Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 2001 (NO. 1) 2001 NO. 98

EXPLANATORY STATEMENT

STATUTORY RULES 2001 No. 98

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

Patents Act 1990

Patents Amendment (Innovation Patents) Act 2000

Patents Amendment Regulations 2001 (No. 1)

Section 228 of the Patents Act 1990 (the Act) provides for the Governor-General to make regulations for the purposes of the Act and for the conduct of any business relating to the Patent Office.

The Patents Amendment (Innovation Patents) Act 2000 (the Innovation Patents Act) amends the Act to introduce the new innovation patent system to replace the current under-used petty patent system. Clause 6 of Schedule 2 to the Innovation Patents Act provides for the Governor-General to make regulations prescribing transitional matters necessary for giving effect to the introduction of the innovation patent system and the limited continuation of the petty patent system.

The Innovation Patents Act implements the Government's response to the Advisory Council on Industrial Property's report, Review of the Petty Patent System. The purpose of the innovation patent system is to stimulate innovation in Australian small and medium enterprises (SMEs).

The innovation patent will provide the same scope of protection as the standard patent, however it will require a lower inventive threshold than that required for a standard patent. An innovation patent has a maximum patent term of eight years, compared to a twenty year term for a standard patent.

An innovation patent will be granted after a formalities check. Businesses using the innovation patent system will benefit from cheaper, simpler processes that provide a granted patent more quickly. They will not have to bear the cost of substantive examination (the costly and time-consuming process in which the invention is assessed against statutory criteria) unless this becomes a commercial necessity.

The Innovation Patents Act also moves many of the fee payment requirements from the Act to the Patents Regulations 1991 (the Regulations) to enable this administrative function to be handled more flexibly by the Patent Office, including streamlining fee payment methods and introducing modem methods of fee payment.

These regulations amend the Regulations to:

•       fully implement the procedures and processes associated with the innovation patent system;

•       fully implement the procedures and processes associated with the new fee payment system;

•       correct minor and technical errors;

•       implement recommendations arising from a recent Patent Office review of opposition procedures and processes. The amendments will reduce delays in the opposition process and streamline procedures;

•       allow extensions of time in which to pay certain fees;

•       prevent certain conversions or amendments of documents within 3 weeks of the due date of publication of these documents. The purpose of the amendments is to prevent the unintentional publication of applications that have been converted or withdrawn just prior to the date on which they are due to become open to public inspection;

•       bring the Regulations into line with the requirements of the proposed Patent Law Treaty, which was adopted by the World Intellectual Property Organization at its Diplomatic Conference held in Geneva from 11 May to 2 June 2000;

•       allow the Patent Office to accept documents filed in electronic format. The purpose of the amendments is to provide applicants with an alternative to paper filing in line with the Government's online agenda; and

•       allow for facsimile filing of documents at a sub-office of the Patent Office.

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

The regulations will commence on the date of commencement of the Patents Amendment (Innovation Patents) Act 2000 - a date to be fixed by Proclamation, and by 24 May 2001 at the latest.

Attachment Patents Amendment Regulations 2001 (No.

Details of the regulations are as follows:

Regulation 1 identifies the amending regulations as the Patents Amendment Regulations 2001 (No. 1).

Regulation 2 specifies that the regulations commence when the Patents Amendment (Innovation Patents) Act 2000 commences.

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

Item 1 of Schedule 1 amends subregulation 1.3(1) of the Regulations by replacing the definition of 'acceptance' for petty patents with a new definition of 'acceptance' for innovation patents.

Item 2 of Schedule 1 amends regulation 1,3 of the Regulations by inserting new subregulations 1.3(5), (6) and (7). Subregulation 1.3(5) establishes the mechanism to be used to determine the date of a document which has been provided to a person on-line. Subregulation 1.3(6) makes it clear that for the purposes of the Regulations the default position is that any regulation which requires a person to provide information is a requirement to do this in writing. Subregulation 1.3(7) establishes, for the purposes of the Regulations, a general mechanism for the calculation of time periods expressed in months.

Item 3 of Schedule 1 amends regulation 1.5 to prescribe the period in which certain details of a micro-organism deposit must be included in an innovation patent specification.

Items 4 and 5 of Schedule 1 amend regulation 1.6 to provide the prescribed period for the filing of documents under section 8 of the Act for an innovation patent.

Item 6 of Schedule 1 amends regulation 2.2 to prescribe the period in which an applicant for an innovation patent must file a statement under paragraph 2.2(3)(b) of the Regulations.

Item 7 of Schedule 1 amends regulations 2.6 and 2.7 of the Regulations. Regulation 2.6 is amended consequential to the repeal of the petty patent system and the introduction of the innovation patent system and prescribes the period for filing a notice under subsection 28(2) of the Act asserting that an innovation patent is invalid. Regulation 2.7 is amended to require the filing of only one copy of documents (rather than two).

Item 8 of Schedule 1 amends subregulation 3.1(2) so that it only applies to standard patent applications.

Item 9 of Schedule 1 amends paragraph 3.1(2)(f) of the Regulations consequential to the amendment of the provisions of section 36 of the Act.

Item 10 of Schedule 1 inserts new regulation 3.1A which provides a default position that the person who makes a patent application is taken to also be the nominated person for that application.

Item 11 of Schedule 1 amends regulation 3.2 of the Regulations to provide for the formalities check for innovation patent applications. Regulations 3.2 and 3.2A maintain the existing formality requirements for provisional and standard patent specifications. Regulation 3.2B prescribes the requirements of the formalities check for innovation patent applications required by section 52 of the Act. Regulation 3.2B also sets out the regime which applies when an innovation patent application does not satisfy any one of the formalities cheek requirements.

Item 12 of Schedule 1 amends regulations 3.5 and 3.6 of the Regulations. The regulation 3.5 amendments are to implement the requirements of Article 5 of the proposed Patent Law Treaty (PLT). The member states of the World Intellectual Property Organization adopted the PLT at their Diplomatic Conference held in Geneva from 11 May to 2 June 2000. The proposed treaty will streamline the process for obtaining a patent by standardising certain formality requirements that must be met when filing a patent application. Currently these requirements vary from one country to another. Article 5 of the PLT sets out the minimum information that must be filed by a patent applicant before the Commissioner of Patents (the Commissioner) will treat a patent application as having being filed. The requirements that an applicant will need to meet under the amended regulation 3.5 will be less onerous than the existing ones.

The amendments to regulation 3.6 prescribe equivalent requirements to those of regulation 3.7 and will provide the Commissioner with more flexibility in dealing with requests made under section 32 of the Act (disputes between applicants). The amendments remove a number of the procedural requirements in regulation 3.6 which caused delays in the process.

Item 13 of Schedule 1 amends paragraph 3.8(a) consequential to amendments to section 33 of the Act and to include references to a number of new provisions introduced consequential to the implementation of the innovation patent system.

Item 14 of Schedule 1 amends regulation 3.9 to prescribe the time period within which an innovation patent application may be converted into a provisional application. The amendments also prevent the conversion of a standard patent application into a provisional application within 3 weeks of the due date of publication of the patent specification.

Item 15 of Schedule 1 deletes regulation 3.11 consequential to the repeal of section 39 of the Act.

Item 16 of Schedule 1 amends subregulation 3.12(1) to provide for the determination of the priority date(s) of the claim(s) of a complete specification filed in respect of a divisional application for an innovation patent. The amendments also replace references to section 39 of the Act consequential to the repeal of section 39 and the introduction of new Chapter 6A to the Act.

Item 17 of Schedule 1 amends subregulation 3.12(3) of the Regulations consequential to the repeal of section 39 of the Act and the introduction of new Chapter 6A.

Item 18 of Schedule 1 amends regulation 3.13 consequential to amendments to section 36 of the Act.

Item 19 of Schedule 1 amends regulation 3.16 by replacing the reference to 'petty patent' with one to 'innovation patent' consequential to the repeal of the petty patent system and introduction of the innovation patent system.

Item 20 of Schedule 1 deletes subregulation 3.18(1) consequential to the introduction of subsections 45(1A) and 48(1A) into the Act, which will now cover the restrictions set out in the subregulation.

Items 21 to 24 of Schedule 1 amend subregulations 3.18(2) and (3) consequential to amendments to the Act which change the numbers of the provisions of the Act referred to in these subregulations.

Item 25 of Schedule 1 amends the heading of regulation 3.19 to make it clear that this regulation only applies to standard patent applications.

Items 26, 49, 54, 96, 97 and 98 of Schedule 1 remove the references to regulation headings from subregulation 3.19(3), regulations 5.12, 5.13 and 5.14, subregulation 7.1(1), regulation 15.1, subregulation 15.2(1) and regulation 15.3 respectively, to simplify these regulations.

Item 27 of Schedule 1 deletes regulation 3.22 consequential to the repeal of the petty patent system.

Item 28 of Schedule 1 amends subregulation 3.23(1) consequential to amendments to the Act which change the number of the provisions of the Act referred to in this regulation.

Item 29 of Schedule 1 amends subregulation 3.25(3) so that it will only apply to standard patent applications.

Item 30 of Schedule 1 amends paragraph 3.25(4)(c) to include a reference to opposition proceedings in relation to an innovation patent under section 101M of the Act and to delete the reference to petty patents consequential to the repeal of the petty patent system.

Item 31 of Schedule 1 amends paragraph 4.2(2)(c) consequential to changes to the provisions of regulation 3.2 (see Item 11).

Item 32 of Schedule 1 amends paragraph 5.1 (a) to include a reference to section 101M of the Act which deals with innovation patent oppositions and to delete the reference to section 108 consequential to the repeal of the petty patent system.

Item 33 of Schedule 1 amends regulation 5.2 to expand the definition of the term 'applicant' for the purposes of Chapter 5 of the Regulations which deals with oppositions. The expanded definition will provide a definition of 'applicant' for the purposes of an opposition under section 101M of the Act.

Item 34 of Schedule 1 amends the heading of regulation 5.3 to make it clear that this regulation does not apply to oppositions under section 101M of the Act.

Item 35 of Schedule 1 inserts new regulation 5.3AA consequential to the introduction of the innovation patent system. The new regulation sets out the requirements for filing a notice of opposition under section 101M of the Act.

Item 36 of Schedule 1 amends the heading of regulation 5.3A consequential to the insertion of new regulation 5.3B (see Item 37).

Item 37 of Schedule 1 inserts new regulation 5.3B which prescribes the circumstances in which a notice of opposition may be amended to change the name of the person under which the matter will proceed. The current provisions only provide for amendments to a notice of opposition to correct a clerical error or obvious mistake.

Item 38 of Schedule 1 amends regulation 5.4 to exclude oppositions under section 101M of the Act from the operation of this regulation.

Items 39, 41-45 and 59 of Schedule 1 amend paragraphs 5.5(1)(a), 5,7(a) and subregulations 5.9(1) and 9.1(1) to amend the references to subregulation 5.4(1) in these regulations consequential to the amendments to subregulation 5.4(1) (see Item 38).

Item 40 of Schedule 1 inserts new subregulation 5.5(4) to add a new ground on which the Commissioner may dismiss an opposition. The new ground for dismissal will help to reduce delays in the opposition process caused by the party who has filed the notice of opposition not providing their supporting documentation in a timely manner.

Item 42 of Schedule 1 amends subregulation 5.8(1) consequential to the introduction of the innovation patent system. The amendments establish the timing requirements for the filing and service of evidence in support for an opposition under section 10 M of the Act.

Item 43 of Schedule 1 amends paragraph 5.8(2)(a) to delete the text referred to in subregulation 5.4(2) or paragraph (1)(a)'. The reference to subregulation 5.4(2) is in error as this subregulation was repealed in 1995. The reference to paragraph (1)(a) is unnecessary as regulation 5.8 is the only regulation which deals with the timing requirements for filing and serving evidence in support.

Item 44 of Schedule 1 amends paragraph 5.8(3)(a) consequential to the introduction of the innovation patent system. The amendments provide the time period within which an applicant must serve any evidence in answer for an opposition under section 101M of the Act.

Items 46 and 47 of Schedule 1 amend paragraph 5.10(1)(b) and subregulation 5.10(2) of the Regulations. The amendments insert references to regulation 5.3AA and subparagraph 5.8(1)(a)(1) into paragraph 5.10(1)(b) and 5.10(2) which will prevent the Commissioner from extending the periods prescribed in regulation 5.3AA and subparagraph 5.8(1)(a)(i).

Item 48 of Schedule 1 inserts a reference to regulation 5.3AA into subregulation 5.11(3) of the Regulations. The amendment has the effect that the reference to 'document' in subregulation 5.11(2) does not include a notice of opposition filed under section 101M of the Act.

Item 50 of Schedule 1 amends regulation 6.3 consequential to amendments to the provisions of section 33 and repeal of section 39 of the Act. Consequential to the introduction of the innovation patent system, the amendments also insert new provisions to be used to determine the date of a patent for an innovation patent.

Item 51 of Schedule 1 deletes regulations 6.5 and 6.6 consequential to the repeal of the petty patent system.

Item 52 of Schedule 1 amends subregulation 6.11(3) to replace 'beginning on' with 'from' so that calculation of the time period prescribed in this subregulation starts from the day after the date the notice is issued.

Item 53 of Schedule 1 inserts new regulations 6A.1 and 6A.2 into the Regulations to provide for the making of divisional applications under the new Chapter 6A of the Act. The new regulations establish the procedural regime associated with making a divisional application under new sections 79B and 79C of the Act.

Item 55 of Schedule 1 amends paragraph 8.1(3)(b) to insert a reference to regulation 3.2A consequential to the amendments to the numbering of the provisions of regulation 3.2 (see Item 11).

Item 56 of Schedule 1 amends subregulation 8.2(4) to delete the reference to petty patents consequential to the repeal of the petty patent system.

Item 57 of Schedule 1 amends subregulation 8.3(2) consequential to the amendment of section 141 of the Act. This subregulation modifies the text of section 141 and the amendments to the subregulation reflect the amendments made to section 141.

Item 58 of Schedule 1 amends subregulation 8.6(2) to provide the prescribed period which will apply to the filing of documents for the purposes of subsection 95(3) of the Act in the case of an innovation patent application.

Item 60 of Schedule 1 amends subregulations 9.2(1) and (2) to insert the requirements for filing a request for the re-examination of an innovation patent.

Item 61 of Schedule 1 amends subregulation 9.2(4) to replace 'may not re-examine' with 'must not re-examine' and thereby provide that the Commissioner must not re-examine a complete specification unless the request for re-examination meets the requirements of subregulations 9.2(2), (2A) and (3).

Items 62 and 64 of Schedule 1 amend subregulations 9.2(5) and 9.3(1) to insert references to subsection 101G(2) of the Act consequential to the introduction of the innovation patent system.

Item 63 of Schedule 1 amends subregulation 9.2(7) to insert a reference to subsection 101G(1) of the Act consequential to the introduction of the innovation patent system.

Item 65 of Schedule 1 amends subregulation 9.4(1) to insert references to subsection 101H(I) and 101G(2) of the Act consequential to the introduction of the innovation patent system.

Item 66 of Schedule 1 amends subregulation 9.4(2) to insert a reference to subsection 101H(1) of the Act consequential to the introduction of the innovation patent system.

Item 67 of Schedule 1 amends regulation 9.5 to delete the reference to subsection 97(2) of the Act from this regulation that is referred to in error.

Item 68 of Schedule 1 inserts a new Chapter 9A and associated regulations into the Regulations consequential to the introduction of Chapter 9A into the Act - examination of innovation patents. The new regulations establish the procedures, processes and time periods which will apply to the examination of innovation patents.

Item 69 of Schedule 1 amends regulation 10.1 consequential to the introduction of the innovation patent system and the introduction of on-line filing. The amendments amend subregulation 10.1(1A) to list the circumstances in which the requirement to file a request to amend an innovation patent in the approved form will be met by filing a written statement.

The amendments also amend subregulation 10.1(2) consequential to introduction of on-line filing by replacing references to 'pages' with 'parts' and replacing the current requirement for three copies of each document with two copies (one of which will identify the proposed changes to the document).

Item 70 of Schedule 1 amends paragraph 10.2(1)(b) to insert a reference to section 103 of the Act to ensure that where section 103 applies, the mortgagee's or licensee's written consent is obtained.

Item 71 of Schedule 1 amends subregulation 10.2(6) to delete the references to petty patents and provide that where an innovation patent is opposed under section 101M of the Act, and the patentee has requested leave to amend the patent request or complete specification, that the Commissioner be required to provide the opponent with a copy of the request for leave to amend and the statement of proposed amendments and invite the opponent to comment on the request and statement.

Item 72 of Schedule 1 amends paragraph 10.3(3)(a) to replace the references to petty patents with innovation patents. The amendments provide that once a patent application has been accepted, the patent request cannot be amended to convert an application for a standard patent to an application for an innovation patent and vice versa.

Item 73 of Schedule 1 amends subparagraphs 10.3(3)(b)(i) and (ii) to delete the references to petty patents consequential to the repeal of the petty patent system.

Item 74 of Schedule 1 inserts new subregulations (5), (6), (7), (8) and (9) into regulation 10.3 which sets out what amendments are not allowable under the Act.

Subregulations 10.3(5) and (6) provide that if certain requests to amend a complete specification are made within the 3 week period before the due date of publication of a notice under section 54 of the Act they will not be allowed by the Commissioner until after the publication date. This amendment is to prevent the unintentional publication of specifications once they have been placed in the queue for publication.

Subregulation 10.3(7) provides that for an innovation patent application the only amendments to the complete specification that will be allowable before the application proceeds to grant are amendments proposed in response to a direction issued under proposed regulation 3.2B (formalities cheek).

Subregulation 10.3(8) provides that once an innovation patent has been granted but not yet examined, the patent owner will not be able to make amendments which would include material that would contravene subsections 18(2) or 18(3) of the Act.

Subregulation 10.3(9) prevents the amendment of a patent request following the grant of a patent.

Item 75 of Schedule 1 amends subregulation 10.5(1) consequential to the introduction of the innovation patent system to set out the circumstances in which the Commissioner must grant leave to amend a filed document when the proposed amendments are in relation to the examination of an innovation patent under section 101B of the Act.

Item 76 of Schedule 1 amends paragraph 10.5(2)(a) to replace the reference to acceptance of the petty patent under section 50 of the Act with a reference to a decision to certify an innovation patent under section 101E of the Act.

Item 77 of Schedule 1 amends paragraph 10.5(4)(a) of the Regulations to delete the reference to section 62 of the Act consequential to the repeal of the petty patent system.

Item 78 of Schedule 1 amends regulation 10.8 to insert a reference to paragraph 10.5(1)(c) consequential to amendments to subregulation 10.5(1) (see Item 75).

Item 79 of Schedule 1 deletes regulation 10.9 consequential to the repeal of section 111 and paragraph 228(2)(d) of the Act.

Item 80 of Schedule 1 deletes regulation 10.13 consequential to the repeal of the petty patent system.

Item 81 of Schedule 1 amends paragraph 12.1(2)(a) to require that a person applying to a court for a compulsory licence must provide the Registrar of the court with the date that the innovation patent was certified.

Items 82 and 83 of Schedule 1 amend the regulation 12.2 heading and subregulation 12.2(1) to remove the references to 'standard' from these regulations so that the provisions will apply to both innovation and standard patents.

Item 84 of Schedule 1 amends subregulation 12.4(1) to provide that a person applying for a court order to revoke an innovation patent under subsection 138(1) of the Act must include the certification date of the innovation patent in their documentation.

Item 85 of Schedule 1 inserts a new regulation for standard patent applications, to prescribe a period of 3 weeks before a notice under section 54 or a notice of acceptance is due to be published for the purposes of subsection 141(1) of the Act. Under subsection 141(1), patent applications cannot be withdrawn during a prescribed period.

Item 86 of Schedule 1 inserts a new provision in subregulation 13.3(1A) to make it clear that the continuation fee includes any additional fee payable under this regulation.

Item 87 of Schedule 1 replaces the reference to section 39 of the Act with a reference to section 79B consequential to the amendment of those provisions of the Act which deal with divisional applications.

Item 88 of Schedule 1 amends the provisions of subregulation 13.4(1) to replace 'commencing on' with 'from' so that calculation of the time periods specified in this subregulation start from the day following the event to which the provisions relate.

Item 89 of Schedule 1 amends subregulation 13.4(2) to replace the phrase 'the longer or longest period so worked out' with 'whichever period ends latest' to correct an error and give effect to the intention of the provision - which is that where, according to the Regulations, there is more than one prescribed period after the expiry of which a patent application will lapse, the application lapses on the expiry of the latest of those periods.

Items 90, 91 and 93 to 95 of Schedule 1 amend regulation 13.6 of the Regulations to provide for the timing for payment of renewal fees for innovation patents.

Item 92 of Schedule 1 insert a new provision in subregulation 13.6(2) to make it clear that the renewal fee (for standard or innovation patents) includes any additional fee payable under this regulation.

Item 99 of Schedule 1 inserts a new regulation to require that a person making an application to a prescribed court seeking a declaration that the Crown has exploited an innovation patent must include the date on which the innovation patent was certified in their application.

Items 100 and 101 of Schedule 1 amend subregulation 19.1(1) so that the subregulation sets out the prescribed particulars to be recorded on the Register for both innovation and standard patents.

Item 102 of Schedule 1 amends regulation 22.2 of the Regulations. The amendments insert new subregulations 22.2(2) and (3) consequential to the introduction of the new fee payment system. The new subregulations will establish the trigger for when fees listed in Parts 1 and 2 of Schedule 7 become payable. The amendments also insert a requirement that in certain circumstances, before the Commissioner will treat a Patent Cooperation Treaty (PCT) application as a standard patent application under section 89(3) of the Act, the patent applicant must pay certain PCT fees.

Item 103 of Schedule 1 inserts new regulations 22.2A to 22.2H into the Regulations consequential to the. introduction of the new fee payment system. The new regulations establish a mechanism that will allow the Commissioner to issue invoices to pay certain fees. The new regulations provide time limits for payment of these fees and the consequences of non-payment within time. To ensure customers are not disadvantaged, the regulations also provide that for a number of the fees, if the Commissioner does not issue an invoice within a month of the fee becoming payable, the fee will be taken to have been paid.

Items 104 and 105 of Schedule 1 amend paragraphs 22.5(a) and (b) of the Regulations consequential to the repeal of the Audit Act 1901 to insert references to the equivalent terms and provisions of the Financial Management and Accountability Act 1997.

Item 106 of Schedule 1 amends subregulation 22.6(2) so that it will only apply to standard patent applications.

Items 107 and 108 of Schedule 1 amend regulation 22.8 consequential to the introduction of the new fee payment system. The amendments formalise the existing mechanism that allows a party to request the taxing of costs, so that the date when the fee associated with the request becomes payable can be established.

Item 109 of Schedule 1 inserts a new regulation to prescribe fax as a means for filing documents at a sub-office.

Item 110 of Schedule 1 inserts a reference to new regulation 5.3AA into subregulation 22.10(3). Subregulation 22.10(3) provides that a person who files a notice of opposition must serve a copy of that notice on each person interested in the opposition proceedings.

Item 111 of Schedule 1 inserts a new regulation that allows a person to provide the Commissioner with an address for correspondence, which need not be in Australia, to which the Commissioner can send all correspondence. The address for correspondence is separate from any existing requirement to provide an address for service, which must be an address in Australia.

Item 112 of Schedule 1 amends regulation 22.11 to insert new subregulations to allow the Commissioner (in specified circumstances) to grant an extension of time which is for a longer period than the applicant asked for. This action was previously possible under the provisions of subregulation 22.2(2) (general fees), however it is thought that it is more appropriately expressed in regulation 22.11.

Item 113 of Schedule 1 amends regulation 22.11 of the Regulations to provide that the payment of continuation or renewal fees within the 6-month 'grace period' will be prescribed relevant acts and prescribed circumstances for the purposes of subsection 223(4) of the Act. Subsection 223(4) provides that the Commissioner must advertise an application for an extension of time for doing a prescribed relevant act in prescribed circumstances in the Official Journal.

Items 114, 115 and 137 of Schedule 1 amend the Regulations to remove references to regulation headings from a number of the regulations to make these regulations shorter and therefore easier to read and understand.

Item 116 of Schedule 1 inserts a number of new transitional regulations that provide for the treatment of certain petty patent applications. New regulation 22.32 sets out the process to be used to determine the date of patent and priority date for an innovation patent which is a divisional application of a petty patent or petty patent application. New regulation 23.33 sets out the examination process to apply to an innovation patent which has been converted from a petty patent application. New regulation 23.34 provides that if, after the repeal of the petty patent system, an applicant requests that their PCT application be treated as an application for a petty patent, the application will be treated as an application for a standard patent. New regulation 23.35 establishes the fee payment mechanism to apply to those petty patent fees which will become payable after the commencement of the new fee payment system.

Item 117 of Schedule 1 amends the heading of Schedule 3 to the Regulations. The amendments amend the references to the regulations to which Schedule 3 relates, consequential to the amendments to regulation 3.2 (see Item 11).

Items 118 to 120 of Schedule 1 amend Schedule 3 to the Regulations to set out the formality requirements to apply consequential to the Patent Office providing for the electronic filing of documents. Item 120 also inserts a new clause 14 into Schedule 3 to provide that a complete application for a patent must not contain or consist of scandalous matter.

Items 121, 132 and 135 of Schedule 1 amend the descriptions of fee item 3 of Part 1 and fee items 23, 24 and 31 of Part 2 of Schedule 7 to the Regulations consequential to the introduction of the new fee payment system.

Items 122 to 126, 129, 130 and 133 of Schedule 1 amend Part 2 of Schedule 7 to the Regulations consequential to the introduction of the innovation patent system and repeal of the petty patent system. The amendments introduce new fee items which will be payable for an innovation patent and also make a number of amendments to existing fee items to include references to the relevant new provisions in the Act and Regulations relating to the innovation patent.

Item 127 of Schedule 1 inserts a reference to new regulation 5.3AA (filing of opposition under section 101M of the Act (see Item 35)) into fee item 8 of Part 2 of Schedule 7 to the Regulations.

Item 128 of Schedule 1 inserts a reference to new regulation 5.3B (amendment of notice of opposition: change of opponent (see Item 37)) into fee item 11 of Part 2 of Schedule 7 to the Regulations.

Item 131 of Schedule 1 deletes fee item 18 of Part 2 of Schedule 7 to the Regulations consequential to the amendments to regulation 22.11 set out in Item 112.

Item 134 of Schedule 1 amends fee item 29 of Part 2 of Schedule 7 to the Regulations by including a reference to new subregulation 3.2A(2) consequential to the amendments to regulation 3.2 (see Item 11).

Item 136 of Schedule 1 deletes two existing fee items consequential to the amendments to prevent publication provided by new regulation 13.1A (see Item 85).


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