Intellectual Property Laws Amendment Act 1998
No. 100, 1998
Intellectual Property Laws Amendment Act 1998
No. 100, 1998
An Act to amend the Copyright Act 1968, the Designs Act 1906, the Patents Act 1990 and the Trade Marks Act 1995, and for other purposes
Contents
1 Short title..................................1
2 Commencement..............................2
3 Schedule(s).................................2
Schedule 1—Extension of pharmaceutical patents 3
Patents Act 1990 3
Schedule 2—Patent attorneys and trade marks attorneys 12
Copyright Act 1968 12
Designs Act 1906 13
Patents Act 1990 13
Trade Marks Act 1995 21
Schedule 3—Miscellaneous amendments of the Patents Act 1990 26
Intellectual Property Laws Amendment Act 1998
No. 100, 1998
An Act to amend the Copyright Act 1968, the Designs Act 1906, the Patents Act 1990 and the Trade Marks Act 1995, and for other purposes
[Assented to 27 July 1998]
The Parliament of Australia enacts:
1 Short title
This Act may be cited as the Intellectual Property Laws Amendment Act 1998.
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 this Act receives the Royal Assent, Schedule 1 commences on the first day after the end of that period.
(4) Subject to subsection (5), Schedule 2 commences on a day to be fixed by Proclamation.
(5) If Schedule 2 does not commence under subsection (4) within the period of 6 months beginning on the day on which this Act receives the Royal Assent, Schedule 2 commences on the first day after the end of that period.
3 Schedule(s)
Subject to section 2, each Act that is specified in a Schedule to this Act is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms.
Schedule 1—Extension of pharmaceutical patents
Patents Act 1990
1 Section 3 (after the entry relating to “Australian continental shelf”)
Insert:
Australian Register of Therapeutic Goods |
2 Before section 69
Insert:
Division 1—Petty patents
3 After section 69
Insert:
Division 2—Standard patents relating to pharmaceutical substances
70 Applications for extension of patent
(1) The patentee of a standard patent may apply to the Commissioner for an extension of the term of the patent if the requirements set out in subsections (2), (3) and (4) are satisfied.
(2) Either or both of the following conditions must be satisfied:
(a) one or more pharmaceutical substances per se must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of the claim or claims of that specification;
(b) one or more pharmaceutical substances when produced by a process that involves the use of recombinant DNA technology,…
Overview
The Intellectual Property Laws Amendment Act 1998 (No. 100) was enacted by the Parliament of Australia to amend existing intellectual property laws and address certain gaps in the current legislative framework. This Act amended the Copyright Act 1968, the Designs Act 1906, the Patents Act 1990, and the Trade Marks Act 1995. One of the primary objectives of this Act was to extend the term of pharmaceutical patents, specifically addressing the time it takes for pharmaceutical substances to gain regulatory approval. By introducing provisions for patent term extensions in the Patents Act 1990, the Act aimed to better align patent protection with the lengthy regulatory processes associated with bringing new pharmaceuticals to market. Additionally, the Act introduced several other amendments to the relevant Acts, including changes to patent attorney and trade marks attorney regulations, modifications to fair dealing provisions in the Copyright Act 1968, and updates to the registration and professional conduct standards for patent and trade marks attorneys.
Scope and Application
The Intellectual Property Laws Amendment Act 1998 is an Australian Commonwealth Act that amends various intellectual property laws, specifically the Copyright Act 1968, the Designs Act 1906, the Patents Act 1990, and the Trade Marks Act 1995. The Act applies to entities and individuals engaged in activities related to intellectual property, including patentees, patent and trade marks attorneys, and those involved in the registration and administration of patents and trade marks. It extends to all states and territories within Australia, as it is a Commonwealth Act. The Act includes provisions for extensions of pharmaceutical patents, the registration and conduct of patent and trade marks attorneys, and miscellaneous amendments to the Patents Act 1990. Notably, the Act does not explicitly state exclusions or thresholds; however, its provisions are subject to specific conditions and requirements detailed within the Act, such as the criteria for patent term extensions and the qualifications for registration as a patent or trade marks attorney. The Act also allows for further regulation and specification through subordinate instruments, such as regulations that govern the conduct of patent and trade marks attorneys and the procedures for patent registration and extension applications.
Key Provisions
- The Intellectual Property Laws Amendment Act 1998 introduces several significant changes to existing intellectual property legislation, primarily focusing on the Patents Act 1990. Section 3 of the Patents Act 1990 is amended to include the Australian Register of Therapeutic Goods, which is crucial for the extension of pharmaceutical patents. Under section 70, a patentee may apply for an extension of the term of a standard patent if certain conditions are met, such as the disclosure of pharmaceutical substances in the patent specification and the inclusion of these substances in the Australian Register of Therapeutic Goods. The application process, outlined in section 71, requires submission of the application within six months after the latest relevant date, and the Commissioner must notify the public of the application and any decisions made. Refusal or acceptance of an application is detailed in sections 74 and 75, with the possibility of opposition and appeal. If an extension is granted under section 76, the term of the extension is calculated based on the period from the patent date to the earliest regulatory approval date, reduced by five years, but not exceeding five years. Section 78 clarifies that certain uses of the pharmaceutical substances are not considered infringements during the extension term. Penalties for breaches of the Act are specified, with offences carrying a maximum penalty of 30 penalty units unless otherwise noted.
- The Act also imposes obligations on the parties it governs. For instance, under section 70(2), patentees must ensure that their applications for patent extensions meet the specified conditions. The Commissioner's role, detailed in sections 74 and 75, involves accepting or refusing applications, deciding on oppositions, and notifying the public of decisions. Section 76A further specifies that the Commissioner must not make a decision on an extension if court proceedings related to the patent are pending without court leave.
- In terms of offences, penalties, and consequences, section 202A imposes a penalty of 30 penalty units for members of partnerships who prepare specifications or documents relating to patents without supervision by a registered patent attorney, unless the amendment is directed by a court order. Section 156 of the Trade Marks Act 1995 imposes a penalty of 30 penalty units for individuals who describe themselves as trade marks attorneys without being registered. Additionally, section 185 of the Patents Act 1990 imposes a penalty of 10 penalty units for certain unauthorized actions by the Commissioner, Deputy Commissioner, or employees, such as preparing specifications or searching records outside their official capacity. These penalties underscore the importance of adhering to the regulatory requirements and professional standards set forth by the Act.
- Area of Law
- Intellectual Property Law
- Instrument
- Act
- Concepts
- Definitions & Interpretation
- Commencement Provisions
- Regulatory Standards
- Licensing & Registration
- Reporting & Disclosure Obligations
- Enforcement Powers
