Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 2001 (NO. 3) 2001 NO. 345

STATUTORY RULES 2001 No. 345

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

Patents Act 1990

Patents Amendment Regulations 2001 (No. 3)

Section 228 of the Patents Act 1990 (the Act) provides that the Governor-General may make regulations for the purposes of the Act, to prescribe matters necessary or convenient to be prescribed for carrying out or giving effect to the Act and for the conduct of any business relating to the Patent Office.

The regulations amend, inter alia, the offence-creating provisions set out in the Patents Regulations 1991 (the Regulations) consequentially on the application of the Criminal Code to all Commonwealth legislation from 15 December 2001. The Criminal Code is contained in a Schedule to the Criminal Code Act 1995. Its purpose is to codify the general principles of criminal responsibility under laws of the Commonwealth.

The Criminal Code provides that, unless otherwise specified in the relevant legislation, in order for an offence to be proved an accused must not only commit the physical elements of the offence but do so with the relevant fault element or elements, namely intention, knowledge, recklessness or negligence. An offence that does not require proof of the relevant fault element or elements is an offence of strict liability. The Criminal Code provides that in order for an offence to be an offence of strict liability it must be expressly stated to be such an offence.

Paragraph 228(1)(e) of the Act empowers the Governor-General to make regulations for the purposes of carrying out or giving effect to the Patent Cooperation Treaty (PCT) whether in relation to PCT applications or otherwise. Subsection 228(5) of the Act requires the Governor-General to make regulations setting out the English text of the PCT as in force for Australia on the commencing day of the Act, and afterwards such regulations as are necessary to keep that text in an up-to-date form. The text of the PCT also includes the international regulations made under the PCT (the PCT Rules). Schedule 2A to the Regulations sets out the English text of the PCT Rules.

The PCT provides for the filing of a single international patent application which has the same effect as a national application filed in each of the designated member countries. An applicant seeking patent protection may file one application and request protection in as many member countries as desired. Under the PCT a fee is payable for each country designated in an international application, up to a maximum of 6 designations. If more than 6 designations are made, no further designation fee is payable.

The PCT Union Assembly (the PCT Assembly) at its 30^th session in Geneva from 24 September to 3 October 2001 decided to reduce the total maximum number of PCT designations after which no further payment is necessary from 6 to 5 designations. This will reduce the maximum designation fee that an applicant must pay, if they designate more than 5 countries.

The regulations amend the Regulations to:

•       ensure, on application of the Criminal Code, that several offence provisions in the Regulations continue to operate in the same way as they do at present (items 3, 4 and 8 of Schedule 1);

•       remove or amend offences that were of strict liability to make them offences that would require the fault element of intention to be proved (items 3, 5 and 8 of Schedule 1);

•       apply strict liability to specific physical elements of offences, relating to the legal status of persons or actions, so that an offender cannot use mistake or ignorance of the law as an excuse (item 8 of Schedule 1) -- the prosecution is still be obliged to prove those physical elements;

•       allow the Patent and Trade Marks Attorneys Disciplinary Tribunal to require a person summoned to appear before it to produce articles mentioned in the summons (items 6 and 7 of Schedule 1);

•       apply current drafting practice by converting monetary penalties to penalty units (items 3, 5, and 8 of Schedule 1);

•       implement the decision of the PCT Assembly to reduce the maximum fee for designations under the PCT (item 3 of Schedule 2);

•       amend the English text of the PCT Rules to include the changes to the maximum fee for designations (item 2 of Schedule 2);

•       provide that the English text of the PCT in force for Australia as at 1 January 2002 is the text set out in Schedules 2 and 2A to the Regulations (item 1 of Schedule 2); and

•       correct several ambiguous references in the Regulations (items 1 and 2 of Schedule 1).

Details of the regulations may be found in the Attachment.

Regulations 1, 2, and 3 and Schedule 1 commence on gazettal of the regulations. Schedule 2 commences on 1 January 2002.

Patents Amendment Regulations 2001 (No. 3)

Details of the regulations are as follows:

Regulation 1 identifies the amending regulations as the Patent Amendment Regulations 2001 (No.3).

Regulation 2 specifies that Regulations 1, 2 and 3 and Schedule 1 of the regulations commence on gazettal, and that Schedule 2 to the proposed regulations commences on
1 January 2002.

Regulation 3 specifies that Schedules 1 and 2 amend the Patents Regulations 1991 (the Regulations).

Item 1 of Schedule 1 replaces the ambiguous reference to paragraphs 4.3 (c), (d), and (e) in paragraph 8.4(2)(a) of the Regulations with the correct reference to paragraphs 4.3 (1) (c), (d) and (e).

Item 2 of Schedule 1 replaces the ambiguous reference to regulation 4.3 in paragraph 8.4(2)(c) of the Regulations with the correct reference to subregulation 4.3 (1).

Item 3 of Schedule 1 substitutes a new subregulation 20.25(4) to remove an offence that is of strict liability, retaining an offence that requires intention to be proved. In addition, the monetary penalty is updated by replacing it with a reference to penalty units. One penalty unit is equivalent to $110 (subsection 4AA(1) of the Crimes Act 1914).

Item 4 of Schedule 1 inserts a new subregulation 20.25(5) restating the defence of reasonable excuse currently set out in subregulation 20.25(4) of the Regulations. This defence is restated as a stand-alone defence in order to avoid the possibility that the words 'without reasonable excuse' might be unintentionally interpreted as an element of the offence required to be proved by the prosecution.

Item 5 of Schedule 1 substitutes a new subregulation 20.27(3) to replace the offence of strict liability of contravening a direction of the Patent and Trade Marks Attorneys Disciplinary Tribunal (Disciplinary Tribunal) relating to a hearing before it, with an offence requiring the prosecution to prove that the defendant intended not to comply with the direction. In addition, the monetary penalty is updated by replacing it with a reference to penalty units.

Items 6 and 7 of Schedule 1 amend subparagraphs 20.29 (1) (a) and (b) of the Regulations to allow the Disciplinary Tribunal to include in its summons of a witness or the registered patent attorney against whom proceedings have been instituted a requirement for the summoned person to produce articles to the Disciplinary Tribunal. Where the attorney is summoned to produce articles, he or she is also be required to appear before the Disciplinary Tribunal to identify the articles.

Item 8 of Schedule 1 substitutes new subregulations 20.30(1), (1A), (2), (2A), (2B), (3) and (3A) for subregulations 20.30(1), 20.30(2) and 20.30(3) of the Regulations -- which provide for offences where a person fails to comply with a summons to appear before the Disciplinary Tribunal (subregulation 20.30(1)); where a witness refuses or fails to make an oath or affirmation, or answer relevant questions (subregulation 20.30(2); and where the registered patent attorney against whom proceedings have been instituted refuses or fails to make an oath or affirmation, or answer relevant questions (subregulation 20.30(3)).

Several changes are made by the proposed amendment to ensure that those offences will generally require proof of intention (i.e. none of them are to continue to be of strict liability). The references in existing subregulations 20.30(1), 20.30(2) and 20.30(3) to failure to act are removed. As a result of the proposed amendments, the prosecution is required to prove that the defendant intended not to comply with a summons to appear before the Disciplinary Tribunal (subregulation 20.30(1)); or that the defendant refused to make an oath or affirmation, or answer relevant questions (subregulation 20.30(2) and 20.30(3)).

Two specific elements of the offence of a witness (other than the registered patent attorney against whom proceedings have been instituted) refusing to make an oath or affirmation, or answer relevant questions (subregulation 20.30(2)) are made elements of strict liability -- proposed new subregulation 20.30(2B). These elements are the circumstance that the defendant is not a registered patent attorney to whom regulation 20.30(3) applies, and the circumstance that the expenses and allowances paid to the person were determined by the Disciplinary Tribunal in accordance with the scales set out in Part 2 of Schedule 8 to the Regulations. Although the prosecution is still obliged to prove those circumstances, it is intended that an offender not be able to use his or her mistake or ignorance of the law as an excuse to the offence.

The existing defences set out in subregulations 20.30(1), 20.30(2) and 20.30(3) of the Regulations are removed, and are restated as stand-alone defences in new subparagraphs 20.30 (1A)(a) and (b) and new subregulations 20.30 (2A) and (3A). These amendments are to avoid the possibility that the expressions 'without reasonable excuse' or 'unless excused by the Disciplinary Tribunal' might be unintentionally interpreted as an element of those offences required to be proved by the prosecution.

The monetary penalties in subregulations 20.30(1), 20.30(2) and 20.30(3) of the Regulations are updated by replacing them with references to penalty units.

Item 9 of Schedule 1 makes a consequential amendment to subregulation 20.30(4), following the removal from subregulations 20.30(1), 20.30(2) and 20.30(3) of references to failure to act (see item 8 of Schedule 1 above).

Item 1 of Schedule 2 amends subregulation 1.4(2) of the Regulations to specify that the English text of the Patent Cooperation Treaty (the PCT) in force for Australia as at 1 January 2002 will be the text set out in Schedules 2 and 2A to the Regulations.

Item 2 of Schedule 2 amends the Schedule of Fees in Schedule 2A to the Regulations. The entry for item 2(a) in Column 2 of the Schedule of Fees is amended to reduce the total number of designations for which a fee is payable under Rule 4.9(a) of the Regulations under the PCT from 6 to 5 designations.

Item 3 of Schedule 2 substitutes a new item 2 in Part 4 of Schedule 7 to the Regulations to provide that the maximum number of designations under the PCT for which a fee is payable is 5 designations. That maximum fee is 700 Swiss francs.