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This is a Bill, not an Act. For current law, see the Acts databases.
2019
The Parliament of the
Commonwealth of Australia
THE SENATE
Presented and read a first time
Intellectual Property Laws Amendment
(Productivity Commission Response
Part 2 and Other Measures) Bill 2019
No. , 2019
(Industry, Innovation and Science)
A Bill for an Act to amend legislation relating to
intellectual property, and for related purposes
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
i
Contents
1
Short title ........................................................................................... 1
2
Commencement ................................................................................. 1
3
Schedules ........................................................................................... 2
Schedule 1--Responses to the Productivity Commission
3
Part 1--Object of the Act
3
Patents Act 1990
3
Part 2--Innovation patents
4
Patents Act 1990
4
Schedule 2--Crown use of patents
6
Part 1--Amendments
6
Patents Act 1990
6
Part 2--Application and transitional provisions
13
Schedule 3--Crown use of designs
15
Part 1--Amendments
15
Designs Act 2003
15
Part 2--Application and transitional provisions
21
Schedule 4--Compulsory licences
23
Patents Act 1990
23
Schedule 5--Seals
29
Patents Act 1990
29
Trade Marks Act 1995
29
Schedule 6--Specifications
30
Patents Act 1990
30
Schedule 7--Protection of information
34
Patents Act 1990
34
Schedule 8--International applications
35
Patents Act 1990
35
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
1
A Bill for an Act to amend legislation relating to
1
intellectual property, and for related purposes
2
The Parliament of Australia enacts:
3
1 Short title
4
This Act is the Intellectual Property Laws Amendment
5
(Productivity Commission Response Part 2 and Other Measures)
6
Act 2019.
7
2 Commencement
8
(1) Each provision of this Act specified in column 1 of the table
9
commences, or is taken to have commenced, in accordance with
10
column 2 of the table. Any other statement in column 2 has effect
11
according to its terms.
12
2
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
1
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,
Part 2
The day after the end of the period of 12
months beginning on the day this Act
receives the Royal Assent.
4. Schedules 2 to
7
The day after this Act receives the Royal
Assent.
5. Schedule 8
The day after the end of the period of 6
months beginning on the day this Act
receives the Royal Assent.
Note:
This table relates only to the provisions of this Act as originally
2
enacted. It will not be amended to deal with any later amendments of
3
this Act.
4
(2) Any information in column 3 of the table is not part of this Act.
5
Information may be inserted in this column, or information in it
6
may be edited, in any published version of this Act.
7
3 Schedules
8
Legislation that is specified in a Schedule to this Act is amended or
9
repealed as set out in the applicable items in the Schedule
10
concerned, and any other item in a Schedule to this Act has effect
11
according to its terms.
12
Responses to the Productivity Commission Schedule 1
Object of the Act Part 1
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
3
Schedule 1--Responses to the Productivity
1
Commission
2
Part 1--Object of the Act
3
Patents Act 1990
4
1 After section 2
5
Insert:
6
2A Object of this Act
7
The object of this Act is to provide a patent system in Australia
8
that promotes economic wellbeing through technological
9
innovation and the transfer and dissemination of technology. In
10
doing so, the patent system balances over time the interests of
11
producers, owners and users of technology and the public.
12
Schedule 1 Responses to the Productivity Commission
Part 2 Innovation patents
4
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
Part 2--Innovation patents
1
Patents Act 1990
2
2 Section 3 (list of definitions)
3
Insert "priority date".
4
3 Subsection 43(2)
5
Omit "priority date", substitute "priority date".
6
4 At the end of section 52
7
Add:
8
(3) It is a requirement of the formalities check that the date of the
9
patent (if granted) would be a date before the day this subsection
10
commences.
11
Note 1:
This subsection was inserted by the Intellectual Property Laws
12
Amendment (Productivity Commission Response Part 2 and Other
13
Measures) Act 2019.
14
Note 2:
For the date of the patent, see section 65 and regulations made for the
15
purposes of paragraph 65(b).
16
Note 3:
Other requirements of the formalities check are specified in
17
regulations made for the purposes of paragraph 228(2)(ha).
18
5 After paragraph 101B(2)(h)
19
Insert:
20
(ha) each claim in the complete specification has a priority date
21
that is before the day this paragraph commences; and
22
6 At the end of subsection 101B(2)
23
Add:
24
Note:
Paragraph 101B(2)(ha) was inserted by the Intellectual Property Laws
25
Amendment (Productivity Commission Response Part 2 and Other
26
Measures) Act 2019.
27
7 After subparagraph 101E(1)(a)(viii)
28
Insert:
29
Responses to the Productivity Commission Schedule 1
Innovation patents Part 2
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
5
(viiia) each claim in the complete specification has a priority
1
date that is before the day paragraph 101B(2)(ha)
2
commences;
3
8 At the end of subsection 101E(1)
4
Add:
5
Note:
Paragraph 101B(2)(ha) was inserted by the Intellectual Property Laws
6
Amendment (Productivity Commission Response Part 2 and Other
7
Measures) Act 2019.
8
9 Schedule 1
9
Insert:
10
priority date has the meaning given by subsection 43(2).
11
Schedule 2 Crown use of patents
Part 1 Amendments
6
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
Schedule 2--Crown use of patents
1
Part 1--Amendments
2
Patents Act 1990
3
1 Section 3 (list of definitions)
4
Insert "exploited for Crown purposes".
5
2 Section 3 (list of definitions)
6
Insert "relevant Minister".
7
3 Section 3 (list of definitions)
8
Insert "services".
9
4 Section 3 (list of definitions)
10
Omit "State".
11
5 Before section 161
12
Insert:
13
160A When an invention is exploited for Crown purposes
14
(1) An invention is exploited for Crown purposes if:
15
(a) the invention is exploited for the services of a relevant
16
authority; and
17
(b) the exploitation is by:
18
(i) the relevant authority; or
19
(ii) if a person is authorised, in writing, by the relevant
20
authority for the purposes of this subparagraph--the
21
person for the relevant authority.
22
(2) A person may be authorised for the purposes of
23
subparagraph (1)(b)(ii):
24
(a) before or after a patent has been granted for the invention;
25
and
26
Crown use of patents Schedule 2
Amendments Part 1
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
7
(b) even if the person is directly or indirectly authorised by the
1
nominated person or patentee to exploit the invention.
2
(3) Subject to section 168, an invention is taken to be exploited for the
3
services of a relevant authority if the exploitation of the invention
4
is necessary for the proper provision of those services within
5
Australia.
6
(4) Services of a relevant authority includes:
7
(a) if the relevant authority is the Commonwealth--services that
8
are:
9
(i) primarily provided or funded by the Commonwealth; or
10
(ii) primarily provided or funded by the Commonwealth
11
and one or more of the States or Territories; and
12
(b) if the relevant authority is a State or Territory--services that
13
are:
14
(i) primarily provided or funded by the State or Territory;
15
or
16
(ii) primarily provided or funded by the State or Territory
17
and one or more of the other States or Territories or the
18
Commonwealth.
19
6 Section 162
20
Repeal the section.
21
7 Section 163
22
Repeal the section, substitute:
23
163 Crown exploitation of inventions--general rule
24
(1) Exploitation of an invention in the circumstances mentioned in
25
subsection (3) is not an infringement of:
26
(a) if a patent application for the invention is pending--the
27
nominated person's rights in the invention; or
28
(b) if a patent has been granted for the invention--the patent.
29
(2) Despite subsection (1), if terms relating to the exploitation of the
30
invention have been agreed or determined in accordance with
31
section 165, the exploitation is an infringement unless the terms are
32
complied with.
33
Schedule 2 Crown use of patents
Part 1 Amendments
8
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
(3) The circumstances are as follows:
1
(a) the relevant Minister considers that the relevant authority has
2
tried for a reasonable period, but without success, to obtain
3
from the applicant and the nominated person, or the patentee,
4
an authorisation to exploit the invention on reasonable terms;
5
(b) the relevant Minister approves, in writing, the exploitation;
6
(c) the invention is exploited for Crown purposes;
7
(d) if the exploitation is by a person authorised by a relevant
8
authority for the purposes of subparagraph 160A(1)(b)(ii)--
9
the person is authorised by the relevant authority before the
10
exploitation starts;
11
(e) at least 14 days before the exploitation starts, the relevant
12
authority gives the applicant and the nominated person, or the
13
patentee:
14
(i) a copy of the approval referred to in paragraph (b); and
15
(ii) a written statement of reasons for approving the
16
exploitation.
17
Note:
Section 25D of the Acts Interpretation Act 1901 sets out rules about
18
the contents of a statement of reasons.
19
(4) An approval given under paragraph (3)(b) is not a legislative
20
instrument.
21
(5) Relevant Minister means:
22
(a) in relation to the exploitation of an invention by or for the
23
Commonwealth--the Minister; or
24
(b) in relation to the exploitation of an invention by or for a
25
State--the Attorney-General of the State; or
26
(c) in relation to the exploitation of an invention by or for a
27
Territory--the Attorney-General of the Territory.
28
163A Crown exploitation of inventions--emergencies
29
(1) Exploitation of an invention in the circumstances mentioned in
30
subsection (3) is not an infringement of:
31
(a) if a patent application for the invention is pending--the
32
nominated person's rights in the invention; or
33
(b) if a patent has been granted for the invention--the patent.
34
Crown use of patents Schedule 2
Amendments Part 1
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
9
(2) Despite subsection (1), if terms relating to the exploitation of the
1
invention have been agreed or determined in accordance with
2
section 165, the exploitation is an infringement unless the terms are
3
complied with.
4
(3) The circumstances are as follows:
5
(a) the relevant Minister considers that the exploitation is
6
required because of an emergency;
7
(b) the relevant Minister approves, in writing, the exploitation
8
before the exploitation starts;
9
(c) the invention is exploited for Crown purposes;
10
(d) if the exploitation is by a person authorised by a relevant
11
authority for the purposes of subparagraph 160A(1)(b)(ii)--
12
the person is authorised by the relevant authority before the
13
exploitation starts.
14
(4) As soon as practicable after the relevant Minister approves the
15
proposed exploitation, the relevant Minister must give the
16
applicant and the nominated person, or the patentee:
17
(a) a copy of the approval referred to in paragraph (3)(b); and
18
(b) a written statement of reasons for approving the exploitation.
19
Note:
Section 25D of the Acts Interpretation Act 1901 sets out rules about
20
the contents of a statement of reasons.
21
(5) An approval given under paragraph (3)(b) is not a legislative
22
instrument.
23
8 Section 164 (heading)
24
Repeal the heading, substitute:
25
164 Crown exploitation of inventions--information to be given by
26
relevant authority
27
9 Section 164
28
Omit "under subsection 163(1)", substitute "in the circumstances
29
mentioned in subsection 163(3) or 163A(3)".
30
10 Section 165 (heading)
31
Repeal the heading, substitute:
32
Schedule 2 Crown use of patents
Part 1 Amendments
10
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
165 Crown exploitation of inventions--terms (including
1
remuneration)
2
11 Subsection 165(2)
3
Repeal the subsection, substitute:
4
(1) The terms for the exploitation of an invention in the circumstances
5
mentioned in subsection 163(3) or 163A(3), including terms
6
concerning the remuneration payable to the nominated person or
7
the patentee, are such terms:
8
(a) as are agreed, or determined by a method agreed, between the
9
relevant authority and the nominated person or the patentee;
10
or
11
(b) in the absence of agreement--as are determined by a
12
prescribed court on the application of the relevant authority,
13
or the nominated person or the patentee.
14
(2) Without limiting paragraph (1)(b), the prescribed court must
15
determine an amount of remuneration that is just and reasonable,
16
having regard to the economic value of the exploitation of the
17
invention and any other matter the court considers relevant.
18
12 Subsection 165(3)
19
Omit "subsection (2)", substitute "this section".
20
13 Subsection 165(3)
21
After "agreed", insert "or determined".
22
14 Section 165A (heading)
23
Repeal the heading, substitute:
24
165A Crown exploitation of inventions--court order to cease
25
15 Subsection 165A(1)
26
Omit "by the Commonwealth or the State", substitute "in the
27
circumstances mentioned in subsection 163(3) or 163A(3)".
28
Crown use of patents Schedule 2
Amendments Part 1
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
11
16 Subsection 165A(1)
1
Omit "of the Commonwealth or of the State", substitute "of the relevant
2
authority concerned".
3
17 Subsection 165A(2)
4
Omit "Commonwealth or the State", substitute "relevant authority".
5
18 Subsection 165A(2)
6
Omit "Commonwealth or of the State", substitute "relevant authority".
7
19 Section 166
8
Repeal the section, substitute:
9
166 Certain agreement and licences inoperative unless approved by
10
relevant Minister
11
(1) An agreement or licence setting the terms on which a person other
12
than a relevant authority may exploit an invention is inoperative
13
with respect to the exploitation of the invention in the
14
circumstances mentioned in subsection 163(3) or 163A(3).
15
(2) Subsection (1) does not apply if the agreement or licence has been
16
approved in writing by the relevant Minister.
17
20 Subsections 167(1) and (2)
18
Omit "under subsection 163(1)", substitute "under subsection 163(1) or
19
163A(1)".
20
21 Section 169
21
Repeal the section.
22
22 Section 170
23
Omit "or a State" (wherever occurring), substitute ", a State or a
24
Territory".
25
23 Section 170
26
Omit "or the State", substitute ", the State or the Territory".
27
Schedule 2 Crown use of patents
Part 1 Amendments
12
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
24 Schedule 1
1
Insert:
2
exploited for Crown purposes has the meaning given by
3
subsection 160A(1).
4
25 Schedule 1 (definition of relevant authority)
5
Repeal the definition, substitute:
6
relevant authority means:
7
(a) in relation to the exploitation of an invention by or for the
8
Commonwealth or an authority of the Commonwealth--the
9
Commonwealth; or
10
(b) in relation to the exploitation of an invention by or for a State
11
or an authority of a State--the State; or
12
(c) in relation to the exploitation of an invention by or for a
13
Territory or an authority of a Territory--the Territory.
14
26 Schedule 1
15
Insert:
16
relevant Minister has the meaning given by subsection 163(5).
17
services of a relevant authority has a meaning affected by
18
subsection 160A(4).
19
27 Schedule 1 (definition of State)
20
Repeal the definition.
21
Crown use of patents Schedule 2
Application and transitional provisions Part 2
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
13
Part 2--Application and transitional provisions
1
28 Definition
2
In this Part:
3
amended Act means the Patents Act 1990 as in force after the
4
commencement of this Schedule.
5
29 Application of amendments
6
(1)
The amendments of the Patents Act 1990 (other than section 166 of the
7
Act) made by Part 1 of this Schedule apply in relation to inventions that
8
start to be exploited for Crown purposes on or after the day this
9
Schedule commences.
10
(2)
The amendment of section 166 of the Patents Act 1990 made by Part 1
11
of this Schedule applies in relation to:
12
(a) agreements made or licences given before, on or after the day
13
this Schedule commences; and
14
(b) the exploitation of inventions that occurs on or after the day
15
this Schedule commences.
16
30 Transitional
--authorised person
17
An authorisation of a person that is in force for the purposes of
18
section 163 of the Patents Act 1990 immediately before the
19
commencement of this Schedule continues in force as if:
20
(a) the person had been authorised for the purposes of
21
subparagraph 160A(1)(b)(ii) of the amended Act; and
22
(b) paragraph 163(3)(d) of the amended Act were satisfied in
23
relation to the person.
24
31 Transitional
--negotiations
25
If, before the commencement of this Schedule, a relevant authority has
26
tried, for a period, but without success, to obtain from an applicant and
27
a nominated person, or a patentee, an authorisation to exploit an
28
invention on reasonable terms, the relevant Minister must take that
29
period into account in considering whether the condition in
30
paragraph 163(3)(a) of the amended Act is satisfied in relation to the
31
exploitation of the invention.
32
Schedule 2 Crown use of patents
Part 2 Application and transitional provisions
14
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
32 Transitional
--agreements and determinations
1
An agreement or determination that is in force for the purposes of
2
subsection 165(2) of the Patents Act 1990 immediately before the
3
commencement of this Schedule continues in force on and after that
4
commencement as if it had been made for the purposes of
5
subsection 165(1) of the amended Act.
6
Crown use of designs Schedule 3
Amendments Part 1
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
15
Schedule 3--Crown use of designs
1
Part 1--Amendments
2
Designs Act 2003
3
1 Section 5
4
Insert:
5
relevant authority means:
6
(a) in relation to the use of a design by or for the
7
Commonwealth--the Commonwealth; or
8
(b) in relation to the use of a design by or for a State--that State;
9
or
10
(c) in relation to the use of a design by or for a Territory--that
11
Territory.
12
relevant Minister has the meaning given by subsection 96(5).
13
services of a relevant authority has a meaning affected by
14
subsection 95(5).
15
used for Crown purposes has the meaning given by
16
subsection 95(2).
17
2 Subsection 95(2)
18
Repeal the subsection, substitute:
19
(2) A design is used for Crown purposes if:
20
(a) the design is used for the services of a relevant authority; and
21
(b) the use is by:
22
(i) the relevant authority; or
23
(ii) if a person is authorised, in writing, by the relevant
24
authority for the purposes of this subparagraph--the
25
person for the relevant authority.
26
(3) A person may be authorised for the purposes of
27
subparagraph (2)(b)(ii):
28
(a) before or after the registration of the design; and
29
Schedule 3 Crown use of designs
Part 1 Amendments
16
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
(b) even if the person is directly or indirectly authorised by the
1
entitled person in relation to the design, or the registered
2
owner of the design, to use the design.
3
(4) Subject to section 105, a design is taken to be used for the services
4
of a relevant authority if the use of the design is necessary for the
5
proper provision of those services within Australia.
6
(5) Services of a relevant authority includes:
7
(a) if the relevant authority is the Commonwealth--services that
8
are:
9
(i) primarily provided or funded by the Commonwealth; or
10
(ii) primarily provided or funded by the Commonwealth
11
and one or more of the States or Territories; and
12
(b) if the relevant authority is a State or Territory--services that
13
are:
14
(i) primarily provided or funded by the State or Territory;
15
or
16
(ii) primarily provided or funded by the State or Territory
17
and one or more of the other States or Territories or the
18
Commonwealth.
19
3 Section 96
20
Repeal the section, substitute:
21
96 Crown use of designs--general rule
22
(1) Use of a design in the circumstances mentioned in subsection (3) is
23
not an infringement of a registered design.
24
(2) Despite subsection (1), if terms relating to the use of the design
25
have been agreed or determined in accordance with section 98, the
26
use of the design is an infringement unless the terms are complied
27
with.
28
(3) The circumstances are as follows:
29
(a) the relevant Minister considers that the relevant authority has
30
tried for a reasonable period, but without success, to obtain
31
from the applicant or entitled person, or the registered owner,
32
an authorisation to use the design on reasonable terms;
33
Crown use of designs Schedule 3
Amendments Part 1
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
17
(b) the relevant Minister approves, in writing, the use of the
1
design;
2
(c) the design is used for Crown purposes;
3
(d) if the use of the design is by a person authorised by a relevant
4
authority for the purposes of subparagraph 95(2)(b)(ii)--the
5
person is authorised by the relevant authority before the use
6
starts;
7
(e) at least 14 days before the use starts, the relevant authority
8
gives the applicant and the entitled person, or the registered
9
owner:
10
(i) a copy of the approval referred to in paragraph (b); and
11
(ii) a written statement of reasons for approving the use of
12
the design.
13
Note:
Section 25D of the Acts Interpretation Act 1901 sets out rules about
14
the contents of a statement of reasons.
15
(4) An approval given under paragraph (3)(b) is not a legislative
16
instrument.
17
(5) Relevant Minister means:
18
(a) in relation to the use of a design by or for the
19
Commonwealth--the Minister; or
20
(b) in relation to the use of a design by or for a State--the
21
Attorney-General of the State; or
22
(c) in relation to the use of a design by or for a Territory--the
23
Attorney-General of the Territory.
24
96A Crown use of designs--emergencies
25
(1) Use of a design in the circumstances mentioned in subsection (3) is
26
not an infringement of a registered design.
27
(2) Despite subsection (1), if terms relating to the use of the design
28
have been agreed or determined in accordance with section 98, the
29
use of the design is an infringement unless the terms are complied
30
with.
31
(3) The circumstances are as follows:
32
(a) the relevant Minister considers that the use of the design is
33
required because of an emergency;
34
Schedule 3 Crown use of designs
Part 1 Amendments
18
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
(b) the relevant Minister approves, in writing, the use of the
1
design before the use starts;
2
(c) the design is used for Crown purposes;
3
(d) if the use of the design is by a person authorised by a relevant
4
authority for the purposes of subparagraph 95(2)(b)(ii)--the
5
person is authorised by the relevant authority before the use
6
starts.
7
(4) As soon as practicable after the relevant Minister approves the
8
proposed use of the design, the relevant Minister must give the
9
applicant and the entitled person, or the registered owner:
10
(a) a copy of the approval referred to in paragraph (3)(b); and
11
(b) a written statement of reasons for approving the use of the
12
design.
13
Note:
Section 25D of the Acts Interpretation Act 1901 sets out rules about
14
the contents of a statement of reasons.
15
(5) An approval given under paragraph (3)(b) is not a legislative
16
instrument.
17
4 Subsection 97(1)
18
Omit "under section 96, the Commonwealth or a State", substitute "in
19
the circumstances mentioned in subsection 96(3) or 96A(3), the relevant
20
authority".
21
5 Subsection 97(2)
22
Omit "Commonwealth or a State", substitute "relevant authority".
23
6 Subsection 97(2)
24
Omit "Commonwealth or State", substitute "relevant authority".
25
7 Section 98
26
Repeal the section, substitute:
27
98 Crown use of designs--terms (including remuneration)
28
(1) The terms for the use of a design in the circumstances mentioned in
29
subsection 96(3) or 96A(3), including terms concerning the
30
Crown use of designs Schedule 3
Amendments Part 1
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
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remuneration payable to the entitled person or the registered
1
owner, are such terms:
2
(a) as are agreed, or determined by a method agreed, between the
3
relevant authority and the entitled person or the registered
4
owner; or
5
(b) in the absence of agreement--as are determined by a
6
prescribed court on the application of the relevant authority,
7
or the entitled person or the registered owner.
8
(2) Without limiting paragraph (1)(b), the prescribed court must
9
determine an amount of remuneration that is just and reasonable,
10
having regard to the economic value of the use of the design and
11
any other matter the court considers relevant.
12
(3) A person may not apply to a prescribed court for a determination
13
under paragraph (1)(b) in relation to a design unless a certificate of
14
examination has been issued in relation to the design.
15
(4) The prescribed court may, in determining the terms of use, take
16
into consideration compensation that a person interested in the
17
design has received, directly or indirectly, from the relevant
18
authority in respect of the design.
19
(5) For the purposes of this section, the terms, or the method, may be
20
agreed or determined before, during or after the use of the design.
21
8 Section 99
22
Repeal the section, substitute:
23
99 Certain agreement and licences inoperative unless approved by
24
relevant Minister
25
(1) An agreement or licence setting the terms on which a person other
26
than a relevant authority may use a design is inoperative with
27
respect to the use of the design in the circumstances mentioned in
28
subsection 96(3) or 96A(3).
29
(2) Subsection (1) does not apply if the agreement or licence has been
30
approved in writing by the relevant Minister.
31
Schedule 3 Crown use of designs
Part 1 Amendments
20
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
9 Sections 100 and 101
1
Repeal the sections.
2
10 Section 102 (heading)
3
Repeal the heading, substitute:
4
102 Crown use of designs--court order to cease
5
11 Subsection 102(1)
6
Omit "by the Commonwealth or State", substitute "in the circumstances
7
mentioned in subsection 96(3) or 96A(3)".
8
12 Subsection 102(1)
9
Omit "of the Commonwealth or State", substitute "of the relevant
10
authority concerned".
11
13 Subsection 102(3)
12
Omit "Commonwealth or the State", substitute "relevant authority".
13
14 Subsection 102(4)
14
Omit "Commonwealth or State", substitute "relevant authority".
15
15 Section 103
16
After "under section 96", insert "in the circumstances mentioned in
17
subsection 96(3) or 96A(3)".
18
16 Section 103
19
Omit "Commonwealth or the State", substitute "relevant authority".
20
17 Section 104
21
Omit "or of a State", substitute ", a State or a Territory".
22
18 Section 104
23
Omit "or a State", substitute ", a State or a Territory".
24
19 Section 104
25
Omit "or the State", substitute ", the State or the Territory".
26
Crown use of designs Schedule 3
Application and transitional provisions Part 2
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
21
Part 2--Application and transitional provisions
1
20 Definitions
2
In this Part:
3
amended Act means the Designs Act 2003 as in force after the
4
commencement of this Schedule.
5
21 Application of amendments
6
(1)
The amendments of the Designs Act 2003 (other than section 99) made
7
by Part 1 of this Schedule apply in relation to designs that start to be
8
used for Crown purposes on or after the day this Schedule commences.
9
(2)
The amendment of section 99 of the Designs Act 2003 made by Part 1
10
of this Schedule applies in relation to:
11
(a) agreements made or licences given before, on or after the day
12
this Schedule commences; and
13
(b) the use of designs that occurs on or after the day this
14
Schedule commences.
15
22 Transitional
--authorised person
16
An authorisation of a person that is in force for the purposes of
17
section 96 of the Designs Act 2003 immediately before the
18
commencement of this Schedule continues in force as if:
19
(a) the person had been authorised for the purposes of
20
subparagraph 95(2)(b)(ii) of the amended Act; and
21
(b) paragraph 96(3)(d) of the amended Act were satisfied in
22
relation to the person.
23
23 Transitional
--negotiations
24
If, before the commencement of this Schedule, a relevant authority has
25
tried, for a period, but without success, to obtain from an applicant or an
26
entitled person, or a registered owner, an authorisation to use a design
27
on reasonable terms, the relevant Minister must take that period into
28
account in considering whether the condition in paragraph 96(3)(a) of
29
the amended Act is satisfied in relation to the use of the design.
30
Schedule 3 Crown use of designs
Part 2 Application and transitional provisions
22
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
24 Transitional
--agreements and determinations
1
An agreement or determination that is in force for the purposes of
2
subsection 98(1) of the Designs Act 2003 immediately before the
3
commencement of this Schedule continues in force on and after that
4
commencement as if it had been made for the purposes of
5
subsection 98(1) of the amended Act.
6
Compulsory licences Schedule 4
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
23
Schedule 4--Compulsory licences
1
2
Patents Act 1990
3
1 Section 132B
4
Omit "to work", substitute "to exploit".
5
2 Section 132B
6
Omit:
7
The court may order a compulsory licence to be granted if the
8
reasonable requirements of the public are not being met with
9
respect to a patented invention.
10
The reasonable requirements of the public relate, broadly speaking,
11
to whether Australian trade or industry is unreasonably affected by
12
the actions of the patentee in relation to the manufacture or
13
licensing of the invention (or the carrying on of a patented
14
process).
15
substitute:
16
The court may order a compulsory licence to be granted if certain
17
conditions are met, including that demand in Australia for the
18
invention is not being met on reasonable terms, authorisation to
19
exploit the invention is essential to meet that demand and it is in
20
the public interest to grant the licence. If the person seeking the
21
compulsory licence is the patentee of another invention and is
22
seeking the licence to exploit that other invention, the court must
23
also be satisfied that the other invention involves an important
24
technical advance of considerable economic significance on the
25
original invention.
26
3 Before subsection 133(1)
27
Insert:
28
Schedule 4 Compulsory licences
24
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
Application for an order granting a compulsory licence
1
4 Subsection 133(1)
2
Omit "to work", substitute "to exploit".
3
5 Subsection 133(1)
4
After "patented invention", insert "(the original invention)".
5
6 Subsections 133(2), (3) and (3B)
6
Repeal the subsections, substitute:
7
Making an order
8
(2) After hearing the application, the court may make the order if
9
satisfied that:
10
(a) all of the conditions in subsection (3) exist; or
11
(b) the patentee has contravened, or is contravening, Part IV of
12
the Competition and Consumer Act 2010 or an application
13
law (as defined in section 150A of that Act) in connection
14
with the patent.
15
(3) The conditions in this subsection are:
16
(a) demand in Australia for the original invention is not being
17
met on reasonable terms; and
18
(b) authorisation to exploit the original invention is essential to
19
meet that demand; and
20
(c) the applicant has tried for a reasonable period, but without
21
success, to obtain authority from the patentee to exploit the
22
original invention on reasonable terms and conditions; and
23
(d) the patentee has given no satisfactory reason for failing to
24
exploit the patent to the extent necessary to meet the demand
25
for the original invention in Australia; and
26
(e) it is in the public interest to provide the applicant with
27
authorisation to exploit the original invention, having regard
28
to the following:
29
(i) the benefits to the public from meeting the demand for
30
the original invention;
31
Compulsory licences Schedule 4
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(ii) the commercial costs and benefits to the patentee and
1
the applicant from providing authorisation to exploit the
2
original invention;
3
(iii) any other matters the court considers relevant, including
4
matters relating to greater competition and any impact
5
on innovation; and
6
(f) if the applicant is the patentee of another invention (the
7
dependent invention) and is seeking the authorisation for the
8
purposes of exploiting the dependent invention:
9
(i) the dependent invention cannot be exploited by the
10
applicant without exploiting the original invention; and
11
(ii) the dependent invention involves an important technical
12
advance of considerable economic significance on the
13
original invention.
14
Form of order
15
(3A) If the applicant is the patentee of the dependent invention, the order
16
must:
17
(a) require the patentee to grant to the applicant a licence to
18
exploit the original invention only to the extent necessary to
19
exploit the dependent invention; and
20
(b) if the patentee so requires--require the applicant to grant to
21
the patentee a licence on reasonable terms to exploit the
22
dependent invention.
23
(3B) An order must direct that a licence:
24
(a) is not to give the licensee, or a person authorised by the
25
licensee, the exclusive right to exploit the original invention
26
or the dependent invention (if applicable); and
27
(b) is to be assignable only in connection with an enterprise or
28
goodwill in connection with which the licence is used.
29
(3C) An order may direct that a licence is to be granted on any other
30
terms specified in the order that the court thinks fit. Such terms
31
must be consistent with the public interest, having regard to the
32
matters specified in paragraph (3)(e).
33
Schedule 4 Compulsory licences
26
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
Effect of order
1
7 Paragraph 133(5)(b)
2
Repeal the paragraph, substitute:
3
(b) if paragraph (a) does not apply--such amount as is
4
determined by the Federal Court to be just and reasonable,
5
having regard to:
6
(i) the economic value of the licence; and
7
(ii) if the order is made because the court is satisfied that
8
the patentee has contravened, or is contravening, Part IV
9
of the Competition and Consumer Act 2010 or an
10
application law (as defined in section 150A of that Act)
11
in connection with the patent--the desirability of
12
discouraging contraventions of that Part or an
13
application law; and
14
(iii) the right of the patentee to obtain a return on investment
15
commensurate with the regulatory and commercial risks
16
involved in developing the invention; and
17
(iv) the public interest in ensuring that demand in Australia
18
for the original invention is met on reasonable terms.
19
8 Before subsection 133(6)
20
Insert:
21
Revocation of licence
22
9 Subsection 133(6)
23
Omit "revoke the licence", substitute "revoke a licence".
24
10 At the end of section 133
25
Add:
26
(7) If:
27
(a) the licence is revoked by the Federal Court; and
28
(b) the order granting the licence required a licence (the
29
cross-licence) to be granted in accordance with
30
paragraph (3A)(b);
31
Compulsory licences Schedule 4
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Intellectual Property Laws Amendment (Productivity Commission
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the Federal Court must consider whether to revoke the
1
cross-licence.
2
11 Paragraph 134(2)(a)
3
Repeal the paragraph, substitute:
4
(a) all of the following apply:
5
(i) demand in Australia for the original invention is
6
continuing to not be met on reasonable terms;
7
(ii) the patentee has given no satisfactory reason for failing
8
to exploit the patent to the extent necessary to meet the
9
demand for the original invention in Australia;
10
(iii) it is in the public interest to revoke the patent, having
11
regard to the matters in subsection (3); or
12
12 At the end of section 134
13
Add:
14
(3) The matters are as follows:
15
(a) the benefits to the public from meeting the demand for the
16
original invention;
17
(b) the commercial costs and benefits to the patentee and the
18
applicant from revoking the patent;
19
(c) any other matters the court considers relevant, including
20
matters relating to greater competition and any impact on
21
innovation.
22
13 Section 135
23
Repeal the section.
24
14 Schedule 1 (definition of work)
25
Repeal the definition.
26
15 Application of amendments
27
(1)
The amendments of section 133 of the Patents Act 1990 made by this
28
Schedule apply in relation to an application for an order made on or
29
after the day this Schedule commences.
30
Schedule 4 Compulsory licences
28
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
(2)
The amendment of section 134 of the Patents Act 1990 made by this
1
Schedule applies in relation to an application for an order revoking a
2
patent made on or after the day this Schedule commences, if the order
3
granting a compulsory licence relating to the patent was made under
4
section 133 of that Act after that day.
5
(3)
The repeal of section 135 of the Patents Act 1990 by this Schedule does
6
not affect an application or an order made under section 133 or 134 of
7
that Act if the application was made before the day this Schedule
8
commences.
9
Seals Schedule 5
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
29
Schedule 5--Seals
1
2
Patents Act 1990
3
1 Section 206
4
Before "There", insert "(1)".
5
2 At the end of section 206
6
Add:
7
(2) The seal of the Patent Office may be kept and used in electronic
8
form.
9
Trade Marks Act 1995
10
3 Section 200
11
Before "There", insert "(1)".
12
4 At the end of section 200
13
Add:
14
(2) The seal of the Trade Marks Office may be kept and used in
15
electronic form.
16
Schedule 6 Specifications
30
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
Schedule 6--Specifications
1
2
Patents Act 1990
3
1 Paragraph 59(c)
4
Omit "or (3)", substitute ", (3) or (3A)".
5
2 Paragraph 98(a)
6
Omit "or (3)", substitute ", (3) or (3A)".
7
3 Paragraph 101G(3)(a)
8
Omit "or (3)", substitute ", (3) or (3A)".
9
4 Paragraph 101M(b)
10
Omit "or (3)", substitute ", (3) or (3A)".
11
5 Paragraph 102(2)(b)
12
Omit "or (3)", substitute ", (3) or (3A)".
13
6 Paragraph 138(3)(f)
14
Omit "or (3)", substitute ", (3) or (3A)".
15
7 Application of amendments
16
(1)
The amendment of section 59 of the Patents Act 1990 made by this
17
Schedule applies in relation to an opposition, filed on or after the day
18
this Schedule commences, to the grant of a standard patent based on:
19
(a) a complete application made on or after 15 April 2013; or
20
(b) a complete application for a standard patent made before
21
15 April 2013, if the applicant had not asked for an
22
examination of the patent request and specification for the
23
application under section 44 of the Patents Act 1990 before
24
that day.
25
(2)
The amendment of section 98 of the Patents Act 1990 made by this
26
Schedule applies in relation to a re-examination started on or after the
27
day this Schedule commences, if the re-examination is of a complete
28
specification:
29
Specifications Schedule 6
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
31
(a) that relates to a standard patent for which the complete
1
application was made on or after 15 April 2013; or
2
(b) that relates to a standard patent for which the complete
3
application had been made before 15 April 2013, if the
4
applicant had not asked for an examination of the patent
5
request and specification for the application under section 44
6
of the Patents Act 1990 before that day; or
7
(c) that relates to a complete application made on or after
8
15 April 2013; or
9
(d) that relates to a complete application for a standard patent
10
made before 15 April 2013, if the applicant had not asked for
11
an examination of the patent request and specification for the
12
application under section 44 of the Patents Act 1990 before
13
that day.
14
(3)
The amendment of section 101G of the Patents Act 1990 made by this
15
Schedule applies in relation to:
16
(a) innovation patents granted on or after 15 April 2013; or
17
(b) innovation patents granted before 15 April 2013, if:
18
(i) the Commissioner had not decided to examine the
19
complete specification relating to the patent under
20
section 101A of the Patents Act 1990 before that day; or
21
(ii) the patentee or any other person had not asked the
22
Commissioner to examine the complete specification
23
relating to the patent under section 101A of the Patents
24
Act 1990 before that day.
25
(4)
The amendment of section 101M of the Patents Act 1990 made by this
26
Schedule applies in relation to an opposition, filed on or after the day
27
this Schedule commences, to:
28
(a) an innovation patent granted on or after 15 April 2013; or
29
(b) an innovation patent granted before 15 April 2013, if:
30
(i) the Commissioner had not decided to examine the
31
complete specification relating to the patent under
32
section 101A of the Patents Act 1990 before that day; or
33
(ii) the patentee or any other person had not asked the
34
Commissioner to examine the complete specification
35
relating to the patent under section 101A of the Patents
36
Act 1990 before that day.
37
Schedule 6 Specifications
32
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
(5)
The amendment of section 102 of the Patents Act 1990 made by this
1
Schedule applies in relation to an amendment of complete specifications
2
directed or requested to be made on or after the day this Schedule
3
commences, if the amendment relates to:
4
(a) a patent for which the complete application is made on or
5
after 15 April 2013; or
6
(b) a standard patent for which the complete application had
7
been made before 15 April 2013, if the applicant had not
8
asked for an examination of the patent request and
9
specification for the application under section 44 of the
10
Patents Act 1990 before that day; or
11
(c) an innovation patent granted on or after 15 April 2013; or
12
(d) a complete patent application made on or after 15 April 2013;
13
or
14
(e) a complete application for a standard patent made before
15
15 April 2013, if the applicant had not asked for an
16
examination of the patent request and specification for the
17
application under section 44 of the Patents Act 1990 before
18
that day; or
19
(f) an innovation patent granted before 15 April 2013, if:
20
(i) the Commissioner had not decided to examine the
21
complete specification relating to the patent under
22
section 101A of the Patents Act 1990 before that day; or
23
(ii) the patentee or any other person had not asked the
24
Commissioner to examine the complete specification
25
relating to the patent under section 101A of the Patents
26
Act 1990 before that day.
27
(6)
The amendment of section 138 of the Patents Act 1990 made by this
28
Schedule applies in relation to an application for an order revoking
29
patents made on or after the day this Schedule commences, if the
30
application relates to:
31
(a) a patent for which the complete application is made on or
32
after 15 April 2013; or
33
(b) a standard patent for which the complete application had
34
been made before 15 April 2013, if the applicant had not
35
asked for an examination of the patent request and
36
specification for the application under section 44 of the
37
Patents Act 1990 before that day; or
38
Specifications Schedule 6
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
33
(c) an innovation patent granted on or after 15 April 2013; or
1
(d) an innovation patent granted before 15 April 2013, if:
2
(i) the Commissioner had not decided to examine the
3
complete specification relating to the patent under
4
section 101A of the Patents Act 1990 before that day; or
5
(ii) the patentee or any other person had not asked the
6
Commissioner to examine the complete specification
7
relating to the patent under section 101A of the Patents
8
Act 1990 before that day.
9
Schedule 7 Protection of information
34
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
No. , 2019
Schedule 7--Protection of information
1
2
Patents Act 1990
3
1 At the end of section 55
4
Add:
5
(4) This section is subject to subsection 56(3).
6
2 Section 56 (heading)
7
Repeal the heading, substitute:
8
56 Certain documents and information not to be published or open
9
to public inspection
10
3 At the end of section 56
11
Add:
12
(3) If the Commissioner reasonably believes that information
13
contained in a document of a kind mentioned in section 55 should
14
not be published or be open to public inspection, the Commissioner
15
may arrange for a copy of the document that does not contain the
16
information to be published or open to public inspection.
17
International applications Schedule 8
No. , 2019
Intellectual Property Laws Amendment (Productivity Commission
Response Part 2 and Other Measures) Bill 2019
35
Schedule 8--International applications
1
2
Patents Act 1990
3
1 Subsection 10(2)
4
Repeal the subsection, substitute:
5
(2) This section does not apply to an international application that was
6
not filed in the receiving Office in English unless the following
7
documents have been filed:
8
(a) a translation of the application into English;
9
(b) if required by the regulations--a certificate of verification
10
(within the meaning of the regulations) of the translation.
11
2 Application of amendment
12
The amendment of subsection 10(2) of the Patents Act 1990 made by
13
this Schedule applies in relation to an application filed on or after the
14
day this Schedule commences.
15