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This is a Bill, not an Act. For current law, see the Acts databases.
1998-1999-2000-2001
The
Parliament of the
Commonwealth of
Australia
HOUSE OF
REPRESENTATIVES
Presented and read a first
time
Patents
Amendment Bill 2001
No. ,
2001
(Industry, Science and
Resources)
A Bill for an Act to amend the
Patents Act 1990, and for related purposes
ISBN: 0642 457875
Contents
Part 1—Amendments relating to novelty, inventive step and
innovative step 3
Patents Act
1990 3
Part 2—Other
amendments 5
Patents Act
1990 5
Patents Act
1990 11
A Bill for an Act to amend the Patents Act 1990,
and for related purposes
The Parliament of Australia enacts:
This Act may be cited as the Patents Amendment Act 2001.
(1) Subject to this section, this Act commences on the day on which it
receives the Royal Assent.
(2) Subject to subsection (3), Schedule 1 commences on a day to
be fixed by Proclamation.
(3) If Schedule 1 does not commence under subsection (2) within
the period of 6 months beginning on the day on which it receives the Royal
Assent, it commences on the first day after the end of that period.
(4) Schedule 2 is taken to have commenced immediately after the
commencement of the Patents Amendment (Innovation Patents) Act
2000.
Subject to section 2, each Act 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this Act is amended or repealed as set out in the applicable items in the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.
Part 1—Amendments
relating to novelty, inventive step and innovative step
1 Paragraph 7(1)(b)
Omit “in the patent area”.
2 Subsection 7(2)
Omit “in the patent area”.
3 Subsection 7(2)
Omit all the words from and including “either” to the end of
the subsection, substitute “the information mentioned in
subsection (3).”.
4 Subsection 7(3)
Repeal the subsection, substitute:
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information that existed before the
priority date of the relevant claim; or
(b) a combination of any 2 or more pieces of prior art information,
if:
(i) those pieces of information existed before the priority date of the
relevant claim; and
(ii) it would have been obvious before that date to a person skilled in
the relevant art to combine those pieces of information.
5 Subsection 7(4)
Omit “in the patent area”.
6 Paragraph 7(5)(b)
Omit “in the patent area”.
7 Subsection 45(1A)
Omit “anywhere in the patent area”, substitute “(whether
in or out of the patent area)”.
8 Subsection 48(1A)
Omit “anywhere in the patent area”, substitute “(whether
in or out of the patent area)”.
9 Subsection 98(2)
Omit “anywhere in the patent area”, substitute “(whether
in or out of the patent area)”.
10 Subsection 101B(3)
Omit “anywhere in the patent area”, substitute “(whether
in or out of the patent area)”.
11 Subsection 101G(5)
Omit “anywhere in the patent area”, substitute “(whether
in or out of the patent area)”.
12 Schedule 1 (subparagraph (a)(ii) of
the definition of prior art base)
Omit “in the patent area”, substitute “, whether in or
out of the patent area”.
13 Application
The amendments made by this Part apply in relation to:
(a) patents for which the complete application is made on or after the day
on which this Schedule commences; and
(b) the making of complete applications for patents on or after the day on
which this Schedule commences.
14 Subsection 45(3)
Repeal the subsection, substitute:
(3) The applicant must inform the Commissioner, in accordance with the
regulations, of the results of the following searches that are carried out
within the prescribed period by or on behalf of the applicant:
(a) searches in respect of the complete application;
(b) searches in respect of any provisional application with which the
complete application is associated;
(c) searches in respect of any corresponding application filed outside
Australia.
15 Subsection 49(1)
Repeal the subsection, substitute:
(1) Subject to section 50, the Commissioner must accept a patent
request and complete specification relating to an application for a standard
patent, if:
(a) the Commissioner is satisfied that the invention, so far as claimed,
satisfies the criteria mentioned in paragraph 18(1)(b); and
(b) the Commissioner considers that:
(i) there is no lawful ground of objection (other than a ground in respect
of paragraph 18(1)(b)) to the request and specification; or
(ii) any such ground of objection has been removed.
16 Subsection 61(1)
Omit “The Commissioner must”, substitute “Subject to
section 100A, the Commissioner must”.
17 Subsection 97(1)
Repeal the subsection, substitute:
(1) Subject to this section and the regulations, if:
(a) a request and complete specification relating to an application for a
patent has been accepted; and
(b) the patent has not been granted;
the Commissioner may re-examine the complete specification.
18 After section 100
Insert:
(1) Where the Commissioner makes an adverse report on a re-examination
under subsection 97(1), the Commissioner may refuse to grant the patent (see
subsection 61(1)).
(2) The Commissioner cannot refuse to grant a patent under this section
unless the Commissioner:
(a) has given the applicant a reasonable opportunity to be heard;
and
(b) has, where appropriate, given the applicant a reasonable opportunity
to amend the relevant specification for the purpose of removing any lawful
ground of objection and the applicant has failed to do so.
(3) The applicant may appeal to the Federal Court against a decision of
the Commissioner under this section.
Note: The heading to section 101 is replaced by the
heading “Revocation of patent—re-examination after
grant”.
19 Section 101D
Repeal the section, substitute:
The patentee must inform the Commissioner, in accordance with the
regulations, of the results of the following searches that are carried out
within the prescribed period by or on behalf of the patentee:
(a) searches in respect of the patent;
(b) searches in respect of the complete application relating to the
patent;
(c) searches in respect of any provisional application with which the
complete application is associated;
(d) searches in respect of any corresponding application filed outside
Australia.
20 Paragraph 101E(a)
Repeal the paragraph, substitute:
(a) after examining a patent under section 101B, the Commissioner
decides in writing that he or she is satisfied that the invention, so far as
claimed, complies with paragraph 18(1A)(b); and
(aa) after so examining the patent, the Commissioner also decides in
writing that he or she considers that:
(i) a ground for the revocation of the patent (other than a ground in
respect of paragraph 18(1A)(b)) has not been made out; or
(ii) any such ground has been removed; and
21 Paragraph 102(2A)(b)
Omit “a decision under paragraph 101E(a)”, substitute
“decisions under paragraphs 101E(a) and (aa)”.
22 After subsection 102(2B)
Insert:
Amendments not allowable if information not provided
(2C) An amendment of a complete specification relating to a patent is not
allowable if:
(a) the patentee or the patentee’s predecessor in title failed to
ensure the provision to the Commissioner of the information required by
subsection 45(3) or section 101D in relation to the patent; and
(b) the effect of the proposed amendment would be to remove a lawful
ground of objection under paragraph 18(1)(b) or 18(1A)(b) to the specification
arising from the existence of some or all of the information not
provided.
23 Subsection 119(2)
Repeal the subsection, substitute:
(2) Subject to subsection (3), subsection (1) does not apply if
the person derived the subject-matter of the invention concerned from the
patentee or the patentee’s predecessor in title in the
invention.
(3) Subsection (2) does not prevent subsection (1) from applying
if:
(a) the person derived the subject-matter of the invention concerned from
information that was made publicly available by or with the consent of the
patentee, or the predecessor in title of the patentee; and
(b) the making of that information publicly available was through any
publication or use of the invention in the prescribed circumstances mentioned in
paragraph 24(1)(a).
(4) Subsection (1) does not apply if the person, before the relevant
priority date, had stopped making the product or using the process (other than
temporarily), or had abandoned (other than temporarily) the steps mentioned in
paragraph (1)(b).
24 Paragraph 142(2)(b)
Repeal the paragraph.
25 Paragraph 143A(c)
Omit “a decision under paragraph 101E(a)”, substitute
“decisions under paragraphs 101E(a) and (aa)”.
26 At the end of
Chapter 13
Add:
To avoid doubt, a reference in this Chapter to the payment of a
continuation fee or renewal fee by the applicant or patentee is taken to include
a reference to the payment of that fee by a person other than the applicant or
patentee.
27 After subsection 223(2)
Insert:
(2A) If:
(a) a relevant act that is required to be done within a certain time is
not done within that time; and
(b) the Commissioner is satisfied that the person concerned took due care,
as required in the circumstances, to ensure the doing of the act within that
time;
the Commissioner must, on application made by the person concerned in
accordance with the regulations and within the prescribed period, extend the
time for doing the act.
(2B) An extension of time under subsection (2A) cannot exceed the
period prescribed for the purposes of this subsection.
28 After subsection 223(3)
Insert:
(3A) Despite subsection (3), the time allowed for doing a relevant
act may be extended under subsection (2A) only after that time has
expired.
29 Subsection 223(6)
Omit “A person”, substitute “Subject to
subsection (6A), a person”.
30 Subsection 223(6)
Omit “granting”, substitute “granting under
subsection (2) or (2A)”.
31 After subsection 223(6)
Insert:
(6A) If the Commissioner is satisfied that an application under
subsection (2) or (2A) would not be granted even in the absence of
opposition under subsection (6):
(a) the Commissioner need not advertise the application in accordance with
subsection (4); and
(b) the application cannot be opposed, despite subsection (6);
and
(c) the Commissioner must refuse to grant the application.
32 Application
(1) The amendments made by items 14 and 24 of this Schedule apply in
relation to an application if the patent request and complete specification in
relation to that application has not been accepted under subsection 49(1) of the
Patents Act 1990 before the commencement of this Schedule.
(2) The amendment made by item 15 of this Schedule applies in relation
to the acceptance of a patent request and complete specification under
subsection 49(1) of the Patents Act 1990 on or after the commencement of
this Schedule.
(3) The amendments made by items 16, 17 and 18 of this Schedule apply
in relation to the grant of a patent on or after the commencement of this
Schedule.
(4) The amendment made by item 19 of this Schedule applies in relation
to a patent unless the Commissioner has started examination of the patent under
section 101B of the Patents Act 1990 before the commencement of this
Schedule.
(5) The amendments made by items 20, 21 and 25 of this Schedule apply
in relation to decisions of the Commissioner made under section 101E of the
Patents Act 1990 on or after the commencement of this Schedule.
(6) The amendment made by item 23 of this Schedule applies in relation
to a patent if the date of the patent is the date on which this Schedule
commences or a later date.
(7) The amendments made by items 27, 28, 29, 30 and 31 of this
Schedule apply in relation to applications made under section 223 of the
Patents Act 1990 on or after the commencement of this Schedule.
33 Saving of regulations
(1) Regulations in force for the purposes of a provision of the Patents
Act 1990 immediately before the day on which this Schedule commences
continue to have effect on and after that day as if they had been made for the
purposes of that provision as amended by this Schedule.
(2) Subitem (1) does not prevent the repeal or amendment of
regulations continued by that subitem.
1 Subsection 48(1A)
Omit “paragraph (1)(c)”, substitute
“paragraph (1)(b)”.
Note: This item corrects an incorrect
cross-reference.
2 Subsection 101B(3)
Omit “paragraph 18A(1)(b)”, substitute “paragraph
18(1A)(b)”.
Note: This item corrects an incorrect
cross-reference.