Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 2000 (NO. 1) 2000 NO. 317

STATUTORY RULES 2000 No. 317

Issued by the Authority of the Parliamentary Secretary to the Minister for Industry, Science and Resources

Patents Act 1990

Patents Amendment Regulations 2000 (No. 1)

Section 228 of the Patents Act 1990 (the Act) allows the Governor-General to make regulations for the purposes of the Act, to prescribe 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 regulations amend the Patents Regulations 1991 (the Regulations) to:

*       implement decisions made by the Patent Cooperation Treaty (PCT) Union Assembly (the Assembly) at its 27th, 28th and 29th sessions in Geneva from 20 to 29 September 1999, 13 to 17 March 2000 and 25 September to 3 October 2000 respectively. The Assembly agreed that any country which is a member of the World Trade Organization is to be treated as a Convention country, regardless of whether the country is a party to the Paris Convention for the Protection of Industrial Property (the Convention). The Assembly also adopted several amendments relating to the provision of documents concerning the identity of the patent applicant or inventor, and agreed to reduce the fees payable by applicants in certain circumstances.

*       change the requirements for the filing of basic applications. A basic application is a document used by a patent applicant to establish the priority date of their invention. Under the PCT Regulations, the Patent Office cannot request a copy of the basic application directly from the applicant. The purpose of the amendments is to implement these rules and to change the circumstances under which a translation of a basic application must be filed. The amendments for filing a translation will apply to both PCT and non-PCT (or Convention) applications. The amendments provide that:

-       a translation' will only be required if requested by the Commissioner of Patents; and

-       set the time by which the applicant must file the document.

*       implement recommendations arising from a recent Patent Office review of the procedures involved following the opposition to the grant of a patent. The purpose of the amendments is to reduce the costs and delays associated with the opposition process.

*       allow for the electronic filing of amino acid and nucleotide sequence listings. Patent applications containing such listings are often . lengthy and therefore expensive to file, and also create handling and storage problems for the Patent Office. The filing of sequences in electronic format will help to reduce these problems.

*       make minor amendments resulting from a recent decision by the Patent Office to accept documents filed outside business hours by facsimile.

By virtue of subsection 228(5) of Act, it is necessary to keep the English text of the PCT, set out in Schedules 2 and 2A to the Regulations, in an up-to-date form. The necessary amendments to the English text commence either on gazettal, 1 January 2001 or 1 March 2001.

Details of the amendments made by these regulations are in the Attachment.

The proposed regulations 1 to 3 and Schedule 1 are to commence on gazettal. Schedules 2 and 3 commence on 1 January 2001 and 1 March 2001 respectively.

Attachment

Patents Amendment Regulations 2000 (No. 1)

Regulation 1 identifies these amending regulations as the Patents Amendment Regulations 2000 (No. 1).

Regulation 2 specifies that regulations 1, 2 and 3 and Schedule 1 are to commence on gazettal, Schedule 2 is to commence on 1 January 2001 and Schedule 3 is to commence on 1 March 2001.

Regulation 3 specifies that Schedules 1, 2 and 3 amend the Patents Regulations 1991.

Item 1 of Schedule 1 amends subregulation 1.6(1) to change the timing requirements relating to the filing of basic applications.

Item 2 of Schedule 1 deletes subregulation 3.1(3) pursuant to the amendments to subregulation 1.6(1).

Item 3 of Schedule 1 amends subregulation 3.2(2)(c) to indicate that a true copy of a specification is not required in those instances where the specification is filed in electronic form.

Item 4 of Schedule 1 deletes subregulation 3.5(3) which is no longer required now that the Patent Office accepts documents filed by facsimile.

Items 5 and 6 of Schedule 1 amend subregulation 5.9(2) to make it easier to amend the statement setting out the grounds of opposition to the grant of a patent.

Items 7 and 8 of Schedule 1 amend subregulation 5.10(2). The amendments specify that any application for an extension of time sought during the opposition process must first be served on the other party to the opposition and then filed with the Commissioner of Patents (the Commissioner) as soon as possible thereafter.

Item 9 of Schedule 1 amends subregulations 8.6(2) and (3) consequential to the amendments to subregulation 1.6(1).

Item 10 of Schedule 1 amends subregulation 10.2(7) to change the time limits allowed for a person opposing the grant of a patent to comment on proposed amendments made during the opposition process.

Items 11 and 12 of Schedule 1 amend subregulation 13.4(1) consequential to the amendments to subregulation 1.6(1). If the Commissioner requests a basic application (or translation) the applicant has at least 5 months from the date of the Commissioner's request to provide the document before the patent application lapses.

Item 13 of Schedule 1 amends subregulation 13.4(2) consequential to the amendments to subregulation 13.4(1).

Items 14, 15, 16 and 17 of Schedule 1 amend Rule 4.10 of Schedule 2A to the Regulations to specify that any country which is a member of the World Trade Organization is to be treated as a Convention country, regardless of whether the country is a party to the Paris Convention for the Protection of Industrial Property.

Item 18 of Schedule 1 amends Schedule 3 to the Regulations to insert a new clause 12 which allows amino acid sequences and nucleotide sequences to be filed electronically.

Items 19 and 20 of Schedule 1 amend item 3 of Part 2 of Schedule 7 to the Regulations to include a fee item of $1000 for filing an amino acid sequence or a nucleotide sequence in electronic form (see item 18 above).

Item 1 of Schedule 2 amends subregulation 1.4(2) to specify that the English text of the PCT in force for Australia as at 1 January 2001 is the text set out in Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty).

Item 2 of Schedule 2 amends Schedule 2A to the Regulations to update the adoption and amendment dates of the Regulations under the PCT.

Item 3 of Schedule 2 amends the Schedule of Fees in Schedule 2A to the Regulations. Item 2(a) of the Schedule of Fees is amended to reduce the total number of designations for which a fee is payable under Rule 4.9(a) of the PCT from 8 to 6.

Item 4 of Schedule 2 amends item 2(i) of Part 4 of Schedule 7 to the Regulations to reduce the maximum number of designations for which a fee is payable from 8 to 6 consequential to the PCT Assembly decision.

Item 5 of Schedule 2 amends Part 4 of Schedule 7 to the Regulations. Item 2(ii) of Part 4 is amended to reduce the number of designations required before a flat fee is payable from 9 to 7 consequential to the PCT Assembly decision.

Item 6 of Schedule 2 amends Part 4 of Schedule 7 to the Regulations. Item 2(ii) of Part 4 is amended to reduce the maximum total which is payable for designation fees from 1120 Swiss francs to 840 consequential to the PCT Assembly decision.

Item 1 of Schedule 3 amends subregulation 1.4(2) to specify that the English text of the PCT in force for Australia as at 1 March 2001 is the text set out in Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty).

Item 2 of Schedule 3 amends Rule 4.1 of Schedule 2A to the Regulations to specify that the international application request (the request) may contain declarations as provided for in Rule 4.17. These declarations relate either to the applicant or the inventor.

Item 3 of Schedule 3 amends Rule 4.5 of Schedule 2A to the Regulations to specify additional applicant information that may appear on the request.

Item 4 of Schedule 3 amends Rule 4.6 of Schedule 2A to the Regulations to update the circumstances under which the request shall indicate the name and address of the inventor or inventors.

Item 5 of Schedule 3 amends Rule 4.7 of Schedule 2A to the Regulations to specify additional information that may appear on the request in relation to an agent, where appointed by the applicant.

Items 6 and 15 of Schedule 3 amend Rules 4.8 and 53.5 of Schedule 2A to the Regulations to clarify that a common representative or agent is 'appointed' by the applicant rather than 'designated'.

Item 7 of Schedule 3 inserts a new Rule 4.17 into Schedule 2A to the Regulations. This new Rule lists the declarations which may be included in a request.

Item 8 of Schedule 3 inserts a new Rule 26 ter. This amendment provides for the correction of, or addition to, declarations referred to in Rule 4.17.

Item 9 of Schedule 3 inserts a new Rule 47.1(a ter). This amendment specifies that the International Bureau is to notify each designated Office of the receipt of a declaration referred to in Rule 4.17.

Item 10 of Schedule 3 amends Rule 48.2(a) of Schedule 2A to the Regulations to indicate that the published form of the international application (the pamphlet) shall contain any declaration referred to in Rule 4.17.

Item 11 of Schedule 3 amends Rule 48.2(b) of Schedule 2A to the Regulations to specify that the pamphlet shall indicate whether the request contains any declaration referred to in Rule 4.17.

Item 12 of Schedule 3 amends Rule 51 bis.1 (a) of Schedule 2A to the Regulations. The purpose of this amendment is to clarify the types of documents which the applicant may need to provide to a designated Office to establish their entitlement.

Item 13 of Schedule 3 amends Rule 51 bis.1(d) of Schedule 2A to the Regulations and inserts new Rules 51 bis.1 (e) and (f). Amended Rule 51 bis.1(d) provides that the translation of an international application may be certified by either a public authority or a sworn translator. Rules 51 bis.1(e) and (f) specify that a designated Office may require the applicant to file a translation of the basic application, but only in certain circumstances.

Item 14 of Schedule 3 inserts a new Rule 51 bis.2 into Schedule 2A to the Regulations. This new Rule specifies the circumstances under which a designated Office shall not require certain documents or evidence relating either to the applicant or the inventor.

Item 16 of Schedule 3 amends Rule 66.7(b) of Schedule 2A to the Regulations to specify that an International Preliminary Examination Authority may only invite the applicant to provide a translation of the basic application in specific circumstances.