Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 2004 (NO. 2) 2004 NO. 193

Subsection 228(1) of the Patents Act 1990 (the Act) provides, in part, that the Governor-General may make regulations, not inconsistent with the Act, prescribing matters required or permitted to be prescribed, or 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.

Paragraphs 228(1)(e) and 228(2)(t) of the Act provide 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, and that those regulations can modify the operation of the Act in relation to PCT applications by excluding, varying, or substituting different provisions for, specified provisions of the Act.

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

The PCT is an international agreement that allows applicants to file their patent application in as many member countries as they choose by filing an international application and selecting the countries in which protection is required. The international application is governed by the PCT until it 'enters the national phase', which is when the applicant requests that the application proceed under the domestic law of each member country selected by the applicant.

The purpose of the Regulations is to simplify the publication arrangements for PCT applications in Australia and to update the list of Convention countries in Schedule 4 to the Principal Regulations.

The Regulations amend the Principal Regulations and modify certain provisions in the Act to change the publication regime for PCT applications. The purpose of publication is to inform the public of the content of an application and details of the invention claimed. Unless a PCT application is withdrawn, it will be published under the PCT shortly after 18 months after the priority date of the application (the priority date is usually the date on which patent protection for the invention was first sought). However, the application is also published under the Act at the same time. This is an unnecessary duplication because the details of the application are readily available from the publication made under the PCT.

The Regulations modify the relevant parts of the Act to remove the requirement for a PCT application to also be published under the Act. Under these amendments, the application is taken to have been published for the purposes of the Act when it was published under the PCT. Most applications that enter the national phase in Australia do so after the application has been published under the PCT. However, the amendments provide that, if an application enters the national phase earlier, the Commissioner of Patents is required to publish the application under the Act.

The Regulations also amend the Principal Regulations to remove the requirement to publish the lapsing of a PCT application that does not enter the national phase in Australia.

The Regulations amend the list of Convention countries in Schedule 4 to the Principal Regulations to reflect further accessions to the Paris Convention for the Protection of Industrial Property and accurately present the names of the Convention countries listed in the Schedule.

Details of the Regulations are in the Attachment.

Regulations 1 to 3 and Schedule 1 commence on gazettal. Regulation 4 and Schedule 2 commence on 1 July 2004.

ATTACHMENT

Regulation 1 identifies the Regulations as the Patents Amendment Regulations 2004 (No. 2).

Regulation 2 provides that regulations 1 to 3 and Schedule 1 to the Regulations commence on gazettal, while regulation 4 and Schedule 2 commence on 1 July 2004.

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

Regulation 4 provides for transitional arrangements in relation to the amendments made by Schedule 2. The amendments apply to any application filed under the Patent Cooperation Treaty (PCT) on or after 1 January 2004. To ensure the Regulations do not operate retrospectively, the transitional arrangements provide that any application that was already open to public inspection before 1 July 2004 is not affected by the Regulations (subregulation 4(2)). The transitional arrangements also ensure that the earliest date an application could become open to public inspection under the Regulations is 1 July 2004 (subregulation 4(3)).

Schedule 1 - Amendments commencing on gazettal

Items 1 and 2 insert 'Andorra' and 'Bhutan' into the list of Convention countries in Schedule 4 to the Patents Regulations 1991 (the Principal Regulations) to reflect the accession of these countries to the Paris Convention for the Protection of Industrial Property.

Items 3 and 5 replace 'Yugoslavia' with 'Serbia and Montenegro' in the list of Convention countries as a result of the change of name from the Federal Republic of Yugoslavia to Serbia and Montenegro in February 2003.

Item 4 deletes the reference to the 'United Republic of Tanzania'. This reference is unnecessary as 'Tanzania' is also listed in the Schedule.

Item 6 makes some minor changes to the entries in Schedule 4 for Cambodia, Macau, Sao Tome and Principe and Suriname so the entries for these Convention countries accord with the naming formats used by the United Nations and the World Trade Organization.

Schedule 2 - Amendments commencing on 1 July 2004

Item 1 modifies sections 90 and 92 of the Patents Act 1990 (the Act) to implement new arrangements for the publication of PCT applications.

Subregulations 8.3(1C) and (1D) modify section 90 of the Act as a consequence of the modifications of section 92 of the Act that are made by subregulation 8.3(1E). The modified section 90 provides that a PCT application is open to public inspection on the day a notice is published under subsection 92(2), if that subsection applies, or on the day it was published under Article 21 of the PCT.

The modification of subsections 92(1) and (2) provides that the Commissioner of Patents must publish a notice in the Official Journal stating that a PCT application is open to public inspection if the application enters the national phase (by complying with the requirements of subsection 89(5) of the Act) earlier than 18 months after the priority date of the application.

The modification of subsection 92(3) provides that a PCT application is open to public inspection if it has been published under Article 21 of the PCT and did not enter the national phase within 18 months after the priority date of the application. This means that, for the purposes of the Act, an application will be made open to public inspection at the time it is published under the PCT, regardless of whether or not the application subsequently enters the national phase in Australia.

These regulations are made under paragraph 228(2)(t) of the Act, which allows regulations to be made that modify the provisions in the Act in relation to PCT applications by excluding, varying, or substituting different provisions for, specified provisions of the Act.

Item 2 amends subregulation 8.4(1) of the Principal Regulations as a consequence of the modifications of section 92 in item 1. This item ensures that subregulation 8.4(1) applies to requests filed under section 92 as worded before and after the modifications.

Items 3 and 4 amend regulation 13.5 of the Principal Regulations to remove the requirement for the Commissioner of Patents to publish the lapsing of a PCT application under paragraph 142(2)(f) of the Act.