New South Wales Consolidated Regulations

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Amendment of patent etc: section 105

48.10 Amendment of patent etc: section 105

(cf SCR Part 81, rule 17)

(1) An application for an order under section 105(1) of the Patents Act 1990 of the Commonwealth may not be made until after the applicant has given the Commissioner a notice of intention to apply, accompanied by an advertisement that states--
(a) the identity of the proceedings in which the application will be made, and
(b) the particulars of the amendment sought, and
(c) the applicant's address for service, and
(d) that a person intending to oppose the application who is not a party to the proceedings must, not later than 28 days after publication of the advertisement, give written notice of that intention to the Commissioner and to the active parties.
(2) Unless the Supreme Court otherwise orders, the Commissioner must publish the advertisement once in the Australian Official Journal of Patents referred to in section 222 of the Patents Act 1990 of the Commonwealth.
Note : The Australian Official Journal of Patents is published by IP Australia (an agency of the Commonwealth Government).
(3) A person who gives notice under subrule (1)(d) is entitled to be heard in opposition to the application, subject to any direction of the Supreme Court as to costs.
(4) The application may be instituted by filing a notice of motion in the relevant proceedings no later than 50 days after the date of publication of the advertisement.
(5) The notice of motion, together with a copy of the patent, patent request or complete specification, as appropriate, showing in ink of contrasting colour the amendment sought, must be served on the Commissioner, each active party and each person who has given notice under subrule (1)(d).
(6) On the hearing of the motion, the Supreme Court may give such directions as it thinks fit for the conduct of proceedings on the motion, including any one or more of the following--
(a) a direction requiring the applicant to give, to each party or other person opposing the application, a statement of the grounds relied on for the amendment,
(b) a direction requiring a party or other person opposing the application to give to the applicant a statement of the grounds relied on in opposition to the amendment,
(c) a direction determining that the motion will be heard with the relevant proceedings or separately and, if separately, fixing the date for hearing the motion,
(d) a direction determining the manner in which evidence will be adduced and, in the case of evidence by affidavit, fixing the times within which the affidavits must be served.

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