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

Schedule 6 Simplifying the IP system

Part 1 Amendments

Designs Act 2003

1  Section 5 (definition of Convention country )

Repeal the definition, substitute:

Convention country has the meaning given by section 5A.

2  Section 5

Insert:

Federal Court means the Federal Court of Australia.

3  Section 5 (after paragraph (a) of the definition of prescribed court )

Insert:

                    (aa)  the Federal Magistrates Court;

4  After section 5

Insert:

5A   Meaning of Convention country

             (1)  In this Act:

Convention country means a foreign country or region of a kind prescribed by the regulations.

             (2)  Despite subsection 14(2) of the Legislative Instruments Act 2003 , regulations made for the purposes of this section 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.

5  Subsection 28(5)

After “Federal Court”, insert “or the Federal Magistrates Court”.

6  Subsection 50(6)

After “Federal Court”, insert “or the Federal Magistrates Court”.

7  Subsection 52(7)

After “Federal Court”, insert “or the Federal Magistrates Court”.

8  Subsection 54(4)

After “Federal Court”, insert “or the Federal Magistrates Court”.

9  Subsection 67(4)

After “Federal Court”, insert “or the Federal Magistrates Court”.

10  Subsection 68(6)

After “Federal Court”, insert “or the Federal Magistrates Court”.

11  Section 82

Omit “is” (second occurring), substitute “and the Federal Magistrates Court are”.

12  Subsection 83(2)

Repeal the subsection, substitute:

             (2)  The jurisdiction of the Federal Court to hear and determine appeals from decisions of the Registrar is exclusive of the jurisdiction of any other court other than the jurisdiction of:

                     (a)  the Federal Magistrates Court under subsection 83A(2); and

                     (b)  the High Court under section 75 of the Constitution.

13  After section 83

Insert:

83A   Jurisdiction of the Federal Magistrates Court

             (1)  The Federal Magistrates Court has jurisdiction with respect to matters arising under this Act.

             (2)  The jurisdiction of the Federal Magistrates Court to hear and determine appeals from decisions of the Registrar is exclusive of the jurisdiction of any other court other than the jurisdiction of:

                     (a)  the Federal Court under subsection 83(2); and

                     (b)  the High Court under section 75 of the Constitution.

             (3)  A prosecution for an offence against this Act must not be brought in the Federal Magistrates Court.

14  Subsection 84(1)

After “Federal Court”, insert “or the Federal Magistrates Court”.

15  Section 85

After “83”, insert “, 83A”.

16  At the end of section 86

Add:

             (3)  This section does not apply in relation to a transfer of proceedings between the Federal Court and the Federal Magistrates Court.

Note:          For transfers of proceedings from the Federal Magistrates Court to the Federal Court, see section 39 of the Federal Magistrates Act 1999 . For transfers of proceedings from the Federal Court to the Federal Magistrates Court, see section 32AB of the Federal Court of Australia Act 1976 .

17  Subsection 87(2)

After “single judge of the Federal Court”, insert “or the Federal Magistrates Court”.

18  Section 88

After “Federal Court”, insert “or Federal Magistrates Court”.

Note:       The heading to section 88 is altered by inserting “ and Federal Magistrates Court ” after “ Federal Court ”.

19  Section 89

After “Federal Court”, insert “or Federal Magistrates Court”.

20  Subsection 125(2)

Repeal the subsection, substitute:

             (2)  The Registrar may establish one or more sub-offices of the Designs Office as the Registrar considers appropriate.

             (3)  The Registrar may abolish any such sub-offices.

21  Subsection 136A

After “of the Designs Office”, insert “(if any)”.

22  Section 144

Repeal the section, substitute:

144   Filing of documents

                   A document may be filed with the Designs Office by:

                     (a)  delivering the document to the Designs Office, or a sub-office of the Designs Office (if any), either personally or by post; or

                     (b)  any other prescribed means.

Patents Act 1990

23  Section 3 (in the list of definitions)

Omit “foreign patent office”.

24  Section 3 (in the list of definitions)

Omit “modified examination”.

25  Section 3 (in the list of definitions)

Omit “sealed”.

26  Section 4

Repeal the section.

27  Section 8

Repeal the section.

28  Paragraph 9(d)

Omit “Territory.”, substitute “Territory;”.

29  At the end of section 9 (before the note)

Add:

                     (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.

30  Section 10 (note)

Omit “: see also Chapter 8”.

31  Before section 22

Insert:

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.

32  Paragraph 24(1)(a)

Omit “, through any publication or use of the invention”.

33  Subsection 24(1)

Omit “patent application”, substitute “complete application”.

34  After section 29

Insert:

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 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.

Note:          A failure to comply with this subsection may 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 within the prescribed period 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 Legislative Instruments Act 2003 , regulations made for the purposes of subsection (1) 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.

Note:       The heading to section 29 is altered by adding at the end “ —general rules ”.

35  Section 30

After “application”, insert “(including a PCT application)”.

36  Section 32

Before “If”, insert “(1)”.

37  Section 32

Omit “interested parties”, substitute “joint applicants”.

38  Section 32

Omit “parties” (second and third occurring), substitute “applicants”.

39  At the end of section 32

Add:

             (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.

40  Paragraph 36(1)(a)

Omit “the patent request and complete specification have not been accepted”, substitute “the patent has not been granted”.

41  After subsection 36(3)

Insert:

          (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.

42  After subsection 38(1)

Insert:

          (1A)  A Convention application must be made within the prescribed period.

43  After subsection 40(3)

Insert:

          (3A)  The claim or claims must not rely on references to descriptions or drawings unless absolutely necessary to define the invention.

44  Subsections 43(5) and (6)

Repeal the subsections, substitute:

             (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.

45  After section 43

Insert:

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.

46  Subsection 45(1)

Omit “Where”, substitute “Subject to subsection (1A), if”.

47  After subsection 45(1)

Insert:

          (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.

48  Subsections 45(3) to (5)

Repeal the subsections.

49  Section 46

Repeal the section.

50  Division 2 of Part 2 of Chapter 3

Repeal the Division.

51  Subsections 49(3) and (4)

Repeal the subsections.

52  Subsection 49(6)

Repeal the subsection, substitute:

             (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.

53  After section 49

Insert:

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).

54  After section 50

Insert:

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.

55  At the end of section 51

Add “(other than a decision under section 50A)”.

56  Section 53

Repeal the section, substitute:

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.

57  Subsection 55(3)

Omit “section 90”, substitute “section 56A”.

58  After section 56

Insert:

56A   Publication and inspection of PCT applications

             (1)  The regulations may make provision for and in relation to the public inspection of PCT applications.

             (2)  Without limiting subsection (1), the regulations may make provision for and in relation to:

                     (a)  notices regarding the opening of complete specifications relating to PCT applications to public inspection; and

                     (b)  the circumstances in which PCT applications become open to public inspection.

59  At the end of subsection 57(1)

Add:

             (5)  For the purposes of applying this section to a PCT application, references to the complete specification becoming open to public inspection are references to the PCT application becoming open to public inspection in accordance with regulations made for the purposes of section 56A.

60  Subsection 61(1)

Omit “by sealing a standard patent in the approved form”, substitute “by registering prescribed particulars of the patent in the Register”.

61  At the end of section 61

Add:

             (3)  The Commissioner must notify the patentee that the standard patent has been granted.

62  Subsection 62(1)

Omit “by sealing an innovation patent in the approved form”, substitute “by registering prescribed particulars of the patent in the Register”.

63  At the end of section 62

Add:

             (4)  The Commissioner must notify the patentee that the innovation patent has been granted.

64  Section 66

Repeal the section.

65  Subsection 79C(1)

Omit “sealed”, substitute “granted”.

66  Subsection 81(3)

Omit “sealed” (wherever occurring), substitute “granted”.

67  Chapter 8

Repeal the Chapter.

68  Section 101D

Repeal the section.

69  After section 101E

Insert:

101EA   Revocation of certificate of examination

             (1)  The Commissioner may revoke a certificate of examination issued in relation to an innovation patent if the Commissioner is satisfied, on the balance of probabilities, that:

                     (a)  the certificate of examination should not have been issued, taking account of all the circumstances that existed when the certificate was issued (whether or not the Commissioner knew then of their existence); and

                     (b)  it is reasonable to revoke the certificate, taking account of all the circumstances; and

                     (c)  there are no relevant proceedings pending.

             (2)  If the Commissioner revokes the certificate:

                     (a)  all of the provisions of section 101E are taken, after revocation, to have never operated in relation to the patent; and

                     (b)  the Commissioner must continue to examine and report on the patent under section 101B; and

                     (c)  sections 101E and 101F continue to apply in relation to the patent.

70  Subsection 102(2C)

Repeal the subsection.

71  Subsection 105(1)

Omit “the patent,”.

72  Subsection 105(6)

Omit “patent,”.

73  Sections 125 to 127

Repeal the sections, substitute:

125   Application for non-infringement declaration

             (1)  A person who has done, is doing, or is intending to do an act may apply to a prescribed court for a declaration that the doing of the act does not, or would not, infringe a patent.

             (2)  An application may be made:

                     (a)  for a declaration in relation to an invention claimed in a standard patent—at any time after the patent has been granted; and

                     (b)  for a declaration in relation to an innovation patent—at any time after the patent has been certified; and

                     (c)  whether or not the patentee has made any assertion to the effect that the doing of the act has or would infringe the claim.

             (3)  The patentee must be joined as a respondent in the proceedings.

126   Proceedings for non-infringement declarations

             (1)  A prescribed court must not make a non-infringement declaration unless:

                     (a)  the applicant for the declaration:

                              (i)  has asked the patentee in writing for a written admission that the doing of the act has not infringed, or would not infringe, the patent; and

                             (ii)  has given the patentee full written particulars of the act done, or proposed to be done; and

                            (iii)  has undertaken to pay a reasonable sum for the patentee’s expenses in obtaining advice about whether the act has infringed or would infringe the claim; and

                     (b)  the patentee has refused or failed to make the admission.

             (2)  The court may make orders as to costs as the court thinks fit.

127   Effect of non-infringement declarations

                   If:

                     (a)  a patentee has given a person a written admission that the doing of an act has not infringed, or would not infringe, a claim, or a prescribed court has made a non-infringement declaration in respect of an invention; and

                     (b)  the patentee later gets an injunction restraining the person from doing the act as specified in the admission, or the declaration is revoked;

the person is not liable:

                     (c)  to account to the patentee for any profits, made by the person before the date on which the injunction was granted or the declaration was revoked, from the doing of the act as specified in the admission or declaration; or

                     (d)  to pay damages for any loss suffered by the patentee before that date as a result of the doing of that act.

74  Subsection 135(2)

Omit “sealed”, substitute “granted”.

75  At the end of section 138

Add:

             (4)  A court must not make an order under subsection (3) on the ground that the patentee is not entitled to the patent unless the court is satisfied that, in all the circumstances, it is just and equitable to do so.

76  Subsection 141(2)

Repeal the subsection, substitute:

             (2)  The regulations may prescribe circumstances in which PCT applications may be withdrawn, or are to be taken to be withdrawn.

77  Paragraph 142(2)(c)

Repeal the paragraph.

78  At the end of subsection 142(2)

Add:

               ; or (f)  if the application is a PCT application—prescribed circumstances apply to the application.

79  After section 191

Insert:

191A   Commissioner’s power to rectify register

             (1)  The Commissioner may rectify the Register if the Commissioner is satisfied, on the balance of probabilities, whether on application or otherwise, of any of the following:

                     (a)  the omission of an entry from the Register;

                     (b)  an entry made in the Register without sufficient cause;

                     (c)  an entry wrongly existing in the Register;

                     (d)  an error or defect in an entry in the Register.

             (2)  The Commissioner must, on application, make a declaration as to a person’s entitlement to a patent, or a share in a patent, if the Commissioner is satisfied, on the balance of probabilities, that the Register does not properly record a person’s entitlement to a patent, or a share in a patent:

                     (a)  because the patent, or a share in the patent, was granted to a person who was not entitled to it; or

                     (b)  because the patent, or a share in the patent, was not granted to a person who was entitled to it; or

                     (c)  for any other reason.

             (3)  If the Commissioner makes a declaration under subsection (2), the Commissioner must rectify the Register accordingly.

             (4)  The Commissioner must not make a declaration, or rectify the Register, under this section without first giving the following persons a reasonable opportunity to be heard:

                     (a)  the person whose entitlement is not properly recorded by the Register;

                     (b)  any person whose entitlement to the patent, or a share in the patent, is recorded in the Register.

             (5)  The Commissioner must not make a declaration or rectify the Register under this section while relevant proceedings in relation to the patent are pending.

             (6)  An appeal lies to the Federal Court against a decision of the Commissioner:

                     (a)  to make, or refuse to make, a declaration; or

                     (b)  to rectify, or not rectify, the Register;

under this section.

80  At the end of Chapter 19

Add:

197AA   Evidence of matters arising under PCT

                   A certificate signed by the Commissioner in relation to an international application, certifying that:

                     (a)  any matter or thing required or permitted by or under this Act or the PCT to be made or done has been made or done; or

                     (b)  any matter or thing required by or under this Act or the PCT not to be made or done has not been made or done;

is prima facie evidence of the matters contained in the certificate.

81  Subsection 205(2)

Repeal the subsection, substitute:

             (2)  The Commissioner may establish one or more sub-offices of the Patent Office as the Commissioner considers appropriate.

             (3)  The Commissioner may abolish any such sub-offices.

82  Section 214

Repeal the section, substitute:

214   Filing of documents

                   A document may be filed with the Patent Office by:

                     (a)  delivering the document to the Patent Office or a sub-office of the Patent Office (if any) either personally or by post; or

                     (b)  any other prescribed means.

83  Subsection 215(3)

Omit “the patent by”, substitute “the Register by”.

84  Subsection 222A(1)

After “of the Patent Office”, insert “(if any)”.

85  At the end of subsection 223(1)

Add:

               ; or (d)  the receiving Office; or

                     (e)  the International Bureau of the World Intellectual Property Organization.

86  Paragraph 224(1)(a)

Omit “, 52 or 66, subsection 74(3)”, substitute “or 52, subsection 56(1)(b), 74(3)”.

87  Section 226

Repeal the section, substitute:

226   Documents open to public inspection do not infringe copyright

             (1)  If a document mentioned in subsection (2) is open to public inspection, doing any of the following in relation to the whole or part of the document does not constitute an infringement of any copyright subsisting under the Copyright Act 1968 in any literary or artistic work:

                     (a)  reproducing the document in two-dimensional form;

                     (b)  communicating (within the meaning of that Act) the document to the public;

                     (c)  translating (within the meaning of that Act) the document.

             (2)  The documents are:

                     (a)  a provisional specification; and

                     (b)  a complete specification; and

                     (c)  a prescribed document.

             (3)  If a reproduction of an unpublished work is made as a result of a document being open to public inspection, the supply or communication of the reproduction does not constitute the publication of the work for the purposes of the Copyright Act 1968 .

88  Subsection 227(3) (note)

Omit “89(3)”, substitute “29A(3)”.

89  Paragraph 228(2)(f)

Repeal the paragraph.

90  After paragraph 228(2)(ha)

Insert:

                      (i)  setting out the checking process for PCT applications including, in particular, the following matters:

                              (i)  specifying the requirements that must be met in respect of a PCT application, once the requirements of subsection 29A(5) have been met;

                             (ii)  empowering the Commissioner to direct an applicant to do such things as are necessary to ensure that the PCT application is in accordance with those requirements;

                            (iii)  providing for the lapsing of the PCT application if such a direction is not complied with within a time specified in the regulations;

91  Subsections 228(5) and (6)

Repeal the subsections.

92  Schedule 1 (at the end of the definition of Budapest Treaty )

Add:

Note:          The text of the Treaty is set out in Australian Treaty Series 1987 No. 9 ([1987] ATS 9). In 2011, the text of a Treaty in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au).

93  Schedule 1 (definition of Convention application )

Omit “Part 2 of Chapter 8”, substitute “Part 1 of Chapter 3”.

94  Schedule 1 (definition of Convention country )

Repeal the definition, substitute:

Convention country has the meaning given by section 29B.

95  Schedule 1 (paragraph (a) of the definition of examination )

Omit “, or a modified examination of the request and specification under section 48”.

96  Schedule 1 (definition of foreign patent office )

Repeal the definition.

97  Schedule 1 (definition of international filing date )

Repeal the definition, substitute:

international filing date , in relation to an international application, means the date given to the international application as its international filing date under the PCT.

98  Schedule 1 (definition of modified examination )

Repeal the definition.

99  Schedule 1 (at the end of the definition of PCT )

Add:

Note:          The text of the Treaty is set out in Australian Treaty Series 1980 No. 6 ([1980] ATS 6). In 2011, the text of a Treaty in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au).

100  Schedule 1 (definition of PCT application )

Repeal the definition, substitute:

PCT application means an international application in which Australia is specified as a designated State under Article 4(1)(ii) of the PCT.

101  Schedule 1 (sub-subparagraph (b)(ii)(B) of the definition of prior art base )

After “published”, insert “on or”.

102  Schedule 1 (sub subparagraph (b)(ii)(C) of the definition of prior art base )

Omit “and when it was published”.

103  Schedule 1 (definition of sealed )

Repeal the definition.

Plant Breeder’s Rights Act 1994

104  Subsection 3(1) (definition of Convention )

Repeal the definition, substitute:

Convention means the International Convention for the Protection of New Varieties of Plants, done at Geneva on 23 October 1978, as that treaty is in force for Australia from time to time.

Note:          The text of the Convention is set out in Australian Treaty Series 1989 No. 2 ([1989] ATS 2). In 2011, the text of a Convention in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au).

105  Subsection 43(10)

Insert:

authority has the same meaning as in the Convention.

106  Subsection 43(10)

Insert:

territory has the same meaning as in the Convention.

107  Subsection 43(10)

Insert:

variety has the same meaning as in the Convention.

108  Schedule

Repeal the schedule.

Trade Marks Act 1995

109  Subsection 6(1) (definition of Convention country )

Repeal the definition, substitute:

Convention country means a foreign country or region of a kind prescribed by the regulations.

110  At the end of section 6

Add:

             (3)  Despite subsection 14(2) of the Legislative Instruments Act 2003 , regulations made for the purposes of the definition of Convention country in subsection (1) 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.

111  Subsection 27(4)

After “sub-offices”, insert “(if any)”.

112  Section 35

After “Federal Court”, insert “or the Federal Magistrates Court”.

113  Section 41

Repeal the section, substitute:

41   Trade mark not distinguishing applicant’s goods or services

             (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services ) from the goods or services of other persons.

Note:          For goods of a person and services of a person see section 6.

             (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

             (3)  This subsection applies to a trade mark if:

                     (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

                     (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

             (4)  This subsection applies to a trade mark if:

                     (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

                     (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

                              (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

                             (ii)  the use, or intended use, of the trade mark by the applicant;

                            (iii)  any other circumstances.

Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:       For goods of a person and services of a person see section 6.

Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

             (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:       For applicant and predecessor in title see section 6.

Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

114  Section 56

After “Federal Court”, insert “or the Federal Magistrates Court”.

115  Section 67

After “Federal Court”, insert “or the Federal Magistrates Court”.

116  Subsection 83(2)

After “Federal Court”, insert “or the Federal Magistrates Court”.

117  Subsection 83A(8)

After “Federal Court”, insert “or the Federal Magistrates Court”.

118  Section 84D

After “Federal Court”, insert “or the Federal Magistrates Court”.

119  Section 104

After “Federal Court”, insert “or the Federal Magistrates Court”.

120  After paragraph 190(a)

Insert:

                    (aa)  the Federal Magistrates Court;

121  Subsection 191(2)

Repeal the subsection, substitute:

             (2)  The jurisdiction of the Federal Court to hear and determine appeals against decisions, directions or orders of the Registrar is exclusive of the jurisdiction of any other court except the jurisdiction of:

                     (a)  the Federal Magistrates Court under subsection 191A(2) of this Act; and

                     (b)  the High Court under section 75 of the Constitution.

122  After section 191

Insert:

191A   Jurisdiction of the Federal Magistrates Court

             (1)  The Federal Magistrates Court has jurisdiction with respect to matters arising under this Act.

             (2)  The jurisdiction of the Federal Magistrates Court to hear and determine appeals against decisions, directions or orders of the Registrar is exclusive of the jurisdiction of any other court except the jurisdiction of:

                     (a)  the Federal Court under subsection 191(2) of this Act; and

                     (b)  the High Court under section 75 of the Constitution.

             (3)  A prosecution for an offence against this Act may not be started in the Federal Magistrates Court.

123  Subsection 192(1)

After “Federal Court”, insert “and the Federal Magistrates Court”.

124  Section 193

After “191”, insert “, 191A”.

125  At the end of section 194

Add:

             (3)  This section does not apply in relation to a transfer of proceedings between the Federal Court and the Federal Magistrates Court.

Note:          For transfers of proceedings from the Federal Magistrates Court to the Federal Court, see section 39 of the Federal Magistrates Act 1999 . For transfers of proceedings from the Federal Court to the Federal Magistrates Court, see section 32AB of the Federal Court of Australia Act 1976 .

126  Subsection 195(2)

After “single judge of the Federal Court”, insert “or the Federal Magistrates Court”.

127  Section 196

After “Federal Court”, insert “or the Federal Magistrates Court”.

128  Section 197

After “Federal Court”, insert “or the Federal Magistrates Court”.

Note:       The heading to section 197 is altered by inserting “ and Federal Magistrates Court ” after “ Federal Court ”.

129  Subsection 199(2)

Repeal the subsection, substitute:

             (2)  The Registrar may establish one or more sub-offices of the Trade Marks Office as the Registrar considers appropriate.

             (3)  The Registrar may abolish any such sub-offices.

130  Subsections 213(1) and (2)

Repeal the subsections, substitute:

                   A document may be filed with the Trade Marks Office by:

                     (a)  delivering the document to the Trade Marks Office or any sub-office of the Trade Marks Office (if any) either personally or by post; or

                     (b)  any other prescribed means.

131  Subsection 223A(1)

After “Trade Marks Office” (second occurring), insert “(if any)”.

132  Subsection 225(1)

Repeal the subsection.



 

Part 2 Application and savings provisions

133  Application provisions

(1)       The amendment made by item 29 of this Schedule applies in relation to a use of an invention on or after the day that item commences.

(2)       The amendments made by items 30, 34, 35, 42, 46, 47, 56, 57, 58, 59, 67, 76, 78, 80, 85, 88, 90, 93, 97 and 100 of this Schedule apply in relation to applications made on or after the day those items commence.

(3)       The amendments made by items 31 and 79 of this Schedule apply on and after the day those items commence in relation to patents granted before, on or after that commencement.

(4)       The amendments made by items 32 and 33 of this Schedule apply in relation to information that is made publicly available on or after the day those items commence.

(5)       The amendments made by items 36, 37, 38 and 39 of this Schedule apply in relation to disputes arising on or after the day those items commence.

(6)       The amendments made by items 40 and 41 of this Schedule apply in relation to declarations made on or after the day those items commence.

(7)       The amendments made by items 43 and 102 of this Schedule apply in relation to:

                     (a)  patents for which the complete application is made on or after the day those items commence; and

                     (b)  standard patents for which the application was made before the day those items commence, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

                     (c)  innovation patents granted on or after the day those items commence, if the complete application to which the patent relates was made before that day; and

                     (d)  complete patent applications made on or after the day those items commence; and

                     (e)  complete applications for standard patents made before the day those items commence, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

                      (f)  complete applications for innovation patents made before the day those items commence, if a patent had not been granted in relation to the application on or before that day; and

                     (g)  innovation patents granted before the day those items commence, if:

                              (i)  the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

                             (ii)  the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

(8)       The amendment made by item 44 of this Schedule applies in relation to applications filed, and patents granted, before, on or after the day that item commences.

(9)       The amendments made by items 60, 61, 62, 63 and 64 of this Schedule apply in relation to patents granted on or after the day those items commence.

(10)     The amendments made by items 71 and 72 of this Schedule apply in relation to proceedings commenced on or after the day those items commence.

(11)     The amendments made by items 54 and 55 of this Schedule apply in relation to applications accepted on or after the day those items commence.

(12)     The amendment made by item 69 of this Schedule applies in relation to patents certified on or after the day that item commences.

(13)     The amendment made by item 73 of this Schedule applies in relation to applications for non-infringement declarations made on or after the day that item commences.

(14)     The amendment made by item 75 of this Schedule applies in relation to applications for orders made on or after the day that item commences, whether the patent was granted before, on or after that day.

(15)     The amendment made by item 77 of this Schedule does not apply in relation to an application if:

                     (a)  the examination of the patent request and complete specification for the application had been deferred under section 46 of the Patents Act 1990 (as in force immediately before the commencement of that item); and

                     (b)  the applicant had not asked for an examination of the patent request and complete specification on or before that commencement.

(16)     The amendment made by item 101 of this Schedule applies in relation to:

                     (a)  patents for which the complete application is made on or after the day that item commences; and

                     (b)  standard patents for which the application was made before the day that item commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

                     (c)  innovation patents granted on or after the day that item commences, if the complete application to which the patent relates was made before that day; and

                     (d)  complete patent applications made on or after the day that item commences; and

                     (e)  complete applications for standard patents made before the day that item commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day; and

                      (f)  complete applications for innovation patents made before the day that item commences, if a patent had not been granted in relation to the application on or before that day; and

                     (g)  innovation patents granted before the day that item commences, if:

                              (i)  the Commissioner had not decided to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day; and

                             (ii)  the patentee or any other person had not asked the Commissioner to examine the complete specification relating to the patent under section 101A of the Patents Act 1990 before that day.

134  Savings provision—modified examinations

(1)       This item applies if:

                     (a)  a request for a modified examination had been made under section 47 of the Patents Act 1990 (as in force immediately before the commencement of this item) in relation to an application; and

                     (b)  the modified examination:

                              (i)  had not yet commenced at the time of that commencement; or

                             (ii)  had commenced but the application had not been accepted at the time of that commencement.

(2)       Despite the amendments made by items 50 and 52 of this Schedule, Division 2 of Part 2 of Chapter 3 and subsection 49(6) of the Patents Act 1990 (as in force immediately before the commencement of this item) continue to apply in relation to the application as if those amendments had not been made.