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Patents Act 1990
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Administered by
Department of Industry, Science and Resources
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C2016C00863 C38
01 July 2016
-
20 October 2016
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Chapter 1—Introductory
1 Short title
2 Commencement
3 Definitions
5 Associated applications
6 Deposit requirements
7 Novelty, inventive step and innovative step
7A Meaning of useful
9 Secret use
10 Certain international applications to be taken to have been given an international filing date
11 Act binds the Crown
12 Application of Act
12A Application of the Criminal Code
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Chapter 2—Patent rights, ownership and validity
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Part 1—Patent rights
13 Exclusive rights given by patent
14 Assignment of patent
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Part 2—Ownership
15 Who may be granted a patent?
16 Co-ownership of patents
17 Directions to co-owners
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Part 3—Validity
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Division 1—Validity
18 Patentable inventions
19 Certificate of validity
20 Validity of patent not guaranteed
21 Validity not implied by making or refusal of non-infringement declaration
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Division 2—Matters not affecting validity
22A Validity not affected by who patent is granted to
22 Invalidity in relation to one claim not to affect validity in relation to other claims
23 Validity not affected by publication etc. after priority date
24 Validity not affected by making information available in certain circumstances
25 Validity: patents of addition
26 Validity not affected in certain cases involving amendments
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Division 3—Notice of matters affecting validity
27 Notice of matters affecting validity of standard patents
28 Notice of matters affecting validity of innovation patents
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Chapter 3—From application to acceptance
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Part 1—Patent applications
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Division 1—Applications
29 Application for patent—general rules
29A Applications for patents—special rules for PCT applications
29B Applications for patents—special rules for Convention applications
30 Filing date
31 Joint applicants
32 Disputes between applicants etc.
33 Applications by opponents etc.
34 Applications by eligible persons arising out of Court proceedings
35 Applications by eligible persons following revocation by Commissioner
36 Other applications by eligible persons
37 Complete application may be treated as provisional
38 Time for making complete application
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Division 2—Specifications
40 Specifications
41 Specifications: micro-organisms
42 Micro-organisms ceasing to be reasonably available
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Division 3—Priority dates
43 Priority dates
43AA Disclosure in basic applications
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Part 2—Examination of standard patent requests and specifications
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Division 1A—Preliminary search and opinion
43A Preliminary search and opinion
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Division 1—Examination
44 Request for examination
45 Examination
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Part 3—Acceptance
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Division 1—Acceptance of standard patents
49 Acceptance of patent request: standard patent
49A Postponing acceptance of patent request: standard patent
50 Application or grant may be refused in certain cases
50A Revocation of acceptance
51 Appeal
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Division 2—Acceptance of innovation patents
52 Formalities check and acceptance of innovation patents
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Chapter 4—Publication
53 Publication of certain information about applicants etc.
54 Notice of publication
55 Documents open to public inspection
56 Certain documents not to be published
56A Publication and inspection of PCT applications
57 Effect of publication of complete specification
58 Result of search may be disclosed
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Chapter 5—Opposition to grant of standard patent
59 Opposition to grant of standard patent
60 Hearing and decision by Commissioner
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Chapter 6—Grant and term of patents
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Part 1—Grant
61 Grant of standard patent
62 Grant and publication of innovation patent
63 Joint patentees
64 Grant: multiple applications
65 Date of patent
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Part 2—Term
67 Term of standard patent
68 Term of innovation patent
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Part 3—Extension of term of standard patents relating to pharmaceutical substances
70 Applications for extension of patent
71 Form and timing of an application
72 Notification and public inspection of application
73 Withdrawal of application
74 Acceptance or refusal of application
75 Opposition to grant of extension
76 Grant of extension
76A Notification of extension to the Secretary, Health and Family Services
77 Calculation of term of extension
78 Exclusive rights of patentee are limited if extension granted
79 Rights of patentee if extension granted after patent expires
79A Commissioner not to make decision if court proceedings pending
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Chapter 6A—Divisional applications
79B Divisional applications prior to grant of patent
79C Divisional applications for innovation patents may be made after grant of an innovation patent
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Chapter 7—Patents of addition
80 Chapter does not apply to innovation patents
81 Grant of patent of addition
82 Revocation of patent and grant of patent of addition instead
83 Term of patent of addition
85 Revocation of patent for main invention
86 Renewal fees not payable
87 Fees payable where patent of addition becomes an independent patent
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Chapter 9—Re-examination of standard patents
96A Chapter does not apply to innovation patents
97 Re-examination of complete specifications
98 Report on re-examination
99 Statement by applicant or patentee
100 Copies of report to be given to court
100A Refusal to grant patent—re-examination before grant
101 Revocation of patent—re-examination after grant
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Chapter 9A—Examination, re-examination and opposition-innovation patents
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Part 1—Examination of innovation patents
101A Examination may be requested or Commissioner may decide to examine
101B Examination of an innovation patent
101C How and when examination to be carried out
101E Certificate of examination
101EA Revocation of certificate of examination
101F Revocation of innovation patents following examination under section 101B
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Part 2—Re-examination of innovation patents
101G Re-examination of complete specifications of innovation patents
101H Patentee statements
101J Revocation of innovation patent following re-examination
101K Relevant proceedings and re-examination
101L Copies of report to be given to court
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Part 3—Opposition to innovation patents
101M Opposition to innovation patent
101N Hearing and decision by the Commissioner
101P Relevant proceedings and opposition
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Chapter 10—Amendments
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Part 1—Amendments that are not allowable
102 What amendments are not allowable?
103 Consent of mortgagee or exclusive licensee needed
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Part 2—Amendments of patent requests, specifications and other filed documents
104 Amendments by applicants and patentees
105 Amendments directed by court
106 Amendments directed by Commissioner: patents
107 Amendments directed by Commissioner: applications for standard patents
109 Appeal
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Part 3—Miscellaneous
110 Advertisement of amendment of complete specification
112 Pending proceedings
112A Decisions on appeal
113 Persons claiming under assignment or agreement
114 Priority date of claims of certain amended specifications
114A Objection cannot be taken to certain amended specifications
115 Restriction on recovery of damages etc.
116 Interpretation of amended specifications
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Chapter 11—Infringement
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Part 1—Infringement and infringement proceedings
117 Infringement by supply of products
118 Infringement exemptions: use in or on foreign vessels, aircraft or vehicles
119 Infringement exemptions: prior use
119A Infringement exemptions: acts for obtaining regulatory approval of pharmaceuticals
119B Infringement exemptions: acts for obtaining regulatory approval (non-pharmaceuticals)
119C Infringement exemptions: acts for experimental purposes
120 Infringement proceedings
121 Counter-claim for revocation of patent
121A Burden of proof—infringement of patent for a process
122 Relief for infringement of patent
123 Innocent infringement
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Part 2—Non-infringement declarations
124 Interpretation
125 Application for non-infringement declaration
126 Proceedings for non-infringement declarations
127 Effect of non-infringement declarations
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Part 3—Unjustified threats of infringement proceedings
128 Application for relief from unjustified threats
129 Court’s power to grant relief if threats related to a standard patent or standard patent application
129A Threats related to an innovation patent application or innovation patent and court’s power to grant relief
130 Counter-claim for infringement
131 Notification of patent not a threat
132 Liability of legal practitioner or patent attorney
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Chapter 12—Compulsory licences and revocation of patents
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Part 1—Introduction
132A Simplified outline of this Chapter
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Part 2—Compulsory licences (general)
132B Simplified outline of this Part
133 Compulsory licences—general
134 Revocation of patent after grant of compulsory licence under section 133
135 Reasonable requirements of the public
136 Orders to be consistent with international agreements
136A Dealing with allegation of contravention of application law
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Part 3—Patented pharmaceutical invention compulsory licences (for manufacture and export to eligible importing countries)
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Division 1—Introduction
136B Simplified outline of this Part
136C Relationship between Parts 2 and 3
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Division 2—Patented pharmaceutical invention compulsory licences
136D PPI compulsory licences—applications for orders
136E PPI compulsory licences—orders
136F PPI compulsory licences—terms
136G PPI compulsory licences—amendment
136H PPI compulsory licences—revocation
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Division 3—Remuneration
136J PPI compulsory licences—remuneration
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Division 4—General
136K PPI compulsory licences—nature of orders
136L PPI compulsory licences—consistency of orders with international agreements
136M PPI compulsory licences—applications heard together
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Part 4—Surrender and revocation of patents
136N Simplified outline of this Part
137 Revocation on surrender of patent
138 Revocation of patents in other circumstances
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Part 5—Other matters
138A Simplified outline of this Part
139 Parties to proceedings
140 Commissioner to be given copies of orders
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Chapter 13—Withdrawal and lapsing of applications and ceasing of patents
141 Withdrawal of applications
142 Lapsing of applications
143 Ceasing of patents
143A Ceasing of innovation patents
143B Payment of fees
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Chapter 14—Contracts
144 Void conditions
145 Termination of contract after patent ceases to be in force
146 Effect of Chapter
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Chapter 15—Special provisions relating to associated technology
147 Certificate by Director as to associated technology
148 Lapsing etc. of applications
149 Revocation of direction
150 Restoration of lapsed application
151 Reinstatement of application as an international application
152 Notice of prohibitions or restrictions on publication
153 Effect of order
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Chapter 16—Jurisdiction and powers of courts
154 Jurisdiction of Federal Court
155 Jurisdiction of other prescribed courts
156 Exercise of jurisdiction
157 Transfer of proceedings
158 Appeals
159 Commissioner may appear in appeals
160 Powers of Federal Court
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Chapter 17—The Crown
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Part 1—Introductory
161 Nominated persons and patentees
162 Commonwealth and State authorities
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Part 2—Exploitation by the Crown
163 Exploitation of inventions by Crown
164 Nominated person or patentee to be informed of exploitation
165 Remuneration and terms for exploitation
165A Exploitation of invention to cease under court order
166 Previous agreements inoperative
167 Sale of products
168 Supply of products by Commonwealth to foreign countries
169 Declarations that inventions have been exploited
170 Sale of forfeited articles
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Part 3—Acquisitions by and assignments to the Crown
171 Acquisition of inventions or patents by Commonwealth
172 Assignment of invention to Commonwealth
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Part 4—Prohibition orders
173 Prohibition of publication of information about inventions
174 Effect of prohibition orders
175 Disclosure of information to Commonwealth authority
176 International applications treated as applications under this Act
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Chapter 18—Miscellaneous offences
177 False representations about the Patent Office
178 False representations about patents or patented articles
182 Officers not to traffic in inventions
183 Unauthorised disclosure of information by employees etc.
184 Other unauthorised disclosures of information
185 Commissioner etc. not to prepare documents or search records
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Chapter 19—The Register and official documents
186 Register of Patents
187 Registration of particulars of patents etc.
188 Trusts not registrable
189 Power of patentee to deal with patent
190 Inspection of Register
191 False entries in Register
191A Commissioner’s power to rectify register
192 Orders for rectification of Register
193 Inspection of documents
194 Information obtainable from Commissioner
195 Evidence—the Register
196 Evidence—unregistered particulars
197 Evidence—certificate and copies of documents
197AA Evidence of matters arising under PCT
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Chapter 20—Patent Attorneys
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Part 1—Registration, privileges and professional conduct
198 Registration of patent attorneys
199 Deregistration
200 Privileges
200A Designated Manager
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Part 2—Offences
201 Acting or holding out without being registered
201A When a person carries on business, practises or acts as a patent attorney
201B Incorporated patent attorney must have a patent attorney director
202 Documents prepared by legal practitioners
202A Documents prepared by a member of a partnership
202B Documents prepared by incorporated patent attorneys and incorporated legal practices
203 Attendance at patent attorney’s office
204 Time for starting prosecutions
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Chapter 21—Administration
205 Patent Office and sub-offices
206 Patent Office seal
207 Commissioner of Patents
208 Deputy Commissioner of Patents
209 Delegation of Commissioner’s powers and functions
210 Commissioner’s powers
210A Sanctions for non-compliance with Commissioner’s requirements
211 Recovery of costs awarded by Commissioner
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Chapter 22—Miscellaneous
212 Copies of examination reports to be communicated
213 Making and signing applications etc.
214 Filing of documents
215 Death of applicant or nominated person
216 Exercise of discretionary power by Commissioner
217 Assessors
218 Costs where patent invalid in part
219 Security for costs
220 Costs of attendance of patent attorney
221 Service of documents
222 Publication of Official Journal etc.
222A Doing act when Patent Office reopens after end of period otherwise provided for doing act
223 Extensions of time
224 Review of decisions
225 Conduct of employees and agents of natural persons
226 Documents open to public inspection do not infringe copyright
227 Fees
227A Professional Standards Board for Patent and Trade Marks Attorneys
228 Regulations
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Chapter 23—Transitional and savings provisions
231 Application of Part III of 1989 Amending Act
233 Patents granted under 1952 Act
234 Applications under 1952 Act
235 Other applications and proceedings under 1952 Act
236 Micro-organisms
237 Orders, directions etc. under 1952 Act
238 The Commissioner and Deputy Commissioner
239 The Register of Patents and Register of Patent Attorneys
240 Registered patent attorneys
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Schedule 1—Dictionary
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Endnotes
Endnote 1—About the endnotes
Endnote 2—Abbreviation key
Endnote 3—Legislation history
Endnote 4—Amendment history
