Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 2004 (NO. 4) 2004 NO. 395

Subsection 228(1) of the Patents Act 1990 (the Act) provides, in part, that the Governor-General may make regulations, not inconsistent with the Act, prescribing matters required or permitted to be prescribed, or 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.

Paragraphs 228(1)(e) and 228(2)(t) of the Act provide that the Governor-General may 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, and that those regulations can modify the operation of the Act in relation to PCT applications by excluding, varying, or substituting different provisions for, specified provisions of the Act.

The PCT is an international agreement that allows applicants to file patent applications in several member countries by filing a single international application and designating the countries in which protection is required. PCT applications are processed in two stages. The first is the `international phase', in which the application proceeds before various international authorities under the PCT. The second is the `national phase', in which the application proceeds before the Patent Office under the Act. Once the application has entered the national phase in a particular country, it is not affected by any further processing that may happen to the international application in the international phase.

During the international phase, an international preliminary examining authority will, if the applicant demands, carry out an international preliminary examination, and establish an international preliminary examination report (an IPER). The applicant may, during this process, choose to amend their application under the PCT. Any amendments are published in the IPER.

The applicant must enter the `national phase' in Australia in order for an Australian patent to be granted on the application. After national phase entry, the application is treated as a standard patent application under the Act. To process an application in the national phase, it is often necessary to have a copy of any IPER that may have been established prior to national phase entry to ascertain whether and how the application was amended during the international phase.

There can be significant delays between the establishment of an IPER and its receipt in Australia by the Patent Office. This can result in lengthy delays in processing PCT applications in the national phase. At present, there are several hundred patent applications that are affected, and these applications are experiencing delays of up to two years.

The main purpose of these Regulations is to address these delays by establishing a procedure by means of which the affected patent applications can be processed even if the IPER has not been provided to the Patent Office, and to prevent this problem from occurring in the future.

These Regulations amend the Principal Regulations and modify certain provisions in the Act to provide that, when an applicant requests examination of a PCT application in the national phase and the Patent Office is not in receipt of an IPER, the Commissioner of Patents (the Commissioner) may object to acceptance of the patent request and complete specification if certain conditions are met. These are that the applicant demanded international preliminary examination prior to national phase entry; that, at least three months after national phase entry, the Commissioner asked the International Bureau (IB) of the World Intellectual Property Organisation to provide a copy of the IPER; and that the IB advised that the IPER is not available.

Having raised this objection, the Commissioner is not obliged to conduct further substantive examination of the patent application unless and until certain events occur. If a copy of the IPER is provided to the Commissioner, he or she will know whether and to what extent the patent application has been amended, and will be obliged to examine the application on the basis of the amended specification. If the applicant advises the Commissioner of certain matters or elects to abandon any amendments made during the international preliminary examination, the Commissioner will be obliged to examine the patent application on the basis of the unamended specification.

The Regulations introduce similar provisions to deal with requests for expedited examination and voluntary requests for amendment when an IPER has not been provided.

The Regulations additionally amend the Principal Regulations and modify certain provisions in the Act to provide that:

•       amendments made during the international preliminary examination only amend the Australian patent specification if the IPER was established before national phase entry. Other amendments made in the international phase only affect the Australian patent specification if they were made prior to national phase entry;

•       applications for innovation patents cannot be withdrawn in the period between when the application is accepted and when a patent is granted on the application. This will bring the provisions for withdrawal of applications for innovation patents into line with the corresponding provisions for applications for standard patents; and

•       decisions of the Commissioner relating to correction of a patent or the Register of Patents will generally be reviewable by the Administrative Appeals Tribunal.

The Regulations also include some clarifications of a minor nature.

Details of the Regulations are in the Attachment.

The Regulations commence on the date of their notification in the Gazette.

ATTACHMENT

Regulation 1 identifies the Regulations as the Patents Amendment Regulations 2004 (No. 4).

Regulation 2 provides that the Regulations commence on the date of their notification in the Gazette.

Regulation 3 specifies that Schedule 1 to the Regulations amends the Patents Regulations 1991 (the Principal Regulations).

Regulation 4 provides for transitional arrangements. The amendments made by items 2 and 4 of Schedule 1 apply to applications that had not met the requirements of subsection 89(3) of the Patents Act 1990 (the Act) -- in other words, that had not entered the national phase in Australia -- before commencement (subregulation 4(1)). The amendment made by item 3 of Schedule 1 applies to any applications for standard patents that had not been accepted before commencement (subregulation 4(2)). The amendments made by items 5 to 8 of Schedule 1 apply to any request for leave to amend in relation to which the Commissioner of Patents (the Commissioner) had not granted leave to amend under regulation 10.5 and in respect of which the corresponding patent request and complete specification, to which the request for leave to amend relates, had not been accepted under section 49 of the Act prior to commencement (subregulation 4(3)). The amendment made by item 10 of Schedule 1 applies to any application for an innovation patent that had not been accepted before commencement (subregulation 4(4)).

Item 1 of Schedule 1 amends the definition of `International Bureau' in subregulation 1.3(1). This amendment deletes the reference to BIRPI, which has been replaced by the World Intellectual Property Organization (WIPO).

Item 2 of Schedule 1 deletes regulation 8.1B. This regulation is redundant in light of the amendments introduced by item 4 of Schedule 1.

Item 3 of Schedule 1 amends regulation 8.3 of the Principal Regulations to insert several new provisions that will modify the operation of the Act in relation to Patent Cooperation Treaty (PCT) applications by varying and substituting different provisions for specified provisions of the Act. These new provisions essentially enable the Commissioner to commence examination of patent applications when the international preliminary examination report (the IPER) is not available.

New subregulation 8.3(1AA) amends subsection 45(1) of the Act to make it subject to new subsection 45(1AC), which is added by new subregulation 8.3(1AB).

New subregulation 8.3(1AB) amends section 45 of the Act to insert new subsections 45(1AA), (1AB) and (1AC).

Subsection 45(1AA) adds a new matter on which the Commissioner may report when examining PCT applications. This provides that the Commissioner may raise an objection in an examination report under section 45 of the Act if the applicant demanded international preliminary examination before entering the national phase in Australia, the Commissioner asked for a copy of the international preliminary examination report (the IPER) from the International Bureau (the IB) of WIPO at least three months after national phase entry, and the IB advised that the IPER is not available. Reporting on this issue is discretionary rather than mandatory. The Commissioner would only raise this issue when, as a result, there was uncertainty as to the contents of the Australian patent specification resulting from uncertainty as to whether and how the application was amended under the PCT during the international phase.

Subsection 45(1AB) adds a similar matter on which the Commissioner may report, which is applicable when an applicant requests that examination of a PCT application be expedited under subregulation 3.17(2) of the Principal Regulations. In this case, if subsection 45(1AA) does not apply, the Commissioner may raise an objection if a copy of an IPER relating to the application has not been supplied to the Commissioner. There is no requirement to request a copy of the IPER from the IB at least three months after national phase entry, as is the case under subsection 45(1AA). This is consistent with the request that the examination be expedited, as waiting three months would delay examination significantly. Once again, reporting on this issue is discretionary.

Under subsection 45(1AC), if either subsection 45(1AA) or (1AB) apply, the Commissioner is not be required to report under subsection 45(1) (that is, no further examination of the application is required) unless one of three things happen. These are:

•       That a copy of the IPER is provided to the Commissioner. The IPER may be provided by the applicant, or it may come from some other source.

•       That the applicant advises the Commissioner that an international preliminary examination was not demanded, that no amendments were made under Article 34 of the PCT, or that the demand for international preliminary examination was made, or the IPER was established, after the applicant entered national phase in Australia.

•       That the applicant elects to abandon any amendments that may have been made during the international preliminary examination.

New subregulation 8.3(1AC) amends section 45 of the Act to insert a new subsection 45(6) into the Act. This subsection includes definitions of the terms `International Bureau' and `international preliminary examination report'. The definition of `International Bureau' agrees with the definition inserted into subregulation 8.3(1) by item 1. These definitions apply to the Act as modified by these Regulations.

New subregulation 8.3(1AD) amends subsection 48(1) of the Act. This corresponds with the change made to subsection 45(1) of the Act by new subregulation 8.3(1AA), and applies to requests for modified examination.

New subregulation 8.3(1AE) amends section 48 of the Act to insert new subsections 48(1AA), (1AB) and (1AC). These correspond to the new subsections 45(1AA), (1AB) and (1AC) inserted by new subregulation 8.3(1AB), and also apply to requests for modified examination. They operate in the same manner.

New subregulation 8.3(1AF) amends section 48 to insert a new subsection 48(3) into the Act. This subsection includes definitions of the terms `International Bureau' and `international preliminary examination report'. These definitions are identical to those of subsection 45(6) inserted by new subregulation 8.3(1AC).

Item 4 of Schedule 1 amends regulation 8.3 to insert several new provisions that modify the operation of the Act in relation to PCT applications by varying and substituting different provisions for specified provisions of the Act. These amendments essentially ensure that amendments made to the international application in the international phase only amend the Australian patent specification if they were made prior to entering national phase in Australia.

New subregulation 8.3(1BA) amends paragraph 89(5)(a) of the Act to ensure that amendments made in the international phase under Article 19 of the PCT only amend the Australian patent specification during the national phase if the PCT application was amended before the application entered into the national phase in Australia.

New subregulation 8.3(1BB) omits paragraph 89(5)(b) of the Act. The situation otherwise covered by this provision is instead dealt with by new subsection 89(6), which is introduced by new subregulation 8.3(1BD).

New subregulation 8.3(1BC) amends paragraph 89(5)(c) of the Act to ensure that amendments made in the international phase under Rule 91 of the Regulations made under the PCT only amend the Australian patent specification during the national phase if the PCT application was amended before the application entered into the national phase in Australia.

New subregulation 8.3(1BD) amends section 89 of the Act to insert new subsections 89(6) and 89(7).

Under subsection 89(6), amendments made to the international application in the international phase under Article 34 of the PCT only amend the corresponding Australian application if Australia was elected under Chapter II of the PCT (that is, if the applicant in the international phase elected to use the results of the international preliminary examination in relation to Australia), and if the IPER was established before the applicant entered the national phase in Australia. This provision is subject to proposed new subsection 89(7).

Under subsection 89(7), the provisions of subsection 89(6) do not apply in certain circumstances. These are that the Commissioner has reported under any of subsections 45(1AA), 45(1AB), 48(1AA) or 48(1AB), or regulations made for the purpose of section 104 of the Act (namely, under subregulation 10.2(1) as amended by items 5 and 6 of these Regulations) and the applicant either gives the Commissioner the advice that is referred to in either subparagraph 45(1AC)(b)(i), 48(1AC)(b)(i) or regulations made for the purpose of section 104 of the Act (namely, under subparagraph 10.2(3)(c)(ii) as amended by item 7 of these Regulations), or elects to abandon any amendments that may have been made under Article 34 of the PCT under subparagraph 45(1AC)(b)(ii), 48(1AC)(b)(ii) or regulations made for the purpose of section 104 of the Act (namely, under subparagraph 10.2(3)(c)(iii) as amended by item 7 of these Regulations). Therefore, by providing this advice or making this election, any amendments made under Article 34 of the PCT will not amend the patent specification in the national phase even if Australia was elected under the PCT and the IPER was established prior to national phase entry. This will be the case even if the Commissioner subsequently received a copy of the IPER.

Item 5 of Schedule 1 amends paragraph 10.2(1)(c) of the Principal Regulations, to accommodate the amendment made by item 6 of Schedule 1 of these Regulations.

Item 6 of Schedule 1 amends subregulation 10.2(1) of the Principal Regulations, to insert a new issue on which the Commissioner may report under subregulation 10.2(1) of the Principal Regulations in respect of requests under section 104 of the Act for leave to amend a patent request and complete specification. The grounds under paragraphs (a), (b) and (c) of that provision relate to grounds on which the Commissioner must report. The additional ground only applies if an IPER has not been provided to the Commissioner. The ground is discretionary, and this discretion would only be exercised if, as a result, there was uncertainty as to the contents of the Australian patent specification resulting from uncertainty as to whether and how the application was amended under the PCT during the international phase.

Item 7 of Schedule 1 amends subregulation 10.2(3) to substitute a new provision. Paragraphs (a) and (b) of this provision correspond to subregulation 10.2(3) of the Principal Regulations. Paragraph (c) provides additional options to an applicant of a PCT application upon receipt of an adverse report under subregulation 10.2(1). These options are similar to those set out in paragraphs 45(1AC)(a) and (b) of the Act as modified by the proposed Regulations.

Item 8 of Schedule 1 amend regulation 10.2 to insert a new provision, subregulation 10.2(5A). Under this provision, if the applicant responds to the Commissioner's report in respect of the request for leave to amend under subregulation 10.2(1) with one of the options set out in paragraph 10.2(3)(c) of the Principal Regulations as amended by item 7 of Schedule 1 of these Regulations, then this provision requires that the Commissioner must report under subregulation 10.2(1) of the Principal Regulations, taking notice of the applicant's response.

If under paragraph 10.2(5A)(a) the applicant provides a copy of the IPER, the Commissioner would report on the request for leave to amend on the basis of the complete specification as amended. If the applicant avails themselves of subparagraphs 10.2(3)(c)(ii) or (iii), then subsection 89(7) of the Act as modified by these Regulations applies, and the Commissioner would report on the request for leave to amend on the basis of the complete specification without taking any amendments under Article 34 of the PCT into account.

Item 9 of Schedule 1 amends subregulation 13.1A(1) of the Principal Regulations to clarify that the period prescribed under subsection 141(1) of the Act relates to an application for a standard patent, rather than to a standard patent.

Item 10 of Schedule 1 inserts a new provision, regulation 13.1B. This provision prescribes a period under subsection 141(1) of the Act in which an application for an innovation patent cannot be withdrawn. This period begins when the application is accepted under section 52 of the Act and ends when the patent is granted under section 62 of the Act. However this period does not apply if a prohibition order under subsection 152(3) or 173(1) of the Act is in force. This provision closely mirrors the corresponding period prescribed under regulation 13.1A of the Principal Regulations.

Item 11 of Schedule 1 amends paragraph 22.26(2)(a) of the Principal Regulations, to introduce a new decision of the Commissioner that is reviewable by the Administrative Appeals Tribunal (the AAT). Under this new provision, decisions of the Commissioner under regulation 10.7 of the Principal Regulations, except decisions under subregulation 10.7(3), are reviewable by the AAT.