Commonwealth Numbered Regulations - Explanatory Statements

[Index] [Search] [Download] [Related Items] [Help]

PATENTS REGULATIONS (AMENDMENT) 1995 NO. 16

STATUTORY RULES 1995 No. 16

Issued by the Authority of the Minister for Small Business, Customs and Construction

Patents Act 1990

Patents Regulations (Amendment)

Subsection 228(1) of the Patents Act 1990 (the Act) empowers the Governor-General to make regulations for the purposes of the Act, for prescribing 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 Statutory Rules amend the Patents Regulations (the Regulations) to incorporate changes to the Regulations that have been identified as a result of an extensive review of the efficacy, of the new patents legislation during the first twelve months of its operation. As a result, the Statutory Rules amend the Regulations to make changes that will clarify the intent of certain provisions of the Patents Regulations, correct unintended effects, make minor drafting and consequential amendments and further streamline procedures and promote efficiency in the Patent Office. The Statutory Rules also amend the Regulations to include the correction of formatting, typographic and similar errors that have been identified.

Details of the regulations made by these Statutory Rules are as follows:

Regulation 1 provides that, with the exception of regulation 38, all the regulations made by these Statutory Rules commence on gazettal. Regulation 1 sets 30 April 1991 as the commencing day for regulation 38. Regulation 38 corrects a minor error in the text of the Budapest Treaty contained in Schedule 1 to the Regulations, bringing the English text of the Treaty in Schedule 1 in line with the actual Treaty as in force for Australia on the commencing day of the Regulations (30 April 1991).

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

Regulation 3 substitutes new regulation 1.4 to make it clear that the English texts of the Budapest Treaty and the Patent Cooperation Treaty (PCT), as in force for Australia on the commencing day, of the Regulations and on 1 January 1994, respectively, are now set out in Schedules 1 and 1A, and in Schedules 2 and 2A.

Regulation 4 omits the phrase "the end of the day" from subregulation 1.6(1) of the Regulations to now provide that the prescribed period for filing documents in respect of a basic application for the purposes of section 8 of the Act ("disclosure in basic applications") ends immediately before acceptance, rather than at the end of the day immediately before acceptance.

Regulation 5 amends subregulation 2.3(1) of the Regulations to clarify that the prescribed period defined in that subregulation relates to information of the kind referred to in paragraph 24(1)(a) of the Act ("validity not affected by certain publication or use"). Regulation 5 also corrects an error in subregulation 2.3(2) to now identify that the prescribed period in that subregulation is defined for the purposes of subsection 24(1) of the Act and relates to information of the kind referred to in paragraph 24(1)(b) of the Act.

Regulation 6 substitutes a revised regulation 2.4 to provide that, for the purposes of section 25 of the Act ("validity: patents of addition"), the prescribed period ends immediately before the priority date of the relevant claim of the specification of the patent of addition, rather than at the end of the day that is the priority date of the relevant claim. Regulation 6 also omits the redundant phrase from regulation 2.4.

Regulation 7 substitutes new paragraphs 27(a) and (b) to now require the filing of 2 copies of any document (including, where required, a translation and related certificate of verification) filed in support of a notice of assertion made under subsection 27(1) ("notice of matters affecting validity of standard patents") or 28(1) ("notice of matters affecting validity of petty patents") of the Act.

Regulation 8 omits paragraph 3.3(1)(c) from the Regulations to remove the requirement that an abstract must include, if applicable, the number of any drawing that an applicant recommends should accompany the abstract. Regulation 8 also corrects a minor drafting error.

Regulation 9 substitutes a revised subregulation 3.4(5) to clarify the intention of that subregulation. Thus, where an abstract is not filed with a complete specification, within 1 month from the date of filing of the complete specification, the Commissioner may direct the applicant to file an abstract within 1 month from the date of that direction.

Regulation 10 substitutes a revised regulation 3.8 to make it clear that an application under section 29 of the Act ("application for patent") must be made within 3 months following a decision of the Commissioner under section 33 of the Act ("applications by opponents etc."), or a declaration of the Commissioner under section 35 ("applications by eligible persons following revocation by Commissioner") or 36 ("other applications by eligible persons") of the Act, or a declaration by a court under section 34 of the Act ("applications by eligible persons arising out of court proceedings").

Regulation 11 clarifies the intended effect of regulation 3.12 of the Regulations, introducing the term "priority documents" which provides a clear distinction between the application related to the specification containing the claim whose priority date is being determined and the document in which the matter was first disclosed (the "priority document"). Regulation 11 also adds new subregulation 3.12(2B) to make it clear that an earlier basic application that has been disregarded under section 96 of the Act ("withdrawn, abandoned or refused applications") is not to be taken to be a priority document for the purposes of paragraph 3.12(1)(b).

Regulation_12 omits paragraph 3.18(2)(b) from the Regulations as it is redundant in view of paragraph 3.18(2)(a).

Regulation 13 corrects a typographical error occurring in paragraph 4.2(2)(c) of the Regulations.

Regulation 14 inserts new paragraph 4.3(1)(g) to the Regulations to provide that a notification made under subregulation 3.25(3) of the Regulations is a prescribed document for the purposes of subsection 55(1) of the Act ("documents open to public inspection"), thereby allowing the public to become aware of the restricted availability of a particular microorganism. Regulation 14 also amends paragraph 4.3(f) by replacing the reference to subregulation 3.1 (1) with regulation 3.1, thus allowing all documents that are required to be filed for the purposes of subsection 29(1) of the Act to be open to public inspection. Regulation 14 also introduces new subregulation 4.3(2) which has the effect of exempting from public inspection a document that is subject to an order of a court or a tribunal prohibiting its disclosure.

Regulation 15 amends paragraph 5.1(b) of the Regulations to substitute the correct heading for regulation 10.7 which occurs after the reference to subregulation 10.7(4).

Regulation 16 inserts new subregulation 5.3(5A) to the Regulations to specify that a person who intends to oppose a request for amendment of the Register or a patent under subregulation 10.7(4) has a period of 3 months after publication in the Official Journal of the notice referred to in subregulation 10.7(3) in which to file a notice of opposition. Consequential on the introduction of new subregulation 5.3(5A), regulation 16 omits the reference to subregulation 10.7(3) from subregulation 5.3(3).

Regulation 17 inserts new regulation 5.3A to the Regulations to allow an opponent to request the Commissioner to amend a notice of opposition for the purpose of correcting a clerical error or obvious mistake. The Commissioner must give the parties an opportunity to make representations concerning the proposed amendment, and may grant the request on such terms as the Commissioner may specify,

Regulation 18 amends paragraph 5.8(2)(a) of the Regulations to provide that the commencement of the 3 month period within which an applicant must serve evidence in answer is fixed by reference to the time an opponent serves evidence in support under subregulation 5.4(2) or paragraph 5.8(1)(a). Regulation 18 also corrects an unintended effect in paragraph 5.8(4)(a) such that an opponent is now only required to serve on an applicant within the period specified in that paragraph a copy of the evidence in reply or a copy of a notice of intention to serve evidence in reply, but not both. Regulation 18 also corrects a minor omission in subparagraph

Regulation 19 makes subregulation 5.9(1) of the Regulations subject to subregulation 5.9(2) to make it clear that the Commissioner must not allow an amendment requested under subregulation 5.90) if the circumstances specified in subregulation 5.9(2) exist. Regulation 19 also amends paragraphs 5.9(1)(b) and (c) to clarify and make consistent the terminology in those paragraphs.

Regulation 20 amends regulation 5.13 of the Regulations consequent on the amendment made by regulation 17.

Regulation 21 substitutes a revised subregulation 8.2(1) to provide that the rectification of any obvious errors in a PCT application in accordance with Rule 91 of the regulations under the PCT is to be considered part of a PCT application for the purposes of section 89 of the Act ("modified application of Act").

Regulation 22 amends subregulation 8.6(1) of the Regulations to no longer require the name of the basic applicant in the patent request. Regulation 22 also adds new paragraph 8.6(2)(c) to the Regulations to require a translation into English of any certification issued by the official chief or head of a Patent Office of' a Convention country (and a related certificate of verification where that certification is not in English).

Regulation 23 inserts new subregulation 10.1(1A) to the Regulations so that where an applicant flies a written statement of proposed amendments to amend a patent request, complete specification or other filed document in response to, or in anticipation of, an examination report (or a notice relating to a consideration of a petty patent application under section 50 of the Act), the filing of a request for leave to amend in the approved form is not required.

Regulation 24 substitutes new subregulation 10.5(1) to clarify the intent of that subregulation such that in the case of amendments relating to matters mentioned in paragraph 6(c) of the Act ("deposit requirements"), the granting of leave to amend in respect of such amendments is conditional only on a report under subregulation 10.2(2) not being an adverse report. Regulation 24 also corrects an unintended effect of paragraph 10.5(1)(b) to now include amendments of other filed documents that are proposed in anticipation of, or in response to, an examination report (or a notice relating to a consideration of a petty patent application under section 50 of the Act).

Regulation 25 substitutes new regulation 10.6 to correct unintended effects and now provide a mechanism for the allowance of all amendments to which the Commissioner has granted leave to amend under regulation 10.5, including amendments of other filed documents. Regulation 25 also provides clearer time periods for the allowance of all amendments under regulation 10.6, especially for the allowance of those amendments that may be subject to opposition proceedings. As a result of the review of the operation of the Regulations, specific provisions for amendments that relate to matters mentioned in section 5 of the Act ("associated applications") are no longer considered necessary: regulation 25 therefore deletes. from regulation 10.6 the specific reference to proposed amendments relating to section 5 of the Act matters. Further, consequent on the amendment made by regulation 24, a specific reference to paragraph 6(c) of the Act is no longer required in regulation 10.6 and is deleted by regulation 25.

Regulation 26 substitutes new regulation 13.4 to correct unintended effects, and to clarify, that the period of acceptance of a patent application, where more than one of the circumstances of regulation 13.4 are applicable, may be varied in accordance with the longest of the possible periods determined under that regulation. Regulation 26 amends regulation 13.4 to include requests under section 32 of the Act ("disputes between applicants etc."), and to expand the provisions relating to requests under section 36 of the Act ("other applications by eligible persons") to cover the circumstances where the applicant for the patent or some other person is the eligible person: this ensures that a patent request and complete specification will not be accepted until disputes between applicants or determinations about who is an eligible person are resolved. Regulation 26 also allows for some of the time periods specified in the provisions of regulation 13.4 to have a longer period substituted at the discretion of the Commissioner or a court or the Administrative Appeals Tribunal, as the case requires.

Regulation 27 corrects ' an error in subregulation 19.2(1) of the Regulations to now provide that information about each of the items specified in section 194 of the Act (Information obtainable from Commissioner") may be obtained from the Commissioner, not just information of the type provided for in paragraph 194(c) of the Act.

Regulation 28 clarifies the intended effect of paragraph 20.16(a) of the Regulations.

Regulations 29, 30 and 31 amend paragraph 22.3(1)(a) and subregulations 22.4(1) and 22.15(2) of the Regulations, respectively, to omit the inappropriate references to the Commissioner being a receiving Office, an International Searching Authority and an International Preliminary Examining Authority.

Regulation 32 amends paragraph 22.26(2)(a) of the Regulations to allow the Administrative Appeals Tribunal to review a decision of the Commissioner to postpone the acceptance of a patent request and complete specification under subregulation 13.4(3).

Regulation 33 adds subregulation 23.3(3) to the Regulations to make it clear that an opposition to the grant of a standard patent on an application which was filed under the repealed Patents Act 1952 but acceptance of which has been advertised under the current Act is subject to the procedures of Chapter 5 of the Regulations.

Regulation 34 amends regulation 23.4 of the Regulations to clarify the intention of subregulation 23.4(1) such that in all opposition proceedings relating to a matter advertised in the Official Journal or to a document served on a person, before the commencing day of the Act, the relevant provisions of the 1952 Act, including section 94, continue to apply. Regulation 34 also puts in place the intention of that subregulation that in all opposition proceedings relating to a matter advertised in the Official Journal or to a document served to a person, before the commencing day of the Act, the relevant provisions of the former Regulations, including those relating to the amendment of documents lodged by third parties in relation to such a hearing (regulations 76, 77 and 78) continue to apply. Regulation 34 also corrects a typographical error in subparagraph 23.4(1)(c)(ii).

Regulation 35 amends paragraph 23.11(2)(d) of the Regulations. Subregulation 23.11 (1) of' the Regulations provides that a person (the "first-mentioned person") who supplied a product to another person before the commencement of the Act can continue to supply such a product and not be subject to the infringement provisions under section 117 of the Act ("infringement by supply of products"). Regulation 35 amends paragraph 73.11(2)(d) to extend the exemption provided under subregulation 23.11 (1) from the provisions of section 117 of the Act so that it applies not just to a person who acquires a business from the first-mentioned person referred to in that subregulation but to any person who acquires that business, whether from the firstmentioned person or from some other person.

Regulation 36 clarifies the intended effect of regulation 23.14 of the Regulations.

Regulation 37 substitutes new subregulation 23.20(1) to provide a clearer definition of a "prescribed person", in relation to the continued application to the patent attorney profession of certain provisions of the repealed Patent Attorneys Regulations.

Regulation 38 amends Schedule 1 to the Regulations to make a correction to the text of paragraph 6.3(b) of the regulations under the Budapest Treaty. Thus, regulation 38 amends Schedule 1 to include the actual paragraph of the regulations under that Treaty that should have been present on the commencing day of the Regulations (30 April 1991) and therefore brings the English text of the Budapest Treaty in Schedule 1 in line with the actual Treaty as in force for Australia on the commencing day of the Regulations.

Regulation 39 amends Schedule 1 to the Regulations to reformat the presentation of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. Thus, while the Budapest Treaty itself is retained in Schedule 1, the regulations under the Budapest Treaty are removed from Schedule 1 and inserted in new Schedule 1A. The separation of the Budapest Treaty and the regulations under it into separate Schedules facilitates the making of future amendments when the text of the Budapest Treaty needs to be updated in accordance with subsection 228(5) of the Act. In order to effect the separation of the texts of the Budapest Treaty and the regulations under it, the heading and the table of provisions of the regulations under the Budapest Treaty are set out in Schedule 1 to these Statutory Rules under the heading "Schedule 1 A".

Regulation 40 makes an analogous amendment to Schedule 2 to the Regulations to the amendment made by regulation 39 to Schedule 1. Thus, the PCT is retained in Schedule 2 while the regulations under it are removed from Schedule 2 and inserted in new Schedule 2A. In order to effect the separation of the texts of the PCT and the regulations under it, the heading, table of provisions, and adoption and amendment dates of the regulations under the PCT are set out in Schedule 2 to these Statutory Rules under the heading "Schedule 2A".

Regulation 41 amends Schedule 3 to the Regulations to align the formal requirements for documents filed in relation to a patent application with the formal requirements for international applications filed under the PCT. Thus, a specification must commence with a title that is short and precise, and all documents are to be printed on only one side of each sheet (subject to subparagraph 3.2(2)(c)(ii) of the Regulations). Regulation 41 also amends Schedule 3 to require that proposed amendments of a patent request, specification or other filed document must be numbered consecutively, and the numeration sequence must be consecutive throughout all statements of* proposed amendments, to facilitate accurate identification of proposed amendments. Regulation 41 also corrects a grammatical error and a typographical error.

Regulation 42 amends Schedule 7 to the Regulations pursuant to new regulation 5.3A of the Regulations to include a fee for making a representation to the Commissioner under that regulation objecting to a proposed amendment,

Regulation 43 makes minor and formal amendments to the text of the Regulations. Those amendments to the Regulations are detailed in Schedule 3 to these Statutory Rules.

Regulation 44 omits certain notes from the Regulations which had cross-referenced relevant provisions of the Regulations with the text of the Budapest Treaty or the PCT set out in the Schedules to the Regulations.

Regulation 45 is a transitional provision in respect of the amendment made by subregulation 18.2 of these Statutory Rules such that where an opponent has already served on the applicant a copy of the evidence in support of the opposition before the commencement of these Statutory Rules, paragraph 5.8(2)(a) of the Regulations as in force immediately before that commencement continues to apply.

Schedule 1 sets out the heading and the table of provisions of the regulations under the Budapest Treaty under the heading "Schedule 1A" for the purpose of separating the texts Of the Budapest Treaty and the regulations under it as effected by regulation 39 of these Statutory Rules.

Schedule 2 sets out the heading, table of provisions, and adoption and amendment dates of the regulations under the PCT under the heading "Schedule 2A" for the purpose of separating the texts of the PCT and the regulations under it as effected by regulation 40 of these Statutory Rules.

Schedule 3 details the minor and formal amendments to the text of the Regulations for the purposes of regulation 43 of these Statutory Rules.