Patents Amendment (Innovation Patents) Act 2000 (Cth)

Patents Amendment (Innovation Patents) Act 2000 Act No. 140 of 2000 as amended This compilation was prepared on 4 July 2003 [This Act was amended by Act No. 99 of 2001 and Act No. 48 of 2003] Amendments from Act No. 99 of 2001 [Schedule 2 (item 1) amended Schedule 2 (subitem 2(2)) Schedule 2 (item 2) amended Schedule 2 (item 7) Schedule 2 commenced immediately after 24 May 2001] Amendments from Act No. 48 of 2003 [Schedule 2 (item 8) amended Schedule 1 (item 3) Schedule 2 (item 8) commenced immediately after 24 May 2001] Prepared by the Office of Legislative Drafting, Attorney‑General's Department, Canberra Contents 1 Short title [see Note 1]........................... 2 Commencement [see Note 1]....................... 3 Schedule(s).................................. Schedule 1—Amendment of the Patents Act 1990 4 What are the typical steps in getting and maintaining a standard patent? 28 Notice of matters affecting validity of innovation patents....... 33 Applications by opponents etc....................... 34 Applications by eligible persons arising out of Court proceedings.. 36 Other applications by eligible persons.................. Part 2—Examination of standard patent requests and specifications Division 1—Acceptance of standard patents 50 Application or grant may be refused in certain cases.......... 51 Appeal..................................... Division 2—Acceptance of innovation patents 52 Formalities check and acceptance of innovation patents........ Chapter 5—Opposition to grant of standard patent 62 Grant and publication of innovation 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 80 Chapter does not apply to innovation patents.............. Chapter 9—Re‑examination of standard patents 96A Chapter does not apply to innovation patents.............. 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.............. 101D Commissioner may get information on searches............ 101E 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................... 114A Objection cannot be taken to certain amended claims......... 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 141 Withdrawal of applications......................... 143A Ceasing of innovation patents....................... 187 Registration of particulars of patents etc.................. Schedule 2—Application, saving and transitional provisions Part 1—Application, saving and transitional provisions relating to petty patents Part 2—Other application and saving provisions Schedule 3—Consequential amendment of other Acts Income Tax Assessment Act 1997 Notes An Act to amend the Patents Act 1990 by repealing the petty patent scheme and providing for innovation patents and other minor amendments, and for related purposes 1 Short title [see Note 1] This Act may be cited as the Patents Amendment (Innovation Patents) Act 2000. 2 Commencement [see Note 1] (1) Subject to subsection (2), this Act commences on a day to be fixed by Proclamation. (2) If this Act does not commence under subsection (1) within the period of 6 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period. 3 Schedule(s) Subject to section 2, each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms. Schedule 1—Amendment of the Patents Act 1990 1 Section 3 (index of expressions) Insert the following entries in their appropriate alphabetical positions, determined on a letter by letter basis: certified formalities check innovation patent 2 Section 3 (index of expressions) Omit: divisional application petty patent 3 Section 4 Repeal the section (other than Tables 1 and 2), substitute: 4 What are the typical steps in getting and maintaining a standard patent? The following diagram shows most of the typical steps involved in getting and maintaining a standard patent. The diagram is intended for use only as a general introductory illustration and is not intended to have any other effect. If there is an inconsistency between any matter contained in the diagram and a provision of this Act or the regulations, the provision prevails. 4 Section 4 (Table 2) Repeal the table. 5 At the end of section 7 Add: Innovative step (4) For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention. (5) For the purposes of subsection (4), the information is of the following kinds: (a) prior art information made publicly available in a single document or through doing a single act; (b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information. (6) For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately. Note 1: The following heading to subsection 7(1) is inserted "Novelty". Note 2: The following heading to subsection 7(2) is inserted "Inventive step". 6 Subsection 18(1) Omit "a patentable invention is an invention that", substitute "an invention is a patentable invention for the purposes of a standard patent if the invention". Note: The following heading to subsection 18(1) is inserted "Patentable inventions for the purposes of a standard patent". 7 After subsection 18(1) Insert: Patentable inventions for the purposes of an innovation patent (1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim: (a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and (b) when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an innovative step; and (c) is useful; and (d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in title to the invention. 8 At the end of section 18 Add: Certain inventions not patentable inventions for the purposes of an innovation patent (3) For the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions. (4) Subsection (3) does not apply if the invention is a microbiological process or a product of such a process. 9 Subsections 24(1) and (2) Omit "inventive step", substitute "inventive step or an innovative step". 10 Section 28 Repeal the section, substitute: 28 Notice of matters affecting validity of innovation patents Person may give notice of invalidity of an innovation patent (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). When notice may be given (2) A notice may only be given to the Commissioner under subsection (1) in respect of an innovation patent within the prescribed period after an innovation patent has been granted. How notice must be given (3) Notice must be given in accordance with the regulations. Commissioner must inform patentee of notice given (4) If the Commissioner receives a notice in respect of an innovation patent, the Commissioner must inform the patentee, in writing, of any matter of which the Commissioner is notified and send the patentee a copy of any document accompanying the notice. Commissioner to deal with notice in accordance with regulations (5) The Commissioner must otherwise consider and deal with a notice in accordance with the regulations. 11 Sections 33 and 34 Repeal the sections, substitute: 33 Applications by opponents etc. Opposition to standard patent if a person other than nominated person eligible for grant of patent (1) If: (a) an application has been made for a standard patent; and (b) the grant of the standard patent is opposed under section 59 by one or more persons; and (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 (d) a complete application is made under section 29 by one or more of the eligible persons for a patent in relation to the invention; the Commissioner may grant those eligible persons a patent jointly for the invention, so far as so claimed. Opposition to standard patent if nominated person eligible for grant of patent with other persons (2) If: (a) an application has been made for a standard patent; and (b) the grant of the patent is opposed under section 59 by one or more persons; and (c) the Commissioner decides, under section 60: (i) that both the nominated person and one or more of the 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) that there is no other reason that a patent should not be granted; and (d) a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention; the Commissioner may grant a patent for the invention, so far as so claimed, to those eligible persons jointly. Opposition to innovation patent if patentee not entitled to grant of patent but another person is (3) If: (a) an innovation patent is opposed under section 101M by one or more persons; (b) the Commissioner decides, under section 101N, that the patentee is not entitled to the grant of the patent; and (c) the Commissioner decides that one or more of the opponents are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim); and (d) a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention; the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons. Opposition to innovation patent if patentee entitled to grant of patent with other person (4) If: (a) an innovation patent is opposed under section 101M by one or more persons; and (b) the Commissioner decides that one or more of the opponents and the original patentee are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim); and (c) a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention; the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons jointly. (5) If the Commissioner grants a patent under subsection (1), (2), (3) or (4), the claims of that patent granted have the same priority date as that of the original claim referred to in the respective subsection. 34 Applications by eligible persons arising out of Court proceedings (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 (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) Subject to subsection (3), if a complete application is made under section 29 by one or more declared persons, the Commissioner may grant a patent for the invention, so far as claimed in the original claim, to those declared persons jointly. (3) If the Commissioner grants a patent under subsection (2), the claims of that patent have the same priority date as that of the original claim. 12 Subsection 35(1) Repeal the subsection, substitute: (1) If the Commissioner: (a) revokes a patent under section 137; and (b) is satisfied: (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 (ii) on application made by one or more persons in accordance with the regulations, that the persons and the former patentee are eligible persons in relation to the invention concerned, so far as is claimed in any claim of the revoked patent (the original claim); the Commissioner may declare in writing that the eligible persons are such eligible persons. (1A) If a complete application is made under section 29 by one or more of the declared persons, the Commissioner may grant a patent for the invention, so far as so claimed, to those declared persons jointly. (1B) If the Commissioner grants a patent under subsection (1A), the claims of that patent have the same priority date as that of the original claim as referred to in subsection (1). 13 Section 36 Repeal the section, substitute: 36 Other applications by eligible persons (1) If: (a) a patent application has been made and, in the case of a complete application, the patent request and complete specification have not been accepted; and (b) an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and (c) the Commissioner is satisfied, in relation to an invention disclosed in the specification filed in relation to the application for the patent: (i) that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or (ii) that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons; the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed. (2) The Commissioner may make a declaration under subsection (1) whether or not the patent application lapses or is withdrawn. (3) The Commissioner must not make a declaration under subsection (1) without first giving the nominated person a reasonable opportunity to be heard. (4) If a complete application is made under section 29 by one or more of the declared persons, the priority date of the claims of a patent for the invention granted to the person, or persons, as the case may be, must be determined under the regulations. (5) An appeal lies to the Federal Court against a decision by the Commissioner under this section. 14 Section 39 Repeal the section. 15 Paragraph 40(2)(c) Repeal the paragraph, substitute: (c) where it relates to an application for an innovation patent—end with at least one and no more than 5 claims. 16 At the end of section 43 Add: Priority date if claim arises from further application for an innovation patent provided for in section 79C (5) If: (a) an innovation patent has been granted following an application provided for in section 79C; and (b) a request for the examination of the patent has been made within the period prescribed in the regulations; the priority date of each claim in the specification is the date determined under the regulations. (6) If: (a) an innovation patent has been granted following an application provided for in section 79C; and (b) a request for the examination of the patent has not been made within the period prescribed in the regulations; the priority date of each claim in the specification must not be a date earlier than the date of filing of the application provided for in section 79C. 17 Part 2 of Chapter 3 (heading) Repeal the heading, substitute: Part 2—Examination of standard patent requests and specifications 18 Subsection 45(1) Repeal the subsection, substitute: (1) Where an applicant asks for an examination of a patent request and complete specification relating to an application for a standard patent, the Commissioner must examine the request and specification and report on: (a) whether the specification complies with section 40; and (b) whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criterion mentioned in paragraph 18(1)(a); and (c) whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an inventive step; and (d) such other matters (if any) as are prescribed. (1A) For the purposes of paragraph (1)(c), the prior art base is to be taken not to include information made publicly available only through the doing of an act anywhere in the patent area. 19 Subsection 48(1) Repeal the subsection, substitute: (1) When an applicant asks for a modified examination of a patent request and complete specification relating to an application for a standard patent, the Commissioner must examine the request and specification and report on: (a) whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criterion mentioned in paragraph 18(1)(a); and (b) whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an inventive step; and (c) such other matters (if any) as are prescribed. (1A) For the purposes of paragraph (1)(c), the prior art base is to be taken not to include information made publicly available only through the doing of an act anywhere in the patent area. 20 After Part 3 of Chapter 3 (heading) Insert: Division 1—Acceptance of standard patents 21 Subsection 49(1) Omit "section 51", substitute "section 50". 22 Sections 50, 51 and 52 Repeal the sections, substitute: 50 Application or grant may be refused in certain cases (1) The Commissioner may refuse to accept a request and specification relating to a standard patent, or to grant a standard patent: (a) for an invention the use of which would be contrary to law; or (b) on the ground that the specification claims as an invention: (i) 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; or (ii) a process producing such a substance by mere admixture. (2) The Commissioner may refuse to accept a specification relating to a standard patent containing a claim that includes the name of a person as the name, or part of the name, of the invention so far as claimed in that claim. 51 Appeal An appeal lies to the Federal Court against a decision of the Commissioner under this Division. Division 2—Acceptance of innovation patents 52 Formalities check and acceptance of innovation patents (1) If a complete application for an innovation patent is made, the Commissioner must undertake a formalities check in respect of the application. (2) If satisfied that the application passes the formalities check, the Commissioner must accept the patent request and complete specification. 23 Subsection 54(1) Omit "for a patent", substitute "for a standard patent". 24 Paragraph 54(4)(a) After "divisional application", insert "for a standard patent provided for in section 79B". 25 Subsection 54(5) After "divisional application", insert "for a standard patent provided for in section 79B". 26 Paragraph 54(6)(a) After "divisional application", insert "for a standard patent provided for in section 79B". 26A Subsection 55(1) After "under section 54", insert "or under subsection 62(3)". 27 Subsection 55(2) Omit "a petty", substitute "an innovation". 28 Subsection 57(2) Repeal the subsection. 29 Subsection 57(3) Omit "Neither subsection (1) nor (2) gives", substitute "Subsection (1) does not give". 30 Subsection 57(4) Repeal the subsection, substitute: (4) It is a defence to proceedings under subsection (1) in respect of an act done: (a) after the complete specification became open to public inspection; and (b) before the patent request was accepted: if the defendant proves that a patent could not validly have been granted to the applicant in respect of the claims (as framed when the act was done) that are alleged to have been infringed by the doing of the act. 31 Chapter 5 (heading) Repeal the heading, substitute: Chapter 5—Opposition to grant of standard patent 32 Paragraph 59(a) Repeal the paragraph, substitute: (a) that the nominated person is either: (i) not entitled to a grant of a patent for the invention; or (ii) entitled to a grant of a patent for the invention but only in conjunction with some other person; 33 At the end of section 59 Add: ; (d) that the invention is not a patentable invention under subsection 18(2). 34 Section 62 Repeal the section, substitute: 62 Grant and publication of innovation patent (1) If: (a) the Commissioner accepts a patent request and complete specification filed in respect of an application for an innovation patent; and (b) a prohibition order is not in force under subsection 152(3) or 173(1) in relation to the application; the Commissioner must grant the innovation patent by sealing an innovation patent in the approved form. (2) If an innovation patent is granted, the Commissioner must publish a notice in the Official Journal stating that: (a) the innovation patent has been granted; and (b) the patent request and complete specification are open to public inspection. (3) If: (a) a divisional application provided for in section 79B is made for an innovation patent; and (b) a notice is published in the Official Journal that the complete specification filed in respect of the divisional application is open to public inspection; the Commissioner must also publish in the Official Journal a notice that the complete specification filed in respect of the original application on which the divisional application is based is open to public inspection. 35 Paragraph 64(2)(a) Omit "a patent application", substitute "an application for a standard patent". 36 Subsection 64(2) Omit "patent cannot", substitute "standard patent cannot". 37 At the end of section 66 Add: (2) If: (a) the Commissioner is satisfied that particulars on a patent are incorrect because of an error or omission by the Commissioner; and (b) the patent is returned to the Commissioner; the Commissioner may seal a duplicate of the patent. 38 Section 68 Repeal the section, substitute: 68 Term of innovation patent The term of an innovation patent is 8 years from the date of the patent. 39 Part 3 of Chapter 6 (heading) Repeal the heading, substitute: Part 3—Extension of term of standard patents relating to pharmaceutical substances 40 Division 1 of Part 3 of Chapter 6 Repeal the Division. 41 Division 2 of Part 3 of Chapter 6 (heading) Repeal the heading. 42 After Chapter 6 Insert: Chapter 6A—Divisional applications 79B Divisional applications prior to grant of patent (1) If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention: (a) disclosed in the specification filed in respect of the first‑mentioned application; and (b) where the first‑mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal—falling within the scope of the claims of the accepted specification. (1A) The reference to a complete patent application first‑mentioned in subsection (1) does not include a reference to a divisional application for an innovation patent provided for in section 79C. (2) In this section: applicant has the same meaning as in section 38. 79C Divisional applications for innovation patents may be made after grant of an innovation patent Applications may be made (1) A patentee of an innovation patent (the first patent) may make a complete application for another innovation patent for a further invention disclosed in the first patent if the invention was disclosed in the complete specification filed in respect of the application on which the first patent was sealed. When further applications must be made (2) The patentee may only make the further complete application during the period that commences on the day an examination of the first patent begins and ends at the end of a period prescribed in the regulations. When does an examination begin? (3) For the purposes of subsection (2), an examination of the patent begins: (a) if the examination has been requested under paragraph 101A(b)—on the day the request was made; or (b) if the Commissioner decided to examine the patent under paragraph 101A(a)—on the day the Commissioner made that decision. 43 Section 80 Repeal the section, substitute: 80 Chapter does not apply to innovation patents This Chapter does not apply in relation to innovation patents. 44 Subsection 88(2) Repeal the subsection. 45 Subsection 89(1) After "applications", insert "for standard patents". 46 Chapter 9 (heading) Repeal the heading, substitute: Chapter 9—Re‑examination of standard patents 47 Before section 97 in Chapter 9 Insert: 96A Chapter does not apply to innovation patents This Chapter does not apply in relation to innovation patents. 48 Subsection 98(1) Omit "immediately". 49 Subsection 98(2) After "available", insert "only". 50 At the end of subsection 99(2) Add "or 107". 51 After Chapter 9 Insert: 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 After the grant of an innovation patent, the Commissioner: (a) may, if the Commissioner decides to do so; and (b) must, if asked to do so, in writing, by the patentee or any other person; examine the complete specification relating to an innovation patent. 101B Examination of an innovation patent What the Commissioner must do in examining a patent (1) If the Commissioner examines an innovation patent under section 101A, the Commissioner must: (a) examine the complete specification relating to the patent to determine if the patent is invalid and should be revoked because a ground set out in subsection (2), (4), (5), (6) or (7) is made out; and (b) report on the grounds set out in those subsections. These are the only grounds for revocation under this section. Grounds for revocation relating to validity (2) The grounds for revocation under subsection (1) include the following: (a) that the specification does not comply with section 40; (b) that the invention, so far as claimed, does not comply with paragraph 18(1A)(a) or (b); (c) that the invention is not a patentable invention under subsection 18(2) or (3); (d) that the use of the invention would be contrary to law. (3) For the purposes of working out whether the invention does not comply with paragraph 18A(1)(b), the prior art base (referred to in that paragraph) is to be taken not to include information made publicly available only through the doing of an act anywhere in the patent area. Revocation on ground that invention claims a substance capable of being used as food or medicine etc. (4) A further ground for revocation is that the patent claims as an invention: (a) 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; or (b) a process producing such a substance by mere admixture. Revocation on ground that patent includes a name (5) A further ground for revocation is that the patent contains 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. Revocation on grounds of multiple patents for one invention (6) A further ground for revocation is that: (a) the innovation patent claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor; and (b) the relevant claim or claims in respect of each patent have the same priority date or dates. Revocation for grounds set out in the regulations (7) A further ground for revocation is that the complete specification does not comply with such other matters (if any) as are prescribed. 101C How and when examination to be carried out The examination under section 101B must be carried out: (a) in accordance with the regulations; and (b) within the period prescribed. 101D Commissioner may get information on searches The Commissioner may, from time to time, by notice in writing, direct the patentee to inform the Commissioner of the results of the searches specified in the notice, being searches carried out in a foreign country by a specified patent office or organisation in respect of a corresponding application filed outside Australia. 101E Certificate of examination If: (a) the Commissioner decides in writing that, after examining a patent under section 101B, a ground for the revocation of a patent has not been made out, or that any such ground has been removed; and (b) the patent has not ceased under section 143A; the Commissioner must: (c) 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 (d) publish a notice of the examination having occurred in the Official Journal; and (e) issue a certificate of examination to the patentee in the form approved by the Commissioner; and (f) register the issue