Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 1999 (NO. 3) 1999 NO. 261

STATUTORY RULES 1999 NO. 261

Issued by the Authority of the Minister for Industry, Science and Resources

Patents Act 1990

Patents Amendment Regulations 1999 (No. 3)

The regulations amend the Patents Regulations 1991 (the Regulations) to:

*       clarify that if the Commissioner of Patents (the Commissioner) determines that a produced document should not be published, the information in that document is also protected from publication;

*       provide that if an extension of time is granted in which to file a complete patent application, the date of any subsequent patent is not also extended;

*       clarify the effect of paragraph 228(2)(t) of the Act;

*       introduce a new fee item to apply if a request for withdrawal or conversion of a patent application is made within 3 weeks of the due date for publication; and

*       provide certainty as to the date of a divisional patent.

Details of the amendments made by these regulations are as follows:

Regulation 1 identifies the regulations as the Patents Amendment Regulations 1999 (No. 3).

Regulation 2 specifies that regulations 1, 2, 3, 4 and Schedule 1 are to commence on gazettal and Schedule 2 is to commence on 1 January 2000.

Regulation 3 specifies that Schedules 1 and 2 amend the Regulations.

Regulation 4 specifies that new paragraphs 6.3(ea) and (eb) of the regulations (Item 2 of Schedule 1) are transitional.

Item 1 of Schedule 1 inserts a new paragraph in subregulation 4.3(2) to clarify that if the Commissioner prescribes a document from being open to public inspection, the sensitive information contained in that document is also protected from publication.

Item 2 of Schedule 1 inserts two new paragraphs in subregulation 6.3. These amendments will provide that if the Commissioner has extended the time for associating a complete application with a provisional application or for making a Convention application, that the date of any subsequent patent will be the date that would have been the date of the patent, had the extension of time not been granted. The amendments prevent the patent holder obtaining a de facto extension of the term of their patent.

Item 3 of Schedule 1 amends subregulation 8.3(1) of the Regulations to include an explanation of the effect of paragraph 228(2)(t) of the Act. The explanation removes the need to refer to the Act to determine the wording of paragraph 228(2)(t).

Item 4 of Schedule 1 inserts two new fee items in Schedule 7 to the Regulations. The fee is to be paid if an applicant requests that a complete application be treated as a provisional application or be withdrawn within 3 weeks of the due date for publication of the application. Abstracts of published applications are distributed on CD-ROM. If a request to convert an application to a provisional application or withdraw an application is made within 3 weeks of the publication date, to prevent publication of the application, the Patent Office must re-create the entire CD-ROM. The proposed fee items represent a partial-cost recovery of the expenses incurred in removing the application abstract from the CD-ROM at this late stage.

Item 1 of Schedule 2 amends regulation 6.3 of the Regulations by substituting the wording "For the purposes of' with "For" to simplify the regulation.

Item 2 of Schedule 2 substitutes existing paragraph 6.3(f) with new paragraph 6.3(f) to provide that the date of a divisional patent will be the date of filing of the first application in a chain of divisional applications. The existing regulation uses an evidentiary test, which has led to some uncertainty. The new regulation removes the uncertainty by replacing the evidentiary test with an objective means of determining the date of the divisional patent.

Item 3 of Schedule 2 inserts a new subregulation to provide certainty as to the date of a patent for existing divisional patents.