s3 Definitions
s7 Novelty, inventive step and innovative step
s38 Time for making complete application
s124 Interpretation (non-infringement declarations)
222A Doing act when Patent Office reopens after end of period otherwise provided for doing act
Schedule 1 Dictionary

Patent Regulations

reg 1.3 Interpretation
reg 5.2 Definitions
reg 22.16 Consequences for certain documents not meeting filing requirements
reg 22.10AB Days when office not open for business

Referenced Acts:

Acts Interpretation Act 1901

Patent Cooperation Treaty (PCT):

Article 4 The Request

Regulations under the PCT:

Rule 80.5 Expiration on a Non-Working Day or Official Holiday

Related Chapters:

5.6.9.1 Conditions and Time for Acceptance

Definitions in the Patents Act (1990)

Section 3 (and schedule 1) provides definitions for certain terms used throughout the Act. The application of any such definition is subject to the absence of a contrary intended meaning for a term. However, a contrary intention will generally be the exception. Therefore, the definition given in s3 should be applied unless it is evident that the definition is inapplicable in the context in which the term is used. Definitions which are of particular significance in examination are found in the relevant parts of this volume. The following definitions are relevant to examination generally:

"Patent" is intended to mean an Australian standard patent or an innovation patent (schedule 1). The contrary intention however is clearly apparent in various parts of the Act, for example, in s201A(2)(a). In these circumstances, the definition given in schedule 1 does not apply.

"Patentee" is defined not by actual ownership of a patent, but by an appropriate entry in the Register. Legal proof of transfer of ownership is not, by itself, sufficient to change the identity of a patentee, unless and until the Register is appropriately amended.

The definition of the "Commissioner" relates only to the exercise of powers of functions under the Act and Regulations. For the purpose of the chief control of the Office, there is only one Commissioner. The organisation of the Office as such, within the Public Service generally, and the related aspects of individual positions, duties, and responsibilities, are not affected by the fact that various persons may from time to time and in relation to specific matters, fall within the definition of the "Commissioner".

The definition of "invention" given in schedule 1 states that invention:

"includes an alleged invention".

The High Court in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (1998) 152 ALR 604; (1998) AIPC 91-401; 40 IPR 243, explained this as follows:

"The phrase 'and includes an alleged invention' is directed to the inquiry at the stage of examination of an application before the decision as to acceptance."

The Court followed the earlier decision of Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 (1959) 102 CLR 232 at page 236, in which Menzies J stated:

"... I regard the last words of the definition of "invention" (which have their origin in the Patent Design and Trade Marks Act 1883, sec 46) as intended to do no more than make clear that when an application is made it can proceed in accordance with the Act without the application having to establish as a pre-requisite to any step being taken that it is for an invention, i.e. a manner of new manufacture and that the Commissioner is not bound by the applicant's allegation that his manner of manufacture is new any more than by the allegation that what is claimed is a manner of manufacture."

(see also Rogers v Commissioner of Patents (1910) 10 CLR 701).

Definitions of key terms

International application - an application filed under the PCT. It has the same meaning as in the PCT, i.e. the application need not designate Australia, nor have been given an international filing date.

PCT application - an international application in which Australia has been designated under Article 4(1)(ii) of the PCT and which has been given an international filing date. It has the same meaning as in the Patents Act.

National phase application - a PCT application in relation to which the applicant has met the necessary requirements of the Patents Act. Where those requirements are met, further processing of the PCT application before the Australian Patent Office may occur. This processing is commonly referred to as national phase processing, hence terms such as “national phase”, “national phase application” and “entering the national phase”. The national phase is the final stage of processing an international application originally filed in the receiving Office of one of the contracting states of the PCT.

The 'pamphlet' - The ISR will be published when the international application is published in a document called "the pamphlet", which is sent to each designated office. The pamphlet is published with a WO number identification for the application and may be in a foreign language. Publication usually takes place 18 months after the priority date of the application.

Convention application - Application made with respect to the Paris Convention for the Protection of Industrial Property (usually referred to as the Paris Union or Paris Convention). The effect of the Convention is to recognise and maintain an applicant's right to an application made in a Convention country if other applications for the same invention are made in other countries within 12 months.

Effects of the Acts Interpretation Act

Definition of the terminology used in the Patents Act is not confined to the examples given in s3 and elsewhere, since the interpretation of this Act is also subject to the general rules of interpretation specified in the Acts Interpretation Act 1901. This Act defines a number of words used in the Patents Act, but not defined therein, for example, "person" and "document". It also specifies a number of rules applicable to words used generally, for example, that words used in the singular shall include the plural and vice versa, unless the contrary intention appears.

Examples of intended ambits

In applying the definitions given in the Patents Act and Acts Interpretation Act 1901, consideration of whether the definition is comprehensive or merely inclusive may be required. In the former case, to which most examples in the Patents Act belong, the definition determines the ambit of the term defined; in the latter case, the definition merely specifies individual inclusions (or exclusions).

Examples of intended ambits from the Patents Act and Regulations include:

across the regulations, unless the contrary intention appears – see reg 1.3;
limited to:
- a chapter – see reg 5.2;
- a part – see s124; and
- a section – see s38(2);
excluded from:
- a regulation – see reg 22.16(1); and
by specific reference to the Acts Interpretation Act 1901 – see footnote s7 and "prior art base" footnote schedule 1 or another Act s224(4).

Reckoning of time

The Act specifies time periods for many actions required by applicants. In some circumstances, the action can be done after the last day and still be regarded as 'done in time'. The specific provisions governing the reckoning of time are s222A of the Patents Act and s36 of the Acts Interpretation Act 1901.

The general principle is that if an action is to be done on or by a day on which the Office is not open for business, then the action can be done on the next day that the Office is open for business. This applies to weekends, public holidays and the Christmas shutdown.

The Director General or other prescribed person may declare that the Office is not open for business on a particular day. Under reg 22.10AB(2), the Director General and Deputy Director General are both able to declare such days autonomously. Other Senior Executive Service (SES) employees of IP Australia may also declare such days, however only with the agreement of the Director General, Deputy Director General or another SES employee. A declaration can be made before or after the particular day and is published in the Official Journal and on the News and Official Notices pages of the IP Australia website.

This must be distinguished from an extension of time, which generally requires a request and the payment of a fee.

Considerations which apply to the action of acceptance by the Commissioner are discussed in 5.6.9.1 Conditions and Time for Acceptance.

Situations Where Section 222A is Not Applicable

Section 222A of the Act does not apply to the following actions:

an act in relation to proceedings in a court or a tribunal; and
an act done under Chapter 20 (Individual Patent Attorneys) of the Regulations.

However, the Acts Interpretation Act 1901 still applies to these matters.

Section 222A does not apply to an act done under the PCT. However, Rule 80.5(iii) Interpretation does apply and has a similar effect where public holidays are concerned.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023

5.6.1.3 Definitions (Invention, Alleged Invention, Meaning of a Document etc.)

Also in this Chapter:

Key Legislation: