Australian Government

Federal Register of Legislation

Patents Act 1990

In force

Administered by

Department of Industry, Science and Resources

Superseded version

View latest version

C2023C00385 (C50)

18 October 2023 - 17 November 2023

Table of contents

Chapter 1—Introductory
- 1 Short title
- 2 Commencement
- 2A Object of this Act
- 3 Definitions
- 5 Associated applications
- 6 Deposit requirements
- 7 Novelty, inventive step and innovative step
- 7A Meaning of useful
- 9 Secret use
- 10 Certain international applications to be taken to have been given an international filing date
- 11 Act binds the Crown
- 12 Application of Act
- 12A Application of the Criminal Code
Chapter 2—Patent rights, ownership and validity
- Part 1—Patent rights
  - 13 Exclusive rights given by patent
  - 14 Assignment of patent
- Part 2—Ownership
- 15 Who may be granted a patent?
- 16 Co ownership of patents
- 17 Directions to co owners
- Part 3—Validity
- Division 1—Validity
- Division 2—Matters not affecting validity
- 22A Validity not affected by who patent is granted to
- 22 Invalidity in relation to one claim not to affect validity in relation to other claims
- 23 Validity not affected by publication etc. after priority date
- 24 Validity not affected by making information available in certain circumstances
- 25 Validity: patents of addition
- 26 Validity not affected in certain cases involving amendments
- Division 3—Notice of matters affecting validity
- 27 Notice of matters affecting validity of standard patents
- 28 Notice of matters affecting validity of innovation patents
Chapter 3—From application to acceptance
- Part 1—Patent applications
- Part 2—Examination of standard patent requests and specifications
  - Division 1A—Preliminary search and opinion
    - 43A Preliminary search and opinion
  - Division 1—Examination
    - 44 Request for examination
    - 45 Examination
- Part 3—Acceptance
  - Division 1—Acceptance of standard patents
  - Division 2—Acceptance of innovation patents
    - 52 Formalities check and acceptance of innovation patents
Chapter 4—Publication
- 53 Publication of certain information about applicants etc.
- 54 Notice of publication
- 55 Documents open to public inspection
- 56 Certain documents and information not to be published or open to public inspection
- 56A Publication and inspection of PCT applications
- 57 Effect of publication of complete specification
- 58 Result of search may be disclosed
Chapter 5—Opposition to grant of standard patent
- 59 Opposition to grant of standard patent
- 60 Hearing and decision by Commissioner
Chapter 6—Grant and term of patents
- Part 1—Grant
- Part 2—Term
  - 67 Term of standard patent
  - 68 Term of innovation patent
- Part 3—Extension of term of standard patents relating to pharmaceutical substances
Chapter 6A—Divisional applications
- 79B Divisional applications prior to grant of patent
- 79C Divisional applications for innovation patents may be made after grant of an innovation patent
Chapter 7—Patents of addition
- 80 Chapter does not apply to innovation patents
- 81 Grant of patent of addition
- 82 Revocation of patent and grant of patent of addition instead
- 83 Term of patent of addition
- 85 Revocation of patent for main invention
- 86 Renewal fees not payable
- 87 Fees payable where patent of addition becomes an independent patent
Chapter 9—Re examination of standard patents
- 96A Chapter does not apply to innovation patents
- 97 Re examination of complete specifications
- 98 Report on re examination
- 99 Statement by applicant or patentee
- 100 Copies of report to be given to court
- 100A Refusal to grant patent—re examination before grant
- 101 Revocation of patent—re examination after grant
Chapter 9A—Examination, re examination and opposition innovation patents
- Part 1—Examination of innovation patents
- Part 2—Re examination of innovation patents
- Part 3—Opposition to innovation patents
Chapter 10—Amendments
- Part 1—Amendments that are not allowable
  - 102 What amendments are not allowable?
  - 103 Consent of mortgagee or exclusive licensee needed
- Part 2—Amendments of patent requests, specifications and other filed documents
- Part 3—Miscellaneous
Chapter 11—Infringement
- Part 1—Infringement and infringement proceedings
- Part 2—Non infringement declarations
- Part 3—Unjustified threats of infringement proceedings
Chapter 12—Compulsory licences and revocation of patents
- Part 1—Introduction
  - 132A Simplified outline of this Chapter
- Part 2—Compulsory licences (general)
- Part 3—Patented pharmaceutical invention compulsory licences (for manufacture and export to eligible importing countries)
- Part 4—Surrender and revocation of patents
- Part 5—Other matters
Chapter 13—Withdrawal and lapsing of applications and ceasing of patents
- 141 Withdrawal of applications
- 142 Lapsing of applications
- 143 Ceasing of patents
- 143A Ceasing of innovation patents
- 143B Payment of fees
Chapter 14—Contracts
- 145 Termination of contract after patent ceases to be in force
Chapter 15—Special provisions relating to associated technology
- 147 Certificate by Director as to associated technology
- 148 Lapsing etc. of applications
- 149 Revocation of direction
- 150 Restoration of lapsed application
- 151 Reinstatement of application as an international application
- 152 Notice of prohibitions or restrictions on publication
- 153 Effect of order
Chapter 16—Jurisdiction and powers of courts
- 154 Jurisdiction of Federal Court
- 155 Jurisdiction of other prescribed courts
- 156 Exercise of jurisdiction
- 157 Transfer of proceedings
- 158 Appeals
- 159 Commissioner may appear in appeals
- 160 Powers of Federal Court
Chapter 17—The Crown
- Part 1—Introductory
  - 160A When an invention is exploited for Crown purposes
  - 161 Nominated persons and patentees
- Part 2—Exploitation by the Crown
- Part 3—Acquisitions by and assignments to the Crown
  - 171 Acquisition of inventions or patents by Commonwealth
  - 172 Assignment of invention to Commonwealth
- Part 4—Prohibition orders
Chapter 18—Miscellaneous offences
- 177 False representations about the Patent Office
- 178 False representations about patents or patented articles
- 182 Officers not to traffic in inventions
- 183 Unauthorised disclosure of information by employees etc.
- 184 Other unauthorised disclosures of information
- 185 Commissioner etc. not to prepare documents or search records
Chapter 19—The Register and official documents
- 186 Register of Patents
- 187 Registration of particulars of patents etc.
- 188 Trusts not registrable
- 189 Power of patentee to deal with patent
- 190 Inspection of Register
- 191 False entries in Register
- 191A Commissioner’s power to rectify register
- 192 Orders for rectification of Register
- 193 Inspection of documents
- 194 Information obtainable from Commissioner
- 195 Evidence—the Register
- 196 Evidence—unregistered particulars
- 197 Evidence—certificate and copies of documents
- 197AA Evidence of matters arising under PCT
Chapter 20—Patent Attorneys
- Part 1—Registration, privileges and professional conduct
- Part 2—Offences
Chapter 21—Administration
- 205 Patent Office and sub offices
- 206 Patent Office seal
- 207 Commissioner of Patents
- 208 Deputy Commissioner of Patents
- 209 Delegation of Commissioner’s powers and functions
- 210 Commissioner’s powers
- 210A Sanctions for non compliance with Commissioner’s requirements
- 211 Recovery of costs awarded by Commissioner
Chapter 22—Miscellaneous
- 212 Copies of examination reports to be communicated
- 213 Making and signing applications etc.
- 214 Filing of documents
- 214A Approved means of filing documents
- 214B Directions by Commissioner for filing of documents
- 214C Directions by Commissioner for filing of evidence
- 215 Death of applicant or nominated person
- 216 Exercise of discretionary power by Commissioner
- 217 Assessors
- 218 Costs where patent invalid in part
- 219 Security for costs
- 220 Costs of attendance of patent attorney
- 220A Notifications by Commissioner under this Act
- 221 Service of documents
- 222 Publication of Official Journal etc.
- 222A Doing act when Patent Office reopens after end of period otherwise provided for doing act
- 223 Extensions of time
- 223A Computerised decision making
- 224 Review of decisions
- 225 Conduct of employees and agents of natural persons
- 226 Documents open to public inspection do not infringe copyright
- 227 Fees payable under this Act
- 227AAA Approved means of paying a fee
- 227AB Application of administrative law regime to decisions made in New Zealand
- 227A Trans Tasman IP Attorneys Board
- 227B Publishing personal information of registered patent attorneys
- 228 Regulations
- 229 Instrument determining formalities requirements for patent documents
Chapter 23—Transitional and savings provisions
- 231 Application of Part III of 1989 Amending Act
- 233 Patents granted under 1952 Act
- 234 Applications under 1952 Act
- 235 Other applications and proceedings under 1952 Act
- 236 Micro organisms
- 237 Orders, directions etc. under 1952 Act
- 238 The Commissioner and Deputy Commissioner
- 239 The Register of Patents and Register of Patent Attorneys
- 240 Registered patent attorneys
Schedule 1—Dictionary
- Endnotes