Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 2002 (NO. 4) 2002 NO. 317

STATUTORY RULES 2002 No. 317

Issued by the Authority of the Minister for Industry, Tourism and Resources

Patents Act 1990

Patents Amendment Regulations 2002 (No. 4)

Section 228 of the Patents Act 1990 (the Act) provides that the Governor-General may 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.

Paragraph 228(1)(d) of the Act provides that the Governor-General may make regulations for the purposes of carrying out or giving effect to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (Budapest Treaty). Paragraph 228(1)(e) of the Act provides that the Governor-General may make regulations for the purposes of carrying out or giving effect to the Patent Cooperation Treaty (PCT) whether in relation to PCT applications or otherwise.

Subsection 228(5) of the Act requires the Governor-General to make regulations setting out the English text of the Budapest Treaty and the PCT as in force for Australia on the commencing day of the Act, and afterwards such regulations as are necessary to keep that text in an up-to-date form.

Schedule 1 to the Act defines a Convention country as a foreign country declared by the Patents Regulations 1991 to be a Convention country for the purposes of the Act.

The purpose of the Regulations is to implement decisions taken at the PCT Assembly and Budapest Treaty Assembly meetings in Geneva from 23 September to 1 October 2002 and to update the list of Convention countries in Schedule 4 to the Patents Regulations.

The PCT provides a system for the international filing of patent applications, whereby an applicant may file one application with the International Bureau and designate the countries in which they require patent protection. The amendments to the Regulations Under the PCT:

•       allow the basic fees for filing an international application to be reduced if the international application is filed electronically, regardless of whether or not it is accompanied by a paper copy of the application (item 6 of Schedule 1);

•       require applicants to provide a translation of their international patent application into any of the languages of publication (Chinese, English, French, German, Japanese, Russian or Spanish) that the receiving Office accepts (items 3, 4, 6 and 8 to 15 of Schedule 2);

•       allow receiving Offices to request a translation of the patent request into any of the languages of publication for the purposes of processing the application, even though that office may be prepared to accept the application in any language for the purposes of according a filing date to the application (item 7 of Schedule 2); and

•       provide for the reinstatement of rights in situations where the applicant has missed certain deadlines in spite of exercising due care or where the delay was unintentional (items 5 and 16 of Schedule 2).

The Budapest Treaty provides a system for the disclosure of an invention that involves a microorganism by depositing a sample of the microorganism with an international depositary authority. The amendments to the Regulations Under the Budapest Treaty delete all references to a paper journal and allow for publications under the Budapest Treaty to be made on paper or in electronic form (items 3 to 5 of Schedule 1).

The Regulations update the modification dates of the Regulations Under the PCT and the Regulations Under the Budapest Treaty (item 2 of Schedule 1 and item 2 of Schedule 2) and the dates that the English text of the PCT and Budapest Treaty are in force in Australia (item 1 of Schedule 1 and item 1 of Schedule 2).

The Regulations also add the Seychelles to the list of Convention countries in Schedule 4 to the Patents Regulations as a result of its recent accession to the Paris Convention for the Protection of Industrial Property (item 7 of Schedule 1).

The Paris Convention enables nationals of member states to claim the date they first filed their application for a design as the date of filing in other Convention countries (Article 4). However, the applications must be filed in other Convention countries within 12 months of the filing date in the first country in order to obtain priority. One of the advantages of the right of priority is that when an applicant desires protection in more than one country, the applications are not required to be filed at the same time. The applicant has 12 months to decide which countries in which they wish to file applications and take any appropriate steps to gain protection. As Australia is a member of the Paris Convention this right also applies to Australian nationals filing applications overseas.

Details of the Regulations are in the Attachment.

Regulations 1 - 3 and Schedule 1 which relate to international treaty obligations under the PCT, Budapest Treaty and Paris Convention would commence on gazettal.

Regulation 4 and Schedule 2 which updates the Patent Cooperation Treaty would commence on 1 January 2003.

Attachment

Patents Amendment Regulations 2002 (No.4)

Regulation 1 identifies the Regulations as the Patents Amendment Regulations 2002 (No. 4).

Regulation 2 indicates that regulations 1 to 3 and Schedule 1 to the Regulations commence on gazettal, while regulation 4 and Schedule 2 commence on 1 January 2003.

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

Regulation 4 provides for transitional arrangements in relation to the amendments that are made by Schedule 2.

Item 1 of Schedule 1 amends subregulation 1.4(1) of the Patents Regulations to specify that the English text of the Budapest Treaty in force for Australia as at 1 October 2002 is the text set out in Schedules 1 and 1A to the Patents Regulations.

Item 2 of Schedule 1 amends Schedule 1A to the Patents Regulations to update the modification dates of the Regulations Under the Budapest Treaty.

Items 3 to 5 of Schedule 1 amend Rules 13.1 and 13.2 of the Regulations Under the Budapest Treaty to allow for the publication of information in electronic form. These items remove all references to a paper journal so the text of the Budapest Treaty reflects the current practice of publishing information electronically.

Item 6 of Schedule 1 amends the Schedule of Fees to the Regulations Under the PCT to allow the basic fees for filing an international application to be reduced if the international application is filed electronically, regardless of whether or not it is accompanied by a paper copy of the application.

Item 7 of Schedule 1 inserts the Seychelles into the list of Convention countries in Schedule 4 to the Patents Regulations.

Item 1 of Schedule 2 amends subregulation 1.4(2) of the Patents Regulations to specify that the English text of the PCT in force for Australia as at 1 January 2003 is the text set out in Schedules 2 and 2A to the Patents Regulations.

Item 2 of Schedule 2 amends Schedule 2A to the Patents Regulations to update the modification dates of the Regulations Under the PCT.

Items 3 to 5 of Schedule 2 amend Schedule 2A to the Patents Regulations to update the Table of Provisions of the Regulations Under the PCT as a consequence of the amendments that are made by items 6, 10 and 16 of Schedule 2.

Item 6 of Schedule 2 amends the heading of Rule 12 of the Regulations Under the PCT to reflect the fact that Rule 12 encompasses translations for the purposes of international publication as well as international search.

Item 7 of Schedule 2 amends paragraph 12.1(c) of the Regulations Under the PCT to provide that a patent request must be filed in a language of publication that the receiving Office accepts.

Item 8 of Schedule 2 amends subparagraph 12.2(b)(i) of the Regulations Under the PCT to delete a reference to paragraph 48.3(b), as a consequence of the amendment that is made by item 15 of Schedule 2. Item 8 inserts a reference to new Rule 12.4 into subparagraph 12.2(b)(i) as this Rule will require translations of international applications.

Item 9 of Schedule 2 amends paragraph 12.3(e) of the Regulations Under the PCT to clarify the basic fee that is being referred to in this paragraph.

Item 10 of Schedule 2 inserts new Rule 12.4 into the Regulations Under the PCT. Rule 12.4 provides that an applicant must provide a translation of their international application into any language of publication that the receiving Office accepts. The translation must be provided within 14 months of the priority date. If the translation is not provided within this time limit the receiving Office must invite the applicant to provide the translation and, at the discretion of the Office, to pay a late fee. The penalty for not providing the translation and paying any fees is that the international application will be deemed to have been withdrawn.

Items 11 to 14 of Schedule 2 add references to new Rule 12.4 into paragraphs 22.1(h), 26.3(b), 29.1 (a) and 48.3(a^bis).

Item 15 of Schedule 2 deletes paragraph 48.3(b) of the Regulations Under the PCT as the matters dealt with by this paragraph are encompassed by new Rule 12.4.

Item 16 of Schedule 2 inserts new Rule 49.6 into the Regulations Under the PCT. Rule 49.6 provides for the reinstatement of rights where the applicant failed to comply with certain time limits unintentionally or in spite of due care. Reinstatement is available on request by the applicant before the earlier of two months from the date of removal of the cause of the failure to meet the time limit or 12 months from the date of the expiration of the time limit. The applicant must give reasons for their failure to meet the time limit and the Office may require a fee to be paid and that a declaration or other supporting evidence be filed. The Office may not refuse a request without giving the applicant an opportunity to comment on the intended refusal.