Patents Amendment Act 2001
No. 160, 2001
Patents Amendment Act 2001
No. 160, 2001
An Act to amend the Patents Act 1990, and for related purposes
Contents
1 Short title...................................
2 Commencement...............................
3 Schedule(s)..................................
Schedule 1—Amendments commencing on Proclamation
Part 1—Amendments relating to novelty, inventive step and innovative step
Patents Act 1990
Part 2—Other amendments
Patents Act 1990
Schedule 2—Amendments commencing after start of innovation patents scheme
Patents Act 1990
Patents Amendment Act 2001
No. 160, 2001
An Act to amend the Patents Act 1990, and for related purposes
[Assented to 1 October 2001]
The Parliament of Australia enacts:
1 Short title
This Act may be cited as the Patents Amendment Act 2001.
2 Commencement
(1) Subject to this section, this Act commences on the day on which it receives the Royal Assent.
(2) Subject to subsection (3), Schedule 1 commences on a day to be fixed by Proclamation.
(3) If Schedule 1 does not commence under subsection (2) within the period of 6 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period.
(4) Schedule 2 is taken to have commenced immediately after the commencement of the Patents Amendment (Innovation Patents) Act 2000.
3 Schedule(s)
Subject to section 2, each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
Schedule 1—Amendments commencing on Proclamation
Part 1—Amendments relating to novelty, inventive step and innovative step
Patents Act 1990
1 Paragraph 7(1)(b)
Omit “in the patent area”.
3 Subsection 7(2)
Omit all the words from and including “either” to the end of the subsection, substitute “.”.
4 Subsection 7(3)
Repeal the subsection, substitute:
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
6 Paragraph 7(5)(b)
Omit “in the patent area”.
7 Subsection 45(1A)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
8 Subsection 48(1A)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
9 Subsection 98(2)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
10 Subsection 101B(3)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
11 Subsection 101G(5)
Omit “anywhere in the patent area”, substitute “(whether in or out of the patent area)”.
12 Schedule 1 (subparagraph (a)(ii) of the definition of
Overview
The Patents Amendment Act 2001 No. 160 was enacted by the Parliament of Australia to address issues and gaps in the existing patent law framework, specifically targeting the criteria for novelty, inventive step, and innovative step, as well as the processes for patent applications, examinations, and re-examinations. The Act seeks to ensure that the patent system is robust and aligned with international standards, thereby protecting the intellectual property rights of inventors and fostering innovation. The amendments introduced by this Act are designed to modernise and streamline the patent application process, ensuring it is fair and efficient for both applicants and the patent office. The changes also reflect the need for greater transparency and accountability in the handling of patent applications and the management of prior art information.
Scope and Application
The Patents Amendment Act 2001 (No. 160, 2001) amends the Patents Act 1990 to enhance and refine the patent system in Australia. The Act applies to individuals and entities that are involved in patent applications, grants, and revocations within Australia, thereby covering the entire patent lifecycle. It affects various stakeholders including patent applicants, patentees, and the Commissioner of Patents. The Act introduces changes in the criteria for assessing novelty, inventive step, and innovative step of inventions, and also modifies procedures related to documentary searches, patent examination, and re-examination processes. Geographically, the Act operates within the Commonwealth of Australia, and its provisions are applicable to patents that are filed and granted under the Australian patent system. However, the Act does not specify any exclusions, exemptions, or thresholds in its primary text, and it does not explicitly extend or restrict its application through subordinate instruments. The amendments made by the Act are intended to ensure that the Australian patent system remains aligned with international standards and practices, while also addressing specific issues identified in the operation of the existing legislation.
Key Provisions
- The Patents Amendment Act 2001 (No. 160, 2001) amends the Patents Act 1990 in several key areas, primarily concerning the criteria for novelty, inventive step, and innovative step, as well as various procedural requirements for patent applications and grants. Under section 7(3) of the amended Act, the definition of prior art information is expanded to include any single piece of information or a combination of any two or more pieces of prior art information, provided the skilled person could reasonably have ascertained, understood, and regarded it as relevant. Amendments to sections 45(1A), 48(1A), 98(2), and 101B(3) broaden the scope of where prior art information can be found, extending beyond the patent area to anywhere in the world.
- The Act imposes several obligations on applicants and patentees. For instance, under section 45(3), applicants must inform the Commissioner of the results of any documentary searches conducted to assess the patentability of an invention. Similarly, under section 101D, patentees must also inform the Commissioner of such searches prior to the issue of a certificate of examination. Failure to comply with these information-provision requirements can result in significant legal consequences, such as the disallowance of amendments to a complete specification under section 102(2C). Additionally, section 119(2) introduces exceptions to the prohibition on making or using an invention without the patentee's consent, allowing for certain uses derived from publicly available information.
- The Act also establishes several offences and penalties for breaches. Under section 102(2C), an amendment to a complete specification is not allowable if the patentee or applicant failed to provide the necessary information and the amendment would remove a lawful ground of objection. Non-compliance with these requirements can lead to the disallowance of amendments and potential revocation of patents. Further, section 223(6A) stipulates that if the Commissioner is satisfied that an application would not be granted despite the absence of opposition, the application will be refused. This provision ensures that applications which do not meet the statutory criteria are not granted patents, thereby maintaining the integrity of the patent system.
- Finally, the Act provides for the extension of time limits for certain actions under section 223(2A), provided the applicant demonstrates due care in attempting to meet the original deadlines. This allows for some flexibility in the application process while ensuring that applicants remain diligent in meeting statutory requirements. Overall, the Patents Amendment Act 2001 aims to refine and clarify the criteria for patentability and the procedural obligations of applicants and patentees, thereby strengthening the patent system in Australia.
- Area of Law
- Intellectual Property Law
- Instrument
- Act
- Concepts
- Definitions & Interpretation
- Commencement Provisions
- Repeal & Amendment
- Compliance Obligations
- Regulatory Standards
- Patent Examination