Commonwealth Numbered Regulations - Explanatory Statements

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INTELLECTUAL PROPERTY LEGISLATION AMENDMENT REGULATIONS 2008 (NO. 1) (SLI NO 279 OF 2008)

EXPLANATORY STATEMENT

 

Select Legislative Instrument 2008 No. 279

 

Issued by the Authority of the Minister for Innovation, Industry, Science and Research

 

Patents Act 1990, Trade Marks Act 1995, and Designs Act 2003

 

Intellectual Property Legislation Amendment Regulations 2008 (No. 1)

 

Section 228 of the Patents Act 1990 (the Patents Act), section 231 of the Trade Marks Act 1995 (the TM Act) and section 149 of the Designs Act 2003 (the Designs Act) provide that the Governor-General may make regulations for the purposes of those Acts, prescribing matters required or permitted by the Acts to be prescribed.

 

The Patent Cooperation Treaty (PCT) provides for cooperation between member countries in the filing, searching and examination of applications for the protection of inventions. Subsection 228(5) of the Patents Act 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 English text up-to-date.

 

The purpose of the Regulations is to update the English text of the rules made under the PCT and to provide for the use of modern technology in the patent application process. The objectives of the Regulations are set out in Attachment A.

 

Details of the Regulations are set out in Attachment B.

 

In accordance with section 17 of the Legislative Instruments Act 2003, IP Australia has undertaken consultation with The Office of the Privacy Commissioner; peak intellectual property organisations; industry associations; and patent and trade marks attorneys.

 

The Regulations commence on 1 January 2009.

 


Attachment A

 

Objectives of the Intellectual Property Legislation Amendment Regulations 2008
(No. 1)

 

The main purpose of the Regulations is to update the English text of the Regulations under the Patent Cooperation Treaty (PCT Rules) set out in Schedule 2A to the Patents Regulations1991 (the Patents Regulations) to reflect changes made to the PCT Rules as agreed by the International Patent Cooperation Union at meetings held in October 2007 and September 2008. These changes to the PCT Rules are purely of an administrative nature. Firstly, the changes introduce a supplementary international search system as part of the PCT system based on the premise that an international search should permit the discovery of as much earlier information relating to a PCT application as possible. Secondly, the changes introduce Korean and Portuguese as languages of International Publication.

 

A secondary purpose of the Regulations is to allow patent applicants to use modern technology to support patent applications that are made under the Paris Convention for the Protection of Industrial Property (Paris Convention) to which Australia is party.

 

A priority date is created for an invention when a detailed patent application describing the invention is first filed. The ‘right of priority’ allows the patent applicant to claim the priority date when they file one or more later patent applications in other jurisdictions, which are directed to the same invention as the first filing. The Paris Convention allows a person who first files a patent application at the patent office of a Convention country (e.g. Australia), a period of up to twelve months to claim a right of priority for subsequent filings at patent offices in other Convention countries (e.g. the United States of America or the United Kingdom).

 

Currently, for example, an applicant who files their first patent application in Australia, and who makes Convention filings at other foreign patent offices (FPOs) is required to obtain certified paper copies of their earlier Australian application, and to courier or mail a certified copy to each of those FPOs. Also, foreign applicants currently have to file copies of certain documents with IP Australia even though:

· in a vast majority of cases no issue will arise that requires the Commissioner to refer to these documents; or

· the documents are readily available to the Commissioner from a secure digital library.

 

These current practices can be costly and time consuming for the applicant.

 

The Regulations amend the Patent Regulations to facilitate the operation of the Paris Convention for applicants in Australia, by enabling the Commissioner of Patents—acting with the applicant’s consent—to upload a copy of the first-filed Australian application to a proposed secure digital library to be maintained by the International Bureau of the World Intellectual Property Organization (WIPO), or to a secure digital library maintained by a foreign patent office (e.g. the US Patent and Trademark Office).

 

The Regulations are consonant with the operation of the Patents Act and, in particular, are not contrary to the provisions of section 56 which restricts the publishing of certain documents relating to patent applications. The Regulations permit the lawful disclosure of information to WIPO or to FPOs for the purpose of supporting a patent application in another jurisdiction. However, the Commissioner must not disclose a document to WIPO or a FPO without the applicant consenting to this disclosure.

 

The changes therefore enable patent applicants to take advantage of international developments, and consequently, there is a decreasing need for applicants to supply paper copies of patent documents to IP Australia. The changes should result in significant savings for applicants seeking patent protection overseas as well as in Australia.

 

Another aspect of the changes is the standardisation of the various prescribed time periods that apply following the Commissioner issuing a request to the applicant to file copies of various patent documents. Depending on the circumstances, these time periods varied from a minimum of three months from the date of the Commissioner’s request up to a maximum of 21 months from the request date. The prescribed time period is now standardised at three months from the date on which the Commissioner requests the document. The changes therefore reduce ambiguity and provide certainty for the minority of applicants who receive a request from the Commissioner to supply copies of patent documents.

 

In addition, the Regulations amend Schedule 4 to the Patents Regulations, Schedule 10 to the Trade Marks Regulations 1995 and Schedule 1 to the Designs Regulations 2004 to include Cape Verde as a Convention country and to correct the spelling of ‘Bosnia and Herzegovina’. Cape Verde became a member of the World Trade Organization (WTO) on 23 July 2008. Australia, as a fellow member of the WTO, is obligated to treat relevant applications for intellectual property rights made in Cape Verde as though these applications were made under the auspices of the Paris Convention.

 

Further, the Regulations remove Schedule 6 to the Patents Regulations as this Schedule has become redundant following the changes made by the Patents and Trade Marks Legislation Amendment Regulations 2008 (No. 1). This change reduces the risk of inadvertently misleading persons interested in the operation of the patent attorney regime.

 

Finally, the Regulations make a number of other minor changes to the Patents Regulations.


Attachment B

 

Details of the Intellectual Property Legislation Amendment Regulations 2008 (No. 1)

 

Regulation 1 identifies the Regulations as the Intellectual Property Legislation Amendment Regulations 2008 (No. 1).

 

Regulation 2 specifies that the Regulations commence on 1 January 2009.

 

Regulation 3 specifies that Schedule 1 amends the Patents Regulations 1991 (the Patents Regulations) and outlines the transitional provisions that will facilitate a smooth transition to the new arrangements in Schedule 1.

 

Regulation 4 specifies that Schedule 2 amends the Patents Regulations.

 

Regulation 5 specifies that Schedule 3 amends the Trade Marks Regulations 1995 (the Trade Marks Regulations).

 

Regulation 6 specifies that Schedule 4 amends the Designs Regulations 2004 (the Designs Regulations).

 

Schedule 1 – Amendments relating to the Patent Cooperation Treaty

 

Item 1 amends the date found in subregulation 1.4(2) to reflect the latest Patent Cooperation Treaty (PCT) Rule changes.

 

Item 2 adds the dates 1 July 2008 and 1 January 2009 to the table of amendments to the PCT Rules set out at the beginning of Schedule 2A. This table identifies the dates of all amendments made to the PCT Rules since their creation.

 

Items 3 to 17 updates the English text of the PCT Rules set out in Schedule 2A to the Patents Regulations to reflect changes made to the PCT Rules by the thirty-sixth and thirty-eighth sessions of the International Patent Cooperation Union meetings held in Geneva on 24 September to 3 October 2007 and 22 to 30 September 2008.

 

The changes to the PCT Rules introduce:

· a supplementary international search system as part of the PCT system based on the premise that an international search should permit the discovery of as much earlier information relating to a PCT application as possible – (Items 3,4,5,7,8,9,10,11,12,13,14,15,16,17); and

· Korean and Portuguese as languages of International Publication – (Item 6).

 

Schedule 2 – Other amendments of Patents Regulations 1991

 

Item 1 amends subregulation 1.3(1) to add a definition for “competent authority”: this expression is used in the amendment made by item 6.

 

Item 2 amends regulation 1.6 to remove the requirement for applicants to routinely file copies of certain patent documents with IP Australia when applicants are making a patent application under the auspices of the Paris Convention (Convention application). This amendment mirrors the arrangements currently in place for applications made under the auspices of the PCT (PCT applications) where copies of certain patent documents are not routinely required. However, the Commissioner will still request the applicant to file these documents with the Patent Office when there are issues which require reference to the documents and the Commissioner is unable to readily retrieve copies of the documents from one of the secure digital libraries. An electronic document exchange service is also currently available for PCT applications, but this service is not available to applicants who file Convention applications. The amendment in item 2 also anticipates the extension of the current electronic document exchange service to apply to Convention applications. The amendment therefore reduces the costs to applicants who rely on documents filed with FPOs and streamlines the processes involved in obtaining a patent in Australia. Item 2 also simplifies the provisions of subregulations 1.6(1), (1A) and (1B) to increase readability and reduce ambiguity.

 

Item 3 amends subparagraph 3.5A(3)(b)(iii) to require a certificate of verification for any application that has been translated into English from another language. This amendment makes subparagraph 3.5A(3)(b)(iii) more consistent with other provisions of the Patents Regulations.

 

Items 4 and 5 amend subregulation 3.20(6) to no longer require an applicant to file a copy of a granted patent when requesting a modified examination. The amendment only requires the applicant file this document when requested to do so by the Commissioner. These changes are in response to increased communication between patent offices and the increased availability of patent documents on the Internet. Consequently, paragraph 3.18(3)(b) amended so that the reference to the foreign specification is not limited to a copy filed by the applicant.

 

Item 6 amends paragraph 3.20(6)(a) to allow documents requested by the Commissioner under subregulation 3.20(6) to be certified by a ‘competent authority’ rather than requiring certification by the official chief or head of the FPO. There is currently an agreed understanding and principle between patent offices for the competent authority furnishing the priority document to determine what constitutes certification, and how it will certify such a document. This was a decision made at the Assemblies of the Member States of the World Intellectual Property Organization (WIPO) in Geneva from
27 September to 5 October 2004. Although the principle was discussed in the context of priority documents, its logic has wider application to certification of copies of other documents issued by patent offices. The amendment in item 6 allows for the different certification arrangements that are in place in FPOs.

 

Item 7 inserts new regulation 3.22 to allow for the disclosure of priority or other patent documents to the International Bureau of WIPO or to a FPO at the request of the applicant, or otherwise with the consent of the applicant, irrespective of whether or not the document has been published or made open to public inspection by the Patent Office.

 

Item 8 amends paragraph 8.6(1)(c) to reflect the change made by item 6 of Schedule 2. This amendment also reflects the fact that many administrative processes such as the allocation of numbers to patent applications are now automated or exercised by more junior staff.

 

Item 9 amends subregulation 8.6(2) to simplify the provisions of paragraphs 8.6(2)(a) and (b). The amendment reflects the changes made by item 2 of Schedule 2 and results in a simplified and cheaper filing process for Convention applications. Item 9 also adds new subregulation 8.6(3) which specifies the time period within which a document requested by the Commissioner must be filed.

Item 10 amends paragraph 9A.4(d) to reflect the changes made by items 2 and 9 of Schedule 2, thus reducing the ambiguity when determining the prescribed period for filing copies of documents requested by the Commissioner. It also increases the timeframe for applicants to obtain certification of an innovation patent in certain circumstances following a request by the Commissioner under subregulation 8.6(2).

 

Item 11 amends paragraph 13.4(1)(k) to reflect the changes made by items 2 and 9 of Schedule 2.

 

Item 12 amends the note following subregulation 20.52(3) to correct a typographical error.

 

Item 13 amends Schedule 4 to the Patents Regulations to correct the spelling of ‘Bosnia and Herzegovina’.

 

Item 14 amends Schedule 4 to the Patents Regulations to insert Cape Verde into the list of Convention countries, as a result of Cape Verde becoming a member of the World Trade Organization.

 

Item 15 deletes Schedule 6 to the Patents Regulations as this schedule is now redundant following the amendments made in July 2008 by the Patents and Trade Marks Legislation Amendment Regulations 2008 (No.1).

 

Schedule 3 – Amendments of Trade Marks Regulations 1995

 

Item 1 amends Schedule 10 to the Trade Marks Regulations to correct the spelling of ‘Bosnia and Herzegovina’.

 

Item 2 amends Schedule 10 to the Trade Marks Regulations to insert Cape Verde into the list of Convention countries, as a result of Cape Verde becoming a member of the World Trade Organization.

 

Schedule 4 – Amendments of Designs Regulations 2004

 

Item 1 amends Schedule 1 to the Designs Regulations to correct the spelling of ‘Bosnia and Herzegovina’.

 

Item 2 amends Schedule 1 to the Designs Regulations to insert Cape Verde into the list of Convention countries, as a result of Cape Verde becoming a member of the World Trade Organization.

 

 


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