Patents Act 1952 (Cth)
PATENTS ACT 1952 [Note: This Act is "repealed" by Act No. 83 of 1990]
(#DATE 31:05:1988)
(#DATE 31:05:1988)
- Reprinted as at 31 May 1988 *1* The Patents Act 1952 as shown in this reprint comprises Act No. 42, 1952 amended as indicated in the Tables below.
--------------------------------------------------------------------------------
Act Number
and year Date
of Assent Date of
commencement Application,
saving
or transitional
provisions
--------------------------------------------------------------------------------
Patents Act 1952 42, 1952 27 Sept
1952 1 May 1954 (see
Gazette 1954, p.
529A)
Patents Act 1954 14, 1954 20 Apr 1954
20 Apr 1954 Ss. 5-8
Patents Act 1955 3, 1955 23 May 1955
23 May 1955 -
Patents Act 1960 107, 1960 16 Dec 1960
Ss. 1, 2, 8, 11,
20, 21 and 26:
Royal Assent
Remainder: 27 Feb
1961 (see Gazette
1961, p. 753) Ss. 26 (2) and
30
Patents Act 1962 84, 1962 14 Dec 1962
Ss. 1, 2, 30 (2)
and 31: Royal
Assent S. 26: 1
May 1954
Remainder: 1 May
1963 (see Gazette
1963, p. 1493) Ss. 28-31
Statute Law Revision
(Decimal Currency) Act
1966 93, 1966 29 Oct 1966
1 Dec 1966 -
Patents Act 1969 34, 1969 14 June
1969 Ss. 1, 2, 6, 7, 11
(1), 13, 22, 25,
29-31, 33, 39-41
and 44: Royal
Assent
Remainder: 1 Jan
1970 (see Gazette
1969, p. 5771) Ss. 42-44
Statute Law Revision Act
1973 216, 1973
as
amended
by
20, 1974 19 Dec 1973
25 July
1974 31 Dec 1973
31 Dec 1973 Ss. 9 (1) and
10
-
Administrative Changes
(Consequential
Provisions) Act 1976 91, 1976 20 Sept
1976 S. 3: (a) S. 4
Patents Amendment Act
1976 162, 1976 9 Dec 1976 Ss. 3, 4, 6, 7 and
10:
1 Feb 1977 (see
Gazette 1977, No.
S3, p. 2)
Remainder: Royal
Assent Ss. 6 (2), 9
(2) and 10 (2)
as amended by
Jurisdiction of Courts
(Miscellaneous
Amendments) Act 1979 19, 1979 28 Mar 1979
(see 19, 1979
below) S. 124
Patents Amendment Act
1978 131, 1978 31 Oct 1978
31 Oct 1978 S. 3 (2)
Patents Amendment Act
1979 9, 1979 9 Mar 1979 Ss. 1, 2 and 4:
Royal Assent
Remainder: 1 July
1979 (see Gazette
1979, No. S120, p.
1) -
Jurisdiction of Courts
(Miscellaneous
Amendments) Act 1979 19, 1979 28 Mar 1979
Parts II-XVII
(ss. 3-123): 15
May
1979 (see Gazette
1979, No. S86, p.
1)
Remainder: Royal
Assent -
Patents Amendment (Patent
Cooperation Treaty) Act
1979 188, 1979 4 Dec 1979 Ss. 2 and 3: Royal
Assent
Remainder: 31 Mar
1980 (see Gazette
1980, No. S67, p.
1) S. 3
Statute Law
(Miscellaneous
Amendments) Act 1981 176, 1981 2 Dec 1981 Part XIX (s. 68):
30 Dec 1981 (b) -
Statute Law
(Miscellaneous
Amendments) Act (No. 1)
1982 26, 1982 7 May 1982 Ss. 173-176,
178-190 and 192: 4
June 1982 (c)
Ss. 177 and 191
(1):
2 July 1979 (c)
S. 191 (2)-(12): 1
May 1983 (see
Gazette 1983, No.
S83, p. 1) (c) Ss. 178 (2),
191 and 192
Statute Law
(Miscellaneous
Provisions) Act (No. 2)
1983 91, 1983 22 Nov 1983
S. 3: (see (d) and
Note 2) Ss. 2 (14) and
6 (1)
Patents Amendments Act
1984 92, 1984 21 Sept
1984 7 July 1987 (see
Gazette 1987, No.
S89, p. 1) S. 5 (2)
Statute Law
(Miscellaneous
Provisions) Act (No. 2)
1984 165, 1984 25 Oct 1984
S. 3 (see (e) and
Note 4) Ss. 2 (32) and
6 (1)
Statute Law
(Miscellaneous
Provisions) Act (No. 1)
1985 65, 1985 5 June 1985
S. 3 (see (f) and
Note 5) S. 14
Statute Law
(Miscellaneous
Provisions) Act (No. 2)
1985 193, 1985 16 Dec 1985
S. 3 (see (g) and
Note 3) Ss. 13 and 16
Jurisdiction of Courts
(Miscellaneous
Amendments) Act 1987 23, 1987 26 May 1987
S. 3: 1 Sept 1987
(see Gazette 1987,
No.
S217, p. 1) (h) S. 5
Nuclear Non-Proliferation
(Safeguards)
(Consequential
Amendments) Act 1988 10, 1988 26 Apr 1988
24 May 1988 -
--------------------------------------------------------------------------------
(a) The Patents Act 1952 was amended by section 3 only of the Administrative Changes (Consequential Provisions) Act 1976, subsection 2 (7) of which provides as follows:
"(7) The amendments of each other Act specified in the Schedule made by
this Act shall be deemed to have come into operation on 22 December 1975."
(b) The Patents Act 1952 was amended by Part XIX (section 68) only of the Statute Law (Miscellaneous Amendments) Act 1981, subsection 2 (12) of which provides that Part XIX shall come into operation on the twenty-eighth day after Royal Assent.
(c) The Patents Act 1952 was amended by sections 173-192 only of the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982, subsections 2 (7), (8) and (12) of which provide as follows:
"(7) Section 177 and sub-section 191 (1) shall be deemed to have come into
operation immediately after the commencement of section 17 of the Patents Amendment Act 1979.
"(8) The provisions of section 191 (other than sub-section 191 (1)) shall
come into operation on a date to be fixed by Proclamation.
"(12) The remaining provisions of this Act shall come into operation on
the twenty-eighth day after the day on which this Act receives the Royal Assent."
(d) The Patents Act 1952 was amended by section 3 and the Schedule of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1983, subsections 2 (1) and (11) of which provide as follows:
"(1) Subject to this section, this Act shall come into operation on the
twenty-eighth day after the day on which it receives the Royal Assent.
"(11) The amendments of sections 35 and 58E of the Patents Act 1952 made
by this Act shall come into operation on a date to be fixed by Proclamation." (See Note 2.)
In pursuance of subsection 2 (1) the date of commencement was 20 December
1983.
(e) The Patents Act 1952 was amended by section 3 and the Schedule of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1984, subsections 2 (1) and (18) of which provide as follows:
"(1) Subject to this section, this Act shall come into operation on the
twenty-eighth day after the day on which it receives the Royal Assent.
"(18) The amendments of the Patents Act 1952 made by this Act (other than
the amendments of section 58A of the first-mentioned Act) shall come into operation, or be deemed to have come into operation, as the case requires, on the date fixed by Proclamation for the purposes of sub-section 2 (11) of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1983." (See Note 4.)
In pursuance of subsection 2 (1) the date of commencement was 22 November
1984.
(f) The Patents Act 1952 was amended by section 3 and the Schedule of the Statute Law (Miscellaneous Provisions) Act (No. 1) 1985, subsections 2 (1) and (35) of which provide as follows:
"(1) Subject to this section, this Act shall come into operation on the
twenty-eighth day after the day on which it receives the Royal Assent.
"(35) The amendments of sections 54B and 55 of the Patents Act 1952 made
by this Act shall come into operation, or be deemed to have come into operation, as the case requires, on the day fixed by Proclamation for the purposes of sub-section 2 (11) of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1983." (See Note 5.)
In pursuance of subsection 2 (1) the date of commencement was 3 July 1985.
(g) The Patents Act 1952 was amended by section 3 and the Schedule of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1985, subsections 2 (1), (9) and (10) of which provide as follows:
"(1) Subject to this section, this Act shall come into operation on the
day on which it receives the Royal Assent.
"(9) The following amendments of the Patents Act 1952 made by this Act:
(a) the amendments of sections 35, 41 and 177;
(b) the amendment inserting sub-section (1B) in section 54A,
shall come into operation on-
(c) the twenty-eighth day after the day on which this Act receives the
Royal Assent; or
(d) the day fixed by Proclamation for the purposes of sub-section 2 (11)
of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1983,
whichever is the later. (see Note 3.)
"(10) The following amendments of the Patents Act 1952 made by this Act:
(a) the amendments of sections 40, 45, 45A, 54B, 55, 58C and 58E;
(b) the amendment inserting sub-section (1A) in section 54A;
(c) the amendment inserting section 87,
shall come into operation on-
(d) the twenty-eighth day after the day on which this Act receives the
Royal Assent; or
(e) the date of commencement of the Patents Amendment Act 1984,
whichever is the later."
In pursuance of subsection 2 (10) the date of commencement was 7 July 1987
(see Gazette 1987, No. S89, p. 1).
(h) The Patents Act 1952 was amended by section 3 only of the Jurisdiction of Courts (Miscellaneous Amendments) Act 1987, subsection 2 (2) of which provides as follows:
"(2) The amendments made by this Act to an Act specified in the Schedule
shall come into operation on such day as is fixed by Proclamation in relation to those amendments."
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and
substituted
------------------------------------------------------------------------------ -
Provision affected How affected
------------------------------------------------------------------------------ - S. 3 ............... am. No. 34, 1969
rep. No. 216, 1973 (as am. by No. 20, 1974)
S. 4 ............... am. Nos. 9 and 188, 1979
S. 5 ............... am. No. 3, 1955; No. 107, 1960; No. 34, 1969; No. 9, 1979
S. 6 ............... am. No. 107, 1960; No. 34, 1969; No. 216, 1973 (as am. by
No. 20, 1974); No. 162, 1976; No. 9; 1979; No. 26, 1982;
No. 92, 1984; No. 193, 1985; No. 23, 1987
S. 6A .............. ad. No. 162, 1976
am. No. 26, 1982
S. 7 ............... am. No. 26, 1982
S. 8 ............... am. No. 216, 1973 (as am. by No. 20, 1974)
rs. No. 162, 1976
S. 10 .............. am. No. 91, 1976; No. 9, 1979
S. 12 .............. am. No. 9, 1979
Ss. 16-18 .......... am. No. 93, 1966; No. 9, 1979; No. 65, 1985
S. 19 .............. am. No. 93, 1966; No. 9, 1979
rs. No. 65, 1985
am. No. 10, 1988
S. 22 .............. am. No. 9, 1979
S. 25 .............. am. No. 19, 1979
S. 27 .............. am. No. 9, 1979
S. 31 .............. am. No. 9, 1979
S. 32 .............. am. No. 162, 1976
S. 33 .............. am. No. 9, 1979; No. 65, 1985
S. 34 .............. am. No. 107, 1960; No. 34, 1969; No. 9, 1979; No. 65, 1985 S. 35 .............. am. No. 107, 1960; No. 34, 1969; No. 9, 1979; No. 92, 1984 S. 38 .............. am. No. 9, 1979
S. 40 .............. am. No. 9, 1979; No. 92, 1984; No. 193, 1985
S. 41 .............. am. No. 3, 1955; No. 9, 1979
S. 42 .............. rs. No. 107, 1960; No. 84, 1962
am. No. 9, 1979
S. 43 .............. rep. No. 107, 1960
S. 44 .............. am. No. 34, 1969; No. 9, 1979
S. 45 .............. am. No. 3, 1955; No. 34, 1969; No. 9, 1979; No. 26, 1982;
No. 193, 1985
S. 45A ............. ad. No. 9, 1979
am. No. 193, 1985
S. 46 .............. am. No. 9, 1979
S. 47 .............. rs. No. 107, 1960
am. No. 84, 1962
rs. No. 34, 1969
am. No. 216, 1973 (as am. by No. 20, 1974)
rs. No. 9, 1979
am. No. 19, 1979
Ss. 47A-47C ........ ad. No. 34, 1969
am. No. 216, 1973 (as am. by No. 20, 1974); Nos. 9 and 19,
1979
S. 47D ............. ad. No. 34, 1969
am. No. 9, 1979
S. 47E ............. ad. No. 34, 1969
am. No. 162, 1976; No. 9, 1979
S. 48 .............. am. No. 107, 1960
rs. No. 34, 1969
am. No. 9, 1979; No. 26, 1982
S. 48A ............. ad. No. 84, 1962
rs. No. 34, 1969
am. No. 9, 1979
S. 49 .............. rs. No. 84, 1962; No. 34, 1969
am. No. 162, 1976; No. 9, 1979; No. 23, 1987
S. 49A ............. ad. No. 84, 1962
rs. No. 34, 1969; No. 9, 1979
am. No. 26, 1982; No. 23, 1987
S. 50 .............. am. No. 3, 1955; No. 84, 1962; No. 34, 1969; No. 162,
1976; No. 9, 1979; No. 23, 1987
S. 50A ............. ad. No. 3, 1955
am. No. 34, 1969; No. 9, 1979; No. 26, 1982
S. 51 .............. rs. No. 84, 1962
am. No. 34, 1969
rs. No. 9, 1979
am. No. 26, 1982
S. 52 .............. rs. No. 107, 1960
am. No. 84, 1962; No. 162, 1976; No. 9, 1979; No. 23, 1987 S. 52A ............. ad. No. 34, 1969
am. No. 9, 1979; No. 91, 1983
S. 52B ............. ad. No. 34, 1969
am. No. 9, 1979; No. 26, 1982; No. 91, 1983
S. 52C ............. ad. No. 34, 1969
am. No. 9, 1979; No. 26, 1982
S. 52D ............. ad. No. 34, 1969
am. No. 162, 1976; No. 9, 1979; No. 26, 1982; No. 23, 1987 S. 52E ............. ad. No. 34, 1969
am. No. 9, 1979
S. 53 .............. rs. No. 107, 1960
am. No. 9, 1979
S 54 ............... rs. No. 107, 1960
am. No. 34, 1969; No. 162, 1976; Nos. 9 and 19, 1979; No.
26, 1982
S 54A .............. ad. No. 84, 1962
am. No. 131, 1978; No. 9, 1979; No. 26, 1982; No. 193,
1985
S 54B .............. ad. No. 84, 1962
am. No. 9, 1979; No. 26, 1982; No. 193, 1985
S 54C .............. ad. No. 84, 1962
am. No. 34, 1969; No. 9, 1979; No. 26, 1982; No. 10, 1988
S 54D .............. ad. No. 9, 1979
S. 55 .............. am. No. 107, 1960; No. 84, 1962; No. 9, 1979; No. 193,
1985
S. 56 .............. am. No. 34, 1969; No. 9, 1979; No. 26, 1982
S. 57 .............. rep. No. 84, 1962
ad. No. 34, 1969
am. No. 9, 1979; No. 26, 1982
S. 58 .............. rs. No. 91, 1983
S. 58AA ............ ad. No. 10, 1988
Part IVA (ss. 58A-58J)
.................... ad. No. 188, 1979
S. 58A ............. ad. No. 188, 1979
am. No. 176, 1981; No. 165, 1984
S. 58B ............. ad. No. 188, 1979
am. No. 26, 1982; No. 10, 1988
S. 58C ............. ad. No. 188, 1979
am. No. 176, 1981; No. 26, 1982; No. 91, 1983; No. 193,
1985
S. 58D ............. ad. No. 188, 1979
am. No. 26, 1982
S. 58E ............. ad. No. 188, 1979
am. No. 26, 1982; No. 193, 1985
S. 58F ............. ad. No. 188, 1979
rs. No. 91, 1983
am. No. 10, 1988
S. 58G ............. ad. No. 188, 1979
am. No. 26, 1982
S. 58H ............. ad. No. 188, 1979
S. 58J ............. ad. No. 188, 1979
am. No. 26, 1982
S. 59 .............. am. No. 84, 1962; No. 34, 1969; No. 91, 1976; No. 9, 1979;
No. 26, 1982
S. 60 .............. am. No. 107, 1960; No. 34, 1969; No. 162, 1976; No. 9,
1979; No. 26, 1982; No. 23, 1987
S. 61 .............. rep. No. 34, 1969
S. 62 .............. am. No. 9, 1979
S. 62A ............. ad. No. 9, 1979 S. 63 .............. am. No. 34, 1969; No. 162, 1976; No. 9, 1979; No. 23, 1987 S. 65 .............. am. No. 9, 1979
S. 66 .............. am. No. 162, 1976; Nos. 9 and 19, 1979; No. 23, 1987
S. 67 .............. am. No. 84, 1962; No. 9, 1979
S. 68 .............. am. No. 9, 1979
S. 68A ............. ad. No. 9, 1979
S. 68B ............. ad. No. 9, 1979
am. No. 26, 1982; No. 23, 1987; No. 10, 1988
S. 71A ............. ad. No. 9, 1979
S. 73 .............. am. No. 107, 1960; No. 34, 1969; No. 162, 1976; No. 9,
1979; No. 23, 1987
S. 75 .............. am. No. 19, 1979
S. 77 .............. am. No. 162, 1976; No. 9, 1979
S. 78 .............. rs. No. 107, 1960; No. 84, 1962
am. No. 34, 1969; No. 9, 1979
S. 79 .............. rs. No. 84, 1962
S. 81 .............. rs. No. 107, 1960
am. No. 84, 1962; No. 162, 1976; No. 9, 1979; No. 23, 1987 S. 82 .............. am. No. 107, 1960; No. 84, 1962; No. 91, 1976; No. 9, 1979 S. 84 .............. am. No. 162, 1976; No. 9, 1979; No. 23, 1987
S. 85 .............. am. No. 107, 1960
rs. No. 9, 1979
S. 86 .............. am. No. 162, 1976; No. 9, 1979
S. 87 .............. rep. No. 84, 1962
ad. No. 193, 1985
S. 88 .............. rep. No. 84, 1962
S. 89 .............. am. No. 84, 1962
S. 90 .............. am. No. 162, 1976; No. 9, 1979
Ss. 91-93 .......... am. No. 162, 1976
S. 94 .............. am. No. 162, 1976; No. 9, 1979
S. 95 .............. am. No. 162, 1976; No. 9, 1979; No. 26, 1982
Heading to Part X ... am. No. 9, 1979
S. 97 .............. am. No. 34, 1969; No. 9, 1979
S. 98 .............. am. No. 162, 1976
S. 99 .............. am. Nos. 91 and 162, 1976
S. 100 ............. am. No. 84, 1962; No. 34, 1969; No. 216, 1973 (as am. by
No. 20, 1974); No. 9, 1979; No. 26, 1982
S. 101 ............. rep. No. 34, 1969
S. 103 ............. am. No. 162, 1976; No. 9, 1979
S. 104 ............. am. No. 9, 1979
S. 106 ............. am. No. 162, 1976; No. 9, 1979
S. 107 ............. am. No. 107, 1960; No. 34, 1969; No. 9, 1979
S. 108 ............. am. No. 107, 1960; No. 162, 1976; No. 9, 1979
S. 109 ............. am. No. 162, 1976; No. 9, 1979
S. 110 ............. am. No. 162, 1976; No. 9, 1979; No. 26, 1982
S. 112 ............. am. No. 91, 1976; No. 9, 1979; No. 26, 1982
S. 113 ............. am. No. 162, 1976
rs. No. 26, 1982
S. 115 ............. am. No. 162, 1976
S. 116 ............. rep. No. 162, 1976
Ss. 117, 118 ....... am. No. 162, 1976
S. 119 ............. am. No. 9, 1979
Ss. 120, 121 ....... am. No. 84, 1962; No. 162, 1976; No. 9, 1979; No. 26, 1982 S. 122 ............. am. No. 162, 1976; No. 9, 1979
S. 123 ............. am. No. 193, 1985
S. 125 ............. am. Nos. 91 and 162, 1976; No. 9, 1979
S. 126 ............. am. No. 162, 1976; No. 9, 1979; No. 26, 1982
S. 127 ............. am. No. 9, 1979
S. 129 ............. am. Nos. 91 and 162, 1976; No. 9, 1979
S. 130 ............. am. No. 91, 1976
S. 131 ............. am. No. 84, 1962; No. 93, 1966; No. 91, 1976; No. 9, 1979;
No. 65, 1985; No. 92, 1984
S. 132 ............. rs. No. 26, 1982
S. 133 ............. am. No. 107, 1960; No. 9, 1979; No. 65, 1985; No. 10, 1988 S. 134 ............. am. No. 107, 1960
S. 135A ............ ad. No. 26, 1982
Ss. 136, 137 ....... am. No. 93, 1966; No. 9, 1979; No. 65, 1985
S. 138 ............. am. No. 162, 1976; No. 9, 1979
S. 139 ............. am. No. 93, 1966; No. 9, 1979; No. 65, 1985
S. 140 ............. am. No. 9, 1979; No. 193, 1985
S. 141 ............. rs. No. 107, 1960
am. No. 34, 1969; No. 9, 1979
S. 142 ............. am. No. 3, 1955; No. 107, 1960; No. 84, 1962; No. 34,
1969; No. 9, 1979; No. 26, 1982
S. 142AA ........... ad. No. 107, 1960
am. No. 34, 1969; No. 9, 1979
S. 142A ............ ad. No. 3, 1955
am. No. 107, 1960; No. 9, 1979
S. 143 ............. am. No. 107, 1960; No. 9, 1979
S. 145 ............. am. No. 107, 1960
Part XVII (ss.
146-151) ........... rep. No. 162, 1976
Part XVII (ss.
146-150) ........... ad. No. 162, 1976
S. 146 ............. rs. No. 162, 1976
am. No. 19, 1979; No. 26, 1982; No. 23, 1987
S. 147 ............. rs. No. 162, 1976
am. No. 26, 1982
S. 148 ............. rs. No. 162, 1976
am. No. 19, 1979; No. 26, 1982; No. 23, 1987
Ss. 149, 150 ....... rs. No. 162, 1976
am. No. 23, 1987
S. 151 ............. rep. No. 162, 1976
Part XVIIIA (ss. 151,
151A) ............. ad. No. 162, 1976
S. 151 ............. rs. No. 162, 1976
am. No. 162, 1976; No. 26, 1982; No. 92, 1984; No. 10,
1988
S. 151A ............ ad. No. 162, 1976
rep. No. 19, 1979
S. 153 ............. am. No. 9, 1979
S. 154 ............. am. No. 162, 1976; No. 9, 1979
S. 154A ............ ad. No. 92, 1984
am. No. 23, 1987
S. 155 ............. am. No. 162, 1976; No. 9, 1979; No. 23, 1987
S. 156 ............. rep. No. 34, 1969
S. 157 ............. am. No. 9, 1979
S. 157A ............ ad. No. 84, 1962
S. 158 ............. am. No. 34, 1969; Nos. 91 and 162, 1976; No. 9, 1979; No.
26, 1982
S. 159 ............. rep. No. 14, 1954
ad. No. 84, 1962
am. No. 9, 1979
S. 159A ............ ad. No. 84, 1962
am. No. 34, 1969; No. 162, 1976; No. 9, 1979
S. 159B ............ ad. No. 84, 1962
am. No. 34, 1969; No. 9, 1979; No. 26, 1982
S. 159C ............ ad. No. 34, 1969
am. No. 162, 1976; Nos. 9 and 19, 1979; No. 26, 1982
S. 160 ............. rs. No. 107, 1960
am. No. 84, 1962; No. 34, 1969; No. 162, 1976; No. 9,
1979; No. 26, 1982
S. 162 ............. am. No. 34, 1969; No. 9, 1979
S. 163 ............. am. No. 162, 1976; No. 23, 1987
S. 165 ............. am. No. 193, 1985
S. 166 ............. am. No. 162, 1976; No. 9, 1979
S. 167 ............. am. No. 162, 1976
S. 168 ............. am. No. 9, 1979
S. 169 ............. rs. No. 9, 1979
S. 170 ............. am. No. 162, 1976; No. 23, 1987
S. 172A ............ ad. No. 34, 1969
S. 173 ............. am. No. 93, 1966; No. 9, 1979; No. 65, 1985
S. 174 ............. am. No. 93, 1966; No. 91, 1976; No. 9, 1979; No. 65, 1985
S. 174A ............ ad. No. 65, 1985
S. 175 ............. am. No. 9, 1979
S. 176 ............. rs. No. 107, 1960
am. No. 34, 1969; No. 9, 1979; No. 26, 1982
S. 177 ............. am. No. 14, 1954; No. 93, 1966; No. 34, 1969; No. 162,
1976; No. 9, 1979; No. 26, 1982; No. 92, 1984; No. 65,
1985
Heading to The
Schedule . rep. No. 188, 1979
Heading to Schedule 1
.................... ad. No. 188, 1979
The Schedule ....... am. No. 9, 1979
Schedule 2 ......... ad. No. 188, 1979
Schedule 3 ......... ad. No. 92, 1984
-----------------------------------------------------------------------------
PATENTS ACT 1952 - TABLE OF PROVISIONS TABLE
TABLE OF PROVISIONS
PART I-PRELIMINARY
Section
1. Short title
2. Commencement
4. Repeal
5. Application of Act
6. Interpretation
6A. References to prescribed court
7. Crown to be bound
8. Application of Act to Norfolk Island
9. No new application to be made under State Acts
PART II-ADMINISTRATION
10. Commissioner of Patents and other officers
11. Delegation by Commissioner
12. Patent Office and sub-offices
13. Seal of Patent Office
14. Powers of Commissioner
15. Recovery of costs awarded by Commissioner
16. Disobedience to summons an offence
17. Refusal to give evidence an offence
18. Officers not to traffic in inventions
19. Officers not to furnish information etc.
PART III-THE REGISTER OF PATENTS
20. Register of Patents
21. Registration of assignments, transmissions etc.
22. Probate or Letters of Administration need not to be resealed
23. Registration of mortgages, licences etc.
24. Copies of deeds and documents to be supplied
25. Trusts not recognised
26. Power of registered proprietor to deal with patent
27. Exception in case of fraud
28. Register to be open for inspection
29. Register and certified copies to be evidence
30. Request for information as to patent application
31. Unregistered instruments not to be admitted in evidence
32. Rectification of Register
33. False entries in Register
PART IV-APPLICATIONS FOR PATENTS
34. Whom may apply for patent
35. Form of application
36. Date of application
37. Withdrawal of application
38. Title of invention
39. Provisional specification
40. Contents of specification
41. Time for lodging complete specification
42. Complete specification to be treated as provisional
44. Each claim to have a priority date
45. Priority date of complete specification
45A. Priority date of petty patent specification
46. Validity of patent not affected by publication etc. after priority date
47. Request for examination of standard patent
47A. Power of Commissioner to direct applicant to request examination
47B. Any person may require Commissioner to direct applicant to request
examination
47C. Application to lapse if request not made
47D. Application for standard patent to lapse if continuation fee not paid
47E. Restoration of lapsed application
48. Examination of application for standard patent
48A. Additional report where specification amended
49. Action on Examiner's report on examination
49A. Consideration and acceptance of petty patent application
50. Single standard patent for cognate invention
50A. Procedure where single patent not granted
51. Voluntary division of patents
52. Acceptance of application for standard patent
52A. Request for modified examination of application for standard patent and
complete specification
52B. Request for deferment of examination of application for standard patent
and complete specification
52C. Modified examination of application for standard patent and complete
specification
52D. Action on Examiner's report on modified examination
52E. Modified examination not to affect opposition to or revocation of,
grant of patent
53. Lapsing of application for standard patent
54. Time for acceptance
54A. Publication of complete specification or petty patent specification
54B. Documents open to public inspection
54C. Effect of publication of complete specification
54D. Effect of publication of petty patent specification
55. Certain documents not to be published
56. Result of search may be disclosed
57. Notice to Commissioner of matters affecting validity of patent
58. Validity of patent not guaranteed
58AA. Special provisions relating to associated technology
PART IVA-INTERNATIONAL APPLICATIONS
58A. Interpretation
58B. International applications
58C. Modified application of Act to international applications
58D. Effect of deemed publication of international application
58E. Where Patent Office is receiving Office-international application to be
treated on request as an application for a patent
58F. Preservation of priority dates
58G. Notifications in respect of international application
58H. Evidence of matters arising under the Treaty
58J. Regulations
PART V-OPPOSITION
59. Opposition to grant of standard patent
60. Notice of opposition to applicant and hearing
PART VI-PATENTS AND THEIR SEALING
62. Sealing of standard patent
62A. Sealing and publication of petty patent
63. Refusal of assignee or joint applicant to proceed
64. Assignment of patent before grant
65. Death of applicant
66. Time for sealing
67. Date of patent etc.
68. Term of standard patent
68A. Term of petty patent
68B. Extension of term of petty patent
69. Effect of patent
70. Extent of patent
71. Loss or destruction of patent
PART VII-PATENTS OF ADDITION
71A. Part not to apply to petty patents
72. Application for patent of addition
73. Grant of patent of addition
74. Revocation of patent and grant of patent of addition in lieu
75. Duration of patent of addition
76. Validity of patent of addition
PART VIII-AMENDMENT OF SPECIFICATIONS
77. Amendment of specification
78. Nature of amendments allowable
79. Examination of request for amendment
80. Action on Examiner's report
81. Advertisement of request
82. Notice of opposition
83. Determination of request
84. Appeal to prescribed court
85. No amendment where action pending
86. Court may direct amendment
87. Amendments relating to micro-organisms
89. Advertisement of amendment
PART IX-EXTENSION OF PATENTS
90. Petition to prescribed court for extension of term of standard patent
91. Caveat
92. Hearing
93. Matters to be considered by court
94. Extension of term of standard patent on ground of inadequate
remuneration
95. Extension on ground of war loss
96. Application by exclusive licensee
PART X-RESTORATION OF STANDARD PATENTS
97. Application for restoration of standard patents which have ceased
98. Hearing of application and order thereon
PART XI-REVOCATION AND SURRENDER OF PATENTS
99. Petition to revoke patent
100. Grounds of revocation
102. Hearing of petition
103. Powers of court
104. References to be made in Register
105. Defences in action for infringement
106. Surrender of patent
107. Grant of patent where patent revoked
PART XII-WORKING OF PATENTS AND COMPULSORY LICENCES
108. Compulsory licences
109. Revocation of standard patent for non-working
110. Reasonable requirements of public deemed not to have been satisfied in
certain circumstances
111. Order not to be at variance with treaty
112. Avoidance of certain conditions attached to sale etc. of patented
articles
PART XIII-INFRINGEMENT OF PATENTS
113. Infringement action may be instituted in a prescribed court
114. Exclusive licensee may sue for infringement
115. Defendant may counter-claim for revocation
117. Procedure in action for infringement of patent
118. Relief in action for infringement of patent
119. Order revoking patent to be served on Commissioner
120. Declaration as to non-infringement
121. Groundless threats of legal proceedings
122. Counter-claim by defendant for infringement
123. Special provisions as to vessels, aircraft and land vehicles
124. Exemption of innocent infringer from liability for damages
PART XIV-THE CROWN
125. Use of inventions for services of the Commonwealth or a State
126. Declaration may be sought as to use of patented invention
127. Exclusive licensees
128. Forfeited articles
129. Acquisition of inventions and patents by the Commonwealth
130. Assignment of invention to Commonwealth
131. Prohibition of publication of information with respect to inventions
etc.
132. Interpretation
PART XV-PATENT ATTORNEYS
133. Registration of patent attorneys
134. Privileges
135. Removal from register
135A. Regulations with respect to the professional conduct of patent
attorneys
136. Unregistered person not to practise
137. Legal practitioners not to prepare specifications etc.
138. Carrying on business of deceased patent attorney
139. Attendance at patent attorney's office
PART XVI-INTERNATIONAL ARRANGEMENTS
140. Convention countries
141. Applications under International Conventions
142. Multiple priorities
142AA. Withdrawn application not to be used as basic application in certain
circumstances
142A. Partial priorities
143. Manner of making Convention application
144. Date of making application in Convention country
145. Disclosure in Convention applications
PART XVII-JURISDICTION AND POWERS OF COURTS
146. Jurisdiction of prescribed courts
147. Transfer of proceedings
148. Appeals
149. Intervention by Commissioner
150. Powers of prescribed courts
PART XVIIIA-APPLICATIONS FOR REVIEW OF CERTAIN DECISIONS BY
ADMINISTRATIVE APPEALS TRIBUNAL
151. Application for review
PART XVIII-MISCELLANEOUS
152. Devolution of patents
153. Co-ownership of patents
154. Power of Commissioner to give directions to co-owners
154A. Micro-organisms ceasing to be reasonably available
155. Refusal of certain applications
157. Invalid claim not to vitiate valid claim
157A. Construction of amended specification
158. Invention not anticipated or patent not invalid in certain cases
159. Certain objections not competent
159A. Priority date of certain amended claims
159B. Restriction on recovery of damages etc.
159C. Applications for licences
160. Extension of times by reason of errors
161. Examiners' reports to be communicated
162. Exercise of discretionary power by Commissioner
163. Determination of question of interest
164. Making and signing of application
165. Declaration by disabled person
166. Particulars of objections
167. Assessor
168. Costs where standard patent bad in part
169. Certificate of validity
170. Security for costs
171. Costs of attendance of patent attorney
172. Service of orders on appeal
172A. Service of documents
173. Improperly describing any office as the Patent Office
174. False representation as to patents and patented articles
174A. Certain offences indictable
175. Publication of journal, indexes etc.
176. Fees
177. Regulations
SCHEDULE 1
ACTS REPEALED
SCHEDULE 2
PATENT COOPERATION TREATY
SCHEDULE 3
BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICRO
ORGANISMS FOR THE PURPOSES OF PATENT PROCEDURE
PATENTS ACT 1952 - LONG TITLE SECT
An Act relating to Patents of Inventions
PATENTS ACT 1952 - PART I
PART I-PRELIMINARY
PATENTS ACT 1952 - SECT 1
Short titleSECT
1. This Act may be cited as the Patents Act 1952.*1* SEE NOTES TO FIRST ARTICLE OF THIS CHAPTER .
PATENTS ACT 1952 - SECT 2
CommencementSECT
2. This Act shall come into operation on a date to be fixed by Proclamation.*1* SEE NOTES TO FIRST ARTICLE OF THIS CHAPTER .
PATENTS ACT 1952 - SECT 4
RepealSECT
4. (1) The Acts specified in column 1 of Schedule 1 are repealed to the extent respectively specified in column 2 of Schedule 1. (2) The provisions of sections 97 to 100 (inclusive) of the Patents Act 1903-1950 continue, notwithstanding the repeal effected by sub-section (1), to apply in relation to inventions in respect of which directions have been given under section 96 of that Act.
PATENTS ACT 1952 - SECT 5
Application of ActSECT
5. (1) This Act applies to and in relation to all applications for patents lodged after the commencement of this Act and to and in relation to all patents granted on those applications. (2) This Act also applies to and in relation to patents granted under the repealed Acts.
(3) Subject to sections 50 and 50A of this Act, the repealed Acts apply, notwithstanding their repeal, to and in relation to all applications for patents lodged before the commencement of this Act and to the sealing of patents on those applications, but this Act applies to and in relation to the patents so sealed.
(4) The priority date of each claim of the complete specification of a patent referred to in sub-section (2) or (3) is-
(a) the date of the patent; or
(b) in the case of a single patent granted on 2 or more applications, the date of the application which was accompanied by the provisional specification to which the claim relates.
PATENTS ACT 1952 - SECT 6
InterpretationSECT
6. In this Act, unless the contrary intention appears-
"actual inventor" does not include a person merely importing an invention from abroad;
"Australia" includes Norfolk Island;
"Budapest Treaty" means the Budapest Treaty on the International Recognition of the Deposit of Micro Organisms for the purposes of Patent Procedure done at Budapest on 28 April 1977 (a copy of the English text of which is set out in Schedule 3), together with the Regulations annexed to that Treaty (a copy of the English text of which is also set out in Schedule 3) as affected by any amendments made under Article 12 of that Treaty;
"Convention application" means an application in relation to which Part XVI applies;
"Convention country" means a country in respect of which there is in force for the time being a regulation under section 140 declaring that country to be a Convention country for the purposes of this Act;
"date of application", or "date of the application", in relation to an application for a patent, means-
(a) in the case of an application which is post-dated under this Act, the
date to which the application is so post-dated; and
(b) in any other case, the date on which the application is lodged in the
Patent Office;
"depositary institution" means a body or institution that receives, accepts and stores micro-organisms and furnishes samples of micro-organisms;
"examination", in relation to an application for a standard patent and the complete specification lodged in respect of the application, means an examination of the application and complete specification in accordance with section 48 or a modified examination of the application and complete specification, and "examine" has a corresponding meaning;
"Examiner" means a Supervising Examiner of Patents, or an Examiner of Patents, holding office under this Act;
"exclusive licensee" means a licensee under a licence granted by the patentee which confers on the licensee, or on the licensee and persons authorized by him, the right to make, use, exercise and vend the patented invention, throughout Australia, to the exclusion of all other persons, including the patentee;
"Federal Court" means the Federal Court of Australia;
"international depositary authority" has the same meaning as in the Budapest Treaty;
"invention" means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention;
"legal practitioner" means a barrister or solicitor of the High Court or of the Supreme Court of a State or Territory;
"legal representative", in relation to a deceased person, means a person to whom Probate of the will of the deceased person, Letters of Administration of the estate of the deceased person or other like grant has been granted, whether in Australia or elsewhere, but does not include such a person who, by reason of the terms of the grant, is not entitled to do an act in relation to which the expression is used;
"licence" means a licence under a patent;
"modified examination", in relation to an application for a standard patent and the complete specification lodged in respect of the application, means an examination of the application and complete specification in accordance with section 52C;
"patent" means a standard patent or a petty patent;
"patent application" means an application for a standard patent or an application for a petty patent;
"patent of addition" means letters patent for an invention granted under Part VII of this Act or under Division 6 of Part IV of the repealed Acts;
"patented article" means an article in respect of which a patent has been granted and is still in force;
"patented process" means a process in respect of which a patent has been granted and is still in force;
"patentee" means the person for the time being entered on the Register as the grantee or proprietor of a patent;
"petty patent" means letters patent for an invention granted under section 62A;
"prescribed court" means the Federal Court, the Supreme Court of a State, the Supreme Court of the Australian Capital Territory, the Supreme Court of the Northern Territory of Australia or the Supreme Court of Norfolk Island;
"prescribed depositary institution" means-
(a) an international depositary authority, whether in or outside
Australia; or
(b) any other depositary institution in Australia that is prescribed for
the purposes of this paragraph;
"rules relating to micro-organisms" means such provisions of the Budapest Treaty, and such provisions made by or under regulations made in pursuance of paragraph 177 (1) (ae), as are applicable;
"standard patent" means letters patent for an invention granted under the repealed Acts or under this Act, but does not include a petty patent;
"State Patent Act" means a State Act relating to patents and includes regulations made under any such Act;
"the Commissioner" means the Commissioner of Patents or the Deputy Commissioner of Patents holding office under this Act and includes an Assistant Commissioner of Patents, or a Supervising Examiner of Patents, exercising powers or functions delegated to him under this Act;
"the Official Journal" means the Official Journal referred to in section 175;
"the Patent Office" means the Patent Office established under this Act;
"the Register" means the Register of Patents referred to in sub-section 20 (1);
"the repealed Acts" means the Acts repealed by this Act;
"the Statute of Monopolies" means the Imperial Act known as The Statute of Monopolies;
"this Act" includes the regulations.
PATENTS ACT 1952 - SECT 6A
References to prescribed courtSECT
6A. A reference in this Act to a prescribed court shall be read-
(a) in relation to the institution of an appeal or other proceeding, as a reference to a prescribed court having jurisdiction with respect to matters arising under this Act in respect of which the appeal or other proceeding is instituted; and
(b) in relation to the exercise of jurisdiction, as a reference to a prescribed court exercising jurisdiction in accordance with section 146.
PATENTS ACT 1952 - SECT 7
Crown to be boundSECT
7. This Act binds the Crown in right of the Commonwealth, of each of the States, of the Northern Territory and of Norfolk Island.
PATENTS ACT 1952 - SECT 8
Application of Act to Norfolk IslandSECT
8. (1) This Act extends to Norfolk Island. (2) An application for a patent is not receivable under a law (other than this Act) in force in Norfolk Island.
PATENTS ACT 1952 - SECT 9
No new application to be made under State ActsSECT
9. An application for a patent under a State Patent Act is not receivable.
PATENTS ACT 1952 - PART II
PART II-ADMINISTRATION
PATENTS ACT 1952 - SECT 10
Commissioner of Patents and other officersSECT
10. (1) There shall be a Commissioner of Patents, who shall, under the Minister, have the chief control of the Patent Office. (2) There shall be a Deputy Commissioner of Patents, who shall, subject to the control of the Commissioner of Patents, have all the powers and functions of the Commissioner of Patents under this Act, other than the powers of the Commissioner under section 11.
(3) Where, under this Act, the exercise of a power or function by the Commissioner, or the operation of a provision of this Act, is dependent upon the opinion, belief or state of mind of the Commissioner in relation to a matter, that power or function may be exercised by the Deputy Commissioner of Patents, or that provision may operate, as the case may be, upon the opinion, belief or state of mind of the Deputy Commissioner of Patents in relation to that matter.
(4) There shall be one or more Assistant Commissioners of Patents.
(5) There shall be so many Supervising Examiners of Patents and Examiners of Patents as are necessary.
(6) The persons holding office as Commissioner of Patents and Examiners of Patents (including Supervising Examiners of Patents) at the commencement of this Act shall continue to hold those offices respectively.
PATENTS ACT 1952 - SECT 11
Delegation by CommissionerSECT
11. (1) The Commissioner of Patents may, in relation to a particular matter or class of matters, by writing under his hand, delegate all or any of his powers or functions under this Act (except this power of delegation) to an Assistant Commissioner of Patents, or to a Supervising Examiner of Patents, so that the delegated powers and functions may be exercised by the delegate with respect to the matter or class of matters specified in the instrument of delegation. (2) A delegation under this section is revocable at will and no delegation prevents the exercise of a power or function by the Commissioner of Patents or by the Deputy Commissioner of Patents.
PATENTS ACT 1952 - SECT 12
Patent Office and sub-officesSECT
12. (1) For the purposes of this Act, there shall be an office which shall be known as the Patent Office. (2) There shall be a sub-office of the Patent Office in each State.
(3) A document required or permitted by this Act to be lodged at the Patent Office may be lodged at a sub-office of the Patent Office and a reference in this Act to lodgment of a document at or in the Patent Office or to delivery of a document by post to the Patent Office shall be read as including a reference to lodgment of the document at or in a sub-office of the Patent Office or to delivery of the document by post to a sub-office of the Patent Office, as the case may be.
PATENTS ACT 1952 - SECT 13
Seal of Patent OfficeSECT
13. There shall be a seal of the Patent Office and impressions of the seal shall be judicially noticed.
PATENTS ACT 1952 - SECT 14
Powers of CommissionerSECT
14. The Commissioner may, for the purposes of this Act-
(a) summon witnesses;
(b) receive evidence on oath, whether orally or otherwise;
(c) require the production of documents or articles; and
(d) award costs against a party to proceedings before him.
PATENTS ACT 1952 - SECT 15
Recovery of costs awarded by CommissionerSECT
15. Costs awarded by the Commissioner against a party may, in default of payment, be recovered in a court of competent jurisdiction as a debt due by the person against whom the costs were awarded to the person in whose favour they were awarded.
PATENTS ACT 1952 - SECT 16
Disobedience to summons an offenceSECT
16. (1) A person who has been summoned to appear as a witness before the Commissioner shall not, without lawful excuse, and after tender of reasonable expenses, fail to appear in obedience to the summons.
Penalty: $1,000 or imprisonment for 6 months, or both.(2) A person who has been required by the Commissioner to produce a document or article shall not, without lawful excuse, and after tender of reasonable expenses, fail to produce the document or article.
Penalty for contravention of this sub-section:
(a) in the case of a natural person-$1,000 or imprisonment for 6 months, or both; or
(b) in the case of a body corporate-$5,000.
PATENTS ACT 1952 - SECT 17
Refusal to give evidence an offenceSECT
17. A person who appears before the Commissioner shall not, without lawful excuse, refuse to be sworn or to make an affirmation, or to produce documents or articles, or to answer questions, which he is lawfully required to produce or answer.
Penalty: $1,000 or imprisonment for 6 months, or both.
PATENTS ACT 1952 - SECT 18
Officers not to traffic in inventionsSECT
18. (1) An officer or person employed in the Patent Office shall not buy, sell, acquire or traffic in an invention or patent, whether granted in Australia or elsewhere, or in a right to, or licence under, a patent, whether granted in Australia or elsewhere.
Penalty: $2,000.(2) A purchase, sale, acquisition, assignment or transfer made or entered into in contravention of this section is void.
(3) This section does not apply to the actual inventor or to an acquisition by bequest or devolution in law.
PATENTS ACT 1952 - SECT 19
Officers not to furnish information etc.SECT
19. (1) An officer or person employed in the Patent Office who, except when required or authorized by this Act, or under a direction in writing of the Commissioner or by order of a court, furnishes information on a matter that is being, or has been, dealt with under this Act or under the repealed Acts, is guilty of an offence punishable, on conviction, by a fine not exceeding $2,000 or imprisonment for a period not exceeding 12 months, or both. (1A) A person to whom section 71 of the Nuclear Non-Proliferation (Safeguards) Act 1987 applies who, except when required or authorised by that Act or this Act, or under a direction in writing of the Director of Safeguards or by order of a court, furnishes information on a matter that is being, or has been, dealt with under this Act, is guilty of an offence punishable, on conviction, by a fine not exceeding $2,000 or imprisonment for a period not exceeding 12 months, or both.
(2) An officer or person employed in the Patent Office who, except when required or authorized by this Act, or under a direction in writing of the Commissioner or by order of a court-
(a) prepares, or assists in the preparation of, a document required or permitted by or under this Act to be lodged in the Patent Office; or
(b) conducts a search in the records of the Patent Office, is guilty of an offence punishable, on conviction, by a fine not exceeding $1,000.
PATENTS ACT 1952 - PART III
PART III-THE REGISTER OF PATENTS
PATENTS ACT 1952 - SECT 20
Register of PatentsSECT
20. (1) There shall be kept at the Patent Office a Register of Patents, in which shall be entered-
(a) particulars of patents in force; and
(b) such other matters as are prescribed.(2) The Register of Patents kept under the repealed Acts shall be incorporated with and form part of the Register under this Act.
(3) A copy of the Register, or of such portion of the Register as the Commissioner directs, shall be kept at such places as the Commissioner directs.
PATENTS ACT 1952 - SECT 21
Registration of assignments, transmissions etc.SECT
21. Where a person becomes entitled to a patent by assignment, transmission or other operation of law, he shall apply to the Commissioner to register his title, and the Commissioner shall, on receipt of the application, and on proof to the satisfaction of the Commissioner of the title of the applicant, cause the applicant to be entered in the Register as the proprietor of the patent.
PATENTS ACT 1952 - SECT 22
Probate or Letters of Administration need not to be resealedSECT
22. Where a patentee has died, the Commissioner shall, subject to section 23, and notwithstanding section 25, on the application of the legal representative of the deceased patentee, if he is satisfied that the legal representative is entitled to be registered as the proprietor of the patent, register him accordingly.
PATENTS ACT 1952 - SECT 23
Registration of mortgages, licences etc.SECT
23. Where a person becomes entitled as mortgagee, licensee or otherwise to an interest in a patent, he shall apply to the Commissioner to register his title, and the Commissioner shall, on receipt of the application, and on proof to the satisfaction of the Commissioner of the title of the applicant, cause notice of the interest to be entered in the Register, together with particulars of the instrument creating the interest.
PATENTS ACT 1952 - SECT 24
Copies of deeds and documents to be suppliedSECT
24. Attested copies of all deeds and documents affecting the proprietorship of a patent or licence shall be supplied to the Commissioner in the prescribed manner and shall be filed in the Patent Office.
PATENTS ACT 1952 - SECT 25
Trusts not recognisedSECT
25. Notice of a trust, expressed, implied or constructive, relating to a patent or licence shall not be entered on the Register or be receivable by the Commissioner.
PATENTS ACT 1952 - SECT 26
Power of registered proprietor to deal with patentSECT
26. A patentee has, subject only to any rights appearing in the Register to be vested in some other person, power to deal with the patent as if he were the absolute owner of the patent and to give good discharges for any consideration for any such dealing.
PATENTS ACT 1952 - SECT 27
Exception in case of fraudSECT
27. Section 26 does not apply so as to protect a person dealing with a patentee otherwise than as a bona fide purchaser for value and without notice of any fraud on the part of the patentee and equities in relation to a patent may be enforced against the patentee except to the prejudice of a bona fide purchaser for value.
PATENTS ACT 1952 - SECT 28
Register to be open for inspectionSECT
28. Subject to this Act, the Register, and all documents filed in the Patent Office under this Part, shall, at all convenient times, be open for inspection by any person.
PATENTS ACT 1952 - SECT 29
Register and certified copies to be evidenceSECT
29. (1) The Register is prima facie evidence of all matters required or authorized by this Act to be entered in the Register. (2) The Commissioner may, subject to this Act, supply copies of or extracts from the Register, or of or from a document, abridgment, specification or publication in the Patent Office or the library of the Patent Office, certified by writing under his hand and the seal of the Patent Office, and any such copy or extract so certified and sealed is admissible in evidence in all courts and proceedings without further proof or production of the original.
(3) The Commissioner may, subject to this Act, certify, by writing under his hand and the seal of the Patent Office-
(a) that an entry, matter or thing required or permitted by or under this Act or the repealed Acts to be made or done, or not to be made or done, has, or has not, as the case may be, been made or done; or
(b) that a document, abridgment, specification or publication in the Patent Office, or in the library of the Patent Office, was made available for public inspection in the Patent Office, or in the library of the Patent Office, on the date specified in the certificate, and any such certificate is prima facie evidence of the statements contained in the certificate.
PATENTS ACT 1952 - SECT 30
Request for information as to patent applicationSECT
30. The Commissioner may, subject to this Act, furnish information as to a matter affecting or relating to-
(a) a patent;
(b) an application for a patent which is open to public inspection; or
(c) any other document, abridgment, specification or publication in the Patent Office or the library of the Patent Office.
PATENTS ACT 1952 - SECT 31
Unregistered instruments not to be admitted in evidenceSECT
31. A document or instrument in respect of which no entry has been made in the Register in accordance with the provisions of this Act is not, unless the court otherwise directs, admissible in evidence in a court in proof of the title to a patent or to an interest in a patent, except-
(a) in proceedings to enforce equities in relation to a patent or licence; or (b) in an application made under section 32.
PATENTS ACT 1952 - SECT 32
Rectification of RegisterSECT
32. (1) A prescribed court may, on the application of a person aggrieved by-
(a) the omission of an entry from the Register;
(b) an entry made in the Register without sufficient cause;
(c) an entry wrongly existing in the Register; or
(d) an error or defect in an entry in the Register, make such order as it thinks fit directing the rectification of the Register.(2) A prescribed court may, in proceedings under this section, decide any question which it is necessary or expedient to decide in connexion with the rectification of the Register.
(3) Notice of an application under this section shall be given to the Commissioner, who may appear and be heard, and shall appear if so directed by the prescribed court.
(4) An office copy of the order shall be served on the Commissioner, and the Commissioner shall, upon receipt of the order, rectify the Register accordingly.
PATENTS ACT 1952 - SECT 33
False entries in RegisterSECT
33. A person shall not wilfully-
(a) make or cause to be made a false entry in the Register; or
(b) produce or tender in evidence a document falsely purporting to be a copy of or extract from an entry in the Register or of or from a document in the Patent Office.
Penalty:
(a) in the case of a natural person-$5,000 or imprisonment for 2 years, or both; or
(b) in the case of a body corporate-$25,000.
PATENTS ACT 1952 - PART IV
PART IV-APPLICATIONS FOR PATENTS
PATENTS ACT 1952 - SECT 34
Who may apply for patentSECT
34. (1) Any of the following persons, whether an Australian citizen or not, may make an application for a patent:
(a) the actual inventor;
(b) the assignee of the actual inventor;
(c) the legal representative of a deceased actual inventor;
(d) the legal representative of a deceased assignee of the actual inventor;
(e) a person to whom the invention has been communicated by the actual inventor, his legal representative or assignee (if the actual inventor, his legal representative or assignee is not resident in Australia);
(f) the assignee of such a legal representative as is specified in paragraph (c) or (d);
(fa) a person who would, if a patent were granted upon an application made by a person referred to in any of the preceding paragraphs, be entitled to have the patent assigned to him; or
(g) the agent or attorney of a person referred to in any of the preceding paragraphs.(2) 2 or more persons may make a joint application for a patent and a patent may be granted to them jointly.
(3) An assignee of a part interest in an invention may make a joint application for a patent with any of the persons referred to in sub-section (1) and a patent may be granted to them jointly.
(4) Where, at any time before a patent has been granted, a person would, if the patent were then granted, be entitled, by virtue of an assignment or agreement made by the applicant or one of the applicants for the patent, or by operation of law, to the patent or to the interest of the applicant in the patent or to an undivided share in the patent or in that interest-
(a) the Commissioner may, upon a request being made as prescribed, direct that the application is to proceed in the name of the person or in the names of the person and the applicant or the other joint applicant or applicants, as the case requires; and
(b) upon such a direction being given, this Act applies as if the person were the applicant or one of the joint applicants, as the case requires.
PATENTS ACT 1952 - SECT 35
Form of applicationSECT
35.*2* and *3* (1) An application for a patent-
(a) shall be in respect of a manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies;
(b) shall be for one invention only;
(c) shall be made in the prescribed form;
(d) shall indicate that the application is an application for a standard patent or that the application is an application for a petty patent;
(e) shall be lodged by being left at or delivered by post to the Patent Office; and
(f) shall be accompanied by-
(i) in the case of an application for a standard patent-a provisional
specification or a complete specification; or
(ii) in the case of an application for a petty patent-a petty patent
specification.(2) The application shall be signed by the applicant.
(3) A declaration setting out the facts relied on to support the application shall be lodged before acceptance of the application.
(4) The declaration shall be made by the applicant, or, if the applicant is a body corporate by a person, authorized by the body corporate to make the declaration on its behalf.
(5) Where, in relation to an application for a patent, a micro-organism is deposited with a prescribed depositary institution for the purposes of section 40, there shall be lodged in accordance with the regulations such documents as are prescribed. *2* Sections 35 and 58E are amended by section 3 and the Schedule of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1983. The provisions of the Schedule applicable to sections 35 and 58E provide as follows:
"Paragraph 35 (1) (e)-
Omit 'and'.
"New paragraph 35 (1) (g)-
At the end of sub-section 35 (1), add the following word and paragraph:
'; and (g) where the application is accompanied by a complete specification
or a petty patent specification-shall, unless sub-section (1B) applies, be accompanied by an abstract, prepared in accordance with the regulations, of the specification.'.
"New sub-sections 35 (1A), (1B) and (1C)-
After sub-section 35 (1), insert the following sub-sections:
'(1A) The Commissioner may amend, or require the applicant to amend, an
abstract lodged in accordance with paragraph (1) (g).
'(1B) Where the application is accompanied by a complete specification or a petty patent specification and, on lodgment of the application, the applicant pays the fee prescribed for the purposes of this sub-section, an officer in the Patent Office shall prepare an abstract of the specification.
'(1C) An abstract prepared under paragraph (1) (g) or sub-section (1B)
shall not be taken into account in construing the specification to which it relates.'.
"Sub-section 58E (2)-
Omit 'and (f) and with the requirements of sub-section 35 (2)', substitute
', (f) and (g) and with the requirements of sub-sections 35 (1B) and (2)'."
Subsection 2 (11) of the Statute Law (Miscellaneous Provisions) Act (No. 2)
1983 provides as follows:
"(11) The amendments of sections 35 and 58E of the Patents Act 1952 made by
this Act shall come into operation on a date to be fixed by Proclamation."
As at 31 May 1988 no date had been fixed and the amendments are not
incorporated in this reprint.*3* Sections 35, 41, 54A and 177 are amended by section 3 and the Schedule of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1985. The provisions of the Schedule applicable to sections 35, 41, 54A and 177 provide as follows:
"Sub-section 35 (1A)-
Omit ', or require the applicant to amend,'.
"Sub-section 41 (1B)-
Omit ', or require the applicant to amend,'.
"Before sub-section 54A (2)-
Insert the following sub-section:
'(1B) An applicant is not entitled to make a request for the purposes of
sub-section (1) in relation to a complete specification if the abstract of the specification does not comply with the requirements of the regulations.'.
"Paragraph 177 (1) (ab)-
Insert 'or the abstract of that specification,' after 'as the case may
be,'."
Subsection 2 (9) of the Statute Law (Miscellaneous Provisions) Act (No. 2)
1985 provides as follows:
"(9) The following amendments of the Patents Act 1952 made by this Act:
(a) the amendments of sections 35, 41 and 177;
(b) the amendment inserting sub-section (1B) in section 54A,
shall come into operation on-
(c) the twenty-eighth day after the day on which this Act receives the Royal Assent; or
(d) the day fixed by Proclamation for the purposes of sub-section 2 (11) of
the Statute Law (Miscellaneous Provisions) Act (No. 2) 1983,
whichever is the later."
As at 31 May 1988 no date had been fixed for the purposes of subsection 2
(11) of the Statute Law (Miscellanous Provisions) Act (No. 2) 1983 and the amendments are not incorporated in this reprint.
PATENTS ACT 1952 - SECT 36
Date of applicationSECT
36. Subject to this Act, an application dates from the date when the application is lodged in the Patent Office.
PATENTS ACT 1952 - SECT 37
Withdrawal of applicationSECT
37. An application shall not be withdrawn except on a request signed by the applicant.
PATENTS ACT 1952 - SECT 38
Title of inventionSECT
38. A specification shall commence with a title indicating the subject matter to which the invention relates.
PATENTS ACT 1952 - SECT 39
Provisional specificationSECT
39. A provisional specification shall describe the invention.
PATENTS ACT 1952 - SECT 40
Contents of specificationSECT
40. (1) A complete specification-
(a) shall fully describe the invention, including the best method of performing the invention which is known to the applicant; and
(b) shall end with a claim or claims defining the invention.(1A) A petty patent specification-
(a) shall fully describe the invention, including the best method of performing the invention which is known to the applicant; and
(b) shall end with a single claim defining the invention.(2) The claim or claims shall be clear and succinct and shall be fairly based on the matter described in the specification.
(3) Where-
(a) the invention involves the use, modification or cultivation of a micro-organism other than a micro-organism referred to in sub-section (4);
(b) a person skilled in the art could not reasonably be expected to be able to perform the invention without having a sample of the micro-organism before commencing to perform the invention; and
(c) the micro-organism is not reasonably available to a person skilled in the art, the requirements of sub-section (5) shall be satisfied in relation to the micro-organism, and if, and only if, those requirements are satisfied, the specification shall, for the purposes of this Act, be taken to comply with paragraph (1) (a) or (1A) (a), as the case may be, to the extent that it is required by that paragraph to describe the micro-organism.(4) To the extent that the invention is a micro-organism, then, if the requirements of sub-section (5) are satisfied in relation to the micro-organism, the specification shall, for the purposes of this Act, be taken to comply with paragraph (1) (a) or (1A) (a), as the case may be, to the extent that it is required by that paragraph to describe the micro-organism.
(5) The requirements of this sub-section shall be taken to be satisfied in relation to a micro-organism to which a specification relates if, and only if-
(a) the micro-organism was, on or before the date of lodgment of the specification, deposited with a prescribed depositary institution in accordance with the rules relating to micro-organisms;
(b) the specification includes, at that date, such relevant information on the characteristics of the micro-organism as is known to the applicant;
(c) at all times since the expiration of the prescribed period commencing on that date, the specification has included the name of a prescribed depositary institution from which samples of the micro-organism are obtainable as provided by the rules relating to micro-organisms, the date on which the relevant deposit was made and the file, accession or registration number of the deposit given by the institution; and
(e) at all times since the date of lodgment of the specification, samples of the micro-organism have been obtainable from a prescribed depositary institution as provided by those rules.(6) For the purposes of sub-section (3), a micro-organism shall not be taken not to be reasonably available to a person by reason only that it is not so available in Australia.
(7) Where-
(a) at any time, the requirements of paragraph (5) (c) or (e) in relation to a micro-organism cease to be satisfied; and
(b) at a subsequent time, being a time within the appropriate prescribed period, steps have been taken in accordance with such provisions (if any) of the regulations as are applicable and, by reason of those steps, if the period between those times were disregarded, those requirements would be satisfied at that subsequent time,
those requirements shall, for the purposes of this Act, be deemed to have been satisfied during the period between those times, and such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention during the period between those times.
PATENTS ACT 1952 - SECT 41
Time for lodging complete specificationSECT
41.*3* and *4* (1) Subject to section 50A, if an applicant for a standard patent does not lodge a complete specification with his application, he may lodge it at any time within 12 months after the date of the application. (2) Unless a complete specification is lodged in accordance with this section the application shall lapse. *3* Sections 35, 41, 54A and 177 are amended by section 3 and the Schedule of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1985. The provisions of the Schedule applicable to sections 35, 41, 54A and 177 provide as follows:
"Sub-section 35 (1A)-
Omit ', or require the applicant to amend,'.
"Sub-section 41 (1B)-
Omit ', or require the applicant to amend,'.
"Before sub-section 54A (2)-
Insert the following sub-section:
'(1B) An applicant is not entitled to make a request for the purposes of
sub-section (1) in relation to a complete specification if the abstract of the specification does not comply with the requirements of the regulations.'.
"Paragraph 177 (1) (ab)-
Insert 'or the abstract of that specification,' after 'as the case may
be,'."
Subsection 2 (9) of the Statute Law (Miscellaneous Provisions) Act (No. 2)
1985 provides as follows:
"(9) The following amendments of the Patents Act 1952 made by this Act:
(a) the amendments of sections 35, 41 and 177;
(b) the amendment inserting sub-section (1B) in section 54A,
shall come into operation on-
(c) the twenty-eighth day after the day on which this Act receives the Royal Assent; or
(d) the day fixed by Proclamation for the purposes of sub-section 2 (11) of
the Statute Law (Miscellaneous Provisions) Act (No. 2) 1983,
whichever is the later."
As at 31 May 1988 no date had been fixed for the purposes of subsection 2
(11) of the Statute Law (Miscellanous Provisions) Act (No. 2) 1983 and the amendments are not incorporated in this reprint.*4* Sections 41 and 58C are amended by section 3 and the Schedule of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1984. The provisions of the Schedule applicable to sections 41 and 58C provide as follows:
"After sub-section 41 (1)-
Insert the following sub-sections:
'(1A) Where, after the lodgment of an application, a complete specification in respect of that application is lodged pursuant to sub-section (1), that complete specification shall, unless sub-section (1C) applies, be accompanied by an abstract, prepared in accordance with the regulations, of the specification.
'(1B) The Commissioner may amend, or require the applicant to amend, an
abstract lodged in accordance with sub-section (1A).
'(1C) Where, after the lodgment of an application, a complete specification in respect of that application is lodged pursuant to sub-section (1) and, on lodgment of the complete specification, the applicant pays the fee prescribed for the purposes of this sub-section, an officer in the Patent Office shall prepare an abstract of the specification.
'(1D) An abstract prepared under sub-section (1A) or (1C) shall not be
taken into account in construing the specification to which it relates.'.
"Sub-section 58C (1)-
Omit 'and (f) and with the requirements of sub-section 35 (2)', substitute
', (f) and (g) and with the requirements of sub-sections 35 (1B) and (2)'."
Subsection 2 (18) of the Statute Law (Miscellaneous Provisions) Act (No. 2)
1984 provides as follows:
"(18) The amendments of the Patents Act 1952 made by this Act (other than
the amendments of section 58A of the first-mentioned Act) shall come into operation, or be deemed to have come into operation, as the case requires, on the date fixed by Proclamation for the purposes of sub-section 2 (11) of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1983."
As at 31 May 1988 no date had been fixed for the purposes of subsection 2
(11) of the Statute Law (Miscellaneous Provisions) Act (No. 2) 1983 and the amendments are not incorporated in this reprint.
PATENTS ACT 1952 - SECT 42
Complete specification to be treated as provisionalSECT
42. (1) Where an application was accompanied by a specification purporting to be a complete specification, the applicant may, within 12 months after the date of the application, unless the application and complete specification have been accepted or have become open to public inspection, request the Commissioner to treat the specification as a provisional specification. (2) Upon such a request being made, the Commissioner may direct that the specification be treated as a provisional specification and, in that case, the specification shall, for the purposes of this Act, be deemed to be, and at all times to have been, a provisional specification.
PATENTS ACT 1952 - SECT 44
Each claim to have a priority dateSECT
44. (1) There shall be a priority date for each claim of a complete specification and for the claim of a petty patent specification. (2) Where a claim of a complete specification defines more than one form of an invention, the claim shall, for the purposes of the application of the provisions of this Act relating to the priority date of the claim, be deemed to constitute a separate claim in relation to each form of the invention that is so defined.
PATENTS ACT 1952 - SECT 45
Priority date of complete specificationSECT
45. (1) Subject to this Act, the priority date of a claim of a complete specification is the date of lodgment of that complete specification. (2) Subject to sub-section (3), the priority date of a claim of a complete specification received after a provisional specification, being a claim fairly based on matter disclosed in the provisional specification, is the date of lodgment of that provisional specification.
(3) The priority date of a claim of a complete specification accepted by the Commissioner under section 50 in respect of 2 or more provisional specifications, being a claim fairly based on matter disclosed in one or more of those provisional specifications, is the date of lodgment of the provisional specification in which that matter was first disclosed.
(3A) The priority date of a claim of a complete specification accompanying an application made under sub-section 49A (1) of the Patents Act 1952, as in force at any time before the commencement of section 17 of the Patents Amendment Act 1979, being a claim fairly based on matter disclosed in the complete specification from which the invention has been excluded by an amendment made under section 49 or 52D or would have been excluded if an amendment included in a statement of proposed amendments lodged under either of those sections had been made, is the date that would have been the priority date of that claim if that claim were a claim of that last-mentioned specification.
(4) The priority date of a claim of a complete specification lodged in respect of a further application for a standard patent made by virtue of section 51, being a claim fairly based on matter disclosed in-
(a) where the original application was an application for a petty patent-the petty patent specification lodged in respect of the original application; or
(b) where the original application was an application for a standard patent-the provisional specification or the complete specification lodged in respect of the original application, is-
(c) in a case to which paragraph (a) applies-the date that would have been the priority date of the claim if the claim were the claim of the petty patent specification referred to in that paragraph; and
(d) in a case to which paragraph (b) applies-
(i) if a complete specification was lodged in respect of the application
referred to in that paragraph-the date that would have been the priority date of the claim if the claim were a claim of that complete specification; and
(ii) if a complete specification was not lodged in respect of the
application referred to in that paragraph-the date that would have been the priority date of the claim if a complete specification had been lodged in respect of that application and the claim were a claim of that complete specification.(4AA) For the purposes of sub-section (4), a claim shall not be taken to be fairly based on matter disclosed in a petty patent specification or a complete specification if-
(a) the claim claims matter that involves the use, modification or cultivation of a micro-organism other than a micro-organism referred to in sub-section 40 (4);
(b) on the date of lodgment (in this sub-section referred to as the "lodgment date") of the further application referred to in sub-section (4) of this section, sub-section 40 (3) applied to the specification in relation to the micro-organism;
(c) where the lodgment date was after the expiration of the prescribed period referred to in paragraph 40 (5) (c)-some or all of the requirements of sub-section 40 (5) were not satisfied in relation to the specification in relation to the micro-organism as at the lodgment date; and
(d) where the lodgment date was before the expiration of the prescribed period referred to in paragraph 40 (5) (c)-some or all of the requirements of paragraphs 40 (5) (a), (b) and (e) were not satisfied in relation to the specification in relation to the micro-organism as at the lodgment date.(4A) Where a standard patent has been revoked in circumstances referred to in section 107, the priority date of a claim of a complete specification lodged in respect of an application made after the revocation by virtue of that section, being a claim fairly based on matter disclosed in the complete specification of the revoked patent, is the date that would have been the priority date of that claim if that claim were a claim of the complete specification of the revoked patent.
PATENTS ACT 1952 - SECT 45A
Priority date of petty patent specificationSECT
45A. (1) Subject to this Act, the priority date of the claim of a petty patent specification is the date of lodgment of the specification. (2) The priority date of the claim of a petty patent specification lodged in respect of a further application for a petty patent made by virtue of section 51, being a claim fairly based on matter disclosed in-
(a) where the original application was an application for a petty patent-the petty patent specification lodged in respect of the original application; or
(b) where the original application was an application for a standard patent-the provisional specification or the complete specification lodged in respect of the original application, is-
(c) in a case to which paragraph (a) applies-the date that would have been the priority date of the claim if the claim were the claim of the petty patent specification referred to in that paragraph; and
(d) in a case to which paragraph (b) applies-
(i) if a complete specification was lodged in respect of the application
referred to in that paragraph-the date that would have been the priority date of the claim if the claim were a claim of that complete specification; and
(ii) if a complete specification was not lodged in respect of the
application referred to in that paragraph-the date that would have been the priority date of the claim if a complete specification had been lodged in respect of that application and the claim were a claim of that complete specification.(2A) For the purposes of sub-section (2), a claim shall not be taken to be fairly based on matter disclosed in a petty patent specification or a complete specification if-
(a) the claim claims matter that involves the use, modification or cultivation of a micro-organism other than a micro-organism referred to in sub-section 40 (4);
(b) on the date of lodgment (in this sub-section referred to as the "lodgment date") of the further application referred to in sub-section (4) of this section, sub-section 40 (3) applied to the specification in relation to the micro-organism;
(c) where the lodgment date was after the expiration of the prescribed period referred to in paragraph 40 (5) (c)-some or all of the requirements of sub-section 40 (5) were not satisfied in relation to the specification in relation to the micro-organism as at the lodgment date; and
(d) where the lodgment date was before the expiration of the prescribed period referred to in paragraph 40 (5) (c)-some or all of the requirements of paragraphs 40 (5) (a), (b) and (e) were not satisfied in relation to the specification in relation to the micro-organism as at the lodgment date.(3) Where a petty patent has been revoked in circumstances referred to in section 107, the priority date of the claim of a petty patent specification lodged in respect of an application for a petty patent made after the revocation by virtue of that section, being a claim fairly based on matter disclosed in the petty patent specification of the revoked petty patent, is the date that would have been the priority date of that claim if that claim were a claim of the petty patent specification of the revoked petty patent.
PATENTS ACT 1952 - SECT 46
Validity of patent not affected by publication etc. after priority dateSECT
46. A patent is not invalid, so far as it relates to a claim of the complete specification or the claim of the petty patent specification, as the case may be, by reason only of-
(a) the publication or use of the invention in Australia, so far as claimed in that claim, on or after the priority date of that claim; or
(b) the grant of another patent which claims the invention, so far as claimed in the first-mentioned claim, in a claim of the same or a later priority date.
PATENTS ACT 1952 - SECT 47
Request for examination of standard patentSECT
47. An applicant for a standard patent may, at any time before the expiration of 5 years after the date of lodgment of the complete specification, request the making of an examination of the application and complete specification.
PATENTS ACT 1952 - SECT 47A
provided for in paragraph (d) could endanger the interests of actual or
potential depositors, he may convene the Assembly for a date earlier than the
date of the expiration of the six-month period provided for in paragraph (d).
(f) If the Assembly decides to terminate, or to limit to certain kinds of micro organisms, the status of international depositary authority, the said decision
shall become effective three months after the date on which it was made.
4.2 Communication; Effective Date; Processing of Communication
(a) The communication referred to in Article 8 (2) (a) shall be addressed to the Director General as provided in Rule 3.1 (a).
(b) The communication shall:
(i) indicate the name and address of the international depositary authority
concerned;
(ii) where it relates only to certain kinds of micro organisms, specify such
kinds;
(iii) where the Contracting State or intergovernmental industrial property
organisation making the communication desires that the effects provided for in
Article 8 (2) (b) take place on a date later than at the expiration of three
months from the date of the communication, indicate that later date.
(c) Where paragraph (b) (iii) applies, the effects provided for in Article 8
(2) (b) shall take place on the date indicated under that paragraph in the
communication; otherwise, they shall take place at the expiration of three
months from the date of the communication.
(d) The Director General shall promptly notify all Contracting States and
intergovernmental industrial property organisations of any communication
received under Article 8 (2) and of its effective date under paragraph (c). A
corresponding notice shall be promptly published by the International Bureau.
4.3 Consequences for Deposits
In the case of a termination of limitation of the status of international
depositary authority under Articles 8 (1), 8 (2), 9 (4) or 17 (4), Rule 5.1
shall apply, mutatis mutandis.
Rule 5
Defaults by the International Depositary Authority
5.1 Discontinuance of Performance of Functions in Respect of Deposited Micro
organisms
(a) If any international depositary authority temporarily or definitively
discontinues the performance of any of the tasks it should perform under the
Treaty and these Regulations in relation to any micro organisms deposited with
it, the Contracting State or intergovernmental industrial property organisation
which, in respect of that authority, has furnished the assurances under Article
6 (1) shall:
(i) ensure, to the fullest extent possible, that samples of all such micro
organisms are transferred promptly and without deterioration or contamination
from the said authority ("the defaulting authority") to another international
depositary authority ("the substitute authority");
(ii) ensure, to the fullest extent possible, that all mail or other
communications addressed to the defaulting authority, and all files and other
relevant information in the possession of that authority, in respect of the said micro organisms are promptly transferred to the substitute authority;
(iii) ensure, to the fullest extent possible, that the defaulting authority
promptly notifies all depositors affected of the discontinuance of the
performance of its functions and the transfers effected;
(iv) promptly notify the Director General of the fact and the extent of the
discontinuance in question and of the measures which have been taken by the said Contracting State or intergovernmental industrial property organisation under
(i) to (iii).
(b) The Director General shall promptly notify the Contracting States and the
intergovernmental industrial property organisations as well as the industrial
property offices of the notification received under paragraph (a) (iv); the
notification of the Director General and the notification received by him shall
be promptly published by the International Bureau.
(c) Under the applicable patent procedure it may be required that the depositor
shall, promptly after receiving the receipt referred to in Rule 7.5, notify to
any industrial property office with which a patent application was filed with
reference to the original deposit the new accession number given to the deposit
by the substitute authority.
(d) The substitute authority shall retain in an appropriate form the accession
number given by the defaulting authority, together with the new accession
number.
(e) In addition to any transfer effected under paragraph (a) (i), the defaulting authority shall, upon request by the depositor, transfer a sample of any micro
organism deposited with it to any international depositary authority indicated
by the depositor other than the substitute authority, provided that the
depositor pays any expenses to the defaulting authority resulting from the
transfer of that sample. The depositor shall pay the fee for the storage of the
said sample to the international depositary authority indicated by him.
(f) On the request of any depositor affected, the defaulting authority shall
retain, as far as possible, samples of the micro organisms deposited with it.
5.2 Refusal to Accept Certain Kinds of Micro organisms
(a) If any international depositary authority refuses to accept for deposit any
of the kinds of micro organisms which it should accept under the assurances
furnished, the Contracting State or intergovernmental industrial property
organisation which, in respect of that authority, has made the declaration
referred to in Article (7) (1) (a) shall promptly notify the Director General of the relevant facts and the measures which have been taken.
(b) The Director General shall promptly notify the other Contracting States and
intergovernmental industrial property organisations of the notification received under paragraph (a); the notification of the Director General and the
notification received by him shall be promptly published by the International
Bureau.
Rule 6
Making the Original Deposit or New Deposit
6.1 Original Deposit
(a) The micro organism transmitted by the depositor to the international
depositary authority shall, except where Rule 6.2 applies, be accompanied by a
written statement bearing the signature of the depositor and containing:
(i) an indication that the deposit is made under the Treaty;
(ii) the name and address of the depositor;
(iii) details of the conditions necessary for the cultivation of the micro
organism, for its storage and for testing its viability and also, where a
mixture of micro organisms is deposited, descriptions of the components of the
mixture and at least one of the methods permitting the checking of their
presence;
(iv) an identification reference (number, symbols, etc.) given by the
depositor to the micro organism;
(v) an indication of the properties of the micro organism which the
international depositary authority cannot be expected to foresee but which are
dangerous to health or the environment, particularly in the case of new micro
organisms.
(b) It is strongly recommended that the written statement referred to in
paragraph (a) should contain the scientific description and/or proposed
taxonomic designation of the deposited micro organism.
6.2 New Deposit
(a) Subject to paragraph (b), in the case of a new deposit made under Article 4, the micro organism transmitted by the depositor to the international depositary
authority shall be accompanied by a copy of the receipt of the original deposit, a copy of the most recent statement concerning the viability of the micro
organism originally deposited indicating that the micro organism is viable and a written statement bearing the signature of the depositor and containing:
(i) the indications referred to in Rule 6.1 (a) (i) to (v);
(ii) a declaration stating the reason relevant under Article 4 (1) (a) for
making the new deposit, the statement required under Article 4 (1) (c), and,
where applicable, an indication of the date relevant under Article 4 (1) (e);
(iii) where a scientific description and/or proposed taxonomic designation
was/were indicated in connection with the original deposit, the most recent
scientific description and/or proposed taxonomic designation as existing on the
date relevant under Article (4) (1) (e).
(b) Where the new deposit is made with the international depositary authority
with which the original deposit was made, paragraph (a) (i) shall not apply.
6.3 Requirements of the International Depositary Authority
(a) Any international depositary authority may require that the micro organism
be deposited in the form and quantity necessary for the purposes of the Treaty
and these Regulations and be accompanied by a form established by such authority and duly completed by the depositor for the purposes of the administrative
procedures of such authority.
(b) Any international depositary authority shall communicate any such
requirements and any amendments thereof to the International Bureau.
Rule 7
Receipt
7.1 Issuance of Receipt
The international depositary authority shall issue to the depositor, in respect
of each deposit of micro organism effected with it or transferred to it, a
receipt in attestation of the fact that it has received and accepted the micro
organism.
7.2 Form; Languages; Signature
(a) Any receipt referred to in Rule 7.1 shall be established on a form called an "international form," a model of which shall be established by the Director
General in those languages which the Assembly shall designate.
(b) Any words or letters filled in in the receipt in characters other than those of the Latin alphabet shall also appear therein transliterated in characters of
the Latin alphabet.
(c) The receipt shall bear the signature of the person or persons having the
power to represent the international depositary authority or that of any other
official of that authority duly authorised by the said person or persons.
7.3 Contents in the Case of the Original Deposit
Any receipt referred to in Rule 7.1 and issued in the case of an original
deposit shall indicate that it is issued by the depositary institution in its
capacity of international depositary authority under the Treaty and shall
contain at least the following indications:
(i) the name and address of the international depositary authority;
(ii) the name and address of the depositor;
(iii) the date of receipt of the micro organism by the international
depositary authority;
(iv) the identification reference (number, symbols, etc.) given by the
depositor to the micro organism;
(v) the accession number given by the international depositary authority to
the deposit;
(vi) where the written statement referred to in Rule 6.1 (a) contains the
scientific description and/or proposed taxonomic designation of the micro
organism, a reference to that fact.
7.4 Contents in the Case of the New Deposit
Any receipt referred to in Rule 7.1 and issued in the case of a new deposit
effected under Article 4 shall be accompanied by a copy of the receipt of the
original deposit and a copy of the most recent statement concerning the
viability of the micro organism originally deposited indicating that the micro
organism is viable, and shall at least contain:
(i) the indications referred to in Rule 7.3 (i) to (v);
(ii) an indication of the relevant reason and, where applicable, the relevant date as stated by the depositor in accordance with Rule 6.2 (a) (ii);
(iii) Where Rule 6.2 (a) (iii) applies, a reference to the fact that a
scientific description and/or a proposed taxonomic designation has/have been
indicated by the depositor;
(iv) the accession number given to the original deposit.
7.5 Receipt in the Case of Transfer
The international depositary authority to which samples of micro organisms are
transferred under Rule 5.1 (a) (i) shall issue to the depositor, in respect of
each deposit in relation with which a sample is transferred, a receipt
indicating that it is issued by the depositary institution in its capacity of
international depositary authority under the Treaty and containing at least:
(i) the indications referred to in Rule 7.3 (i) to (v);
(ii) the name and address of the international depositary authority from
which the transfer was effected;
(iii) the accession number given by the international depositary authority
from which the transfer was effected.
7.6 Communication of the Scientific Description and/or Proposed Taxonomic
Designation
On request of any party entitled to receive a sample of the deposited micro
organism under Rules 11.1, 11.2 or 11.3, the international depositary authority
shall communicate to such party the scientific description and/or proposed
taxonomic designation referred to in Rules 7.3 (vi) or 7.4 (iii).
Rule 8
Later Indication or Amendment of the Scientific Description and/or Proposed
Taxonomic Designation
8.1 Communication
(a) Where, in connection with the deposit of a micro organism, the scientific
description and/or taxonomic designation of the micro organism was/were not
indicated, the depositor may later indicate or, where already indicated, may
amend such description and/or designation.
(b) Any such later indication or amendment shall be made in a written
communication, bearing the signature of the depositor, addressed to the
international depositary authority and containing:
(i) the name and address of the depositor;
(ii) the accession number given by the said authority;
(iii) the scientific description and/or proposed taxonomic designation of the micro organism;
(iv) in the case of an amendment, the last preceding scientific description
and/or proposed taxonomic designation.
8.2 Attestation
The international depositary authority shall, on the request of the depositor
having made the communication referred to in Rule 8.1, deliver to him an
attestation showing the data referred to in Rule 8.1 (b) (i) to (iv) and the
date of receipt of such communication.
Rule 9
Storage of Micro organisms
9.1 Duration of the Storage
Any micro organism deposited with an international depositary authority shall be stored by such authority, with all the care necessary to keep it viable and
uncontaminated, for a period of at least five years after the most recent
request for the furnishing of a sample of the deposited micro organism was
received by the said authority and, in any case, for a period of at least 30
years after the date of the deposit.
9.2 Secrecy
No international depositary authority shall give information to anyone whether a micro organism has been deposited with it under the Treaty. Furthermore, it
shall not give any information to anyone concerning any micro organism deposited with it under the Treaty except to an authority, natural person or legal entity
which is entitled to obtain a sample of the said micro organism under Rule 11
and subject to the same conditions as provided in that Rule.
Rule 10
Viability Test and Statement
10.1 Obligation to Test
The international depositary authority shall test the viability of each micro
organism deposited with it:
(i) promptly after any deposit referred to in Rule 6 or any transfer
referred to in Rule 5.1;
(ii) at reasonable intervals, depending on the kind of micro organism and its possible storage conditions, or at any time, if necessary for technical reasons; (iii) at any time, on the request of the depositor.
10.2 Viability Statement
(a) The international depositary authority shall issue a statement concerning
the viability of the deposited micro organism:
(i) to the depositor, promptly after any deposit referred to in Rule 6 or
any transfer referred to in Rule 5.1;
(ii) to the depositor, on his request, at any time after the deposit or
transfer;
(iii) to any industrial property office, other authority, natural person or
legal entity, other than the depositor, to whom or to which samples of the
deposited micro organism were furnished in conformity with Rule 11, on his or
its request, together with or at any time after such furnishing of samples.
(b) The viability statement shall indicate whether the micro organism is or is
no longer viable and shall contain:
(i) the name and address of the international depositary authority issuing
it;
(ii) the name and address of the depositor;
(iii) the date of the deposit of the micro organism and of the transfer, if
any;
(iv) the accession number given by the said authority;
(v) the date of the test to which it refers;
(vi) information on the conditions under which the viability test has been
performed, provided that the said information has been requested by the party to which the viability statement is issued and that the results of the test were
negative.
(c) In the cases of paragraph (a) (ii) and (iii), the viability statement shall refer to the most recent viability test.
(d) As to form, languages and signature, Rule 7.2 shall apply, mutatis
mutandis, to the viability statement.
(e) In the case of paragraph (a) (i) or where the request is made by an
industrial property office, the issuance of the viability statement shall be
free of charge. Any fee payable under Rule 12.1 (a) (iii) in respect of any
other viability statement shall be chargeable to the party requesting the
statement and shall be paid before or at the time of making the request.
Rule 11
Furnishing of Samples
11.1 Furnishing of Samples to Interested Industrial Property Offices
Any international depositary authority shall furnish a sample of any deposited
micro organism to the industrial property office of any Contracting State or of
any intergovernmental industrial property organisation, on the request of such
office, provided that the request shall be accompanied by a declaration to the
effect that:
(i) an application referring to the deposit of that micro organism has been
filed with that office for the grant of a patent and that the subject matter of
that application involves the said micro organism or the use thereof;
(ii) such application is pending before that office or has led to the grant
of a patent;
(iii) the sample is needed for the purposes of a patent procedure having
effect in the said Contracting State or in the said organisation or its member
States;
(iv) the said sample and any information accompanying or resulting from it
will be used only for the purposes of the said patent procedure.
11.2 Furnishing of Samples to or with the Authorisation of the Depositor
Any international depositary authority shall furnish a sample of any deposited
micro organism:
(i) to the depositor, on his request;
(ii) to any authority, natural person or legal entity (hereinafter referred
to as "the authorised party"), on the request of such party, provided that the
request is accompanied by a declaration of the depositor authorising the
requested furnishing of a sample.
11.3 Furnishing of Samples to Parties Legally Entitled
(a) Any international depositary authority shall furnish a sample of any
deposited micro organism to any authority, natural person or legal entity
(hereinafter referred to as "the certified party"), on the request of such
party, provided that the request is made on a form whose contents are fixed by
the Assembly and that on the said form the industrial property office certifies:
(i) that an application referring to the deposit of that micro organism has
been filed with that office for the grant of a patent and that the subject
matter of that application involves the said micro organism or the use thereof;
(ii) that, except where the second phrase of (iii) applies, publication for
the purposes of patent procedure has been effected by that office;
(iii) either that the certified party has a right to a sample of the micro
organism under the law governing patent procedure before that office and, where
the said law makes the said right dependent on the fulfilment of certain
conditions, that that office is satisfied that such conditions have actually
been fulfilled or that the certified party has affixed his signature on a form
before that office and that, as a consequence of the signature of the said form, the conditions for furnishing a sample to the certified party are deemed to be
fulfilled in accordance with the law governing patent procedure before that
office; where the certified party has the said right under the said law prior to publication for the purposes of patent procedure by the said office and such
publication has not yet been effected, the certification shall expressly state
so and shall indicate, by citing it in the customary manner, the applicable
provision of the said law, including any court decision.
(b) In respect of patents granted and published by any industrial property
office, such office may from time to time communicate to any international
depositary authority lists of the accession numbers given by that authority to
the deposits of the micro organisms referred to in the said patents. The
international depositary authority shall, on the request of any authority,
natural person or legal entity (hereinafter referred to as "the requesting
party"), furnish to it a sample of any micro organism where the accession
number has been so communicated. In respect of deposited micro organisms whose
accession numbers have been so communicated, the said office shall not be
required to provide the certification referred to in Rule 11.3 (a).
11.4 Common Rules
(a) Any request, declaration, certification or communication referred to in
Rules 11.1, 11.2 and 11.3 shall be
(i) in English, French, Russian or Spanish where it is addressed to an
international depositary authority whose official language is or whose official
languages include English, French, Russian or Spanish, repectively, provided
that, where it must be in Russian or Spanish, it may be instead filed in English or French and, if it is so filed, the International Bureau shall, on the request of the interested party referred to in the said Rules or the international
depositary authority, establish, promptly and free of charge, a certified
translation into Russian or Spanish;
(ii) in all other cases, it shall be in English or French, provided that it
may be, instead, in the official language or one of the official languages of
the international depositary authority.
(b) Notwithstanding paragraph (a), where the request referred to in Rule 11.1 is made by an industrial property office whose official language is Russian or
Spanish, the said request may be in Russian or Spanish, respectively, and the
International Bureau shall establish, promptly and free of charge, a certified
translation into English or French, on the request of that office.
(c) Any request, declaration, certification or communication referred to in
Rules 11.1, 11.2 and 11.3 shall be in writing, shall bear a signature and shall
be dated.
(d) Any request, declaration or certification referred to in Rules 11.1, 11.2
and 11.3 (a) shall contain the following indications:
(i) the name and address of the industrial property office making the
request, of the authorised party or of the certified party, as the case may be;
(ii) the accession number given to the deposit;
(iii) in the case of Rule 11.1, the date and number of the application or
patent referring to the deposit;
(iv) in the case of Rule 11.3 (a), the indications referred to in (iii) and
the name and address of the industrial property office which has made the
certification referred to in the said Rule.
(e) Any request referred to in Rule 11.3 (b) shall contain the following
indications:
(i) the name and address of the requesting party;
(ii) the accession number given to the deposit.
(f) The container in which the sample furnished is placed shall be marked by the international depositary authority with the accession number given to the
deposit and shall be accompanied by a copy of the receipt referred to in Rule 7. (g) The international depositary authority having furnished a sample to any
interested party other than the depositor shall promptly notify the depositor in writing of that fact, as well as of the date on which the said sample was
furnished and of the name and address of the industrial property office, of the
authorised party, of the certified party or of the requesting party, to whom or
to which the sample was furnished. The said notification shall be accompanied by a copy of the pertinent request, of any declarations submitted under Rules 11.1
or 11.2 (ii) in connection with the said request, and of any forms or requests
bearing the signature of the requesting party in accordance with Rule 11.3.
(h) The furnishing of samples referred to in Rule 11.1 shall be free of charge.
Where the furnishing of samples is made under Rule 11.2 or 11.3, any fee payable under Rule 12.1 (a) (iv) shall be chargeable to the depositor, to the authorised party, to the certified party or to the requesting party, as the case may be,
and shall be paid before or at the time of making the said request.
Rule 12
Fees
12.1 Kinds and Amounts
(a) Any international depositary authority may, with respect to the procedure
under the Treaty and these Regulations, charge a fee:
(i) for storage;
(ii) for the attestation referred to in Rule 8.2;
(iii) subject to Rule 10.2 (e), first sentence, for the issuance of viability statements;
(iv) subject to Rule 11.4 (h), first sentence, for the furnishing of samples.
(b) The fee for storage shall be for the whole duration of the storage of the
micro organism as provided in Rule 9.1.
(c) The amount of any fee shall not vary on account of the nationality or
residence of the depositor or on account of the nationality or residence of the
authority, natural person or legal entity requesting the issuance of a viability statement or furnishing of samples.
12.2 Change in the Amounts
(a) Any change in the amount of the fees charged by any international depositary authority shall be notified to the Director General by the Contracting State or
intergovernmental industrial property organisation which made the declaration
referred to in Article 7 (1) in respect of that authority. The notification may, subject to paragraph (c), contain an indication of the date from which the new
fees will apply.
(b) The Director General shall promptly notify all Contracting States and
intergovernmental industrial property organisations of any notification received under paragraph (a) and of its effective date under paragraph (c); the
notification of the Director General and the notification received by him shall
be promptly published by the International Bureau.
(c) Any new fees shall apply as of the date indicated under paragraph (a),
provided that, where the change consists of an increase in the amounts of the
fees or where no date is so indicated, the new fees shall apply as from the
thirtieth day following the publication of the change by the International
Bureau.
Rule 13
Publication by the International Bureau
13.1 Form of Publication
Any publication by the International Bureau referred to in the Treaty or these
Regulations shall be made in the monthly periodical of the International Bureau
referred to in the Paris Convention for the Protection of Industrial Property.
13.2 Contents
(a) At least in the first issue of each year of the said periodical, an
up-to-date list of the international depositary authorities shall be published,
indicating in respect of each such authority the kinds of micro organisms that
may be deposited with it and the amount of the fees charged by it.
(b) Full information on any of the following facts shall be published once, in
the first issue of the said periodical published after the occurrence of the
fact:
(i) any acquisition, termination or limitation of the status of
international depositary authority, and the measures taken in connection with
that termination or limitation;
(ii) any extension referred to in Rule 3.3;
(iii) any discontinuance of the functions of an international depositary
authority, any refusal to accept certain kinds of micro organisms, and the
measures taken in connection with such discontinuance or refusal;
(iv) any change in the fees charged by an international depositary authority; (v) any requirements communicated in accordance with Rule 6.3 (b) and any
amendments thereof.
Rule 14
Expenses of Delegations
14.1 Coverage of expenses
The expenses of each delegation participating in any session of the Assembly and in any committee, working group or the meeting dealing with matters of concern
to the Union shall be borne by the State or organisation which has appointed it.
Rule 15
Absence of Quorum in the Assembly
15.1 Voting by Correspondence
(a) In the case provided for in Article 10 (5) (b), the Director General shall
communicate any decision of the Assembly (other than decisions relating to the
Assembly's own procedure) to the Contracting States which were not represented
when the decision was made and shall invite them to express in writing their
vote or abstention within a period of three months from the date of the
communication.
(b) If, at the expiration of the said period, the number of Contracting States
having thus expressed their vote or abstention attains the number of Contracting States which was lacking for attaining the quorum when the decision was made,
that decision shall take effect provided that at the same time the required
majority still obtains.
0
0
0