EXPLANATORY STATEMENT

 

Select Legislative Instrument 2007 No. 357

 

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

 

Patents Act 1990

 

Patents Amendment Regulations 2007 (No. 1)

 

 

 

 

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.

 

The Act relates to patents of inventions. It sets out, inter alia, the procedure for examining a patent request and complete specification relating to an application for a standard patent, and for examining the complete specification relating to an innovation patent. This examination procedure is a prerequisite to a standard patent being granted or an innovation patent being certified.

 

The Regulations amend provisions of the Patents Regulations 1991 (the Principal Regulations) relating to the obligation of applicants and patentees to inform the Commissioner of Patents (the Commissioner) of the results of certain foreign patent office searches. The Regulations also amend provisions relating to the filing of notices of matters affecting the validity of standard patents.

 

Paragraphs 45 (3) (a) and 101D (1) (a) of the Act require applicants and patentees to inform the Commissioner of Patents (the Commissioner), in accordance with the regulations, of the results of foreign patent office searches carried out for the purpose of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside Australia. This information is taken into account during examination to assess the validity of the invention that is the subject of the patent or patent application. The Patents Regulations 1991 (the Principal Regulations) specify the times by which the applicant or patentee must inform the Commissioner of the results of these searches. For standard patents, this is set out in subregulations 3.17A (4) and (5) of the Principal Regulations. For innovation patents, this is set out in subregulation 9A.2A (2) of the Principal Regulations.

 

Subsection 102 (2C) of the Act sets out a sanction for failure to comply with these requirements. Under this provision, certain amendments to a complete specification relating to a patent will not be allowable, if the applicant or patentee failed to ensure the provision to the Commissioner of the information required by subsection 45 (3) or section 101D in relation to the patent.

 

These provisions were intended to advance the public interest by supporting a greater presumption of validity of granted patents, and making the process of finding documents disclosing similar inventions (‘prior art’) more reliable. Since these provisions were introduced into the Act, it has become increasingly easier for the Patent Office to access foreign patent offices’ search and examination results directly over the Internet. In light of this development, it has become possible to advance the public interest, without requiring applicants and patentees to inform the Commissioner of the results of these searches.

 

As a result, the compliance burden imposed by the requirement on applicants and patentees has become disproportionate to its benefits. To address this, the Regulations remove this compliance burden. Instead, staff at the Patent Office would directly source foreign patent office search and examination results over the Internet.

 

Under paragraphs 45 (3) (a) and 101D (a) of the Act, the requirement to inform the Commissioner of the results of foreign patent office searches does not extend to documentary searches prescribed by the regulations. Regulations 3.17B and 9A.2B of the Principal Regulations prescribe a range of searches in respect of which information need not be given to the Commissioner.

 

The Regulations prescribe additional searches, with the effect of removing the ongoing requirement for applicants and patentees to inform the Commissioner of the results of foreign patent office searches.

 

Subsection 27 (1) of the Act enables a person to notify the Commissioner of matters affecting the validity of a standard patent. This notification must be given within a prescribed period. Regulation 2.5 of the Principal Regulations prescribes this period as:

· commencing on the day when the complete specification filed in relation to an application for a standard patent becomes open to public inspection; and

· ending immediately before acceptance of the patent request and complete specification.

 

The Regulations, in addition, extend this period, so that it ends three months after publication of a notice of acceptance. This provides a further period in which third parties are able to notify the Commissioner of matters affecting the validity of a standard patent. For example, interested third parties have a further opportunity to bring to the Commissioner’s attention prior art material such as foreign patent office searches which the Commissioner might not have been able to source from the Internet. This is intended to further the public interest, as outlined above.

 

Consultation in relation to this legislative instrument has been as follows:

· release of a public consultation paper;

· discussion with IP Australia’s stakeholder group, the Patents Consultation Group; and

· release of an exposure draft of the legislative instrument to the legislation committees of the Institute of Patent and Trade Mark Attorneys (IPTA) and the International Federation of Intellectual Property Attorneys (FICPI).

 

Details of the Regulations may be found in the Attachment.

 

The Regulations commence on 22 October 2007.

 

 

Attachment

 

Details of the Patents Amendment Regulations 2007 (No. 1)

 

Regulation 1 identifies the Regulations as the Patents Amendment Regulations 2007
(No. 1).

 

Regulation 2 specifies that the Regulations commence on 22 October 2007.

 

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

 

Schedule 1

 

Item 1

Item 1 replaces regulation 2.5 of the Principal Regulations with a new regulation 2.5. This provides that the period for lodging a notice under subsection 27 (1) of the Patents Act 1990 (the Act) ends three months after the date of publication of the notice of acceptance under paragraph 49 (5) (b) of the Act.

 

Item 2

Item 2 is a minor amendment consequential upon the amendment made by item 3.

 

Item 3

Item 3 inserts new subregulations 3.17B (2) and 3.17B (3) into regulation 3.17B of the principal Regulations. Existing regulation 3.17B prescribes—for the purposes of paragraph 45 (3) (a) of the Act—the results of those documentary searches conducted by, or on behalf of, foreign patent offices, which do not have to be provided to the Commissioner of Patents (the Commissioner) in respect of applications for standard patents. The effect of new subregulations 3.17B (2) and 3.17B (3) is to remove the ongoing obligation for applicants for standard patents to inform the Commissioner of the results of documentary searches.

 

Subregulations 3.17A (4) and (5) of the Principal Regulations specify the date by which an applicant is, apart from the operation of the Regulations, required to inform the Commissioner of the result of a documentary search. The Commissioner must be informed by the latest of:

· under paragraph 3.17A (4) (a) of the Principal Regulations—the day six months after the search is completed;

· under paragraph 3.17A (4) (b) of the Principal Regulations—the day six months after the applicant asks for an examination under section 44 of the Act;

· if the applicant requests an extension under subregulation 3.17A (5) of the Principal Regulations—the day three months after the date on which a notice of acceptance is published under paragraph 49(5)(b) of the Act.

These provisions provide the final date by which an applicant is entitled to inform the Commissioner of the result of a particular documentary search. If not done by that date, there will have been a failure to inform the Commissioner of the result of that documentary search, and the provisions of subsection 102 (2C) of the Act apply.

 

The operation of new subregulation 3.17B (2) is as follows. If, for a particular documentary search, the final date for informing the Commissioner of the result of that search had not occurred before 22 October 2007, the search is prescribed for the purposes of paragraph 45 (3) (a) of the Act—so that information need not be given to the Commissioner.

 

However, if, in relation to a particular documentary search, the final date for providing the result had occurred prior to 22 October 2007, the search result is not prescribed by subregulation 3.17B (2). Therefore, unless the search result is prescribed by another provision—i.e. existing subregulation 3.17B (1)—the obligation to inform the Commissioner remains. In order to discharge this obligation, the applicant is obliged to seek—under section 223 of the Act—an extension of the time for providing the search result.

 

The operation of new subregulation 3.17B (3) is as follows. If an applicant asks in accordance with section 44 of the Act for an examination of a patent request and complete specification—on or after 22 October 2007—all documentary searches by, or on behalf of, a foreign patent office are prescribed for the purposes of paragraph 45 (3) (a) of the Act. Therefore, on such applications, no results of foreign patent office searches are required to be given to the Commissioner.

 

Item 4

Item 4 replaces subregulation 3.18 (4) of the Principal Regulations with a new subregulation 3.18 (4). This amendment is consequential upon the amendment made by item 1.

 

The amendment made by item 1 permits a notice under subsection 27 (1) of the Act to be filed in the period after acceptance, and therefore after examination of the parent application. Substitute subregulation 3.18 (4) provides that the requirement for the Commissioner to consider such a notice, during examination of the patent request and complete specification, only applies if the notice is filed before acceptance under subsection 49 (1) of the Act.

 

For notices received after this time, the matters set out in the notice could be considered by the Commissioner during any re-examination of the patent request and complete specification under section 97 of the Act.

 

Item 5

Item 5 is a minor amendment analogous to item 2, consequential upon the amendment made by item 6.

 

Item 6

Item 6 inserts new subregulations 9A.2B (2) to 9A.2B (5) into existing regulation 9A.2B of the Principal Regulations, with an effect analogous to the amendments made by item 3 to regulation 3.17B of the Principal Regulations. The key difference between these provisions is that regulation 9A.2B of the Principal Regulations applies to innovation patents, but regulation 3.17B of the Principal Regulations applies to applications for standard patents. An innovation patent is an alternative form of patent protection to a standard patent, with a different inventive threshold and shorter term. The effect of the amendments made by item 6 is to remove the ongoing obligation for patentees of innovation patents to inform the Commissioner of the results of documentary searches conducted by foreign patent offices.

 

Regulation 9A.2B of the Principal Regulations prescribes—for the purposes of paragraph 101D (1) (a) of the Act—the results of those documentary searches conducted by, or on behalf of, foreign patent offices, which do not have to be provided to the Commissioner in respect of innovation patents. New subregulations 9A.2B (2) and 9A.2B (4) apply if the Commissioner decides to examine the complete specification relating to an innovation patent under paragraph 101A (a) of the Act, or if the patentee or any other person asks the Commissioner to examine the complete specification relating to an innovation patent under paragraph 101A (b), respectively.

 

Subregulation 9A.2A (2) of the Principal Regulations sets out the latest date by which the patentee is required to inform the Commissioner of the results of a documentary search. The operation of new subregulations 9A.2B (2) and 9A.2B (4) is as follows. If, for a particular search result, the latest date had not occurred before 22 October 2007, the search is prescribed for the purposes of paragraph 101D (1) (a) of the Act—so that information need not be given to the Commissioner.

New subregulations 9A.2B (3) and 9A.2B (5) operate in a similar manner to new subregulation 3.17B (3). These provisions prescribe all documentary searches by, or on behalf of, a foreign patent office—so that information need not be given to the Commissioner—if, on or after 22 October 2007:

· the Commissioner decides to examine the complete specification relating to an innovation patent—subregulation 9A.2B (3); or

· the patentee, or another person, asks, in accordance with section 101A of the Act, for an examination of the complete specification relating to an innovation patent—subregulation 9A.2B (5).