Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS REGULATIONS (AMENDMENT) 1993 NO. 113

STATUTORY RULES 1993 No. 113

Issued by the Authority of the Minister for Science and Small Business

Patents Act 1990

Patents Regulations (Amendment)

The Statutory Rules amend the Patents Regulations (the Regulations) to vary certain fees payable under the Regulations; and to vary the costs, expenses and allowances that may be awarded in proceedings before the Commissioner. Details of the amendments are as follows:

Regulation 1 sets 1 July 1993 as the commencement day for the regulations.

Regulation 2 identifies the Patents Regulations as those to be amended.

Regulation 3 increases to 3 months the period within which a person, who opposes the grant of a patent, must file a statement of grounds and particulars after filing a notice of opposition.

Regulation 4 amends regulation 5.10 so that the prescribed period for filing a notice of opposition or for filing a statement of grounds and particulars cannot be extended by the Commissioner, either on his or her own motion or on the application of a party. In addition, a minor editorial change is made to paragraph 5.10 (4)(b) to provide for consistent terminology in the regulations.

Regulation 5 amends subregulations 22.2(2) and 22.2(4) consequent on the renumbering of items in Part 2 in Schedule 7.

Regulation 6 amends subregulation 22.11(3) to exclude an action or step taken under paragraph 5.4(1)(a) from the definition of "relevant act" for the purposes of subsection 223(11) of the Patents Act. This has the effect of allowing the time for filing a statement of grounds and particulars to be extended if there has been an error or omission by the Commissioner, a Deputy Commissioner or an employee of the Patent Office, or by the person concerned, or by his or her agent or attorney; or due to circumstances beyond the control of the person concerned.

Regulation 7 substitutes revised Parts 1, 2 and 3 of Schedule 7. The items differ from existing items in the level of fees except for items 1 and 4 of Part 1; items 1, 3(c), 4(a)(ii), 4(b)(ii), 5, 6, 8(a), 8(b), 8(c), 11, 12, 13, 15, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 32, 33(a), 33(b), 3.4t 35, 36, 39(b) and 40 of Part 2; and items 6 and 7 of Part 3 which remain unchanged. The items have been renumbered consequent on the introduction of new item 14 and the amalgamation of some items to provide for the payment of a single fee instead of two separate fees.

In addition, some of the items have been revised to effect structural changes to the fees to better align them with their costs, and to improve consistency with similar fee items in other legislation administered by the Australian Industrial Property Organisation (AIPO). Some items have also been revised to reflect the latest drafting style and to improve their clarity. The overall effect of the revised fees is an increase of 2 per cent on average in fee levels. This increase will enable the AIPO to meet its cost recovery obligations.

Regulation 8 inserts a revised Schedule 8 to the Regulations which sets out items and amounts of costs, expenses and allowances that can be awarded, taxed, allowed and certified in relation to proceedings before the Commissioner. The amounts in Part 1 and in Division 1 of Part 2 are set to retain parity with the charges set under the Rules of the Australian Capital Territory Supreme Court (the ACT SC Rules). Division 2 of Part 2, including the amounts specified, is modelled on the corresponding provisions of the Administrative Appeals Tribunal Regulations (the AAT Regulations). The Patents Regulations (Amendment) realigns the amounts of costs, expenses and allowances to those currently prescribed under the ACT SC Rules and the AAT Regulations.

In addition, clause 2 in Part 2 in Schedule 8 has been amended to correct an unintended effect. The amendment allows a person attending proceedings before the Commissioner to be paid a reasonable amount for allowances for transport without this being subject to a maximum daily limit.

Regulation 9 is a transitional provision which ensures that the amending regulations do not affect the fee payable for granting an extension of the term of a petty patent, or of a patent relating to a pharmaceutical substance, in response to applications that were filed before 1 July 1993. The regulation also ensures that the amending regulations do not affect continuation or renewal fees paid before 1 July 1993.