Note: Where available, the PDF/Word icon below is provided to view the complete and fully formatted document
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)  apply