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This is a Bill, not an Act. For current law, see the Acts databases.
2010-2011-2012-2013
The Parliament of the
Commonwealth of Australia
HOUSE OF REPRESENTATIVES
Presented and read a first time
Intellectual Property Laws Amendment
Bill 2013
No. , 2013
(Industry, Innovation, Climate Change, Science, Research and Tertiary Education)
A Bill for an Act to amend legislation relating to
intellectual property, and for related purposes
i Intellectual Property Laws Amendment Bill 2013 No. , 2013
Contents
1
Short title ........................................................................................... 1
2
Commencement ................................................................................. 1
3
Schedule(s) ........................................................................................ 3
Schedule 1--Crown use
5
Part 1--Amendments
5
Patents Act 1990
5
Part 2--Application and transitional provisions
11
Schedule 2--TRIPS Protocol interim waiver
12
Part 1--Amendments
12
Patents Act 1990
12
Part 2--Application
29
Schedule 3--TRIPS Protocol: later commencing amendments
30
Patents Act 1990
30
Schedule 4--Plant Breeder's Rights Act 1994: Federal Circuit
Court
32
Plant Breeder's Rights Act 1994
32
Schedule 5--Australia New Zealand Single Economic Market
36
Part 1--Amendments
36
Designs Act 2003
36
Patents Act 1990
36
Plant Breeder's Rights Act 1994
49
Trade Marks Act 1995
50
Part 2--Transitional provisions
53
Schedule 6--Other amendments
56
Part 1--Document retention
56
Division 1--Amendments
56
Designs Act 2003
56
Patents Act 1990
56
Intellectual Property Laws Amendment Bill 2013 No. , 2013 ii
Trade Marks Act 1995
56
Division 2--Application of amendments
56
Part 2--Technical amendments
57
Division 1--Amendments
57
Patents Act 1990
57
Division 2--Application of amendments
59
Intellectual Property Laws Amendment Bill 2013 No. , 2013 1
A Bill for an Act to amend legislation relating to
1
intellectual property, and for related purposes
2
The Parliament of Australia enacts:
3
1 Short title
4
This Act may be cited as the Intellectual Property Laws
5
Amendment Act 2013.
6
2 Commencement
7
(1) Each provision of this Act specified in column 1 of the table
8
commences, or is taken to have commenced, in accordance with
9
column 2 of the table. Any other statement in column 2 has effect
10
according to its terms.
11
12
2 Intellectual Property Laws Amendment Bill 2013 No. , 2013
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 this Act receives the Royal Assent.
2. Schedule 1
The 28th day after this Act receives the
Royal Assent.
3. Schedule 2
The start of the day after the end of the
period of 6 months beginning on the day this
Act receives the Royal Assent.
4. Schedule 3
The later of:
(a) immediately after the start of the day
after the end of the period of 6 months
beginning on the day this Act receives
the Royal Assent; and
(b) immediately after Article 31bis of the
Agreement on Trade-Related Aspects of
Intellectual Property Rights set out in
Annex 1C to the Marrakesh Agreement
establishing the World Trade
Organization, done at Marrakesh on
15 April 1994, comes into force for
Australia.
However, the provision(s) do not commence
at all if the event mentioned in paragraph (b)
does not occur.
The Minister administering the Patents Act
1990 must announce by notice in the Gazette
the day the event mentioned in paragraph (b)
occurs.
5. Schedule 4
The day after the end of the period of 6
months beginning on the day this Act
receives the Royal Assent.
6. Schedule 5
A single day to be fixed by Proclamation.
However, if the provision(s) do not
commence within the period of 24 months
beginning on the day this Act receives the
Royal Assent, the provision(s) are repealed
Intellectual Property Laws Amendment Bill 2013 No. , 2013 3
Commencement information
Column 1
Column 2
Column 3
Provision(s)
Commencement
Date/Details
on the day after the end of that period.
7. Schedule 6,
Part 1
The day after this Act receives the Royal
Assent.
8. Schedule 6,
item 6
Immediately after the commencement of
item 32 of Schedule 6 to the Intellectual
Property Laws Amendment (Raising the
Bar) Act 2012.
15 April 2013
9. Schedule 6,
items 7 to 13
A single day to be fixed by Proclamation.
However, if the provision(s) do not
commence within the period of 6 months
beginning on the day this Act receives the
Royal Assent, they commence on the day
after the end of that period.
10. Schedule 6,
item 14
Immediately after the commencement of
item 32 of Schedule 6 to the Intellectual
Property Laws Amendment (Raising the
Bar) Act 2012.
15 April 2013
11. Schedule 6,
item 15
A single day to be fixed by Proclamation.
However, if the provision(s) do not
commence within the period of 6 months
beginning on the day this Act receives the
Royal Assent, they commence on the day
after the end of that period.
12. Schedule 6,
item 16
The day this Act receives the Royal Assent.
Note:
This table relates only to the provisions of this Act as originally
1
enacted. It will not be amended to deal with any later amendments of
2
this Act.
3
(2) Any information in column 3 of the table is not part of this Act.
4
Information may be inserted in this column, or information in it
5
may be edited, in any published version of this Act.
6
3 Schedule(s)
7
Each Act that is specified in a Schedule to this Act is amended or
8
repealed as set out in the applicable items in the Schedule
9
4 Intellectual Property Laws Amendment Bill 2013 No. , 2013
concerned, and any other item in a Schedule to this Act has effect
1
according to its terms.
2
Crown use Schedule 1
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 5
Schedule 1
--
Crown use
1
Part 1
--
Amendments
2
Patents Act 1990
3
1 Section 3 (list of definitions)
4
Insert "Crown exploitation".
5
2 Section 3 (list of definitions)
6
Insert "relevant Minister".
7
3 Section 3 (list of definitions)
8
Insert "services".
9
4 Before section 161
10
Insert:
11
160A Crown exploitation of inventions
12
(1) This Chapter applies, at any time after a patent application for an
13
invention has been made, to the exploitation (the Crown
14
exploitation) of the invention by a relevant authority, or for a
15
relevant authority by an authorised person, for the services of the
16
relevant authority concerned.
17
Note:
A reference in this Chapter to a relevant authority is a reference to the
18
Commonwealth or a State (see the Dictionary). See also section 162.
19
(2) A relevant authority may, in writing, authorise a person for the
20
purposes of subsection (1).
21
(3) A person:
22
(a) must be authorised before any act covered by the
23
authorisation is done; and
24
(b) may be authorised:
25
(i) before or after a patent has been granted for the
26
invention; and
27
(ii) even if the person is directly or indirectly authorised by
28
the nominated person or patentee to exploit the
29
invention.
30
Schedule 1 Crown use
Part 1 Amendments
6 Intellectual Property Laws Amendment Bill 2013 No. , 2013
(4) Subject to section 168, an invention is taken for the purposes of
1
this Chapter to be exploited for the services of a relevant authority
2
if the exploitation of the invention is necessary for the proper
3
provision of those services in Australia.
4
(5) In this Chapter:
5
relevant Minister means:
6
(a) in relation to the exploitation of an invention by or for the
7
Commonwealth--the Minister; and
8
(b) in relation to the exploitation of an invention by or for a
9
State--the Attorney-General of the State.
10
services, of a relevant authority, in relation to the exploitation of an
11
invention by or for the relevant authority, includes:
12
(a) if the relevant authority is the Commonwealth--a service that
13
is:
14
(i) primarily provided or funded by the Commonwealth; or
15
(ii) primarily provided or funded by the Commonwealth
16
and one or more of the States; and
17
(b) if the relevant authority is a State--a service that is:
18
(i) primarily provided or funded by the State; or
19
(ii) primarily provided or funded by the State and one or
20
more of the other States or the Commonwealth.
21
Example: The Commonwealth and the States primarily fund the provision of
22
health services, including genetic tests covered by patents. Under this
23
Chapter, a relevant authority can authorise a third party (an authorised
24
person) to exploit such a patent. Any exploitation of the patent by the
25
third party conducting the test on an individual is not an infringement
26
under this Chapter.
27
5 Section 163
28
Repeal the section, substitute:
29
163 Crown exploitation--general rule
30
(1) Crown exploitation of an invention is not an infringement of the
31
following if the conditions in subsection (2) are satisfied:
32
(a) if a patent application for the invention is pending--the
33
nominated person's rights in the invention;
34
(b) if a patent has been granted for the invention--the patent.
35
Crown use Schedule 1
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 7
(2) The conditions are:
1
(a) the relevant Minister considers that the relevant authority has
2
tried for a reasonable period, but without success, to obtain
3
from the applicant and the nominated person, or the patentee,
4
an authorisation to work the invention on reasonable terms;
5
and
6
(b) the relevant Minister approves the proposed exploitation by
7
instrument; and
8
(c) at least 14 days before the exploitation starts, the relevant
9
Minister gives the applicant and the nominated person, or the
10
patentee:
11
(i) a copy of the instrument of approval; and
12
(ii) a copy of a statement of reasons for approving the
13
proposed exploitation.
14
Note:
Section 25D of the Acts Interpretation Act 1901 sets out rules about
15
the contents of a statement of reasons.
16
(3) An approval given under paragraph (2)(b) is not a legislative
17
instrument.
18
163A Crown exploitation--emergencies
19
(1) Crown exploitation of an invention is not an infringement of the
20
following if the conditions in subsection (2) are satisfied:
21
(a) if a patent application for the invention is pending--the
22
nominated person's rights in the invention;
23
(b) if a patent has been granted for the invention--the patent.
24
(2) The conditions are:
25
(a) the relevant Minister considers that the exploitation is
26
required because of an emergency; and
27
(b) the relevant Minister approves the proposed exploitation by
28
instrument before the exploitation starts.
29
(3) As soon as practicable after the relevant Minister approves the
30
proposed exploitation, the relevant Minister must give the
31
applicant and the nominated person, or the patentee:
32
(a) a copy of the instrument of approval; and
33
(b) a copy of a statement of reasons for approving the
34
exploitation.
35
Schedule 1 Crown use
Part 1 Amendments
8 Intellectual Property Laws Amendment Bill 2013 No. , 2013
Note:
Section 25D of the Acts Interpretation Act 1901 sets out rules about
1
the contents of a statement of reasons.
2
(4) An approval given under paragraph (2)(b) is not a legislative
3
instrument.
4
6 Section 164 (heading)
5
Repeal the heading, substitute:
6
164 Crown exploitation--information to be given by relevant
7
authority
8
7 Section 164
9
Omit "an invention has been exploited under subsection 163(1)",
10
substitute "the exploitation of an invention to which subsection 163(1)
11
or 163A(1) applies".
12
8 Section 165 (heading)
13
Repeal the heading, substitute:
14
165 Crown exploitation--terms (including remuneration)
15
9 Subsection 165(2)
16
Repeal the subsection, substitute:
17
(1) The terms for the Crown exploitation (including terms concerning
18
the remuneration payable to the nominated person or the patentee)
19
are such terms:
20
(a) as are agreed, or determined by a method agreed, between the
21
relevant authority and the nominated person or the patentee;
22
or
23
(b) in the absence of agreement--as are determined by a
24
prescribed court on the application of the relevant authority,
25
or the nominated person or the patentee.
26
(2) Without limiting paragraph (1)(b), the prescribed court must
27
determine an amount of remuneration that is just and reasonable,
28
having regard to the economic value of the exploitation of the
29
invention.
30
Crown use Schedule 1
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 9
10 Subsection 165(3)
1
Omit "subsection (2)", substitute "this section".
2
11 Section 165A (heading)
3
Repeal the heading, substitute:
4
165A Crown exploitation--court order to cease
5
12 Subsection 165A(1)
6
Omit "exploitation of the invention by the Commonwealth or the State",
7
substitute "Crown exploitation of the invention".
8
13 Subsection 165A(1)
9
Omit "Commonwealth or of the State", substitute "relevant authority
10
concerned".
11
14 Subsection 165A(2)
12
Omit "Commonwealth or the State", substitute "relevant authority".
13
15 Subsection 165A(2)
14
Omit "Commonwealth or of the State", substitute "relevant authority".
15
16 Section 166
16
Omit "the Commonwealth or a State", substitute "relevant authority".
17
17 Section 166
18
Omit "under subsection 163(1)", substitute "to which subsection 163(1)
19
or 163A(1) applies".
20
18 Section 166
21
Omit all the words after "unless the agreement or licence", substitute
22
"has been approved by the relevant Minister".
23
19 Subsections 167(1) and (2)
24
After "subsection 163(1)", insert "or 163A(1)".
25
20 Section 169
26
Repeal the section.
27
Schedule 1 Crown use
Part 1 Amendments
10 Intellectual Property Laws Amendment Bill 2013 No. , 2013
21 Schedule 1
1
Insert:
2
Crown exploitation has the meaning given by subsection 160A(1).
3
relevant Minister has the meaning given by subsection 160A(5).
4
services, of a relevant authority, has the meaning given by
5
subsection 160A(5).
6
Crown use Schedule 1
Application and transitional provisions Part 2
Intellectual Property Laws Amendment Bill 2013 No. , 2013 11
Part 2
--
Application and transitional provisions
1
22 Definition
2
In this Part:
3
amended Act means the Patents Act 1990 as in force after the
4
commencement of this Schedule.
5
23 Application of amendments
6
The amendments of the Patents Act 1990 made by Part 1 of this
7
Schedule apply in relation to Crown exploitation that starts, or is
8
proposed to start, on or after the commencement of this Schedule.
9
24 Transitional
--
authorised person
10
An authorisation of a person that is in force for the purposes of
11
section 163 of the Patents Act 1990 immediately before the
12
commencement of this Schedule continues in force as if:
13
(a) the person had been authorised under subsection 160A(2) of
14
the amended Act; and
15
(b) subsection 160A(3) of the amended Act were satisfied in
16
relation to the person.
17
25 Transitional
--
negotiations
18
If, before the commencement of this Schedule, a relevant authority has
19
tried, for a period, but without success, to obtain from an applicant and
20
a nominated person, or a patentee, an authorisation to work an invention
21
on reasonable terms, the relevant Minister must take that period into
22
account in considering whether the condition in paragraph 163(2)(a) of
23
the amended Act is satisfied in relation to the exploitation of the
24
invention.
25
26 Transitional
--
agreements and determinations
26
An agreement or determination that is in force for the purposes of
27
subsection 165(2) of the Patents Act 1990 immediately before the
28
commencement of this Schedule continues in force on and after that
29
commencement as if it had been made for the purposes of
30
subsection 165(1) of the amended Act.
31
Schedule 2 TRIPS Protocol interim waiver
Part 1 Amendments
12 Intellectual Property Laws Amendment Bill 2013 No. , 2013
Schedule 2
--
TRIPS Protocol interim waiver
1
Part 1
--
Amendments
2
Patents Act 1990
3
1 Section 3 (list of definitions)
4
Omit "compulsory licence".
5
2 Section 3 (list of definitions)
6
Insert "eligible importing country".
7
3 Section 3 (list of definitions)
8
Insert "patented pharmaceutical invention".
9
4 Section 3 (list of definitions)
10
Insert "pharmaceutical product".
11
5 Section 3 (list of definitions)
12
Insert "PPI".
13
6 Section 3 (list of definitions)
14
Insert "PPI ancillary licence".
15
7 Section 3 (list of definitions)
16
Insert "PPI compulsory licence".
17
8 Section 3 (list of definitions)
18
Insert "PPI cross-licence".
19
9 Section 3 (list of definitions)
20
Insert "PPI order".
21
10 Section 3 (list of definitions)
22
Insert "PPI order applicant".
23
11 Section 3 (list of definitions)
24
Insert "WTO General Council decision of 30 August 2003".
25
TRIPS Protocol interim waiver Schedule 2
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 13
12 Before subsection 70(5)
1
Insert:
2
Meaning of first regulatory approval date
3
13 After subsection 70(5)
4
Insert:
5
(5A) For the purposes of paragraph (5)(a), disregard an inclusion in the
6
Australian Register of Therapeutic Goods of goods that contain, or
7
consist of, a pharmaceutical substance if the inclusion was sought
8
for the sole purpose of exporting the goods from Australia to
9
address a public health problem in an eligible importing country:
10
(a) in circumstances of national emergency or other
11
circumstances of extreme urgency; or
12
(b) by the public non-commercial use of the goods.
13
Note:
This subsection also applies in relation to an application for an
14
extension of the term of a standard patent (see paragraph 71(2)(b)).
15
Meaning of pre-TGA marketing approval
16
14 At the end of paragraph 71(2)(b)
17
Add ", as worked out under subsection 70(5A) (if applicable)".
18
15 Before section 133
19
Insert:
20
Part 1--Compulsory licences (general)
21
22
16 Section 133 (heading)
23
Repeal the heading, substitute:
24
133 Compulsory licences--general
25
17 Section 134 (heading)
26
Repeal the heading, substitute:
27
Schedule 2 TRIPS Protocol interim waiver
Part 1 Amendments
14 Intellectual Property Laws Amendment Bill 2013 No. , 2013
134 Revocation of patent after grant of compulsory licence under
1
section 133
2
18 Subsection 134(1)
3
After "compulsory licence", insert "under section 133".
4
19 After section 136A
5
Insert:
6
Part 2--Compulsory licences (patented
7
pharmaceutical inventions)
8
Division 1--Scope of Part 2
9
136B Relationship between Parts 1 and 2
10
This Part does not prevent a compulsory licence from being
11
granted under Part 1 in relation to a patented pharmaceutical
12
invention.
13
Division 2--Patented pharmaceutical invention
14
compulsory licences (grant)
15
136C Application for order to grant PPI compulsory licence
16
Application for order
17
(1) A person (the PPI order applicant) may apply to the Federal Court
18
for an order (the PPI order) under section 136D requiring the
19
patentee of a patented pharmaceutical invention to grant the PPI
20
order applicant a licence (a PPI compulsory licence) to work the
21
invention to the extent necessary for the purposes of manufacturing
22
a pharmaceutical product in Australia for export to an eligible
23
importing country.
24
Note 1:
A patented pharmaceutical invention may be a patented product or a
25
patented process: see the definition of patented pharmaceutical
26
invention in Schedule 1.
27
Note 2:
For remuneration in respect of a licence, see section 136P.
28
TRIPS Protocol interim waiver Schedule 2
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 15
(2) However, a person cannot apply for an order in respect of an
1
innovation patent unless the patent has been certified.
2
Statement by or on behalf of eligible importing country
3
(3) An application must include a copy of a statement made by or on
4
behalf of, and with the authorisation of, the eligible importing
5
country to the effect that it will take reasonable measures within its
6
means, proportionate to its administrative capacities and to the risk
7
of trade diversion, to prevent re-exportation from its territory of a
8
pharmaceutical product imported into its territory in accordance
9
with a PPI compulsory licence.
10
Statement by or on behalf of importer
11
(4) If the pharmaceutical product is to be imported on behalf of, and
12
with the authorisation of, the eligible importing country, an
13
application must also include a copy of a statement made by the
14
importer to the effect that it will take reasonable measures within
15
its means to prevent the pharmaceutical product from being used
16
other than in accordance with a PPI compulsory licence.
17
Parties
18
(5) The following are parties to proceedings on an application under
19
this section:
20
(a) the PPI order applicant;
21
(b) the patentee;
22
(c) any person claiming an interest in the patent as exclusive
23
licensee or otherwise;
24
(d) at the option of the eligible importing country--that country.
25
Note:
See also section 136F.
26
136D Order for PPI compulsory licence
27
(1) After hearing an application under section 136C, the Federal Court
28
may, subject to this Part, make the PPI order sought if the court is
29
satisfied of all of the following matters:
30
(a) the application is made in good faith;
31
(b) the pharmaceutical product is to be imported:
32
(i) by the eligible importing country; or
33
Schedule 2 TRIPS Protocol interim waiver
Part 1 Amendments
16 Intellectual Property Laws Amendment Bill 2013 No. , 2013
(ii) by a person (the third party importer) on behalf of, and
1
with the authorisation of, the eligible importing country;
2
(c) the proposed use of the pharmaceutical product is to address
3
a public health problem in the eligible importing country:
4
(i) in circumstances of national emergency or other
5
circumstances of extreme urgency; or
6
(ii) in other circumstances--by the public non-commercial
7
use of the pharmaceutical product;
8
(d) working the patented pharmaceutical invention is necessary
9
to enable the import and proposed use of the pharmaceutical
10
product as mentioned in paragraphs (b) and (c);
11
(e) if subparagraph (c)(ii) applies:
12
(i) the PPI order applicant has given the patentee a notice
13
in the approved form seeking from the patentee an
14
authorisation to work the patented pharmaceutical
15
invention for public non-commercial use; and
16
(ii) during the 30 days beginning when the notice was
17
given, the PPI order applicant has tried, without success,
18
to obtain such an authorisation from the patentee on
19
reasonable terms and conditions;
20
(f) the notification requirements prescribed by the regulations in
21
relation to the importation of the pharmaceutical product
22
have been complied with;
23
(g) the PPI order applicant, the eligible importing country and, if
24
there is a third party importer, that importer, will take
25
reasonable measures to prevent a pharmaceutical product that
26
is exported from Australia in accordance with a PPI
27
compulsory licence from being used for a purpose other than
28
the purpose of addressing the public health problem
29
mentioned in paragraph (c).
30
(2) Without limiting the matters that the court may take into account in
31
deciding whether it is satisfied of a matter mentioned in
32
subsection (1), the court must take into account any matters
33
prescribed by the regulations.
34
136E Terms of PPI compulsory licence
35
(1) A PPI order must direct that the PPI compulsory licence is granted
36
on the following terms:
37
TRIPS Protocol interim waiver Schedule 2
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 17
(a) no more than the quantity of the pharmaceutical product that
1
is determined by the Federal Court to be necessary to meet
2
the needs of the eligible importing country is manufactured;
3
(b) the entirety of the pharmaceutical product manufactured for
4
that purpose is exported to that country;
5
(c) the pharmaceutical product is labelled and marked in
6
accordance with the regulations;
7
(d) before shipment of the pharmaceutical product begins, the
8
shipment information prescribed by the regulations is made
9
available on a website by, or on behalf of, the licensee for a
10
minimum period prescribed by the regulations;
11
(e) the duration of the licence is only for the period of time
12
determined by the Federal Court to be necessary to address
13
the public health problem concerned;
14
(f) the licence does not give the licensee, or a person authorised
15
by the licensee, the exclusive right to work the patented
16
pharmaceutical invention;
17
(g) the licence is to be assignable only in connection with an
18
enterprise or goodwill in connection with which the licence is
19
used;
20
(h) the licensee must give the Commissioner the information
21
prescribed by the regulations in relation to the licence in
22
accordance with the regulations.
23
(2) The PPI order may also direct that the licence is to be granted on
24
any other terms specified in the order, including terms covering:
25
(a) other requirements relating to the labelling and marking of
26
the pharmaceutical product; and
27
(b) other information to be made available by the licensee and
28
the way in which it is to be made available.
29
(3) However, a term specified must not be inconsistent with any
30
regulations prescribed for the purposes of paragraph (1)(c), (d) or
31
(h).
32
136F Order for ancillary compulsory licence and cross-licence
33
Scope
34
(1) This section applies if:
35
Schedule 2 TRIPS Protocol interim waiver
Part 1 Amendments
18 Intellectual Property Laws Amendment Bill 2013 No. , 2013
(a) a PPI order applicant applies for a PPI order in relation to a
1
patented pharmaceutical invention; and
2
(b) that invention cannot be worked by the applicant without the
3
applicant infringing another patent.
4
PPI order
5
(2) The Federal Court may make the PPI order only if the court is
6
satisfied that the patented pharmaceutical invention involves an
7
important technical advance of considerable economic significance
8
on the invention (the other invention) to which the other patent
9
relates.
10
(3) If the Federal Court makes the PPI order sought, the court must:
11
(a) make a further order that:
12
(i) the patentee of the other invention must grant to the PPI
13
order applicant a licence (a PPI ancillary licence) to
14
work the other invention to the extent necessary to work
15
the patented pharmaceutical invention; and
16
(ii) the patentee of the patented pharmaceutical invention
17
must grant the patentee of the other invention a
18
cross-licence (a PPI cross-licence) on reasonable terms
19
and conditions to work the patented pharmaceutical
20
invention, if the patentee of the other invention so
21
requires; and
22
(b) direct that the PPI order applicant may assign the PPI
23
ancillary licence:
24
(i) only if the PPI compulsory licence is assigned; and
25
(ii) only to the assignee of that licence.
26
Parties
27
(4) In addition to the parties mentioned in subsection 136C(4)
28
(application for order to grant PPI compulsory licence), the
29
following are also parties to any proceedings under that section:
30
(a) the patentee of the other invention;
31
(b) any person claiming an interest in the other invention as
32
exclusive licensee or otherwise.
33
TRIPS Protocol interim waiver Schedule 2
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 19
Division 3--Patented pharmaceutical invention
1
compulsory licences (amendment)
2
136G PPI compulsory licence--amendment
3
Application for order
4
(1) A person may apply to the Federal Court for an order to amend any
5
of the following terms of a PPI compulsory licence:
6
(a) the quantity of the pharmaceutical product concerned;
7
(b) how the pharmaceutical product is labelled and marked;
8
(c) the duration of the licence;
9
(d) the information that is to be made available by the licensee
10
and the way it is to be made available.
11
Note:
For remuneration in respect of the licence as amended, see
12
section 136P.
13
Order
14
(2) The court may grant the order in relation to a term if it is satisfied
15
that:
16
(a) it is just to do so in all the circumstances; and
17
(b) the legitimate interests of the following are not likely to be
18
adversely affected by the amendment of the term:
19
(i) the patentee;
20
(ii) any person claiming an interest in the patent as
21
exclusive licensee or otherwise;
22
(iii) the licensee;
23
(iv) the eligible importing country.
24
(3) However, an amended term must not be inconsistent with any
25
regulations prescribed for the purposes of paragraph 136E(1)(c),
26
(d) or (h).
27
Parties
28
(4) The following are parties to any proceedings under this section:
29
(a) the applicant under subsection (1);
30
(b) the patentee;
31
Schedule 2 TRIPS Protocol interim waiver
Part 1 Amendments
20 Intellectual Property Laws Amendment Bill 2013 No. , 2013
(c) any person claiming an interest in the patent as exclusive
1
licensee or otherwise;
2
(d) the licensee;
3
(e) at the option of the eligible importing country--that country.
4
136H PPI ancillary licence--amendment
5
Scope
6
(1) This section applies if:
7
(a) a PPI compulsory licence is granted in relation to a patented
8
pharmaceutical invention; and
9
(b) a PPI ancillary licence is granted to work another invention
10
(the ancillary invention) insofar as it is necessary to work the
11
patented invention.
12
Application for order
13
(2) A person may apply to the Federal Court for an order to amend the
14
PPI ancillary licence.
15
Order
16
(3) The court may grant the order if it is satisfied that:
17
(a) the PPI ancillary licence as amended by the order would
18
allow the patented pharmaceutical invention to be worked
19
under the terms of the PPI compulsory licence (including
20
such a licence as amended under section 136G); and
21
(b) it is just to do so in all the circumstances; and
22
(c) the legitimate interests of the following are not likely to be
23
adversely affected by the amendment:
24
(i) the patentee of the ancillary invention;
25
(ii) the patentee of the patented pharmaceutical invention;
26
(iii) any person claiming an interest, as exclusive licensee or
27
otherwise, in the patent for either invention;
28
(iv) the licensee for the PPI compulsory licence;
29
(v) the eligible importing country concerned.
30
Parties
31
(4) The following are parties to any proceedings under this section:
32
TRIPS Protocol interim waiver Schedule 2
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 21
(a) the applicant under subsection (2);
1
(b) the licensee for the PPI compulsory licence;
2
(c) the patentee of the patented pharmaceutical invention;
3
(d) the patentee of the ancillary invention;
4
(e) any person claiming an interest, as exclusive licensee or
5
otherwise, in the patent for either invention;
6
(f) at the option of the eligible importing country concerned--
7
that country.
8
136J PPI cross-licence--amendment
9
Scope
10
(1) This section applies if:
11
(a) a PPI compulsory licence is granted in relation to a patented
12
pharmaceutical invention; and
13
(b) a PPI ancillary licence is granted to work another invention
14
(the ancillary invention) insofar as it is necessary to work the
15
patented invention; and
16
(c) a PPI cross-licence is granted to work the patented
17
pharmaceutical invention.
18
Application for order
19
(2) A person may apply to the Federal Court for an order to amend the
20
PPI cross-licence.
21
Order
22
(3) The court may grant the order to amend the PPI cross-licence if it
23
is satisfied that:
24
(a) it is just to do so in all the circumstances; and
25
(b) the legitimate interests of the following are not likely to be
26
adversely affected by the amendment:
27
(i) the patentee of the patented pharmaceutical invention;
28
(ii) the patentee of the ancillary invention;
29
(iii) any person claiming an interest, as exclusive licensee or
30
otherwise, in the patent for either invention.
31
Schedule 2 TRIPS Protocol interim waiver
Part 1 Amendments
22 Intellectual Property Laws Amendment Bill 2013 No. , 2013
Parties
1
(4) The following are parties to any proceedings under this section:
2
(a) the applicant under subsection (2);
3
(b) the licensee for the PPI compulsory licence;
4
(c) the patentee of the patented pharmaceutical invention;
5
(d) the patentee of the ancillary invention;
6
(e) any person claiming an interest, as exclusive licensee or
7
otherwise, in the patent for either invention.
8
136K Proceedings for PPI licence amendments may be heard
9
together
10
Nothing in sections 136G, 136H and 136J prevents the Federal
11
Court from dealing with applications for amendments of terms of
12
PPI compulsory licences, PPI ancillary licences and PPI
13
cross-licences together.
14
Division 4--Patented pharmaceutical invention
15
compulsory licences (revocation)
16
136L PPI compulsory licence or PPI ancillary licence--revocation
17
Application
18
(1) A person may apply to the Federal Court to revoke a PPI
19
compulsory licence or a PPI ancillary licence.
20
Note:
For remuneration in respect of the use of a PPI compulsory licence
21
while it is in force, see section 136P.
22
Federal Court may revoke licence
23
(2) The Federal Court may revoke the licence if the court is satisfied
24
that:
25
(a) one or more of the following applies:
26
(i) the substantive circumstances that justified the grant of
27
the licence have ceased to exist and are unlikely to
28
recur;
29
(ii) the licensee has not complied with the terms of the
30
licence;
31
TRIPS Protocol interim waiver Schedule 2
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 23
(iii) if an amount has been agreed or determined under
1
section 136P--the amount has not been paid within the
2
time agreed or determined; and
3
(b) the legitimate interests of the licensee or the eligible
4
importing country are not likely to be adversely affected by
5
the revocation.
6
Parties
7
(3) The following are parties to any proceedings under this section:
8
(a) the applicant for revocation;
9
(b) the licensee;
10
(c) at the option of the eligible importing country--that country.
11
136M PPI cross-licence--revocation
12
Application
13
(1) A person may apply to the Federal Court to revoke a PPI
14
cross-licence.
15
Federal Court may revoke licence
16
(2) The Federal Court may revoke the PPI cross-licence if the court is
17
satisfied that:
18
(a) it is just to do so in all the circumstances; and
19
(b) the legitimate interests of the following are not likely to be
20
adversely affected by the revocation:
21
(i) the patentee of the patented pharmaceutical invention
22
concerned;
23
(ii) the patentee of the ancillary invention concerned;
24
(iii) any person claiming an interest, as exclusive licensee or
25
otherwise, in the patent for either invention.
26
Parties
27
(3) The following are parties to any proceedings under this section:
28
(a) the applicant for revocation;
29
(b) the patentee of the patented pharmaceutical invention
30
concerned;
31
(c) the patentee of the ancillary invention concerned;
32
Schedule 2 TRIPS Protocol interim waiver
Part 1 Amendments
24 Intellectual Property Laws Amendment Bill 2013 No. , 2013
(d) any person claiming an interest, as exclusive licensee or
1
otherwise, in the patent for either invention.
2
136N Proceedings for PPI licence revocation may be heard together
3
Nothing in section 136L or 136M prevents the Federal Court from
4
dealing with applications for revocations of PPI compulsory
5
licences, PPI ancillary licences and PPI cross-licences together.
6
Division 5--Patented pharmaceutical invention
7
compulsory licences (remuneration)
8
136P Remuneration for PPI compulsory licence
9
Working out amount of remuneration
10
(1) The patentee is to be paid an amount agreed or determined under
11
subsection (3) in respect of the use authorised by a PPI compulsory
12
licence.
13
(2) For the purposes of subsection (1), the use authorised by the PPI
14
compulsory licence is:
15
(a) while it is in force--the use authorised by the licence as
16
granted and as amended (from time to time) under
17
section 136G; or
18
(b) if it has ceased to be in force (whether because it was
19
revoked or otherwise)--the actual use of the patented
20
pharmaceutical invention under the licence while it was in
21
force.
22
(3) For the purposes of subsection (1), the amount is:
23
(a) an amount agreed between the patentee and the PPI order
24
applicant, licensee or former licensee (as the case requires);
25
or
26
(b) if paragraph (a) does not apply--an amount determined by
27
the Federal Court to be adequate remuneration taking into
28
account the economic value to the eligible importing country
29
of the use authorised by the PPI compulsory licence.
30
Application to make or amend a determination
31
(4) A person may apply to the Federal Court:
32
TRIPS Protocol interim waiver Schedule 2
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 25
(a) to make a determination under paragraph (3)(b); or
1
(b) to amend a determination made under that paragraph.
2
Note:
Grounds for an application under paragraph (b) may include the fact
3
that the terms of the PPI compulsory licence have been amended, or
4
the licence has been revoked.
5
Parties
6
(5) The following are parties to any proceedings under this section:
7
(a) the applicant for the determination or the amendment of the
8
determination;
9
(b) the PPI order applicant;
10
(c) the licensee;
11
(d) the patentee of the patented pharmaceutical invention;
12
(e) any person claiming an interest in the patent as exclusive
13
licensee or otherwise.
14
Exploitation of licence: remuneration
15
(6) To avoid doubt, if the proposed use of the pharmaceutical product
16
is to address a public health problem in the eligible importing
17
country in circumstances of national emergency or other
18
circumstances of extreme urgency, the licensee may exploit a PPI
19
compulsory licence, as granted or amended (as the case may be),
20
whether or not an amount has been agreed or determined under this
21
section.
22
(7) However, if the proposed use of the pharmaceutical product is to
23
address a public health problem in the eligible importing country in
24
other circumstances, by the public non-commercial use of the
25
pharmaceutical product, the licensee must not exploit a PPI
26
compulsory licence unless an amount has been agreed or
27
determined under this section.
28
Exploitation of licence: revocation
29
(8) To avoid doubt, a PPI compulsory licence may be revoked whether
30
or not an amount has been agreed or determined under this section.
31
Schedule 2 TRIPS Protocol interim waiver
Part 1 Amendments
26 Intellectual Property Laws Amendment Bill 2013 No. , 2013
Division 6--Patented pharmaceutical invention
1
compulsory licences (general)
2
136Q Nature of order
3
Without prejudice to any other method of enforcement, an order
4
under this Part operates as if it were embodied in a deed granting
5
or amending a licence and executed by the patentee and all other
6
necessary parties.
7
136R Orders to be consistent with international agreements
8
An order must not be made under this Part that is inconsistent with
9
a treaty between the Commonwealth and a foreign country.
10
Part 3--Revocation of patents
11
12
20 Subsection 137(5)
13
Omit "compulsory licence", substitute "licence granted under an order
14
under Part 1".
15
21 After section 138
16
Insert:
17
Part 4--Other matters
18
19
22 After subsection 139(1)
20
Insert:
21
Note:
See Part 2 for details of parties to proceedings under that Part.
22
23 Subsection 139(2)
23
Omit "or 138", substitute ", Part 2 or section 138".
24
24 At the end of subsection 228(1)
25
Add:
26
; and (f) for the purpose of carrying out or giving effect to the WTO
27
General Council decision of 30 August 2003.
28
TRIPS Protocol interim waiver Schedule 2
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 27
25 Schedule 1 (definition of compulsory licence)
1
Repeal the definition.
2
26 Schedule 1
3
Insert:
4
eligible importing country means:
5
(a) a foreign country (whether or not a member of the World
6
Trade Organization) recognised by the United Nations as a
7
least-developed country; or
8
(b) a foreign country that has made a notification to the Council
9
for TRIPS of its intention to use, as an importer, the system
10
set out in the WTO General Council decision of 30 August
11
2003; or
12
(c) a foreign country (whether or not a member of the World
13
Trade Organization) included in a class of foreign countries
14
prescribed for the purposes of this paragraph.
15
27 Schedule 1
16
Insert:
17
patented pharmaceutical invention, in relation to a pharmaceutical
18
product, means:
19
(a) if the product is a patented product--the patented product; or
20
(b) if the product results from the use of a patented process--the
21
patented process.
22
28 Schedule 1
23
Insert:
24
pharmaceutical product means any patented product, or product
25
manufactured through a patented process, of the pharmaceutical
26
sector.
27
Example: Examples of a pharmaceutical product include:
28
(a) active ingredients necessary for manufacturing the
29
pharmaceutical product; and
30
(b) diagnostic kits needed for using the pharmaceutical product.
31
29 Schedule 1
32
Insert:
33
Schedule 2 TRIPS Protocol interim waiver
Part 1 Amendments
28 Intellectual Property Laws Amendment Bill 2013 No. , 2013
PPI is short for patented pharmaceutical invention.
1
30 Schedule 1
2
Insert:
3
PPI ancillary licence has the meaning given by section 136F.
4
31 Schedule 1
5
Insert:
6
PPI compulsory licence has the meaning given by section 136C.
7
32 Schedule 1
8
Insert:
9
PPI cross-licence has the meaning given by section 136F.
10
33 Schedule 1
11
Insert:
12
PPI order has the meaning given by section 136C.
13
34 Schedule 1
14
Insert:
15
PPI order applicant has the meaning given by section 136C.
16
35 Schedule 1
17
Insert:
18
WTO General Council decision of 30 August 2003 means the
19
decision of the World Trade Organization General Council of
20
30 August 2003 (including the Annex to the decision) on the
21
implementation of paragraph 6 of the Doha Declaration on the
22
TRIPS Agreement and public health.
23
Note:
In 2013, the text of the decision was accessible through the World
24
Trade Organization website (www.wto.org).
25
TRIPS Protocol interim waiver Schedule 2
Application Part 2
Intellectual Property Laws Amendment Bill 2013 No. , 2013 29
Part 2
--
Application
1
36 Application of amendments
2
(1)
The amendments of the Patents Act 1990 made by this Schedule apply
3
in relation to patents granted before, on and after the commencement of
4
this Schedule.
5
(2)
The amendments of sections 70 and 71 of the Patents Act 1990 made by
6
this Schedule apply in relation to an application that is made on or after
7
the commencement of this Schedule to include a pharmaceutical
8
substance in the Australian Register of Therapeutic Goods.
9
Schedule 3 TRIPS Protocol: later commencing amendments
30 Intellectual Property Laws Amendment Bill 2013 No. , 2013
Schedule 3
--
TRIPS Protocol: later
1
commencing amendments
2
3
Patents Act 1990
4
1 Section 3 (list of definitions)
5
Insert "TRIPS Agreement".
6
2 Section 3 (list of definitions)
7
Omit "WTO General Council decision of 30 August 2003".
8
3 Paragraph 228(1)(f)
9
Omit "WTO General Council decision of 30 August 2003", substitute
10
"TRIPS Agreement".
11
4 Schedule 1 (paragraph (b) of the definition of eligible
12
importing country)
13
Repeal the paragraph, substitute:
14
(b) a foreign country that has made a notification to the Council
15
for TRIPS of its intention to use, as an importer, the system
16
as set out in Article 31bis of the TRIPS Agreement, the
17
Annex to the TRIPS Agreement and the Appendix to that
18
Annex; or
19
5 Schedule 1
20
Insert:
21
TRIPS Agreement means the Agreement on Trade-Related
22
Aspects of Intellectual Property Rights set out in Annex 1C to the
23
Marrakesh Agreement establishing the World Trade Organization,
24
done at Marrakesh on 15 April 1994, as Annex 1C is in force for
25
Australia from time to time.
26
Note:
The text of the WTO Agreement is set out in Australian Treaty Series
27
1995 No. 8 ([1995] ATS 8). In 2013, the text of an Agreement in the
28
Australian Treaty Series was accessible through the Australian
29
Treaties Library on the AustLII website (www.austlii.edu.au).
30
TRIPS Protocol: later commencing amendments Schedule 3
Intellectual Property Laws Amendment Bill 2013 No. , 2013 31
6 Schedule 1 (definition of
WTO General Council decision of
1
30 August 2003
)
2
Repeal the definition.
3
Schedule 4 Plant Breeder's Rights Act 1994: Federal Circuit Court
32 Intellectual Property Laws Amendment Bill 2013 No. , 2013
Schedule 4
--Plant Breeder's Rights Act 1994
:
1
Federal Circuit Court
2
3
Plant Breeder's Rights Act 1994
4
1 Subsection 3(1) (definition of Court)
5
Repeal the definition.
6
2 Subsection 3(1)
7
Insert:
8
Federal Circuit Court means the Federal Circuit Court of
9
Australia.
10
3 Subsection 3(1)
11
Insert:
12
Federal Court means the Federal Court of Australia.
13
4 Subsection 39(5)
14
Repeal the subsection, substitute:
15
(5) Nothing in this section affects the power of:
16
(a) the Federal Court, or a Judge of that Court, under
17
subsection 44A(2) of the AAT Act; or
18
(b) the Federal Circuit Court, or a Judge of that Court, under
19
subsection 44A(2A) of that Act;
20
where an appeal is begun in that court from a decision of the AAT.
21
5 Subsection 50(7)
22
Repeal the subsection, substitute:
23
(7) Nothing in this section affects the power of:
24
(a) the Federal Court, or a Judge of that Court, under
25
subsection 44A(2) of the AAT Act; or
26
(b) the Federal Circuit Court, or a Judge of that Court, under
27
subsection 44A(2A) of that Act.
28
Plant Breeder's Rights Act 1994: Federal Circuit Court Schedule 4
Intellectual Property Laws Amendment Bill 2013 No. , 2013 33
6 Subsection 54(1)
1
Omit "Court", substitute "Federal Court or the Federal Circuit Court".
2
7 Subsections 54(3) and (4)
3
Omit "Court" (wherever occurring), substitute "court".
4
8 Subsection 55(1)
5
Omit "Court", substitute "Federal Court or the Federal Circuit Court".
6
9 Subsections 55(3) and (4)
7
Omit "Court", substitute "court".
8
10 Section 56 (heading)
9
Repeal the heading, substitute:
10
56 Jurisdiction of the Federal Court
11
11 Subsection 56(1)
12
Omit "Court" (wherever occurring), substitute "Federal Court".
13
12 After subsection 56(1)
14
Insert:
15
Note:
A matter may also be transferred to the Federal Court from the Federal
16
Circuit Court: see section 39 of the Federal Circuit Court of Australia
17
Act 1999.
18
13 Subsection 56(2)
19
Repeal the subsection, substitute:
20
(2) That jurisdiction is exclusive of the jurisdiction of all other courts
21
other than the jurisdiction of:
22
(a) the Federal Circuit Court under subsection 56A(2); and
23
(b) the High Court under section 75 of the Constitution.
24
14 Subsection 56(3)
25
Omit "Court" (wherever occurring), substitute "Federal Court".
26
15 Subsection 56(4)
27
Omit "Court", substitute "Federal Court".
28
Schedule 4 Plant Breeder's Rights Act 1994: Federal Circuit Court
34 Intellectual Property Laws Amendment Bill 2013 No. , 2013
16 Subsection 56(5)
1
Omit "the Court", substitute "the Federal Court".
2
17 Subsection 56(5)
3
Omit "rules", substitute "Rules".
4
Note:
This item fixes a typographical error.
5
18 After section 56
6
Insert:
7
56A Jurisdiction of Federal Circuit Court
8
(1) The Federal Circuit Court has jurisdiction with respect to matters
9
in which actions may, under this Part, be begun in the Federal
10
Circuit Court.
11
Note:
A matter may also be transferred to the Federal Circuit Court from the
12
Federal Court: see section 32AB of the Federal Court of Australia Act
13
1976.
14
(2) That jurisdiction is exclusive of the jurisdiction of all other courts,
15
other than the jurisdiction of:
16
(a) the Federal Court under subsection 56(2); and
17
(b) the High Court under section 75 of the Constitution.
18
(3) The relief that the Federal Circuit Court may grant in an action or
19
proceeding for infringement of PBR includes an injunction (subject
20
to such terms, if any, as the Federal Circuit Court thinks fit) and, at
21
the option of the plaintiff, either damages or an account of profits.
22
(4) The regulations may make provision in relation to the practice and
23
procedure of the Federal Circuit Court in actions under this Act,
24
including provision prescribing the time within which any action
25
may be begun, or any other act or thing may be done, and
26
providing for the extension of any such time.
27
(5) Subsection (4) does not limit the power of the Judges of the
28
Federal Circuit Court, or a majority of them, to make Rules of
29
Court under section 81 of the Federal Circuit Court of Australia
30
Act 1999 that are consistent with the regulations referred to in that
31
subsection.
32
Plant Breeder's Rights Act 1994: Federal Circuit Court Schedule 4
Intellectual Property Laws Amendment Bill 2013 No. , 2013 35
19 Subsection 57(1)
1
Omit "The Court", substitute "A court".
2
20 Subsection 57(1)
3
Omit "the Court", substitute "the court".
4
21 Section 72
5
Omit "the High Court Rules and the Federal Court Rules", substitute
6
"Rules of Court of the High Court, the Federal Court or the Federal
7
Circuit Court".
8
Schedule 5 Australia New Zealand Single Economic Market
Part 1 Amendments
36 Intellectual Property Laws Amendment Bill 2013 No. , 2013
Schedule 5
--
Australia New Zealand Single
1
Economic Market
2
Part 1
--
Amendments
3
Designs Act 2003
4
1 Section 145
5
Before "Where", insert "(1)".
6
2 Section 145
7
After "Australia", insert "or New Zealand".
8
3 Section 145
9
Omit "post", substitute "a prescribed means".
10
4 At the end of section 145
11
Add:
12
(2) After the time specified in the regulations, a reference in this
13
section to an address includes a reference to an electronic address.
14
(3) The time specified under subsection (2) must be later than the day
15
on which the regulations are registered under the Legislative
16
Instruments Act 2003.
17
(4) For the purposes of this section, the question of whether an
18
electronic address is in Australia is to be determined in accordance
19
with the regulations.
20
(5) For the purposes of this section, the question of whether an
21
electronic address is in New Zealand is to be determined in
22
accordance with the regulations.
23
Patents Act 1990
24
5 Section 3 (list of definitions)
25
Insert "Board".
26
Australia New Zealand Single Economic Market Schedule 5
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 37
6 Section 3 (list of definitions)
1
Insert "Director-General of IP Australia".
2
7 Section 3 (list of definitions)
3
Insert "New Zealand Assistant Commissioner of Patents".
4
8 Section 3 (list of definitions)
5
Insert "New Zealand Commissioner of Patents".
6
9 Section 3 (list of definitions)
7
Insert "New Zealand delegate".
8
10 Section 3 (list of definitions)
9
Insert "New Zealand Patents Minister".
10
11 Section 3 (list of definitions)
11
Insert "New Zealand patents official".
12
12 Section 3 (list of definitions)
13
Omit "Professional Standards Board".
14
13 Section 3 (list of definitions)
15
Insert "Registrar of Companies of New Zealand".
16
14 Subsection 20(2)
17
Omit "or an employee,", substitute "an employee, or a New Zealand
18
delegate,".
19
15 At the end of section 20
20
Add:
21
(3) For the purposes of this section, it is immaterial whether an act was
22
done in New Zealand.
23
16 At the end of section 183
24
Add:
25
Schedule 5 Australia New Zealand Single Economic Market
Part 1 Amendments
38 Intellectual Property Laws Amendment Bill 2013 No. , 2013
(3) The Designated Manager may disclose to the Registrar of
1
Companies of New Zealand information (including personal
2
information within the meaning of the Privacy Act 1988) that is:
3
(a) relevant to the functions conferred on the Registrar of
4
Companies of New Zealand by or under the Companies Act
5
1993 of New Zealand; and
6
(b) obtained by the Designated Manager as a result of the
7
performance of functions and duties, or the exercise of
8
powers, in relation to incorporated patent attorneys.
9
(4) For the purposes of subsection (3), it is immaterial whether the
10
disclosure takes place in New Zealand.
11
(5) The Commissioner may disclose to a New Zealand delegate
12
information (including personal information within the meaning of
13
the Privacy Act 1988) that is relevant to the exercise of the powers,
14
or the performance of the functions, delegated to the New Zealand
15
delegate under subsection 209(1A).
16
(6) For the purposes of subsection (5), it is immaterial whether the
17
disclosure takes place in New Zealand.
18
17 Section 185
19
Repeal the section.
20
18 Paragraph 198(4)(a)
21
Repeal the paragraph.
22
19 Subsection 198(5)
23
Omit "Professional Standards Board", substitute "Board".
24
20 Subsections 198(7) and (8)
25
Repeal the subsections, substitute:
26
(7) A reference in this section to conviction of an offence includes a
27
reference to:
28
(a) the making of an order under section 19B of the Crimes Act
29
1914 in relation to the offence; or
30
(b) the making of an order under a corresponding provision of a
31
law of:
32
(i) a State; or
33
Australia New Zealand Single Economic Market Schedule 5
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 39
(ii) a Territory; or
1
(iii) New Zealand;
2
in relation to the offence.
3
21 At the end of section 198
4
Add:
5
New Zealand
6
(12) It is immaterial whether a matter mentioned in:
7
(a) paragraph (4)(b), (c), (d), (e), (f) or (g); or
8
(b) subsection (5); or
9
(c) paragraph (9)(a), (b) or (c); or
10
(d) paragraph (11)(b);
11
concerns something that happened in New Zealand.
12
22 Section 199
13
Before "The name", insert "(1)".
14
23 At the end of section 199
15
Add:
16
(2) It is immaterial whether the prescribed grounds concern something
17
that happened in New Zealand.
18
24 Before subsection 209(1)
19
Insert:
20
Delegation to employees
21
25 After subsection 209(1)
22
Insert:
23
Delegation to New Zealand patents officials
24
(1A) The Commissioner may, by instrument, signed by him or her,
25
delegate all or any of the Commissioner's powers or functions
26
under this Act to a New Zealand patents official.
27
(1B) A function or power delegated under subsection (1A) may be
28
performed or exercised by the delegate in New Zealand.
29
Schedule 5 Australia New Zealand Single Economic Market
Part 1 Amendments
40 Intellectual Property Laws Amendment Bill 2013 No. , 2013
26 Before subsection 209(2)
1
Insert:
2
Direction or supervision
3
27 Section 214
4
Before "A document", insert "(1)".
5
28 At the end of section 214
6
Add:
7
(2) For the purposes of this Act, a prescribed document is taken to
8
have been filed with the Patent Office if the document is delivered
9
or given to:
10
(a) the New Zealand Commissioner of Patents; or
11
(b) a New Zealand Assistant Commissioner of Patents; or
12
(c) a person who, under a law of New Zealand, is a delegate of
13
the New Zealand Commissioner of Patents;
14
in a prescribed manner.
15
(3) The regulations may provide that a document filed with the Patent
16
Office because of subsection (2) is taken to have been so filed at
17
the time ascertained in accordance with the regulations.
18
29 Section 221
19
Before "Where", insert "(1)".
20
30 Section 221
21
After "Australia", insert "or New Zealand".
22
31 Section 221
23
Omit "post", substitute "a prescribed means".
24
32 At the end of section 221
25
Add:
26
(2) After the time specified in the regulations, a reference in this
27
section to an address includes a reference to an electronic address.
28
Australia New Zealand Single Economic Market Schedule 5
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 41
(3) The time specified under subsection (2) must be later than the day
1
on which the regulations are registered under the Legislative
2
Instruments Act 2003.
3
(4) For the purposes of this section, the question of whether an
4
electronic address is in Australia is to be determined in accordance
5
with the regulations.
6
(5) For the purposes of this section, the question of whether an
7
electronic address is in New Zealand is to be determined in
8
accordance with the regulations.
9
33 After paragraph 223(1)(b)
10
Insert:
11
(ba) a New Zealand delegate; or
12
34 After subsection 223(1)
13
Insert:
14
(1A) For the purposes of subsection (1), it is immaterial whether a
15
relevant act took place, or is to take place, in New Zealand.
16
(1B) For the purposes of subsection (1), it is immaterial whether an error
17
or omission took place in New Zealand.
18
35 After subsection 224(3)
19
Insert:
20
(3A) For the purposes of this section, it is immaterial whether a decision
21
was made in New Zealand.
22
36 Section 227 (heading)
23
Repeal the heading, substitute:
24
227 Fees payable under this Act
25
37 At the end of section 227
26
Add:
27
(6) For the purposes of this Act, if:
28
(a) a fee is declared by the regulations to be a fee to which this
29
subsection applies; and
30
Schedule 5 Australia New Zealand Single Economic Market
Part 1 Amendments
42 Intellectual Property Laws Amendment Bill 2013 No. , 2013
(b) the fee is paid to:
1
(i) the New Zealand Commissioner of Patents; or
2
(ii) a New Zealand Assistant Commissioner of Patents; or
3
(iii) a person who, under a law of New Zealand, is a delegate
4
of the New Zealand Commissioner of Patents; and
5
(c) the New Zealand Commissioner of Patents, the New Zealand
6
Assistant Commissioner of Patents, or the delegate, as the
7
case may be, is authorised to receive the fee on behalf of the
8
Commonwealth; and
9
(d) the fee is paid in New Zealand currency;
10
then:
11
(e) the liability to pay the fee is discharged; and
12
(f) this Act has effect as if the fee had been paid in accordance
13
with the regulations.
14
(7) For the purposes of subsection (6), the amount of the fee in New
15
Zealand currency is to be ascertained in accordance with the
16
regulations.
17
38 After section 227
18
Insert:
19
227AA Receipt of fees payable under New Zealand law
20
The regulations may make provision for and in relation to
21
authorising:
22
(a) the Commissioner; or
23
(b) a Deputy Commissioner; or
24
(c) an employee;
25
to receive, on behalf of New Zealand, a specified fee payable under
26
a specified law of New Zealand that relates to patents for
27
inventions, so long as:
28
(d) the fee is paid in Australian currency; and
29
(e) the amount of the fee in Australian currency is ascertained in
30
accordance with the regulations.
31
Australia New Zealand Single Economic Market Schedule 5
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 43
227AB Application of administrative law regime to decisions made
1
in New Zealand
2
Judicial review
3
(1) For the purposes of the application of the Administrative Decisions
4
(Judicial Review) Act 1977 to a decision under this Act, it is
5
immaterial whether the decision was made in New Zealand.
6
Note:
See also the Trans-Tasman Proceedings Act 2010.
7
(2) For the purposes of subsection (1), decision has the same meaning
8
as in the Administrative Decisions (Judicial Review) Act 1977.
9
Merits review
10
(3) For the purposes of the application of the Administrative Appeals
11
Tribunal Act 1975 to a decision under this Act, it is immaterial
12
whether the decision was made in New Zealand.
13
Note:
See also the Trans-Tasman Proceedings Act 2010.
14
(4) For the purposes of subsection (3), decision has the same meaning
15
as in the Administrative Appeals Tribunal Act 1975.
16
39 Section 227A (heading)
17
Repeal the heading, substitute:
18
227A Trans-Tasman IP Attorneys Board
19
40 Subsection 227A(1)
20
Repeal the subsection, substitute:
21
(1) The body known immediately before the commencement of this
22
subsection as the Professional Standards Board for Patent and
23
Trade Marks Attorneys is continued in existence as the
24
Trans-Tasman IP Attorneys Board.
25
Note 1:
In this Act, Board means the Trans-Tasman IP Attorneys Board--see
26
Schedule 1.
27
Note 2:
See also section 25B of the Acts Interpretation Act 1901.
28
Schedule 5 Australia New Zealand Single Economic Market
Part 1 Amendments
44 Intellectual Property Laws Amendment Bill 2013 No. , 2013
41 Subsection 227A(2)
1
Omit "Professional Standards Board" (wherever occurring), substitute
2
"Board".
3
42 After subsection 227A(2)
4
Insert:
5
Membership of the Board
6
(2A) The Board consists of the following members:
7
(a) a Chair;
8
(b) the Director-General of IP Australia;
9
(c) the New Zealand Commissioner of Patents;
10
(d) at least 2 members nominated by the New Zealand Patents
11
Minister to represent the New Zealand patent attorney
12
profession;
13
(e) at least 2 other members.
14
(2B) The total number of members of the Board must not exceed 10.
15
Appointment of members of the Board
16
(2C) Each member of the Board mentioned in paragraph (2A)(a), (d) or
17
(e) is to be appointed by the Minister by written instrument.
18
Note:
For reappointment, see the Acts Interpretation Act 1901.
19
(2D) A person is not eligible for appointment as a member of the Board
20
mentioned in paragraph (2A)(a), (d) or (e) unless the Minister is
21
satisfied that the person has:
22
(a) substantial experience or knowledge; and
23
(b) significant standing;
24
in at least one of the following fields:
25
(c) Australian patent attorney practice;
26
(d) New Zealand patent attorney practice;
27
(e) Australian trade mark attorney practice;
28
(f) the regulation of persons engaged in a prescribed occupation;
29
(g) public administration;
30
(h) academia.
31
(2E) A member of the Board holds office on a part-time basis.
32
Australia New Zealand Single Economic Market Schedule 5
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 45
Period of appointment for members of the Board
1
(2F) A member of the Board mentioned in paragraph (2A)(a), (d) or (e)
2
holds office for the period specified in the instrument of
3
appointment. The period must not exceed:
4
(a) in the case of the member mentioned in paragraph (2A)(a)--
5
3 years; or
6
(b) otherwise--5 years.
7
Note:
For reappointment, see the Acts Interpretation Act 1901.
8
Appointment of deputy of Director-General of IP Australia
9
(2G) The Director-General of IP Australia may appoint an APS
10
employee to be his or her deputy for the purpose of attendance at
11
one or more specified meetings of the Board.
12
(2H) If:
13
(a) a person is the deputy of the Director-General of IP Australia
14
for the purpose of attendance at a particular meeting of the
15
Board; and
16
(b) the Director-General of IP Australia is absent from the
17
meeting;
18
the person is entitled to attend the meeting and, when so attending,
19
is taken to be a member of the Board.
20
(2J) A deputy of the Director-General of IP Australia is not entitled to
21
any remuneration or allowances for attending a meeting of the
22
Board (other than remuneration or allowances payable to the
23
deputy in his or her capacity as an APS employee).
24
Appointment of deputy of New Zealand Commissioner of Patents
25
(2K) The New Zealand Commissioner of Patents may appoint a New
26
Zealand patents official to be his or her deputy for the purpose of
27
attendance at one or more specified meetings of the Board.
28
(2L) If:
29
(a) a person is the deputy of the New Zealand Commissioner of
30
Patents for the purpose of attendance at a particular meeting
31
of the Board; and
32
(b) the New Zealand Commissioner of Patents is absent from the
33
meeting;
34
Schedule 5 Australia New Zealand Single Economic Market
Part 1 Amendments
46 Intellectual Property Laws Amendment Bill 2013 No. , 2013
the person is entitled to attend the meeting and, when so attending,
1
is taken to be a member of the Board.
2
(2M) A deputy of the New Zealand Commissioner of Patents is not
3
entitled to any remuneration or allowances for attending a meeting
4
of the Board (other than remuneration or allowances payable to the
5
deputy in his or her capacity as a New Zealand patents official).
6
43 Paragraph 227A(3)(a)
7
Repeal the paragraph, substitute:
8
(a) the terms and conditions on which members of the Board
9
mentioned in paragraph (2A)(a), (d) or (e) hold office; and
10
(aa) the manner in which members of the Board mentioned in
11
paragraph (2A)(a), (d) or (e) may resign their appointments;
12
and
13
(ab) the termination of the appointment of members of the Board
14
mentioned in paragraph (2A)(a), (d) or (e); and
15
44 Paragraphs 227A(3)(b) and (c)
16
Omit "Professional Standards Board", substitute "Board".
17
45 Subsections 227A(4) and (5)
18
Omit "Professional Standards Board", substitute "Board".
19
46 At the end of section 227A
20
Add:
21
(7) The Board may perform its functions in Australia or New Zealand.
22
47 Subparagraph 228(2)(r)(ia)
23
Omit "Professional Standards Board", substitute "Board".
24
48 After subsection 228(4)
25
Insert:
26
(4A) If the regulations confer a function on a person or body, the
27
regulations may provide that the function may be performed in
28
Australia or New Zealand.
29
Australia New Zealand Single Economic Market Schedule 5
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 47
(4B) If the regulations confer a power on a person or body, the
1
regulations may provide that the power may be exercised in
2
Australia or New Zealand.
3
(4C) If the regulations provide that application may be made to the
4
Administrative Appeals Tribunal for review of a decision, the
5
regulations may provide that it is immaterial whether the decision
6
was made in New Zealand.
7
(4D) The regulations may provide that it is immaterial whether an act or
8
omission mentioned in the regulations took place in New Zealand.
9
(4E) The regulations may provide that it is immaterial whether a matter
10
mentioned in the regulations concerns something that took place in
11
New Zealand.
12
49 Schedule 1
13
Insert:
14
Board means the Trans-Tasman IP Attorneys Board continued in
15
existence by section 227A.
16
50 Schedule 1 (definition of company)
17
Repeal the definition, substitute:
18
company means:
19
(a) a company registered under the Corporations Act 2001; or
20
(b) a company registered under the Companies Act 1993 of New
21
Zealand.
22
51 Schedule 1
23
Insert:
24
Director-General of IP Australia means the SES employee who
25
holds or performs the duties of the position of Director-General of
26
IP Australia.
27
52 Schedule 1 (at the end of the definition of file)
28
Add:
29
Note:
See also section 214.
30
Schedule 5 Australia New Zealand Single Economic Market
Part 1 Amendments
48 Intellectual Property Laws Amendment Bill 2013 No. , 2013
53 Schedule 1
1
Insert:
2
New Zealand Assistant Commissioner of Patents means a person
3
who holds or performs the duties of an office or position of
4
Assistant Commissioner of Patents under or in accordance with a
5
law of New Zealand.
6
54 Schedule 1
7
Insert:
8
New Zealand Commissioner of Patents means the person who
9
holds or performs the duties of the office or position of
10
Commissioner of Patents under or in accordance with a law of
11
New Zealand.
12
55 Schedule 1
13
Insert:
14
New Zealand delegate means a New Zealand patents official who
15
is a delegate under subsection 209(1A).
16
56 Schedule 1
17
Insert:
18
New Zealand Patents Minister means the Minister of New
19
Zealand who:
20
(a) under the authority of a warrant; or
21
(b) with the authority of the Prime Minister of New Zealand;
22
is responsible for the administration of a law of New Zealand
23
relating to the regulation of patent attorneys.
24
57 Schedule 1
25
Insert:
26
New Zealand patents official means a person:
27
(a) who is an employee in any part of the State services of New
28
Zealand; and
29
(b) whose functions or duties relate to the administration of a law
30
of New Zealand relating to patents for inventions.
31
Australia New Zealand Single Economic Market Schedule 5
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 49
58 Schedule 1 (definition of Professional Standards Board)
1
Repeal the definition.
2
59 Schedule 1
3
Insert:
4
Registrar of Companies of New Zealand means the person who
5
holds or performs the duties of the office or position of Registrar of
6
Companies under or in accordance with the Companies Act 1993
7
of New Zealand.
8
Plant Breeder's Rights Act 1994
9
60 Subsection 3(1)
10
Insert:
11
address has a meaning affected by subsection (2).
12
61 Subsection 3(2)
13
Repeal the subsection, substitute:
14
Electronic address
15
(2) After the time specified in the regulations, a reference in this Act to
16
an address includes a reference to an electronic address.
17
(3) The time specified under subsection (2) must be later than the day
18
on which the regulations are registered under the Legislative
19
Instruments Act 2003.
20
(4) Subsection (2) of this section does not apply to the following
21
references to an address:
22
(a) a reference in subsection 26(2);
23
(b) the first reference in subsection 26(3).
24
(5) For the purposes of this Act, the question of whether an electronic
25
address is in Australia is to be determined in accordance with the
26
regulations.
27
(6) For the purposes of this Act, the question of whether an electronic
28
address is in New Zealand is to be determined in accordance with
29
the regulations.
30
Schedule 5 Australia New Zealand Single Economic Market
Part 1 Amendments
50 Intellectual Property Laws Amendment Bill 2013 No. , 2013
62 After subsection 19(5)
1
Insert:
2
(5A) An address given under paragraph (5)(c) must be an address in
3
Australia or New Zealand.
4
63 Subsection 21(5)
5
After "Australia", insert "or New Zealand".
6
64 Subsection 26(3)
7
After "overseas", insert "in a country other than New Zealand".
8
65 Subsection 26(3)
9
After "Australia" (first occurring), insert "or New Zealand".
10
66 Subsection 26(3)
11
Omit "a postal address in Australia", substitute "an address in Australia
12
or New Zealand".
13
67 Subsection 31(3)
14
After "Australia", insert "or New Zealand".
15
68 Section 73
16
Repeal the section, substitute:
17
73 Service of documents
18
If:
19
(a) this Act provides for a document to be served on, or given or
20
sent to, a person; and
21
(b) the person has given the Secretary or the Registrar an address
22
in Australia or New Zealand for service;
23
the document may be served on, or given or sent to, the person by a
24
prescribed means to that address.
25
Trade Marks Act 1995
26
69 Readers guide (list of terms defined in section 6)
27
Insert the following term in its appropriate alphabetical position:
28
Australia New Zealand Single Economic Market Schedule 5
Amendments Part 1
Intellectual Property Laws Amendment Bill 2013 No. , 2013 51
Board.
1
70 Readers guide (list of terms defined in section 6)
2
Omit "Professional Standards Board".
3
71 Subsection 6(1)
4
Insert:
5
Board has the same meaning as in the Patents Act 1990.
6
72 Subsection 6(1) (definition of Professional Standards
7
Board)
8
Repeal the definition.
9
73 At the end of subsection 215(5)
10
Add "or New Zealand".
11
74 Paragraph 215(6)(a)
12
Repeal the paragraph, substitute:
13
(a) if the person has an address for service--the document may
14
be served on, or given or sent to, the person by a prescribed
15
means to that address; or
16
75 Paragraph 215(6)(b)
17
After "Australia" (first occurring), insert "or New Zealand".
18
76 Paragraph 215(6)(b)
19
Omit "post", substitute "a prescribed means".
20
77 Paragraph 215(6)(b)
21
After "Australia" (second occurring), insert "or New Zealand".
22
78 At the end of section 215
23
Add:
24
(8) After the time specified in the regulations, a reference in this
25
section to an address includes a reference to an electronic address.
26
Schedule 5 Australia New Zealand Single Economic Market
Part 1 Amendments
52 Intellectual Property Laws Amendment Bill 2013 No. , 2013
(9) The time specified under subsection (8) must be later than the day
1
on which the regulations are registered under the Legislative
2
Instruments Act 2003.
3
(10) For the purposes of this section, the question of whether an
4
electronic address is in Australia is to be determined in accordance
5
with the regulations.
6
(11) For the purposes of this section, the question of whether an
7
electronic address is in New Zealand is to be determined in
8
accordance with the regulations.
9
79 Subsection 228A(5)
10
Omit "the Professional Standards Board", substitute "the Board".
11
80 Subsection 228A(5) (note)
12
Omit "Professional Standards Board", substitute "Board".
13
81 Subparagraph 231(2)(ha)(ia)
14
Omit "Professional Standards Board", substitute "Board".
15
Australia New Zealand Single Economic Market Schedule 5
Transitional provisions Part 2
Intellectual Property Laws Amendment Bill 2013 No. , 2013 53
Part 2
--
Transitional provisions
1
82 Transitional
--
registration as a patent attorney
2
(1)
The Designated Manager must:
3
(a) register as a patent attorney an individual who, immediately
4
before the commencement of this item:
5
(i) was registered as a patent attorney under a law of New
6
Zealand; and
7
(ii) was not a registered patent attorney (within the meaning
8
of the Patents Act 1990); and
9
(b) do so as soon as practicable after the commencement of this
10
item.
11
(2)
The registration is to consist of entering the individual's name in the
12
Register of Patent Attorneys.
13
(3)
For the purposes of the Patents Act 1990, the registration is taken to be
14
under that Act.
15
83 Transitional
--
qualification for registration as a patent
16
attorney
17
(1)
A qualification specified in, or ascertained in accordance with,
18
regulations made for the purposes of paragraph 198(4)(b) of the Patents
19
Act 1990 may consist of passing examinations conducted in New
20
Zealand, so long as:
21
(a) the examinations are specified in those regulations; and
22
(b) at least one of those examinations was passed before the
23
commencement of this item; and
24
(c) the remaining examinations are passed before the end of the
25
4-year period beginning at the commencement of this item.
26
(2)
Regulations authorised by subitem (1) do not apply to examinations
27
passed by an individual unless the individual applies for registration as
28
a patent attorney under section 198 of the Patents Act 1990 within 6
29
months after the completion of the last of those examinations.
30
(3)
Subitem (1) does not limit paragraph 198(4)(b) of the Patents Act 1990.
31
Schedule 5 Australia New Zealand Single Economic Market
Part 2 Transitional provisions
54 Intellectual Property Laws Amendment Bill 2013 No. , 2013
84 Transitional
--
conduct of patent attorneys
1
(1)
Grounds prescribed for the purposes of section 199 of the Patents Act
2
1990 may relate to conduct that took place in New Zealand before the
3
commencement of this item.
4
(2)
Subitem (1) does not limit section 199 of the Patents Act 1990.
5
85 Transitional
--
registration as a trade marks attorney
6
(1)
If:
7
(a) immediately before the commencement of this item, an
8
individual:
9
(i) was registered as a patent attorney under a law of New
10
Zealand; and
11
(ii) was not a registered trade marks attorney (within the
12
meaning of the Trade Marks Act 1995); and
13
(b) within 12 months after the commencement of this item, the
14
individual applies to the Designated Manager to be registered
15
as a trade marks attorney; and
16
(c) the application is in accordance with the regulations; and
17
(d) the individual satisfies the Designated Manager, in
18
accordance with the regulations, that the individual's level of
19
competency in trade marks law and practice is sufficient to
20
warrant the individual becoming a registered trade marks
21
attorney; and
22
(e) the individual has not been convicted of a prescribed offence
23
during the 5-year period ending when the application was
24
made; and
25
(f) the individual is not under sentence of imprisonment for a
26
prescribed offence;
27
the Designated Manager must register the individual as a trade marks
28
attorney.
29
(2)
The registration is to consist of entering the individual's name in the
30
Register of Trade Marks Attorneys.
31
(3)
For the purposes of the Trade Marks Act 1995, the registration is taken
32
to be under that Act.
33
(4)
The Governor-General may make regulations for the purposes of this
34
item.
35
Australia New Zealand Single Economic Market Schedule 5
Transitional provisions Part 2
Intellectual Property Laws Amendment Bill 2013 No. , 2013 55
(5)
It is immaterial whether a matter mentioned in paragraph (1)(d), (e) or
1
(f) concerns something that happened in New Zealand.
2
(6)
A reference in this item to conviction of an offence includes a reference
3
to:
4
(a) the making of an order under section 19B of the Crimes Act
5
1914 in relation to the offence; or
6
(b) the making of an order under a corresponding provision of a
7
law of:
8
(i) a State; or
9
(ii) a Territory; or
10
(iii) New Zealand;
11
in relation to the offence.
12
Schedule 6 Other amendments
Part 1 Document retention
56 Intellectual Property Laws Amendment Bill 2013 No. , 2013
Schedule 6
--
Other amendments
1
Part 1
--
Document retention
2
Division 1
--
Amendments
3
Designs Act 2003
4
1 Paragraph 69(3)(b)
5
Omit "design; and", substitute "design.".
6
2 Paragraph 69(3)(c)
7
Repeal the paragraph.
8
Patents Act 1990
9
3 Paragraph 228(2)(u)
10
Repeal the paragraph.
11
Trade Marks Act 1995
12
4 Paragraph 231(2)(h)
13
Repeal the paragraph.
14
Division 2
--
Application of amendments
15
5 Application of amendments
16
The amendments made by this Part apply in relation to material and
17
documents provided or filed before, on or after the commencement of
18
this Part.
19
Other amendments Schedule 6
Technical amendments Part 2
Intellectual Property Laws Amendment Bill 2013 No. , 2013 57
Part 2
--
Technical amendments
1
Division 1
--
Amendments
2
Patents Act 1990
3
6 Section 24 (heading)
4
Repeal the heading, substitute:
5
24 Validity not affected by making information available in certain
6
circumstances
7
7 Section 29A (note)
8
Repeal the note, substitute:
9
(6) An applicant is not entitled to ask that any action be taken, or that
10
he or she be allowed to take any action, under this Act in relation
11
to a PCT application unless the following requirements of
12
subsection (5) have been met (if applicable):
13
(a) a translation of the application into English has been filed;
14
(b) the prescribed documents have been filed;
15
(c) the prescribed fees have been paid.
16
Note:
A failure to comply with subsection (5) may also result in the PCT
17
application lapsing: see paragraph 142(2)(f).
18
8 Subsection 29B(2)
19
Omit "within the prescribed period".
20
9 Before subsection 40(2)
21
Insert:
22
Requirements relating to complete specifications
23
10 Before subsection 41(1)
24
Insert:
25
Schedule 6 Other amendments
Part 2 Technical amendments
58 Intellectual Property Laws Amendment Bill 2013 No. , 2013
Provisional specifications
1
(1A) A specification is taken to comply with subsection 40(1), so far as
2
it requires a description of a micro-organism, if:
3
(a) the micro-organism is deposited with a prescribed depository
4
institution in accordance with such provisions of the
5
Budapest Treaty as are applicable; and
6
(b) the prescribed circumstances apply.
7
Complete specifications
8
11 Paragraph 43(2A)(b)
9
After "discloses", insert ", or a prescribed set of prescribed documents
10
considered together disclose,".
11
12 After subsection 43(2A)
12
Insert:
13
(2B) A prescribed document, or a prescribed set of prescribed
14
documents considered together, is taken to disclose the invention in
15
a claim as mentioned in paragraph (2A)(b) so far as such disclosure
16
requires a description of a micro-organism, if:
17
(a) the micro-organism is deposited with a prescribed depository
18
institution in accordance with such provisions of the
19
Budapest Treaty as are applicable; and
20
(b) the prescribed circumstances apply.
21
13 At the end of subparagraph 101E(1)(a)(ix)
22
Add "and".
23
14 Paragraph 119(3)(b)
24
Omit "through any publication or use of the invention".
25
15 Subsection 191A(4)
26
Omit "a declaration, or rectify the Register, under this section",
27
substitute "a declaration under subsection (2), or rectify the Register
28
under subsection (3),".
29
Other amendments Schedule 6
Technical amendments Part 2
Intellectual Property Laws Amendment Bill 2013 No. , 2013 59
Division 2
--
Application of amendments
1
16 Application of amendments
2
(1)
The amendments made by items 6 and 14 apply in relation to
3
information that is made publicly available at or after the time those
4
items commence.
5
(2)
The amendments made by items 7 and 8 apply in relation to
6
applications made at or after the time those items commence.
7
(3)
The amendment made by item 10 applies in relation to provisional
8
applications made at or after the time that item commences.
9
(4)
The amendments made by items 11 and 12 apply in relation to:
10
(a) patents for which the complete application is made at or after
11
the time those items commence; and
12
(b) standard patents for which the application had been made
13
before the time those items commence, if the applicant had
14
not asked for an examination of the patent request and
15
specification for the application under section 44 of the
16
Patents Act 1990 before that time; and
17
(c) innovation patents granted at or after the time those items
18
commence, if the complete application to which the patent
19
relates had been made before that time; and
20
(d) complete patent applications made at or after the time those
21
items commence; and
22
(e) complete applications for standard patents made before the
23
time those items commence, if the applicant had not asked
24
for an examination of the patent request and specification for
25
the application under section 44 of the Patents Act 1990
26
before that time; and
27
(f) complete applications for innovation patents made before the
28
time those items commence, if a patent had not been granted
29
in relation to the application on or before that time; and
30
(g) innovation patents granted before the time those items
31
commence, if:
32
(i) the Commissioner had not decided to examine the
33
complete specification relating to the patent under
34
section 101A of the Patents Act 1990 before that time;
35
and
36
Schedule 6 Other amendments
Part 2 Technical amendments
60 Intellectual Property Laws Amendment Bill 2013 No. , 2013
(ii) the patentee or any other person had not asked the
1
Commissioner to examine the complete specification
2
relating to the patent under section 101A of the Patents
3
Act 1990 before that time.
4
(5)
The amendment made by item 15 applies on and after the day that item
5
commences in relation to patents granted before, on or after that
6
commencement.
7
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