a professional capacity on behalf of a

client.

Trade Marks Act 1995

203 Section 129 (heading)

Repeal the heading, substitute:

129 Application for relief from unjustified threats

204 Paragraph 129(2)(a)

Omit "defendant has no grounds for making the threat", substitute

"threat is unjustified".

205 After subsection 129(2)

Insert:

(2A) The court may include an additional amount in an assessment of

damages the plaintiff has sustained because of the defendant's

conduct, if the court considers it appropriate to do so having regard

to:

(a) the flagrancy of the threat; and

(b) the need to deter similar threats; and

Other measures Schedule 2

Unjustified threats of infringement Part 8

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

made the threat; and

(d) any benefit shown to have accrued to the defendant because

of the threat; and

(e) all other relevant matters.

206 Subsection 129(5)

Repeal the subsection.

207 Section 130 (heading)

Repeal the heading, substitute:

130 Counterclaim for infringement

208 At the end of Part 12

Add:

130A Mere notification of registered trade mark not a threat

The mere notification of the existence of a registered trade mark

does not constitute a threat to bring an action for the purposes of

section 129.

Division 2

--Application and saving provisions

209 Application and saving provisions

Designs

(1)

The amendment of section 77 of the Designs Act 2003 made by this Part

applies in relation to threats of the kind referred to in subsection 77(1)

of that Act that are made on or after the commencement of this item.

Olympic expressions

(2)

The amendments of section 64 of the Olympic Insignia Protection Act

1987 made by this Part apply in relation to threats of the kind referred to

in subsection 64(1) of that Act that are made on or after the

commencement of this item.

Schedule 2 Other measures

Part 8 Unjustified threats of infringement

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Patents

(3)

The amendment of section 128 of the Patents Act 1990 made by this

Part applies in relation to threats of the kind referred to in

subsection 128(1) of that Act that are made on or after the

commencement of this item.

Plant breeder's rights

(4)

Section 57A of the Plant Breeder's Rights Act 1994, as added by this

Schedule, applies in relation to threats of the kind referred to in

subsection 57A(1) of that Act that are made on or after the

commencement of this item.

Trade marks

(5)

The amendments of section 129 of the Trade Marks Act 1995 made by

this Part (except the repeal of subsection 129(5) of that Act) apply in

relation to threats of the kind referred to in subsection 129(1) of that Act

that are made on or after the commencement of this item.

(6)

Despite the repeal of subsection 129(5) of the Trade Marks Act 1995

made by this Part, that subsection, as in force immediately before the

commencement of this item, continues to apply on and after that

commencement in relation to an action for infringement of a trade mark

begun before that commencement.

Other measures Schedule 2

Ownership of PBR and entries in the Register Part 9

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 9--Ownership of PBR and entries in the

Register

Plant Breeder's Rights Act 1994

210 Subsection 3(1)

Insert:

relevant proceedings, in relation to PBR in a plant variety, means

proceedings in a court or in the AAT relating to:

(a) the grant of the PBR; or

(b) the infringement of the PBR; or

211 Subsection 45(1)

Omit "subsections (2) and (3)", substitute "subsection (3)".

212 At the end of subsection 45(1)

Add:

Note:

If PBR is granted to persons who make a joint application, the PBR is

granted to those persons jointly: see subsection 44(11).

213 Subsection 45(2)

Repeal the subsection.

214 At the end of Part 6

Add:

62A Registrar's power to rectify Register

(1) The Registrar may rectify the Register if the Registrar is satisfied,

whether on application or otherwise, of any of the following:

(a) the omission of an entry from the Register;

(b) an entry made in the Register without sufficient cause;

(d) an error or defect in an entry in the Register.

Schedule 2 Other measures

Part 9 Ownership of PBR and entries in the Register

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Form of application

(2) An application under subsection (1) must be in the approved form.

Further information

(3) The Registrar:

(a) may seek further information from any person for the

purpose of considering an application under subsection (1);

and

(b) is not required to consider the application while seeking the

further information.

Persons to be heard

(4) The Registrar must not rectify the Register under this section in

relation to PBR in a plant variety without first giving the following

persons a reasonable opportunity to be heard:

(a) in the case of an application to rectify the Register--the

applicant;

(b) the grantee of the PBR as recorded in the Register;

Relevant proceedings pending

(5) The Registrar must not rectify the Register under this section in

relation to PBR in a plant variety while:

(a) relevant proceedings in relation to the PBR are pending; or

(b) proceedings in a court or in the AAT, relating to a decision

under section 21 to amend, or refuse to amend, the Register

in relation to the PBR, are pending.

Note:

A decision under this section to rectify, or refuse to rectify, the

215 At the end of paragraph 77(1)(b)

Add:

(xvii) under section 62A to rectify, or refuse to rectify, the

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No. , 2018

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Response Part 1 and Other Measures) Bill 2018

216 Paragraph 80(2)(d)

After "mistake", insert ", or for any other purpose".

217 Application provision

Section 62A of the Plant Breeder's Rights Act 1994, as added by this

Part, applies in relation to:

(a) PBR in a plant variety granted before, on or after the

commencement of this item; and

(b) entries made in the Register before, on or after that

commencement.

Schedule 2 Other measures

Part 10 Trade mark oppositions

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Part 10--Trade mark oppositions

Trade Marks Act 1995

218 Paragraph 222(a)

After "subsection", insert "65A(4), 83A(4) or".

219 Subsection 231(3)

Omit "and 92", substitute ", 65A, 83A and 96".

220 Application provision

The amendment of paragraph 222(a) of the Trade Marks Act 1995 made

by this Part applies in relation to a request referred to in

subsection 65A(4) or 83A(4) of that Act that is made on or after the

commencement of this item.

Other measures Schedule 2

Further power to award damages under the Plant Breeder's Rights Act Part 11

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 11--Further power to award damages under the

Plant Breeder's Rights Act

Plant Breeder's Rights Act 1994

221 After subsection 56(3)

Insert:

(3A) The Federal Court may include an additional amount in an

assessment of damages for an infringement of PBR, if the Court

considers it appropriate to do so having regard to:

(a) the flagrancy of the infringement; and

(b) the need to deter similar infringements of PBR; and

(i) after the act constituting the infringement; or

(ii) after that party was informed that it had allegedly

infringed the PBR; and

(d) any benefit shown to have accrued to that party because of

the infringement; and

(e) all other relevant matters.

222 After subsection 56A(3)

Insert:

(3A) The Federal Circuit Court may include an additional amount in an

assessment of damages for an infringement of PBR, if the Court

considers it appropriate to do so having regard to:

(a) the flagrancy of the infringement; and

(b) the need to deter similar infringements of PBR; and

(i) after the act constituting the infringement; or

(ii) after that party was informed that it had allegedly

infringed the PBR; and

(d) any benefit shown to have accrued to that party because of

the infringement; and

(e) all other relevant matters.

Schedule 2 Other measures

Part 11 Further power to award damages under the Plant Breeder's Rights Act

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

223 Application and transitional provisions

(1)

The amendments of sections 56 and 56A of the Plant Breeder's Rights

Act 1994 made by this Part apply in relation to infringements of PBR

that occur on or after the commencement of that Part.

(2)

If, on or after the commencement of this Part, an action for infringement

of PBR is begun in relation to conduct engaged in before and on or after

that commencement, the Federal Court or the Federal Circuit Court may

include an additional amount in an assessment of damages under

subsection 56(3A) or 56A(3A) of the Plant Breeder's Rights Act 1994

only in relation to the conduct that was engaged in on or after

commencement.

Other measures Schedule 2

Exclusive licensees in the Plant Breeder's Rights Act Part 12

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 12--Exclusive licensees in the Plant Breeder's

Rights Act

Plant Breeder's Rights Act 1994

224 Subsection 3(1)

Insert:

exclusive licensee of the grantee of PBR in a plant variety means a

licensee under a licence granted by the grantee that confers on the

licensee, or on the licensee and persons authorised by the licensee,

PBR in the plant variety to the exclusion of the grantee and all

other persons.

225 Section 18 (heading)

Repeal the heading, substitute:

18 Restrictions on exercise of PBR in certain circumstances

226 Paragraph 18(1)(b)

Omit "variety;", substitute "variety, or an exclusive licensee of the

grantee;".

227 Paragraph 18(1)(c)

After "grantee", insert ", or an exclusive licensee of the grantee,".

228 Subsection 18(1)

Omit "the grantee is not entitled", substitute "neither the grantee, nor

any exclusive licensee of the grantee, nor any other person authorised

by the grantee or exclusive licensee, is entitled".

229 Subsection 18(3) (paragraph (a) of the definition of

equitable remuneration)

Omit "variety;", substitute "variety, or an exclusive licensee of the

grantee;".

Schedule 2 Other measures

Part 12 Exclusive licensees in the Plant Breeder's Rights Act

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

230 Subsection 23(3)

After "grantee of PBR", insert ", or an exclusive licensee of the

grantee,".

231 Paragraph 51(1)(b)

Omit "54(3)", substitute "54A(2)".

232 At the end of section 53

Add:

(4) In this section, if a grantee of a PBR in a plant variety has granted

an exclusive licence in relation to that right, a reference to the

grantee is taken to be a reference to the exclusive licensee.

233 At the end of subsection 54(1)

Add "or an exclusive licensee of the grantee".

234 Subsections 54(2) to (4)

Repeal the subsections, substitute:

(2) If an exclusive licensee of a grantee of PBR in a plant variety

begins an action for infringement of that right, the licensee must

make the grantee a defendant in the action, unless the grantee is

joined as a plaintiff.

(3) A grantee who is made a defendant in an action is not liable for

costs if the grantee does not take part in the proceedings.

235 After section 54

Insert:

54A Counterclaims to actions for infringement

(1) A defendant in an action for infringement of PBR in a plant variety

may apply, by way of counterclaim, for revocation of that right on

the ground that:

(a) the variety was not a new plant variety; or

Other measures Schedule 2

Exclusive licensees in the Plant Breeder's Rights Act Part 12

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

(b) facts exist that would have resulted in the refusal of the grant

of that right if they had been known to the Registrar before

the grant of that right.

(2) If, in an action for infringement of PBR in a plant variety:

(a) the defendant applies, by way of counterclaim, for the

revocation of that right; and

(b) the court is satisfied that a ground for revocation of that right

exists;

the court may make an order revoking that right.

(3) If the court revoked PBR in a plant variety on the counterclaim of a

defendant, the court may order the defendant to serve on the

Registrar a copy of the order revoking that right.

236 At the end of section 55

Add:

(7) The grantee must be joined as a respondent in the proceedings.

(8) In this section:

grantee includes an exclusive licensee of the grantee.

237 Application and transitional provisions

(1)

The amendments made by this Part apply in relation to conduct engaged

in on or after the commencement of this Part.

(2)

If, on or after the commencement of this Part, an exclusive licensee of

PBR in a plant variety begins an action for infringement of PBR in

relation to conduct engaged in before and on or after that

commencement, the Federal Court or the Federal Circuit Court may

only grant relief under section 56 or 56A of the Plant Breeder's Rights

Act 1994 in relation to the conduct that was engaged in on or after

commencement.

Schedule 2 Other measures

Part 13 Publishing personal information of registered patent or trade marks attorneys

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Part 13--Publishing personal information of

registered patent or trade marks attorneys

Division 1

--Amendments

Patents Act 1990

238 After subsection 183(1)

Insert:

(1A) The Designated Manager may disclose to the Board personal

information (within the meaning of the Privacy Act 1988):

(a) that is about a registered patent attorney; and

(b) that the Designated Manager considers to be relevant to the

Board's functions.

239 After section 227A

Insert:

227B Publishing personal information of registered patent attorneys

(1) The Board may publish on its website any or all of the following

personal information (within the meaning of the Privacy Act 1988)

that is about a registered patent attorney:

(a) the name of the attorney;

(b) the country in which the attorney's work address is located;

State or Territory in which the attorney's work address is

located;

(d) if the attorney's work address is located in a foreign

country--the state, territory, province, region or other

political subdivision (however described) of that country in

which the attorney's work address is located;

(e) the attorney's work email address.

(2) Subsection (1) does not prevent the Board from publishing on its

website other personal information (within the meaning of the

Other measures Schedule 2

Publishing personal information of registered patent or trade marks attorneys Part 13

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Privacy Act 1988) that is about a registered patent attorney with the

attorney's written consent.

Trade Marks Act 1995

240 After section 229

Insert:

229AA Designated Manager may disclose information to Board

The Designated Manager may disclose to the Board personal

information:

(a) that is about a registered trade marks attorney; and

(b) that the Designated Manager considers to be relevant to the

Board's functions.

241 After section 229A

Insert:

229B Publishing personal information of registered trade marks

attorneys

(1) The Board may publish on its website any or all of the following

personal information that is about a registered trade marks

attorney:

(a) the name of the attorney;

(b) the country in which the attorney's work address is located;

State or Territory in which the attorney's work address is

located;

(d) if the attorney's work address is located in a foreign

country--the state, territory, province, region or other

political subdivision (however described) of that country in

which the attorney's work address is located;

(e) the attorney's work email address.

(2) Subsection (1) does not prevent the Board from publishing on its

website other personal information that is about a registered trade

marks attorney with the attorney's written consent.

Schedule 2 Other measures

Part 13 Publishing personal information of registered patent or trade marks attorneys

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Division 2

--Application provisions

242 Application provisions

Patents

(1)

The amendments of the Patents Act 1990 made by this Part apply in

relation to information about a registered patent attorney obtained

before, on or after the commencement of this item (whether the attorney

was registered under that Act before, on or after that commencement).

Trade marks

(2)

The amendments of the Trade Marks Act 1995 made by this Part apply

in relation to information about a registered trade marks attorney

obtained before, on or after the commencement of this item (whether

the attorney was registered under that Act before, on or after that

commencement).

Other measures Schedule 2

Secretary's role in the Plant Breeder's Rights Act Part 14

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 14--Secretary's role in the Plant Breeder's

Rights Act

Plant Breeder's Rights Act 1994

243 Subsection 3(1) (definition of approved form)

Repeal the definition, substitute:

approved form, in relation to a provision of this Act, means a form

approved in an instrument under subsection (1B) for the purposes

of that provision.

244 Subsection 3(1) (definition of genetic resource centre)

Omit "Secretary", substitute "Registrar".

245 Subsection 3(1) (definition of herbarium)

Omit "Secretary", substitute "Registrar".

246 Subsection 3(1) (definition of Secretary)

Repeal the definition.

247 After subsection 3(1A)

Insert:

(1B) The Registrar may, by writing, approve a form for the purposes of

a provision of this Act.

248 Subsection 8(1)

Omit "Secretary", substitute "Registrar".

249 Subsections 19(3) and (4) and (6) to (11)

Omit "Secretary" (wherever occurring), substitute "Registrar".

250 Subsection 24(1)

Omit "Secretary", substitute "Registrar".

Schedule 2 Other measures

Part 14 Secretary's role in the Plant Breeder's Rights Act

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

251 Subparagraph 26(2)(i)(iii)

Omit "Secretary", substitute "Registrar".

252 Subsections 28(1), (2) and (3)

Omit "Secretary", substitute "Registrar".

253 Subsections 29(3) and (4)

Omit "Secretary", substitute "Registrar".

254 Subsections 30(1) to (5)

Omit "Secretary" (wherever occurring), substitute "Registrar".

255 Subsections 31(1), (2), (4), (5) and (6)

Omit "Secretary" (wherever occurring), substitute "Registrar".

256 Subsections 32(1) to (5)

Omit "Secretary" (wherever occurring), substitute "Registrar".

257 Subsection 33(2)

Omit "Secretary", substitute "Registrar".

258 Section 34 (heading)

Repeal the heading, substitute:

34 Detailed description in support of application to be given to

Registrar

259 Subsections 34(1), (2), (5) and (6)

Omit "Secretary" (wherever occurring), substitute "Registrar".

260 Subsections 35(1) and (2)

Omit "Secretary" (wherever occurring), substitute "Registrar".

261 Paragraph 36(3)(d)

Omit "Secretary", substitute "Registrar".

Other measures Schedule 2

Secretary's role in the Plant Breeder's Rights Act Part 14

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

262 Subsection 37(1)

Omit "Secretary" (wherever occurring), substitute "Registrar".

263 Subsection 37(2)

Omit "Secretary's", substitute "Registrar's".

264 Paragraph 37(2)(b)

Omit "Secretary" (wherever occurring), substitute "Registrar".

265 Subsections 37(2B), (3), (4), (6) and (7)

Omit "Secretary" (wherever occurring), substitute "Registrar".

266 Subsections 38(4) and (5)

Omit "Secretary", substitute "Registrar".

267 Subsection 38(5) (note)

Omit "Secretary", substitute "Registrar".

268 Subsections 39(1), (2) and (4)

Omit "Secretary" (wherever occurring), substitute "Registrar".

269 Subsections 40(3), (7), (8), (10) and (11)

Omit "Secretary" (wherever occurring), substitute "Registrar".

270 Subsections 41(2) and (5)

Omit "Secretary" (wherever occurring), substitute "Registrar".

271 Subsections 44(1), (2), (3), (4), (5), (6) and (9)

Omit "Secretary" (wherever occurring), substitute "Registrar".

272 Subsection 44(10)

Omit "issue to that person by the Secretary", substitute "issue to that

person by the Registrar".

273 Subsection 44(10)

Omit "the Secretary or".

Schedule 2 Other measures

Part 14 Secretary's role in the Plant Breeder's Rights Act

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

274 Subsection 44(10)

Omit "as the Secretary", substitute "as the Registrar".

275 Subsection 44(12)

Omit "Secretary" (wherever occurring), substitute "Registrar".

276 Subsection 46(1)

Omit "Secretary", substitute "Registrar".

277 Subsections 47(1) and (2)

Omit "Secretary", substitute "Registrar".

278 Paragraph 49(3)(a)

Omit "Secretary", substitute "Registrar".

279 Subsections 50(1), (2), (3), (4), (5), (8), (9) and (10)

Omit "Secretary" (wherever occurring), substitute "Registrar".

280 Subsections 51(1) and (3)

Omit "Secretary" (wherever occurring), substitute "Registrar".

281 Section 52

Omit "Secretary", substitute "Registrar".

282 Subsection 58(3)

Repeal the subsection, substitute:

(3) The Registrar has the functions and powers that are conferred on

the Registrar by this Act or by the regulations.

283 Subsection 59(2)

Repeal the subsection.

284 Subsection 59(4)

Omit "the Minister or the Secretary under subsection (1) or (2)",

substitute "the Minister under subsection (1)".

Other measures Schedule 2

Secretary's role in the Plant Breeder's Rights Act Part 14

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

285 Subsection 59(5)

Omit "person who originally delegated the corresponding power or

function under subsection (1) or (2)", substitute "Minister".

286 Paragraph 60(1)(a)

Repeal the paragraph.

287 Subsection 61(1)

Omit "Secretary", substitute "Registrar".

288 Subsections 68(1), (2), (3) and (4)

Omit "Secretary" (wherever occurring), substitute "Registrar".

289 Subsection 70(1)

Omit "Secretary" (wherever occurring), substitute "Registrar".

290 Section 71

Omit "Secretary" (wherever occurring), substitute "Registrar".

291 Paragraph 73(b)

Omit "the Secretary or".

292 Subsection 75(1)

Omit "the Secretary or".

293 Paragraph 77(1)(b)

Omit "by the Secretary", substitute "by the Registrar".

294 After subparagraph 77(1)(b)(iv)

Insert:

(iva) under section 21 to amend, or refuse to amend, the

295 Subparagraphs 77(1)(b)(ix) and (x)

Omit "Secretary", substitute "Registrar".

Schedule 2 Other measures

Part 14 Secretary's role in the Plant Breeder's Rights Act

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

296 Paragraph 77(1)(c)

Repeal the paragraph.

297 Subsection 77(3)

Omit "Secretary", substitute "Registrar".

298 Subparagraph 80(2)(a)(iv)

Omit "Secretary", substitute "Registrar".

299 Saving and transitional provisions

(1)

A thing done by, or in relation to, the Secretary under the Plant

Breeder's Rights Act 1994 before the commencement of this item has

effect on and after that commencement as if it had been done by, or in

relation to, the Registrar.

(2)

A form approved by the Secretary and in force immediately before the

commencement of this item for the purposes of a provision of the Plant

Breeder's Rights Act 1994 has effect on and after that commencement

as if it were a form approved by the Registrar in an instrument under

subsection 3(1B) of that Act for the purposes of that provision.

(3)

Despite the repeal of paragraph 60(1)(a) of the Plant Breeder's Rights

Act 1994 made by this Part, that paragraph, as in force immediately

before the commencement of this item, continues in force on and after

that commencement for the period of 12 months beginning on the day

this item commences.

(4)

Paragraph 77(1)(c) of the Plant Breeder's Rights Act 1994, as in force

immediately before the commencement of this item, continues to apply

on and after that commencement in relation to a decision of the

Registrar, before that commencement, under section 21 of that Act to

amend, or refuse to amend, the Register.

Other measures Schedule 2

Seizure notices Part 15

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

Part 15--Seizure notices

Division 1

--Amendments

Copyright Act 1968

300 Subsection 135AC(1)

Omit "either personally or by post, a written notice", substitute "by any

means of communication (including by electronic means), a notice".

301 Paragraphs 135AC(3)(c) and (d)

Repeal the paragraphs, substitute:

address of the place of business or residence of the importer

(if known), unless the Comptroller-General of Customs is

satisfied, for reasons of confidentiality, that it is not desirable

to do so; and

(d) if the notice is given to the importer--state the name and the

address of the place of business or residence of:

(i) the objector; or

(ii) if the objector has nominated a person to be the

objector's agent or representative for the purposes of

this Division--that person;

unless the Comptroller-General of Customs is satisfied, for

reasons of confidentiality, that it is not desirable to do so.

Olympic Insignia Protection Act 1987

302 Subsection 55(1)

Omit "either personally or by post, a written notice", substitute "by any

means of communication (including by electronic means), a notice".

303 Paragraph 55(2)(a)

Repeal the paragraph, substitute:

(a) state the name and the address of the place of business or

residence of the designated owner (if known), unless the

Schedule 2 Other measures

Part 15 Seizure notices

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Comptroller-General of Customs is satisfied, for reasons of

confidentiality, that it is not desirable to do so; and

Trade Marks Act 1995

304 Subsection 134(1)

Omit "either personally or by post, a written notice", substitute "by any

means of communication (including by electronic means), a notice".

305 Paragraphs 134(3)(c) and (d)

Repeal the paragraphs, substitute:

address of the place of business or residence of the

designated owner (if known), unless the Comptroller-General

of Customs is satisfied, for reasons of confidentiality, that it

is not desirable to do so; and

(d) if the notice is given to the designated owner--state the name

and the address of the place of business or residence of:

(i) the objector; or

(ii) if the objector has nominated a person to be the

objector's agent or representative for the purposes of

this Division--that person;

unless the Comptroller-General of Customs is satisfied, for

reasons of confidentiality, that it is not desirable to do so.

Division 2

--Application provisions

306 Application provisions

Copyright

(1)

The amendments of section 135AC of the Copyright Act 1968 made by

this Part apply in relation to notices given under subsection 135AC(1)

of that Act on or after the commencement of this item.

Olympic expressions

(2)

The amendments of section 55 of the Olympic Insignia Protection Act

1987 made by this Part apply in relation to notices given under

subsection 55(1) of that Act on or after the commencement of this item.

Schedule 2 Other measures

Part 16 Prosecutions

100

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Part 16--Prosecutions

Division 1

--Amendments

Patents Act 1990

307 Section 204

Omit "or (5)", substitute ", (5) or (6) or 201B(1) or (2)".

308 Section 204

After "202A", insert ", 202B".

Trade Marks Act 1995

309 Subsection 156(3A)

Omit "the company" (first occurring).

310 Before subsection 156(4)

Insert:

Common rules

311 At the end of section 157A

Add:

Time for starting prosecutions

(9) Despite section 15B of the Crimes Act 1914, a prosecution for an

offence against this section may be started at any time within 5

years after the offence was committed.

Other measures Schedule 2

Prosecutions Part 16

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

101

Division 2

--Application provision

312 Application provision

The amendments of section 204 of the Patents Act 1990 and of

section 157A of the Trade Marks Act 1995 made by this Part apply in

relation to offences committed on or after the commencement of this

item.

Schedule 2 Other measures

Part 17 Updating references to Designs Act

102

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Part 17--Updating references to Designs Act

Olympic Insignia Protection Act 1987

313 Subsection 2(1) (definition of Registrar)

Omit "Designs Act 1906", substitute "Designs Act 2003".

314 Subsection 2(2)

Repeal the subsection.

315 Subsection 2(3)

Omit "Designs Act 1906" (wherever occurring), substitute "Designs Act

2003".

316 Paragraph 10(7)(e)

Omit "Designs Act 1906", substitute "Designs Act 2003".

317 Subsection 10(12) (paragraph (a) of the definition of

published design)

Omit "Designs Act 1906", substitute "Designs Act 2003".

318 Subsection 12(5)

Omit "Section 36 of the Designs Act 1906", substitute "Section 131 of

the Designs Act 2003".

319 Section 13

Omit "Section 8A of the Designs Act 1906", substitute "Section 124 of

the Designs Act 2003".

320 Section 18 (heading)

Repeal the heading, substitute:

18 Protected designs not to be registered under the Designs Act 2003

321 Section 18

Omit "Designs Act 1906", substitute "Designs Act 2003".

Schedule 2 Other measures

Part 18 Removing certain references to New Zealand

104

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Part 18--Removing certain references to New

Zealand

Patents Act 1990

323 Section 3 (list of definitions)

Omit "New Zealand Assistant Commissioner of Patents".

324 Section 3 (list of definitions)

Omit "New Zealand delegate".

325 Subsection 20(2)

Omit "an employee, or a New Zealand delegate,", substitute "or an

employee,".

326 Subsection 20(3)

Repeal the subsection.

327 Subsections 183(5) and (6)

Repeal the subsections.

328 Subsections 209(1A) and (1B)

Repeal the subsections.

329 Subsection 214(1)

Omit "(1)".

330 Subsections 214(2) and (3)

Repeal the subsections.

331 Paragraph 223(1)(ba)

Repeal the paragraph.

332 Subsections 223(1A) and (1B)

Repeal the subsections.

Other measures Schedule 2

Removing certain references to New Zealand Part 18

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

105

333 Subsection 224(3A)

Repeal the subsection.

334 Subsections 227(6) and (7)

Repeal the subsections.

335 Section 227AA

Repeal the section.

336 Schedule 1 (definitions of New Zealand Assistant

Commissioner of Patents and New Zealand delegate)

Repeal the definitions.

Schedule 2 Other measures

Part 19 International Convention for the Protection of New Varieties of Plants

106

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

Part 19--International Convention for the Protection

of New Varieties of Plants

Plant Breeder's Rights Act 1994

337 Subsection 3(1)

Insert:

1991 Act of the Convention means the Act of the International

Convention for the Protection of New Varieties of Plants, done at

Geneva on 19 March 1991, as that Act is in force for Australia

from time to time.

Note:

The text of the 1991 Act of the Convention is set out in Australian

Treaty Series 2000 No. 6 ([2000] ATS 6). In 2018, the text of a

Convention in the Australian Treaty Series was accessible through the

Australian Treaties Library on the AustLII website

(www.austlii.edu.au).

Act of the Convention means:

(a) the Act of the International Convention for the Protection of

New Varieties of Plants, done at Geneva on 23 October 1978,

as that Act is in force for Australia from time to time; or

(b) the 1991 Act of the Convention; or

under subsection (1A), as that Act is in force for Australia

from time to time.

Note:

The text of the Act mentioned in paragraph (a) is set out in Australian

Treaty Series 1989 No. 2 ([1989] ATS 2). In 2018, the text of a

Convention in the Australian Treaty Series was accessible through the

Australian Treaties Library on the AustLII website

(www.austlii.edu.au).

338 Subsection 3(1) (definition of contracting party)

Omit "that is a party to the Convention", substitute "in relation to which

Australia has obligations under an Act of the Convention".

339 Subsection 3(1) (definition of Convention)

Repeal the definition.

Other measures Schedule 2

International Convention for the Protection of New Varieties of Plants Part 19

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

107

340 Subsection 3(1) (definition of PBR, twice occurring)

Repeal the definitions, substitute:

PBR means:

(a) in relation to a plant variety registered (or to be registered) in

Australia under this Act--the plant breeder's right specified

in section 11; or

(b) in relation to a plant variety registered (or to be registered) in

another contracting party--a plant breeder's right,

corresponding to the right specified in section 11, conferred

under the law of that contracting party; or

a foreign country that is not a contracting party--a plant

breeder's right, corresponding to the right specified in

section 11, conferred under the law of that foreign country.

Note:

The Plant Breeder's Rights Act 1994, as in force before the commencement of this item,

contained 2 definitions of PBR.

341 Subsection 3(1) (definition of Union)

Omit "Convention", substitute "1991 Act of the Convention".

342 After subsection 3(1)

Insert:

Act of the Convention

(1A) The Minister may, by legislative instrument, make a determination

for the purposes of paragraph (c) of the definition of Act of the

Convention in subsection (1).

343 Paragraph 10(a)

Omit "the Convention" (first occurring), substitute "an Act of the

Convention".

344 Paragraph 10(a)

Omit "the Convention" (second occurring), substitute "that Act".

345 Subsection 29(4)

Omit "3 years", substitute "5 years".

Schedule 2 Other measures

Part 19 International Convention for the Protection of New Varieties of Plants

108

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

No. , 2018

346 Paragraph 43(6)(b)

Omit "in the territory of another contracting party", substitute "outside

of Australia".

347 Subsection 43(8)

After "contracting party", insert ", or in a foreign country that is not a

contracting party".

348 Subsection 43(10) (definitions of authority and territory)

Repeal the definitions.

349 Subsection 43(10) (definition of variety)

Omit "Convention", substitute "1991 Act of the Convention".

350 Application provision

The amendments made by this Part apply in relation to a grant of PBR

in a plant variety on or after the commencement of this item, whether

the application for that right is made before, on or after that

commencement.

Other measures Schedule 2

Other amendments Part 20

No. , 2018

Intellectual Property Laws Amendment (Productivity Commission

Response Part 1 and Other Measures) Bill 2018

109

Part 20--Other amendments

Patents Act 1990

351 Subsection 222(2)

Omit ", and of complete specifications which are open to public

inspection".

Plant Breeder's Rights Act 1994

352 Section 42

Repeal the section.

353 Subsection 49(2)

Omit "appropriate", substitute "to be necessary in the public interest".

354 Subsection 69(1)

Omit ", 22(3) or 42(1)", substitute "or 22(3)".

Commonwealth of Australia Bills

INTELLECTUAL PROPERTY LAWS AMENDMENT (PRODUCTIVITY COMMISSION RESPONSE PART 1 AND OTHER MEASURES) BILL 2018