Patents Act 1990 (Cth)

Patents Act 1990

No. 83, 1990

Compilation No. 52

Compilation date: 14 October 2024

Includes amendments: Act No. 39, 2024

About this compilation

This compilation

This is a compilation of the Patents Act 1990 that shows the text of the law as amended and in force on 14 October 2024 (the compilation date).

The notes at the end of this compilation (the endnotes) include information about amending laws and the amendment history of provisions of the compiled law.

Uncommenced amendments

The effect of uncommenced amendments is not shown in the text of the compiled law. Any uncommenced amendments affecting the law are accessible on the Register (www.legislation.gov.au). The details of amendments made up to, but not commenced at, the compilation date are underlined in the endnotes. For more information on any uncommenced amendments, see the Register for the compiled law.

Application, saving and transitional provisions for provisions and amendments

If the operation of a provision or amendment of the compiled law is affected by an application, saving or transitional provision that is not included in this compilation, details are included in the endnotes.

Editorial changes

For more information about any editorial changes made in this compilation, see the endnotes.

Modifications

If the compiled law is modified by another law, the compiled law operates as modified but the modification does not amend the text of the law. Accordingly, this compilation does not show the text of the compiled law as modified. For more information on any modifications, see the Register for the compiled law.

Self‑repealing provisions

If a provision of the compiled law has been repealed in accordance with a provision of the law, details are included in the endnotes.

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 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 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 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 Division 2—Specifications 40 Specifications 41 Specifications: micro‑organisms 42 Micro‑organisms ceasing to be reasonably available Division 3—Priority dates 43 Priority dates 43AA Disclosure in basic 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 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 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 61 Grant of standard patent 62 Grant and publication of innovation patent 63 Joint patentees 64 Grant: multiple applications 65 Date of patent 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 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 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 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 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 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 Part 3—Opposition to innovation patents 101M Opposition to innovation patent 101N Hearing and decision by the Commissioner 101P Relevant proceedings and opposition 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 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 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 Chapter 11—Infringement 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 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 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 Chapter 12—Compulsory licences and revocation of patents Part 1—Introduction 132A Simplified outline of this Chapter 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 133 136 Orders to be consistent with international agreements 136A Dealing with allegation of contravention of application law Part 3—Patented pharmaceutical invention compulsory licences (for manufacture and export to eligible importing countries) Division 1—Introduction 136B Simplified outline of this Part 136C Relationship between Parts 2 and 3 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 Division 3—Remuneration 136J PPI compulsory licences—remuneration 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 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 Part 5—Other matters 138A Simplified outline of this Part 139 Parties to proceedings 140 Commissioner to be given copies of orders 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 163 Crown exploitation of inventions—general rule 163A Crown exploitation of inventions—emergencies 164 Crown exploitation of inventions—information to be given by relevant authority 165 Crown exploitation of inventions—terms (including remuneration) 165A Crown exploitation of inventions—court order to cease 166 Certain agreement and licences inoperative unless approved by relevant Minister 167 Sale of products 168 Supply of products by Commonwealth to foreign countries 170 Sale of forfeited articles 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 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 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 198 Registration of patent attorneys 199 Deregistration 200 Privileges 200A Designated Manager 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 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 Endnote 1—About the endnotes Endnote 2—Abbreviation key Endnote 3—Legislation history Endnote 4—Amendment history