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Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012]

Schedule 4 Assisting the operations of the IP profession

   

Patents Act 1990

1  Section 3 (list of definitions)

Insert “company”.

2  Section 3 (list of definitions)

Insert “director”.

3  Section 3 (list of definitions)

Insert “incorporated legal practice”.

4  Section 3 (list of definitions)

Insert “incorporated patent attorney”.

5  Section 3 (list of definitions)

Insert “intellectual property advice”.

6  Section 3 (list of definitions)

Insert “patent attorney director”.

7  Section 3 (list of definitions)

Insert “patents work”.

8  Section 3 (list of definitions)

Insert “related company group”.

9  Section 132

Omit “his or her”, substitute “a”.

10  Subsection 177(1) (penalty)

Repeal the penalty, substitute:

Penalty:  30 penalty units.

11  Subsection 178(1) (penalty)

Repeal the penalty, substitute:

Penalty:  60 penalty units.

12  Subsection 178(2) (penalty)

Repeal the penalty, substitute:

Penalty:  60 penalty units.

13  Subsection 182(1) (penalty)

Repeal the penalty, substitute:

Penalty:  60 penalty units.

14  Section 183

Before “The”, insert “(1)”.

15  At the end of section 183

Add:

             (2)  The Designated Manager may disclose to the Australian Securities and Investments Commission information (including personal information within the meaning of the Privacy Act 1988 ) that is:

                     (a)  relevant to the functions of the Commission; and

                     (b)  obtained by the Designated Manager as a result of the performance of functions and duties, or the exercise of powers, in relation to incorporated patent attorneys.

16  Subsection 198(4)

Omit “a person”, substitute “an individual”.

Note:       The following heading to subsection 198(4) is inserted “ Registration of individuals ”.

17  After paragraph 198(4)(f)

Insert:

             ; and (g)  meets any other requirements prescribed by the regulations.

18  Subsection 198(4)

Omit “person’s”, substitute “individual’s”.

19  Subsection 198(7)

Omit “a person”, substitute “an individual”.

20  Subsection 198(7)

Omit “the person” (wherever occurring), substitute “the individual”.

21  At the end of section 198

Add:

Registration of companies

             (9)  The Designated Manager must register as a patent attorney a company that:

                     (a)  has at least one patent attorney director; and

                     (b)  has given the Designated Manager written notice in the approved form of its intention to act as a patent attorney; and

                     (c)  meets the requirements (if any) prescribed by the regulations.

The registration is to consist of entering the company’s name in the Register of Patent Attorneys.

           (10)  A company registered as a patent attorney is an incorporated patent attorney .

           (11)  A patent attorney director of a company is an individual who is both:

                     (a)  a registered patent attorney; and

                     (b)  a validly appointed director of the company.

22  Subsection 200(2)

Repeal the subsection, substitute:

             (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.

          (2A)  A record or document 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 record or document made for the dominant purpose of a legal practitioner providing legal advice to a client.

          (2B)  A reference in subsection (2) or (2A) to a registered patent attorney includes a reference to an individual authorised to do patents work under a law of another country or region, to the extent to which the individual is authorised to provide intellectual property advice of the kind provided.

          (2C)  Intellectual property advice means advice in relation to:

                     (a)  patents; or

                     (b)  trade marks; or

                     (c)  designs; or

                     (d)  plant breeder’s rights; or

                     (e)  any related matters.

23  Subsection 200(4)

Repeal the subsection.

24  Section 201

Repeal the section, substitute:

201   Acting or holding out without being registered

Individuals

             (1)  An individual commits an offence if:

                     (a)  the individual carries on business, practises or acts as a patent attorney; and

                     (b)  the individual is not a registered patent attorney or a legal practitioner.

Penalty:  30 penalty units.

             (2)  An individual commits an offence if:

                     (a)  the individual describes himself or herself, or holds himself or herself out, or permits himself or herself to be described or held out, as a patent attorney or agent for obtaining patents; and

                     (b)  the individual is not a registered patent attorney.

Penalty:  30 penalty units.

Partnerships

             (3)  A member of a partnership commits an offence if:

                     (a)  the member carries on business, practises or acts as a patent attorney; and

                     (b)  none of the members of the partnership is a registered patent attorney or a legal practitioner.

Penalty:  30 penalty units.

             (4)  A member of a partnership commits an offence if:

                     (a)  the member describes the partnership, or holds the partnership out, or permits the partnership to be described or held out, as a patent attorney, or agent for obtaining patents; and

                     (b)  none of the members of the partnership is a registered patent attorney.

Penalty:  30 penalty units.

Companies

             (5)  A company commits an offence if:

                     (a)  the company carries on business, practises or acts as a patent attorney; and

                     (b)  the company is not a registered patent attorney or incorporated legal practice.

Penalty:  150 penalty units.

             (6)  A company commits an offence if:

                     (a)  the company describes itself, or holds itself out, or permits itself to be described or held out, as a patent attorney, or agent for obtaining patents; and

                     (b)  the company is not a registered patent attorney.

Penalty:  150 penalty units.

Exception—legal representatives

             (7)  Subsections (1), (3) and (5) do not apply in relation to the business of a registered patent attorney who is deceased if the business:

                     (a)  is carried on, within 3 years of the death of the patent attorney, or such further time allowed by a prescribed court, by the legal representative of the deceased registered patent attorney; and

                     (b)  is managed by a registered patent attorney on behalf of the legal representative.

Note:          The defendant bears an evidential burden in relation to the matters in subsection (7). See subsection 13.3(3) of the Criminal Code .

Exception—employees

             (8)  Subsections (1) and (2) do not apply in relation to anything done by a person, as an employee, for:

                     (a)  his or her employer; or

                     (b)  if the person’s employer is a member of a related company group—another member of the group.

Note:          The defendant bears an evidential burden in relation to the matters in subsection (8). See subsection 13.3(3) of the Criminal Code .

Exception—related company groups

             (9)  Subsections (5) and (6) do not apply in relation to anything done by a member of a related company group for another member of the group.

Note:          The defendant bears an evidential burden in relation to the matter in subsection (9). See subsection 13.3(3) of the Criminal Code .

Whether a company is related to another company

           (10)  For the purposes of this section, the question of whether a company is related to another company is to be determined in the same manner as that question is determined under the Corporations Act 2001 .

201A   When a person carries on business, practises or acts as a patent attorney

             (1)  For the purposes of section 201, a person is taken to carry on business, practise or act as a patent attorney if, and only if, the person does, or undertakes to do, patents work in Australia.

             (2)  Patents work means one or more of the following done, on behalf of someone else, for gain:

                     (a)  applying for or obtaining patents in Australia or anywhere else;

                     (b)  preparing specifications or other documents for the purposes of this Act or the patent law of another country;

                     (c)  giving advice (other than advice of a scientific or technical nature) about the validity, or infringement, of patents.

201B   Incorporated patent attorney must have a patent attorney director

Offence—failing to notify lack of patent attorney director

             (1)  An incorporated patent attorney commits an offence if the incorporated patent attorney:

                     (a)  does not have a patent attorney director; and

                     (b)  does not notify the Designated Manager of that within 7 days.

Penalty:  150 penalty units.

Offence—acting after 7 days without patent attorney director

             (2)  An incorporated patent attorney commits an offence if the incorporated patent attorney:

                     (a)  does not have a patent attorney director; and

                     (b)  has not had a patent attorney director during the previous 7 days; and

                     (c)  carries on business, practises or acts as a patent attorney.

Penalty:  150 penalty units.

Designated Manager may appoint a registered patent attorney

             (3)  If an incorporated patent attorney does not have a patent attorney director, the Designated Manager may, by writing, appoint another registered patent attorney to take charge of the patents work of the incorporated patent attorney.

             (4)  The appointment may be made only with the consent of the other registered patent attorney.

Effect of appointment

             (5)  A registered patent attorney holding an appointment under subsection (3) (the appointed attorney ) is taken, for the purposes of this Act, to be a patent attorney director of the incorporated patent attorney.

             (6)  However, for the purposes of the Corporations Act 2001 :

                     (a)  the appointed attorney is not a director of the incorporated patent attorney only because:

                              (i)  the appointed attorney takes charge of the patents work of the incorporated patent attorney; and

                             (ii)  the appointed attorney is taken, for the purposes of this Act, to be a patent attorney director of the incorporated patent attorney; and

                     (b)  the Designated Manager is not a director of the incorporated patent attorney only because the Designated Manager appointed the appointed attorney.

Designated Manager may remove incorporated patent attorney from Register

             (7)  If an incorporated patent attorney does not have a patent attorney director, the Designated Manager may remove the incorporated patent attorney from the Register.

25  Section 202 (penalty)

Repeal the penalty, substitute:

Penalty:  30 penalty units.

26  After section 202A

Insert:

202B   Documents prepared by incorporated patent attorneys and incorporated legal practices

                   An incorporated patent attorney or an incorporated legal practice commits an offence if:

                     (a)  an employee or member of the incorporated patent attorney or incorporated legal practice prepares a specification, or a document relating to an amendment of a specification; and

                     (b)  the employee or member is not a registered patent attorney; and

                     (c)  the specification or document is not prepared:

                              (i)  under the instructions or supervision of an individual who is a registered patent attorney; or

                             (ii)  as directed by an order under section 105.

Penalty:  150 penalty units.

27  Section 203

Repeal the section, substitute:

203   Attendance at patent attorney’s office

                   A registered patent attorney commits an offence if:

                     (a)  the registered patent attorney practises, acts, or holds himself, herself or itself out as practising or acting, as a patent attorney, at an office or place of business where specifications or other documents are prepared for the purposes of this Act; and

                     (b)  there is not an individual who is a registered patent attorney:

                              (i)  in regular attendance at that office or place; and

                             (ii)  in continuous charge of the patents work done at that office or place.

Penalty:  30 penalty units.

28  After subparagraph 228(2)(r)(i)

Insert:

                            (ia)  assessing the professional conduct of registered patent attorneys by reference to standards of practice established by the Professional Standards Board from time to time;

29  Schedule 1

Insert:

company means a company registered under the Corporations Act 2001.

30  Schedule 1

Insert:

director of a company has the same meaning as in the Corporations Act 2001 .

31  Schedule 1

Insert:

incorporated legal practice means a body corporate recognised under a law of the Commonwealth, a State or a Territory as an incorporated legal practice (however described).

32  Schedule 1

Insert:

incorporated patent attorney has the meaning given by subsection 198(10).

33  Schedule 1

Insert:

intellectual property advice has the meaning given by subsection 200(2C).

34  Schedule 1

Insert:

patent attorney director has the meaning given by subsection 198(11).

35  Schedule 1

Insert:

patents work has the meaning given by subsection 201A(2).

36  Schedule 1

Insert:

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.

Trade Marks Act 1995

37  Readers guide (list of terms defined in section 6)

Insert the following terms in their appropriate alphabetical positions:

“company”

“Designated Manager”

“incorporated legal practice”

“incorporated trade marks attorney”

“intellectual property advice”

“Professional Standards Board”

“trade marks attorney director”

“trade marks work”.

38  Subsection 6(1)

Insert:

company means a company registered under the Corporations Act 2001.

39  Subsection 6(1)

Insert:

Designated Manager has the same meaning as in the Patents Act 1990 .

40  Subsection 6(1)

Insert:

incorporated legal practice means a body corporate recognised under a law of the Commonwealth, a State or a Territory as an incorporated legal practice (however described).

41  Subsection 6(1)

Insert:

incorporated trade marks attorney has the meaning given by subsection 228A(6B).

42  Subsection 6(1)

Insert:

intellectual property advice has the meaning given by subsection 229(3).

43  Subsection 6(1)

Insert:

Professional Standards Board has the same meaning as in the Patents Act 1990 .

44  Subsection 6(1)

Insert:

trade marks attorney director has the meaning given by subsection 228A(6C).

45  Subsection 6(1)

Insert:

trade marks work has the meaning given by subsection 157A(8).

46  Subsections 156(1) to (3)

Repeal the subsections, substitute:

Individuals

             (1)  An individual commits an offence if:

                     (a)  the individual describes himself or herself, or holds himself or herself out, or permits himself or herself to be described or held out, as a trade marks attorney; and

                     (b)  the individual is not a registered trade marks attorney.

Penalty:  30 penalty units.

Note 1:       The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914 ).

Note 2:       For registered trade marks attorney see section 6.

             (2)  An individual commits an offence if:

                     (a)  the individual describes himself or herself, or holds himself or herself out, or permits himself or herself to be described or held out, as a trade marks agent; and

                     (b)  the individual is not a registered trade marks attorney, a patent attorney or a lawyer.

Penalty:  30 penalty units.

Note 1:       The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914 ).

Note 2:       For registered trade marks attorney , patent attorney and lawyer see section 6.

Companies

             (3)  A company commits an offence if:

                     (a)  the company describes itself, or holds itself out, or permits itself to be described or held out, as a trade marks attorney; and

                     (b)  the company is not a registered trade marks attorney.

Penalty:  150 penalty units.

Note 1:       The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914 ).

Note 2:       For company and registered trade marks attorney see section 6.

          (3A)  A company commits an offence if the company:

                     (a)  the company describes itself, or holds itself out, or permits itself to be described or held out, as a trade marks agent; and

                     (b)  the company is not a registered trade marks attorney, a patent attorney or an incorporated legal practice.

Penalty:  150 penalty units.

Note 1:       The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914 ).

Note 2:       For company , registered trade marks attorney , patent attorney and incorporated legal practice see section 6.

Note:       The heading to section 156 is replaced by the heading “ Acting or holding out without being registered ”.

47  After section 157

Insert:

157A   Incorporated trade marks attorney must have a trade marks attorney director

Offence—failing to notify lack of trade marks attorney director

             (1)  An incorporated trade marks attorney commits an offence if the incorporated trade marks attorney:

                     (a)  does not have a trade marks attorney director; and

                     (b)  does not notify the Designated Manager of that within 7 days.

Penalty:  150 penalty units.

Note 1:       The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914 ).

Note 2:       For incorporated trade marks attorney , trade marks attorney director and Designated Manager see section 6.

Offence—acting after 7 days without trade marks attorney director

             (2)  An incorporated trade marks attorney commits an offence if the incorporated trade marks attorney:

                     (a)  does not have a trade marks attorney director; and

                     (b)  has not had a trade marks attorney director during the previous 7 days; and

                     (c)  describes itself, or holds itself out, or permits itself to be described or held out, as a trade marks attorney.

Penalty:  150 penalty units.

Note 1:       The Reader’s Guide gives information about penalties (see the paragraphs under the subheading Crimes Act 1914 ).

Note 2:       For incorporated trade marks attorney and trade marks attorney director see section 6.

Designated Manager may appoint a registered trade marks attorney

             (3)  If an incorporated trade marks attorney does not have a trade marks attorney director, the Designated Manager may, by writing, appoint another registered trade marks attorney to take charge of the trade marks work of the incorporated trade marks attorney.

             (4)  The appointment may be made only with the consent of the other registered trade marks attorney.

Effect of appointment

             (5)  A registered trade marks attorney holding an appointment under subsection (3) (the appointed attorney ) is taken, for the purposes of this Act, to be a trade marks attorney director of the incorporated trade marks attorney.

             (6)  For the purposes of the Corporations Act 2001 :

                     (a)  the appointed attorney is not a director of the incorporated trade marks attorney only because:

                              (i)  the appointed attorney takes charge of the trade marks work of the incorporated trade marks attorney; and

                             (ii)  the appointed attorney is taken, for the purposes of this Act, to be a trade marks attorney director of the incorporated trade marks attorney; and

                     (b)  the Designated Manager is not a director of the incorporated trade marks attorney only because the Designated Manager appointed the appointed attorney.

Designated Manager may remove incorporated trade marks attorney from Register

             (7)  If an incorporated trade marks attorney does not have a trade marks attorney director, the Designated Manager may remove the incorporated trade marks attorney from the Register.

Meaning of trade marks work

             (8)  Trade marks work means one or more of the following done, on behalf of someone else, for gain:

                     (a)  applying for or obtaining trade marks in Australia or anywhere else;

                     (b)  preparing trade marks applications or other documents for the purposes of this Act or the trade marks law of another country;

                     (c)  giving advice (other than advice of a scientific or technical nature) about the validity, or infringement, of trade marks.

48  Subsection 228A(1) (note)

Repeal the note, substitute:

Note:          For Designated Manager see section 6.

49  Subsection 228A(4)

Omit “a person”, substitute “an individual”.

Note:       The following heading to subsection 228A(4) is inserted “ Registration of individuals ”.

50  After paragraph 228A(4)(d)

Insert:

             ; and (e)  meets any other requirements prescribed by the regulations.

51  Subsection 228A(4)

Omit “person’s”, substitute “individual’s”.

52  At the end of subsection 228A(5)

Add:

Note:          For Professional Standards Board see section 6.

53  After subsection 228A(6)

Insert:

Registration of companies

          (6A)  The Designated Manager must register as a trade marks attorney a company that:

                     (a)  has at least one trade marks attorney director; and

                     (b)  has given the Designated Manager written notice in the approved form of its intention to act as a trade marks attorney; and

                     (c)  meets the requirements (if any) prescribed by the regulations.

The registration is to consist of entering the company’s name in the Register of Trade Marks Attorneys.

Note:          For company and trade marks attorney director see section 6.

          (6B)  A company registered as a trade marks attorney is an incorporated trade marks attorney .

          (6C)  A trade marks attorney director of a company is an individual who is both:

                     (a)  a registered trade marks attorney; and

                     (b)  a validly appointed director of the company.

54  Subsection 228A(9)

Repeal the subsection.

55  Subsection 229(1)

Repeal the subsection, substitute:

             (1)  A communication made for the dominant purpose of a registered trade marks 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 the lawyer providing legal advice to a client.

          (1A)  A record or document made for the dominant purpose of a registered trade marks attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a record or document made for the dominant purpose of a lawyer providing legal advice to a client.

          (1B)  A reference in subsection (1) or (1A) to a registered trade marks attorney includes a reference to an individual authorised to do trade marks work under a law of another country or region, to the extent to which the individual is authorised to provide intellectual property advice of the kind provided.

56  Subsection 229(3)

Repeal the subsection, substitute:

             (3)  Intellectual property advice means advice in relation to:

                     (a)  patents; or

                     (b)  trade marks; or

                     (c)  designs; or

                     (d)  plant breeder’s rights; or

                     (e)  any related matters.

             (4)  Nothing in this section authorises a registered trade marks attorney to prepare a document to be issued from or filed in a court or to transact business, or conduct proceedings, in a court.

57  After section 229

Insert:

229A   Designated Manager may disclose information to ASIC

                   The Designated Manager may disclose to the Australian Securities and Investments Commission, information (including personal information within the meaning of the Privacy Act 1988 ) that is:

                     (a)  relevant to the functions of the Commission; and

                     (b)  obtained by the Designated Manager as a result of the performance of functions and duties, or the exercise of powers, in relation to incorporated trade marks attorneys.

58  After subparagraph 231(2)(ha)(i)

Insert:

                            (ia)  assessing the professional conduct of registered trade marks attorneys by reference to standards of practice established by the Professional Standards Board from time to time;