Note 2:       For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009. preliminary search and opinion, in relation to a patent request and complete specification relating to an application for a standard patent, means search and opinion under section 43A. means the person identified in a patent request as the person to whom the patent is to be granted. (1)  A person must not falsely represent that he or she, or another person, is the patentee of an invention. (b)  the circumstances in which PCT applications become open to public inspection. (c)  the Commissioner has, if appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any ground for revocation and the patentee has failed to do so. The Federal Court may make an order under this Part requiring the grant of a compulsory licence to exploit a patented pharmaceutical invention for manufacture and export to an eligible importing country. (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. (1)  If the patent for the main invention is revoked by a prescribed court, or by the Commissioner under section 101 or 137, the patent of addition becomes an independent patent unless otherwise ordered by: (a)  where the patent is revoked by a prescribed court—that court; or. PCT means the Patent Cooperation Treaty signed at Washington on 19 June 1970, as that treaty is in force for Australia from time to time, together with the Regulations annexed to that treaty, as those Regulations are in force for Australia from time to time. The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground: (a)  that the nominated person is either: (i)  not entitled to a grant of a patent for the invention; or. (1)  Except as otherwise provided by this Act, documents of the kind mentioned in section 55: (a)  must not be published or be open to public inspection; and. 197AA  Evidence of matters arising under PCT. (b)  does not file the prescribed documents (if any) within the prescribed period. (b)  the act would, if done after the grant of the patent, have constituted an infringement of a claim of the specification. (6)  For the purposes of subsection (5), it is immaterial whether the disclosure takes place in New Zealand. Registration of particulars of patents etc. (1)  Where the Commissioner considers that a specification in respect of an application may contain information of a kind referred to in the definition of associated technology in subsection 4(1) of the Safeguards Act, the Commissioner must give the Director written notice to that effect together with a copy of the patent request and specification. (4)  If the Commissioner is satisfied, on the balance of probabilities, that the amendments set out in a statement (or an amended statement) are allowable and would, if made, remove all lawful grounds of objection to the patent request and complete specification, the Commissioner must allow the amendments. (1)  Subject to any agreement to the contrary, where there are 2 or more patentees: (a)  each of them is entitled to an equal undivided share in the patent; and, (b)  each of them is entitled to exercise the exclusive rights given by the patent for his or her own benefit without accounting to the others; and. (3)  The Commissioner must not revoke a patent under this section unless the Commissioner: (b)  has, if appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purposes of removing a ground for the revocation of the patent and the patentee has failed to do so. (5)  A member of the Board is to be paid such allowances as are prescribed. (1B)  For the purposes of subsection (1), it is immaterial whether an error or omission took place in New Zealand. ], 42  Micro‑organisms ceasing to be reasonably available, (a)  a complete application has been made for a patent, or a patent has been granted for an invention of a kind mentioned in paragraph 41(2)(a); and, (b)  the relevant micro‑organism was, at the date of filing of the complete specification, reasonably available (within the meaning of section 41) to a skilled person working in the relevant art in the patent area; and. 126  Proceedings for non‑infringement declarations. Australian Patent Law The Full Bench of the Federal Court of Australia has handed down its decision in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177. (a)  a provisional patent application lapses under subsection 142(1) at the end of the period prescribed for the purposes of section 38; and. 62  Grant and publication of innovation patent, (a)  the Commissioner accepts a patent request and complete specification filed in respect of an application for an innovation patent; and. The examination under section 101B must be carried out: (a)  in accordance with the regulations; and. Proceedings under section 133 or 134 involving an allegation of contravention of an application law that is a law of a State must be dealt with as if the law were a law of the Commonwealth. (a)  in relation to a patent acquired by the Commonwealth—the patentee and any person recorded in the Register as having an interest in the patent; and. (b)  other information to be made available by the licensee and the way in which it is to be made available. 136L  PPI compulsory licences—consistency of orders with international agreements. (d)  the applicant files any prescribed documents and pays the prescribed fee; (e)  the application must be treated as requested; and, (f)  the description, claims and drawings in the application must be treated as a complete specification filed in respect of the application; and. (5)  If the Commissioner revokes the patent: (a)  the Commissioner must notify the patentee and the opponent of the revocation; and. (1)  The Commissioner must grant an extension of the term of a standard patent if: (b)  in spite of opposition, the Commissioner’s decision, or the decision on appeal, is that the extension should be granted. (2)  If this section applies, the Commissioner must: (a)  notify the patentee and the person who requested the examination (if that person is not the patentee) that the patent has been examined and that a certificate of examination is to be issued; and, (b)  publish a notice of the examination having occurred in the Official Journal; and, (c)  issue a certificate of examination to the patentee in the approved form; and. (3)  A decision under subsection (1) is not a legislative instrument. (1)  The general rule is that a patent of addition remains in force for so long as the patent for the main invention remains in force. (b)  is satisfied, on the balance of probabilities: (i)  on application made by one or more persons in accordance with the regulations, that the persons are eligible persons in relation to the invention concerned, so far as so claimed in any claim of the revoked patent (the original claim) and that the former patentee is not such an eligible person; or. means proceedings for infringement of a patent. (b)  the contract entitles the buyer, lessee or licensee to be relieved of the liability to comply with the condition on giving the other party 3 months’ notice in writing and paying, in compensation for the relief: (i)  in the case of a sale—such sum as is fixed by an arbitrator appointed by the Minister; or. 56A  Publication and inspection of PCT applications. (6)  However, for the purposes of the Corporations Act 2001: (a)  the appointed attorney is not a director of the incorporated patent attorney only because: (i)  the appointed attorney takes charge of the patents work of the incorporated patent attorney; and, (ii)  the appointed attorney is taken, for the purposes of this Act, to be a patent attorney director of the incorporated patent attorney; and. (b)  the individual is not a registered patent attorney. 127  Effect of non‑infringement declarations, (a)  a patentee has given a person a written admission that the doing of an act has not infringed, or would not infringe, a claim, or a prescribed court has made a non‑infringement declaration in respect of an invention; and. 202B  Documents prepared by incorporated patent attorneys and incorporated legal practices. Any uncommenced amendments affecting the law are accessible on the Legislation Register (www.legislation.gov.au). Federal Court means the Federal Court of Australia. foreign land vehicle means a land vehicle owned by a person ordinarily resident in a prescribed foreign country. Declarations that inventions have been exploited............ 170........................ Sale of forfeited articles.................................................. 171........................ Acquisition of inventions or patents by Commonwealth. (ii)  only to the assignee of that licence. (4B)  If the regulations confer a power on a person or body, the regulations may provide that the power may be exercised in Australia or New Zealand. 21  Validity not implied by making or refusal of non‑infringement declaration. (b)  a person is to be taken to represent that an article is the subject of an application for a patent in Australia if the words “patent applied for” or “patent pending”, or any other word or words implying that an application for a patent for the article has been made in Australia, are stamped, engraved or impressed on, or otherwise applied to, the article. (2)  If a nominated person dies before a patent is granted on the application, the patent may be granted to his or her legal representative. (1)  A PPI order must direct that the PPI compulsory licence is granted on the following terms: (a)  no more than the quantity of the pharmaceutical product that is determined by the Federal Court to be necessary to meet the needs of the eligible importing country is manufactured; (b)  the entirety of the pharmaceutical product manufactured for that purpose is exported to that country; (c)  the pharmaceutical product is labelled and marked in accordance with the regulations; (d)  before shipment of the pharmaceutical product begins, the shipment information prescribed by regulation is made available on a website by, or on behalf of, the licensee for a minimum period prescribed by regulation; (e)  the duration of the licence is only for the period of time determined by the Federal Court to be necessary to address the public health problem concerned; (f)  the licence does not give the licensee, or a person authorised by the licensee, the exclusive right to exploit the patented pharmaceutical invention; (g)  the licence is to be assignable only in connection with an enterprise or goodwill in connection with which the licence is used; (h)  the licensee must give the Commissioner the information prescribed by regulation in relation to the licence in accordance with the regulations. Australian continental shelf means the continental shelf adjacent to the coast of Australia (including the coast of any island forming part of a State or Territory). (4)  An application under subsection (1) in respect of an innovation patent cannot be made unless the patent has been certified. Certain amendments of complete specification are not allowable after relevant time. (b)  the time for doing that act or those acts is extended; the application or patent must be treated as having been restored. (7)  A reference in subsection (3) to the state of mind of a person includes a reference to: (a)  the knowledge, intention, opinion, belief or purpose of the person; and. (1A)  A condition in a contract relating to the sale or lease of, or a licence to exploit, an invention the subject of an innovation patent is void if the effect of the condition would be to: (a)  prohibit the buyer, lessee or licensee from applying for examination of the patent; or. (1)  Subject to subsection (1A), the Minister or any other person may apply to a prescribed court for an order revoking a patent. (b)  where the invention is a method or process—use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use. There is no co-existing state legislation. (2G)  The Director‑General of IP Australia may appoint an APS employee to be his or her deputy for the purpose of attendance at one or more specified meetings of the Board. (1)  Where a person, by means of circulars, advertisements or otherwise, threatens a person with infringement proceedings, or other similar proceedings, a person aggrieved may apply to a prescribed court, or to another court having jurisdiction to hear and determine the application, for: (a)  a declaration that the threats are unjustifiable; and, (b)  an injunction against the continuance of the threats; and. Application to make or amend a determination. (1)  A Register of Patent Attorneys is to be kept by the Designated Manager. (4)  The appointment may be made only with the consent of the other registered patent attorney. (1)  Where the grant of a standard patent is opposed, the Commissioner must decide the case in accordance with the regulations. (b)  if the claim of the specification that was infringed is a claim mentioned under subsection 114(1). 8, 2015 and Act No. (b)  that the patentee and another person or persons are eligible persons in relation to an invention so far as claimed in any claim of the first patent (the original claim); the court, in addition to any other order it may make in the proceedings, may, by order, declare that the persons who it is satisfied are eligible persons are eligible persons in relation to that invention so far as so claimed. (2)  Without limiting subsection (1), different fees may be prescribed in respect of the doing of an act according to the time when the act is done. (5)  The Commissioner may require a person to produce a document or article under paragraph (1)(c) whether the person is in or out of the patent area. (6)  Subsection 36(2) of the Acts Interpretation Act 1901 does not apply in relation to the act mentioned in subsection (1) of this section. (d)  if the application is a relevant international application—a direction that the application should not be treated as an international application. Patentable inventions for the purposes of a standard patent. Prohibition of publication of information about inventions. (4)  If the Commissioner is satisfied, on the balance of probabilities, that the amendments set out in a statement (or an amended statement) are allowable and would, if made, remove the grounds on which the patent is invalid, the Commissioner must allow the amendments. 56A Publication and inspection of PCT applications, 57 Effect of publication of complete specification, 59 Opposition to grant of standard patent, 62 Grant and publication of innovation patent, 72 Notification and public inspection of application, 76A Notification of extension to the Secretary, Health and Family Services, 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, 79B Divisional applications prior to grant of patent, 79C Divisional applications for innovation patents may be made after grant of an innovation patent, 80 Chapter does not apply to innovation patents, 82 Revocation of patent and grant of patent of addition instead, 85 Revocation of patent for main invention, 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, 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, 101A Examination may be requested or Commissioner may decide to examine, 101C How and when examination to be carried out, 101EA Revocation of certificate of examination, 101F Revocation of innovation patents following examination under section 101B, Part 2—Re-examination of innovation patents, 101G Re-examination of complete specifications of innovation patents, 101J Revocation of innovation patent following re-examination, 101K Relevant proceedings and re-examination, 101L Copies of report to be given to court, 101N Hearing and decision by the Commissioner, 103 Consent of mortgagee or exclusive licensee needed, 104 Amendments by applicants and patentees, 106 Amendments directed by Commissioner: patents, 107 Amendments directed by Commissioner: applications for standard patents, 110 Advertisement of amendment of complete specification, 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. (2)  Where a patent of addition becomes an independent patent under this section, its term cannot be more than the unexpired part of the term of the patent for the main invention. (2)  Where the Commissioner gives a direction: (a)  the person is to be taken to be the applicant, or a joint applicant, as the case requires; and. international filing date, in relation to an international application, means the date given to the international application as its international filing date under the PCT. (1)  A person may, within the prescribed period after a complete specification filed in relation to an application for a standard patent becomes open to public inspection, notify the Commissioner, in accordance with the regulations, that the person asserts, for reasons stated in the notice, that the invention concerned is not a patentable invention because it does not comply with paragraph 18(1)(b). Balancing both the practical nature of IP Australia processes and in-depth analysis of statute and case law, Patent Law in Australia Third Edition navigates every aspect of the patenting process, with detailed commentary on the law pertaining to each stage. (2)  If an application under section 128 for relief relates to threats made in respect of an innovation patent that has not been certified or an application for an innovation patent, the court may grant the applicant the relief applied for. (b)  in the case of an application under subsection (2)—to the defaulting patentee. (b)  circumstances beyond the control of the person concerned; a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act. (6)  An applicant is not entitled to ask that any action be taken, or that he or she be allowed to take any action, under this Act in relation to a PCT application unless the following requirements of subsection (5) have been met (if applicable): (a)  a translation of the application into English has been filed; (b)  the prescribed documents have been filed; Note:          A failure to comply with subsection (5) may also result in the PCT application lapsing: see paragraph 142(2)(f). 115 Restriction on recovery of damages etc. 184........................ Other unauthorised disclosures of information............... 185........................ Commissioner etc. Opposition to innovation patent if patentee not entitled to grant of patent but another person is. 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. 28  Notice of matters affecting validity of innovation patents, Person may give notice of invalidity of an innovation patent. (2)  The matters in this subsection are whether: (a)  the specification complies with subsections 40(2) to (4); and, (b)  the invention, so far as claimed, complies with paragraphs 18(1A)(a), (b) and (c); and, (c)  the invention is a patentable invention under subsections 18(2) and (3); and, (d)  the use of the invention would not be contrary to law; and, (e)  the patent does not claim as an invention a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; and, (f)  the patent does not claim as an invention a process producing such a substance by mere admixture; and, (g)  the patent does not contain a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim; and, (h)  the patent does not claim an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, where the relevant claim or claims in respect of each patent have the same priority date or dates; and. 101  Revocation of patent—re‑examination after grant. (5)  Where, under this Act or any other Act, the exercise of a power or function by the Commissioner, or the operation of a provision of this Act or any other Act, is dependent on the opinion, belief or state of mind of the Commissioner in relation to a matter, that power or function may be exercised by a Deputy Commissioner, and that provision may operate, as the case may be, on the opinion, belief or state of mind of the Deputy Commissioner in relation to that matter. (b)  the patent has not ceased under section 143A. (3)  This section does not apply to an amendment for the purposes of: (a)  correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification; or. (c)  whether or not the patentee has made any assertion to the effect that the doing of the act has or would infringe the claim. means a declaration mentioned in subsection 125(1). (b)  in relation to an innovation patent—an examination of the complete specification relating to the patent under section 101B. (g)  meets any other requirements prescribed by the regulations. non‑infringement declaration means a declaration mentioned in subsection 125(1). (2)  The Commissioner must make arrangements for selling copies of the Official Journal, and of complete specifications which are open to public inspection. Patent entitlement remains an important issue under Australian law, patents, person may oppose... Is managed by a person ordinarily resident in a prescribed foreign country agreed or determined Act. Patented product, method or process in the legislation Register ( www.legislation.gov.au ) of Monopolies means the Act... Cease under Court order 222. means a product of such a product public inspection do not infringe copyright patent the! For orders law regime to decisions made in New Zealand Commissioner of patents a day to heard... 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