Patents Act 1899 (NSW)
118 Act Ko. 19, 1899.
Fatents.
Act No. 19, 1899.
| pa™s. | An Act to consolidate the Acts relating* to Letters Latent, \20th Noremher, 1899.] |
| ~|AE it enacted by tlic Queen’s 3[ost Excellent Majesty, by and ivitli _ 0 the advice and consent of the Legislative Council and Legislative Assembly of Xeiv Soutli 'Males in Parliament assembled, and liy the authority of the same, as follows : — |
PAPvT I.
llepeal and Inierpretation.
| Short title. | 1. This Act may be cited as the “ Patents Act, 1899,” and is divided into Parts, as follows :— |
PAPT T.—Jdepcal and Inlerpretullon—ss. 1-3.
| PAPT | II .—PV'lltNTS— |
1. Letters patent and certificates of provisional registration—
| ss. 1-12. | ' |
2. Assignments and licenses—s. 13.
3. Fegistration—s. 11.
4. Amendmoit o f specijications—ss. 15-18.
5. Ferocation o f patents—s. 19.
0. Supplemental—ss. 29-25.
Kopcal.
| Sttliediilc. | 2. (1) The Acts mentioned in the Schedule to this Act are, to the extent thci-eiie expressed, hereby repealed. |
| Onirors under Acts | (2) All 2)ersons a2)])ointed under the Acts hereby rcjiealed, |
| lu'i’c'by repealed. | and holding office at the time of the jiassing of this Act, shall continue in office as if this Act had been in force Avhen they tvere appointed, and they had been appointed Ih'reunder, and this Act shall apjdy to them accordingly. |
| Roffidalions under | (3) All regulations made under the authority of any Act |
| (Is iciehy r(|i(’,iic(i. | rcjicalcd, and being in I'orce at tlic time of the passing of this Act, sliall be deemed to haA’c been made under the aitthority of this Act. |
| Jnferpretaiion. | 3. In this Act, unless fhc context or subject-matter otherwise indicates or requires— |
| 42 Vic. No. 27,8. 2. | “ luvcntion” means any invention or improA'cment in the arts or manufactures for Avhich a ^Aatent might have been obtained under tlic ^Vets hereby rejAealed, or forwhicli a jiatent maybe obtained under this Act. |
| Hid. | “ Exhibition” includes any exhibition held by the Agricultural Society of jS'ew South AYales, and any exhibition of rvorks of |
scientific
| Act No. 1!). 1890. | 110 |
Fatents.
scientific invention, or of the fine arts or of industrial art, ■which the Governor may, hy notification in the Gazette, declare to be an exliiljition ivithin llie meanin^^ and for the purposes of this Act.
“ Letter.s patent ” mean,s the lettei's patent mentioned in section 5i vie. No. 3, s. i7.
five of this -Vet.
| “ Patent ” means letters patent. | oo vi,,. No. so, s. c. |
“ Patentee ” iiiclndes a person entitled i'or the time heing to the/ia.
henellt of letters ])atent.
“ Prescribed” means pr('scril)ed hy regailations made under the si vic. No. 3, s. i7.
authority of this Act.
“ Minister ” means the ^Minister of Justice.
PART II.
P a t e n t .s .
1. Letlci's patoil and certificates o f provisional registration.
4. Any person claiming to he the author or designer of any Any person desiring
invention in, or improvement to the arts or manufactures, or his
agent or assignee-ivho desires to obtain letters patent Ihercror, shall»i»iiiion.'
| jiay to the Treasurer the siun of five pounds, and shall after such | s. i. |
| payment lodge with the Minister a pdition to the Governor setting forth that the pctitioin'r is the author or designer, or the agent or assignee of siich author or designer, of such invention or improve ment, and s]i(.'cifying, and ■where necessary illustrating, the particulars of such invention or ii’iiprovcmcnt, and that in connection therewith ho has paid to the Treasurer the sum of five pounds. |
5. (1) The Minister shall thereupon refer such petition to the Tiie Covomov may
Examiiu'r of Pc.tcnts, ■who shall examine and report to the Tiinistcr upon the Governor may grant letters patent under his sign manual and tin; se;d oi' New South Whales, for the exclusive enjoyment and advantage, for a period of not less than seven nor more than fourteen years, for such invention or improvement to the petitioner or to his duly authorised agent or assignee.
upon the petition, and the IMinister may, after examination of the r,, y;,.̂
petition and of the report of the said Examiner thereon, report to the is-
(2) Such letters patent shall he foru'ardcd to the Examiner of Patents, who shall before is.suing them to the grantee or his duly authorised agent, register them as hereinafter provided.
6. Any person so claiming to be such author or designer as Cm-tincate of pro-
| n | • ^ 1 . , • ^ * T i 1 7 • ' visiimal protection. |
| tificatc entitling him to j)rovisional protection for any such invention Ihid. s. 3. | aioresaid, or lus agent or assignee, may in like manner obtain a ccr- |
or
120 Act No. 19. 1899.
Patents.
or improvement, upon payment to the Treasurer of the sum of two pounds, and upon dejiositing’ with the Minister a petition addressed to the Governor, and a provisional specification in tlic prescribed form.
| Protection to be for | 7. A certilicatc of provisional protection shall he in force for date of the expiration thereof the lawful holder of such certificate fails to make application for letters patent in terms of section four of this Act. |
| one year only. | twelve months and no longer, and shall be null and void if before the |
| 51 Yic. No. 3, s. 4. | |
| Letters patent may | 8 . The Governor may grant and issue to the lawful holder of Provided that the jictitioner so entitled shall have deposited a complete specification setting forth how the invention or impi’ovemcnt is to be carried out and performed, and that all the other conditions of sections four and five of this Act have been complied with. |
| be i.sisueil ii])on | |
| certificate. | such certificate, or to his agent or assignee', letters patent for the |
| Ifnd. s. 5. | invention or improvement provisionally specified : |
| Upon the issue of such letters patent the certificate of pro visional protection shall he deemed to be cancelled. | |
| Payments to | 9. The payment of two pounds to the Treasurer, on petition jietition for letters patent for the same invention, shall if both pay ments are made hy the original petitioner, or the former payment hy the original petitioner and the latter hy his legal representative, he deemed to constitute the payment of five pounds provided for in section four of this Act. |
| Treasurer. | for provisional protection, and the payment of three pounds on |
| Ihid. s. 0. |
| Provisionally pro- | 10. Wliilc a Certificate of provisional protection remains in force |
| bru*sLi"ami*'°" | lawful lioldcr thereof may use and publish his invention or same, and such protection from the consequences of use and publi cation shall constitute the provisional protection provided for in this Act. |
| pubiisiied. | improvement Avithout prejudice to the issue of letters patent for the |
| Ihid. s. 7. | |
| Date of let ters patent. | 11. Letters patent shall, unless the Minister in any case other- wise adGses, he dated and sealed as of the day of the deposit of the petition for provisional protection, or if there has been no petition for jn’ovisional protection, then as of the day of the deposit of the petition for the said letters patent: |
| Ihid. .s. 8. | |
| Provided that no action shall be maintainable in respect of any infringement of an invention or improvement committed before the deposit of the complete specification thereof, nor shall any person ho entitled to institute any proceedings at laAV or in equity for infringe ment until after the actual registration of the letters jiatent granted to him for the invention or improvement alleged to be infringed. | |
| Minister may grant |
| more tlian one | 12. A certificate of provisional protection shall he no bar to the |
| certificate. | granting of a like certificate for the same inAW'iitioii to other petitioners ; |
| Ihid. 8. 9. | hut |
| Act Xo. 19, 1899. | 121 |
Fatents.
but tlio Minister may, at liis (lis(;v('( ion, approve or refus(' the issiu' of l('t1(M-s ])atent upon aseeoud or ollu'r c('rtiiicatc duringthc conlinuanco of a c(‘i'titicate of prior date for tin; sanu; invention.
2. Assignments and lic(‘)ises.
13. (1) Every lawful liohb'r of a certificate of provisional pro- Certificate or patent
tt'cfion :md every patentt'c shall In; at liberty to assign such ctudilicate
| or ]);itent, together with till the btuudits :uid advantages dt'rivablo tbert'- | ■ |
| from, to any jterson by ;in iustruuumt in writing under bis band and stad. |
(2) Every such granttn' of letters patent shall also bt' :it i.iconse to use
libt'rly, by an instrument in manner aforesaid, to grant to any persttn
| a license, cither t'xclusive or otlnnovise, and for any portion of New | ̂ u |
| Soulli AVales, to manufacture, adopt, utilise, or exercise ju’oprietiiry or c()-])roprietary rights over the whole or any portion of the invention or im])rovem('nt which may be sjtecifically protected by the said letters patent. |
3. Jiegistratiun.
14. All letters pattnit and assignintmts tboreof, or liconst's Patents,assignments
thereunder, and all certitfeates of provisional protection and assigir-
intnils Ihert'of, shall bt' registert'd in the ollice of the Exiumiu'r of
| I’atenfs by that oflicer, and in tin'jtreseribed timt' and manner; and | ’ |
| any assignnu'nt made orlicenst' issued underthelast preceding section shiill b(' null and void if not so registered. |
4. A/mendmeut o f specifications.
| 15. | (1) | petitioner for a grant of b'ttcrs patent or a patentt'c p,'(ition forieaTeto |
mav, wlu'ther his specillcation was deposited or letters itatent grantt'd
| bttfort' or after tlu' commcnct'ment of this Act, from time to time, by I, ' | “■ | ’ |
| rt'tpu'st in'writing to the Minister, seek leave to amend his specification, including drawings forming part thereof, by Avay of disclaimer, correction, or explanation, stating the nature of such amendment and bis reasons for the sanu'. Such request shall be accompanit'd by a eo])y of the specilication and of Ihe drawings ])roposed to be amendt'd, showing in red ink the pio[)osed amendment. |
| (2) | The request and tlu' nature of such propos('d ameudnu'ut Opposition thereto, |
| shall be advt'rtised in the prt'scribt'd manner, and at any time within | 2. |
| one month iVom its first advt'rtist'uu'nt any person may give notice at IJk; ollict! of the Examiner ol' Patents of oj)])osition to the ani('ndment. | |
| (.')) Moiere such notice is given the Examiner of Patents slndl giv(! notice of the opposition to the person making the reqiutst, :md slnill lu'ar and dctermiiu' the case, subject to appeal to the M inistin’. (4) The Minister .shall, if required, hear the perso)! making tlu' request, and the person so giving notice, and being, in the opinion |
of
122 Act- No. 19, 1899.
Patents.
of the IMinister, entitled to he heard in opposition to the request, and shall determine ivhether and subject to ivliat conditions, if any, the amendment on<Tht to be allowed.
(5) AYhcre no notice of opposition is given, or the person so giving notice does not appear, the Examiner of Patents shall determine nludher and subject to what conditions, if any, the amendment ought to bo allowed.
| Appeal to flic | (()) 'When h ave to amend is refused by the Examiner of Patents, the person making the request may appeal from his decision to th(' Minist(>r. |
| (7) The Minister shall, if required, hear the person making the request and the Examiner of Patents, and may make an order determining nluThcr, and subject to ivhat conditions, if any, the amendment ought to be allowed. | |
| (S) No anK'ndmcnt shall be allowed that would make the specilication as amendi'd claim an invention or improvement sub stantially larger than or substantially different from the invention or improvement claimed by the specification as it stood before amendment. | |
| (if) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed except in case of fraud ; and the amendment shall in all Courts and for all purposes be deemed to form part of the specification. | |
| (10) The foregoing provisions of this section do not apply when and so long as any suit or action for infringement or proceeding for revocation of a })atent i.s pending. | |
| A])poal lo tli(‘ Kquity | |
| Court. | 16. Any })erson adversely affected by any leave to amend granted under the next preceding section may appeal by motion to flu' Su])reme Court in its equitable jurisdiction against the grant of such leave. Notice of such appeal shall be lodged Avithin six months of the date Avhen such leave A\ as grant('d, and the costs of such appeal shall be in the discndioir of tlic Court. |
| 00 Vic. Xo. .‘10, s. 1. | |
| Power to (liseliiim | 17. In a suit or action for infringement of a patent and in a revocaf iou of a patent, the Supremo Court or a Judge thereof may at any time order that the patentee shall, subject to such terms as to costs and otlicinvise as such Court or Judge may impose, bo at liberty to apply to the Minister for leave to amend his specification by way of disclaimer, and may direct that in the meantime the trial or hearing of the suit or action shall be postponed. |
| dimng suit, ov act ion. | |
| Ko.0lii'Uon on | 18. "Wliorc ail amendment by way of disclaimer, correction, or givtMi in any suit or action in respect of the use of the invention or improvement before tlu' disclaimer, correction, or explanation, unless the patentee establishes to the satisfaction of the Court tliat his original claim was framed in good faith and ivitli ri'asonabh' skill and knowledge. |
Minister.
| rcoovorv ol (iiminpcs. | allowcd undci' tliis Act, uo damages shall be |
| Thiil s. 4. |
| Act Xo. li), 1890. | 12,9 |
Fatents.
5. Bcvocation o f patents.
| 19. | (1) Tlie proccrdin^' liy .scire i'acias to repeal a patent | IS Ri'vocnli<ni of |
hereby aliolislied.
(2) Revocation ol a patent maybe obtained on a petition
to tlie kSiipremo Court in its ecputable jurisdiction.
(d) iivery ground on wlueli a patent inigbt, lieiorc the Act .sixtictli N’ietoria nnml)er tbirty-niiu', lie repealed by scire facias shall be availa1)lc by way of defence to a suit or action of infringeincnt, and shall also be a ground of revocation.
(Id A ])etition for revocation of a patent may be presented
by-
(n) tlie xCtlorney-Cicncral ;
(J)) any person aiitborised by the Attorney-General;
| (c) | any person alb'ging that tin; patent was obtained in fraud of bis rights, or of the rights of any person under or tbrougb whom b(' (daims ; |
{(1) any jierson alleging that lug or any person under or tbrougb whom be edaims, was the author or designer of any iuvenl ion or improvcnK'iit included in the claim of the patentee ;
| (e) | any person alleging that be or any person under or tbrougb wliom be claims an interest in any trade, business, or manu facture, bad ])ublicly manufactured, used, or sold in Aew South Wales, before the date of the patent, anything claiim'd by the patentee as bis invention or improvement. |
(.5) The petitioner must deliver with bis petition particulai's of the objections on wbicdi lu' me.'ins to rely, and no (nddenec sliall, except by IcaA C of the Comt, be admitted in proof of any objection of wbicb ])articulars arc not so delivered.
(0) Particidars (b'liveri'd may be from time to time amended
by leave of tlic Court.
(7) The patentc(' shall be entitled to hegdiiand give ex idcnice
in support of tlu' patent, and if tlie petitioner gives evidence impeaching
till' validity of the jialciit, tlu- jiaientee shall be entitled to reply.
(S) When a ])atent lias Ijcen ri'vobed on the ground of fi'aiid, tlie Governor may, on tlic ajgilieation of tlie autlior or dcsigni'r, or till' agent or assignee of ibe author or designer, in accordance v. iili till' provisions of this Act ri'lating to the grant of letters natent, giant to him a jiatent in lien of and biuring the .same date as the date ol revocation of the jiatcnt, so revoked, but tlie patent so granted shall ci'asc on the expiration of the term for wbicb the revoked patent was granted.
(). Siipplenientat.
20. All sums paid under this Act shall be carried by the Application of
| Treasurer to the credit of the Consolidated Ilcvcnue Tund. | moneys pma. | 51 V u‘. AO. 3, s. 14, |
124 Act No. 19, 1899.
Patents.
| Exhibition and | 21. The exliil)ition of anv new invention at anv exhihition shall | « |
| piiblic-ation of an |
| invention at an | not, nor shall the puhlication (luring the holding of such exhihition of |
| exhibition. | any description of such invention, nor shall the riser of such invention |
| 42 \ ic . No. 27, s. 3. | for the purposes of such exhibition and within the building or place where the same is hold, nor shall the user of such invention elsewhere hy any person without the privity and consent of the author or designer thereof, prejudice the right of the exhibitor thereof to apply for a certi ficate of provisional jrrotection or for h'tters patent for such invention under this Act, nor shall the ('xhibition of such invention invalidate any certificate of provisional protection or letters patent granted in respect of such invention. |
| Crovernor may |
| appoint an Examiner | 22. The Governor may appoint an Examiner of Patents, who, |
| of Patents. | under the direction of the ^Minister, shall examine and report to the |
| 51 Vic. No. 3, s. 15. | Minister upon all petitions for letters patent. |
| Grovernor may make | 23. The Governor may make and proclaim regulations for the collection and dis])osal of fees for registering assignments and licenses, and making searches of the records in the Examiner’s office. All such regulations shall, upon puhlication in the Gazette, he valid : |
| regulat ions. | carrying into full effect the provisions of this Act and for regulating |
| Ibid. s. 16, | |
| Proviso. | Provided that a copy of every such regulation shall ho laid before both Houses of Parliament ivithin fourteen days alter the issue thereof, if Parliament is tlnm in session, or otherwise within fourtc('n days after the commencement of the next ensuing session. |
| Crown prerogative. | 24. Nothing in this Act contained shall be construed to the rule, restrain, or limit the operation or effect of the International Patents and Trades-marks Arrangement Act, 1897. |
| Ibid. 3, s. 20. | prejudice of the prerogative of the Crown. |
| Act No. 35, 1897. | 26. Nothing in this Act contained shall be construed to over |
SCHEDULE.
| Rcfeivncc to Act. | Title or short title. | Extent of ropciU. |
| IG Vic. No. 21 | An Act to .mthorise the Governor-Genernl, xvith The whole, |
the advice of the Executive Council, to grant Letter.s of Eegistration for all inventions and im])roveinents in the Arts or Alanufacturcs. to liavc the same effect as Letters Patent in England so far as regards this Colony.
| 42 Yic. No. 27 | Patent.s Law Amendment Act | ... | ... | . . . j | The whole. |
| 51 Vic. No. a | Patents Law Amendment Act of 18S7 ... | . j The whole. |
| CO Vic. No. .20 | Patents Law Amendment Act, 1S95 | ... | .. j | The whole. |
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