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PATENTS AMENDMENT REGULATIONS 2002 (NO. 1) 2002 NO. 59
EXPLANATORY STATEMENTSTATUTORY RULES 2002 No. 59
Minute No. 4 of 2002 - Minister for Industry, Tourism and Resources
Subject- Patents Act 1990
Patents Amendment Regulations 2002 (No. 1)
Section 228 of the Patents Act 1990 (the Act) allows the Governor-General to 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.
Paragraph 228(1)(e) 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, where relevant, 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 purpose of the Regulations is to:
• make the amendments to the Patents Regulations 1991 required to implement the Patents Amendment Act 2001;
• implement a 12 month grace period for patents;
• put into effect a decision of the PCT Union Assembly to extend a time period prescribed in the PCT; and
• make several minor and technical amendments.
The amendments relating to the ongoing obligation for applicants and patent owners to disclose the results of documentary searches (Items 16 and 21 of Schedule 1) were recommended by the Intellectual Property and Competition Review Committee (IPCRC) and accepted by the Government. The Office of Regulation Review has advised that for these amendments, the IPCRC report satisfies the Government's best practice processes for regulation.
Details of the Regulations are in the Attachment.
The Regulations commence on 1 April 2002.
Authority: Section 228 of the Patents Act 1990
Attachment
Patents Amendment Regulations 2002 (No. 1)
Details of the regulations are as follows:
Regulation 1 identifies the regulations as the Patents Amendment Regulations 2002 (No. 1).
Regulation 2 indicates that the regulations commence on 1 April 2002.
Regulation 3 specifies that Schedule 1 amends the Patents Regulations 1991 (the Regulations).
Regulation 4 provides for transitional arrangements in relation to items 3, 19 and 28 of Schedule 1.
Item 1 of Schedule 1 amends subregulation 1.4(2) to specify that the English text of the Patent Cooperation Treaty (PCT) in force for Australia as at 1 April 2002 is the text set out in Schedules 2 (the PCT) and 2A (the Regulations under the PCT) to the Regulations.
Items 2 and 3 of Schedule 1 amend regulation 2.2 to provide for an additional prescribed circumstance - the grace period - for the purposes of subsection 24(1) of the Patents Act 1990 (the Act). The grace period applies during the 12 months prior to the filing date of the complete application. It relates to any publication or use of the invention by, or with the consent of, the patentee, the nominated person or the predecessor in title of those parties. Any such disclosure of the invention will be disregarded for the purpose of deciding whether or not the invention is novel or involves an inventive or innovative step.
Item 4 of Schedule 1 amends subregulation 2.2(2) to make it clear that, although the grace period is a more general circumstance than the other prescribed circumstances, it will not be limited by any of the existing prescribed circumstances. If a disclosure is covered by one of the other prescribed circumstances as well as by the grace period then either circumstance may be relied on, as long as the prescribed periods in subregulations 2.3(1) and (1A) are complied with.
Items 5, 6 and 7 of Schedule 1 provide for the prescribed period for the grace period and make a consequential amendment to subregulation 2.3(1). For the purposes of the grace period a complete application must be filed within 12 months after the first disclosure of the invention.
Item 8 of Schedule 1 inserts some new provisions into regulation 2.3. These new provisions ensure that divisional applications filed under sections 79B or 79C of the Act are encompassed by the circumstances prescribed for subsection 24(1) of the Act.
Item 9 of Schedule 1 corrects an oversight by which a reference to regulation 6A.2 was not included in paragraph 3.2B(1)(d). This item adds regulation 6A.2 to the list of requirements that a complete application for an innovation patent may be required to meet.
Items 10, 11 and 12 of Schedule 1 insert new paragraph 3.2B(1)(h) into subregulation 3.2B(1) and make a consequential amendment to subregulation 3.2B(2). New paragraph 3.2B(1)(h) provides that a divisional application for an innovation patent that is based on a PCT application cannot be granted unless the complete specification of that PCT application is open to public inspection. This provision is needed to give effect to the requirements of subsection 62(3) of the Act.
Items 13 and 14 of Schedule 1 move the current requirement in subregulation 3.4(8) to regulation 3.3 because it is more appropriately placed in this regulation. In addition, item 13 adds new subregulation 3.3(7) which provides that information disclosed in an abstract can, for the purposes of subsection 102(1) of the Act, be considered as matter that is in substance disclosed in the specification as filed. However, this only applies to information disclosed in an abstract that is filed with the complete application.
Item 15 of Schedule 1 replaces paragraph 3.5A(4)(b) with a new provision that prevents a missing part of a specification from being filed after the specification has been accepted.
Item 16 of Schedule 1 inserts new regulation 3.17A. This regulation provides the details for the disclosure of results of documentary searches under subsection 45(3) of the Act.
The results of searches carried out by or on behalf of the applicant or their predecessor in title are required. This includes searches conducted by other patent offices, the applicant's representative or any other third parties. The applicant must inform the Commissioner of the results of the searches at the time they request examination, or within 3 months of the search being completed - whichever is later. As a transitional arrangement, all parties will have until 1 January 2003 to provide the search results.
Item 17 of Schedule 1 amends subregulation 5.8(1A) as a result of the changes made to re-examination by the Patents Amendment Act 2001.
Item 18 of Schedule 1 amends paragraph 5.10(2)(c) to make it clear that it is a copy of the application that must be served on the other party, not the original version of the application.
Item 19 of Schedule 1 amends subregulation 8.1(4) as a result of the amendments to the text of the PCT made by item 35.
Item 20 of Schedule 1 amends regulation 9.1 as a consequence of the changes made to re-examination by the Patents Amendment Act.
Item 21 of Schedule 1 inserts new regulation 9A.2A. This regulation will provide the details for the disclosure of the results of documentary searches under section 101D of the Act.
The results of searches carried out by or on behalf of the patentee or their predecessor in title are required. This includes searches conducted by other patent offices, the patentee's representative or any other third parties. The patentee must inform the Commissioner of the results of the searches within the time periods specified in new subregulation 9A.2A(2).
Items 22 and 23 of Schedule 1 amend regulation 9A.4 to allow the period for examination of an innovation patent to be extended by up to 3 months if an objection is raised based on information in search results provided under section 101D of the Act or in a notice lodged under subsection 28(1) of the Act. Regulation 9A.4 provides that the examination period ends at whichever is the latest of the specified periods. Therefore, this 3 month extension will only apply if it would end later than the other periods specified in regulation 9A.4.
Item 24 of Schedule 1 deletes subregulation 13.3(2) because, while this provision was appropriate when continuation fees were payable from the second anniversary of a patent application, it is not appropriate under current fee arrangements whereby applicants are not liable for continuation fees until the fifth anniversary.
Items 25, 26 and 27 of Schedule 1 insert new paragraph 13.4(1)(l) into subregulation 13.4(1) and make a consequential amendment to subregulation 13.4(2). Paragraph 13.4(1)(l) allows the final date for acceptance of a standard patent application to be extended by up to 3 months if an objection is raised based on information in search results provided under subsection 45(3) of the Act or in a notice lodged under subsection 27(1) of the Act.
Subregulation 13.4(2) provides that the final date for acceptance is whichever is the latest of the specified periods. Therefore, this 3 month extension will only apply if it would end later than the other periods specified in subregulation 13.4(1).
Item 28 of Schedule 1 provides that a renewal fee is taken to be paid if it is due within 1 month from the grant of a divisional application for an innovation patent filed under section 79C of the Act. This is because the applicant will not know exactly when the patent is going to be granted and may not have sufficient warning to pay the renewal fee if it is due very soon after grant.
Item 29 of Schedule 1 provides a prescribed period for the purposes of paragraph 143A(c) of the Act.
Item 30 of Schedule 1 extends the period for making a request under Article 15(5) of the PCT from 3 months to 10 months.
Item 31 of Schedule 1 amends paragraph 22.2C(1)(a) as a consequence of the change to Schedule 7 to the Regulations made by item 40.
Item 32 of Schedule 1 amends subregulation 22.11(1) to include a reference to subsection 223(2A) of the Act, which was inserted by the Patents Amendment Act.
Item 33 of Schedule 1 inserts two new subregulations into regulation 22.11. New subregulation 22.11(1C) prescribes the period in which an application for an extension of time under subsection 223(2A) of the Act may be filed. New subregulation 22.11(1D) prescribes the maximum length of an extension of time under subsection 223(2A).
Item 34 of Schedule 1 amends Schedule 2 to the Regulations to update the modification dates of the PCT.
Item 35 of Schedule 1 amends Article 22(1) of the PCT in Schedule 2 to the Regulations to change the time limit in which certain documents must be filed with each designated Office from 20 months to 30 months. The decision to make this amendment to the PCT was made by the PCT Union Assembly at its 30th session in Geneva from 24 September to 3 October 2001.
Item 36 of Schedule 1 amends Schedule 2A to the Regulations to update the adoption and amendment dates of the Regulations under the PCT.
Items 37, 38 and 39 of Schedule 1 amend Rule 90bis of the Regulations under the PCT in Schedule 2A to the Regulations as a result of the amendments to Article 22(1) of the PCT. The decision to make these amendments was also made by the PCT Union Assembly at its 30th session in Geneva from 24 September to 3 October 2001.
Item 40 of Schedule 1 amends Part 2 of Schedule 7 to the Regulations to provide the prescribed fees for extensions of time under new subsection 223(2A) of the Act.