C2004A04014 — Patents Act 1990

1 Short title This Act may be cited as the Patents Act 1990 . 2 Commencement (1) Subject to subsection (2), this Act commences on a day to be fixed by Proclamation. (2) If this Act does not commence under subsection (1) within the period of 6 months beginning on the day on which it receives the Royal Assent, it commences on the first day after the end of that period. 2A Object of this Act The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public. 3 Definitions The following expressions are defined, for the purposes of this Act or of a particular Chapter of this Act, in the dictionary in Schedule 1: 1952 Act application approved form associated technology Australia Australian continental shelf Australian Register of Therapeutic Goods authority basic application Board Budapest Treaty certified claim commencing day Commissioner company compensable person complete specification Convention applicant Convention application Convention country depositary institution deposit requirements Deputy Commissioner Designated Manager Director director Director ‑ General of IP Australia eligible importing country eligible person employee examination exclusive licensee exploit exploited for Crown purposes Federal Court file foreign aircraft foreign land vehicle foreign vessel formalities check incorporated legal practice incorporated patent attorney infringement proceedings innovation patent intellectual property advice interested party international application international depositary authority international filing date invention legal practitioner legal representative licence main invention New Zealand Commissioner of Patents New Zealand Patents Minister New Zealand patents official nominated person non ‑ infringement declaration Official Journal patent patentable invention patent application patent area patent attorney director patented pharmaceutical invention patented process patented product patentee patent of addition Patent Office patent request patents work PCT PCT application permit pharmaceutical product pharmaceutical substance PPI PPI compulsory licence PPI order PPI order applicant PPSA security interest preferred means preliminary search and opinion prescribed court prescribed depositary institution prior art base prior art information priority date prohibition order provisional specification receiving Office re ‑ examination Register registered registered patent attorney Registrar of Companies of New Zealand related company group relevant authority relevant international application relevant Minister relevant proceedings rules relating to micro ‑ organisms Safeguards Act services specification standard patent Statute of Monopolies supply Territory therapeutic use this Act TRIPS Agreement work 5 Associated applications For the purposes of this Act, a complete application is to be taken to be associated with a provisional application if, and only if, the patent request filed in respect of the complete application identifies the provisional application and contains a statement to the effect that the applications are associated. [ Note: see sections 29 and 38 ] 6 Deposit requirements For the purposes of this Act, the deposit requirements are to be taken to be satisfied in relation to a micro ‑ organism to which a specification relates if, and only if: (a) the micro ‑ organism was, on or before the date of filing of the specification, deposited with a prescribed depositary institution in accordance with the rules relating to micro ‑ organisms; and (b) the specification includes, at that date, such relevant information on the characteristics of the micro ‑ organism as is known to the applicant; and (c) at all times since the end of the prescribed period, the specification has included: (i) the name of a prescribed depositary institution from which samples of the micro ‑ organism are obtainable as provided by the rules relating to micro ‑ organisms; and (iii) the file, accession or registration number of the deposit given by the institution; and (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. [ Note: see sections 41 and 42 ] 7 Novelty, inventive step and innovative step Novelty (1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately: (a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act; (b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information; (c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1. Inventive step (2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3). (3) The information for the purposes of subsection (2) is: (a) any single piece of prior art information; 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. Innovative step (4) For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention. (5) For the purposes of subsection (4), the information is of the following kinds: (a) prior art information made publicly available in a single document or through doing a single act; (b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information. (6) For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately. [ Notes: (1) For the meaning of document see section 2B of the Acts Interpretation Act 1901. (2) See also the definitions of prior art base and prior art information in Schedule 1: see also paragraph 18(1)(b) and section 98 .] 7A Meaning of useful (1) For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification. (2) The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art. (3) Subsection (1) does not otherwise affect the meaning of the word useful in this Act. 9 Secret use For the purposes of this Act, the following acts are not to be taken to be secret use of an invention in the patent area: (a) any use of the invention by or on behalf of, or with the authority of, the patentee or nominated person, or his or her predecessor in title to the invention, for the purpose of reasonable trial or experiment only; (b) any use of the invention by or on behalf of, or with the authority of, the patentee or nominated person, or his or her predecessor in title to the invention, being use occurring solely in the course of a confidential disclosure of the invention by or on behalf of, or with the authority of, the patentee, nominated person, or predecessor in title; (c) any other use of the invention by or on behalf of, or with the authority of, the patentee or nominated person, or his or her predecessor in title to the invention, for any purpose other than the purpose of trade or commerce; (d) any use of the invention by or on behalf of the Commonwealth, a State, or a Territory where the patentee or nominated person, or his or her predecessor in title to the invention, has disclosed the invention, so far as claimed, to the Commonwealth, State or Territory; (e) any use of the invention by or on behalf of, or with the authority of, the patentee or nominated person, or his or her predecessor in title to the invention, for any purpose, if a complete application is made for the invention within the prescribed period. [ Note: See also paragraph 18(1)(d) ] 10 Certain international applications to be taken to have been given an international filing date (1) Where: (a) an international application specifies Australia as a designated State under Article 4(1)(ii) of the PCT; and (b) the receiving Office does not give the application an international filing date; and (c) the Commissioner is satisfied, on the balance of probabilities, that the application should, under Article 25(2)(a) of the PCT, be treated as if it had been given an international filing date; the application is to be taken, for the purposes of this Act, to have been given an international filing date under Article 11 of the PCT. (2) This section does not apply to an international application that was not filed in the receiving Office in English unless the following documents have been filed: (a) a translation of the application into English; (b) if required by the regulations—a certificate of verification (within the meaning of the regulations) of the translation. (3) Where this section applies, the international filing date of the application is to be taken to be the date that, in the opinion of the Commissioner, should have been given to the application as its international filing date under the PCT. [ Note: international filing date is defined in Schedule 1 .] 11 Act binds the Crown (1) This Act binds the Crown in right of the Commonwealth, of each of the States, of the Australian Capital Territory and of the Northern Territory. (2) Nothing in this Act makes the Crown liable to be prosecuted for an offence. 12 Application of Act This Act extends to: (a) each external Territory; and (b) the Australian continental shelf; and (c) the waters above the Australian continental shelf; and (d) the airspace above Australia, each external Territory and the Australian continental shelf. 12A Application of the Criminal Code Chapter 2 of the Criminal Code applies to all offences created by this Act. Note: Chapter 2 of the Criminal Code sets out the general principles of criminal responsibility. 13 Exclusive rights given by patent (1) Subject to this Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention. (2) The exclusive rights are personal property and are capable of assignment and of devolution by law. (3) A patent has effect throughout the patent area. 14 Assignment of patent (1) An assignment of a patent must be in writing signed by or on behalf of the assignor and assignee. (2) A patent may be assigned for a place in, or part of, the patent area. 15 Who may be granted a patent? (1) Subject to this Act, a patent for an invention may only be granted to a person who: (a) is the inventor; or (b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or (c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or (d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c). (2) A patent may be granted to a person whether or not he or she is an Australian citizen. 16 Co ‑ ownership of patents (1) Subject to any agreement to the contrary, where there are 2 or more patentees: (a) each of them is entitled to an equal undivided share in the patent; and (b) each of them is entitled to exercise the exclusive rights given by the patent for his or her own benefit without accounting to the others; and (c) none of them can grant a licence under the patent, or assign an interest in it, without the consent of the others. (2) Where a patented product, or a product of a patented method or process, is sold by any of 2 or more patentees, the buyer, and a person claiming through the buyer, may deal with the product as if it had been sold by all the patentees. (3) This section does not affect the rights or obligations of a trustee or of the legal representative of a deceased person, or rights or obligations arising out of either of those relationships. 17 Directions to co ‑ owners (1) Where there are 2 or more patentees, the Commissioner may, on the application of any of them, give such directions in accordance with the application as the Commissioner thinks fit, being directions about: (a) a dealing with the patent or an interest in it; or (b) the grant of licences under the patent; or (c) the exercise of a right under section 16 in relation to the patent. (2) If a patentee fails to do anything necessary to carry out a direction under subsection (1) within 14 days after being asked in writing to do so by one of the other patentees, the Commissioner may, on the application of one of those other patentees, direct a person to do it in the name and on behalf of the defaulting patentee. (3) Before giving a direction, the Commissioner must give an opportunity to be heard: (a) in the case of an application by a patentee or patentees under subsection (1)—to the other patentee or patentees; and (b) in the case of an application under subsection (2)—to the defaulting patentee. (4) The Commissioner must not give a direction that: (a) affects the rights or obligations of a trustee or of the legal representative of a deceased person, or rights or obligations arising out of either of those relationships; or (b) is inconsistent with the terms of an agreement between the patentees. 18 Patentable inventions Patentable inventions for the purposes of a standard patent (1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim: (a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and (b) when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an inventive step; and (c) is useful; and (d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention. Patentable inventions for the purposes of an innovation patent (1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim: (a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and (b) when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an innovative step; and (c) is useful; and (d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention. (2) Human beings, and the biological processes for their generation, are not patentable inventions. Certain inventions not patentable inventions for the purposes of an innovation patent (3) For the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions. (4) Subsection (3) does not apply if the invention is a microbiological process or a product of such a process. [ Note: see also sections 7 and 9 .] 19 Certificate of validity (1) In any proceedings in a court in which the validity of a patent, or of a claim, is disputed, the court may certify that the validity of a specified claim was questioned. (2) If a court issues a certificate, then, in any subsequent proceedings for infringement of the claim concerned, or for the revocation of the patent so far as it relates to that claim, the patentee, or any other person supporting the validity of the claim is, on obtaining a final order or judgment in his or her favour, entitled to full costs, charges and expenses as between solicitor and client, so far as that claim is concerned. (3) Subsection (2) has effect subject to any direction by the court trying the proceedings. 20 Validity of patent not guaranteed (1) Nothing done under this Act or the PCT guarantees the granting of a patent, or that a patent is valid, in Australia or anywhere else. (2) The Commonwealth, the Commissioner, a Deputy Commissioner, or an employee, is not liable because of, or in connection with, doing any act under this Act or the PCT, or any proceedings consequent on doing any such act. 21 Validity not implied by making or refusal of non ‑ infringement declaration The making of, or refusal to make, a non ‑ infringement declaration in respect of a claim of a patent does not imply that the claim is valid. 22A Validity not affected by who patent is granted to A patent is not invalid merely because: (a) the patent, or a share in the patent, was granted to a person who was not entitled to it; or (b) the patent, or a share in the patent, was not granted to a person who was entitled to it. 22 Invalidity in relation to one claim not to affect validity in relation to other claims The invalidity of a patent in relation to a claim does not affect its validity in relation to any other claim. 23 Validity not affected by publication etc. after priority date A patent is not invalid, so far as the invention is claimed in any claim, merely because of: (a) the publication or use of the invention, so far as claimed in that claim, on or after the priority date of that claim; or (b) the grant of another patent which claims the invention, so far as claimed in the first ‑ mentioned claim, in a claim of the same or a later priority date. 24 Validity not affected by making information available in certain circumstances (1) For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard: (a) any information made publicly available in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and (b) any information made publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee; but only if a complete application for the invention is made within the prescribed period. (2) For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard: (a) any information given by, or with the consent of, the nominated person or the patentee, or his or her predecessor in title, to any of the following, but to no other person or organisation: (i) the Commonwealth or a State or Territory, or an authority of the Commonwealth or a State or Territory; (ii) a person authorised by the Commonwealth or a State or Territory to investigate the invention; and (b) anything done for the purpose of an investigation mentioned in subparagraph (a)(ii). 25 Validity: patents of addition Objection cannot be taken to a patent request or complete specification in respect of an application for a patent of addition, and a patent of addition is not invalid, merely because the invention, so far as claimed, does not involve an inventive step, having regard to the publication or use of the main invention during the prescribed period. 26 Validity not affected in certain cases involving amendments (1) Objection cannot be taken to a patent request and specification that have been accepted, and a patent is not invalid, merely because the specification claims an invention that was not the subject of the request, or that was not described or claimed in the specification as filed. (2) Except in the case of an amendment made in contravention of section 112 or 112A, objection cannot be taken to a patent request and specification that have been accepted, and a patent is not invalid, merely because an amendment of the specification has been made that was not allowable. 27 Notice of matters affecting validity of standard patents (1) A person may, within the prescribed period after a complete specification filed in relation to an application for a standard patent becomes open to public inspection, notify the Commissioner, in accordance with the regulations, that the person asserts, for reasons stated in the notice, that the invention concerned is not a patentable invention because it does not comply with paragraph 18(1)(b). (2) The Commissioner must: (a) notify the applicant for the patent of any matter of which the Commissioner is notified under subsection (1); and (b) give the applicant for the patent a copy of any document accompanying the notice under subsection (1). (2A) Without limiting paragraph (2)(b), the Commissioner may give the copy by: (a) making the copy available to the applicant for the patent in an electronic form; and (b) notifying the applicant for the patent that the copy is available. (3) The Commissioner must otherwise consider and deal with a notice in accordance with the regulations. (4) A notice and any document accompanying it are open to public inspection. 28 Notice of matters affecting validity of innovation patents Person may give notice of invalidity of an innovation patent (1) A person may notify the Commissioner that the person asserts, for reasons stated in the notice, that an innovation patent is invalid because the invention concerned does not comply with paragraph 18(1A)(b). When notice may be given (2) A notice may only be given to the Commissioner under subsection (1) in respect of an innovation patent within the prescribed period after an innovation patent has been granted. How notice must be given (3) Notice must be given in accordance with the regulations. Commissioner must notify patentee of notice given (4) The Commissioner must: (a) notify the patentee of any matter of which the Commissioner is notified under subsection (1); and (b) give the patentee a copy of any document accompanying the notice under subsection (1). (4A) Without limiting paragraph (4)(b), the Commissioner may give the copy by: (a) making the copy available to the patentee in an electronic form; and (b) notifying the patentee that the copy is available. Commissioner to deal with notice in accordance with regulations (5) The Commissioner must otherwise consider and deal with a notice in accordance with the regulations. 29 Application for patent—general rules (1) A person may apply for a patent for an invention by filing, in accordance with the regulations, a patent request and such other documents as are prescribed. (2) An application may be a provisional application or a complete application. (3) A patent request in relation to a provisional application must: (a) be in the approved form; and (b) be in English; and (c) be accompanied by a provisional specification. (4) The provisional specification referred to in paragraph (3)(c) must: (a) be in the approved form; and (b) be in English. (4A) A patent request in relation to a complete application must: (a) be in the approved form; and (b) be in English; and (c) be accompanied by a complete specification; and (d) comply with the formalities requirements determined in an instrument under section 229. (4B) The complete specification referred to in paragraph (4A)(c) must: (a) be in the approved form; and (b) be in English; and (c) comply with the formalities requirements determined in an instrument under section 229. (5) In this section: person includes a body of persons, whether incorporated or not. [ Note: see also section 5 for requirements relating to associated applications .] 29A Applications for patents—special rules for PCT applications (1) A PCT application is to be treated as a complete application under this Act for a standard patent. (2) The description, drawings, graphics, photographs and claims contained in a PCT application are to be treated as a complete specification filed in respect of the application. (3) The specification of a PCT application is to be taken to be amended in the circumstances, on the day and in the manner as prescribed by the regulations. (4) A PCT application is to be taken to comply with the prescribed requirements of this Act that relate to applications for standard patents, but is not to be taken, merely because of subsection (1) or (2), to comply with any other requirements of this Act. (5) An applicant of a PCT application must do the following within the prescribed period: (a) if the application was not filed in the receiving Office in English—file a translation of the application into English; (b) in any case—file the prescribed documents and pay the prescribed fees. (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; (c) the prescribed fees have been paid. Note: A failure to comply with subsection (5) may also result in the PCT application lapsing: see paragraph 142(2)(f). 29B Applications for patents—special rules for Convention applications Making Convention applications (1) A Convention applicant in relation to a basic application may make a Convention application, or 2 or more such applicants may make a joint Convention application. (2) If 2 or more basic applications for protection in respect of inventions have been made in one or more Convention countries, one Convention application may be made by a Convention applicant in relation to those basic applications, or by 2 or more such entitled applicants jointly, in respect of the inventions disclosed in the basic applications. (3) Subject to subsections (4) and (5), a Convention application must be made and dealt with in the same way as any other patent application. (4) A patent request relating to a Convention application must: (a) include the prescribed particulars relating to the relevant basic application; and (b) be accompanied by a complete specification. Meaning of Convention country (5) Convention country means a foreign country or region of a kind prescribed by the regulations. (6) Despite subsection 14(2) of the Legislation Act 2003 , regulations made for the purposes of the definition of Convention country in subsection (5) may make provision in relation to a matter by applying, adopting or incorporating, with or without modification, any matter contained in any other instrument or other writing as in force or existing from time to time. 30 Filing date A patent application (including a PCT application) is to be taken to have been made on the filing date determined under the regulations. 31 Joint applicants 2 or more persons (within the meaning of section 29) may make a joint patent application. 32 Disputes between applicants etc. (1) If a dispute arises between any 2 or more joint applicants in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those applicants, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the applicants alone, or for regulating the manner in which it is to proceed, or both, as the case requires. (2) The Commissioner may make a determination under subsection (1) whether or not the application has lapsed. (3) The Commissioner must not make a determination under subsection (1) without first giving each joint applicant a reasonable opportunity to be heard. 33 Applications by opponents etc. Opposition to standard patent if a person other than nominated person eligible for grant of patent (1) If: (a) an application has been made for a standard patent; and (b) the grant of the standard patent is opposed under section 59 by one or more persons; and (c) the Commissioner decides, under section 60, that: (i) one or more opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim ); and (ii) the nominated person in respect of the application is not an eligible person in relation to the invention; and (iii) there is no other reason that a patent should not be granted; and (d) a complete application is made under section 29 by one or more of the eligible persons for a patent in relation to the invention; the Commissioner may grant those eligible persons a patent jointly for the invention, so far as so claimed. Opposition to standard patent if nominated person eligible for grant of patent with other persons (2) If: (a) an application has been made for a standard patent; and (b) the grant of the patent is opposed under section 59 by one or more persons; and (c) the Commissioner decides, under section 60: (i) that both the nominated person and one or more of the opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim ); and (ii) that there is no other reason that a patent should not be granted; and (d) a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention; the Commissioner may grant a patent for the invention, so far as so claimed, to those eligible persons jointly. Opposition to innovation patent if patentee not entitled to grant of patent but another person is (3) If: (a) an innovation patent is opposed under section 101M by one or more persons; (b) the Commissioner decides, under section 101N, that the patentee is not entitled to the grant of the patent; and (c) the Commissioner decides that one or more of the opponents are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim ); and (d) a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention; the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons. Opposition to innovation patent if patentee entitled to grant of patent with other person (4) If: (a) an innovation patent is opposed under section 101M by one or more persons; and (b) the Commissioner decides that one or more of the opponents and the original patentee are eligible persons in relation to the invention the subject of the patent, so far as claimed in any claim of the patent (the original claim ); and (c) a complete application is made by one or more of the eligible persons under section 29 for a patent in relation to the invention; the Commissioner may grant an innovation patent for the invention, so far as so claimed, to those eligible persons jointly. (5) If the Commissioner grants a patent under subsection (1), (2), (3) or (4), the claims of that patent granted have the same priority date as that of the original claim referred to in the respective subsection. 34 Applications by eligible persons arising out of Court proceedings (1) If, in any proceedings in a court relating to a patent (the first patent ), the court is satisfied either: (a) that one or more persons are eligible persons in relation to an invention so far as claimed in any claim of the patent (the original claim ) but that the patentee is not an eligible person; or (b) that the patentee and another person or persons are eligible persons in relation to an invention so far as claimed in any claim of the first patent (the original claim ); the court, in addition to any other order it may make in the proceedings, may, by order, declare that the persons who it is satisfied are eligible persons are eligible persons in relation to that invention so far as so claimed. (2) Subject to subsection (3), if a complete application is made under section 29 by one or more declared persons, the Commissioner may grant a patent for the invention, so far as claimed in the original claim, to those declared persons jointly. (3) If the Commissioner grants a patent under subsection (2), the claims of that patent have the same priority date as that of the original claim. 35 Applications by eligible persons following revocation by Commissioner (1) If the Commissioner: (a) revokes a patent under section 137; and (b) is satisfied, on the balance of probabilities: (i) on application made by one or more persons in accordance with the regulations, that the persons are eligible persons in relation to the invention concerned, so far as so claimed in any claim of the revoked patent (the original claim ) and that the former patentee is not such an eligible person; or (ii) on application made by one or more persons in accordance with the regulations, that the persons and the former patentee are eligible persons in relation to the invention concerned, so far as is claimed in any claim of the revoked patent (the original claim ); the Commissioner may declare in writing that the eligible persons are such eligible persons. (1A) If a complete application is made under section 29 by one or more of the declared persons, the Commissioner may grant a patent for the invention, so far as so claimed, to those declared persons jointly. (1B) If the Commissioner grants a patent under subsection (1A), the claims of that patent have the same priority date as that of the original claim as referred to in subsection (1). (2) The Commissioner must not make a declaration without first giving the former patentee a reasonable opportunity to be heard. (3) An appeal lies to the Federal Court against a decision of the Commissioner making, or refusing to make, a declaration. 36 Other applications by eligible persons (1) If: (a) a patent application has been made and, in the case of a complete application, the patent has not been granted; and (b) an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants ) in accordance with the regulations; and (c) the Commissioner is satisfied on the balance of probabilities, in relation to an invention disclosed in the specification filed in relation to the application for the patent: (i) that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or (ii) that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons; the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed. (2) The Commissioner may make a declaration under subsection (1) whether or not the patent application lapses or is withdrawn. (3) The Commissioner must not make a declaration under subsection (1) without first giving the nominated person a reasonable opportunity to be heard. (3A) The Commissioner may, after making a declaration under subsection (1), make any determination the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the declared persons. (4) If a complete application is made under section 29 by one or more of the declared persons, the priority date of the claims of a patent for the invention granted to the person, or persons, as the case may be, must be determined under the regulations. (5) An appeal lies to the Federal Court against a decision by the Commissioner under this section. 37 Complete application may be treated as provisional (1) Where a complete application is made, the applicant may, at any time during the prescribed period, by written request, ask the Commissioner to direct that the application be treated as a provisional application. (2) A person is not entitled to make a request if the patent request and specification filed in respect of the application have been accepted or have become open to public inspection. (3) On receiving a request, the Commissioner must give a direction as asked. (4) Where the Commissioner gives a direction, the complete application is to be taken, for the purposes of this Act, to be, and to have always been, a provisional application. 38 Time for making complete application (1) If an applicant makes a provisional application, the applicant may make one or more complete applications associated with the provisional application at any time within the prescribed period. (1A) A Convention application must be made within the prescribed period. (2) In this section: applicant includes a person entitled to make a request under section 113 in relation to the relevant patent application. [ Note: see also section 5 for requirements relating to associated applications .] 40 Specifications Requirements relating to provisional specifications (1) A provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. Requirements relating to complete specifications (2) A complete specification must: (a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and (aa) disclose the best method known to the applicant of performing the invention; and (b) where it relates to an application for a standard patent—end with a claim or claims defining the invention; and (c) where it relates to an application for an innovation patent—end with at least one and no more than 5 claims defining the invention. (3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification. (3A) The claim or claims must not rely on references to descriptions, drawings, graphics or photographs unless absolutely necessary to define the invention. (4) The claim or claims must relate to one invention only. 41 Specifications: micro ‑ organisms Provisional specifications (1A) A specification is taken to comply with subsection 40(1), so far as it requires a description of a micro ‑ organism, if: (a) the micro ‑ organism is deposited with a prescribed depository institution in accordance with such provisions of the Budapest Treaty as are applicable; and (b) the prescribed circumstances apply. Complete specifications (1) To the extent that an invention is a micro ‑ organism, the complete specification is to be taken to comply with paragraph 40(2)(a), so far as it requires a description of the micro ‑ organism, if the deposit requirements are satisfied in relation to the micro ‑ organism. (2) Where: (a) an invention involves the use, modification or cultivation of a micro ‑ organism, other than the micro ‑ organism mentioned in subsection (1); and (b) a person skilled in the relevant art in the patent area could not reasonably be expected to perform the invention without having a sample of the micro ‑ organism before starting to perform the invention; and (c) the micro ‑ organism is not reasonably available to a person skilled in the relevant art in the patent area; the specification is to be taken to comply with paragraph 40(2)(a), so far as it requires a description of the micro ‑ organism, if, and only if, the deposit requirements are satisfied in relation to the micro ‑ organism. (3) For the purposes of this section, a micro ‑ organism may be taken to be reasonably available to a person even if it is not so available in the patent area. (4) Where: (a) the requirements specified in paragraph 6(c) or (d) cease to be satisfied in relation to a micro ‑ organism; and (b) steps are taken at a later time within the prescribed period in accordance with such provisions (if any) of the regulations as are applicable; and (c) as a result of those steps, if the period during which those requirements are not satisfied is disregarded, those requirements would be satisfied at that later time; those requirements are to be taken to have been satisfied during the period mentioned in paragraph (c), and such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention during that period. [ Note: see also section 6 in relation to satisfaction of deposit requirements .] 42 Micro ‑ organisms ceasing to be reasonably available (1) Where: (a) a complete application has been made for a patent, or a patent has been granted for an invention of a kind mentioned in paragraph 41(2)(a); and (b) the relevant micro ‑ organism was, at the date of filing of the complete specification, reasonably available (within the meaning of section 41) to a skilled person working in the relevant art in the patent area; and (c) the micro ‑ organism has ceased to be so available; a prescribed court or the Commissioner, on application made in accordance with the regulations, or the Commissioner, on his or her own motion, may declare that the specification does not comply with section 40 unless the deposit requirements are satisfied in relation to the micro ‑ organism. (2) Where a declaration is made under subsection (1): (a) this Act has effect in relation to the specification accordingly; and (b) section 6 applies as if the references in that section to the date of filing of the specification were references to a date specified in the declaration for the purposes of this subsection. (3) Subsection (2) does not limit the operation of section 223. (4) Where: (a) an application is made under subsection (1); or (b) the Commissioner proposes to make a declaration under that subsection on his or her own motion; the applicant for the patent, or the patentee, as the case may be, must be notified, in accordance with the regulations, of the application or proposal and is entitled to appear and be heard. (5) A declaration by the Commissioner must be made in accordance with the regulations. (6) An office copy of a declaration by a prescribed court must be served on the Commissioner by the Registrar or other appropriate officer of the court. (7) An appeal lies to the Federal Court against a decision of the Commissioner under subsection (1). [ Note: see also section 6 in relation to satisfaction of deposit requirements .] 43 Priority dates (1) Each claim of a specification must have a priority date. (2) The priority date of a claim is: (a) if subsection (2A) applies to the claim—the date determined under the regulations; or (b) otherwise—the date of the filing of the specification. (2A) This subsection applies to a claim if: (a) prescribed circumstances apply in relation to the invention defined in the claim; and (b) a prescribed document discloses, or a prescribed set of prescribed documents considered together disclose, the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. (2B) A prescribed document, or a prescribed set of prescribed documents considered together, is taken to disclose the invention in a claim as mentioned in paragraph (2A)(b) so far as such disclosure requires a description of a micro ‑ organism, if: (a) the micro ‑ organism is deposited with a prescribed depository institution in accordance with such provisions of the Budapest Treaty as are applicable; and (b) the prescribed circumstances apply. (3) Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined. (4) The priority date of a claim of a specification may be different from the priority date of any other claim of the specification. (5) If, at the time when a Convention application or a PCT application is made in respect of an invention: (a) an application (the earlier application ) has been made for protection in respect of the invention in a Convention country; and (b) the earlier application was made in the prescribed period; and (c) the earlier application has been withdrawn, abandoned or refused without becoming open to public inspection; and (d) the earlier application has not been used as the basis of claiming a right of priority in a Convention country under a law of that country; and (e) a later application has been made by the same applicant for protection in respect of the invention in a Convention country; the earlier application is taken, for the purposes of this Act, to have never been made. Note: For the purposes of paragraph (e), the later application need not have been made in the same Convention country as the earlier application. 43AA Disclosure in basic applications Prescribed documents relating to basic applications (1) The regulations may prescribe documents that relate to a basic application. Disclosures in prescribed documents may generally be taken into account (2) Without limiting the documents or disclosures that may be taken into account for the purposes of this Act in relation to a basic application, account may be taken of a disclosure in a prescribed document that relates to a basic application. Disclosures in prescribed documents must not be taken into account if Commissioner’s requirement not complied with (3) However, if the Commissioner makes a requirement under subsection (4) in relation to a prescribed document, account must not be taken, for the purposes of this Act, of a disclosure in the prescribed document unless the document has been made available by the prescribed means and within the prescribed period. Commissioner may require prescribed documents be made available (4) The Commissioner may require that a prescribed document relating to a basic application be made available to the Commissioner by the prescribed means and within the prescribed period. (5) The Commissioner may make a requirement under subsection (4) more than once in relation to the same prescribed document. 43A Preliminary search and opinion (1) If a complete application for a standard patent has been made, the Commissioner may conduct a preliminary search and opinion in relation to the patent request and specification relating to the application. (2) The preliminary search and opinion must be conducted in accordance with the regulations. 44 Request for examination (1) Where a complete application for a standard patent has been made, the applicant may, within the prescribed period and in accordance with the regulations, ask for an examination of the patent request and specification relating to the application. (2) Where a complete application has been made for a standard patent, the Commissioner may, on one or more of the prescribed grounds and in accordance with the regulations, direct the applicant to ask, within the prescribed period, for an examination of the patent request and complete specification relating to the application. (3) Where the patent request and specification relating to a complete application for a standard patent are open to public inspection, a person may, in accordance with the regulations, require the Commissioner to direct the applicant to ask, within the prescribed period, for an examination of the request and specification. (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. 45 Examination (1) Subject to subsection (1A), if an applicant asks for an examination of a patent request and complete specification relating to an application for a standard patent, the Commissioner must examine the request and specification and report on: (a) whether the specification complies with subsections 40(2) to (4); and (b) whether, to the best of his or her knowledge, the invention, so far as claimed, satisfies the criteria mentioned in paragraphs 18(1)(a), (b) and (c); and (c) whether the invention is a patentable invention under subsection 18(2); and (d) such other matters (if any) as are prescribed. (1A) If a PCT application has been made and the prescribed requirements have not been met, the Commissioner may decline to examine the request and specification under subsection (1) until the requirements have been met. (2) The examination must be carried out in accordance with the regulations. 49 Acceptance of patent request: standard patent (1) Subject to section 50, the Commissioner must accept a patent request and complete specification relating to an application for a standard patent if the Commissioner is satisfied, on the balance of probabilities: (a) that the specification complies with subsections 40(2) to (4); and (b) that the invention, so far as claimed, satisfies the criteria mentioned in paragraphs 18(1)(a), (b) and (c); and (c) that the invention is a patentable invention under subsection 18(2); and (d) as to the matters (if any) prescribed under paragraph 45(1)(d). (2) If subsection (1) does not apply, the Commissioner may refuse to accept the request and specification. (5) Where the Commissioner accepts a patent request and complete specification relating to an application for a standard patent, the Commissioner must: (a) notify the applicant of the acceptance; and (b) publish a notice of the acceptance in the Official Journal . (6) If the patent request and complete specification have not already become open to public inspection, the notice mentioned in paragraph (5)(b) must include a statement to the effect that the patent request and specification are open to public inspection. (7) Where the Commissioner refuses to accept a patent request and complete specification relating to an application for a standard patent, the Commissioner must notify the applicant of the reasons for the refusal and publish a notice of the refusal in the Official Journal . 49A Postponing acceptance of patent request: standard patent (1) The Commissioner may postpone acceptance of a patent request and complete specification: (a) on his or her own initiative; or (b) if requested to do so in writing by the applicant. (2) If the Commissioner postpones acceptance on his or her own initiative, he or she must specify a day to which acceptance is postponed. (3) If the Commissioner postpones acceptance following a request by the applicant, the Commissioner may specify a day to which acceptance is postponed. (4) The day specified under subsection (2) or (3) cannot be a day that is after the end of the period prescribed for the purposes of paragraph 142(2)(e). (5) If: (a) acceptance is postponed under subsection (1) following a request by the applicant; and (b) the Commissioner has not specified a day to which acceptance is postponed; the Commissioner is not required to accept the patent request and complete specification unless the applicant withdraws the request in writing. Note: If the applicant does not withdraw the request before the day prescribed by the regulations, the application lapses: see paragraph 142(2)(e). 50 Application or grant may be refused in certain cases (1) The Commissioner may refuse to accept a request and specification relating to a standard patent, or to grant a standard patent: (a) for an invention the use of which would be contrary to law; or (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 (ii) a process producing such a substance by mere admixture. (2) The Commissioner may refuse to accept a specification relating to a standard patent containing a claim that includes the name of a person as the name, or part of the name, of the invention so far as claimed in that claim. 50A Revocation of acceptance (1) The Commissioner may revoke the acceptance of a patent request and complete specification relating to an application for a standard patent if the Commissioner is satisfied, on the balance of probabilities, that: (a) a patent has not been granted on the application; and (b) the request and specification should not have been accepted, taking account of all the circumstances that existed when the request and specification were accepted (whether or not the Commissioner knew then of their existence); and (c) it is reasonable to revoke the acceptance, taking account of all the circumstances. (2) If the Commissioner revokes the acceptance: (a) the patent request and complete specification are taken to have never been accepted; and (b) the Commissioner must continue to examine, and report on, the application under section 45; and (c) sections 49 and 50 continue to apply in relation to the request and specification. 51 Appeal An appeal lies to the Federal Court against a decision of the Commissioner under this Division (other than a decision under section 50A). 52 Formalities check and acceptance of innovation patents (1) If a complete application for an innovation patent is made, the Commissioner must undertake a formalities check in respect of the application. (2) If satisfied, on the balance of probabilities, that the application passes the formalities check, the Commissioner must accept the patent request and complete specification. (3) It is a requirement of the formalities check that the date of the patent (if granted) would be a date before the day this subsection commences. Note 1: This subsection was inserted by the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 . Note 2: For the date of the patent, see section 65 and regulations made for the purposes of paragraph 65(b). Note 3: Other requirements of the formalities check are specified in regulations made for the purposes of paragraph 228(2)(ha). 53 Publication of certain information about applicants etc. (1) If a patent application (other than a PCT application) is made, the Commissioner must publish in the Official Journal the prescribed information about the applicant and the application. (2) The regulations may make provision for and in relation to the publication of information relating to PCT applications. 54 Notice of publication (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. (2) If subsection 41(2) applies to a specification, the applicant cannot make a request under subsection (1) in relation to the specification unless the specification includes the particulars mentioned in paragraph 6(c). (3) Where: (a) a complete specification has been filed in respect of an application for a standard patent (other than a PCT application); and (b) the prescribed period has ended; and (c) the specification is not open to public inspection; the Commissioner must publish a notice in the Official Journal that the specification is open to public inspection, unless the application has lapsed or been refused or withdrawn. (4) Where: (a) 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, whether a PCT application or not; and (b) the complete specification filed in respect of the original application was open to public inspection when the divisional application was made; the Commissioner must publish a notice in the Official Journal that the complete specification filed in respect of the divisional application is open to public inspection. (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 notice is published in the Official Journal that the complete specification filed in respect of the divisional application is open to public inspection; the Commissioner must also publish in the Official Journal a notice that: (c) where paragraph (a) applies—the complete specification filed in respect of the divisional application is open to public inspection; or (d) where paragraph (b) applies—the complete specification filed in respect of the original application is open to public inspection. (6) Where: (a) 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 a PCT application; and (b) a notice is published in the Official Journal that the complete specification filed in respect of the original application is open to public inspection; the Commissioner must also publish in the Official Journal a notice that the complete specification filed in respect of the divisional application is open to public inspection. 55 Documents open to public inspection (1) Where a notice is published under section 54 or under subsection 62(3), the specification concerned, and such other documents (if any) as are prescribed, are open to public inspection. (2) Where a notice is published under paragraph 49(5)(b) in relation to an application for a standard patent, or under subsection 62(2) in relation to the grant of an innovation patent, the following documents are open to public inspection: (a) all documents (other than prescribed documents) filed in relation to the application or the patent, whether before or after the acceptance or grant; (b) all documents (other than prescribed documents) filed, after the patent ceases, expires or is revoked, in relation to the former patent; (c) copies of all documents relating to the application or patent (other than prescribed documents) given by the Commissioner to the applicant or patentee, or the former applicant or patentee; being documents t