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Intellectual Property Laws Amendment Bill 2006

Schedule 6 Exemption of continued prior use from patent infringement

   

Patents Act 1990

1  Section 119

Repeal the section, substitute:

119   Infringement exemptions: prior use

             (1)  A person may, without infringing a patent, do an act that exploits a product, method or process and would infringe the patent apart from this subsection, if immediately before the priority date of the relevant claim the person:

                     (a)  was exploiting the product, method or process in the patent area; or

                     (b)  had taken definite steps (contractually or otherwise) to exploit the product, method or process in the patent area.

Note 1:       This section applies in relation to a patent granted as a result of an application filed on or after the commencement of Schedule 6 to the Intellectual Property Laws Amendment Act 2006 (which repealed and substituted this section).

Note 2:       Section 119 of this Act as in force before the commencement of that Schedule continues to apply in relation to patents granted as a result of earlier applications.

             (2)  Subsection (1) does not apply if, before the priority date, the person:

                     (a)  had stopped (except temporarily) exploiting the product, method or process in the patent area; or

                     (b)  had abandoned (except temporarily) the steps to exploit the product, method or process in the patent area.

Limit for product, method or process derived from patentee

             (3)  Subsection (1) does not apply to a product, method or process the person derived from the patentee or the patentee’s predecessor in title in the patented invention unless the person derived the product, method or process from information that was made publicly available:

                     (a)  by or with the consent of the patentee or the patentee’s predecessor in title; and

                     (b)  through any publication or use of the invention in the prescribed circumstances mentioned in paragraph 24(1)(a).

Exemption for successors in title

             (4)  A person (the disposer ) may dispose of the whole of the disposer’s entitlement under subsection (1) to do an act without infringing a patent to another person (the recipient ). If the disposer does so, this section applies in relation to the recipient as if the references in subsections (1), (2) and (3) to the person were references to:

                     (a)  the disposer; or

                     (b)  if the disposer’s entitlement arose because of one or more previous applications of this subsection—the first person:

                              (i)  who was entitled under subsection (1) (applying of its own force) to do an act without infringing the patent; and

                             (ii)  to whom the disposer’s entitlement is directly or indirectly attributable.

Definition

             (5)  In this section:

exploit includes:

                     (a)  in relation to a product:

                              (i)  make, hire, sell or otherwise dispose of the product; and

                             (ii)  offer to make, hire, sell or otherwise dispose of the product; and

                            (iii)  use or import the product; and

                            (iv)  keep the product for the purpose of doing an act described in subparagraph (i), (ii) or (iii); and

                     (b)  in relation to a method or process:

                              (i)  use the method or process; and

                             (ii)  do an act described in subparagraph (a)(i), (ii), (iii) or (iv) with a product resulting from the use of the method or process.

2  Application

The amendment of the Patents Act 1990 made by this Schedule applies in relation to patents granted as a result of applications filed on or after the commencement of this Schedule.