Australian Government

Federal Register of Legislation

Patents Act 1990

In force

Administered by

Department of Industry, Science and Resources

Latest version

C2023C00457 (C51)

18 November 2023

Table of contents

Chapter 1—Introductory
- 1 Short title
- 2 Commencement
- 2A Object of this Act
- 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
Chapter 2—Patent rights, ownership and validity
- Part 1—Patent rights
  - 13 Exclusive rights given by patent
  - 14 Assignment of patent
- Part 2—Ownership
- 15 Who may be granted a patent?
- 16 Co ownership of patents
- 17 Directions to co owners
- Part 3—Validity
- Division 1—Validity
- 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
- 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
Chapter 3—From application to acceptance
- Part 1—Patent applications
- Part 2—Examination of standard patent requests and specifications
  - Division 1A—Preliminary search and opinion
    - 43A Preliminary search and opinion
  - Division 1—Examination
    - 44 Request for examination
    - 45 Examination
- Part 3—Acceptance
  - Division 1—Acceptance of standard patents
  - Division 2—Acceptance of innovation patents
    - 52 Formalities check and acceptance of innovation patents
Chapter 4—Publication
- 53 Publication of certain information about applicants etc.
- 54 Notice of publication
- 55 Documents open to public inspection
- 56 Certain documents and information not to be published or open to public inspection
- 56A Publication and inspection of PCT applications
- 57 Effect of publication of complete specification
- 58 Result of search may be disclosed
Chapter 5—Opposition to grant of standard patent
- 59 Opposition to grant of standard patent
- 60 Hearing and decision by Commissioner
Chapter 6—Grant and term of patents
- Part 1—Grant
- Part 2—Term
  - 67 Term of standard patent
  - 68 Term of innovation patent
- Part 3—Extension of term of standard patents relating to pharmaceutical substances
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
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
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
Chapter 9A—Examination, re examination and opposition innovation patents
- Part 1—Examination of innovation patents
- Part 2—Re examination of innovation patents
- Part 3—Opposition to innovation patents
Chapter 10—Amendments
- Part 1—Amendments that are not allowable
  - 102 What amendments are not allowable?
  - 103 Consent of mortgagee or exclusive licensee needed
- Part 2—Amendments of patent requests, specifications and other filed documents
- Part 3—Miscellaneous
Chapter 11—Infringement
- Part 1—Infringement and infringement proceedings
- Part 2—Non infringement declarations
- Part 3—Unjustified threats of infringement proceedings
Chapter 12—Compulsory licences and revocation of patents
- Part 1—Introduction
  - 132A Simplified outline of this Chapter
- Part 2—Compulsory licences (general)
- Part 3—Patented pharmaceutical invention compulsory licences (for manufacture and export to eligible importing countries)
- Part 4—Surrender and revocation of patents
- Part 5—Other matters
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
Chapter 14—Contracts
- 145 Termination of contract after patent ceases to be in force
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
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
Chapter 17—The Crown
- Part 1—Introductory
  - 160A When an invention is exploited for Crown purposes
  - 161 Nominated persons and patentees
- Part 2—Exploitation by the Crown
- Part 3—Acquisitions by and assignments to the Crown
  - 171 Acquisition of inventions or patents by Commonwealth
  - 172 Assignment of invention to Commonwealth
- Part 4—Prohibition orders
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
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
Chapter 20—Patent Attorneys
- Part 1—Registration, privileges and professional conduct
- Part 2—Offences
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
Chapter 22—Miscellaneous
- 212 Copies of examination reports to be communicated
- 213 Making and signing applications etc.
- 214 Filing of documents
- 214A Approved means of filing documents
- 214B Directions by Commissioner for filing of documents
- 214C Directions by Commissioner for filing of evidence
- 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
- 220A Notifications by Commissioner under this Act
- 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
- 223A Computerised decision making
- 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 payable under this Act
- 227AAA Approved means of paying a fee
- 227AB Application of administrative law regime to decisions made in New Zealand
- 227A Trans Tasman IP Attorneys Board
- 227B Publishing personal information of registered patent attorneys
- 228 Regulations
- 229 Instrument determining formalities requirements for patent documents
Chapter 23—Transitional and savings provisions
- 237 Orders, directions etc. under 1952 Act
- 239 The Register of Patents and Register of Patent Attorneys
- 240 Registered patent attorneys
Schedule 1—Dictionary
- Endnotes