Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 2010 (NO. 1) (SLI NO 181 OF 2010)

 

EXPLANATORY STATEMENT

Select Legislative Instrument 2010 No. 181

Issued by the Authority of the Minister for Innovation, Industry, Science and Research

Patents Act 1990

Patents Amendment Regulations 2010 (No. 1)

Section 228 of the Patents Act 1990 (the Act) provides, in part, that the

Governor-General may make regulations for the purposes of the Act prescribing matters required or permitted by the Act to be prescribed.

Paragraph 228(2)(t) of the Act allows the Governor-General to make regulations modifying the operation of the Act in relation to applications made under the Patent Cooperation Treaty (PCT). The PCT provides for the cooperation between member countries in the filing, searching and examination of applications for the protection of inventions. In addition, subsection 228(5) of the Act 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 English text up-to-date.

The Regulations make amendments to Schedule 2A to the Patents Regulations 1991 (the Principal Regulations) to implement changes under the PCT Rules as agreed by the Assembly of the PCT in October 2009.

The Regulations also make amendments to Schedule 7 to the Principal Regulations to increase and amend the fees IP Australia charges for its services in relation to patent rights. IP Australia is a cost recovery agency and regularly reviews its fees to ensure that the revenue it receives from patent rights is sufficient to cover the costs of administering such rights.

A minor amendment is also made to the Principal Regulations to assist IP Australia in making patent information available to the general public.

The objectives of the Regulations are further discussed in Attachment A.

The details of the Regulations are set out in Attachment B.

The Patents Act specifies no conditions that need to be met before the power to make the Regulations may be exercised.

Prior to making these Regulations, key stakeholders were consulted on the changes to the fees and the publication of search results. No consultations were undertaken in relation to the changes to the PCT Rules because these are of a minor or machinery nature only, and do not substantially change the law.

The Regulations to implement changes under the PCT Rules and to make patent information available to the public commence on 1 July 2010. The Regulations to amend IP Australia’s fees commence on 1 August 2010.


Attachment A

Objectives of the Patents Amendment Regulations 2010 (No. 1)

The first purpose of the Regulations is to update the English text of the Regulations under the Patent Cooperation Treaty (PCT Rules) set out in Schedule 2A to the Principal Regulations. This update is to reflect changes made to the PCT Rules by the International Patent Cooperation Union Assembly at a meeting held in September to October 2009. The changes to the PCT Rules are purely of an administrative nature. Firstly, the changes clarify the procedure for an International Searching Authority under the PCT to place limitations and conditions on the carrying out of supplementary searches. Secondly, the changes require an applicant filing amendments to an international application to indicate the basis for the amendments in the application as filed. Thirdly, the changes amend the procedures to be followed when an International Searching Authority prescribes the payment of fees in a currency that is not freely convertible to Swiss currency or to the currency to which the International Searching Authority has fixed its fees.

A second purpose of the Regulations is to increase and amend the fees IP Australia charges for its services in relation to patent rights. IP Australia is a cost recovery agency and approximately 96 per cent of its revenue is generated from fees paid by customers for applications, registrations, examinations, renewals and hearings work undertaken by

IP Australia. IP Australia last increased its national patent fees in March 2007. A recent review of IP Australia’s Cost Recovery Impact Statement has found that the revenue

IP Australia receives from patent rights is insufficient to cover the costs of administering such rights. The fee increases are designed to address this and result in an increase of 6.8% of total patent fee revenue for financial year 2010-11. The changes also introduce a new fee for more complex patent applications and a new fee for the electronic lodgement of provisional applications for patents in order to encourage electronic lodgements.

A third purpose of the Regulations is to enable search results associated with PCT applications to be made open to public inspection (OPI). This change requires IP Australia to make the results of documentary searches that are associated with a PCT application OPI when the PCT application becomes OPI. This change brings PCT applications into line with the practice for other patent applications and enables

IP Australia to fully participate in initiatives to share patent documents electronically with other patent offices. This amendment will also assist in making patent information available to the general public.

 


Attachment B

Details of the Patents Amendment Regulations 2010 (No. 1)

Regulation 1 identifies the Regulations as the Patents Amendment Regulations 2010 (No. 1).

Regulation 2 specifies that Regulations 1 to 3 and Schedule 1 commence on 1 July 2010 and that Regulation 4 and Schedule 2 commence on 1 August 2010.

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

Regulation 4 specifies that Schedule 2 amends the Patents Regulations 1991 (the Principal Regulations).

 

Schedule 1 - Amendments commencing on 1 July 2010

Item 1 amends the date identified in subparagraph 1.4(2) of the Principal Regulations to reflect the latest Patent Cooperation Treaty (PCT) Rule changes.

Item 2 repeals paragraph 8.4(2)(d) of the Principal Regulations to enable search results associated with a PCT application to be made OPI when the application becomes OPI. This change brings PCT applications into line with the practice for other patent applications and assists IP Australia in making patent information available to the general public.

Item 3 relates to the table at the beginning of Schedule 2A to the Principal Regulations that identifies the dates of all amendments made to the PCT Rules since their creation. This item amends the table so that it mirrors that in the official text of the PCT Rules and includes the date of commencement of these amendments.

Items 4 to 26 updates the English text of the PCT Rules set out in Schedule 2A to the Principal Regulations to reflect changes made to the PCT Rules at the fortieth session of the International Patent Cooperation Union Assembly held in Geneva from
22 September to 1 October 2009. The changes to the PCT Rules will:

· amend the procedures to be followed when an Authority prescribes the payment of fees in a currency that is not freely convertible to Swiss currency or to the currency to which the International Searching Authority has fixed its fees – items 4, 6 to 12, 22 and 23;

· clarify the procedure for an Authority under the PCT to place limitations and conditions on the carrying out of supplementary searches – items 5, 13 to 20 and 26; and

· require an applicant filing amendments to an international application to indicate the basis for the amendments in the application as filed – items 21, 24 and 25.


Schedule 2 – Amendments commencing on 1 August 2010

Item 1 amends subparagraph 22.2(4)(a)(i) to refer to a new fee item in Schedule 7. This amendment clarifies the fee due for the national phase entry of a PCT application under paragraph 89(3)(b) of the Patents Act. At present, this fee is identified in subparagraph 22.2(4)(a)(i) as item 203, the fee for filing a request for a standard patent accompanied by a complete specification. This is not correct, as the national phase entry fee is not a filing fee. The new fee item in item 15 clearly defines the national phase entry fee.

Items 2 and 3 introduce provisions for when a new fee for more complex patent applications is not paid within the set period. At present, under regulation 22.2F, if the Commissioner of Patents does not invite payment of certain fees and those fees are not paid within the set period, the relevant document is to be treated as if the fee has been paid. The fee remains payable and can be recovered as a debt due to the Commonwealth. This ensures that an error on the part of the Commissioner by not inviting payment of fees does not hinder the processing of an application. Items 2 and 3 apply this approach to the new fee for more complex patent applications as provided in item 17.

Item 4 adds a new fee for filing a request for a patent accompanied by a provisional specification by electronic means. This fee will be lower than the equivalent fee for filing by other means. Applicants will therefore be encouraged to use electronic filing means, which are simpler for customers and reduce IP Australia’s costs.

Items 5 to 14, 16 and 18 to 21 increase a number of the existing fees for patent services provided by IP Australia. These matters comprise:

· filing a request for a standard patent accompanied by a complete specification – items 5 and 6;

· filing a request for an examination, under section 45 of the Act, of a standard patent request and complete specification if item 204 does not apply – item 7;

· filing a request under paragraph 101A of the Act for the examination of the complete specification relating to an innovation patent – items 8 to 10;

· certain continuation fees under paragraph 142(2)(d) of the Act, or renewal fees under paragraph 143(a) of the Act – item 11;

· certain renewal fees under paragraph 143A(d) of the Act – items 12 and 13;

· acceptance of a patent request and complete specification under section 49 of the Act - item 14;

· filing a notice of opposition under regulation 5.3 or 5.3AA – item 16;

· filing a request for leave to amend a patent request for an innovation patent to make it a patent request for a standard patent – item 18;

· filing an application under subsection 70(1) of the Act for the grant of an extension of the term of a standard patent – item 19;

· search fee under Rule 16 of the PCT – item 20; and

· additional fee for search under Article 17(3)(a) of the PCT – item 21.

Item 15 adds a new item in Schedule 7 that clearly defines the national phase entry fee referred to in subparagraph 22.2(4)(a)(i) and the amendment in item 3.

Item 17 adds a new fee for more complex patent applications. Patent specifications include claims at the end of the document which define the scope of protection sought by the applicant. At present, when an application is accepted by IP Australia, applicants pay a fee to have the application accepted and another fee for each claim in excess of 20. The objectives of this current structure are to encourage more succinct patent claims and to make the fees paid by the applicant commensurate with the amount of work carried out by IP Australia.

However, applicants may currently avoid the excess claim fees by amending the specification after acceptance, provided the claims meet certain criteria. To address this, item 17 introduces a new fee to be paid on the grant of leave to amend a complete specification under regulation 10.5 after the complete specification is accepted, if:

(a) more than 20 claims are contained in the complete specification as proposed to be amended; and

(b) the effect of the proposed amendment is to increase the number of claims in the complete specification.

 


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