Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS REGULATIONS (AMENDMENT) 1995 NO. 82

STATUTORY RULES 1995 No. 82

Issued by the Authority of the Minister for Small Business, Customs and Construction

Patents Act 1990

Patents Regulations (Amendment)

Subsection 228(1) of the Patents Act 1990 (the Act) empowers the Governor-General to make regulations for the purposes of the Act, for prescribing 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.

The Act was amended by the Patents (World Trade Organization Amendments) Act 1994 (the WTO Act)-enacted on 13 December 1994-to bring the Act into line with the standards and principles for patents in the Agreement Establishing the World Trade Organization. With effect from 1 July 1995, the term of a standard patent will increase from 16 to 20 years, with the current provisions for extending the term of a standard patent being repealed from that date.

The Statutory Rules make amendments to the Patents Regulations (the Regulations)-consequentially upon the amendments made by the WTO Act to the extension of term of provisions in the Act-including amendments: to provide for annual renewal fees for the sixteenth to nineteenth anniversaries of a standard patent; to provide that these consequential amendments to the Regulations will not apply to those patents to which amendments made by the WTO Act do not apply; and to provide a grace period for payment of the annual renewal fee for the sixteenth anniversary of a patent whose term will be increased to 20 years by the WTO Act. The Statutory Rules also amend the Regulations to replace the provision for Ministerial appointment of the Chairperson of the Patent Attorneys Professional Standards Board (PAPSB), with a provision that provides that any person holding, occupying, or performing the duties of the office of the Director General of the Australian Industrial Property Organisation (AIPO) is the Chairperson of the PAPSB. The Statutory Rules also make minor and consequential amendments to the Regulations including: an amendment to ensure that the term "priority document" is consistently used throughout the Regulations, and an amendment to correct an unintended inconsistency relating to extensions of the prescribed period in which annual renewal fees for a standard patent must be paid.

Details of the amendments are as follows:

Regulation 1 sets 1 July 1995 as the commencement day for regulations 4, 5, 6, 7, 8, 9, subregulation 11.2 and regulations 12, 13, and 14 of these Regulations. The remainder of these Regulations commence on gazettal.

Regulation 2 identifies the Patents Regulations (the Regulations) as those to be amended.

Regulation 3 makes a minor consequential amendment to paragraph 4.2 (3) (b) of the Regulations to ensure that the term "priority document"-introduced by regulation 11 of the Patents Regulations (Amendment), SR 1995 No. 16-is used consistently throughout the Regulations, in place of the term "relevant application".

Regulation 4 omits subparagraph 5.1 (a) (ii), consequentially upon the repeal of section 74 of the Patents Act 1990 (the Act) by the Patents (World Trade Organization Amendments) Act 1994 (the WTO Act) with effect from 1 July 1995. That subparagraph will not be required, as it provides for the application of chapter 5 of the Regulations to oppositions to the grant of extension of term of a patent under section 74 of the Act.

Regulation omits subregulation 5.3(2), consequentially upon the repeal of section 74 of the Act by the WTO Act. That subregulation will not be required, as it provides for the filing of a notice of opposition under section 74 of the Act.

Regulation 6 omits subregulation 5.4(2) of the Regulations, consequentially upon the repeal of section 74 of the Act by the WTO Act. That subregulation will not be required, as it provides for the requirements for the filing of a statement relating to an opposition under section 74 of the Act.

Regulation 7 omits subregulation 5.8(5) of the Regulations-consequentially upon the repeal of section 74 of the Act by the WTO Act-and, makes consequential amendments to subregulations 5.8(1) and 5.8(4) which refer to' that omitted subregulation. Subregulation 5.8(5) will not be required, as it governs the time for giving of evidence in oppositions under section 74 of the Act.

Regulation 8 omits regulation 6.7 of the Regulations, consequentially upon the repeal of section 71 of the Act by the WTO Act with effect from 1 July 1995. That regulation will not be required, as it prescribes the period in which certain documents are required to be given to the Commissioner under section 71 of the Act, and requires the publication in the Official Journal of a notice under that section.

Regulation 9 omits subregulation 13.6(4), consequentially upon the repeal of section 75 of the Act by the WTO Act with effect from 1 July 1995; makes a consequential amendment to subregulation 13.6(3) which refers to that subregulation; and, deletes a reference in subregulation 13.6(1) to item 8 of Part 2 of Schedule 7 to the Regulations.

Subregulation 13.6(4) will not be required, as it provides for the extension of the prescribed period in which the annual renewal fees may be paid for a patent whose term has been extended under the provisions of section 75 of the Act. The deletion from subregulation 13.6(1) of the reference to item 8 is consequential upon the deletion of that item from Part 2 of Schedule 7, made by subregulation 13.2 of these Statutory Rules (see below).

Regulation 10 substitutes new subregulation 20.32 (3) to provide that the person from time to time holding, occupying, or performing the duties of, the Senior Executive Service office of the Director General of AIPO is the Chairperson of the Patent Attorneys Professional Standards Board. This amendment will ensure that where the Director General of AIPO is temporarily absent from duty, another officer temporarily transferred to that office can attend meetings of the PAPSB as the Chairperson. AIPO is defined in regulation 20.1 of the Regulations to mean the division of the Department that is known as the Australian Industrial Property Organisation.

Regulation 11 corrects an unintended inconsistency in the Regulations, by ensuring that the same maximum period is allowed for the payment of the annual fees for renewal of a patent, as is allowed for the annual fees for continuation of a patent application. Currently there is provision in the Regulations for applicants for a patent, and for patentees, to pay the relevant annual fee up to 12 months before, and up to 6 months after, the relevant anniversary of the date of a patent (see regulations 13.3 and 13.6).

Although paragraph 22.11(3)(b) prevents applicants for a patent from applying for a further extension of the period in which a continuation fee may be paid, there is no such restriction on patentees applying for a further extension of the period in which a renewal fee may be paid. On gazettal, subregulation 11.1 of these Statutory Rules will correct this inconsistency by preventing a patentee applying for a further extension of time for the payment of an annual renewal fee.

Subregulation 11.2 of these Statutory Rules makes a consequential amendment to paragraph 22.11(3)(b) to omit reference to subregulation 13.6(4), which will be omitted by regulation 9 of these Statutory Rules-with effect from 1 July 1995.

Regulation 12 omits from paragraph 23.4(2)(a) of the Regulations the reference to section 74 of the Act, consequentially upon the repeal of that section by the WTO Act. Continued reference to section 74 of the Act will no longer be required in subregulation 23.4(2), which excludes the operation of the provisions of the Act listed in that paragraph from opposition proceedings commenced under the repealed Patents Act 1952.

Regulation 13 inserts renewal. fees for the sixteenth to the nineteenth anniversaries of the date of a standard patent (generally the date of filing a complete specification for a standard patent), consequentially upon the increase of the term of standard patents to 20 years under section 4 of the WTO Act. The amounts of those fees are equal to the amounts of the renewal fees currently provided for the corresponding anniversaries of a patent extended under the current extension of term provisions. Those renewal fees are currently set out in Part 2, item 8, which will be omitted by regulation 13.

Regulation 13 of these Statutory Rules also omits the fee for applying for an extension of term under the repealed provisions of the Act (Part 2, item 16).

Regulation 14 provides for the transitional application of these Statutory Rules to those patents to which the extension of term provisions currently in the Act will continue to apply (i.e. those patents to which Part 2 of the WTO Act will not apply; see section 7 of that Act).

Subregulations 14.1, 14.2 and 14.3 of these Statutory Rules provide that the Regulations, as in force on 30 June 1995, continue to apply to those patents specified in subregulation 14.1 of these Statutory Rules with two exceptions: the amendments made by regulation 13 of these Statutory Rules to the fees in Part 2 of Schedule 7 to the Regulations-which will come into effect on 1 July 1995-will apply to those patents; and consequently, the reference in subregulation 13.6(4) to item 8 in Part 2 of Schedule 7 will also be omitted, as subregulation 13.2 of these Statutory Rules will omit that item. As a result, the same scale of annual renewal fees will apply to those patents, as will apply generally from 1 July 1995.

Subregulation 14.4 of these Statutory Rules provides a grace period for payment of die annual renewal fee for the sixteenth anniversary of a transitional standard patent (as defined in subregulation 14.5). As discussed in relation to regulation 11 of these Statutory Rules above, an annual renewal fee may be paid up to 12 months before, and up to 6 months after the relevant anniversary of the date of a patent. Where that fee is paid after the relevant anniversary, an additional fee (currently $65) is required to be paid as well. Subregulation 14.3 of these Statutory Rules allows the patentee to pay the annual renewal fee at any time before 1 September 1995, without having to pay the additional fee.

Subregulation 14.4 of these Statutory Rules provides that the term "transitional standard patent", referred to in subregulation 14.1 of these Statutory Rules, has the same meaning as in the WTO Act: a standard patent granted-for a term of 16 years-before 1 July 1995, whose term at the time of grant (i.e. before any extension of term) was due to end after 1 July 1995 (see section 3 of that Act).