Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 2003 (NO. 2) 2003 NO. 213

STATUTORY RULES 2003 No. 213

Issued by the Authority of the Minister for Small Business and Tourism

Patents Act 1990

Patents Amendment Regulations 2003 (No. 2)

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)(e) 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, where relevant, 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 text up-to-date.

The main purpose of these Regulations is to amend the Patents Regulations 1991 to implement the new regime for the disclosure of patent search results that is provided for in the Intellectual Property Laws Amendment Act 2002.

The Regulations also make some minor amendments to the Patents Regulations to delete a redundant reference to subparagraph 3.2(2)(c)(ii) of the Patents Regulations and to make the order of the parts of a patent application consistent with the requirements of the PCT. In addition, the Regulations amend the Patents Regulations to ensure that all amendments made to a PCT application are also taken to have been made for the purposes of the Act.

Details of the Regulations are in the Attachment.

Schedule 1 to the Regulations commences on gazettal and Schedule 2 commences on the commencement of Part 1 of Schedule 2 to the Intellectual Property Laws Amendment Act, 26 August 2003.

Attachment

Patents Amendment Regulations 2003 (No. 2)

Details of these regulations are as follows:

Regulation 1 identifies these regulations as the Patents Amendment Regulations 2003 (No. 2).

Regulation 2 indicates that regulations 1 to 3 and Schedule 1 commence on gazettal. Schedule 2 will commence on the commencement of Part 1 of Schedule 2 to the Intellectual Property Laws Amendment Act 2002.

Regulation 3 specifies that Schedules l and 2 amend the Patents Regulations 1991 (the Regulations).

Item 1 of Schedule 1 deletes the reference to subparagraph 3.2(2)(c)(ii) from paragraph 2(f) of Schedule 3 to the Regulations. Subparagraph 3.2(2)(c)(ii) was deleted from the Regulations in 2001 so this reference is redundant.

Item 2 of Schedule 1 amends subclause 5(1) of Schedule 3 to the Regulations to make the order of the parts of a patent application consistent with the requirements of the Patent Cooperation Treaty (PCT).

Item 1 of Schedule 2 inserts new regulation 1.3A to provide for the definition of 'completed' in relation to a search.

Item 2 of Schedule 2 replaces current regulation 3.17A with a new provision. New regulation 3.17A provides for the manner in which an applicant must inform the Commissioner of the results of documentary searches and the time period in which the search results must be provided.

An applicant may inform the Commissioner of the results by providing either a list of the documents cited by the foreign patent office or a copy of the search report. If a list is provided, it need not include details of documents that have already been disclosed in relation to the relevant application. In respect of search results issued by the Patent Office of the United Kingdom (UK Patent Office) or the European Patent Office (EPO), the applicant must also include any symbols used to indicate the relevance of the cited documents if they disclose the results by providing a list of the cited documents. However, this requirement only applies if the list is provided on or after 26 August 2003, which is the commencement date of this Schedule.

New subregulation 3.17A(4) provides for the time period in which the search results must be disclosed. The applicant must inform the Commissioner of the results of the searches at the time they request examination, or within 6 months of the search being completed.-whichever is later. As a transitional arrangement, all parties will have until 1 February 2004 to provide the search results.

New subregulations 3.17A(5), (6) and (7) provide for an extension mechanism to allow the time in which the search results must be disclosed to be extended. The applicant may file an application for the extension at any time up until 3 months after the application is accepted. The extension will be automatically granted if the requirements of these provisions are met.

This item also inserts new regulation 3.17B, which provides for the search results that do not need to be disclosed under paragraph 45(3)(a) of the Patents Act 1990 (the Act). The applicant does not need to disclose the International Search Report or any other search results that the Patent Office would already have received under subsection 45(3) in relation to the application. However, this does not include the results of searches conducted by or on behalf of the EPO or the UK Patent Office, as these search results must always be disclosed regardless of whether the results have previously been disclosed.

In the case of divisional applications, the applicant does not need to disclose search results that had been disclosed for the application on which the divisional application is based (Application B). If Application B was itself a divisional application, then the applicant will not need to disclose the results of searches that were disclosed in relation to the application on which Application B was based.

For patents of addition the applicant does not need to disclose search results that had been disclosed for the main invention. There is also no requirement to disclose search results that had not been received by the applicant or that indicate a nil result.

Item 3 of Schedule 2 inserts new regulation 8.1B to ensure that all amendments made to applications under the PCT are also taken to have been made for the purposes of the Act.

The PCT allows patent applicants to obtain patent protection in several different countries by filing an application with the International Bureau and designating the countries in which protection is sought. Under the Act, a PCT application is treated slightly differently to applications not filed under the PCT until it 'enters the national phase', at which point it is treated the same as other applications. This is because prior to national phase entry the PCT application is handled under the PCT and any processing steps or modifications of the application are carried out in accordance with the PCT. Once the application enters national phase all processing steps are handled under the Act.

Subsection 89(5) of the Act provides for the situation where a ,PCT application is amended before it enters the national phase. It ensures that any such amendments, which would have been processed under the PCT, are also taken to have been made for the purposes of the Act.

Some amendments have been made to the PCT that will change the time frame in which a PCT application can be amended. The effect of these amendments is that certain amendments to a PCT application will not be encompassed by subsection 89(5) and will therefore not be taken to have been made for the purposes of the Act. This item would rectify this and ensure that all amendments to a PCT application made before national phase entry are also taken to have been made for the purposes of the Act.

The Note included in this item makes it clear that new regulation 8.1B applies in different circumstances to subsection 89(5).

Item 4 of Schedule 2 replaces current subregulation 9A.2A(1) with a new provision. New subregulation 9A.2A(1) provides for the manner in which a patentee must inform the Commissioner of the results of documentary searches and the time period in which the search results must be provided.

A patentee may inform the Commissioner of the results by providing either a list of the documents cited by the foreign patent office or a copy of the search report. If a list is provided, it need not include details of documents that have already been disclosed in relation to the relevant application. In respect of search results issued by the UK Patent Office or the EPO, the applicant must also include any symbols used to indicate the relevance of the cited documents if they disclose the results by providing a list of the cited documents.

Item 5 of Schedule 2 replaces current subregulation 9A.2A(3) to provide that the term 'completed' is defined in regulation 13A.

Item 6 of Schedule 2 inserts new regulation 9A.2B, which provides for the search results that do not need to be disclosed under paragraph 101D(1)(a) of the Act. The patentee does not need to disclose results that are the same as results that have already been disclosed under subsection 101D in relation to the patent. However, this does not include the results of searches conducted by or on behalf of the EPO or the UK Patent Office, as these search results must always be disclosed regardless of whether the results have previously been disclosed.

In the case of divisional applications, the applicant does not need to disclose search results that had been disclosed for the application on which the divisional application is based. Similarly, if the application for the patent had been converted to an innovation patent from a standard patent application, the patentee does not need to provide the results of searches that were disclosed for that standard patent application or that were not required to be disclosed for that application. There is also no requirement to disclose search results that had not been received by the patentee or that indicate a nil result.

Item 7 of Schedule 2 adds a reference to new fee item 239 to paragraph 22.2C(1)(a), which relates to failure to pay certain fees. This ensures that the procedure set out in regulation 22.2C will apply if the fee specified in item 239 of Schedule 7 to the Regulations is not paid.

Item 8 of Schedule 2 amends subregulation 22.15(2) to make it clear that translations of search results are not required.

Item 9 of Schedule 2 inserts new fee item 239 into Part 2 of Schedule 7 to the Regulations. This fee item provides for the fees that are payable for filing an application for an extension of time under proposed new subregulation 3.17A(4).