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Intellectual Property Laws Amendment Bill 2006

Schedule 8 Compulsory licensing of patents

   

Patents Act 1990

1  Subsection 133(1)

Omit “a prescribed court”, substitute “the Federal Court”.

2  Paragraphs 133(2)(a) and (b)

Repeal the paragraphs, substitute:

                     (a)  all the following conditions exist:

                              (i)  the applicant has tried for a reasonable period, but without success, to obtain from the patentee an authorisation to work the invention on reasonable terms and conditions;

                             (ii)  the reasonable requirements of the public with respect to the patented invention have not been satisfied;

                            (iii)  the patentee has given no satisfactory reason for failing to exploit the patent; or

                     (b)  the patentee has contravened, or is contravening, Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act) in connection with the patent.

3  Subsection 133(3A)

Repeal the subsection.

4  Paragraph 133(5)(b)

Omit “a prescribed court”, substitute “the Federal Court”.

5  At the end of paragraph 133(5)(b)

Add “and the desirability of discouraging contraventions of Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act)”.

6  Subsections 133(6) and 134(1)

Omit “a prescribed court”, substitute “the Federal Court”.

7  Paragraphs 134(2)(a) and (b)

Repeal the paragraphs, substitute:

                     (a)  both:

                              (i)  the reasonable requirements of the public with respect to the patented invention have not been satisfied; and

                             (ii)  the patentee has given no satisfactory reason for failing to exploit the patent; or

                     (b)  the patentee is contravening Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act) in connection with the patent.

8  After section 136

Insert:

136A   Dealing with allegation of contravention of application law

                   Proceedings under section 133 or 134 involving an allegation of contravention of an application law that is a law of a State must be dealt with as if the law were a law of the Commonwealth.

Note:          Those proceedings are in the Federal Court, which can only exercise the judicial power of the Commonwealth. This section lets the court deal comprehensively with the proceedings without the need for a court of the State to determine whether the application law has been contravened.

9  Application and saving provisions

(1)       The amendments of the Patents Act 1990 made by this Schedule apply in relation to conduct (including omissions) that:

                     (a)  occurs after the commencement of this Schedule; and

                     (b)  is connected with a patent granted before, on or after that commencement.

(2)       To avoid doubt, proceedings started in a prescribed court under section 133 or 134 of the Patents Act 1990 but not concluded before the commencement of this Schedule may be continued in the court after that commencement as if the amendments of that Act by this Schedule had not been made.