Patents Act 1990

The Act touches a wide population.

• Applicants, nominated persons and patentees: individuals, companies, universities and research institutions that seek or hold patent rights.
• Exclusive licensees: may sue for infringement and must be party to certain proceedings (s 120(2), s 139(1)).
• The Commissioner of Patents and Deputy Commissioners: charged with examination, acceptance, grant, re‑examination, extensions of time, coercive evidence‑gathering and many discretionary decisions.
• The Designated Manager: responsible for the patent attorneys register and for intervening when an incorporated patent attorney lacks a patent attorney director (ss 198, 200A, 201B).
• The Trans‑Tasman IP Attorneys Board: sets professional standards and disciplinary rules for patent attorneys (s 227A).
• The Crown: the Commonwealth, States and Territories, and relevant authorities have statutory exploitation and acquisition rights (Ch 17).
• Third parties: persons opposing grants (s 59) or extensions (s 75), seeking revocation (s 138), applying for non‑infringement declarations (s 125), requesting examination of an innovation patent (s 101A(1)(b)), making unjustified threats claims (s 128), or applying for compulsory licences (s 133).
• Patent attorneys (individuals and incorporated entities) and legal practitioners: subject to the conduct and offence provisions of Chapter 20.
• Generic pharmaceutical manufacturers: may rely on the regulatory approval exemption (s 119A) or apply for compulsory PPI licences.
• The public: may inspect the Register (s 190) and certain documents (s 193).

Patentee and exclusive licensee rights. A patentee has the exclusive right to exploit the invention (s 13). Infringement proceedings may be brought in a prescribed court or the Federal Court; for innovation patents, the patent must be certified first (s 120(1A)). An exclusive licensee may sue, with the patentee joined as a defendant unless joined as plaintiff (s 120(2)). The limitation period is the later of three years from grant or six years from the infringing act (s 120(4)).

Crown rights and duties. A relevant authority may exploit a patented invention for Crown purposes without infringing, provided the relevant Minister gives a written approval and, for the general pathway, the authority has tried for a reasonable period to obtain the patentee’s authorisation on reasonable terms, and at least 14 days’ written notice of the approval is given before exploitation starts (s 163(3)). In an emergency, approval must be obtained before exploitation starts and notice given as soon as practicable afterwards (s 163A). The Crown must pay remuneration on terms agreed or determined by a court (s 165). Once terms exist, failure to comply constitutes infringement (ss 163(2), 163A(2)).

Applicant and patentee duties. An applicant for a standard patent must request examination within the prescribed period (s 44); failure to do so causes the application to lapse (s 142(2)(a)). Applicants and patentees must pay continuation or renewal fees (ss 142(2)(d), 143, 143A). They may amend the specification, but amendments must not extend beyond the as‑filed disclosure or, after acceptance or certification, widen the claims or breach section 40(2)-(3A) (s 102). Amendments require consent of a mortgagee or exclusive licensee (s 103).

Commissioner’s duties and powers. The Commissioner must examine applications (s 45), accept or refuse them (ss 49-50), grant patents (s 61), maintain the Register (s 186), rectify it on specified grounds (s 191A), award costs (s 210(1)(d)) and extend time in three tiers:

• mandatory extension if the failure was caused by an error or omission of the Patent Office, a service provider, the receiving Office or the International Bureau (s 223(1));
• discretionary extension for errors or omissions by the person or their agent, or circumstances beyond control (s 223(2)); and
• a “due care” extension, which the Commissioner must grant if satisfied the person took due care to do the act in time, limited to a prescribed maximum period (s 223(2A)-(2B)).

The Commissioner may, for the purposes of the Act, summon witnesses, receive evidence on oath, require production of documents and award costs (s 210(1)). Before exercising a power adversely, the Commissioner must give the person a reasonable opportunity to be heard (s 216(1)), except for directing a request for examination (s 216(2)).

Patent attorney privilege. Communications and records made for the dominant purpose of a registered patent attorney providing “intellectual property advice” are privileged to the same extent as legal professional privilege (s 200(2)-(2C)). The privilege extends to foreign individuals authorised to provide such advice, but “intellectual property advice” does not cover advice of a purely scientific or technical nature (s 200(2C)).

Duties of incorporated patent attorneys. An incorporated patent attorney must have at least one patent attorney director. If it ceases to have one, it must notify the Designated Manager within seven days and must not carry on business after that period without a director (s 201B(1)-(2)). The Designated Manager may appoint a replacement attorney (with consent) to take charge of its patents work or remove the entity from the Register (s 201B(3)-(7)).

Public access. After acceptance of a standard patent application, the specification becomes open to public inspection (OPI) (s 55). The Register of Patents is open for public inspection (s 190). From the time a complete specification becomes OPI until grant, the applicant has the same rights as if a patent had been granted, but cannot start proceedings until grant (s 57).

The Act deploys a mixture of civil remedies, criminal offences and administrative sanctions.

Civil remedies. Infringement attracts an injunction and, at the plaintiff’s option, damages or an account of profits (s 122(1)). Additional damages may be awarded for flagrant infringement, the need for deterrence, the infringer’s post‑infringement conduct, the benefit to the infringer and any other relevant matter (s 122(1A)). A court may refuse damages or an account if the defendant proves innocent infringement (unawareness and no reason to believe a patent existed); knowledge is presumed if patented products were marked and substantially sold or used in the patent area (s 123). A person aggrieved by unjustified threats of proceedings may obtain a declaration, an injunction and damages (including additional damages) (s 128).

Criminal offences. The following attract specified penalties:

• false representation of connection with the Patent Office: 30 penalty units (s 177);
• false representation that a person is a patentee or that an article is patented or the subject of an application: 60 penalty units; prosecution requires Ministerial consent (s 178);
• officers trafficking in inventions or patents: 60 penalty units (s 182);
• unauthorised disclosure of information by employees or others: imprisonment for two years (ss 183, 184);
• false entries in the Register: imprisonment for two years (s 191);
• patent attorney offences: acting or holding out without registration (s 201), failing to have a patent attorney director (s 201B), preparation of specifications by legal practitioners or unregistered persons outside supervised channels (ss 202, 202A, 202B), and failing to have an individual registered patent attorney in regular attendance and continuous charge at each office (s 203). Penalties range from 30 penalty units for individuals and partnerships to 150 penalty units for companies. For these attorney‑related offences, a prosecution may be started within five years of the offence (s 204), displacing the standard limitation period under the Crimes Act 1914.
• contravention of prohibition orders (defence or associated technology): imprisonment for two years (ss 152(4), 173(2)).

Chapter 2 of the Criminal Code applies to all Act offences (s 12A).

Administrative sanctions. Where a person fails to comply with a summons or a requirement to produce documents under section 210, the Commissioner may, if satisfied on the balance of probabilities it is appropriate, refuse to grant a patent (if the person is an applicant), draw an adverse inference in proceedings or take prescribed actions (s 210A(2)). Before doing so, the Commissioner must consider any reasonable excuse, any offer of expenses and any other relevant matter (s 210A(3)). Costs awarded by the Commissioner are recoverable as a debt (s 211).

Revocation and cessation. A patent may be revoked by a prescribed court on grounds including lack of entitlement, non‑patentability, fraud or specification non‑compliance (s 138). An application lapses if the applicant does not meet deadlines (s 142); a standard patent ceases if renewal fees are not paid (s 143); an innovation patent ceases on similar grounds or if the Commissioner does not decide on certification within the prescribed period (s 143A).

Review and appeals. Specified decisions of the Commissioner, the Designated Manager and the Director (Safeguards) are reviewable by the Administrative Review Tribunal (ART) (s 224). These include decisions under ss 223 (extensions of time), 215 (death of patentee), 52 (innovation patent formalities), 137(3) (surrender), 141(1)(b) (withdrawal), 150(2) and 151(2) (restoration of lapsed applications) and a Designated Manager’s refusal to register a patent attorney (s 198). A decision substituted by the Commissioner under the computerised decision‑making power (s 223A) is also reviewable (s 224(1A)). Appeals against many Commissioner decisions lie to the Federal Court (e.g., s 51, s 60(4), s 104(7)); an appeal from a single judge’s decision on an appeal from the Commissioner to the Full Federal Court requires leave (s 158(2)).

The Patents Act 1990 does not operate in isolation.

• Criminal Code: Chapter 2 applies to all offences under the Act (s 12A). Notes in Chapter 20 refer to evidential burdens under section 13.3(3) of the Code.
• Corporations Act 2001: Related company groups for the patent attorney offence exceptions are determined under that Act (s 201(10)). An attorney appointed by the Designated Manager to take charge of an incorporated patent attorney’s work is not a director for the purposes of the Corporations Act (s 201B(6)).
• Personal Property Securities Act 2009 (PPSA): The evidential status of the Register (s 195(3)) and the rule barring unregistered documents as proof of title (s 196(2)) do not apply to PPSA security interests.
• Safeguards Act: Chapter 15 imports special provisions for associated technology, allowing the Director to issue certificates and directions that cause an application to lapse or to be withdrawn from international processing.
• Trans‑Tasman mutual recognition: The Act recognises that it is immaterial whether events or decisions occur in New Zealand for purposes including patent attorney registration, deregistration and merits review (ss 198(12), 199(2), 227AB, 228(4C)-(4E)). The Trans‑Tasman IP Attorneys Board is continued under section 227A.
• International treaties: Regulations may be made for giving effect to the PCT and the Budapest Treaty (s 228(1)(d)-(e)). A PCT application is treated as a complete application for a standard patent (s 29A). The TRIPS Agreement is also mentioned (s 228(1)(f)).
• Therapeutic goods legislation: The regulatory approval exemption for pharmaceuticals in section 119A links to inclusion on the Australian Register of Therapeutic Goods; the definition of “pharmaceutical patent” in section 119A(3) is used to delimit the scope of the non‑pharmaceutical exemption in section 119B.
• Administrative Review Tribunal Act 2024: Section 224 expressly references review by the ART and defines “decision” accordingly (s 224(4)). The Act also supplants the former AAT provisions.
• 1952 Act: Transitional provisions (Ch 23) preserve orders, directions, registers and patent attorney registrations made under the repealed legislation (ss 237, 239, 240).

The notes record several significant changes, all evident from the statutory text.

• Innovation patent phase‑out. The formalities check for an innovation patent now requires that the date of the patent be before the day on which section 52(3) commenced (12 February 2021). Similarly, examination must confirm that the priority date of each claim is before the day section 101B(2)(ha) commenced (ss 101B(2)(ha), 101E(1)(viiia)). These amendments, introduced by the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020, effectively close the innovation patent system to new filings.
• Extensions of time for due care. The addition of sections 223(2A) and (2B) created a new “must grant” extension where the person took due care, but capped the period and required the application to be made after the time had expired (s 223(3A)).
• Computerised decision‑making. Section 223A allows the Commissioner to use computer programs to make decisions and exercise powers. The Commissioner may substitute a decision if satisfied the computer‑generated decision is incorrect, and a substituted decision is subject to ART review (s 224(1A)).
• Trans‑Tasman Board. Section 227A continued the former Professional Standards Board for Patent and Trade Marks Attorneys as the Trans‑Tasman IP Attorneys Board, with detailed membership and appointment provisions spanning Australia and New Zealand.
• Migration to the ART. Section 224 was updated to refer to the Administrative Review Tribunal Act 2024, replacing the Administrative Appeals Tribunal pathway.

Although the notes do not reference decided cases, the text of the Act harbours several points that are inherently contentious and provide fertile ground for disputes.

• Obviousness and the common general knowledge. The inventive step test in section 7(2)-(3) requires an assessment against common general knowledge “whether in or out of the patent area”. The availability of information artificially disaggregated or outside Australia, and the standard a court will apply to “could reasonably be expected to have combined”, is frequently debated.
• Innovative step. The threshold of a “substantial contribution to the working of the invention” (s 7(4)-(6)) lacks legislative definition, and the requirement that variants be assessed against each prior art source “considered separately” makes the scope of the defence difficult to predict.
• Prior use derivation exclusion. Section 119(3) strips the prior‑use defence if the product, method or process was derived from the patentee or predecessor, unless the derivation came from publicly available information disclosed in the grace period circumstances of section 24(1)(a). This demands a careful tracing of provenance and creates litigation risk for seemingly independent prior users.
• Crown exploitation and remuneration. While the Crown enjoys statutory immunity during approved exploitation, the meaning of “reasonable terms” in section 163(3)(b) and the basis on which a court determines “just and reasonable” remuneration under section 165(2) (having regard to “the economic value of the exploitation” and any other relevant matter) are inherently value‑laden and apt to provoke disagreement.
• Experimental use exemption. Section 119C exempts acts done “for experimental purposes relating to the subject matter of the invention”. The non‑exhaustive list in subsection (2) includes determining properties, improving or modifying, determining validity, and determining whether an act infringes. The boundary between permissible experimentation and commercial infringement remains a matter of ongoing practical tension.
• Threats and mere notification. Section 131 declares that “mere notification of the existence of a patent is not a threat of infringement proceedings”. The line between a factual communication and an implied threat is fact‑sensitive and generates litigation.
• Revocation of acceptance without appeal. Under section 50A, the Commissioner may revoke acceptance of a standard patent before grant, taking into account all circumstances existing at the time of acceptance even if unknown at that time. The decision is not appealable to the Federal Court (s 51), leaving judicial review as the only recourse and creating a period of acute uncertainty for applicants.
• Computerised decisions and substitution. The interplay between an original computer‑generated decision, the Commissioner’s power to substitute it, and the ART’s review of the substituted decision (ss 223A, 224(1A)) raises novel procedural issues concerning finality and natural justice.

Several traps await the unwary practitioner.

• Indefinite postponement of acceptance (s 49A(5)). If an applicant requests postponement and the Commissioner does not specify a day, the application sits indefinitely. The applicant must withdraw the postponement request in writing; failure to do so before the deadline prescribed under section 142(2)(e) causes the application to lapse.
• Section 50A revocation of acceptance. Acceptance can be undone at any time before grant based on circumstances unknown at acceptance, with no appeal to the Federal Court. Delay between acceptance and grant amplifies the risk.
• Innovation patent certification requirement. An innovation patent cannot be enforced unless certified. Sending a threat letter before certification will almost certainly be an unjustifiable threat (s 129A(1)-(2)), exposing the patentee to a claim for damages.
• Amendments after acceptance or certification. Once the “relevant time” (acceptance for standard patents, certification for innovation patents) has passed, an amendment is not allowable if the claims would not in substance fall within the pre‑amendment scope or would breach section 40(2)-(3A) (s 102(2)). This restricts the ability to overcome validity attacks.
• Prior use defence : derivation. The defence under section 119 is lost if the invention was derived from the patentee or predecessor, even indirectly, unless the derivation was from publicly available information disclosed during the section 24(1)(a) grace period. Practitioners must rigorously trace the origin of the prior use.
• Crown exploitation : notice and terms. The 14‑day advance notice requirement under section 163(3)(e) is strict; failure to give it removes the immunity. Once terms are agreed or determined, any deviation constitutes infringement (ss 163(2), 163A(2)).
• Legal practitioner trap. A legal practitioner must not prepare a specification or an amendment document unless acting under the instructions of a registered patent attorney or the amendment is directed by a court under section 105 (s 202). This restriction operates despite general rights of legal practice.
• Incorporated patent attorneys : director absence. Failing to notify the Designated Manager within seven days of not having a patent attorney director, or carrying on business after that period without a director, is a strict liability offence attracting 150 penalty units (s 201B(1)-(2)).
• Evidential burden for patent attorney exception defences. In a prosecution under section 201, the defendant bears the evidential burden for the exceptions concerning a deceased attorney’s business, employees and related company groups (Notes to s 201).
• Five‑year prosecution window. The professional conduct offences in Part 2 of Chapter 20 can be prosecuted up to five years after the offence (s 204), far exceeding the usual 12‑month period.
• Commissioner’s coercive powers : preconditions. A witness cannot be summoned, and documents cannot be required, unless the Commissioner is satisfied on the balance of probabilities that the person has a substantial interest in the proceedings and the evidence or documents are of substantial relevance (s 210(2), (4)).
• Extensions of time : due care cap and intervening users. The “due care” extension under section 223(2A) can only be sought after the time has expired and is subject to a prescribed maximum period. If an extension of more than three months is granted, prescribed provisions operate for the protection or compensation of persons who exploited the invention during the lapse (s 223(9)), and no infringement proceedings can be brought for the gap period (s 223(10)).
• Unregistered documents inadmissible to prove title. Section 196(1) provides that a document that has not been filed in the Register is not admissible in any proceedings to prove title to a patent or an interest, except in limited circumstances. This can be catastrophic for a party relying on an unregistered assignment or licence.
• Process patent burden shift. Under section 121A, if a product is identical and it is very likely made by the patented process, and the patentee has taken reasonable but unsuccessful steps to discover the defendant’s process, the onus shifts to the defendant to prove a different process was used. The court must, however, consider the defendant’s legitimate interest in protecting manufacturing secrets.
• Computerised decision substitution. The Commissioner may substitute a computer‑generated decision if satisfied it is incorrect. This means an initial automated decision has no finality until the substitution window closes and the person may need to monitor both the original output and any subsequent substitute.
• Continuous charge requirement for patent attorney offices. A registered patent attorney must ensure an individual registered patent attorney is in “regular attendance” and “continuous charge” of patents work at each office (s 203), a requirement that demands practical attention to office staffing and structure.

Compliance and protection strategies flow from the architecture described above.

• Ensure proper registration and supervision for patent attorney services. If providing or receiving patent attorney services, confirm the practitioner or firm is appropriately registered on the Register of Patent Attorneys. Incorporated entities must maintain a patent attorney director. Legal practitioners must only prepare specifications under instruction from a registered patent attorney.
• Maintain privilege carefully. To benefit from the statutory privilege under section 200, ensure communications are for the dominant purpose of obtaining “intellectual property advice” from a registered patent attorney. Advice of a purely scientific or technical nature falls outside the privilege.
• Manage time limits and fees strictly. Diarise requests for examination, payment of continuation and renewal fees, and the lapsing deadlines. Where an extension of time is needed, document the steps taken so that a “due care” argument (s 223(2A)) can be mounted if the ordinary discretionary grounds are unavailable.
• Monitor the status of innovation patents. Before sending any demand letter or commencing infringement proceedings, ensure the innovation patent has been examined and certified. Uncertified innovation patents cannot be enforced, and threats based on them are unjustifiable.
• Draft and review specifications to meet section 40. Claims must be clear, succinct, supported by the description and not rely on references to drawings or descriptions unless absolutely necessary. For innovation patents, adhere to the five‑claim limit. If micro‑organisms are involved, comply with the deposit requirements in section 6 at filing.
• Control the acceptance and amendment process. Avoid indefinite postponement of acceptance under section 49A(5) and, if used, diarise the withdrawal. After acceptance or certification, any amendment must not widen the claims. Consent from mortgagees and exclusive licensees is required before seeking leave to amend (s 103).
• Protect prior use rights through provenance records. If a business relies on the prior use defence, document the independent origin of the product or process and confirm it was not derived from the patentee or a predecessor, or ensure it falls within the grace period disclosure exception (s 119(3)).
• Manage Crown interactions proactively. If the Crown approaches for authorisation to use a patented invention, engage in negotiations and document attempts to agree reasonable terms. If the Crown proceeds under section 163, monitor the 14‑day notice requirement and ensure an agreement under section 165 is reached, as non‑compliance with that agreement is infringement.
• Handle threats with care. Limit communications with potential infringers to factual notifications. Any statement that could be construed as an implied threat may found a cause of action under section 128.
• File and register all dealings. Assignments, licences and security interests should be entered on the Register promptly. Section 196(1) renders unregistered documents inadmissible as proof of title, which can undermine enforcement efforts. PPSA security interests are handled separately but should also be perfected under the PPSA.
• Plan for review and appeal. When facing an adverse Commissioner decision, check the list in section 224 to see whether a merits review application to the ART lies. For appealable decisions not listed there (or excluded like section 50A), consider Federal Court avenues. Ensure the decision notice contains a statement of review rights; its absence does not affect validity but may give tactical grounds for an extension of time.
• Use the formalities instrument. The Commissioner’s instrument under section 229, published in the Official Journal, prescribes the detailed formalities requirements for patent requests and specifications. Before filing, consult the current instrument to avoid a rejection for non‑compliance.
• Mark patented products. Substantial sale or use of products marked as patented creates a presumption of knowledge of the patent, which can defeat an innocent infringement defence (s 123(2)) and strengthen the claim for damages.