PATENTS AMENDMENT ACT 1984 No. 92, 1984
PATENTS AMENDMENT ACT 1984 No. 92, 1984 - LONG TITLE
An Act to amend the Patents Act 1952 PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 1 Short title, &c.
(Assented to 21 September 1984) 1. (1) This Act may be cited as the Patents Amendment Act 1984. (2) The Patents Act 1952*1* is in this Act referred to as the Principal Act. *1* No. 42, 1952, as amended. For previous amendments, see No. 14, 1954; No. 3, 1955; No. 107, 1960; No. 84, 1962; No. 93, 1966; No. 34, 1969; No. 216, 1973; Nos. 91 and 162, 1976; No. 131, 1978; Nos. 9, 19 and 188, 1979; No. 176, 1981; No. 26, 1982; and No. 91, 1983. PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 2 Commencement
2. This Act shall come into operation on a date to be fixed by Proclamation. PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 3 Interpretation
3. Section 6 of the Principal Act is amended- (a) by inserting after the definition of "Australia" the following definition: " 'Budapest Treaty' means the Budapest Treaty on the International Recognition of the Deposit of Micro Organisms for the purposes of Patent Procedure done at Budapest on 28 April 1977 (a copy of the English text of which is set out in Schedule 3), together with the Regulations annexed to that Treaty (a copy of the English text of which is also set out in Schedule 3) as affected by any amendments made under Article 12 of that Treaty;"; (b) by inserting after the definitions of "date of application" and "date of the application" the following definition: " 'depositary institution' means a body or institution that receives, accepts and stores micro-organisms and furnishes samples of micro-organisms;"; (c) by inserting after the definition of "exclusive licensee" the following definition: " 'international depositary authority' has the same meaning as in the Budapest Treaty;"; and (d) by inserting after the definition of "prescribed court" the following definitions: " 'prescribed depositary institution' means- (a) an international depositary authority, whether in or outside Australia; or (b) any other depositary institution in Australia that is prescribed for the purposes of this paragraph; 'rules relating to micro-organisms' means such provisions of the Budapest Treaty, and such provisions made by or under regulations made in pursuance of paragraph 177 (1) (ae), as are applicable;". PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 4 Form of application
4. Section 35 of the Principal Act is amended by adding at the end thereof the following sub-section: "(5) Where, in relation to an application for a patent, a micro-organism is deposited with a prescribed depositary institution for the purposes of section 40, there shall be lodged in accordance with the regulations such documents as are prescribed.".
PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 5 Contents of specification
5. (1) Section 40 of the Principal Act is amended by adding at the end thereof the following sub-sections:
"(3) Where- (a) the invention involves the use, modification or cultivation of a micro-organism other than a micro-organism referred to in sub-section (4); (b) a person skilled in the art could not reasonably be expected to be able to perform the invention without having a sample of the micro-organism before commencing to perform the invention; and (c) the micro-organism is not reasonably available to a person skilled in the art, the requirements of sub-section (5) shall be satisfied in relation to the micro-organism, and if, and only if, those requirements are satisfied, the specification shall, for the purposes of this Act, be taken to comply with paragraph (1) (a) or (1A) (a), as the case may be, to the extent that it is required by that paragraph to describe the micro-organism. "(4) To the extent that the invention is a micro-organism, then, if the requirements of sub-section (5) are satisfied in relation to the micro-organism, the specification shall, for the purposes of this Act, be taken to comply with paragraph (1) (a) or (1A) (a), as the case may be, to the extent that it is required by that paragraph to describe the micro-organism.
"(5) The requirements of this sub-section shall be taken to be satisfied in
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relation to a micro-organism to which a specification relates if, and only if- (a) the micro-organism was, on or before the date of lodgment of the specification, deposited with a prescribed depositary institution in accordance with the rules relating to micro-organisms; (b) the specification includes, at that date, such relevant information on the characteristics of the micro-organism as is known to the applicant; (c) at all times since the expiration of the prescribed period commencing on that date, the specification has included the name of a prescribed depositary institution from which samples of the micro-organism are obtainable as provided by the rules relating to micro-organisms, the date on which the relevant deposit was made and the file, accession or registration number of the deposit given by the institution; (d) at all times since the date of lodgment of the specification, authority by the applicant or the patentee, as the case may be, has been in force for the furnishing of samples of the micro-organism in accordance with those rules; and (e) at all times since the date of lodgment of the specification, samples of the micro-organism have been obtainable from a prescribed depositary institution as provided by those rules. "(6) For the purposes of sub-section (3), a micro-organism shall not be taken not to be reasonably available to a person by reason only that it is not so available in Australia. "(7) Where- (a) at any time, the requirements of paragraph (5) (c), (d) or (e) in relation to a micro-organism cease to be satisfied (otherwise than by reason of the withdrawal of an authority referred to in paragraph (5) (d)); and (b) at a subsequent time, being a time within the appropriate prescribed period, steps have been taken in accordance with such provisions (if any) of the regulations as are applicable and, by reason of those steps, if the period between those times were disregarded, those requirements would be satisfied at that subsequent time, those requirements shall, for the purposes of this Act, be deemed to have been satisfied during the period between those times, and such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention during the period between those times.". (2) The amendments made by sub-section (1) apply in respect of a specification lodged after the commencement of this section.
PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 6 Prohibition of publication of information with respect to inventions, &c.
6. Section 131 of the Principal Act is amended- (a) by inserting after sub-section (1) the following sub-section: "(1A) Subject to any directions of the Minister, the Commissioner may, if it appears to him to be necessary or expedient to do so in the interests of the defence of the Commonwealth, by order in writing under his hand, prohibit or restrict access to a micro-organism deposited for the purposes of section 40 with a prescribed depositary institution situated in Australia, whether generally or to a particular person or to the persons included in a class of persons."; (b) by adding at the end of sub-section (2) "or give a person access to a micro-organism in contravention of an order made under sub-section (1A)"; (c) by inserting in sub-section (5) ", or the giving of access to a micro-organism," after "an invention"; and (d) by adding at the end thereof the following sub-section: "(6) A reference in this section to giving access to a micro-organism includes a reference to furnishing a sample of the micro-organism.". PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 7 Application for review
7. Section 151 of the Principal Act is amended by inserting in paragraph (1) (a) "131," before "154". PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 8
8. After section 154 of the Principal Act the following section is inserted:
Micro-organisms ceasing to be reasonably available "154A. (1) Where- (a) an application for a patent has been lodged, or a patent has been granted, for an invention referred to in paragraph 40 (3) (a); (b) the micro-organism concerned was, at the date of lodgment of the complete specification or petty patent specification, as the case may be, reasonably available to a person skilled in the art, and, but for that fact, sub-section 40 (3) would have applied in relation to the invention; and (c) the micro-organism concerned has since ceased to be so available, a prescribed court or the Commissioner, on application made as prescribed, or the Commissioner, of his own motion, may declare that the specification does not comply with the requirements of section 40 unless the requirements of sub-section 40 (5) are satisfied in relation to the micro-organism, and this
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Act has effect accordingly. "(2) Where a declaration is made under sub-section (1), sub-section 40 (5) applies as if the references in that sub-section to the date of lodgment of the specification were references to a date specified in the declaration for the purposes of this sub-section, but nothing in this sub-section shall be taken to limit the operation of section 160.
"(3) Where an application is made under sub-section (1) or the Commissioner proposes to make a declaration under that sub-section of his own motion, the applicant for the patent, or the patentee, as the case may be, shall be given notice, as prescribed, of the application or proposal, as the case may be, and is entitled to appear and be heard.
"(4) A declaration under this section by the Commissioner shall be made by notice in writing given to the applicant for the patent or to the patentee, as the case may be.
"(5) A person who obtains a declaration by a court under this section shall serve an office copy of the declaration on the Commissioner.
"(6) An appeal lies to a prescribed court from a decision of the Commissioner under sub-section (1).".
PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 9 Regulations
9. Section 177 of the Principal Act is amended- (a) by inserting after paragraph (ad) the following paragraph: "(ae) making provision for and in relation to- (i) the deposit for the purposes of this Act, the Budapest Treaty, or both, of micro-organisms with prescribed depositary institutions and the storage and testing of, and furnishing of samples of, micro-organisms by those institutions; (ii) the charging of fees by prescribed depositary institutions situated in Australia in relation to the matters described in sub-paragraph (i); (iii) the making of reports by prescribed depositary institutions situated in Australia in relation to those matters; (iv) the powers and functions of the Commissioner in relation to prescribed depositary institutions with respect to those matters; and (v) otherwise giving effect to the Budapest Treaty;"; and (b) by adding at the end thereof the following sub-sections: "(2) The regulations may make provision for matters referred to in paragraph (1) (ae) by empowering the Commissioner, on behalf of the Commonwealth, to enter into agreements with prescribed depositary institutions with respect to those matters. "(3) Regulations made in pursuance of paragraph (1) (ae) and sub-section (2) may make different provision with respect to different matters or classes of matters dealt with by or under those regulations, but this sub-section shall not be taken to limit a power to make regulations conferred by any other provision of this Act.". PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SECT 10 Addition of Schedule
10. The Principal Act is amended by adding at the end thereof the Schedule set out in the Schedule to this Act. ---------------- PATENTS AMENDMENT ACT 1984 No. 92, 1984 - SCHEDULE
SCHEDULE Section 10 SCHEDULE TO BE INSERTED IN PRINCIPAL ACT "SCHEDULE 3 Section 6 BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICRO ORGANISMS FOR THE PURPOSES OF PATENT PROCEDURE Budapest, 28 April 1977 INTRODUCTORY PROVISIONS Article 1 Establishment of a Union The States party to this Treaty (hereinafter called 'the Contracting States') constitute a Union for the international recognition of the deposit of micro organisms for the purposes of patent procedure. Article 2 Definitions For the purposes of this Treaty and the Regulations: (i) references to a 'patent' shall be construed as references to patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition; (ii) 'deposit of a micro organism' means, according to the context in which these words appear, the following acts effected in accordance with this Treaty and the Regulations; the transmittal of a micro organism to an international
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depositary authority, which receives and accepts it, or the storage of such a micro organism by the international depositary authority, or both the said transmittal and the said storage; (iii) 'patent procedure' means any administrative or judicial procedure relating to a patent application or a patent; (iv) 'publication for the purposes of patent procedure' means the official publication, or the official laying open for public inspection, of a patent application or a patent; (v) 'intergovernmental industrial property organisation' means an organisation that has filed a declaration under Article 9 (1); (vi) 'industrial property office' means an authority of a Contracting State or an intergovernmental industrial property organisation competent for the grant of patents; (vii) 'depositary institution' means an institution which provides for the receipt, acceptance and storage of micro organisms and the furnishing of samples thereof; (viii) 'international depositary authority' means a depositary institution which has acquired the status of international depositary authority as provided in Article 7; (ix) 'depositor' means the natural person or legal entity transmitting a micro organism to an international depositary authority, which receives and accepts it, and any successor in title of the said natural person or legal entity; (x) 'Union' means the Union referred to in Article 1; (xi) 'Assembly' means the Assembly referred to in Article 10; (xii) 'Organisation' means the World Intellectual Property Organisation; (xiii) 'International Bureau' means the International Bureau of the Organisation and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI); (xiv) 'Director General' means the Director General of the Organisation; (xv) 'Regulations' means the Regulations referred to in Article 12. CHAPTER I Substantive provisions Article 3 Recognition and Effect of the Deposit of Micro organisms (1) (a) Contracting States which allow or require the deposit of micro organisms for the purposes of patent procedure shall recognise, for such purposes, the deposit of a micro organism with any international depositary authority. Such recognition shall include the recognition of the fact and date of the deposit as indicated by the international depositary authority as well as the recognition of the fact that what is furnished as a sample is a sample of the deposited micro organism.(b) Any Contracting State may require a copy of the receipt of the deposit referred to in subparagraph (a), issued by the international depositary authority.(2) As far as matters regulated in this Treaty and the Regulations are concerned, no Contracting State may require compliance with requirements different from or additional to those which are provided in this Treaty and the Regulations. Article 4 New Deposit (1) (a) Where the international depositary authority cannot furnish samples of the deposited micro organism for any reason, in particular, (i) where such micro organism is no longer viable, or (ii) where the furnishing of samples would require that they be sent abroad and the sending or the receipt of the samples abroad is prevented by export or import restrictions, that authority shall, promptly after having noted its inability to furnish samples, notify the depositor of such inability, indicating the cause thereof, and the depositor, subject to paragraph (2) and as provided in this paragraph, shall have the right to make a new deposit of the micro organism which was originally deposited.(b) The new deposit shall be made with the international depositary authority
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with which the original deposit was made, provided that: (i) it shall be made with another international depositary authority where the institution with which the original deposit was made has ceased to have the status of international depositary authority, either entirely or in respect of the kind of micro organism to which the deposited micro organism belongs, or where the international depositary authority with which the original deposit was made discontinues, temporarily or definitively, the performance of its functions in respect of deposited micro organisms; (ii) it may be made with another international depositary authority in the case referred to in subparagraph (a) (ii).(c) Any new deposit shall be accompanied by a statement signed by the depositor alleging that the newly deposited micro organism is the same as that originally deposited. If the allegation of the depositor is contested, the burden of proof shall be governed by the applicable law.(d) Subject to subparagraphs (a) to (c) and (e), the new deposit shall be treated as if it had been made on the date on which the original deposit was made where all the preceding statements concerning the viability of the originally deposited micro organism indicated that the micro organism was viable and where the new deposit was made within three months after the date on which the depositor received the notification referred to in subparagraph (a).(e) Where subparagraph (b) (i) applies and the depositor does not receive the notification referred to in subparagraph (a) within six months after the date on which the termination, limitation or discontinuance referred to in subparagraph (b) (i) was published by the International Bureau, the three-month time limit referred to in subparagraph (d) shall be counted from the date of the said publication.(2) The right referred to in paragraph (1) (a) shall not exist where the deposited micro organism has been transferred to another international depositary authority as long as that authority is in a position to furnish samples of such micro organism. Article 5 Export and Import Restrictions Each Contracting State recognises that it is highly desirable that, if and to the extent to which the export from or import into its territory of certain kinds of micro organisms is restricted, such restriction should apply to microorganisms deposited, or destined for deposit, under this Treaty only where the restriction is necessary in view of national security or the dangers for health or the environment. Article 6 Status of International Depositary Authority (1) In order to qualify for the status of international depositary authority, any depositary institution must be located on the territory of a Contracting State and must benefit from assurances furnished by that State to the effect that the said institution complies and will continue to comply with the requirements specified in paragraph (2). The said assurances may be furnished also by an intergovernmental industrial property organisation; in that case, the depositary institution must be located on the territory of a state member of the said organisation.(2) The depositary institution must, in its capacity of international depositary authority: (i) have a continuous existence; (ii) have the necessary staff and facilities, as prescribed in the Regulations, to perform its scientific and administrative tasks under this Treaty; (iii) be impartial and objective; (iv) be available, for the purposes of deposit, to any depositor under the same conditions; (v) accept for deposit any or certain kinds of micro organisms, examine their viability and store them, as prescribed in the Regulations; (vi) issue a receipt to the depositor, and any required viability statement, as prescribed in the Regulations; (vii) comply, in respect of the deposited micro organisms, with the
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requirement of secrecy, as prescribed in the Regulations; (viii) furnish samples of any deposited micro organism under the conditions and in conformity with the procedure prescribed in the Regulations.