Patents Act 1946

Legislation au C1946A00038 Not in force Act

Legislation content

PATENTS.

 

No. 38 of 1946.

An Act to amend the Patents Act 1903-1935, and for other purposes.

[Assented to 14th August, 1946.]

[Date of commencement, 11th September, 1946.]

BE it enacted by the King’s Most Excellent Majesty, the Senate, and the House of Representatives of the Commonwealth of Australia, as follows:—

Short title and citation.

1.—(1.) This Act may be cited as the Patents Act 1946.

(2.) The Patents Act 1903-1935 is in this Act referred to as the Principal Act.

(3.) The Principal Act, as amended by this Act, may be cited as the Patents Act 1903-1946.

2. After section thirty-eight of the Principal Act the following section is inserted:—

Publication of complete specifications.

“38a.—(1.) After a complete specification has been lodged, the Commissioner shall publish in The Australian Official Journal of Patents, Trade Marks and Designs a notification that the complete specification is open to public inspection and thereupon the application, complete specification and provisional specification (if any) shall be open to public inspection.

“(2.) When a complete specification has become open to public inspection in pursuance of the last preceding sub-section it shall be deemed to have been published.

“(3.) The application of this section shall extend to complete specifications lodged before the date of commencement of this section, except complete specifications which have become open to public inspection before that date or in respect of which the applications have lapsed, or have been refused, abandoned or withdrawn, before that date.”.


Examiner to report as to compliance with prescribed conditions.

3. Section thirty-nine of the Principal Act is amended by adding at the end thereof the following sub-section:—

“(2.) Nothing in the last preceding sub-section shall require the Commissioner to refer an application and provisional specification to an examiner until the complete specification has been lodged.”.

Acceptance to be advertised.

4. Section fifty of the Principal Act is amended by omitting all the words after the word “manner”.

5. Section fifty-two of the Principal Act is repealed and the following section inserted in its stead:—

Provisional specification not to be published in certain cases.

“52. Where an application in respect of which a complete specification has not been lodged has lapsed, or has been abandoned or withdrawn, the application and provisional specification shall not at any time be open to public inspection or be published.”.

Effect of publication of complete specifications.

6. Section fifty-four of the Principal Act is amended by omitting the word “acceptance” (wherever occurring) and inserting in its stead the word “publication”.

7. Section ninety-one a of the Principal Act is repealed and the following section inserted in its stead:—

Groundless threats of legal proceedings.

“91a.—(1.) Where any person, by means of circulars, advertisements or otherwise threatens any person with any action or proceedings for infringement of a patent, or other like proceedings, then whether the person making the threats is or is not entitled to or interested in a patent, or is or is not interested in an application for a patent, any person aggrieved thereby may bring an action against him and may obtain a declaration to the effect that the threats are unjustifiable and an injunction against the continuance of the threats, and may recover such damages (if any) as he has sustained thereby, unless the person making the threats satisfies the court that the acts in respect of which the proceedings were threatened constitute or if done would constitute—

(a) an infringement of a patent in respect of a claim in the specification which is not shown by the plaintiff to be invalid; or

(b) an infringement of rights arising from the publication of the complete specification in respect of a claim therein which is not shown to be one which would be invalid if a patent had been granted in respect thereof.

“(2.) Nothing in this section shall render any solicitor or patent attorney, in respect of any act done by him in his professional capacity on behalf, and with the written or telegraphed authority, of his client, liable to any action or proceeding under this section, provided that the solicitor or patent attorney produces the authority for inspection by the person threatened or satisfies the court that the authority was received by him but has been inadvertently lost or destroyed.”.


8. After section one hundred and twelve a of the Principal Act the following section is inserted:—

False representation as to patents and patented articles.

“112b.—(1.) A person shall not falsely represent that he or any other person is the patentee of an invention.

Penalty: One hundred pounds.

“(2.) A person shall not falsely represent that any article sold by him is patented in Australia or is the subject of an application for a patent in Australia.

Penalty: One hundred pounds.

“(3.) For the purposes of this section-

(a) a person shall be deemed to represent that an article is patented in Australia if there are stamped, engraved or impressed on, or otherwise applied to, the article the word ‘patent’ or ‘patented’, the words ‘provisional patent’, or any other word or words expressing or implying that a patent for the article has been obtained in Australia; and

(b) a person shall be deemed to represent that an article is the subject of an application for a patent in Australia if there are stamped, engraved or impressed on, or otherwise applied to, the article the words ‘patent applied for’, ‘patent pending’ or any other word or words implying that an application for a patent for the article has been made in Australia.”.

International arrangements for protection of inventions.

9. Section one hundred and twenty-one of the Principal Act is amended—

(a) by omitting the second proviso to sub-section (1.);

(b) by adding at the end of sub-section (3.) the words “and must be accompanied by a complete specification”; and

(c) by omitting sub-section (5.).

Provisions with respect to damages for infringement in certain cases.

10. Where a patent is granted upon an application made under section one hundred and twenty-one of the Principal Act and the specification accompanying that application became open to public inspection before the date of commencement of this section, the patentee shall not be entitled to recover damages for infringements happening prior to the date of commencement of this section or the date of acceptance of the application and complete specification, whichever is the earlier.

Certain orders not affected.

11. Nothing in the Principal Act as amended by this Act shall affect the operation of any order continued in force by regulation three of the National Security (Industrial Property) Regulations or made under regulation five of those Regulations.

Overview

The Patents Act 1946 was enacted to amend the Patents Act 1903-1935, addressing various issues and gaps in the existing legislation. This Act, assented to on 14th August 1946 and commenced on 11th September 1946, was brought into law by the King’s Most Excellent Majesty, the Senate, and the House of Representatives of the Commonwealth of Australia. Its primary aim was to refine and update the patent laws, ensuring they remained effective and relevant in the context of technological advancements and economic considerations of the time. The policy objective was to streamline the patent application process, provide clarity on the publication of complete specifications, and protect against unjustifiable threats of patent infringement. By introducing these amendments, the Act sought to foster innovation while safeguarding the rights of patent holders and the public from misleading representations. The Patents Act 1946 introduced several key provisions to enhance the patent system. These included measures for the publication of complete specifications, which mandated that such specifications be made available for public inspection after being lodged. Additionally, it addressed the issue of groundless threats of legal proceedings related to patents by allowing aggrieved parties to seek legal recourse against such threats. The Act also prohibited false representations about patent status and ownership to prevent consumer deception. These updates were intended to create a more transparent and equitable patent framework, balancing the interests of inventors, businesses, and the public.

Scope and Application

The Patents Act 1946 applies to all persons and entities within the Commonwealth of Australia who are involved in the process of patenting inventions, including applicants, patent agents, and patentees. The Act governs the entire patenting process, from the lodgement of applications and specifications, through to the publication of patents, enforcement, and remedies for infringement. The geographic scope of the Act is limited to Australia, and it applies to all patents and patent applications filed within its jurisdiction. The Act provides for certain exclusions and exemptions, including provisions that protect patent attorneys and solicitors from liability when acting within the scope of their professional duties and with proper authority. The Act also includes provisions for international arrangements to protect inventions, and it specifies that certain orders made under the National Security (Industrial Property) Regulations are not affected by the amendments introduced by this Act. The application of the Act may be extended or restricted through subordinate instruments, such as regulations or guidelines, which may provide further detail on specific aspects of the patenting process.

Key Provisions

The Patents Act 1946 introduces several key provisions to the existing Patents Act 1903-1935. Firstly, it mandates the publication of complete specifications. After a complete specification is lodged, the Commissioner is required to publish a notification in The Australian Official Journal of Patents, Trade Marks and Designs, making the application, complete specification, and provisional specification open to public inspection (Section 38a). This publication is deemed to have occurred when the notification is made, and this applies to specifications lodged before the date of commencement of this section, except for those that were already open to the public, or for which applications had lapsed, been refused, abandoned, or withdrawn before that date. The Act also modifies the role of the examiner in the patent application process. It clarifies that the Commissioner is not required to refer an application and provisional specification to an examiner until the complete specification has been lodged (Section 39). Furthermore, it mandates that acceptance of an application be advertised in a specified manner (Section 50). Where an application for a patent has lapsed, been abandoned, or withdrawn without a complete specification being lodged, the application and provisional specification are not to be published or open to public inspection (Section 52). In terms of legal recourse, the Act allows any person aggrieved by groundless threats of legal proceedings related to patent infringement to bring an action against the person making such threats. The aggrieved party may obtain a declaration that the threats are unjustifiable, an injunction against the continuation of such threats, and recover damages sustained (Section 91a). However, this does not apply to solicitors or patent attorneys acting in their professional capacity and with the written or telegraphed authority of their client, provided they produce the authority or satisfy the court that the authority was received but has been lost or destroyed. The Act also imposes penalties for false representations concerning patents and patented articles. It prohibits falsely representing oneself or another person as the patentee of an invention, or falsely claiming that an article is patented or the subject of a patent application in Australia (Section 112b). The penalty for these offences is one hundred pounds. The Act further specifies that certain words or phrases, such as “patent” or “patent applied for,” when applied to an article, imply that a patent has been obtained or applied for in Australia, thus subjecting the offender to the same penalties. Lastly, the Act addresses international arrangements for the protection of inventions by amending the provisions for patent applications from abroad. It requires that such applications be accompanied by a complete specification and removes certain conditions that previously applied to these applications (Section 121). Additionally, it limits the entitlement to damages for infringements occurring before the patent was granted if the specification was open to public inspection prior to the date of commencement of this section (Section 10).

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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.