Commonwealth Numbered Regulations

PATENTS AMENDMENT REGULATIONS 1998 (No. 10) 1998 No. 345 - SCHEDULE 1

Schedule 1 Amendment of Patents Regulations 1991 (regulation 3) (1) Regulation
1.3, definition of patent attorney
omit (2) Regulation 1.3
insert Disciplinary Tribunal means the Patent and Trade Marks Attorneys
Disciplinary Tribunal established under regulation 20.41. (3) Regulation 20.1,
definition of Board
omit
established by subregulation 20.32 (1) (4) After regulation 20.2
insert 20.2A Accreditation of courses of study

(1) The Board may accredit a course of study, provided by an institution,
that:

   (a)  achieves the outcome stated for a topic group mentioned in Schedule 5;
        and

   (b)  includes the topics mentioned for the topic group.

(2) In considering whether to accredit a course, the Board must consider
information provided by the institution.

(3) If the institution gives the Board sufficient information to decide
whether the course achieves the outcome stated for a topic group mentioned in
Schedule 5, the Board must decide whether to accredit the course:

   (a)  within 2 months after receiving the information; or

   (b)  if the Board asks for more information Ñ within 2 months after
        receiving that information.

(4) Accreditation is for 5 years.

(5) However, the Board may revoke an accreditation if:

   (a)  changes are made to the course; and

   (b)  the Board decides that the course no longer achieves the outcome
        stated for the topic group.

(6) If an institution intends to change an accredited course, it must tell the
Board in writing. 20.2B Provisional accreditation

(1) The Board may provisionally accredit a course if:

   (a)  the institution has sought accreditation for the course; and

   (b)  the information provided by the institution shows that the course
        includes the topics mentioned for a topic group; and

   (c)  the Board has not fully considered the course in time for the start of
        an academic semester.

(2) Provisional accreditation is for the duration of the course that starts
after the course is provisionally accredited.

(3) The Board may provisionally accredit a changed course if:

   (a)  the change to the course might remove from its scope some topics
        mentioned in Schedule 5; and

   (b)  the Board considers that the changed course achieves the outcome
        stated for the topic group mentioned in Schedule 5. (5) Regulation
        20.3
substitute 20.3 Requirements for registration

(1) For paragraph 198 (4) (b) of the Act, the qualifications are:

   (a)  for each topic group mentioned in Schedule 5 Ñ a pass in:

        (i)    a course of study, that includes the subject matter in the
               topic group, accredited by the Board; or

        (ii)   the examination conducted by the Board; and

   (b)  an award or the entitlement to an award of a qualification mentioned
        in Schedule 6.

(2) For paragraph (1) (a), an exemption under regulation 20.13 is taken to be
a pass in the topic group for which the exemption is granted.

(3) For paragraph 198 (4) (c) of the Act, the person must be employed:

   (a)  in any of the following capacities:

        (i)    as a technical assistant in a patent attorney's practice;

        (ii)   in employment in a company practising in patent matters on
               behalf of the company or a related company within the meaning
               of the Corporations Law;

        (iii)  in the Patent Office as an examiner of patents under the Act or
               the 1952 Act; and

   (b)  for either:

        (i)    1 year continuously; or

        (ii)   at least 1 year within 2 continuous years.

(4) For paragraph 198 (4) (e) of the Act, an offence against the Act, the
Designs Act 1906 or the Trade Marks Act 1995 is a prescribed offence.

(5) For paragraph 198 (4) (f) of the Act, an offence of dishonesty for which
the maximum penalty is imprisonment for at least 2 years is a prescribed
offence. 20.3A Currency of pass or exemption

(1) For paragraph 20.3 (1) (a), a pass in a topic group or an exemption under
regulation 20.13 remains current for the purpose of completing topic groups A,
B, C and D or topic groups E, F, G, H and I:

   (a)  if the institution has a policy on time periods to complete courses of
        study Ñ for the period that accords with that policy; or

   (b)  for the Board, or if the institution has no policy Ñ for 5 years from
        the year in which the circumstances under subregulation (2) or (3)
        happen.

(2) For topic groups A, B, C and D, the candidate must:

   (a)  have passed the first examination in a subject in 1 of the topic
        groups; or

   (b)  have been exempted under regulation 20.13 from having to pass a
        subject in the topic group.

(3) For topic groups E, F, G, H and I, the candidate must:

   (a)  have completed topic groups A, B, C and D; and

   (b)  either:

        (i)    have passed the first examination in a subject in 1 of the
               topic groups; or

        (ii)   have been exempted under regulation 20.13 from having to pass a
               subject in the topic group. (6) Paragraph 20.4 (b)
omit (7) Paragraph 20.4 (c)
substitute

   (c)  a written statement by the Board that the person has met the
        requirements of paragraph 198 (4) (b) of the Act; and (8) Paragraph
        20.4 (e)
substitute

   (e)  a statutory declaration by the person that the person:

        (i)    has not committed an offence prescribed by subregulation 20.3
               (4); and

        (ii)   is not under sentence of imprisonment for an offence prescribed
               by subregulation 20.3 (5); and

   (f)  a statutory declaration, by another person, that the person is of good
        fame, integrity and character; and

   (g)  the fee mentioned in item 4 of Part 1 of Schedule 7. (9) Regulation
        20.6, heading
substitute 20.6 Board examinations (10) Subregulation 20.6 (1)
substitute

(1) The Board may hold examinations for topic groups mentioned in Schedule 5.
(11) Regulation 20.7
substitute 20.7 Time for holding Board examinations

(1) The Board must arrange to publish in the Official Journal adequate notice
of:

   (a)  the time of each examination it holds and the place where it is to be
        held; and

   (b)  the deadline for applications for admission to sit for each
        examination it holds.

(2) Subregulation (1) does not apply to a supplementary examination under
regulation 20.12 (Supplementary Board examination). (12) Regulation 20.8,
heading
substitute 20.8 Examinable subject matter (13) Paragraph 20.8 (a)
substitute

   (a)  syllabus for the examinations in the relevant topic groups mentioned
        in Schedule 5; and (14) Regulation 20.9, heading
substitute 20.9 Admission to sit for a Board examination (15) Subregulation
20.9 (2)
substitute

(2) A person is not eligible to sit for an examination conducted by the Board
in topic group E, F, G, H or I of Schedule 5 unless the person has completed,
or has been exempted from completing, topic groups A, B, C and D of Schedule
5. (16) Regulation 20.10, heading
substitute 20.10 Notification of Board examination results (17) Regulation
20.11
substitute 20.11 Reasons for failure of Board examination

(1) A candidate who fails an examination conducted by the Board may apply to
the Board in the approved form within 1 month after being told of the failure
for a report of the reasons for the failure.

(2) For subregulation (1), a report may be given by:

   (a)  the Board; or

   (b)  if the Board approves Ñ the examiner appointed under subregulation
        20.6 (2). (18) Regulation 20.12, heading
substitute 20.12 Supplementary Board examination (19) After subregulation
20.12 (2)
insert

(3) For an application under paragraph (2) (a), the Board may take account of
an examiner's comments on the candidate's performance.

(4) An application under paragraph (2) (b) must be accompanied by evidence:

   (a)  of the reason for failing to sit the examination; and

   (b)  that was obtained at the time of the illness or the occurrence of the
        events giving rise to the other reason. (20) Paragraph 20.13 (2) (b)
substitute

   (b)  the person gives the Board enough information for the Board to be
        satisfied under paragraph (c); and

   (c)  the Board is satisfied that:

        (i)    the person has passed a course of study at a satisfactory
               level; and

        (ii)   the course of study has outcomes that are the same as, or
               similar to, those of an accredited course for the topic group
               for which the exemption is sought. (21) Subregulation 20.13 (3)
omit (22) Paragraph 20.14 (2) (b)
omit everything after
postgraduate
insert
award of an Australian tertiary institution in a field of technology that
contains potentially patentable subject matter. (23) Regulation 20.15, heading
substitute 20.15 Approval of academic qualifications (24) Regulation 20.15
omit
must give to a person a certificate that the person has a qualification
specified in Schedule 6
insert
may approve a qualification mentioned in Schedule 6 for a person (25)
Paragraph 20.15 (b)
substitute

   (b)  the application has with it:

        (i)    evidence that the person has the qualification; and

        (ii)   the original or a certified copy of an academic record that
               shows the units that make up the qualification; and (26)
               Regulation 20.16
substitute 20.16 Advice of completion of examinable subjects and of academic
qualifications
The Board must give to a person a written statement that the person has the
qualifications mentioned in subregulation 20.3 (1) if:

   (a)  the person applies in the approved form; and

   (b)  there are reasonable grounds for believing that the person has the
        qualifications. (27) Chapter 20, Part 2, Division 3, heading
substitute Division 3 Rights of registered patent attorneys (28) Paragraph
20.19 (a)
substitute

   (a)  the person pays the fees mentioned in:

        (i)    regulation 20.18 (annual registration fee); and

        (ii)   item 5 or 6 of Part 1 of Schedule 7; and (29) Part 3, after
               regulation 20.19
insert 20.19A Voluntary removal of name from register

(1) On written application by a registered patent attorney, the Designated
Manager may:

   (a)  remove the attorney's name from the Register of Patent Attorneys; or

   (b)  within a period determined by the Designated Manager Ñ restore the
        attorney's name to the register on payment of:

        (i)    the annual registration fee payable for the year in which the
               reinstatement is made; and

        (ii)   the fee mentioned in item 7 of Part 1 of Schedule 7.

(2) For paragraph (1) (b) the period must not be more than 3 years. (30)
Regulation 20.21, heading
substitute 20.21 Authorisation to bring proceedings against a registered
patent attorney (31) Regulation 20.32, heading
substitute 20.32 Constitution of Board (Act, s 227A) (32) Subregulation 20.32
(1)
omit (33) Subregulation 20.32 (2)
renumber as regulation 20.32 (34) Regulation 20.34
substitute 20.34 Term of office of Board members
The Minister may appoint a member of the Board for a term of up to 3 years.
(35) Chapter 20, Part 5, Division 2, heading
substitute Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal
(36) After regulation 23.26
insert 23.27 Professional Standards Board for Patent and Trade Marks Attorneys

(1) In this regulation and regulation 23.28: new Board means the Professional
Standards Board for Patent and Trade Marks Attorneys. new Chapter 20 means
Chapter 20 of the Patents Regulations as in force on and after 1 April 1998.
old Board means the Patent Attorneys Professional Standards Board:

   (a)  established under Chapter 20 of the Patents Regulations before 1 April
        1998; and

   (b)  as constituted at any time before that date. old Chapter 20 means
        Chapter 20 of the Patents Regulations as in force before 1 April 1998.
        unfinished business means anything that could have been done by the
        old Board under old Chapter 20 about an application.

(2) This regulation applies to an application (including anything accompanying
the application) made under old Chapter 20 if:

   (a)  the application was made before 1 April 1998; and

   (b)  unfinished business was not done before that date.

(3) The application is taken to have been made under new Chapter 20.

(4) The unfinished business may be finished by the new Board under new Chapter
20.

(5) Any act done, or decision made, by the old Board under old Chapter 20 has
effect as if the act had been done, or decision had been made, by the new
Board.

(6) Each certificate given by the old Board under old Chapter 20 is as valid
as it would be if it had been given by the new Board under new Chapter 20.
23.28 Continuing effect of certain complaints

(1) This regulation applies to a complaint in writing to the old Board made
under Part 4 of old Chapter 20 if:

   (a)  the complaint was made before 1 April 1998; and

   (b)  unfinished business was not done before that date. Note The terms old
        Board, old Chapter 20 and unfinished business are defined in
        regulation 23.27.

(2) The unfinished business may be finished by the new Board under Part 4 of
new Chapter 20. Note The terms new Board and new Chapter 20 are defined in
regulation 23.27.

(3) Any reply or further information sought by the old Board under regulation
20.20, but not given to the old Board before 1 April 1998, must be given to
the new Board under regulation 20.20 as if the reply or further information
had been sought by the new Board. 23.29 Patent attorney registration
A person who was, on 26 January 1999, registered as a patent attorney under
section 198 of the Act as in force on that date is taken to be registered
under that section as in force on 27 January 1999. 23.30 Patent attorney
qualifications and employment requirements

(1) A person who met the requirements of paragraph 198 (2) (c) of the Act as
in force on 26 January 1999 is taken to meet the requirements of paragraph
20.3 (1) (a).

(2) A person who met the requirements of paragraph 198 (2) (d) of the Act as
in force on 26 January 1999 is taken to meet the requirements of paragraph
20.3 (1) (b).

(3) A person who met the requirements of paragraph 198 (2) (e) of the Act as
in force on 26 January 1999 is taken to meet the requirements of subregulation
20.3 (3).

(4) A period of employment that met the requirements of paragraph 20.3 (d) as
in force on 26 January 1999 can be counted as part of a period of employment
for paragraph 20.3 (3) (b). 23.31 Patent attorney examination requirements

(1) For a person who passed an examination, or was exempted from having to
pass the examination, for a subject mentioned in item 1, 2, 3 or 4 of Schedule
5 as in force on 26 January 1999, the period of 5 years for paragraph 20.3A
(1) (b) is taken to commence on 27 January 1999.

(2) For a person who passed an examination, or was exempted from having to
pass the examination, for a subject mentioned in item 5, 6, 7 or 8 of Schedule
5 as in force on 26 January 1999, the period of 5 years for paragraph 20.3A
(1) (b) is taken to commence on 27 January 1999.

(3) For a person who:

   (a)  was exempted from having to pass an examination for the subjects
        mentioned in items 5, 6, 7 and 8 of Schedule 5 as in force on 26
        January 1999; and

   (b)  had not sat for an examination for a subject mentioned in item 1, 2, 3
        or 4 of Schedule 5 as in force on 26 January 1999;
the period of 5 years for paragraph 20.3A (1) (b) is taken to commence when
the person meets the requirements for registration as a trade marks attorney.

(4) Subregulation (5) applies to a person who has passed an examination, or
been exempted from having to pass the examination, for at least 1 subject
mentioned in Schedule 5 as in force on 26 January 1999.

(5) A pass in, or an exemption from having to pass, an examination for a
subject mentioned in column 1 of the following table is taken to be a pass for
paragraph 20.3A (1) (a) in a topic group mentioned in column 2 of the table:
Column 1         Column 2

Subject          Topic group

Legal Process    Group A Ñ Legal process and overview of intellectual 

property Patent Attorneys' Practice, Part 2
Group B Ñ Professional conduct Trade Marks law of Australia and the Practice
of the Trade Marks
Office          Group C Ñ Trade mark law
Patent Attorneys' Practice, Part 1 and Patent Attorneys' Practice,
Part 2          Group D Ñ Trade mark practice
Patent law of Australia and the Practice of the Patent Office
Group E Ñ Patent law Patent Attorneys' Practice, Part 1 and Patent Attorneys'
Practice,
Part 2          Group F Ñ Patent system
Preparation of Specifications
Group G Ñ Drafting patent specifications Validity and Infringement of Patents
Group H Ñ Interpretation and validity of patent
specifications Designs Law and Related Intellectual Property Laws of Australia
and the Practice of the Designs Office
Group I Ñ Designs (37) Schedule 5
substitute Schedule 5 Prescribed topics (regulations 20.2A, 20.2B, 20.3, 20.6,
20.8, 20.9 and 20.16) General outcome
The overall objective of a course of study is for a student to have an
appropriate level of:

   (a)  knowledge and practical application so that the student can give
        advice about applicable categories of protection for particular
        activities; and

   (b)  appreciation of the advantages of each form of protection for a
        client; and

   (c)  understanding of how to get and maintain appropriate protection for a
        client; and

   (d)  understanding of the required standard of professional conduct. Group
        A Legal process and overview of intellectual property Outcome
An understanding of the Australian legal system and how intellectual property
rights may be protected. Topics 1. The Australian legal system, including:

   (a)  appeal or review procedure;

   (b)  Parliament;

   (c)  the courts;

   (d)  precedent;

   (e)  statutory interpretation. 2. Overview of intellectual property rights:

   (a)  patents;

   (b)  trade marks;

   (c)  designs;

   (d)  copyright;

   (e)  circuit layouts;

   (f)  plant breeders' rights;

   (g)  confidential information and trade secrets;

   (h)  trade practices and anti-competitive practices;

        (i)    international intellectual property treaties. Group B
               Professional conduct Outcome
An understanding of the rights, privileges and responsibilities of a patent or
trade mark attorney. Topics

   (a)  conflict of interest;

   (b)  privilege;

   (c)  confidentiality;

   (d)  professional liability and negligence;

   (e)  code of conduct;

   (f)  maintenance of rights and monitoring systems;

   (g)  fiduciary obligations to clients. Group C Trade mark law Outcome
An understanding of the principles of trade marks and the trade mark system in
Australia. Topics

   (a)  passing off and unfair competition;

   (b)  advice on registrability;

   (c)  comparison of business names and trade marks;

   (d)  marks excluded from registration;

   (e)  other provisions for trade indicia protection:

        (i)    Olympic insignia legislation;

        (ii)   domain names;

        (iii)  geographical indications;

   (f)  criteria that affect registrability:

        (i)    distinctiveness;

        (ii)   deception and confusion;

   (g)  ownership Ñ authorship of trade marks;

   (h)  use:

        (i)    intention to use;

        (ii)   honest concurrent use;

        (iii)  prior continuous use;

        (i)    protection:

        (i)    infringement;

        (ii)   well known marks. Group D Trade mark practice Outcome
Ability to advise and to handle the interests of a client in prosecution and
maintenance of trade mark applications, including advice on the desirability
of seeking trade mark protection and provision of alternative protection in
Australia and other countries. Topics

   (a)  classification systems;

   (b)  searching;

   (c)  types of application and registration;

   (d)  trade marks office practice and procedure:

        (i)    filing;

        (ii)   examination;

        (iii)  hearings;

        (iv)   opposition;

        (v)    evidence;

        (vi)   extension of time;

   (e)  removal for non-use;

   (f)  rectification;

   (g)  registration of security interests;

   (h)  border controls;

        (i)    exploitation:

        (i)    assignment;

        (ii)   licensing;

        (iii)  parallel imports;

        (iv)   managing a trade marks portfolio;

   (j)  misuse and criminal sanctions;

   (k)  international:

        (i)    treaties and conventions;

        (ii)   regional systems (eg CTM);

        (iii)  differences between systems (including requirements to use,
               first to file, first to use, post-acceptance, pre-acceptance,
               registration opposition and renewal requirements);

        (iv)   other classification systems;

        (v)    unacceptable trade marks Ñ restrictions on registrability;

        (vi)   practical differences (eg legalised and notarised documents,
               powers of attorneys). Group E Patent law Outcome
An understanding of the principles of patents and the patent system in
Australia. Topics

   (a)  subject matter:

        (i)    manner of manufacture;

        (ii)   newness;

        (iii)  novelty;

        (iv)   inventive step;

        (v)    secret use;

        (vi)   exclusions from patentability;

        (vii)  utility;

   (b)  section 40 (specifications):

        (i)    description;

        (ii)   claims;

        (iii)  fair basis;

   (c)  infringement;

   (d)  inventorship;

   (e)  ownership;

   (f)  breach of confidence. Group F Patent system Outcome
Ability to advise and to handle the interests of a client in prosecution and
maintenance of a patent application, including advice on the desirability of
seeking patent protection and provision of alternative protection in Australia
and other countries. Topics

   (a)  types of application:

        (i)    provisional;

        (ii)   complete;

        (iii)  divisional;

        (iv)   patent of addition;

        (v)    Convention;

        (vi)   priority dates;

   (b)  Patent Office practice;

   (c)  amendment;

   (d)  opposition;

   (e)  re-examination;

   (f)  maintenance;

   (g)  extension of term;

   (h)  extension of time;

        (i)    revocation;

   (j)  treaties and conventions, including:

        (i)    Patent Cooperation Treaty;

        (ii)   Budapest Treaty;

        (iii)  Paris Convention;

   (k)  searching;

   (l)  assignment;

   (m)  licensing;

   (n)  compulsory licences;

   (o)  Crown use;

   (p)  restrictions on exploitation:

        (i)    Patents Act 1990;

        (ii)   Trade Practices Act 1974;

   (q)  circuit layout legislation and practice;

   (r)  plant protection legislation and practice;

   (s)  patentability in other countries;

   (t)  patent procedure in other countries, particularly major trading
        parties (eg New Zealand, United States of America, European Community,
        People's Republic of China, Japan);

   (u)  petty patents. Group G Drafting patent specifications Outcome
Ability to obtain relevant information about an invention and from that, given
the prior art, draft a specification to accompany a provisional application, a
standard complete application, an international application and a petty patent
application. Group H Interpretation and validity of patent specifications
Outcome
Ability to express an understanding of a patent specification and what it
covers for the purpose of advising on infringement, validity over given prior
art, section 40 of the Act and other grounds of revocation and amendment.
Group I Designs Outcome
Ability to advise and to handle the interests of a client in prosecution and
maintenance of a design application, including advice on the desirability of
seeking design protection and provision of alternative protection in Australia
and other countries. Topics

   (a)  registrability;

   (b)  newness;

   (c)  registration procedure;

   (d)  maintenance;

   (e)  office practice;

   (f)  third party objection;

   (g)  infringement;

   (h)  expunction;

        (i)    copyright;

   (j)  international aspects of design practice. (38) Schedule 6, items 1 and
        2
substitute
1    A degree, diploma or postgraduate award of an Australian tertiary 

institution in a field of technology that contains potentially
patentable subject matter
2    An award of an overseas education institution in a field of 

technology that contains potentially patentable subject matter (39) Schedule
7, Part 1
substitute
Part 1       Patent attorneys

Item         Matter                         Fee ($)

1            Applying for admission to sit for an examination 

             conducted by the Board          400

2            Applying for grant of a supplementary examination 

             conducted by the Board          200

3            A report of reasons for failure of an examination 

             conducted by the Board          200

4            Applying for registration as a patent attorney

200
5            Annual registration fee payable by a patent attorney

250
6            Annual registration fee payable for combined registration 

as a patent attorney and trade marks attorney
320
7            Applying under regulation 20.19 or 20.19A

160 (40) Additional amendments provision
omit
insert regulation 20.1, definition of unprofessional conduct (twice)
patent
registered patent regulation 20.1, definition of unsatisfactory conduct
patent
registered patent paragraph 20.4 (a)
an Australian citizen
ordinarily resident in Australia regulation 20.5 (twice)
Commissioner
Designated Manager paragraph 20.8 (b)
books
reading and study material subregulation 20.13 (1)
pass an examination.
satisfy all or some of the requirements of a
topic group mentioned in Schedule 5. regulation 20.17
patent
registered patent subregulations 20.18 (1) and (2)
patent attorney
registered patent attorney to whom regulation
20.19A does not apply subregulations 20.18 (2) and (3)
Commissioner
Designated Manager subregulation 20.18 (3)
patent
registered patent regulation 20.19 (twice)
Commissioner
Designated Manager subregulation 20.20 (1)
patent
registered patent paragraph 20.20 (3) (a)
patent
registered patent subregulations 20.20 (5), (6) and (7)
patent
registered patent subregulations 20.21 (1), (2), (6) and (7)
patent
registered patent subregulations 20.22 (1), (2) and (3)
patent
registered patent paragraphs 20.23 (1) (a) and (b)
patent
registered patent subregulations 20.23 (2), (3), (4), (5), (6), (7), (8) and
(9)
patent
registered patent paragraph 20.23 (6) (d)
Commissioner
Designated Manager subregulations 20.23 (7) and (8)
Commissioner
Designated Manager subregulation 20.25 (1)
a patent
a registered patent subregulations 20.25 (2) (twice) and (3)
patent
registered patent subregulations 20.29 (1) and (2)
patent
registered patent subregulations 20.30 (2) and (3)
patent
registered patent paragraph 22.26 (2) (b)
patent
registered patent Schedule 8, Part 1, items 12 and 13
patent
registered patent Schedule 8, Part 2, items 1, 2, 3 and 4
Patent Attorneys Disciplinary Tribunal
Disciplinary Tribunal

provision
after
insert regulation 20.1, definition of Institute
Patent
and Trade Mark regulation 20.10
an examination
conducted by the Board paragraph 20.32 (2) (c)
2
suitably qualified regulation 20.41
Patent
and Trade Marks