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1998-1999-2000
THE
PARLIAMENT OF THE COMMONWEALTH OF
AUSTRALIA
HOUSE OF
REPRESENTATIVES
PATENTS
AMENDMENT
(INNOVATION PATENTS) BILL
2000
SUPPLEMENTARY EXPLANATORY
MEMORANDUM
Amendments to be Moved on
Behalf of the
Government
(Circulated by authority
of the Parliamentary Secretary to the Minister for Industry, Science and
Resources, the Hon Warren Entsch
MP)
ISBN: 0642 450749
AMENDMENTS TO THE PATENTS AMENDMENT
(INNOVATION
PATENTS) BILL 2000
OUTLINE
The amendments to the Patents Amendment (Innovation Patents) Bill 2000 (the Bill) correct a number of unintended effects of the Bill with regard to the publication of innovation patents and the conversion of innovation patents to standard patents.
The amendments also correct two minor drafting errors in the Bill.
FINANCIAL IMPACT STATEMENT
IP Australia operates on a full cost recovery basis so the users of the innovation patent system provided by the Bill will pay for its implementation and administration. The amendments moved by the Government will not alter the costs associated with implementing and administering the innovation patent system.
NOTES ON INDIVIDUAL CLAUSES
Amendment 1 — Amendment to paragraph 54(6)(a)
1. One of the objectives of the innovation patent system is to provide a fast progression from application to granted patent. To meet this objective innovation patents will be granted soon after filing and will, in almost all circumstances, only be published after grant. This is because the process of early publication would have the effect of delaying grant.
2. Subsection 54(6) of the Patents Act 1990 (the Act) relates to the publication of applications filed as divisional applications. A divisional application is a further application for an invention described in an earlier application - the original application.
3. Amendment 1 further amends subsection 54(6) to limit its operation to divisional applications for standard patents. This will ensure that the provisions of the subsection do not apply to divisional applications for innovation patents. The amendment will therefore prevent the unintended forcing of the early publication of applications for innovation patents filed as divisional applications of published patent applications.
Amendments 2 and 3 — Amendment to subsection 55(1) and insertion of subsection 62(3)
4. Amendment 3 inserts new subsection 62(3) to provide that when a divisional application for an innovation patent is open to public inspection, a notice must also be published indicating that the corresponding original application is open to public inspection. Amendment 2 amends subsection 55(1) to provide that when a notice is published under subsection 62(3) the specification of the original application, and any corresponding documents prescribed by the Patents Regulations 1991, are open to public inspection.
5. These two provisions ensure that once a divisional application for an innovation patent is published the corresponding original application is also published, which was the original intention of the Bill. This will enable the public to ascertain that the further application is properly entitled to proceed as a divisional application.
Amendment 4 — Insertion of subsection 79B(1A)
6. Amendment 4 inserts subsection 79B(1A) to limit the operation of section 79B. Subsection 79B(1A) will preclude the making of a divisional application under section 79B where that divisional application would have been based on an earlier application that itself was a divisional application made under section 79C. This will ensure that granted innovation patents cannot be converted to standard patents which was the original intention of the Bill.
Amendment 5 -— Repeal of redundant provision
7. Amendment 5 repeals subsection 114(2) of the Act which was the original intention of the Bill.
Amendment 6 — Technical correction
8. Amendment 6 makes a technical correction to paragraph 143A inserted by the
Bill by replacing the second occurring "request" in the paragraph with
"specification".