Intellectual Property Laws Amendment Act 2003

Administered by Department of Industry, Science and Resources

Legislation au C2004A01132 In force Act

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No. 48, 2003

An Act to amend legislation relating to intellectual property, and for related purposes

Contents

1 Short title

2 Commencement

3 Schedule(s)

Schedule 1—Amendments relating to extensions of time

Designs Act 1906

Patents Act 1990

Trade Marks Act 1995

Schedule 2—Other amendments

Part 1—Disclosure of searches

Patents Act 1990

Part 2—Definition of employee

Trade Marks Act 1995

Part 3—Technical amendment

Patents Amendment (Innovation Patents) Act 2000

Intellectual Property Laws Amendment Act 2003

No. 48, 2003

An Act to amend legislation relating to intellectual property, and for related purposes

[Assented to 26 June 2003]

The Parliament of Australia enacts:

1 Short title

This Act may be cited as the Intellectual Property Laws Amendment Act 2003.

2 Commencement

(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, on the day or at the time specified in column 2 of the table.

Commencement information
Column 1	Column 2	Column 3
Provision(s)	Commencement	Date/Details
1. Sections 1 to 3 and anything in this Act not elsewhere covered by this table	The day on which this Act receives the Royal Assent	26 June 2003
2. Schedule 1	The 28th day after the day on which this Act receives the Royal Assent	24 July 2003
3. Schedule 2, Part 1	A single day to be fixed by Proclamation, subject to subsection (3)	26 August 2003
4. Schedule 2, Part 2	The 28th day after the day on which this Act receives the Royal Assent	24 July 2003
5. Schedule 2, Part 3	Immediately after the time specified in the Patents Amendment (Innovation Patents) Act 2000 for the commencement of item 3 of Schedule 1 to that Act	24 May 2001

Note: This table relates only to the provisions of this Act as originally passed by the Parliament and assented to. It will not be expanded to deal with provisions inserted in this Act after assent.

(2) Column 3 of the table is for additional information that is not part of this Act. This information may be included in any published version of this Act.

(3) If a provision covered by item 3 of the table does not commence within the period of 2 months beginning on the day on which this Act receives the Royal Assent, it commences on the first day after the end of that period.

3 Schedule(s)

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 relating to extensions of time

Designs Act 1906

1 Subsection 27B(1)

Repeal the subsection, substitute:

(1) The Registrar must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:

(a) the Registrar or a Deputy Registrar; or

(b) a person employed in the Designs Office; or

Patents Act 1990

2 Subsection 223(1)

Repeal the subsection, substitute:

(1) The Commissioner must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:

(a) the Commissioner or a Deputy Commissioner; or

(b) an employee; or

Trade Marks Act 1995

3 Reader’s Guide (list of terms defined in section 6)

Omit “trade marks officer”.

4 Section 6 (definition of trade marks officer)

Repeal the definition.

5 Subsection 224(1) (including the note)

Repeal the subsection, substitute:

(1) The Registrar must extend the time for doing a relevant act that is required by this Act to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:

(a) the Registrar or a Deputy Registrar; or

(b) an employee; or

Schedule 2—Other amendments

Part 1—Disclosure of searches

Patents Act 1990

1 Section 3 (list of definitions)

Insert “foreign patent office”.

2 Subsection 45(3)

Repeal the subsection, substitute:

(3) The applicant must inform the Commissioner, in accordance with the regulations, of the results of the following searches carried out for the purpose of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia:

(a) any documentary searches by, or on behalf of, a foreign patent office, other than searches prescribed by the regulations;

(b) the documentary searches prescribed by the regulations.

(4) Subsection (3) only applies to searches completed before the grant of the patent.

(5) In subsection (4):

completed, in relation to a search, has the meaning prescribed by the regulations.

3 Section 101D

Repeal the section, substitute:

101D Commissioner to be given information on searches

(1) The patentee must inform the Commissioner, in accordance with the regulations, of the results of the following searches carried out for the purpose of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia:

(a) any documentary searches by, or on behalf of, a foreign patent office, other than searches prescribed by the regulations;

(b) the documentary searches prescribed by the regulations.

(2) Subsection (1) only applies to searches completed before the issue of a certificate of examination in respect of the patent.

(3) In subsection (2):

completed, in relation to a search, has the meaning prescribed by the regulations.

4 Schedule 1 (Dictionary)

Insert:

foreign patent office means an office, organisation or other body that may grant protection in respect of an invention in a foreign country.

5 Application

(1) The amendment made by item 2 of this Schedule applies in relation to an application if the patent request and complete specification in relation to that application had not been accepted under subsection 49(1) of the Patents Act 1990 before 1 April 2002.

(2) The amendment made by item 3 of this Schedule applies in relation to an innovation patent unless the Commissioner had started examination of the patent under section 101B of the Patents Act 1990 before 1 April 2002.

(3) For the purposes of subitem (1), information given before commencement under old subsection 45(3) is taken to be information given under new subsection 45(3).

(4) For the purposes of subitem (2), information given before commencement under old section 101D is taken to be information given under new section 101D.

(5) In this item:

commencement means the time of commencement of Part 1 of this Schedule.

new section 101D means section 101D of the Patents Act 1990 as in force immediately after commencement.

new subsection 45(3) means subsection 45(3) of the Patents Act 1990 as in force immediately after commencement.

old section 101D means section 101D of the Patents Act 1990 as in force immediately before commencement.

old subsection 45(3) means subsection 45(3) of the Patents Act 1990 as in force immediately before commencement.

Part 2—Definition of employee

Trade Marks Act 1995

6 Section 6 (definition of employee)

Repeal the definition, substitute:

employee means a person, other than the Registrar or a Deputy Registrar, who:

(a) is a person engaged under the Public Service Act 1999 and is employed in the Trade Marks Office; or

(b) is not such a person but performs services, in the Trade Marks Office, for or on behalf of the Commonwealth.

7 Subsection 206(1)

Omit “class, employed in the Trade Marks Office”, substitute “class”.

Part 3—Technical amendment

Patents Amendment (Innovation Patents) Act 2000

8 Item 3 of Schedule 1

After “section” insert, “(other than Tables 1 and 2)”.

[Minister’s second reading speech made in—

House of Representatives on 27 June 2003

Senate on 16 June 2003]

(147/02)

Overview

The Intellectual Property Laws Amendment Act 2003, assented to on 26 June 2003 by the Parliament of Australia, was enacted to amend legislation concerning intellectual property, and to address various gaps and technical issues in existing laws. This Act brings forth a series of amendments to the Designs Act 1906, the Patents Act 1990, and the Trade Marks Act 1995, aimed at enhancing the administrative processes and the accuracy of intellectual property management. The Act introduces changes such as extending time limits for certain actions due to errors or omissions, updating definitions to ensure clarity, and incorporating technical amendments to previous legislation. The primary objective of these amendments is to improve the efficiency and effectiveness of the intellectual property system in Australia, ensuring that it remains robust and responsive to contemporary needs.

Scope and Application

The Intellectual Property Laws Amendment Act 2003 is a Commonwealth Act that amends various pieces of legislation related to intellectual property, including the Designs Act 1906, the Patents Act 1990, and the Trade Marks Act 1995. The Act applies to a range of entities including the Registrars of Designs, Patents, and Trade Marks, as well as employees and individuals providing services to these offices. It also applies to applicants and patentees under the Patents Act 1990. The amendments primarily address procedural aspects such as the extension of time limits for certain acts due to errors or omissions by the respective offices or their personnel, and the disclosure of search results for patentability assessments conducted by foreign patent offices. The Act extends its application across the Commonwealth of Australia, and its provisions commence on various dates, with some sections starting on the day of Royal Assent and others on specified future dates. The Act does not explicitly state any exclusions or thresholds, but it does include transitional provisions to ensure the smooth implementation of its amendments. The Act may also be extended or restricted through subordinate instruments, such as regulations, which would need to be enacted under the authority of the respective Acts it amends.

Key Provisions

The Intellectual Property Laws Amendment Act 2003 (C2004A01132) introduces several amendments to existing intellectual property legislation. Key sections include the amendments to the Designs Act 1906, the Patents Act 1990, and the Trade Marks Act 1995. The Act also introduces new provisions regarding the disclosure of searches and the definition of certain terms. Section 1 of the Act specifies that it may be cited as the Intellectual Property Laws Amendment Act 2003. The commencement of the Act's provisions is staggered, with different sections and schedules coming into effect on various dates following Royal Assent. Under the Act, the main operative sections require the Registrar or Commissioner to extend time limits for certain actions if they are not met due to errors or omissions by specific individuals or entities. For instance, under the Designs Act 1906 (subsection 27B(1)), the Registrar must extend the time if the delay is due to an error by the Registrar, a Deputy Registrar, an employee, or a service provider. Similar provisions are introduced in the Patents Act 1990 (subsection 223(1)) and the Trade Marks Act 1995 (subsection 224(1)). Additionally, the Act removes the definition of "trade marks officer" from the Trade Marks Act 1995 and amends the definition of "employee" to clarify who is considered an employee for the purposes of the Act. The Act imposes several obligations on the parties it governs. For example, under the Patents Act 1990, applicants and patentees are required to inform the Commissioner of the results of certain searches conducted for assessing patentability. These searches include documentary searches by foreign patent offices and those prescribed by regulations. Furthermore, the Act mandates that information about these searches must be provided in accordance with the regulations and only applies to searches completed before specific events, such as the grant of a patent or the issue of a certificate of examination. Breach of the obligations set out in the Act can lead to various consequences. For example, failure to comply with the disclosure requirements for patent searches could result in the patent being deemed invalid or unenforceable. However, the Act does not explicitly outline specific penalties for non-compliance in these areas. Instead, penalties and consequences for breaches of intellectual property laws generally are outlined in the respective Acts being amended, such as the Patents Act 1990, which includes provisions for fines and imprisonment for serious infringements.

Area of Law: Intellectual Property Law
Instrument: Act
Concepts: Commencement Provisions; Definitions & Interpretation; Repeal & Amendment; Reporting & Disclosure Obligations

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Sourced from the Federal Register of Legislation at 26 August 2026. For the latest information on Australian Government law please go to https://www.legislation.gov.au.

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