Commonwealth Numbered Regulations

INTELLECTUAL PROPERTY LEGISLATION AMENDMENT (RAISING THE BAR) REGULATION 2013 (NO. 1) (SLI NO 31 OF 2013) - SCHEDULE 5

Copyright Regulations 1969

1  Regulations 21 to 22A

Repeal the regulations, substitute:

21   Restriction of importation of copyright material

             (1)  For paragraph 135(8)(c) of the Act, the CEO may direct a person who notifies the CEO under subsection 135(2) of the Act to give to the CEO information and evidence about the following:

                     (a)  the subsistence of copyright in the material;

                     (b)  the ownership of the copyright;

                     (c)  if the person who objects is an agent for the owner of the copyright--the authority for the person to give the notice.

             (2)  The person must comply with the direction.

Note:          The definition of CEO is in section 134B of the Act.

22   Action period

                   For the definition of action period in section 134B of the Act, the period is 10 working days.

22A   Claim period

                   For the definition of claim period in section 134B of the Act, the period is 10 working days.

22B   Claim for release of seized copies

             (1)  For paragraph 135AEA(3)(a) of the Act, the claim must be in a form approved by the CEO.

             (2)  For paragraph 135AEA(3)(b) of the Act, the claim must include the following information:

                     (a)  the importer's full name, home or business address and address for service;

                     (b)  a telephone number for the importer;

                     (c)  the grounds for seeking the release of the seized copies;

                     (d)  if the importer's home or business address is not in Australia:

                              (i)  the full name and the home or business address of a person who is the importer's agent in Australia; and

                             (ii)  an address for service for the person who is the importer's agent in Australia; and

                            (iii)  a telephone number for the person; and

                            (iv)  information showing that the person agreed to be the importer's agent;

                     (e)  if a person or body other than the agent made arrangements on the importer's behalf for the seized copies to be brought to Australia:

                              (i)  the full name, home or business address and address for service of the person or body; and

                             (ii)  a telephone number for the person or body.

Note:          Examples of grounds for paragraph (c) are:

(a)    that the copies are not infringing copies; and

(b)    that the importation of the copies did not infringe copyright.

Trade Marks Regulations 1995

2  Regulations 13.1 and 13.2

Repeal the regulations, substitute:

13.1A   Definition

                   In this Part, a reference to the Customs CEO includes a reference to:

                     (a)  for Norfolk Island--the Collector as defined in the Customs Act 1913 of Norfolk Island; and

                     (b)  for Christmas Island--the Comptroller as defined in the Customs Act 1901 of Christmas Island; and

                     (c)  for the Cocos (Keeling) Islands--the Comptroller as defined in the Customs Act 1901 of the Cocos (Keeling) Islands.

13.1   Action period

                   For the definition of action period in section 6 of the Act, the period is 10 working days.

13.2   Claim period

                   For the definition of claim period in section 6 of the Act, the period is 10 working days.

13.3   Notice of objection to importation ¾ prescribed document

                   For subsection 132(1) of the Act, a document that sets out the particulars of registration of the registered trade mark is prescribed.

13.4   Notice of objection to importation--authorised users

             (1)  For paragraph 132(3)(b) of the Act, the period is 2 months from the day the request is made by the authorised user under subsection 132(2) of the Act.

             (2)  For paragraph 132(3)(e) of the Act, the authorised user must give to the Customs CEO documents that show:

                     (a)  the authorised user has power to give a notice of objection under subsection 132(1) of the Act; and

                     (b)  the authorised user has made the request; and

                     (c)  if the authorised user gives to the Customs CEO the notice after the period mentioned in subregulation (1) has ended--the period has ended.

Note:          Examples of documents for paragraph (2)(a) are:

(a)    an agreement between the registered owner of a trade mark, and the authorised user of the trade mark, that the authorised user of the trade mark is able to give notice of objection; and

(b)    a declaration by the registered owner that the authorised user of the trade mark is able to give notice of objection.

13.5   Claim for release of seized goods

             (1)  For paragraph 136(3)(a) of the Act, the claim must be in a form approved by the Customs CEO.

             (2)  For paragraph 136(3)(b) of the Act, the claim must include the following information:

                     (a)  the designated owner's full name, home or business address and address for service;

                     (b)  a telephone number for the designated owner;

                     (c)  the grounds for seeking the release of the seized goods;

                     (d)  if the designated owner's home or business address is not in Australia:

                              (i)  the full name and the home or business address of a person who is the designated owner's agent in Australia; and

                             (ii)  an address for service for the person who is the designated owner's agent in Australia; and

                            (iii)  a telephone number for the person; and

                            (iv)  information showing that the person agreed to be the designated owner's agent;

                     (e)  if a person or body other than the agent made arrangements on the designated owner's behalf for the seized goods to be brought to Australia:

                              (i)  the full name, home or business address and address for service of the person or body; and

                             (ii)  a telephone number for the person or body.

Note:          Examples of grounds for paragraph (c) are:

(a)    that the goods do not infringe the notified trade mark; and

(b)    that the importation of the goods does not infringe the notified trade mark.

3  Regulations 13.3 to 13.6

Renumber as regulations 13.6 to 13.10.

4  Schedules 3, 4 and 5

Repeal the Schedules, substitute:

Schedule 3 -- Modifications of Part 13 of the Act (Norfolk Island)

1  After section 131

Insert:

131A   Definitions

                   In this Part:

"Administration" has the meaning given by the Norfolk Island Act 1979 .

"Administrator" has the meaning given by the Norfolk Island Act 1979 .

"Collector" means the Collector of Customs appointed under section 1B to the Customs Act 1913 of Norfolk Island.

"designated owner" , in relation to goods imported into Norfolk Island, means the person identified as the owner of the goods on the import entry form made in relation to the goods under section 4A of the Customs Act 1913 of Norfolk Island.

2  Paragraph 133(1)(b)

Omit " Customs Act 1901 ", substitute " Customs Act 1913 of Norfolk Island".

3  Section 133A

Omit "or an officer of Customs (within the meaning of subsection 4(1) of the Customs Act 1901 )".

4  Paragraph 139(1)(b)

Omit "as the Customs CEO directs.", substitute "by the Collector in accordance with any direction of the Executive Member who administers the Customs Act 1913 of Norfolk Island.".

5  Section 140

Omit "of the Commonwealth", substitute "in force in Norfolk Island".

6  Further amendments--Administration

                   The following provisions are amended by omitting each mention of "Commonwealth" and substituting "Administration":

                     (a)  section 133;

                     (b)  subsection 134(5);

                     (c)  section 135;

                     (d)  subsection 136A(1);

                     (e)  section 136E;

                      (f)  paragraph 137(3)(b);

                     (g)  section 139, including the heading;

                     (h)  section 142, including the heading.

7  Further amendments--Collector

                   The following provisions are amended by omitting each mention of "Customs CEO" and substituting "Collector":

                     (a)  sections 131 and 132;

                     (b)  section 133, including the heading;

                     (c)  sections 134 to 137;

                     (d)  section 139, note;

                     (e)  sections 140 to 143.

8  Further amendments--Norfolk Island

                   The following provisions are amended by omitting each mention of "Australia" and substituting "Norfolk Island":

                     (a)  section 131;

                     (b)  subsection 133(1);

                     (c)  paragraph 134(4)(a);

                     (d)  subparagraph 136C(2)(b)(ii);

                     (e)  section 143.

9  Section 144

Repeal the section.

Schedule 4 -- Modifications of Part 13 of the Act (Christmas Island)

1  After section 131

Insert:

131A   Definitions

                   In this Part:

"Comptroller" means the Comptroller of the Indian Ocean Territories Customs Service.

"designated owner" , in relation to goods imported into Christmas Island, means the person identified as the owner of the goods on the entry made in relation to the goods under subsection 68(2) or (3) of the Customs Act 1901 of Christmas Island.

2  Paragraph 133(1)(b)

After " Customs Act 1901 ", insert "of Christmas Island".

3  Section 133A

After " Customs Act 1901 ", insert "of Christmas Island".

4  Section 140

Omit "of the Commonwealth", substitute "in force in Christmas Island".

5  Further amendments--Christmas Island

                   The following provisions are amended by omitting each mention of "Australia" and inserting "Christmas Island":

                     (a)  section 131;

                     (b)  subsection 133(1);

                     (c)  paragraph 134(4)(a);

                     (d)  subparagraph 136C(2)(b)(ii);

                     (e)  section 143.

6  Further amendments--Comptroller

                   The following provisions are amended by omitting each mention of "Customs CEO" and inserting "Comptroller":

                     (a)  sections 131 and 132;

                     (b)  section 133, including the heading;

                     (c)  sections 134 to 137;

                     (d)  section 139, including the note;

                     (e)  sections 140 to 143.

7  Further amendments--Territory of Christmas Island

                   The following provisions are amended by omitting each mention of "Commonwealth" and inserting "Territory of Christmas Island":

                     (a)  section 133;

                     (b)  subsection 134(5);

                     (c)  section 135;

                     (d)  subsection 136A(1);

                     (e)  section 136E;

                      (f)  paragraph 137(3)(b);

                     (g)  section 139, including the heading;

                     (h)  section 142, including the heading.

8  Section 144

Repeal the section.

Schedule 5 -- Modifications of Part 13 of the Act (Cocos (Keeling) Islands)

1  After section 131

Insert:

131A   Definitions

                   In this Part:

"Comptroller" means the Comptroller of the Indian Ocean Territories Customs Service.

"designated owner" , in relation to goods imported into Christmas Island, means the person identified as the owner of the goods on the entry made in relation to the goods under subsection 68(2) or (3) of the Customs Act 1901 of Cocos (Keeling) Islands.

2  Paragraph 133(1)(b)

After " Customs Act 1901 ", insert "of the Cocos (Keeling) Islands".

3  Section 133A

After " Customs Act 1901 ", insert "of the Cocos (Keeling) Islands".

4  Section 140

Omit "of the Commonwealth", substitute "in force in the Cocos (Keeling) Islands".

5  Further amendments--the Cocos (Keeling) Islands

                   The following provisions are amended by omitting each mention of "Australia" and inserting "the Cocos (Keeling) Islands":

                     (a)  section 131;

                     (b)  subsection 133(1);

                     (c)  paragraph 134(4)(a);

                     (d)  subparagraph 136C(2)(b)(ii);

                     (e)  section 143.

6  Further amendments--Comptroller

                   The following provisions are amended by omitting each mention of "Customs CEO" and inserting "Comptroller":

                     (a)  sections 131 to 132;

                     (b)  section 133, including the heading;

                     (c)  sections 134 to 137;

                     (d)  section 139, including the note;

                     (e)  sections 140 to 143.

7  Further amendments--Cocos (Keeling) Islands

                   The following provisions are amended by omitting each mention of "Commonwealth" and inserting "Cocos (Keeling) Islands":

                     (a)  section 133;

                     (b)  subsection 134(5);

                     (c)  section 135;

                     (d)  subsection 136A(1);

                     (e)  section 136E;

                      (f)  paragraph 137(3)(b);

                     (g)  section 139, including the heading;

                     (h)  section 142, including the heading.

8  Section 144

Repeal the section.

Schedule 6 -- Amendments relating to simplifying the IP system

Designs Regulations 2004

1  Regulation 1.05

Repeal the regulation, substitute:

1.05   Convention country

                   For the definition of Convention country in subsection 5A(1) of the Act, the following countries are prescribed:

                     (a)  a foreign country that is a signatory to the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force from time to time;

                     (b)  a foreign country that is a full member of the World Trade Organization.

Note 1:       For signatories to the Paris Convention for the Protection of Industrial Property, see www.wipo.int.

Note 2:       For full members of the World Trade Organization, see www.wto.org.

2  Subparagraph 5.04(c)(iii)

After "Federal Court", insert ", the Federal Magistrates Court or the Federal Circuit Court of Australia".

3  Regulations 11.22 and 11.23

Repeal the regulations, substitute:

11.22   Exercise of discretionary powers by Registrar

             (1)  The Registrar must give a person an opportunity to be heard before exercising a discretionary power under these Regulations adversely to the person.

Note:          See section 148 of the Act for a similar provision.

             (2)  For section 148 of the Act and subregulation (1), the Registrar must give the person an opportunity to be heard by:

                     (a)  asking the person for written submissions; or

                     (b)  notifying the person that, on request to the Registrar, the person may be heard by way of an oral hearing on a date, and at a time and place, determined by the Registrar; or

                     (c)  notifying the person of the date, time and place of an oral hearing.

             (3)  The Registrar may exercise the discretionary power if the person:

                     (a)  notifies the Registrar that the person does not want to be heard; or

                     (b)  does not file written submissions if requested under subregulation 11.23(1); or

                     (c)  does not attend an oral hearing if notified under subregulation 11.23(2).

             (4)  If the Registrar exercises discretionary power in any of the circumstances mentioned in subregulation (3), the Registrar must notify the person of the Registrar's decision.

11.23   Written submissions and oral hearings

Written submissions

             (1)  If the Registrar decides that a person may be heard by way of written submissions, the Registrar must:

                     (a)  notify the person of the period in which the submissions must be filed (being a period of at least 10 business days); and

                     (b)  decide the matter after considering the written submissions; and

                     (c)  notify the person of the Registrar's decision in relation to the exercise of the discretionary power.

Oral hearings

             (2)  If the Registrar decides that a person may be heard by way of an oral hearing, the Registrar must give notice of the date, time and place of the hearing to the person at least 10 business days before the day the hearing is to begin.

             (3)  The Registrar may adjourn an oral hearing from time to time or from place to place by notifying the person .

             (4)  The Registrar may hold an oral hearing in which:

                     (a)  a person appears in person; or

                     (b)  a person participates by telephone or other means of telecommunications that the Registrar reasonably allows.

             (5)  In addition to the Registrar's other powers, the Registrar may direct a person to provide a written summary of submissions.

             (6)  The Registrar must notify a person who appears at the hearing of the Registrar's decision in relation to the exercise of the discretionary power.

4  Schedule 1

Repeal the Schedule.

Patents Regulations 1991

5  Regulation 1.4

Repeal the regulation, substitute:

1.4   Meaning of Convention country

                   For the definition of Convention country in subsection 29B(5) of the Act, the following countries are prescribed:

                     (a)  a foreign country that is a signatory to the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force from time to time;

                     (b)  a foreign country that is a full member of the World Trade Organization.

Note 1:       For signatories to the Paris Convention for the Protection of Industrial Property, see www.wipo.int.

Note 2:       For full members of the World Trade Organization, see www.wto.org.

6  Regulations 1.6 and 1.6A

Repeal the regulations, substitute:

1.6   Secret use--prescribed period

                   For paragraph 9(e) of the Act, the period is 12 months after the first use of the invention that would, but for the application of paragraph 9(e), have constituted secret use.

7  Regulations 2.2 and 2.3

Repeal the regulations, substitute:

2.2   Information made publicly available--recognised exhibitions

             (1)  This regulation sets out:

                     (a)  for paragraph 24(1)(a) of the Act--a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and

                     (b)  for subsection 24(1) of the Act--a period for making a complete application for an invention if the circumstance applies.

Circumstance--invention shown, used or published at recognised exhibition

             (2)  The circumstance is that the information has been made publicly available because the invention was:

                     (a)  shown or used at a recognised exhibition; or

                     (b)  published during a recognised exhibition at which the invention was shown or used.

Period

             (3)  The period for making a complete application for the invention is:

                     (a)  if the complete application claims priority from a basic application made within 6 months of the day of the showing, use or publication--12 months from the day the basic application was made; or

                     (b)  if the complete application is associated with a provisional application made within 6 months of the day of the showing, use or publication--12 months from the day the provisional application was made; or

                     (c)  otherwise--12 months from the day of the showing, use or publication.

             (4)  In this regulation:

"Paris Convention" means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force for Australia on the commencing day.

"recognised exhibition" means:

                     (a)  an official or officially recognised international exhibition within the meaning of Article 11 of the Paris Convention or Article 1 of the Convention relating to International Exhibitions done at Paris on 22 November 1928, as in force for Australia on the commencing day; or

                     (b)  an international exhibition recognised by the Commissioner by a notice published in the Official Journal before the beginning of the exhibition.

2.2A   Information made publicly available--learned societies

             (1)  This regulation sets out:

                     (a)  for paragraph 24(1)(a) of the Act--a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and

                     (b)  for subsection 24(1) of the Act--a period for making a complete application for an invention if the circumstance applies.

Circumstance--information read before learned society or published by or on behalf of learned society

             (2)  The circumstance is that the information has been made publicly available in a paper:

                     (a)  read before a learned society; or

                     (b)  published by or on behalf of a learned society.

Period

             (3)  The period for making a complete application for the invention is:

                     (a)  if the complete application claims priority from a basic application made within 6 months of the day of the reading or publication--12 months from the day the basic application was made; or

                     (b)  if the complete application is associated with a provisional application made within 6 months of the day of the reading or publication--12 months from the day the provisional application was made; or

                     (c)  otherwise--12 months from the day of the reading or publication.

2.2B   Information made publicly available--reasonable trial of invention

             (1)  This regulation sets out:

                     (a)  for paragraph 24(1)(a) of the Act--a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and

                     (b)  for subsection 24(1) of the Act--a period for making a complete application for an invention if the circumstance applies.

Circumstance--working of invention for reasonable trial

             (2)  The circumstance is that:

                     (a)  the information has been made publicly available because the invention was worked in public; and

                     (b)  the working of the invention was for the purposes of a reasonable trial of the invention; and

                     (c)  because of the nature of the invention, it was reasonably necessary for the working to be in public.

Period

             (3)  The period for making a complete application for the invention is:

                     (a)  if the complete application claims priority from a basic application made within 12 months of the start of the public working of the invention--12 months from the day the basic application was made; or

                     (b)  if the complete application is associated with a provisional application made within 12 months of the start of the public working of the invention--12 months from the day the provisional application was made; or

                     (c)  otherwise--12 months from the start of the public working of the invention.

2.2C   Information made publicly available--other circumstances

             (1)  This regulation sets out:

                     (a)  for paragraph 24(1)(a) of the Act--a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and

                     (b)  for subsection 24(1) of the Act--a period for making a complete application for an invention if the circumstance applies.

Circumstance

             (2)  The circumstance is that the information has been made publicly available in circumstances other than the circumstances described in regulations 2.2, 2.2A and 2.2B.

Period

             (3)  The period for making a complete application for the invention is 12 months from the day the information was made publicly available.

2.2D   Information made publicly available without consent--period

                   For subsection 24(1) of the Act, for information made publicly available in the circumstances mentioned in paragraph 24(1)(b) of the Act, the prescribed period for making a complete application for an invention is 12 months from the day the information was made publicly available.

2.3   Divisional applications--period

             (1)  For subsection 24(1) of the Act, this regulation applies to an invention if:

                     (a)  the specification containing the claim in which the invention is defined was filed for a divisional application under section 79B or 79C of the Act; and

                     (b)  the claim is entitled under regulation 3.13D or 3.13E to the priority date that it would have if the claim was in the specification filed with a previous application (the original application ); and

                     (c)  a circumstance mentioned in regulations 2.2 to 2.2D applies; and

                     (d)  the original application was filed in the period prescribed in the circumstance under regulations 2.2 to 2.2D.

             (2)  The prescribed period for making the divisional application is:

                     (a)  if the divisional application was filed in the period mentioned in paragraph (1)(d)--that period; or

                     (b)  otherwise--the period ending on the day the divisional application was made.

8  Paragraphs 3.1(2)(a) and (b)

Repeal the paragraphs.

9  At the end of regulation 3.1A

Add:

             (2)  For a PCT application, the applicant is taken to be the nominated person.

10  Subregulation 3.2A(3)

After "standard patent", insert "(other than a PCT application)".

11  After regulation 3.2A

Insert:

3.2AB   PCT application--title of specification

             (1)  The title of a specification for a PCT application is taken to be:

                     (a)  the title approved by the ISA for the application under rule 44.2 of the PCT; or

                     (b)  the title established by the ISA for the application under rule 37.2 of the PCT.

             (2)  For subregulation (1), if the title is in a language other than English, the title is taken to be the English translation of the title.

12  Paragraph 3.2B(1)(d)

Omit "6A.1, 6A.2 or subregulation 8.5(2),", substitute "3.11, 6A.1 or 6A.2,".

13  After regulation 3.2B

Insert:

3.2C   Specifications--formalities check for PCT application

             (1)  This regulation applies to a PCT application that complies with subsection 29A(5) of the Act.

Note:          This regulation was added on 15 April 2013. If the PCT application was filed before 15 April 2013, see subregulation (7).

             (2)  The applicant must:

                     (a)  provide:

                              (i)  an address for service in Australia at which a document under the Act or these Regulations may be given to the applicant personally, or to a person nominated as the applicant's representative; or

                             (ii)  another address for service in Australia to which it is practicable and reasonable for Australia Post, or a person acting for Australia Post, to deliver mail; and

                     (b)  if a translation of the application is filed for subsection 29A(5) of the Act--file a certificate of verification for the translation.

             (3)  The PCT application must substantially comply with the requirements of Schedule 3.

             (4)  The Commissioner may, within one month from the date the PCT application complies with subsection 29A(5) of the Act, direct the applicant to do anything necessary to ensure that the application complies with the requirements mentioned in subregulations (2) and (3).

             (5)  The PCT application lapses if:

                     (a)  the applicant has been given a direction under subregulation (4); and

                     (b)  the applicant has not complied with the direction within 2 months of the date of the direction.

             (6)  If the PCT application lapses under subregulation (5), the Commissioner must:

                     (a)  advertise that fact in the Official Journal ; and

                     (b)  tell the applicant that the PCT application has lapsed.

             (7)  If the PCT application was filed before 15 April 2013:

                     (a)  a reference in this regulation to subsection 29A(5) of the Act:

                              (i)  is taken to be a reference to subsection 89(3) of the Act, as in force immediately before 15 April 2013; and

                             (ii)  if a translation of a PCT application is required to be filed--is taken not to include the requirement to file a related certificate of verification; and

                     (b)  for the purposes of the reference to subsection 89(3) of the Act, as in force immediately before 15 April 2013, paragraph 8.2(3)(c) of these Regulations, as in force immediately before 15 April 2013:

                              (i)  is taken to apply in relation to the PCT application; and

                             (ii)  is taken not to include the requirement to file a related certificate of verification; and

                            (iii)  is taken not to include the requirement to file a document setting out an address for service of documents in Australia.

14  Regulation 3.5 (heading)

Repeal the heading, substitute:

3.5   Filing date--patent applications other than PCT applications

15  Subregulation 3.5(1)

After "patent application", insert "(other than a PCT application)".

16  After regulation 3.5

Insert:

3.5AA   Filing date--PCT applications

                   For section 30 of the Act, the filing date of a PCT application is:

                     (a)  the international filing date; or

                     (b)  if the Commissioner has treated another date as the international filing date under Rule 82 ^ter of the PCT--that date; or

                     (c)  if section 10 of the Act applies to the application--the date taken to have been given as the international filing date under that section.

17  Subregulation 3.5A(1)

After "patent application", insert "(other than a PCT application)".

18  After regulation 3.5A

Insert:

3.5AB   PCT applications--international applications taken to be applications under the Act

             (1)  This regulation applies to an international application that specifies Australia as a designated State under Article 4(1)(ii) of the PCT if:

                     (a)  the receiving Office has declared that the international application is taken to be withdrawn; or

                     (b)  the International Bureau has made a finding under Article 12(3) of the PCT.

             (2)  The international application is taken to be a PCT application, as if a declaration or finding had not been made, if:

                     (a)  the applicant has made a request referred to in Article 25(1)(a) of the PCT within the time limit specified in Rule 51.1 of the PCT; and

                     (b)  the Commissioner has received, within the time limit specified in Rule 51.3 of the PCT:

                              (i)  the fees prescribed for paragraph 29A(5)(b) of the Act; and

                             (ii)  if the application is not in English--a translation of the application into English; and

                     (c)  the Commissioner believes on reasonable grounds that:

                              (i)  the declaration was the result of an error or omission by the receiving Office; or

                             (ii)  the finding was the result of an error or omission by the International Bureau.

3.5AC   PCT applications--amendment

             (1)  For subsection 29A(3) of the Act, this regulation sets out the circumstances and manner in which, and the day on which, a specification of a PCT application is taken to be amended.

Translation of application into English

             (2)  If paragraph 29A(5)(a) of the Act applies to the PCT application:

                     (a)  the description, drawings and claims contained in the application are taken to have been amended by substituting the description, drawings and claims in the translation; and

                     (b)  the amendment is taken to have occurred on the day the translation was filed.

Application amended under Article 19 of PCT

             (3)  If:

                     (a)  a PCT application was amended under Article 19 of the PCT; and

                     (b)  the application was amended before the applicant met the requirements of subsection 29A(5) of the Act;

the description, drawings and claims contained in the application are to be taken to have been amended on the day the amendment was made.

Application rectified under Rule 91 of PCT

             (4)  If:

                     (a)  a PCT application was rectified under Rule 91 of the PCT; and

                     (b)  the rectification was made before the applicant met the requirements of subsection 29A(5) of the Act;

the description, drawings and claims contained in the application are to be taken to have been amended on the day the rectification was effective, unless the Commissioner disregards the rectification under Rule 91.3(f) of the PCT.

Application amended under Article 34 of PCT

             (5)  If:

                     (a)  a PCT application in respect of which Australia has been elected under Chapter II of the PCT has been amended under Article 34 of the PCT; and

                     (b)  an international preliminary examination report is established before the applicant meets the requirements of subsection 29A(5) of the Act;

the description, drawings and claims contained in the application are taken to have been amended on the day the amendment was made.

             (6)  However, subregulation (5) does not apply if:

                     (a)  the Commissioner has notified the applicant under regulation 3.17C or paragraph 10.2(1)(d); and

                     (b)  the applicant:

                              (i)  provides the advice mentioned in paragraph 3.17B(2)(b) or subparagraph 10.2(3)(c)(ii); or

                             (ii)  elects under paragraph 3.17B(2)(c) or subparagraph 10.2(3)(c)(iii) to abandon any amendments that may have been made under Article 34 of the PCT.

Indications under Rule 13 ^bis .4 of the PCT

             (7)  If an indication in relation to a deposited micro-organism is furnished according to Rule 13 ^bis .4 of the PCT in relation to a PCT application:

                     (a)  the description contained in the application is taken to have been amended to include that indication; and

                     (b)  the amendment is taken to have occurred on the day that indication is furnished to the International Bureau.

3.5AD   PCT applications--prescribed requirements

                   For subsection 29A(4) of the Act, the following requirements are prescribed:

                     (a)  the requirements of subsection 29(4) of the Act;

                     (b)  subregulation 3.1(1);

                     (c)  subregulation 3.2A(1);

                     (d)  paragraphs 3.2A(2)(a) and (b).

3.5AE   PCT applications--prescribed period

             (1)  For subsection 29A(5) of the Act, the prescribed period is 31 months after the priority date of the application.

             (2)  In this regulation:

"priority date" has the same meaning as in the PCT.

3.5AF   PCT applications--translations and prescribed documents

Translations published under Article 21 of PCT

             (1)  For paragraph 29A(5)(a) of the Act, subregulation (2) applies if:

                     (a)  a PCT application is not filed in English; and

                     (b)  the PCT application has been published in English under Article 21 of the PCT; and

                     (c)  a translation of the application into English was not filed before the date of publication under Article 21 of the PCT.

             (2)  The publication under Article 21 of the PCT is taken:

                     (a)  to be the translation mentioned in paragraph 29A(5)(a) of the Act; and

                     (b)  to have been filed within the prescribed period; and

                     (c)  to have been verified in accordance with these Regulations.

Copy of application

             (3)  For paragraph 29A(5)(b) of the Act, if a PCT application has not been published under Article 21 of the PCT, a copy of the application is a prescribed document.

             (4)  In this regulation:

"PCT application" includes:

                     (a)  an amendment under Article 19 or 34 of the PCT; and

                     (b)  a rectification under Rule 91 of the PCT.

3.5AG   Convention application--prescribed particulars

             (1)  For paragraph 29B(4)(a) of the Act, the following particulars are prescribed in relation to a relevant basic application:

                     (a)  the country in which the application was made;

                     (b)  the number allocated to the application by the foreign patent office of the Convention country in which the application was made;

                     (c)  the date the application was made.

             (2)  A reference to a country or a Convention country in subregulation (1) includes an intergovernmental authority to the extent that Rule 4.10 of the PCT permits for a PCT application.

Note:          An example for subregulation (2) is that the PCT allows the European Patent Office to be specified for a regional application instead of a particular Convention country.

19  Regulation 3.5B

After "sub-office of the Patent Office", insert "(if any)".

20  After regulation 3.10

Insert:

3.11   Prescribed period--making Convention application

                   For subsections 29B(2) and 38(1A) of the Act, the prescribed period is 12 months from the day a basic application is first made in a Convention country for the invention.

21  Regulation 3.14

Omit "If subsection 114(1)", substitute "If section 114".

22  Paragraph 3.14(a)

Omit "subsection 89(4) or (5)", substitute "subsection 29A(3)".

23  Paragraph 3.14(b)

Omit "subsection 114(1)", substitute "subparagraph 114(1)(c)(ii)".

24  After regulation 3.14B

Insert:

3.14C   Priority dates--Convention applications and PCT applications: prescribed period for disregarding earlier applications

                   For paragraph 43(5)(b) of the Act, the period of more than 12 months before the filing of the Convention application or PCT application is prescribed.

3.14D   Prescribed documents: basic application

             (1)  For subsection 43AA(1) of the Act, the following documents that relate to a basic application are prescribed:

                     (a)  a copy of the specification filed for, and at the same time as, the basic application;

                     (b)  a copy of any other document filed for the basic application, whether filed at the same time as, or after, the basic application is filed;

                     (c)  a document mentioned in paragraph (a) or (b) that has been certified by the competent authority of the Convention country in which the basic application was made;

                     (d)  if the application relates to a micro-organism--a copy of a receipt for the deposit of the micro-organism issued by a prescribed depository institution;

                     (e)  if a document mentioned in paragraphs (a) to (d) is not in English--a translation of the document into English and a certificate of verification of the translation.

             (2)  For subsection 43AA(4) of the Act, if the Commissioner requires that a prescribed document relating to a basic application be made available to the Commissioner:

                     (a)  the prescribed means for making the document available are:

                              (i)  filing the document with the Australian Patent Office; or

                             (ii)  making the document available through an approved digital library; and

                     (b)  the prescribed period for making the document available is 3 months from the day the Commissioner requires the document be made available.

             (3)  However, if the Commissioner is satisfied that:

                     (a)  a document was made available for inspection by the Commissioner in an approved digital library within the period mentioned in paragraph (2)(b); and

                     (b)  the document is no longer available for inspection;

the prescribed period is 2 months after the day the Commissioner notifies the applicant or patentee that the Commissioner has not been able to inspect the document in the approved digital library.

25  Regulation 3.15 (heading)

Repeal the heading, substitute:

3.15   Requirements of request for examination

26  At the end of regulation 3.15

Add:

             (3)  An applicant of a PCT application may not make a request for the examination of the patent request and complete specification until the applicant has complied with the requirements of subsection 29A(5) of the Act.

27  Subregulation 3.16(2)

Omit "6 months", substitute "2 months".

28  Regulations 3.17A and 3.17B

Repeal the regulations, substitute:

3.17A   PCT applications--Commissioner not to give certain directions

             (1)  This regulation applies to a PCT application that is treated as an application for a standard patent under the Act.

             (2)  The Commissioner must not give a direction under section 44 of the Act unless the applicant has complied with the requirements of subsection 29A(5) of the Act.

3.17B   PCT applications--examination requirements

             (1)  For subsection 45(1A) of the Act, this regulation prescribes requirements for a PCT application.

             (2)  The requirements are that the applicant must:

                     (a)  give a copy of the international preliminary examination report to the Commissioner; or

                     (b)  advise that:

                              (i)  no demand was made under Article 31 of the PCT; or

                             (ii)  no amendments were made under Article 34 of the PCT; or

                            (iii)  the demand was made under Article 31 of the PCT, or the international preliminary examination report was established, after the applicant complied with the requirements of subsection 29A(5) of the Act; or

                     (c)  elect to abandon any amendments that may have been made under Article 34 of the PCT.

             (3)  However, subregulation (2) applies only if:

                     (a)  each of the following applies:

                              (i)  the applicant demanded an international preliminary examination under Article 31 of the PCT before complying with the requirements of subsection 29A(5) of the Act;

                             (ii)  at least 3 months after the applicant complied with the requirements of subsection 29A(5) of the Act, the Commissioner asks for a copy of the international preliminary examination report from the International Bureau;

                            (iii)  the International Bureau advises that the international preliminary examination report is not available; or

                     (b)  both of the following apply:

                              (i)  the applicant asks for the examination to be expedited under subregulation 3.17(2);

                             (ii)  a copy of an international preliminary examination report relating to the application has not been provided to the Commissioner.

Note:          Under subparagraph 3.5AC(9)(b)(ii), if the applicant provides the advice, or makes the election, mentioned in paragraph (2)(b) or (c), any amendments made under Article 34 of the PCT are not taken to be included in the application.

             (4)  In this regulation:

"international preliminary examination report" has the same meaning as it has in the PCT.

3.17C   PCT applications--notice if examination declined

                   If the Commissioner declines to examine a request and specification under subsection 45(1A) of the Act, the Commissioner must notify the applicant and ask the applicant to meet the requirements in subregulation 3.17B(2).

29  Subregulation 3.18(2)

Omit "the purposes of paragraph 45(1)(d) or 48(1)(c)", substitute "paragraph 45(1)(d)".

30  Paragraph 3.18(2)(a)

Repeal the paragraph, substitute:

                     (a)  whether, to the best of the Commissioner's knowledge, the request and specification comply with the following provisions of the Act:

                              (i)  section 15 (Who may be granted a patent?);

                             (ii)  section 29 (Application for patent--general rules);

                            (iii)  section 29B (Applications for patents--special rules for Convention applications);

                            (iv)  section 38 (Time for making complete application);

                             (v)  section 79B (Divisional applications prior to grant of patent);

                            (vi)  section 81 (Grant of patent of addition);

31  Paragraph 3.18(2)(f)

Repeal the paragraph, substitute:

                      (f)  for a PCT application--whether, to the best of the Commissioner's knowledge, the application complies with subregulations 3.2C(2) and (3).

32  Subregulation 3.18(3)

Repeal the subregulation.

33  Subregulation 3.18(4)

Omit "or 48".

34  Subregulation 3.19(3)

Omit "or 48".

35  Regulations 3.20 and 3.21

Repeal the regulations.

36  Regulation 4.1

Omit "the purposes of section 53", substitute "subsection 53(1)".

37  Paragraph 4.1(f)

Repeal the paragraph, substitute:

                      (f)  particulars of priority documents.

38  Paragraphs 4.3(2)(b) and (c)

Repeal the paragraphs, substitute:

                     (b)  a document that the Commissioner has reasonable grounds for believing should not be open to public inspection.

39  At the end of Chapter 4

Add:

4.4   Publication and inspection of PCT applications

             (1)  For subsection 56A(1) of the Act, a PCT application is taken to have become open to public inspection, and to have been published in Australia:

                     (a)  if a notice in relation to the application is published under subregulation (3)--on the day the notice is published; or

                     (b)  if subregulation (5) applies--on the day the application is published under Article 21 of the PCT.

             (2)  Subregulation (3) applies to a PCT application:

                     (a)  that has not lapsed, or been withdrawn or refused; and

                     (b)  for which the applicant has complied with subsection 29A(5) of the Act before the end of 18 months after the priority date of the application.

             (3)  The Commissioner must publish a notice in the Official Journal stating that the PCT application is open to public inspection:

                     (a)  if the applicant asks the Commissioner in writing to publish the notice; or

                     (b)  in any case--as soon as practicable after the end of 18 months after the priority date of the application.

             (4)  A request for publication under subregulation (3) must be in the approved form.

             (5)  The PCT application is open to public inspection if:

                     (a)  the applicant does not comply with subsection 29A(5) of the Act within 18 months after the priority date of the application; and

                     (b)  the application is published under Article 21 of the PCT.

             (6)  The following documents are open for inspection if a notice is published under subregulation (3) or if subregulation (5) applies:

                     (a)  a copy of the relevant application;

                     (b)  all documents in the possession of the Patent Office, other than those mentioned in subregulation (7), that are associated with:

                              (i)  the application; or

                             (ii)  any provisional application from which the application claims priority under Article 8 of the PCT.

             (7)  Subregulation (6) does not apply to the following documents:

                     (a)  a document that would be privileged from production in legal proceedings on the ground of legal professional privilege;

                     (b)  a document mentioned in subregulation 4.3(2).

             (8)  In this regulation:

"priority date" has the same meaning as in the PCT.

40  After regulation 6.1

Insert:

6.1A   Prescribed particulars--grant of standard patent

                   For subsection 61(1) of the Act, the following particulars are prescribed:

                     (a)  the date the patent is granted by the Commissioner;

                     (b)  any other particulars of the grant that the Commissioner considers appropriate.

41  After regulation 6.2

Insert:

6.2A   Prescribed particulars--grant of innovation patent

                   For subsection 62(1) of the Act, the following particulars are prescribed:

                     (a)  the date the innovation patent is granted by the Commissioner;

                     (b)  any other particulars of the grant that the Commissioner considers appropriate.

42  Subregulation 6.3(10)

Omit "section 94", substitute "subsections 29B(1) and (2)".

43  At the end of regulation 6.3

Add:

           (11)  If a PCT application claims the priority of an earlier application under Article 8 of the PCT, and a circumstance mentioned in an item of the following table applies, the date of the patent is the date 12 months from the date of making the first application mentioned in the item.

44  Regulation 6.4

Repeal the regulation.

45  Chapter 8

Repeal the Chapter.

46  Regulations 9A.2A and 9A.2B

Repeal the regulations.

47  Paragraphs 9A.4(d) and (e)

Repeal the paragraphs, substitute:

                     (d)  if the Commissioner requires a document to be made available under subsection 43AA(4) of the Act--5 months from the date the requirement is made;

                     (e)  if:

                              (i)  the Commissioner has informed the patentee of a notice under subsection 28(1) of the Act; and

                             (ii)  a ground for revocation is raised based on information in the notice;

                            3 months from the date of the report that first mentions the ground for revocation;

                      (f)  if:

                              (i)  the Commissioner gives the applicant an opportunity to be heard in relation to a report under section 101B of the Act or regulation 10.2 by:

                                        (A)  notifying the applicant in writing of the date by which written submissions must be filed; or

                                        (B)  notifying the applicant in writing of the date, time and place of an oral hearing; and

                             (ii)  the Commissioner makes a decision in writing in relation to the report;

                            3 months from the date the decision is made;

                     (g)  if the Commissioner revokes a certificate of examination under section 101EA of the Act--3 months from the date the decision to revoke is made.

48  After subregulation 10.1(1)

Insert:

       (1AA)  However, an applicant of a PCT application may not ask the Commissioner for leave to amend until the applicant has complied with the requirements of subsection 29A(5) of the Act.

49  Paragraph 10.2(1)(d)

Repeal the paragraph, substitute:

                     (d)  notify the applicant of that fact; and

50  Sub-subparagraph 10.2(3)(c)(ii)(C)

Omit "subsection 89(3)", substitute "subsection 29A(5)".

51  Subparagraph 10.2(3)(c)(iii) (note)

Repeal the note, substitute:

Note:          If the applicant provides the advice mentioned in subparagraph (c)(ii), or makes the election mentioned in subparagraph (c)(iii), any amendments made under Article 34 of the PCT are not taken to be included in the application.

52  Paragraph 10.5(1)(b)

Omit "section 45 or 48", substitute "section 45 ".

53  After subregulation 10.6A

Insert:

10.6B   Revocation of grant of leave

             (1)  A grant of leave to amend a patent request, complete specification or other filed document under regulation 10.5 is revoked if:

                     (a)  leave to amend was granted at the same time as the acceptance of the patent request and complete specification under subsection 49(1) of the Act; and

                     (b)  acceptance of the patent request and complete specification is later revoked under section 50A of the Act.

             (2)  A grant of leave to amend a patent request, complete specification or other filed document under regulation 10.5 is revoked if:

                     (a)  leave to amend was granted at the same time as the decision mentioned in paragraph 101E(a) of the Act was made; and

                     (b)  the certificate of examination issued in relation to the patent is later revoked under subsection 101EA(1) of the Act.

             (3)  The Commissioner may revoke a grant of leave to amend a patent request, complete specification or other filed document under regulation 10.5 if the Commissioner is satisfied that:

                     (a)  leave to amend should not have been granted, taking into account all of the circumstances that existed when leave was granted (whether or not the Commissioner knew the circumstances existed); and

                     (b)  it is reasonable to revoke the grant and allowance of the amendment(if applicable), taking into account all of the circumstances; and

                     (c)  there are no relevant proceedings pending.

             (4)  If leave to amend a patent request, complete specification or other filed document under regulation 10.5 is revoked (whether automatically or by the Commissioner):

                     (a)  leave to amend is taken to never have been granted; and

                     (b)  if allowed under regulation 10.6, the amendment is taken not to have been allowed; and

                     (c)  the Commissioner must continue to examine and report on the amendment in accordance with subregulation 10.2(1); and

                     (d)  regulations 10.5 and 10.6 continue to apply in relation to the amendment.

54  Regulation 10.7

Repeal the regulation, substitute:

10.7   Rectification of Register

             (1)  A person applying for rectification of the Register under section 191A of the Act must do so in the approved form.

             (2)  The Commissioner:

                     (a)  may seek further information from any person for the purpose of considering the application; and

                     (b)  is not required to consider the application while seeking the further information.

             (3)  The Commissioner must publish a notice of the rectification request in the Official Journal unless the rectification:

                     (a)  relates to an address included in the Register; or

                     (b)  relates to a name included in the Register and does not relate to a change of identity; or

                     (c)  relates to the title of an invention included in the Register; or

                     (d)  is to correct an obvious mistake made in the Register; or

                     (e)  does not materially alter the meaning or scope of an entry in the Register.

             (4)  However, the Commissioner is not required to publish a notice under subregulation (3) if the Commissioner is satisfied that the rectification should not be made.

             (5)  If the Commissioner publishes a notice under subregulation (3), the Commissioner must not rectify the Register until the later of:

                     (a)  2 months after publishing the notice; and

                     (b)  if a person requests to be heard in relation to the rectification request--after the person has been heard.

55  Regulation 11.1

Omit "specified in Schedule 4", substitute "mentioned in regulation 1.4".

56  Subregulation 12.1(1)

Omit "sealing", substitute "granting".

57  After regulation 13.1B

Insert:

13.1C   PCT applications--prescribed circumstances in which application may be withdrawn or taken to be withdrawn

             (1)  For subsection 141(2) of the Act, a PCT application may be withdrawn if the conditions mentioned in subsection 141(1) of the Act are met.

             (2)  For subsection 141(2) of the Act, a PCT application is taken to be withdrawn if Article 11(3) of the PCT ceases to have effect in Australia in relation to the PCT application under Article 24(1)(i) of the PCT.

58  Regulation 13.2

Repeal the regulation.

59  Paragraphs 13.4(1)(a) and (b)

Repeal the paragraphs, substitute:

                     (a)  if examination of the patent request and complete specification is requested before 15 April 2013--21 months from the date of the first report (if any) under section 45 of the Act;

                     (b)  if examination is requested on or after 15 April 2013--12 months from the date of the first report (if any) under section 45 of the Act;

60  Paragraph 13.4(1)(c)

Repeal the paragraph.

61  Subparagraph 13.4(1)(f)(ii)

Repeal the subparagraph, substitute:

                             (ii)  the Commissioner has made a declaration under paragraph 36(1)(c) of the Act;

62  Paragraph 13.4(1)(g)

Repeal the paragraph, substitute:

                     (g)  subject to subregulation (3), if:

                              (i)  the Commissioner gives the applicant an opportunity to be heard in relation to a report under section 45 of the Act or regulation 10.2 by:

                                        (A)  notifying the applicant in writing of the date by which written submissions must be filed; or

                                        (B)  notifying the applicant in writing of the date, time and place of an oral hearing; and

                             (ii)  the Commissioner makes a decision in writing in relation to the report;

                            3 months from the date the decision is made;

                    (ga)  subject to subregulation (3), if the Commissioner revokes an acceptance under subsection 50A(1) of the Act--3 months from the date the decision to revoke is made;

63  Paragraph 13.4(1)(k)

Repeal the paragraph, substitute:

                     (k)  if the Commissioner requires a document to be made available under subsection 43AA(4) of the Act--the period of 5 months from the date the requirement is made;

64  Subregulation 13.4(3)

Omit "or (f) or subparagraph (1)(g)(iii)", substitute ", (f), (g) or (ga)".

65  After regulation 13.5

Insert:

13.5A   PCT application--prescribed circumstances for lapsing of application

             (1)  For paragraph 142(2)(f) of the Act, a circumstance in which a PCT application lapses is that the applicant has not met the requirements of subsection 29A(5) of the Act within the prescribed period for that subsection.

             (2)  For paragraph 142(2)(f) of the Act, a circumstance in which a PCT application lapses is that the effect of the international application under Article 11(3) of the PCT ceases in Australia under Article 24(1)(ii) of the PCT before the requirements of subsection 29A(5) of the Act have been met.

66  Subregulation 22.2(4)

Omit "paragraph 89(3)(b)", substitute "paragraph 29A(5)(b)".

67  Regulation 22.2E

Repeal the regulation.

68  Paragraph 22.2F(1)(a)

Omit ", 22.2D or 22.2E", substitute "or 22.2D".

69  Paragraph 22.10AA(b)

Omit "Patent Office", substitute "Patent Office (if any)".

70  Regulation 22.10AA (note)

Omit "of the Patent Office", substitute "of the Patent Office (if any)".

71  Subregulation 22.10AB(1)

Omit "of the Patent Office", substitute "of the Patent Office (if any)".

72  Regulation 22.15

Repeal the regulation, substitute:

22.15   Documents in English and English translations

             (1)  An abstract that is filed must be in English.

             (2)  A document required to be in an approved form that is filed must be in English.

             (3)  If any other document is filed:

                     (a)  the document must be in English; or

                     (b)  the document must be filed with:

                              (i)  a translation of the document into English; and

                             (ii)  a related certificate of verification.

             (4)  However, this regulation does not apply to documents relating to a basic application that are prescribed under subsection 43AA(1) of the Act.

Note:          For a list of these documents, see subregulation 3.14B(1).

73  Subregulation 22.16(2)

Omit "Schedule 3", substitute "regulation 22.15 or Schedule 3, ".

74  Paragraph 22.16(2)(a)

Repeal the paragraph, substitute:

                     (a)  as not having been filed and notify the person from whom it was received, including in the notification a statement indicating how the document or form does not so comply or accord; or

75  Subregulation 22.16(3)

Repeal the subregulation.

76  Subregulation 22.16(4)

Omit "3 months", substitute "2 months".

77  Regulations 22.22 and 22.23

Repeal the regulations, substitute:

22.22   Exercise of discretionary powers by Commissioner

             (1)  The Commissioner must give a person an opportunity to be heard before exercising a discretionary power under the Act or these Regulations adversely to the person.

Note:          See section 216 of the Act for a similar provision.

             (2)  The Commissioner must give the person an opportunity to be heard by:

                     (a)  asking the person for written submissions; or

                     (b)  notifying the person that, on request to the Commissioner, the person may be heard by way of an oral hearing on a date, and at a time and place, determined by the Commissioner; or

                     (c)  notifying the person of the date, time and place of an oral hearing.

             (3)  The Commissioner may exercise the discretionary power if the person:

                     (a)  notifies the Commissioner that the person does not want to be heard; or

                     (b)  does not file written submissions if requested under subregulation 22.23(1); or

                     (c)  does not attend an oral hearing if notified under subregulation 22.23(2).

             (4)  If the Commissioner exercises discretionary power in any of the circumstances mentioned in subregulation (3), the Commissioner must notify the person of the Commissioner's decision.

22.23   Written submissions and oral hearings

Written submissions

             (1)  If the Commissioner decides that a person may be heard by way of written submissions, the Commissioner must:

                     (a)  notify the person of the period in which the submissions must be filed (being at least 10 business days); and

                     (b)  determine the matter after considering the written submissions; and

                     (c)  notify the person of the Commissioner's decision in relation to the exercise of the discretionary power.

Oral hearings

             (2)  If the Commissioner decides that a person may be heard by way of an oral hearing, the Commissioner must give notice of the date, time and place of the hearing, to the person, at least 10 business days before the day the hearing is to begin.

             (3)  The Commissioner may adjourn an oral hearing from time to time or from place to place by notifying the person .

             (4)  The Commissioner may hold an oral hearing in which:

                     (a)  a person appears in person; or

                     (b)  a person participates by telephone or other means of telecommunications that the Commissioner reasonably allows.

             (5)  In addition to the Commissioner's other powers, the Commissioner may direct a person to provide a written summary of submissions.

             (6)  The Commissioner must notify a person who appears at the hearing of the Commissioner's decision in relation to the exercise of the discretionary power.

78  After regulation 22.26

Insert:

22.27   Documents not to infringe copyright--prescribed documents

             (1)  For paragraph 226(2)(c) of the Act, the following documents are prescribed:

                     (a)  a document open to public inspection under Chapter 4 of the Act;

                     (b)  a document open to public inspection under these Regulations.

             (2)  However, a journal, book or catalogue is not prescribed if:

                     (a)  it is provided for prosecution, examination or proceedings in relation to a patent application, or subsequent patent; and

                     (b)  a right subsisting in the journal, book or catalogue under the Copyright Act 1968 is held by a party other than the patent applicant, patentee or another person who has filed a document for the application or patent.

79  Schedules 1, 1A, 2 and 2A

Repeal the Schedules.

80  Schedule 3 (heading)

Repeal the heading, substitute:

Schedule 3 -- Formal requirements for documents to be filed

81  Schedule 4

Repeal the Schedule.

82  Part 2 of Schedule 7 (item 214)

Repeal the item, substitute:

83  Part 2 of Schedule 7 (item 214A)

Omit "89(3)(b)", substitute "29A(5)(b)".

84  Part 2 of Schedule 7 (item 221)

Repeal the item.

85  Part 2 of Schedule 7 (item 224)

After "amend", insert "a complete specification relating to".

86  Item 232 of Schedule 7

Repeal the item.

Trade Marks Regulations 1995

87  Paragraph 4.4(6)(b)

After "sub-offices", insert "(if any)".

88  Paragraph 4.7(2)(c)

Repeal the paragraph.

89  Regulation 4.15, note 2

After "sub-offices", insert "(if any)".

90  Paragraph 17A.28(2)(b)

Omit "paragraph 41 (6) (a)", substitute "paragraph 41(3)(b)".

91  Regulation 17A.42F (heading)

Repeal the heading, substitute:

17A.42F   Appeals to Federal Court or Federal Magistrates Court

92  Regulation 17A.42F

After "Federal Court", insert "or Federal Magistrates Court".

93  Regulation 19.1

After "sub-office" (wherever occurring), insert "(if any)".

94  Subregulation 21.5(2)

After "sub-office" (wherever occurring), insert "(if any)".

95  Regulations 21.15 and 21.16

Repeal the regulations, substitute:

21.15   Opportunity to be heard by Registrar

             (1)  This regulation applies if the Act or these Regulations provide for a person to be heard by the Registrar.

             (2)  The Registrar may give the person an opportunity to be heard by:

                     (a)  asking the person for written submissions; or

                     (b)  notifying the person that on request to the Registrar, the person may be heard by way of an oral hearing on a date, and at a time and place, determined by the Registrar; or

                     (c)  notifying the person of the date, time and place of an oral hearing.

             (3)  A request for a hearing must be in an approved form.

             (4)  The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.

             (5)  The Registrar may decide a matter if each person that is a party to the matter:

                     (a)  notifies the Registrar that the person does not want to be heard; or

                     (b)  does not file written submissions if requested under subregulation 21.16(1); or

                     (c)  does not request an oral hearing after being notified under paragraph (2)(b); or

                     (d)  does not attend an oral hearing if notified under subregulation 21.16(2).

             (6)  In the circumstances mentioned in subregulation (5), the Registrar may make a decision by reference to relevant information that is held in the Trade Marks Office.

             (7)  If the Registrar makes a decision in any of the circumstances mentioned in subregulation (5), the Registrar must notify each party of the Registrar's decision.

21.16   Written submissions and oral hearings

Written submissions

             (1)  If the Registrar decides that a person may be heard by way of written submissions, the Registrar must:

                     (a)  notify the person of the period in which the submissions must be filed (being at least 10 business days); and

                     (b)  determine the matter after considering the written submissions; and

                     (c)  notify the person of the Registrar's decision in relation to the matter.

Oral hearings

             (2)  If the Registrar decides that a person may be heard by way of an oral hearing, the Registrar must give notice of the date, time and place of the hearing, to the person, at least 10 business days before the day the hearing is to begin.

             (3)  The Registrar may adjourn an oral hearing from time to time or from place to place by notifying the person.

             (4)  The Registrar may hold an oral hearing in which:

                     (a)  a person appears in person; or

                     (b)  a person participates by telephone or other means of telecommunications that the Registrar reasonably allows.

             (5)  In addition to the Registrar's other powers, the Registrar may direct a person to provide a written summary of submissions.

             (6)  An oral hearing must be conducted with as little formality and technicality, and as quickly, as the requirements of the Act, these Regulations and a proper consideration of the matters before the Registrar, allow.

             (7)  Subject to these Regulations, the Registrar may give a direction that is reasonably necessary for the conduct of the hearing.

             (8)  The Registrar must notify a person who appears at the hearing of the Registrar's decision in relation to the matter.

96  Paragraph 21.24A(b)

After "sub-office", insert "(if any)".

97  Subregulation 21.29(1)

Repeal the subregulation, substitute:

             (1)  For the definition of Convention country in subsection 6(1) of the Act, the following countries are prescribed:

                     (a)  a foreign country that is a signatory to the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force from time to time;

                     (b)  a foreign country that is a full member of the World Trade Organization.

Note 1:       For signatories to the Paris Convention for the Protection of Industrial Property, see www.wipo.int.

Note 2:       For full members of the World Trade Organization, see www.wto.org.

98  Schedule 9 (table items 1 and 3)

Repeal the items, substitute:

99  Schedule 10

Repeal the Schedule.

Schedule 7 -- Amendments relating to transitional provisions

Patents Regulations 1991

1  Before regulation 23.1

Insert:

Part 1 -- General

2  At the end of Chapter 23

Add:

Part 2 -- Amendments made by particular instruments

23.36   Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

             (1)  The amendments of these Regulations made by the items of Schedule 1 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) apply as set out in the following table.

             (2)  The amendments of these Regulations made by the items of Part 1 of Schedule 3 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) apply as set out in the following table.

             (3)  The amendment of these Regulations made by item 14 of Schedule 4 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) applies in relation to a charge that:

                     (a)  is laid against a registered patent attorney on or after 15 April 2013; and

                     (b)  alleges the commission of a serious offence.

             (4)  The amendments of these Regulations made by the items of Part 2 of Schedule 6 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) apply as set out in the following table.

             (5)  The amendments of these Regulations made by the items of Part 2 of Schedule 6 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) do not apply as set out in the following table.

             (6)  Regulation 8.3, as continued in force in accordance with this regulation, is amended by omitting subregulation 8.3(2) and inserting:

             (2)  At the end of section 141:

Add:

             (3)  Despite subsection (2), a PCT application is also to be treated as having been withdrawn if Article 11(3) of the PCT ceases to have effect in Australia in relation to the application under Article 24(1)(i) of the PCT.

Note:          This amendment applies in relation to a PCT application that was made before 15 April 2013 and for which a notice of withdrawal was filed on or after 15 April 2013.

Trade Marks Regulations 1995

3  Before regulation 22.1

Insert:

Division 1 -- General

4  At the end of Part 22

Add:

Division 2 -- Amendments made by particular instruments

22.9   Amendments made by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

             (1)  The amendments of these Regulations made by the items of Part 2 of Schedule 3 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) apply as set out in the following table.

             (2)  The amendment of these Regulations made by item 41 of Schedule 4 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) applies in relation to a charge that:

                     (a)  is laid against a registered trade mark attorney on or after 15 April 2013; and

                     (b)  alleges the commission of a serious offence.

             (3)  The amendments of these Regulations made by item 95 of Schedule 6 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) apply in relation to a hearing for which the Registrar issues a hearing notice, or an invitation to be heard, on or after 15 April 2013.

Designs Regulations 2004

5  Before regulation 12.01

Insert:

Part 1 -- General

6  At the end of Chapter 12

Add:

Part 2 -- Amendments made by particular instruments

12.05   Amendments made by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

                   The amendments of these Regulations made by item 3 of Schedule 6 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) , other than the insertion of new subregulation 11.22(1), apply in relation to a hearing for which the Registrar issues a hearing notice, or an invitation to be heard, on or after 15 April 2013.