(a)  a person is the deputy of the Director‑General of IP Australia for the purpose of attendance at a particular meeting of the Board; and. (c)  a decision of the Director under subsection 147(2) or (3), section 149 or subsection 152(1). (5)  If the patentee offers the other parties to a contract mentioned in subsection (4) a new contract that does not contain the void condition but that otherwise gives the parties the same rights as the existing contract, then, whether or not the other parties accept the new contract in place of the existing contract, subsection (4) ceases to apply, but the patentee is not entitled to damages or an account of profit for an infringement of the patent committed before the offer of the new contract. (6)  Subsection 36(2) of the Acts Interpretation Act 1901 does not apply in relation to the act mentioned in subsection (1) of this section. (d)  at all times since the date of filing of the specification, samples of the micro‑organism have been obtainable from a prescribed depositary institution as provided by those rules. (2K)  The New Zealand Commissioner of Patents may appoint a New Zealand patents official to be his or her deputy for the purpose of attendance at one or more specified meetings of the Board. (1)  Where a complete specification is amended after becoming open to public inspection, damages shall not be awarded, and an order shall not be made for an account of profits, in respect of any infringement of the patent before the date of the decision or order allowing or directing the amendment: (a)  unless the court is satisfied that the specification without the amendment was framed in good faith and with reasonable skill and knowledge; or. (c)  even if the person is directly or indirectly authorised by the nominated person or patentee to exploit the invention. (2)  This section does not protect a person who deals with a patentee otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the patentee. Director means the Director of Safeguards. means a substance (including a mixture or compound of substances) for therapeutic use whose application (or one of whose applications) involves: but does not include a substance that is solely for use in. The Commissioner may disclose the result of any search made for the purpose of making a report under this Act. foreign land vehicle means a land vehicle owned by a person ordinarily resident in a prescribed foreign country. means the Patent Cooperation Treaty signed at Washington on 19 June 1970, as that treaty is in force for Australia from time to time, together with the Regulations annexed to that treaty, as those Regulations are in force for Australia from time to time. (4)  Where required under subsection (3), the Commissioner must give a direction accordingly, unless the applicant has already asked, or been directed to ask, for an examination of the patent request and specification. (3)  Subsection (1) does not give the applicant a right to start proceedings in respect of the doing of an act unless: (a)  a patent is granted on the application; and. 101EA  Revocation of certificate of examination. Whether a company is related to another company. invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention. This country-specific Q&A provides an overview of Patent Litigation laws and regulations applicable in Australia. patent application means an application for a standard patent or an application for an innovation patent. (2)  A patent mentioned in subsection (1) does not have effect in any place in which it did not have effect immediately before the commencing day. has the meaning given by subsection 201A(2). Applications for patents—special rules for Convention applications. A patent may be granted to 2 or more nominated persons jointly. related company group means a group of 2 or more companies, where each member of the group is related to each other member of the group. The notes at the end of this compilation (the endnotes) include information about amending laws and the amendment history of provisions of the compiled law. (2)  The Commissioner must give the opponent and the patentee a reasonable opportunity to be heard before deciding the case. 189 Power of patentee to deal with patent, 191A Commissioner’s power to rectify register, 194 Information obtainable from Commissioner, 197 Evidence—certificate and copies of documents, 197AA Evidence of matters arising under PCT, 201 Acting or holding out without being registered, 201A When a person carries on business, practises or acts as a patent attorney, 201B Incorporated patent attorney must have a patent attorney director, 202 Documents prepared by legal practitioners, 202A Documents prepared by a member of a partnership, 202B Documents prepared by incorporated patent attorneys and incorporated legal practices, 203 Attendance at patent attorney’s office, 209 Delegation of Commissioner’s powers and functions, 210A Sanctions for non-compliance with Commissioner’s requirements, 211 Recovery of costs awarded by Commissioner, 212 Copies of examination reports to be communicated, 215 Death of applicant or nominated person, 216 Exercise of discretionary power by Commissioner, 220 Costs of attendance of patent attorney, 222A Doing act when Patent Office reopens after end of period otherwise provided for doing act, 225 Conduct of employees and agents of natural persons, 226 Documents open to public inspection do not infringe copyright, 227AA Receipt of fees payable under New Zealand law, 227AB Application of administrative law regime to decisions made in New Zealand, 231 Application of Part III of 1989 Amending Act, 235 Other applications and proceedings under 1952 Act, 237 Orders, directions etc. 103  Consent of mortgagee or exclusive licensee needed. (1B)  A function or power delegated under subsection (1A) may be performed or exercised by the delegate in New Zealand. Revocation of patent after grant of compulsory licence under section 133. (2)  Subsection (1) does not apply to the export from Australia of goods for purposes described in paragraph (1)(b) unless the term of the patent has been extended under Part 3 of Chapter 6 and the goods consist of or contain: (a)  a pharmaceutical substance per se that is in substance disclosed in the complete specification of the patent and in substance falls within the scope of the claim or claims of that specification; or. (2)  The regulations may prescribe circumstances in which PCT applications may be withdrawn, or are to be taken to be withdrawn. (1)  Where a complete specification filed in respect of an application for a standard patent (other than a PCT application) has not become open to public inspection, the Commissioner must, if asked to do so by the applicant, publish, in accordance with the regulations, a notice in the Official Journal that the complete specification is open to public inspection. associated technology has the same meaning as in the Safeguards Act. (6)  On the filing of a copy of an order, the patent request or complete specification is to be taken to have been amended in the manner specified in the order. Note:          For the purposes of paragraph (e), the later application need not have been made in the same Convention country as the earlier application. (3)  An application must include a copy of a statement made by or on behalf of, and with the authorisation of, the eligible importing country to the effect that it will take reasonable measures within its means, proportionate to its administrative capacities and to the risk of trade diversion, to prevent re‑exportation from its territory of a pharmaceutical product imported into its territory in accordance with a PPI compulsory licence. (1)  Where a relevant international application has ceased to be treated as an international application under section 148, the applicant may ask the Commissioner in writing to reinstate it. (1)  A provisional application for a patent lapses at the end of the period prescribed for the purpose of section 38 or, if that period is extended, at the end of the period as so extended. (3)  The Commissioner must not revoke a patent under this section while relevant proceedings in relation to that patent are pending. (2)  A communication made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a communication made for the dominant purpose of a legal practitioner providing legal advice to a client. (5)  Where a divisional application for a standard patent provided for in section 79B (other than a PCT application) is made in respect of an original application that is not a PCT application and: (a)  a notice is published in the Official Journal that the complete specification filed in respect of the original application is open to public inspection; or. (b)  a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined. 140  Commissioner to be given copies of orders. (5)  For the purposes of this section, the question of whether an electronic address is in New Zealand is to be determined in accordance with the regulations. (a)  in relation to a patent request and a complete specification relating to a standard patent—an examination of the request and specification under section 45; or. (6)  An applicant is not entitled to ask that any action be taken, or that he or she be allowed to take any action, under this Act in relation to a PCT application unless the following requirements of subsection (5) have been met (if applicable): (a)  a translation of the application into English has been filed; (b)  the prescribed documents have been filed; Note:          A failure to comply with subsection (5) may also result in the PCT application lapsing: see paragraph 142(2)(f). not to prepare documents or search records. Despite section 15B of the Crimes Act 1914, a prosecution for an offence against subsection 201(1), (2), (3), (4) or (5), or section 202, 202A or 203, may be started at any time within 5 years after the offence was committed. (b)  impose restrictions on the circumstances in which the buyer, lessee or licensee may apply for examination of the patent. 114  Priority date of claims of certain amended specifications, (a)  a complete specification has been amended; and, (b)  the amendment was not allowable under subsection 102(1); and. 202  Documents prepared by legal practitioners. (3)  For the purposes of this section, it is immaterial whether an act was done in New Zealand. (a)  supply by way of sale, exchange, lease, hire or hire‑purchase; and. (1)  A Register of Patents is to be kept at the Patent Office. 82  Revocation of patent and grant of patent of addition instead, (a)  an invention that is an improvement in, or modification of, a main invention is the subject of an independent patent; and. means the Trans‑Tasman IP Attorneys Board continued in existence by section 227A. Designated Manager has the meaning given by section 200A. The following endnotes are included in every compilation: The abbreviation key sets out abbreviations that may be used in the endnotes. (3)  A prosecution for an offence against this Act must not be started in the Federal Court. after priority date, 24.......................... Validity not affected by making information available in certain circumstances. This Part does not prevent a compulsory licence from being ordered under Part 2 in relation to a patented pharmaceutical invention. It will take only 2 minutes to fill in. (1)  The regulations may prescribe documents that relate to a basic application. (b)  on the ground that the specification claims as an invention: (i)  a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; or. (a)  in relation to the exploitation of an invention by or for the Commonwealth—the Commonwealth; and. 126, 2015. The amendment history in endnote 4 provides information about amendments at the provision (generally section or equivalent) level. registered patent attorney means a person registered as a patent attorney under this Act. 172  Assignment of invention to Commonwealth. An office copy of an order made under this Chapter must be served on the Commissioner by the Registrar or other appropriate officer of the court that made the order. (2)  An order under subsection (1) or (1A) may be made subject to such terms (if any) as to costs, advertisements or otherwise, as the court thinks fit. Spruson & Ferguson Lawyers was the first firm in Australia to specialise exclusively in IP law. means letters patent for an invention granted under section 62. has the meaning given by subsection 200(2C). See the following provisions of that Act: (a)    Part 2.5 (taking personal property free of security interests); (b)    Part 2.6 (priority between security interests); (c)    Chapter 4 (enforcement of security interests). applicant has the same meaning as in section 38. 2) 2010, Sch 6 (items 1, 82): 1 Jan 2011 (s 2(1) items 3, 5), Sch 7 (items 108, 109): 19 Apr 2011 (s 2(1) item 18), Sch 2 (items 905–907) and Sch 3 (items 10, 11): 27 Dec 2011 (s 2(1) items 7, 12), Intellectual Property Laws Amendment (Raising the Bar) Act 2012, Sch 1, Sch 3 (items 1–16, 32(1)–(6), 33), Sch 4 (items 1–36) and Sch 6 (items 23–86, 88–103, 133, 134): 15 Apr 2013 (s 2(1) items 2, 4, 5, 7) Sch 2 and Sch 6 (item 87): 16 Apr 2012 (s 2(1) items 3, 6), Sch 1 (items 55, 56), Sch 2 (item 2), Sch 3 (items 32(1)–(6), 33) and Sch 6 (items 133, 134), Sch 4 (items 17, 18): 29 June 2013 (s 2(1) item 16), Sch 1 (items 53, 54): 24 June 2014 (s 2(1) item 2), Intellectual Property Laws Amendment Act 2015, Sch 1 and Sch 5 (items 9–17, 19–21): 25 Aug 2015 (s 2(1) items 2, 8, 10) Sch 2: 23 Jan 2017 (s 2(1) item 3) Sch 4 (items 5–58, 81–83): 24 Feb 2017 (s 2(1) item 5) Sch 5 (items 5, 7): 26 Feb 2015 (s 2(1) item 6) Sch 5 (item 8, 18): 15 Apr 2013 (s 2(1) items 7, 9) Sch 5 (item 22): 25 Feb 2015 (s 2(1) item 11), Sch 1 (item 36), Sch 4 (items 81–83) and Sch 5 (items 7, 22), Norfolk Island Legislation Amendment Act 2015, Sch 2 (item 298): 1 July 2016 (s 2(1) item 5) Sch 2 (items 356–396): 18 June 2015 (s 2(1) item 6), Territories Legislation Amendment Act 2016, Acts and Instruments (Framework Reform) (Consequential Provisions) Act 2015, Sch 1 (items 472–474): 5 Mar 2016 (s 2(1) item 2) Sch 1 (item 673): 24 Feb 2017 (s 2(1) item 3), Sch 4 (items 1, 228): 10 Mar 2016 (s 2(1) item 6), Sch 1 (item 361): 21 Oct 2016 (s 2(1) item 1). 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