This country-specific Q&A provides an overview of Patent Litigation laws and regulations applicable in Australia. is short for patented pharmaceutical invention. (1)  A person may notify the Commissioner that the person asserts, for reasons stated in the notice, that an innovation patent is invalid because the invention concerned does not comply with paragraph 18(1A)(b). (4)  Subsection (3) does not apply if the invention is a microbiological process or a product of such a process. applicant includes a person entitled to make a request under section 113 in relation to the relevant patent application. (a)  a divisional application provided for in section 79B is made for an innovation patent; and. (a)  if subsection (2A) applies to the claim—the date determined under the regulations; or. (b)  has, where appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection and the patentee has failed to do so. means a request for the grant of a patent to a nominated person. (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. (3)  A patent of addition must not be granted before the patent for the main invention is granted. [Notes:   (1)   For the meaning of document see section 2B of the Acts Interpretation Act 1901. A complete specification relating to a patent application must not be amended, except under section 105, if: (a)  an appeal against a decision or direction of the Commissioner has been made to the Federal Court in relation to the specification; and. under 1952 Act, 238 The Commissioner and Deputy Commissioner, 239 The Register of Patents and Register of Patent Attorneys. The legal requirements for obtaining a … Australia: Patent Litigation. (12)  It is immaterial whether a matter mentioned in: (a)  paragraph (4)(b), (c), (d), (e), (f) or (g); or. (1A)  A specification is taken to comply with subsection 40(1), so far as it requires a description of a micro‑organism, if: (a)  the micro‑organism is deposited with a prescribed depository institution in accordance with such provisions of the Budapest Treaty as are applicable; and. Note:          For the purposes of paragraph (e), the later application need not have been made in the same Convention country as the earlier application. (a)  an error or omission by the person concerned or by his or her agent or attorney; or. (b)  the New Zealand Commissioner of Patents is absent from the meeting; (2M)  A deputy of the New Zealand Commissioner of Patents is not entitled to any remuneration or allowances for attending a meeting of the Board (other than remuneration or allowances payable to the deputy in his or her capacity as a New Zealand patents official). (b)  with the authority of the Prime Minister of New Zealand; is responsible for the administration of a law of New Zealand relating to the regulation of patent attorneys. (4)  The Commissioner must advertise in the Official Journal: (a)  an application made for an extension of time for more than 3 months; or. Despite section 15B of the Crimes Act 1914, a prosecution for an offence against subsection 201(1), (2), (3), (4) or (5), or section 202, 202A or 203, may be started at any time within 5 years after the offence was committed. New Zealand Commissioner of Patents means the person who holds or performs the duties of the office or position of Commissioner of Patents under or in accordance with a law of New Zealand. (b)  to amend a determination made under that paragraph. (2)  A patent may be granted to a person whether or not he or she is an Australian citizen. (1A)  If an appeal is made to the Federal Court against a decision or direction of the Commissioner in relation to a patent application, the Federal Court may, on the application of the applicant for the patent, by order direct the amendment of the patent request or the complete specification in the manner specified in the order. (3)  Chapter 9 of this Act does not apply in relation to a patent mentioned in subsection (1). 119C  Infringement exemptions: acts for experimental purposes. (b)  that the servant or agent had the state of mind. (2)  If the grant of an extension of the term of a standard patent is opposed, the Commissioner must decide the case in accordance with the regulations. (3)  In deciding how the defendant is to adduce evidence for the purposes of subsection (2), the court is to take into account the defendant’s legitimate interests in having business and manufacturing secrets protected. (1A)  For the purposes of subsection (1), it is immaterial whether a relevant act took place, or is to take place, in New Zealand. means a product in respect of which a patent has been granted and is in force. (2B)  A reference in subsection (2) or (2A) to a registered patent attorney includes a reference to an individual authorised to do patents work under a law of another country or region, to the extent to which the individual is authorised to provide intellectual property advice of the kind provided. (b)  in relation to an invention that is the subject of a patent application and is so acquired—the nominated person in relation to the application. (2)  If an application for an extension of the term of a standard patent is withdrawn, the Commissioner must publish in the Official Journal a notice stating that the application has been withdrawn. 220  Costs of attendance of patent attorney. after priority date, 24 Validity not affected by making information available in certain circumstances, 26 Validity not affected in certain cases involving amendments, 27 Notice of matters affecting validity of standard patents, 28 Notice of matters affecting validity of innovation patents, 29A Applications for patents—special rules for PCT applications, 29B Applications for patents—special rules for Convention applications, 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, 42 Micro-organisms ceasing to be reasonably available, 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, 52 Formalities check and acceptance of innovation patents. The English legal system became the foundation for patent law in countries with a common law heritage, including the United States, New Zealand and Australia. (f)  if the application is a PCT application—prescribed circumstances apply to the application. (4)  A person (the disposer) may dispose of the whole of the disposer’s entitlement under subsection (1) to do an act without infringing a patent to another person (the recipient). (c)  the specification is not open to public inspection; the Commissioner must publish a notice in the Official Journal that the specification is open to public inspection, unless the application has lapsed or been refused or withdrawn. , in relation to a patent, means court proceedings: means such provisions of the Budapest Treaty, and such provisions made by or under regulations made under section 228, as are applicable. (1)  The rights of a patentee of a pharmaceutical patent are not infringed by a person exploiting an invention claimed in the patent if the exploitation is solely for: (a)  purposes connected with obtaining the inclusion in the Australian Register of Therapeutic Goods of goods that: (i)  are intended for therapeutic use; and, (ii)  are not medical devices, or therapeutic devices, as defined in the Therapeutic Goods Act 1989; or. Certificate of validity......................................................... 14, 20.......................... Validity of patent not guaranteed...................................... 15, 21.......................... Validity not implied by making or refusal of non‑infringement declaration             15, Division 2—Matters not affecting validity                                                      16, 22A....................... Validity not affected by who patent is granted to.............. 16, 22.......................... Invalidity in relation to one claim not to affect validity in relation to other claims    16, 23.......................... Validity not affected by publication etc. 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. (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. (4)  The Commissioner must notify the patentee that the innovation patent has been granted. (2)  For the purposes of subsection (1), the use of a patented pharmaceutical invention authorised by the PPI compulsory licence is: (a)  while it is in force—the use authorised by the licence as granted and as amended (from time to time) under section 136G; or. means the continental shelf adjacent to the coast of Australia (including the coast of any island forming part of a State or Territory). This Chapter also provides generally for the surrender of patents, and for court orders revoking patents. New Zealand Patents Minister means the Minister of New Zealand who: (a)  under the authority of a warrant; or. (2)  If the Commissioner revokes the patent: (a)  the Commissioner must notify the patentee and the person who requested the examination (if that person is not the patentee) of the revocation; and. (1)  Where there are 2 or more patentees, the Commissioner may, on the application of any of them, give such directions in accordance with the application as the Commissioner thinks fit, being directions about: (a)  a dealing with the patent or an interest in it; or, (b)  the grant of licences under the patent; or. There is no co-existing state legislation. Any uncommenced amendments affecting the law are accessible on the Legislation Register (www.legislation.gov.au). An appeal lies to the Federal Court against a decision of the Commissioner under this Division (other than a decision under section 50A). Application of administrative law regime to decisions made in New Zealand. (c)  Australian patent attorney practice; (d)  New Zealand patent attorney practice; (e)  Australian trade mark attorney practice; (f)  the regulation of persons engaged in a prescribed occupation; (2E)  A member of the Board holds office on a part‑time basis. (3)  The applicant for an order under subsection (1) or (1A) must give notice of an application for an order to the Commissioner, who is entitled to appear and be heard, and must appear if the court directs. (4)  The Designated Manager must register as a patent attorney an individual who: (b)  holds such qualifications as are specified in, or ascertained in accordance with, the regulations; and, (c)  has been employed as prescribed for not less than the prescribed period; and, (d)  is of good fame, integrity and character; and, (e)  has not been convicted of a prescribed offence during the previous 5 years; and, (f)  is not under sentence of imprisonment for a prescribed offence; and. (3)  This section does not affect the rights or obligations of a trustee or of the legal representative of a deceased person, or rights or obligations arising out of either of those relationships. 138  Revocation of patents in other circumstances. (1)  In any proceedings in a court in which the validity of a patent, or of a claim, is disputed, the court may certify that the validity of a specified claim was questioned. New Zealand patents official means a person: (a)  who is an employee in any part of the State services of New Zealand; and. (b)  by using the patented invention in the construction or working of a foreign aircraft or foreign land vehicle, or in the accessories of the aircraft or vehicle, if the aircraft or vehicle comes into the patent area only temporarily or accidentally. (1)  A court may refuse to award damages, or to make an order for an account of profits, in respect of an infringement of a patent if the defendant satisfies the court that, at the date of the infringement, the defendant was not aware, and had no reason to believe, that a patent for the invention existed. 215  Death of applicant or nominated person. (5)  For the purposes of applying this section to a PCT application, references to the complete specification becoming open to public inspection are references to the PCT application becoming open to public inspection in accordance with regulations made for the purposes of section 56A. Division 2—Patented pharmaceutical invention compulsory licences, 136D  PPI compulsory licences—applications for orders. means an application for protection in respect of an invention, being an application made in a Convention country. Australian patents are administered by IP Australia. 227AB  Application of administrative law regime to decisions made in New Zealand. (2)  A delegate must, if so required by the instrument of delegation, exercise or perform a delegated power or function under the direction or supervision of the Commissioner or an employee specified in the instrument. Australian Patent Law. The amendment history in endnote 4 provides information about amendments at the provision (generally section or equivalent) level. (1)  If, in any proceedings in a court relating to a patent (the first patent), the court is satisfied either: (a)  that one or more persons are eligible persons in relation to an invention so far as claimed in any claim of the patent (the original claim) but that the patentee is not an eligible person; or. (4)  A member of the Board is to be paid such remuneration as is determined by the Remuneration Tribunal. (5)  A reference in this section to an offence under this Act includes a reference to an offence created by: (a)  section 6 of the Crimes Act 1914 that relates to this Act or the regulations; or. (b)  in the prescribed circumstances mentioned in paragraph 24(1)(a). (3)  The Commissioner may, in deciding whether to revoke the patent, take into account any ground on which the grant of an innovation patent may be opposed, whether relied upon by the opponent or not. (1)  An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together: (a)  the complete specification as filed; (b)  other prescribed documents (if any). (3)  The Commissioner must not revoke a patent under this section while relevant proceedings in relation to that patent are pending. (2)  This section does not apply in relation to a pharmaceutical patent within the meaning of subsection 119A(3). (d)  an error or defect in an entry in the Register; may apply to a prescribed court for an order to rectify the Register. (c)  whether the invention is not a patentable invention under subsection 18(2). Legislation history and amendment history—Endnotes 3 and 4. (2)  Where a complete application has been made for a standard patent, the Commissioner may, on one or more of the prescribed grounds and in accordance with the regulations, direct the applicant to ask, within the prescribed period, for an examination of the patent request and complete specification relating to the application. The Register of Patents and Register of Patent Attorneys. (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). (b)  the relevant claim or claims in each of the complete specifications have the same priority date or dates; a standard patent cannot be granted on the application. (1)  The Commissioner may refuse to grant a patent if the Commissioner: (a)  makes an adverse report on a re‑examination of the relevant specification under subsection 97(1); and. (b)  the Designated Manager is not a director of the incorporated patent attorney only because the Designated Manager appointed the appointed attorney. (1)  If a complete application for a standard patent has been made, the Commissioner may conduct a preliminary search and opinion in relation to the patent request and specification relating to the application. (ha)  setting out the formalities checking process for innovation patents including, in particular, the following matters: (i)  specifying the formalities requirements (including compliance with the requirements of subsections 18(2) and (3)) that must be met in respect of an application for an innovation patent; and, (ii)  empowering the Commissioner to direct an applicant for an innovation patent to do such things as are necessary to ensure that the application is in accordance with the requirements of the regulations relating to the preparation of documents for filing; and, (iii)  providing for the lapsing of the application if such a direction is not complied with within a time specified in the regulations; and, (iv)  providing for the restoration of an application that has so lapsed; and. For more information about any editorial changes made in this compilation, see the endnotes. 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. has the meaning given by subsection 201A(2). 134  Revocation of patent after grant of compulsory licence under section 133. (2)  Particulars of innovation patents in force, and other prescribed particulars relating to innovation patents (if any), must be registered in that part of the Register dealing with innovation patents. (c)  the Commissioner decides, under section 60, that: (i)  one or more opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim); and, (ii)  the nominated person in respect of the application is not an eligible person in relation to the invention; and, (iii)  there is no other reason that a patent should not be granted; and. (b)  the individual is not a registered patent attorney. (9)  Subsections (5) and (6) do not apply in relation to anything done by a member of a related company group for another member of the group. (2C)  Intellectual property advice means advice in relation to: (3)  Nothing in this section authorises a registered patent attorney to prepare a document to be issued from or filed in a court or to transact business, or conduct proceedings, in a court. [Note: see also section 5 for requirements relating to associated applications. (6)  An office copy of a declaration by a prescribed court must be served on the Commissioner by the Registrar or other appropriate officer of the court. (3)  Where, at any time after a patent is granted, the Commissioner is satisfied, on the balance of probabilities, that the patentee had died (or, in the case of a body corporate, had ceased to exist) before the patent was granted, the Commissioner may amend the Register by substituting for the name of the patentee the name of the person to whom the patent should have been granted. A PPI order must not be made that is inconsistent with a treaty between the Commonwealth and a foreign country. (2)  Without limiting subsection (1), the regulations may make provision for and in relation to: (a)  notices regarding the opening of complete specifications relating to PCT applications to public inspection; and. A unique casebook methodology and approach to the selection of cases which covers the basics, while keeping current policy challenges and international perspectives at the fore. 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