Commonwealth Numbered Regulations Commonwealth Numbered Regulations
1 Before regulation 3.1
Insert:
2 Subregulation 3.3(7)
Repeal the subregulation.
3 Regulations 3.12 and 3.13
Repeal the regulations, substitute:
Division 2 -- Priority date of claim
3.12 What this Division is about
(1) This Division determines the priority date of a claim:
(a) for subsection 36(4) of the Act (see regulation 3.13); and
(b) for paragraph 43(2)(a) of the Act (see regulations 3.13A to 3.13E); and
(c) for section 114 of the Act (see regulation 3.14).
(2) However, if more than one of regulations 3.13A to 3.13E applies to a single claim, the priority date of the claim, for paragraph 43(2)(a) of the Act, is the earliest of the dates that is determined by those regulations.
(3) Despite regulations 3.13A to 3.13E, the priority date of a claim, for paragraph 43(2)(a) of the Act, is no later than the date of the filing of the specification.
(4) In this Division, a document clearly discloses an invention if the document discloses the invention in a manner that is clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art.
3.13 Priority date for application by person declared under section 36 of the Act
(1) This regulation determines the priority date of a claim under subsection 36(4) of the Act.
(2) If the claimed invention is clearly disclosed in the specification mentioned in paragraph 36(1)(c) of the Act:
(a) if the specification was filed in relation to a complete application, the priority date of the claim is the priority date that the claim would have had if the claim was included in the specification; and
(b) if the specification was filed in relation to a provisional application, the priority date of the claim is the date the specification was filed.
(3) If the claimed invention is not clearly disclosed in the specification mentioned in paragraph 36(1)(c) of the Act, the priority date of the claim is the date the specification for the complete application referred to in subsection 36(4) of the Act was filed.
3.13A Priority date for PCT application
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (2) applies to the invention defined in the claim; and
(b) either:
(i) a document mentioned in subregulation (4) clearly discloses the invention in the claim; or
(ii) more than one of the documents mentioned in paragraph (4)(a), considered together, clearly disclose the invention in the claim.
Circumstance
(2) For paragraph (1)(a), the circumstance is that the specification containing the claim that defines the invention was filed for a PCT application, and:
(a) either:
(i) the PCT application claims the priority of an earlier application under Article 8 of the PCT; or
(ii) the PCT application has been amended to include a claim to priority from an earlier application that, at the time of filing the PCT application, was a claim to priority that could have been made under Article 8 of the PCT; and
(b) either:
(i) the earlier application was made in Australia no more than 12 months before the filing date of the PCT application; or
(ii) the earlier application was made in Australia more than 12 months before the filing date of the PCT application, and:
(A) a receiving Office has restored the priority under Rule 26 bis .3, and the restored priority has not been found to be ineffective by the Commissioner or a prescribed court under Rule 49 ter .1; or
(B) the Commissioner has restored the priority under Rule 49 ter .2; or
(C) the Commissioner has granted an extension of time under section 223 of the Act that has the effect of restoring a right of priority; or
(iii) the earlier application is a basic application that was the first application made in a Convention country in relation to the invention, and:
(A) the earlier application was made no more than 12 months before the filing date of the PCT application; or
(B) the earlier application was made more than 12 months before the filing date of the PCT application, and a receiving Office has restored the priority under Rule 26 bis .3, and the restored priority has not been found to be ineffective by the Commissioner or a prescribed court under Rule 49 ter .1; or
(C) the earlier application was made more than 12 months before the filing date of the PCT application, and the Commissioner has restored the priority under Rule 49 ter .2; or
(D) the earlier application was made more than 12 months before the filing date of the PCT application, and the Commissioner has granted an extension of time under section 223 of the Act that has the effect of restoring a right of priority; or
(iv) the earlier application is a basic application that was made after a basic application mentioned in subparagraph (iii).
(3) For the purposes of this regulation, if a provisional specification was filed for a basic application when the application was made, a complete specification later filed for the basic application is taken to be another basic application from which the PCT application claims priority, made on the day when the complete specification was filed.
Documents
(4) For paragraph (1)(b), the documents are:
(a) the documents filed for the earlier application at the time the application was made; and
(b) the complete specification for the PCT application, if:
(i) the invention in the claim relates to a micro-organism; and
(ii) the documents filed for the earlier application, at the time the application was made, included the relevant information on the characteristics of the micro-organism that was known to the applicant; and
(iii) the documents filed for the earlier application, at the time the application was made, clearly disclosed the invention, other than in relation to the description of the micro-organism; and
(iv) the requirements of paragraph 6(c) of the Act are satisfied by the complete specification; and
(v) the micro-organism was deposited with a prescribed depository institution, in accordance with the rules of the Budapest Treaty, on or before the date the earlier application was made.
Priority date
(5) Subject to regulation 3.12, the priority date is:
(a) the date when the earlier application was made; or
(b) if there is more than one earlier application--the date the earliest of those applications was made for which paragraph (1)(b) is satisfied.
3.13B Priority date for Convention application
(1) This regulation applies to a claim if:
(a) the specification containing the claim that defines the invention was filed for:
(i) a Convention application; or
(ii) a complete application that has been amended to become a Convention application; and
(b) a document mentioned in subregulation (2), or more than one of the documents mentioned in paragraph (2)(a) considered together, clearly discloses the invention in the claim.
(2) For subregulation (1)(b), the documents are:
(a) the documents filed for a related basic application at the time when the application was made; and
(b) the complete specification for the Convention application, if:
(i) the invention in the claim relates to a micro-organism; and
(ii) the documents filed for a related basic application, at the time when the application was made, included the relevant information on the characteristics of the micro-organism that was known to the applicant; and
(iii) the documents filed for a related basic application, at the time when the application was made, clearly disclosed the invention, other than in relation to the description of the micro-organism; and
(iv) the requirements of paragraph 6(c) of the Act are satisfied by the complete specification; and
(v) the micro-organism was deposited with a prescribed depository institution, in accordance with the rules of the Budapest Treaty, on or before the date when the related basic application was made.
(3) For this regulation, if a provisional specification was filed for a related basic application when the application was made, a complete specification later filed for the basic application is taken to be another related basic application made on the day the complete specification was filed.
(4) Subject to regulation 3.12, the priority date is:
(a) the date the related basic application was made; or
(b) if there is more than one related basic application--the date the earliest of those applications was made for which paragraph (1)(b) is satisfied.
3.13C Priority date for complete application associated with provisional application
(1) This regulation applies to a claim if:
(a) the specification containing the claim that defines the invention was filed for a complete application that is associated with a provisional application under section 38 of the Act; and
(b) a document mentioned in subregulation (2), or more than one of the documents mentioned in paragraph (2)(a) considered together, clearly discloses the invention in the claim.
(2) For paragraph (1)(b), the documents are:
(a) the documents filed for the provisional application at the time when the application was made; and
(b) the complete specification for the complete application, if:
(i) the invention in the claim relates to a micro-organism; and
(ii) the documents filed for the provisional application, at the time the application was made, included the relevant information on the characteristics of the micro-organism that was known to the applicant; and
(iii) the documents filed for the provisional application, at the time the application was made, clearly disclosed the invention, other than in relation to the description of the micro-organism; and
(iv) the requirements of paragraph 6(c) of the Act are satisfied by the complete specification; and
(v) the micro-organism was deposited with a prescribed depository institution, in accordance with the rules of the Budapest Treaty, on or before the date the provisional application was made.
(3) Subject to regulation 3.12, the priority date is:
(a) the date the provisional application was made; or
(b) if there is more than one provisional application--the date the earliest of those applications was made for which paragraph (1)(b) is satisfied.
3.13D Priority date for divisional application filed prior to grant of patent
(1) This regulation applies to a claim if:
(a) the specification containing the claim that defines the invention was filed for:
(i) a divisional application under section 79B of the Act; or
(ii) a complete application that has been amended to become a divisional application under section 79B of the Act; and
(b) a document mentioned in subregulation (2) clearly discloses the invention in the claim.
(2) For paragraph (1)(b), the documents are:
(a) the specification mentioned in subsection 79B(1) of the Act (the earlier specification ), unless:
(i) the deposit requirements must be satisfied in relation to the invention to comply with paragraph 40(2)(a) of the Act; and
(ii) when the divisional application under section 79B of the Act is made, the period prescribed in subregulation 1.5(1) has ended in relation to the earlier specification; and
(iii) the requirements of paragraph 6(c) of the Act are not satisfied in relation to the earlier specification; and
(b) the complete specification for the divisional application, if:
(i) the invention in the claim relates to a micro-organism; and
(ii) the earlier specification is a prescribed document; and
(iii) on the date when the first application was made, the earlier specification included the relevant information on the characteristics of the micro-organism that was known to the applicant; and
(iv) on the date when the first application was made, the earlier specification clearly disclosed the invention, other than in relation to the description of the micro-organism; and
(v) the requirements of paragraph 6(c) of the Act are satisfied by the complete specification for the divisional application; and
(vi) the micro-organism was deposited with a prescribed depository institution, in accordance with the rules of the Budapest Treaty, on or before the date when the first application was made.
(3) Subject to regulation 3.12, the priority date is the priority date that the claim would have had if the claim was in the earlier specification.
3.13E Priority date for divisional application after grant of innovation patent
(1) This regulation applies to a claim if:
(a) both of the following apply:
(i) the specification containing the claim that defines the invention was filed for a divisional application under section 79C of the Act;
(ii) examination of the divisional application is requested within 2 months from the date of the grant of the divisional application; and
(b) the specification referred to in subsection 79C(1) of the Act clearly discloses the invention in the claim.
(2) Subject to regulation 3.12, the priority date is the priority date that the claim would have had if the claim had been in the specification mentioned in subsection 79C(1) of the Act.
4 After regulation 3.14
Insert:
3.14A Request for international-type search relating to provisional application
(1) An applicant for a provisional application may make a request under Article 15(5) of the PCT for an international-type search in relation to the application.
(2) The applicant must make the request within 10 months from the date the provisional application was filed.
(3) If more than one International Searching Authority is competent under Article 15(5) of the PCT to carry out the search, the Commissioner may choose the Authority that will carry out the search.
3.14B Request for preliminary search and opinion relating to complete application
(1) This regulation applies to a complete application for a standard patent made on or after 15 April 2013.
(2) If the applicant has not asked for an examination under section 44 of the Act, the applicant may request a preliminary search and opinion relating to the application under section 43A of the Act.
(3) The request must be in the approved form.
Note: Section 43A of the Act does not require a request to be made before the Commissioner conducts a preliminary search and opinion.
5 Paragraph 3.18(2)(d)
Repeal the paragraph.
6 After subregulation 9.2(1)
Insert:
(1A) A request must state:
(a) the grounds of the request; and
(b) the reasons why the grounds are relevant to the complete specification.
7 Subregulations 9.2(2) and (2A)
Repeal the subregulations, substitute:
(2) Subregulations (2A) and (3) apply if the request includes an assertion that the invention, so far as claimed in any claim and when compared with the prior art base that existed before the priority date of that claim:
(a) is not novel; or
(b) for a standard patent--does not involve an inventive step; or
(c) for an innovation patent--does not involve an innovative step.
(2A) For subregulation (2), the request must:
(a) identify the documents on which the assertion is based; and
(b) state the relevance of each document.
8 Subregulation 9.2(4)
Repeal the subregulation, substitute:
(4) If the request does not comply with subregulation (1A), or subregulations (2), (2A) and (3) if applicable, the Commissioner may decide not to re-examine the complete specification.
9 After regulation 10.2
Insert:
10.2A Documents considered for determining whether amendment allowed
For paragraph 102(1)(b) of the Act, the following documents are prescribed:
(a) an abstract that was filed with the complete specification;
(b) a missing part or element of a complete specification that was incorporated into the specification, in accordance with regulation 3.5A or Rule 20.5 or 20.6 of the PCT;
(c) an amendment that has been made to the complete specification after filing, for the purpose of:
(i) correcting a clerical error or obvious mistake; or
(ii) complying with paragraph 6(c) of the Act.
10.2B Amendments not allowable for patent requests
(1) This regulation is made for subsection 102(2D) of the Act.
(2) An amendment of a patent request is not allowable if:
(a) the patent request has been accepted under section 49 or 52 of the Act; and
(b) the amendment would convert the patent application from:
(i) an application for a standard patent to an application for an innovation patent; or
(ii) an application for an innovation patent to an application for a standard patent.
(3) If:
(a) a request for leave to amend a patent request for a standard patent is filed within 3 weeks before the date a notice is due to be published in the Official Journal under section 54 of the Act in relation to the specification; and
(b) the amendment would:
(i) convert the patent application from an application for a standard patent to an application for an innovation patent; or
(ii) change the priority date of the application to a date that is later than the priority date that is currently recorded for the application;
the amendment is not allowable until after the date the notice is published.
(4) An amendment of a patent request is not allowable if:
(a) the patent request has been accepted under section 49 or 52 of the Act; and
(b) the amendment would convert the patent application into a further complete application within the meaning of section 79B or 79C of the Act.
(5) An amendment of a patent request is not allowable if:
(a) the amendment would convert the patent application into a further complete application within the meaning of section 79B of the Act; and
(b) the period allowed under subsection 79B(3) of the Act for making a further complete application has ended.
(6) An amendment of a patent request is not allowable if:
(a) the amendment would convert the patent application into a further complete application within the meaning of section 79C of the Act; and
(b) the period allowed under subsection 79C(2) of the Act for making a further complete application has ended.
(7) An amendment of a patent request is not allowable after the patent has been granted.
10.2C Amendments not allowable for complete specifications
(1) This regulation is made for subsection 102(2D) of the Act.
(2) An amendment of a complete specification is not allowable if:
(a) the amendment relates to a matter mentioned in paragraph 6(c) of the Act; and
(b) after the amendment was made, the specification would not include each of the matters specified in that paragraph.
(3) An amendment of a complete specification is not allowable if the Commissioner:
(a) has given a copy of a request for leave to amend under subregulation 10.2(8) or (9) to a person; and
(b) has not given the person a reasonable opportunity to be heard.
(4) An amendment of a complete specification for an innovation patent, other than an amendment proposed in response to a direction under regulation 3.2B, is not allowable until after the patent has been granted.
(5) An amendment of a complete specification for an innovation patent is not allowable if the amendment would result in the specification claiming:
(a) a thing mentioned in subsection 18(2) of the Act; or
(b) a thing mentioned in subsection 18(3) of the Act (other than a thing also mentioned in subsection 18(4) of the Act).
(6) An amendment of a complete specification is not allowable if making an amendment would be contrary to section 112 or 112A of the Act.
10 Regulation 10.3
Repeal the regulation, substitute:
10.3 Amendments not allowable for other documents
(1) For a provisional specification, an amendment of the provisional specification is not allowable if, as a result of the amendment, the specification would disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the provisional specification as filed;
(b) an abstract that was filed with the provisional specification;
(c) a missing part of a provisional specification that was incorporated into the specification in accordance with regulation 3.5A.
(2) An amendment of an abstract is not allowable.
Note: An abstract may be substituted under regulation 3.4.
11 Paragraph 10.4(a)
Omit "10.3(4)", substitute "10.2C(3)".
12 Paragraph 10.5(1)(b)
Omit "the Commissioner believes on reasonable grounds", substitute "the Commissioner is satisfied, on the balance of probabilities,".
13 Paragraph 10.5(1)(c)
Omit "the Commissioner believes on reasonable grounds", substitute "the Commissioner is satisfied, on the balance of probabilities,".
14 Subregulation 19.2(2)
Repeal the subregulation.
15 At the end of subregulation 22.2(2)
Add:
; (e) if the Commissioner decides to conduct a search as part of the examination of a patent request and complete specification for a standard patent, the fee is payable when the Commissioner notifies the applicant that the fee is payable.
16 Paragraph 22.2B(1)(a)
Omit "202 or 203", substitute "202, 203 or 206".
17 Paragraph 22.2C(1)(a)
Omit "204, 205 or 206", substitute "204 or 205".
18 Part 2 of Schedule 7 (table item 206)
Repeal the item, substitute:
|
206 |
Search by the Commissioner in relation to a patent request and complete specification for a standard patent as part of an examination, if the complete application was made on or after 15 April 2013 |
$1,400 |
19 Part 2 of Schedule 7 (table item 236)
Omit "subregulation 19.2(2) for information that requires", substitute "regulation 3.14A for".
20 Part 7 of Schedule 7 (after table item 236)
Insert:
|
236A |
Preliminary search and opinion by the Commissioner in relation to a patent request and complete specification under subsection 43A(1) of the Act |
$2,200 |