Prepared by the Office of Parliamentary Counsel, Canberra
Patents Regulations 1991 Statutory Rules No. 71, 1991 as amended
made under the
Patents Act 1990
Compilation start date: 15 April 2013
Includes amendments up to: SLI No. 31, 2013
Volume 1: Chapters 1 to 23
Volume 2: Schedules and Endnotes
Each volume has its own contents
Federal Register of Legislative Instruments F2013C00202
About this compilation
The compiled instrument
This is a compilation of the Patents Regulations 1991 as amended and in force
on 15 April 2013. It includes any amendment affecting the compiled instrument
to that date.
This compilation was prepared on 15 April 2013.
The notes at the end of this compilation (the endnotes) include information
about amending Acts and instruments and the amendment history of each
amended provision.
Uncommenced provisions and amendments
If a provision of the compiled instrument has not commenced or is affected by
an uncommenced amendment, the text of the uncommenced provision or
amendment is set out only in the endnotes.
Application provisions for amendments
If the operation of an amendment is affected by an application provision, this
provision is set out in the endnotes.
Modifications
If a provision of the compiled instrument is affected by a textual modification
that is in force, the text of the modifying provision is set out in the endnotes.
Provision ceasing to have effect
If a provision of the compiled instrument has expired or otherwise ceased to
have effect, or is to expire or otherwise cease to have effect, in accordance with
a provision of the instrument, details of the provision are set out in the endnotes.
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Patents Regulations 1991 i
Contents
Chapter 1—Introductory 1 1.1 Name of Regulations .........................................................1
1.2 Commencement.................................................................1
1.3 Interpretation .....................................................................1
1.3A Meaning of completed in relation to a search ....................3
1.4 Meaning of Convention country ........................................4
1.5 Deposit requirements: prescribed period ...........................4
1.6 Secret use—prescribed period...........................................5
1.7 Verification of translations of international
applications .......................................................................5
1.8 Completion of applications................................................5
Chapter 2—Patent rights, ownership and validity 7 2.1 Applications by co-owners for directions..........................7
2.2 Information made publicly available—recognised
exhibitions .........................................................................7
2.2A Information made publicly available—learned
societies .............................................................................8
2.2B Information made publicly available—reasonable
trial of invention ................................................................9
2.2C Information made publicly available—other
circumstances ..................................................................10
2.2D Information made publicly available without
consent—period ..............................................................11
2.3 Divisional applications—period ......................................11
2.4 Prescribed period: patents of addition .............................12
2.5 Prescribed period: assertion that invention is not a
patentable invention ........................................................12
2.6 Prescribed period: notification of assertion of
invalidity of innovation patent.........................................12
2.7 Documents to accompany notice of assertion of
invalidity .........................................................................12
Chapter 3—From application to acceptance 14
Part 1—Inventions generally 14
Division 1—Applications 14
3.1 Prescribed documents: patent applications ......................14
3.1A Applicant taken to be nominated person .........................15
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3.2 Provisional specifications................................................15
3.2A Specifications—standard patents.....................................15
3.2AB PCT application—title of specification ...........................16
3.2B Specifications: formalities check for innovation
patents .............................................................................17
3.2C Specifications—formalities check for PCT
application .......................................................................18
3.3 Abstracts..........................................................................20
3.4 Substitute abstracts ..........................................................20
3.5 Filing date—patent applications other than PCT
applications .....................................................................21
3.5AA Filing date—PCT applications ........................................22
3.5A Filing date: incomplete specifications .............................23
3.5AB PCT applications—international applications taken
to be applications under the Act ......................................24
3.5AC PCT applications—amendment.......................................25
3.5AD PCT applications—prescribed requirements ...................26
3.5AE PCT applications—prescribed period..............................27
3.5AF PCT applications—translations and prescribed
documents .......................................................................27
3.5AG Convention application—prescribed particulars..............28
3.5B Filing of documents outside business hours ....................28
3.6 Requests to make determinations between
interested parties..............................................................28
3.7 Form of certain applications............................................28
3.8 Time within which applications are to be made
following certain decisions and declarations ...................29
3.9 Prescribed period: treatment of complete
application as provisional ................................................29
3.10 Prescribed period: making of complete
applications .....................................................................29
3.11 Prescribed period—making Convention
application .......................................................................30
Division 2—Priority date of claim 31
3.12 What this Division is about .............................................31
3.13 Priority date for application by person declared
under section 36 of the Act..............................................31
3.13A Priority date for PCT application.....................................32
3.13B Priority date for Convention application .........................35
3.13C Priority date for complete application associated
with provisional application ............................................36
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3.13D Priority date for divisional application filed prior
to grant of patent .............................................................37
3.13E Priority date for divisional application after grant
of innovation patent.........................................................38
3.14 Priority dates: certain amended claims ............................39
Division 3—Examination 40
3.14A Request for international-type search relating to
provisional application ....................................................40
3.14B Request for preliminary search and opinion
relating to complete application ......................................40
3.14C Priority dates—Convention applications and PCT
applications: prescribed period for disregarding
earlier applications ..........................................................40
3.14D Prescribed documents: basic application .........................41
3.15 Requirements of request for examination........................42
3.16 Prescribed grounds and period for examination ..............42
3.17 Requirement for Commissioner to direct or
expedite examination.......................................................42
3.17A PCT applications—Commissioner not to give
certain directions .............................................................43
3.17B PCT applications—examination requirements ................43
3.17C PCT applications—notice if examination declined .........44
3.18 Report of Commissioner: examination............................44
3.19 Conduct of examination: standard patents.......................45
3.22 Disclosure of patent documents and information to
International Bureau etc ..................................................46
Part 2—Inventions that are micro-organisms 47 3.23 Documents in accepted applications and patents
involving micro-organisms..............................................47
3.24 Commissioner may request samples and viability
statement .........................................................................47
3.25 Request for Commissioner‟s certificate authorising
release of sample of a micro-organism............................48
3.26 Breach of undertakings given in respect of
micro-organisms..............................................................51
3.27 Procedure in proceedings for breach of an
undertaking......................................................................52
3.28 Relief in proceedings for breach of undertakings ............52
3.29 Notification that a deposit requirement has ceased
to be satisfied...................................................................53
3.30 Prescribed period: deposit requirements taken to
be satisfied.......................................................................54
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3.31 Application for declaration that deposit
requirements are not satisfied ..........................................55
Chapter 4—Publication 57 4.1 Prescribed information: applicants and
applications .....................................................................57
4.2 Notice that specification is open to public
inspection ........................................................................57
4.3 Prescribed documents: public inspection.........................58
4.4 Publication and inspection of PCT applications ..............58
Chapter 5—Opposition 60
Part 5.1—Preliminary 60 5.1 What this Chapter is about ..............................................60
5.2 Definitions.......................................................................60
5.3 Commissioner may give direction about filing
document or evidence......................................................61
Part 5.2—Filing of opposition documents 63
Division 5.2.1—Substantive opposition 63
5.4 Notice of opposition—standard patent opposition ..........63
5.5 Statement of grounds and particulars—standard
patent opposition .............................................................63
5.6 Notice of opposition and statement of grounds and
particulars—section 101M opposition.............................64
5.7 Filing of evidence............................................................64
5.8 Evidentiary periods..........................................................65
5.9 Extension of time for filing evidence ..............................66
Division 5.2.2—Procedural opposition 68
5.10 Notice of opposition ........................................................68
5.11 Statement of grounds and particulars ..............................69
5.12 Practice and procedure ....................................................69
Part 5.3—Amendments to opposition documents 70 5.13 Application of regulation 22.22.......................................70
5.14 Notice of opposition—correction of errors or
mistake ............................................................................70
5.15 Notice of opposition—change of opponent .....................70
5.16 Statement of grounds and particulars ..............................71
Part 5.4—Dismissal of opposition 73 5.17 Dismissal on request........................................................73
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5.18 Dismissal on initiative of Commissioner.........................73
Part 5.5—Hearing of opposition 75 5.19 Hearing and decision—re-examination ...........................75
5.20 Hearing and decision—other circumstances....................75
Part 5.6—Miscellaneous 77 5.21 Opposition to amendment—grounds...............................77
5.22 Commissioner may give directions .................................77
5.23 Commissioner may consult documents ...........................77
5.24 Representations to Commissioner—formal
requirements ....................................................................78
5.25 Extension of time for filing—amendment at
Commissioner‟s direction................................................78
5.26 Withdrawal of opposition ................................................78
Chapter 6—Grant and term of patents 80
Part 1—Patents generally 80 6.1 Publication of notice of grant of standard patent .............80
6.1A Prescribed particulars—grant of standard patent .............80
6.2 Prescribed period: grant of standard patent .....................80
6.2A Prescribed particulars—grant of innovation patent .........81
6.3 Date of patent ..................................................................81
Part 2—Extension of pharmaceutical patents 85 6.7 Definitions.......................................................................85
6.8 Information to accompany application ............................85
6.9 Application without pre-TGA marketing approval..........85
6.10 Application with pre-TGA marketing approval...............86
6.11 Further information .........................................................86
Chapter 6A—Divisional applications 88 6A.1 Divisional applications before grant—standard and
innovation patents ...........................................................88
6A.2 Divisional applications after grant—innovation
patents .............................................................................88
Chapter 7—Patents of addition 90 7.1 Form of application for grant of patent of addition
etc ....................................................................................90
7.2 Form of application for revocation of patent and
grant of patent of addition instead ...................................90
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Chapter 9—Re-examination 91 9.1 Notice of Commissioner‟s decision to re-examine
complete specification .....................................................91
9.2 Request for re-examination of complete
specification ....................................................................91
9.3 Copy of report on re-examination ...................................92
9.4 Prescribed period: statement disputing report by
Commissioner .................................................................93
9.5 Completion of re-examination.........................................93
Chapter 9A—Examination of innovation patents 95 9A.1 Request for examination..................................................95
9A.2 Examination of complete specification ...........................95
9A.3 Conduct of examination ..................................................95
9A.4 Period for examination ....................................................96
9A.5 Validity of innovation patent...........................................97
Chapter 10—Amendments 98 10.1 Form of amendments.......................................................98
10.2 Commissioner to consider and deal with requests
for leave to amend ...........................................................99
10.2A Documents considered for determining whether
amendment allowed.......................................................102
10.2B Amendments not allowable for patent requests .............103
10.2C Amendments not allowable for complete
specifications.................................................................104
10.3 Amendments not allowable for other documents ..........105
10.4 Commissioner to refuse request for leave to amend ......105
10.5 Commissioner to grant leave to amend .........................106
10.6 Time for allowance of amendments ..............................107
10.6A Deferred consideration of request for amendment.........108
10.6B Revocation of grant of leave..........................................109
10.7 Rectification of Register................................................110
10.8 Prescribed decisions: appeal to Federal Court ...............110
10.10 Prescribed period: filing of court order .........................111
10.11 Form of direction by Commissioner: patents ................111
10.12 Form of direction by Commissioner: applications.........111
10.14 Form of request: claim under assignment or
agreement ......................................................................111
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Chapter 11—Infringement 112 11.1 Infringement exemptions: prescribed foreign
countries ........................................................................112
Chapter 12—Compulsory licences and revocation of
patents 113 12.1 Lodgment of applications for compulsory licences .......113
12.2 Prescribed period: revocation of patent .........................114
12.3 Form of notice: offer to surrender patent.......................114
12.4 Applications to revoke patents ......................................115
Chapter 13—Withdrawal and lapsing of applications
and ceasing of patents 117 13.1 Publication of notice of withdrawal of application........117
13.1A Period in which standard patent applications may
not be withdrawn...........................................................117
13.1B Period in which innovation patent applications
may not be withdrawn ...................................................117
13.1C PCT applications—prescribed circumstances in
which application may be withdrawn or taken to
be withdrawn .................................................................118
13.3 Prescribed period: continuation fees..............................118
13.4 Prescribed period: acceptance of request and
specification ..................................................................119
13.5 If applications lapse.......................................................121
13.5A PCT application—prescribed circumstances for
lapsing of application ....................................................121
13.6 Time for payment of renewal fee for patent ..................121
13.7 Prescribed period: ceasing of innovation patents...........123
Chapter 15—Special provisions relating to associated
technology 124 15.1 Time for restoration of application for patent................124
15.2 Requirements for reinstatement of international
applications ...................................................................124
15.3 Prescribed period: order relating to standard patent ......124
Chapter 17—The Crown 125 17.1 Application for declaration: exploitation of
innovation patent ...........................................................125
17.1A Prescribed period: order relating to standard patent ......125
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17.2 Prescribed period, document and fee: filing of
international applications...............................................125
Chapter 19—The register and official documents 126 19.1 Particulars to be registered ............................................126
19.2 Request for information from Commissioner ................126
Chapter 20—Individual Patent Attorneys 127
Part 1—Introduction 127 20.1A Application of this Chapter ...........................................127
20.1 Interpretation .................................................................127
Part 2—Obtaining registration for first time 129 20.2 Form of application .......................................................129
20.3 Evidence that applicant meets registration
requirements ..................................................................129
20.4 Certificate of registration...............................................130
20.5 Evidence of academic qualifications .............................130
20.6 Academic qualifications ................................................130
20.7 Evidence of knowledge requirements............................131
20.8 Knowledge requirements...............................................132
20.9 Exemption from a requirement in Schedule 5 ...............133
20.10 Employment requirements.............................................133
20.11 Statements of skill .........................................................134
20.12 Prescribed offences........................................................135
Part 3—Accreditation of courses of study 136 20.13 Accreditation of courses of study ..................................136
20.14 Provisional accreditation ...............................................137
Part 4—Board examinations 138 20.15 Board examinations.......................................................138
20.16 Time for holding Board examinations...........................138
20.17 Examinable subject matter ............................................138
20.18 Admission to sit for a Board examination .....................139
20.19 Notification of Board examination results.....................139
20.20 Reasons for failure of Board examination .....................139
20.21 Supplementary Board examination ...............................139
Part 5—Maintaining registration 141 20.22 Requirements for remaining on Register of Patent
Attorneys .......................................................................141
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20.23 Payment of annual registration fee ................................141
20.24 Continuing professional education—number of
hours..............................................................................141
20.25 Method of demonstrating that continuing
professional education has been undertaken..................142
Part 6—Removal of attorney’s name from Register of Patent
Attorneys 143 20.26 Voluntary removal of name from Register of
Patent Attorneys ............................................................143
20.27 Failure to pay annual registration fee ............................143
20.28 Failure to comply with continuing professional
education requirements..................................................143
Part 6A—Suspension of registration 145 20.28A Requirement to notify of serious offence ......................145
20.28B Suspension of registration—serious offence .................145
Part 7—Restoring attorney’s name to Register of Patent
Attorneys 147 20.29 Restoring attorney‟s name to Register of Patent
Attorneys .......................................................................147
20.30 Restoring attorney‟s name to Register of Patent
Attorneys following payment of unpaid fee ..................148
20.31 Restoring attorney‟s name to Register of Patent
Attorneys in other circumstances ..................................148
Part 8—Discipline 150
Division 1—General 150
20.32 Definitions.....................................................................150
20.33 Role of Board in disciplinary proceedings ....................150
20.34 Board may require attorney to cooperate with
investigation ..................................................................152
20.35 Commencing disciplinary proceedings..........................152
Division 2—Proceedings in Disciplinary Tribunal 153
20.36 Procedure of Disciplinary Tribunal ...............................153
20.37 Notification of hearing of disciplinary proceedings ......153
20.38 Hearings to be public except in special
circumstances ................................................................153
20.39 Representation before Disciplinary Tribunal.................154
20.40 Summoning of witnesses ...............................................154
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20.41 Offences by persons appearing before Disciplinary
Tribunal .........................................................................155
20.42 Protection of person constituting Disciplinary
Tribunal, witnesses etc ..................................................157
20.43 Decision of Disciplinary Tribunal .................................157
20.44 Penalties—professional misconduct..............................158
20.45 Penalties—unsatisfactory professional conduct ............158
20.46 Finding that attorney was unqualified at time of
registration.....................................................................159
20.47 Finding that registration obtained by fraud....................159
20.48 Matters that may be considered in determining
penalties ........................................................................159
20.49 Findings of Disciplinary Tribunal .................................160
20.50 Notification and publication of decisions of
Disciplinary Tribunal ....................................................160
20.51 Completion of outstanding business..............................161
20.52 Former attorney may be required to provide
assistance.......................................................................161
Part 9—Rights of registered patent attorneys 163 20.53 Lien ...............................................................................163
Part 10—Administration 164
Division 1—Professional Standards Board for Patent and Trade
Marks Attorneys 164
20.54 Constitution of Board (Act s 227A)...............................164
20.55 Term of office of Board members .................................164
20.56 Resignation and removal of members from Board ........164
20.57 Meetings of Board .........................................................165
20.58 Member presiding at meetings of Board........................166
20.59 Quorum for Board meetings ..........................................166
20.60 Absence of Chairperson from meeting—leave
from Board ....................................................................166
Division 2—Patent and Trade Marks Attorneys Disciplinary
Tribunal 167
20.61 Establishment of Disciplinary Tribunal.........................167
20.62 Disciplinary Tribunal—substantive appointments ........167
20.63 Disciplinary Tribunal—acting appointments.................167
20.64 Disclosure of interest.....................................................168
20.65 Qualifications for appointment to, or acting as,
Disciplinary Tribunal ....................................................169
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Chapter 20A—Incorporated Patent Attorney 170
Part 1—Introduction 170 20A.1 Application of Chapter 20A ..........................................170
20A.2 Definitions.....................................................................170
Part 2—Obtaining registration for first time 171 20A.3 Form of application .......................................................171
20A.4 Certificate of registration...............................................171
Part 3—Maintaining registration 172 20A.5 Requirements for remaining on Register of Patent
Attorneys .......................................................................172
Part 4—Removal from Register of Patent Attorneys 173 20A.6 Voluntary removal of name from Register of
Patent Attorneys ............................................................173
20A.7 Failure to pay annual registration fee ............................173
20A.8 Failure to maintain professional indemnity
insurance .......................................................................173
Part 5—Discipline 174
Division 1—General 174
20A.9 Definitions.....................................................................174
20A.10 Board may apply for cancellation or suspension of
incorporated patent attorney‟s registration ....................174
Division 2—Proceedings in Disciplinary Tribunal 176
20A.11 Procedure of Disciplinary Tribunal ...............................176
20A.12 Notification of hearing ..................................................176
20A.13 Hearings to be public except in special
circumstances ................................................................176
20A.14 Representation before Disciplinary Tribunal.................177
20A.15 Summoning of witnesses ...............................................177
20A.16 Offences by persons appearing before Disciplinary
Tribunal .........................................................................178
20A.17 Protection of person constituting Disciplinary
Tribunal, witnesses etc. .................................................179
20A.18 Decision of Disciplinary Tribunal .................................180
20A.19 Notification and publication of decisions of
Disciplinary Tribunal ....................................................181
20A.20 Completion of outstanding business..............................182
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20A.21 Former attorney may be required to provide
assistance.......................................................................182
Part 6—Restoring attorney’s name to Register of Patent
Attorneys 184 20A.22 Restoring name to Register of Patent Attorneys............184
Chapter 21—Administration 185 21.1 Patent Office and sub-offices ........................................185
21.2 Employees to whom Commissioner may delegate
(Act s 209(1)) ................................................................185
Chapter 22—Miscellaneous 186
Part 1—Fees and costs 186
Division 1—Fees 186
22.1 Fees generally................................................................186
22.2 General fees...................................................................186
22.2AA Approved means............................................................188
22.2A Failure to pay: patent attorneys fees ..............................189
22.2B Failure to pay: filing fees for patent requests ................189
22.2C Failure to pay: certain other filing fees etc ....................189
22.2D Failure to pay: fees payable by patentee for
requests under s 101A(b) of the Act ..............................189
22.2EA Failure to pay: fee for grant of leave to amend
specification (person invited to pay)..............................190
22.2F Consequence if Commissioner does not invite
payment .........................................................................191
22.2G Failure to pay: hearing fees ...........................................191
22.2H Failure to pay: certain fees for actions by
Commissioner ...............................................................192
22.2I Failure to pay: acceptance fee .......................................193
22.3 General fees for international applications ....................193
22.4 Fees for international applications payable for the
benefit of the International Bureau ................................194
22.5 PCT Fund ......................................................................194
22.6 Exemption from fees .....................................................194
22.7 Refund of certain fees....................................................195
Division 2—Costs 196
22.7A Proceedings to which this Division applies ...................196
22.8 Costs..............................................................................196
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Part 2—Other matters 197 22.9 Death of applicant or nominated person ........................197
22.10 Address for service........................................................197
22.10A Address for correspondence ..........................................198
22.10AA Period for doing certain acts—office not open for
business .........................................................................198
22.10AB Days when office not open for business ........................198
22.10AC Prescribed acts...............................................................199
22.11 Extension of time ..........................................................199
22.12 Evidence........................................................................201
22.13 Declarations...................................................................201
22.14 Directions not otherwise prescribed ..............................202
22.15 Documents in English and English translations.............202
22.16 Documents other than specifications and abstracts........202
22.17 Incapacity of certain persons .........................................203
22.18 Destruction of documents..............................................204
22.19 Copies of certain documents to be supplied ..................204
22.20 International applications and the Patent Office............204
22.21 Protection or compensation of certain persons ..............204
22.22 Exercise of discretionary powers by Commissioner......205
22.23 Written submissions and oral hearings ..........................206
22.24 Practice and procedure other than for opposition
proceedings ...................................................................207
22.25 Requirements cannot be complied with for
reasonable cause............................................................208
22.26 Review of decisions.......................................................208
22.27 Documents not to infringe copyright—prescribed
documents .....................................................................210
Chapter 23—Transitional and savings provisions 211
Part 1—General 211 23.1 Saving: prohibition orders .............................................211
23.2 Delegation: certain matters referred to in this
Chapter ..........................................................................211
23.3 Opposition to grant: practice and procedure..................211
23.4 Certain opposition: practice and procedure ...................211
23.5 Fees payable for certain matters relating to
opposition......................................................................212
23.6 Certain delegations: opposition .....................................212
23.7 Certain undertakings......................................................213
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23.8 Restoration of lapsed applications or ceased
patents ...........................................................................213
23.9 Certain continuation and renewal fees...........................213
23.10 Fee taken to have been paid...........................................214
23.11 Supply of product referred to in section 117 of the
Act.................................................................................214
23.12 Certain withdrawn, abandoned or refused
applications ...................................................................215
23.13 Certain certificates of validity .......................................215
23.14 Certain action under the 1952 Act .................................216
23.15 Amendment of petty patents..........................................216
23.16 Certain applications under 1952 Act: time for
acceptance .....................................................................216
23.17 PCT applications to which subsection 89(5) of the
Act does not apply.........................................................217
23.18 Certain priority dates: saving.........................................217
23.25 Fees ...............................................................................217
23.26 Certain actions and proceedings ....................................218
23.32 Transitional: priority date and date of patent for
innovation patent application that is a divisional
application of a petty patent or petty patent
application .....................................................................219
23.33 Transitional: examination of innovation patents
converted from petty patent applications.......................219
23.34 Transitional: certain PCT applications ..........................220
23.35 Transitional: payment of fees for petty patents..............220
Part 2—Amendments made by particular instruments 223 23.36 Amendments made by Intellectual Property
Legislation Amendment (Raising the Bar)
Regulation 2013 (No. 1) ................................................223
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Introductory Chapter 1
Regulation 1.1
Patents Regulations 1991 1
Chapter 1—Introductory
1.1 Name of Regulations
These Regulations are the Patents Regulations 1991.
1.2 Commencement
These Regulations commence on 30 April 1991.
1.3 Interpretation
(1) In these Regulations, unless the contrary intention appears:
AAT means the Administrative Appeals Tribunal.
abstract means abstract of a complete specification.
acceptance means:
(a) in relation to a patent request and complete specification
relating to an application for a standard patent—acceptance
of the patent request and complete specification under
section 49 of the Act; and
(b) in relation to a patent request and complete specification
relating to an application for an innovation patent—
acceptance of the patent request and complete specification
under section 52 of the Act.
approved digital library means a library or other facility that the
Commissioner specifies as a digital library, for this definition, in
the Official Journal.
Example: The library administered by the International Bureau of the World Intellectual Property Organization, known as the “Digital Access Service for Priority Documents” or “DAS”.
approved means, for doing an action or paying a fee, means the
means specified for the action or payment by the Commissioner in
a notice made under regulation 22.2AA and published by the
Commissioner.
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Chapter 1 Introductory
Regulation 1.3
2 Patents Regulations 1991
basic documents means documents filed in a Convention country
in respect of a basic application.
certificate of verification means a statement:
(a) that a document to which the statement relates is a true and
complete translation of the accompanying document to the
best of the knowledge of the person who signs the statement;
and
(b) that is dated and signed.
Code of Conduct means the standard of practice titled “Code of
Conduct for Patent and Trade Marks Attorneys” that is established
by the Board from time to time.
competent authority, in relation to a Convention country, means a
person who, under the laws of the country or the arrangements in
place in the country, is authorised to certify copies of specifications
of patents for the country.
Disciplinary Tribunal means the Patent and Trade Marks
Attorneys Disciplinary Tribunal established by regulation 20.61.
former attorneys Regulations means the following Regulations:
(a) the Patent Attorneys Regulations as in force immediately
before the commencing day under the 1952 Act;
(b) the Patents Regulations 1991 as in force immediately before
1 July 2008.
former patents Regulations means the Patents Regulations in force
immediately before the commencing day under the 1952 Act.
International Bureau means the International Bureau of the World
Intellectual Property Organization.
Register of Patent Attorneys means the register mentioned in
section 198 of the Act.
the Act means the Patents Act 1990.
(2) A reference in these Regulations to:
(a) the giving of a notice or other document; or
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Introductory Chapter 1
Regulation 1.3A
Patents Regulations 1991 3
(b) the making of a request or an application;
to the Commissioner or the Patent Office includes a reference to
the filing of the document.
(3) A reference in these Regulations to a document that is open to
public inspection is a reference to a document that may be
inspected by the public at the Patent Office.
(4) If the Commissioner gives a document to a person, the document is
taken to have been given to the person on the day the document is
dated by the Commissioner.
(5) The Commissioner may give a document to a person by:
(a) making the document available to the person in an electronic
form; and
(b) notifying the person that the document is available.
(6) A requirement in these Regulations to give information to the
Commissioner or to another person (whether the expression „give‟,
„tell‟, „inform‟ or another expression is used) is a requirement to
give the information in writing, unless the contrary intention
appears.
(7) For these Regulations, a period expressed in months is to be
worked out in the way described in rule 80.2 of the Regulations
under the Patent Cooperation Treaty set out in Schedule 2A.
1.3A Meaning of completed in relation to a search
For these regulations:
A search is completed on the earliest of:
(a) the date, if any, specified in the report as the date that the
report was issued; and
(b) the date, if any, specified in the report as the date that the
search was completed; and
(c) the date that the search results were issued to the applicant or
patentee by the foreign patent office.
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1.4 Meaning of Convention country
For the definition of Convention country in subsection 29B(5) of
the Act, the following countries are prescribed:
(a) a foreign country that is a signatory to the Paris Convention
for the Protection of Industrial Property of 20 March 1883, as
in force from time to time;
(b) a foreign country that is a full member of the World Trade
Organization.
Note 1: For signatories to the Paris Convention for the Protection of Industrial Property, see www.wipo.int.
Note 2: For full members of the World Trade Organization, see www.wto.org.
1.5 Deposit requirements: prescribed period
(1) For paragraph 6(c) of the Act, the prescribed period is:
(a) if the Commissioner makes a declaration under
subsection 42(1) of the Act in relation to the specification
concerned—the period mentioned in subregulation (2); or
(b) in any other case:
(i) for a complete specification in respect of a standard
patent application—the period mentioned in
subregulation (3); or
(ii) for a complete specification in respect of an innovation
patent application—the period mentioned in
subregulation (4).
(2) For paragraph (1)(a), the period begins on the filing date of the
application to which the specification relates and ends 3 months
from the date taken to be the date of filing of the specification
under paragraph 42(2)(b) of the Act.
(3) For subparagraph (1)(b)(i), the period begins on the filing date of
the application to which the specification relates and ends:
(a) at the end of the day immediately before the day on which
the application becomes open to public inspection; or
(b) if the application is accepted before the end of the day first
mentioned in paragraph (a)—immediately before acceptance.
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(4) For subparagraph (1)(b)(ii), the period begins on the filing date of
the application to which the specification relates to and ends
immediately before acceptance.
(5) If a matter mentioned in paragraph 6(c) of the Act has been
included in the specification, the applicant or patentee is taken to
consent to a micro-organism being obtained by a person to whom
the Commissioner has granted the certification under
regulation 3.25 in respect of the deposit:
(a) after the period mentioned in subregulation (1) for the
specification to which the application relates; and
(b) from the prescribed depositary institution with which the
micro-organism is deposited.
1.6 Secret use—prescribed period
For paragraph 9(e) of the Act, the period is 12 months after the first
use of the invention that would, but for the application of
paragraph 9(e), have constituted secret use.
1.7 Verification of translations of international applications
For the purposes of subsection 10(2) of the Act, the translation of
an international application that was not filed in the receiving
Office in English must have with it a related certificate of
verification.
1.8 Completion of applications
(1) A person who makes an application or request using an application
form must:
(a) comply with any directions given on the form; and
(b) provide information for each part of the form that describes
the information as being mandatory.
(2) A person who makes an application or request using an application
procedure other than a form must:
(a) comply with any directions given as part of the procedure;
and
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(b) provide information for each part of the procedure that
describes the information as being mandatory.
Example: An online application facility.
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Regulation 2.1
Patents Regulations 1991 7
Chapter 2—Patent rights, ownership and
validity
2.1 Applications by co-owners for directions
(1) An application under section 17 of the Act must be in the approved
form.
(2) A person making an application under that section must:
(a) file with the application a notice stating the facts on which
the application is based; and
(b) serve a copy of the application and notice on the other
patentee or patentees.
2.2 Information made publicly available—recognised exhibitions
(1) This regulation sets out:
(a) for paragraph 24(1)(a) of the Act—a circumstance in relation
to information made publicly available by, or with the
consent of, the nominated person, patentee or predecessor in
title of the nominated person or patentee; and
(b) for subsection 24(1) of the Act—a period for making a
complete application for an invention if the circumstance
applies.
Circumstance—invention shown, used or published at recognised
exhibition
(2) The circumstance is that the information has been made publicly
available because the invention was:
(a) shown or used at a recognised exhibition; or
(b) published during a recognised exhibition at which the
invention was shown or used.
Period
(3) The period for making a complete application for the invention is:
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(a) if the complete application claims priority from a basic
application made within 6 months of the day of the showing,
use or publication—12 months from the day the basic
application was made; or
(b) if the complete application is associated with a provisional
application made within 6 months of the day of the showing,
use or publication—12 months from the day the provisional
application was made; or
(c) otherwise—12 months from the day of the showing, use or
publication.
(4) In this regulation:
Paris Convention means the Paris Convention for the Protection of
Industrial Property of 20 March 1883, as in force for Australia on
the commencing day.
recognised exhibition means:
(a) an official or officially recognised international exhibition
within the meaning of Article 11 of the Paris Convention or
Article 1 of the Convention relating to International
Exhibitions done at Paris on 22 November 1928, as in force
for Australia on the commencing day; or
(b) an international exhibition recognised by the Commissioner
by a notice published in the Official Journal before the
beginning of the exhibition.
2.2A Information made publicly available—learned societies
(1) This regulation sets out:
(a) for paragraph 24(1)(a) of the Act—a circumstance in relation
to information made publicly available by, or with the
consent of, the nominated person, patentee or predecessor in
title of the nominated person or patentee; and
(b) for subsection 24(1) of the Act—a period for making a
complete application for an invention if the circumstance
applies.
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Circumstance—information read before learned society or
published by or on behalf of learned society
(2) The circumstance is that the information has been made publicly
available in a paper:
(a) read before a learned society; or
(b) published by or on behalf of a learned society.
Period
(3) The period for making a complete application for the invention is:
(a) if the complete application claims priority from a basic
application made within 6 months of the day of the reading
or publication—12 months from the day the basic application
was made; or
(b) if the complete application is associated with a provisional
application made within 6 months of the day of the reading
or publication—12 months from the day the provisional
application was made; or
(c) otherwise—12 months from the day of the reading or
publication.
2.2B Information made publicly available—reasonable trial of
invention
(1) This regulation sets out:
(a) for paragraph 24(1)(a) of the Act—a circumstance in relation
to information made publicly available by, or with the
consent of, the nominated person, patentee or predecessor in
title of the nominated person or patentee; and
(b) for subsection 24(1) of the Act—a period for making a
complete application for an invention if the circumstance
applies.
Circumstance—working of invention for reasonable trial
(2) The circumstance is that:
(a) the information has been made publicly available because the
invention was worked in public; and
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(b) the working of the invention was for the purposes of a
reasonable trial of the invention; and
(c) because of the nature of the invention, it was reasonably
necessary for the working to be in public.
Period
(3) The period for making a complete application for the invention is:
(a) if the complete application claims priority from a basic
application made within 12 months of the start of the public
working of the invention—12 months from the day the basic
application was made; or
(b) if the complete application is associated with a provisional
application made within 12 months of the start of the public
working of the invention—12 months from the day the
provisional application was made; or
(c) otherwise—12 months from the start of the public working of
the invention.
2.2C Information made publicly available—other circumstances
(1) This regulation sets out:
(a) for paragraph 24(1)(a) of the Act—a circumstance in relation
to information made publicly available by, or with the
consent of, the nominated person, patentee or predecessor in
title of the nominated person or patentee; and
(b) for subsection 24(1) of the Act—a period for making a
complete application for an invention if the circumstance
applies.
Circumstance
(2) The circumstance is that the information has been made publicly
available in circumstances other than the circumstances described
in regulations 2.2, 2.2A and 2.2B.
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Regulation 2.2D
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Period
(3) The period for making a complete application for the invention is
12 months from the day the information was made publicly
available.
2.2D Information made publicly available without consent—period
For subsection 24(1) of the Act, for information made publicly
available in the circumstances mentioned in paragraph 24(1)(b) of
the Act, the prescribed period for making a complete application
for an invention is 12 months from the day the information was
made publicly available.
2.3 Divisional applications—period
(1) For subsection 24(1) of the Act, this regulation applies to an
invention if:
(a) the specification containing the claim in which the invention
is defined was filed for a divisional application under
section 79B or 79C of the Act; and
(b) the claim is entitled under regulation 3.13D or 3.13E to the
priority date that it would have if the claim was in the
specification filed with a previous application (the original
application); and
(c) a circumstance mentioned in regulations 2.2 to 2.2D applies;
and
(d) the original application was filed in the period prescribed in
the circumstance under regulations 2.2 to 2.2D.
(2) The prescribed period for making the divisional application is:
(a) if the divisional application was filed in the period mentioned
in paragraph (1)(d)—that period; or
(b) otherwise—the period ending on the day the divisional
application was made.
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2.4 Prescribed period: patents of addition
(1) For the purposes of section 25 of the Act, the prescribed period is
the period that commences on the priority date of the claim of the
specification of the main invention and ends immediately before
the priority date of the relevant claim of the specification of the
patent of addition.
(2) In subregulation (1), a reference to the claim of the specification of
the main invention is a reference to:
(a) the claim defining that main invention; or
(b) if there are 2 or more claims defining the main invention—
the claim that has the earlier or earliest priority date.
2.5 Prescribed period: assertion that invention is not a patentable
invention
For subsection 27(1) of the Act, the prescribed period is the period:
(a) beginning immediately after the complete specification filed
in relation to the application for a standard patent becomes
open to public inspection; and
(b) ending 3 months after the date of publication in the Official
Journal of the notice of acceptance under paragraph 49(5)(b)
of the Act.
2.6 Prescribed period: notification of assertion of invalidity of
innovation patent
For subsection 28(2) of the Act, the prescribed period for an
innovation patent is the period from the date that the complete
specification for the patent becomes open to public inspection to
immediately before the Commissioner decides to certify the patent.
2.7 Documents to accompany notice of assertion of invalidity
Notice of an assertion under subsection 27(1) or 28(1) of the Act
must, if the assertion is based on a document, have with it:
(a) a copy of the document; and
(b) if the document is not in English, a copy of:
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Patents Regulations 1991 13
(i) a translation of the document into English; and
(ii) a related certificate of verification; and
(c) evidence of the date and place of publication of the
document.
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Division 1 Applications
Regulation 3.1
14 Patents Regulations 1991
Chapter 3—From application to acceptance
Part 1—Inventions generally
Division 1—Applications
3.1 Prescribed documents: patent applications
(1) For the purposes of subsection 29(1) of the Act, an abstract is
required to be filed with a patent request made in relation to a
complete application.
(2) For the purposes of subsection 29(1) of the Act, if a complete
application for a standard patent is made, the following documents
are required to be filed before acceptance:
(c) if a micro-organism is deposited with a prescribed depositary
institution:
(i) if the deposit is an original deposit within the meaning
of Rule 7.3 of the Budapest Treaty or a new deposit
within the meaning of Rule 7.4 of that Treaty—a copy
of a receipt issued by the institution under Rule 7 of the
Treaty; and
(ii) if samples of the micro-organism were transferred to
that institution under Rule 5.1(a)(i) of the Treaty—a
copy of a receipt issued by the institution under Rule 7
of the Treaty; and
(iii) if a receipt referred to in subparagraph (i) or (ii) is not in
English—a translation of the receipt into English and a
related certificate of verification; and
(d) if the application relies on section 6 of the Act—a notice by
the applicant stating the entitlement of the nominated person
to rely on the deposit for the purposes of the Act; and
(e) if the application is an application to which subsection 34(2)
of the Act applies—a copy of the court order declaring the
applicant to be an eligible person in relation to the invention
so far as claimed in a claim of the specification; and
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Regulation 3.1A
Patents Regulations 1991 15
(f) if the application is an application to which subsection 36(4)
of the Act applies—a copy of the declaration of the
Commissioner that the applicant is an eligible person in
relation to the invention as disclosed in the specification; and
(g) if the request is for a patent of addition and is made by a
person authorised by the applicant or patentee—a statement
authorising the person that is signed by the applicant or
patentee.
3.1A Applicant taken to be nominated person
For an application for a standard patent or an innovation patent, the
applicant is taken to be the nominated person.
(2) For a PCT application, the applicant is taken to be the nominated
person.
3.2 Provisional specifications
A provisional specification must be in the approved form.
3.2A Specifications—standard patents
(1) A patent request for a standard patent must:
(a) be in the approved form; and
(b) be in English; and
(c) comply substantially with the requirements of Schedule 3.
(2) A complete specification for a standard patent must:
(a) be in the approved form; and
(b) be in English; and
(c) comply substantially with the requirements of Schedule 3.
(3) If the Commissioner treats an application for a standard patent
(other than a PCT application) as having been filed, the
Commissioner may, within 1 month from the date of filing of the
application, direct the applicant to do anything necessary to ensure
that the patent request and complete specification comply with the
requirements mentioned in subregulations (1) and (2).
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Regulation 3.2AB
16 Patents Regulations 1991
Note: See regulation 3.5 for what happens if certain information required for an application is not filed.
(4) If:
(a) the Commissioner gives the applicant a direction under
subregulation (3) to assist the Commissioner in deciding
whether a filed abstract is in accordance with these
Regulations; and
(b) the Commissioner has specified in the direction a period of
not less than 1 month within which the applicant must
comply with the direction; and
(c) the applicant does not comply with the direction before the
end of the period;
the complete application to which the patent request and complete
specification relate lapses at the end of the period.
(5) Subject to subregulation (4), if an applicant to whom a direction
has been given under subregulation (3) does not comply with the
direction within 2 months from the date of the direction, the
application lapses.
(6) If an application lapses under subregulation (4) or (5), the
Commissioner must:
(a) advertise that fact in the Official Journal; and
(b) tell the applicant that the complete application has lapsed.
3.2AB PCT application—title of specification
(1) The title of a specification for a PCT application is taken to be:
(a) the title approved by the ISA for the application under
rule 44.2 of the PCT; or
(b) the title established by the ISA for the application under
rule 37.2 of the PCT.
(2) For subregulation (1), if the title is in a language other than
English, the title is taken to be the English translation of the title.
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Regulation 3.2B
Patents Regulations 1991 17
3.2B Specifications: formalities check for innovation patents
(1) For section 52 of the Act, a complete application for an innovation
patent passes the formalities check only if the application meets all
of the following requirements:
(a) the complete specification for the application must:
(i) be in the approved form; and
(ii) be in English; and
(iii) comply substantially with the requirements of
Schedule 3;
(b) the patent request must be in the approved form;
(c) if the applicant is an eligible person under section 34 of the
Act—a copy of the court order declaring that the applicant is
an eligible person in relation to the invention must be filed
with the complete application;
(d) the complete application must comply with regulation 3.8,
3.10, 3.11, 6A.1 or 6A.2, or subsection 79C(2) of the Act, if
applicable;
(e) if the applicant is relying on section 41 of the Act—the
receipts mentioned in paragraph 3.1(2)(c) must be filed with
the complete application;
(f) the complete specification must not be a cross-reference to an
earlier patent application filed in Australia or in a Convention
country;
(g) the complete specification must not contravene
subsection 18(2) or (3) of the Act;
(h) if the application is a divisional application made under
section 79B of the Act in relation to an original application
that is a PCT application, the complete specification for the
PCT application must be open to public inspection.
(2) If the application does not meet a requirement mentioned in
paragraph (1)(a), (b), (c), (d), (e), (f) or (h), the Commissioner
must direct the applicant to do anything necessary to ensure that
the application meets the requirement.
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Regulation 3.2C
18 Patents Regulations 1991
(3) If an applicant to whom a direction under subregulation (2) has
been given does not comply with the direction within 2 months
from the date of the direction, the application lapses.
(4) If the application does not meet the requirement mentioned in
paragraph (1)(g), the Commissioner must direct the applicant to
ensure that the application meets the requirement.
(5) If an applicant to whom a direction under subregulation (4) has
been given does not respond to the direction within 2 months from
the date of the direction, the application lapses.
(6) If an applicant to whom a direction under subregulation (4) has
been given does not comply with the direction within 4 months
from the date of the direction, the application lapses.
(7) If an application lapses under subregulation (3), (5) or (6), the
Commissioner must:
(a) advertise that fact in the Official Journal; and
(b) tell the applicant of the lapse.
3.2C Specifications—formalities check for PCT application
(1) This regulation applies to a PCT application that complies with
subsection 29A(5) of the Act.
Note: This regulation was added on 15 April 2013. If the PCT application was filed before 15 April 2013, see subregulation (7).
(2) The applicant must:
(a) provide:
(i) an address for service in Australia at which a document
under the Act or these Regulations may be given to the
applicant personally, or to a person nominated as the
applicant‟s representative; or
(ii) another address for service in Australia to which it is
practicable and reasonable for Australia Post, or a
person acting for Australia Post, to deliver mail; and
(b) if a translation of the application is filed for
subsection 29A(5) of the Act—file a certificate of
verification for the translation.
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Regulation 3.2C
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(3) The PCT application must substantially comply with the
requirements of Schedule 3.
(4) The Commissioner may, within one month from the date the PCT
application complies with subsection 29A(5) of the Act, direct the
applicant to do anything necessary to ensure that the application
complies with the requirements mentioned in subregulations (2)
and (3).
(5) The PCT application lapses if:
(a) the applicant has been given a direction under subregulation
(4); and
(b) the applicant has not complied with the direction within 2
months of the date of the direction.
(6) If the PCT application lapses under subregulation (5), the
Commissioner must:
(a) advertise that fact in the Official Journal; and
(b) tell the applicant that the PCT application has lapsed.
(7) If the PCT application was filed before 15 April 2013:
(a) a reference in this regulation to subsection 29A(5) of the Act:
(i) is taken to be a reference to subsection 89(3) of the Act,
as in force immediately before 15 April 2013; and
(ii) if a translation of a PCT application is required to be
filed—is taken not to include the requirement to file a
related certificate of verification; and
(b) for the purposes of the reference to subsection 89(3) of the
Act, as in force immediately before 15 April 2013,
paragraph 8.2(3)(c) of these Regulations, as in force
immediately before 15 April 2013:
(i) is taken to apply in relation to the PCT application; and
(ii) is taken not to include the requirement to file a related
certificate of verification; and
(iii) is taken not to include the requirement to file a
document setting out an address for service of
documents in Australia.
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Regulation 3.3
20 Patents Regulations 1991
3.3 Abstracts
(1) An abstract must consist of:
(a) a summary of the disclosure as contained in the description,
the claims and any drawings, being a summary:
(i) that indicates the technical field to which the invention
pertains; and
(ii) that is drafted in a way that allows the clear
understanding of the technical problem, the gist of the
solution of that problem through the invention, and the
principal use or uses of the invention; and
(b) if applicable, any chemical formula that, among all the
formulas contained in the specification, best characterises the
invention.
(2) An abstract must be as concise as the disclosure permits, preferably
50 to 150 words.
(3) An abstract must not contain statements on the alleged merits or
value of the claimed invention or on its speculative application.
(4) Each main technical feature mentioned in the abstract and
illustrated by a drawing in the specification must be followed by a
reference sign placed between parentheses.
(5) An abstract must be so drafted that it can efficiently serve as a
scanning tool for the purposes of searching in the particular art,
especially by assisting in the formulation of an opinion on whether
there is a need to consult the specification itself for those purposes.
(6) An abstract is not taken into account in construing the nature of the
invention that is the subject of the specification to which the
abstract relates.
3.4 Substitute abstracts
(1) If a filed abstract is not in accordance with these Regulations, the
Commissioner may prepare a draft of a new abstract in substitution
for the filed abstract.
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Regulation 3.5
Patents Regulations 1991 21
(2) A copy of the draft of a new abstract must be given to the applicant
who may give the Commissioner written comments on the draft
within 1 month of the draft being given to him or her.
(3) The Commissioner must take the comments into account in the
final preparation of the new abstract.
(4) If the Commissioner prepares a new abstract, the new abstract is
taken to be the abstract of the specification to which it relates.
(5) If an applicant who files a complete specification does not file with
it an abstract, the Commissioner, within 1 month of the date of
filing of the complete specification, may direct the applicant to file
an abstract within 1 month of the day on which the direction is
given.
(6) If an abstract is not filed within 1 month from the day on which the
direction was given, the application lapses.
(7) If an application lapses under subregulation (6), the Commissioner
must:
(a) advertise that fact in the Official Journal; and
(b) advise the applicant of the lapse.
3.5 Filing date—patent applications other than PCT applications
(1) Subject to this regulation, the filing date of a patent application
(other than a PCT application) is the date on which the following
information is filed:
(a) information in English that indicates that what is filed is
intended to be an application for a patent;
(b) information that allows the identity of the applicant to be
established or allows the applicant to be contacted by the
Patent Office;
(c) information that appears to be a description.
(2) For paragraph (1)(c), a description:
(a) does not have to be in English; and
(b) may be a drawing; and
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Regulation 3.5AA
22 Patents Regulations 1991
(c) may be a reference, in English, to an earlier patent
application filed in Australia or in a Convention country.
(3) For paragraph (2)(c), the earlier patent application does not have to
be in English.
(4) If all of the information mentioned in subregulation (1) is not filed
in respect of an application, the Commissioner must give the
applicant notice in writing:
(a) telling the applicant that all of the information mentioned in
subregulation (1) was not filed in respect of the application;
and
(b) asking the applicant to file the additional information
required.
(5) If an applicant to whom a notice under subregulation (4) has been
given does not file the additional information within 2 months from
the date of the notice, the application is taken not to have been
filed.
(6) Subregulation (7) applies if an applicant to whom a notice under
subregulation (4) has been given files the additional information
within 2 months from the date of the notice.
(7) For section 30 of the Act, the filing date of the patent application is
the date on which the additional information is filed.
3.5AA Filing date—PCT applications
For section 30 of the Act, the filing date of a PCT application is:
(a) the international filing date; or
(b) if the Commissioner has treated another date as the
international filing date under Rule 82 ter
of the PCT—that
date; or
(c) if section 10 of the Act applies to the application—the date
taken to have been given as the international filing date under
that section.
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Regulation 3.5A
Patents Regulations 1991 23
3.5A Filing date: incomplete specifications
(1) This regulation applies if the information mentioned in
subregulation 3.5(1) has been filed in respect of a patent
application (other than a PCT application) but a part of the patent
specification is missing.
(2) If the Commissioner notices that a part of the specification is
missing, the Commissioner must give the applicant notice in
writing:
(a) telling the applicant that a part of the specification is missing;
and
(b) asking the applicant to file the missing part.
(3) The missing part must be incorporated into the specification if,
within the period applying under subregulation (4), the applicant:
(a) files the missing part; or
(b) if the applicant claims priority from an earlier basic
application or associated provisional application—files:
(i) the missing part; and
(ii) a copy of the earlier application that contains, and
indicates the location of, the missing part; and
(iii) if the earlier application is not in English—a translation
of the application into English together with a related
certificate of verification.
(4) For subregulation (3), the period is:
(a) if a notice is given under subregulation (2)—2 months from
the date of the notice; or
(b) in any other case—the period ending on the earlier of:
(i) 2 months after the filing date; and
(ii) the time of acceptance.
(5) For section 30 of the Act, the filing date of the application is:
(a) if paragraph (3)(a) applies—the date on which the missing
part is filed; and
(b) if paragraph (3)(b) applies—the date that would have been
the filing date if the missing part had not been incorporated.
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(6) If paragraph (5)(a) applies, the Commissioner must tell the
applicant of the new filing date.
(7) Despite paragraph (5)(a), if within 1 month after being told of the
new filing date, the applicant withdraws the missing part from the
specification, the filing date of the application, for section 30 of the
Act, is the date that would have been the filing date if the missing
part had not been incorporated.
3.5AB PCT applications—international applications taken to be
applications under the Act
(1) This regulation applies to an international application that specifies
Australia as a designated State under Article 4(1)(ii) of the PCT if:
(a) the receiving Office has declared that the international
application is taken to be withdrawn; or
(b) the International Bureau has made a finding under Article
12(3) of the PCT.
(2) The international application is taken to be a PCT application, as if
a declaration or finding had not been made, if:
(a) the applicant has made a request referred to in Article
25(1)(a) of the PCT within the time limit specified in
Rule 51.1 of the PCT; and
(b) the Commissioner has received, within the time limit
specified in Rule 51.3 of the PCT:
(i) the fees prescribed for paragraph 29A(5)(b) of the Act;
and
(ii) if the application is not in English—a translation of the
application into English; and
(c) the Commissioner believes on reasonable grounds that:
(i) the declaration was the result of an error or omission by
the receiving Office; or
(ii) the finding was the result of an error or omission by the
International Bureau.
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3.5AC PCT applications—amendment
(1) For subsection 29A(3) of the Act, this regulation sets out the
circumstances and manner in which, and the day on which, a
specification of a PCT application is taken to be amended.
Translation of application into English
(2) If paragraph 29A(5)(a) of the Act applies to the PCT application:
(a) the description, drawings and claims contained in the
application are taken to have been amended by substituting
the description, drawings and claims in the translation; and
(b) the amendment is taken to have occurred on the day the
translation was filed.
Application amended under Article 19 of PCT
(3) If:
(a) a PCT application was amended under Article 19 of the PCT;
and
(b) the application was amended before the applicant met the
requirements of subsection 29A(5) of the Act;
the description, drawings and claims contained in the application
are to be taken to have been amended on the day the amendment
was made.
Application rectified under Rule 91 of PCT
(4) If:
(a) a PCT application was rectified under Rule 91 of the PCT;
and
(b) the rectification was made before the applicant met the
requirements of subsection 29A(5) of the Act;
the description, drawings and claims contained in the application
are to be taken to have been amended on the day the rectification
was effective, unless the Commissioner disregards the rectification
under Rule 91.3(f) of the PCT.
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Regulation 3.5AD
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Application amended under Article 34 of PCT
(5) If:
(a) a PCT application in respect of which Australia has been
elected under Chapter II of the PCT has been amended under
Article 34 of the PCT; and
(b) an international preliminary examination report is established
before the applicant meets the requirements of
subsection 29A(5) of the Act;
the description, drawings and claims contained in the application
are taken to have been amended on the day the amendment was
made.
(6) However, subregulation (5) does not apply if:
(a) the Commissioner has notified the applicant under
regulation 3.17C or paragraph 10.2(1)(d); and
(b) the applicant:
(i) provides the advice mentioned in paragraph 3.17B(2)(b)
or subparagraph 10.2(3)(c)(ii); or
(ii) elects under paragraph 3.17B(2)(c) or
subparagraph 10.2(3)(c)(iii) to abandon any
amendments that may have been made under Article 34
of the PCT.
Indications under Rule 13 bis
.4 of the PCT
(7) If an indication in relation to a deposited micro-organism is
furnished according to Rule 13 bis
.4 of the PCT in relation to a PCT
application:
(a) the description contained in the application is taken to have
been amended to include that indication; and
(b) the amendment is taken to have occurred on the day that
indication is furnished to the International Bureau.
3.5AD PCT applications—prescribed requirements
For subsection 29A(4) of the Act, the following requirements are
prescribed:
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(a) the requirements of subsection 29(4) of the Act;
(b) subregulation 3.1(1);
(c) subregulation 3.2A(1);
(d) paragraphs 3.2A(2)(a) and (b).
3.5AE PCT applications—prescribed period
(1) For subsection 29A(5) of the Act, the prescribed period is 31
months after the priority date of the application.
(2) In this regulation:
priority date has the same meaning as in the PCT.
3.5AF PCT applications—translations and prescribed documents
Translations published under Article 21 of PCT
(1) For paragraph 29A(5)(a) of the Act, subregulation (2) applies if:
(a) a PCT application is not filed in English; and
(b) the PCT application has been published in English under
Article 21 of the PCT; and
(c) a translation of the application into English was not filed
before the date of publication under Article 21 of the PCT.
(2) The publication under Article 21 of the PCT is taken:
(a) to be the translation mentioned in paragraph 29A(5)(a) of the
Act; and
(b) to have been filed within the prescribed period; and
(c) to have been verified in accordance with these Regulations.
Copy of application
(3) For paragraph 29A(5)(b) of the Act, if a PCT application has not
been published under Article 21 of the PCT, a copy of the
application is a prescribed document.
(4) In this regulation:
PCT application includes:
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(a) an amendment under Article 19 or 34 of the PCT; and
(b) a rectification under Rule 91 of the PCT.
3.5AG Convention application—prescribed particulars
(1) For paragraph 29B(4)(a) of the Act, the following particulars are
prescribed in relation to a relevant basic application:
(a) the country in which the application was made;
(b) the number allocated to the application by the foreign patent
office of the Convention country in which the application
was made;
(c) the date the application was made.
(2) A reference to a country or a Convention country in subregulation
(1) includes an intergovernmental authority to the extent that
Rule 4.10 of the PCT permits for a PCT application.
Note: An example for subregulation (2) is that the PCT allows the European Patent Office to be specified for a regional application instead of a particular Convention country.
3.5B Filing of documents outside business hours
The Patent Office and each sub-office of the Patent Office (if any)
may provide facilities for the filing of documents when the Office
or sub-office is not open to the public for business.
3.6 Requests to make determinations between interested parties
For section 32 of the Act, a request must:
(a) be in the approved form; and
(b) have with it a notice, by the person making the request,
stating the grounds on which the request is made.
3.7 Form of certain applications
For the purposes of paragraphs 35(1)(b) and 36(1)(b) of the Act, an
application must:
(a) be in the approved form; and
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(b) have with it a notice by the applicant stating the grounds on
which the application is made.
3.8 Time within which applications are to be made following certain
decisions and declarations
An application under section 29 of the Act must be made:
(a) in the case of an application of the kind described in
section 33 of the Act—within 3 months of the decision of the
Commissioner referred to in paragraph 33(1)(c), (2)(c), (3)(c)
or (4)(b) of the Act, as the case requires; or
(b) in the case of an application of the kind described in
section 34 of the Act—within 3 months of the declaration of
a court under subsection 34(1) of the Act; or
(c) in the case of an application of the kind described in
section 35 of the Act—within 3 months of the declaration of
the Commissioner under subsection 35(1) of the Act; or
(d) in the case of an application of the kind described in
section 36 of the Act—within 3 months of the declaration of
the Commissioner under subsection 36(1) of the Act.
3.9 Prescribed period: treatment of complete application as
provisional
For subsection 37(1) of the Act, the prescribed period is:
(a) for an application for a standard patent—the period from the
date of filing of the complete application until the earlier of:
(i) the end of 12 months from the filing date of the
complete application; and
(ii) the day that is 3 weeks before the due date for
publishing a notice under section 54 of the Act; and
(b) for an application for an innovation patent—12 months from
the filing date of the complete application.
3.10 Prescribed period: making of complete applications
For the purposes of section 38 of the Act, the period of 12 months
from the filing date of the provisional application is prescribed.
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3.11 Prescribed period—making Convention application
For subsections 29B(2) and 38(1A) of the Act, the prescribed
period is 12 months from the day a basic application is first made
in a Convention country for the invention.
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Regulation 3.12
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Division 2—Priority date of claim
3.12 What this Division is about
(1) This Division determines the priority date of a claim:
(a) for subsection 36(4) of the Act (see regulation 3.13); and
(b) for paragraph 43(2)(a) of the Act (see regulations 3.13A to
3.13E); and
(c) for section 114 of the Act (see regulation 3.14).
(2) However, if more than one of regulations 3.13A to 3.13E applies to
a single claim, the priority date of the claim, for paragraph 43(2)(a)
of the Act, is the earliest of the dates that is determined by those
regulations.
(3) Despite regulations 3.13A to 3.13E, the priority date of a claim, for
paragraph 43(2)(a) of the Act, is no later than the date of the filing
of the specification.
(4) In this Division, a document clearly discloses an invention if the
document discloses the invention in a manner that is clear enough,
and complete enough, for the invention to be performed by a
person skilled in the relevant art.
3.13 Priority date for application by person declared under
section 36 of the Act
(1) This regulation determines the priority date of a claim under
subsection 36(4) of the Act.
(2) If the claimed invention is clearly disclosed in the specification
mentioned in paragraph 36(1)(c) of the Act:
(a) if the specification was filed in relation to a complete
application, the priority date of the claim is the priority date
that the claim would have had if the claim was included in
the specification; and
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32 Patents Regulations 1991
(b) if the specification was filed in relation to a provisional
application, the priority date of the claim is the date the
specification was filed.
(3) If the claimed invention is not clearly disclosed in the specification
mentioned in paragraph 36(1)(c) of the Act, the priority date of the
claim is the date the specification for the complete application
referred to in subsection 36(4) of the Act was filed.
3.13A Priority date for PCT application
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (2) applies to
the invention defined in the claim; and
(b) either:
(i) a document mentioned in subregulation (4) clearly
discloses the invention in the claim; or
(ii) more than one of the documents mentioned in
paragraph (4)(a), considered together, clearly disclose
the invention in the claim.
Circumstance
(2) For paragraph (1)(a), the circumstance is that the specification
containing the claim that defines the invention was filed for a PCT
application, and:
(a) either:
(i) the PCT application claims the priority of an earlier
application under Article 8 of the PCT; or
(ii) the PCT application has been amended to include a
claim to priority from an earlier application that, at the
time of filing the PCT application, was a claim to
priority that could have been made under Article 8 of
the PCT; and
(b) either:
(i) the earlier application was made in Australia no more
than 12 months before the filing date of the PCT
application; or
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(ii) the earlier application was made in Australia more than
12 months before the filing date of the PCT application,
and:
(A) a receiving Office has restored the priority
under Rule 26 bis
.3, and the restored priority has
not been found to be ineffective by the
Commissioner or a prescribed court under
Rule 49 ter
.1; or
(B) the Commissioner has restored the priority
under Rule 49 ter
.2; or
(C) the Commissioner has granted an extension of
time under section 223 of the Act that has the
effect of restoring a right of priority; or
(iii) the earlier application is a basic application that was the
first application made in a Convention country in
relation to the invention, and:
(A) the earlier application was made no more than
12 months before the filing date of the PCT
application; or
(B) the earlier application was made more than 12
months before the filing date of the PCT
application, and a receiving Office has restored
the priority under Rule 26 bis
.3, and the restored
priority has not been found to be ineffective by
the Commissioner or a prescribed court under
Rule 49 ter
.1; or
(C) the earlier application was made more than 12
months before the filing date of the PCT
application, and the Commissioner has restored
the priority under Rule 49 ter
.2; or
(D) the earlier application was made more than 12
months before the filing date of the PCT
application, and the Commissioner has granted
an extension of time under section 223 of the
Act that has the effect of restoring a right of
priority; or
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(iv) the earlier application is a basic application that was
made after a basic application mentioned in
subparagraph (iii).
(3) For the purposes of this regulation, if a provisional specification
was filed for a basic application when the application was made, a
complete specification later filed for the basic application is taken
to be another basic application from which the PCT application
claims priority, made on the day when the complete specification
was filed.
Documents
(4) For paragraph (1)(b), the documents are:
(a) the documents filed for the earlier application at the time the
application was made; and
(b) the complete specification for the PCT application, if:
(i) the invention in the claim relates to a micro-organism;
and
(ii) the documents filed for the earlier application, at the
time the application was made, included the relevant
information on the characteristics of the micro-organism
that was known to the applicant; and
(iii) the documents filed for the earlier application, at the
time the application was made, clearly disclosed the
invention, other than in relation to the description of the
micro-organism; and
(iv) the requirements of paragraph 6(c) of the Act are
satisfied by the complete specification; and
(v) the micro-organism was deposited with a prescribed
depository institution, in accordance with the rules of
the Budapest Treaty, on or before the date the earlier
application was made.
Priority date
(5) Subject to regulation 3.12, the priority date is:
(a) the date when the earlier application was made; or
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Regulation 3.13B
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(b) if there is more than one earlier application—the date the
earliest of those applications was made for which
paragraph (1)(b) is satisfied.
3.13B Priority date for Convention application
(1) This regulation applies to a claim if:
(a) the specification containing the claim that defines the
invention was filed for:
(i) a Convention application; or
(ii) a complete application that has been amended to
become a Convention application; and
(b) a document mentioned in subregulation (2), or more than one
of the documents mentioned in paragraph (2)(a) considered
together, clearly discloses the invention in the claim.
(2) For subregulation (1)(b), the documents are:
(a) the documents filed for a related basic application at the time
when the application was made; and
(b) the complete specification for the Convention application, if:
(i) the invention in the claim relates to a micro-organism;
and
(ii) the documents filed for a related basic application, at the
time when the application was made, included the
relevant information on the characteristics of the
micro-organism that was known to the applicant; and
(iii) the documents filed for a related basic application, at the
time when the application was made, clearly disclosed
the invention, other than in relation to the description of
the micro-organism; and
(iv) the requirements of paragraph 6(c) of the Act are
satisfied by the complete specification; and
(v) the micro-organism was deposited with a prescribed
depository institution, in accordance with the rules of
the Budapest Treaty, on or before the date when the
related basic application was made.
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Regulation 3.13C
36 Patents Regulations 1991
(3) For this regulation, if a provisional specification was filed for a
related basic application when the application was made, a
complete specification later filed for the basic application is taken
to be another related basic application made on the day the
complete specification was filed.
(4) Subject to regulation 3.12, the priority date is:
(a) the date the related basic application was made; or
(b) if there is more than one related basic application—the date
the earliest of those applications was made for which
paragraph (1)(b) is satisfied.
3.13C Priority date for complete application associated with
provisional application
(1) This regulation applies to a claim if:
(a) the specification containing the claim that defines the
invention was filed for a complete application that is
associated with a provisional application under section 38 of
the Act; and
(b) a document mentioned in subregulation (2), or more than one
of the documents mentioned in paragraph (2)(a) considered
together, clearly discloses the invention in the claim.
(2) For paragraph (1)(b), the documents are:
(a) the documents filed for the provisional application at the time
when the application was made; and
(b) the complete specification for the complete application, if:
(i) the invention in the claim relates to a micro-organism;
and
(ii) the documents filed for the provisional application, at
the time the application was made, included the relevant
information on the characteristics of the micro-organism
that was known to the applicant; and
(iii) the documents filed for the provisional application, at
the time the application was made, clearly disclosed the
invention, other than in relation to the description of the
micro-organism; and
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Regulation 3.13D
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(iv) the requirements of paragraph 6(c) of the Act are
satisfied by the complete specification; and
(v) the micro-organism was deposited with a prescribed
depository institution, in accordance with the rules of
the Budapest Treaty, on or before the date the
provisional application was made.
(3) Subject to regulation 3.12, the priority date is:
(a) the date the provisional application was made; or
(b) if there is more than one provisional application—the date
the earliest of those applications was made for which
paragraph (1)(b) is satisfied.
3.13D Priority date for divisional application filed prior to grant of
patent
(1) This regulation applies to a claim if:
(a) the specification containing the claim that defines the
invention was filed for:
(i) a divisional application under section 79B of the Act; or
(ii) a complete application that has been amended to
become a divisional application under section 79B of
the Act; and
(b) a document mentioned in subregulation (2) clearly discloses
the invention in the claim.
(2) For paragraph (1)(b), the documents are:
(a) the specification mentioned in subsection 79B(1) of the Act
(the earlier specification), unless:
(i) the deposit requirements must be satisfied in relation to
the invention to comply with paragraph 40(2)(a) of the
Act; and
(ii) when the divisional application under section 79B of the
Act is made, the period prescribed in subregulation
1.5(1) has ended in relation to the earlier specification;
and
(iii) the requirements of paragraph 6(c) of the Act are not
satisfied in relation to the earlier specification; and
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(b) the complete specification for the divisional application, if:
(i) the invention in the claim relates to a micro-organism;
and
(ii) the earlier specification is a prescribed document; and
(iii) on the date when the first application was made, the
earlier specification included the relevant information
on the characteristics of the micro-organism that was
known to the applicant; and
(iv) on the date when the first application was made, the
earlier specification clearly disclosed the invention,
other than in relation to the description of the
micro-organism; and
(v) the requirements of paragraph 6(c) of the Act are
satisfied by the complete specification for the divisional
application; and
(vi) the micro-organism was deposited with a prescribed
depository institution, in accordance with the rules of
the Budapest Treaty, on or before the date when the first
application was made.
(3) Subject to regulation 3.12, the priority date is the priority date that
the claim would have had if the claim was in the earlier
specification.
3.13E Priority date for divisional application after grant of
innovation patent
(1) This regulation applies to a claim if:
(a) both of the following apply:
(i) the specification containing the claim that defines the
invention was filed for a divisional application under
section 79C of the Act;
(ii) examination of the divisional application is requested
within 2 months from the date of the grant of the
divisional application; and
(b) the specification referred to in subsection 79C(1) of the Act
clearly discloses the invention in the claim.
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Regulation 3.14
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(2) Subject to regulation 3.12, the priority date is the priority date that
the claim would have had if the claim had been in the specification
mentioned in subsection 79C(1) of the Act.
3.14 Priority dates: certain amended claims
If section 114 of the Act applies to a claim of a specification, the
priority date of the claim is:
(a) in the case of an amendment to which subsection 29A(3) of
the Act applies—the date on which the amendment is taken
to have been made under that subsection; and
(b) in any other case—the date of filing of the statement of
proposed amendments that resulted in the disclosure referred
to in subparagraph 114(1)(c)(ii) of the Act.
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Regulation 3.14A
40 Patents Regulations 1991
Division 3—Examination
3.14A Request for international-type search relating to provisional
application
(1) An applicant for a provisional application may make a request
under Article 15(5) of the PCT for an international-type search in
relation to the application.
(2) The applicant must make the request within 10 months from the
date the provisional application was filed.
(3) If more than one International Searching Authority is competent
under Article 15(5) of the PCT to carry out the search, the
Commissioner may choose the Authority that will carry out the
search.
3.14B Request for preliminary search and opinion relating to
complete application
(1) This regulation applies to a complete application for a standard
patent made on or after 15 April 2013.
(2) If the applicant has not asked for an examination under section 44
of the Act, the applicant may request a preliminary search and
opinion relating to the application under section 43A of the Act.
(3) The request must be in the approved form.
Note: Section 43A of the Act does not require a request to be made before the Commissioner conducts a preliminary search and opinion.
3.14C Priority dates—Convention applications and PCT
applications: prescribed period for disregarding earlier
applications
For paragraph 43(5)(b) of the Act, the period of more than 12
months before the filing of the Convention application or PCT
application is prescribed.
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Regulation 3.14D
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3.14D Prescribed documents: basic application
(1) For subsection 43AA(1) of the Act, the following documents that
relate to a basic application are prescribed:
(a) a copy of the specification filed for, and at the same time as,
the basic application;
(b) a copy of any other document filed for the basic application,
whether filed at the same time as, or after, the basic
application is filed;
(c) a document mentioned in paragraph (a) or (b) that has been
certified by the competent authority of the Convention
country in which the basic application was made;
(d) if the application relates to a micro-organism—a copy of a
receipt for the deposit of the micro-organism issued by a
prescribed depository institution;
(e) if a document mentioned in paragraphs (a) to (d) is not in
English—a translation of the document into English and a
certificate of verification of the translation.
(2) For subsection 43AA(4) of the Act, if the Commissioner requires
that a prescribed document relating to a basic application be made
available to the Commissioner:
(a) the prescribed means for making the document available are:
(i) filing the document with the Australian Patent Office; or
(ii) making the document available through an approved
digital library; and
(b) the prescribed period for making the document available is 3
months from the day the Commissioner requires the
document be made available.
(3) However, if the Commissioner is satisfied that:
(a) a document was made available for inspection by the
Commissioner in an approved digital library within the
period mentioned in paragraph (2)(b); and
(b) the document is no longer available for inspection;
the prescribed period is 2 months after the day the Commissioner
notifies the applicant or patentee that the Commissioner has not
been able to inspect the document in the approved digital library.
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Regulation 3.15
42 Patents Regulations 1991
3.15 Requirements of request for examination
(1) For the purposes of subsection 44(1) of the Act, the period of 5
years from the filing date of the complete application is prescribed.
(2) For the purposes of subsection 44(1) of the Act, a request for an
examination of a patent request and complete specification must be
in the approved form.
(3) An applicant of a PCT application may not make a request for the
examination of the patent request and complete specification until
the applicant has complied with the requirements of
subsection 29A(5) of the Act.
3.16 Prescribed grounds and period for examination
(1) For the purposes of subsection 44(2) of the Act, the following
grounds are prescribed:
(a) that the Commissioner reasonably considers it expedient to
give the direction having regard to the progress made in the
examination of applications filed before the filing date of the
application concerned;
(b) that the Commissioner reasonably considers it to be in the
public interest to give the direction;
(c) that the Commissioner reasonably considers it expedient to
give the direction, having regard to the examination of
another application for a standard patent or the examination
of an innovation patent.
(2) For the purposes of subsection 44(2) of the Act, the prescribed
period is 2 months from the day on which the direction was given.
(3) A direction must be given in writing and state the grounds on
which it is given.
3.17 Requirement for Commissioner to direct or expedite
examination
(1) For the purposes of subsection 44(3) of the Act, a person may, in
the approved form, request the Commissioner to direct an applicant
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for a standard patent to ask for an examination of the patent request
and complete specification under subsection 44(2) of the Act.
(2) If an applicant has asked for an examination of the patent request
and complete specification to be expedited, the Commissioner may
do so if he or she is reasonably satisfied that:
(a) it is in the public interest; or
(b) there are special circumstances that make it desirable.
3.17A PCT applications—Commissioner not to give certain
directions
(1) This regulation applies to a PCT application that is treated as an
application for a standard patent under the Act.
(2) The Commissioner must not give a direction under section 44 of
the Act unless the applicant has complied with the requirements of
subsection 29A(5) of the Act.
3.17B PCT applications—examination requirements
(1) For subsection 45(1A) of the Act, this regulation prescribes
requirements for a PCT application.
(2) The requirements are that the applicant must:
(a) give a copy of the international preliminary examination
report to the Commissioner; or
(b) advise that:
(i) no demand was made under Article 31 of the PCT; or
(ii) no amendments were made under Article 34 of the PCT;
or
(iii) the demand was made under Article 31 of the PCT, or
the international preliminary examination report was
established, after the applicant complied with the
requirements of subsection 29A(5) of the Act; or
(c) elect to abandon any amendments that may have been made
under Article 34 of the PCT.
(3) However, subregulation (2) applies only if:
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(a) each of the following applies:
(i) the applicant demanded an international preliminary
examination under Article 31 of the PCT before
complying with the requirements of subsection 29A(5)
of the Act;
(ii) at least 3 months after the applicant complied with the
requirements of subsection 29A(5) of the Act, the
Commissioner asks for a copy of the international
preliminary examination report from the International
Bureau;
(iii) the International Bureau advises that the international
preliminary examination report is not available; or
(b) both of the following apply:
(i) the applicant asks for the examination to be expedited
under subregulation 3.17(2);
(ii) a copy of an international preliminary examination
report relating to the application has not been provided
to the Commissioner.
Note: Under subparagraph 3.5AC(9)(b)(ii), if the applicant provides the advice, or makes the election, mentioned in paragraph (2)(b) or (c), any amendments made under Article 34 of the PCT are not taken to be included in the application.
(4) In this regulation:
international preliminary examination report has the same
meaning as it has in the PCT.
3.17C PCT applications—notice if examination declined
If the Commissioner declines to examine a request and
specification under subsection 45(1A) of the Act, the
Commissioner must notify the applicant and ask the applicant to
meet the requirements in subregulation 3.17B(2).
3.18 Report of Commissioner: examination
(2) For paragraph 45(1)(d) of the Act, the following matters are
prescribed:
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(a) whether, to the best of the Commissioner‟s knowledge, the
request and specification comply with the following
provisions of the Act:
(i) section 15 (Who may be granted a patent?);
(ii) section 29 (Application for patent—general rules);
(iii) section 29B (Applications for patents—special rules for
Convention applications);
(iv) section 38 (Time for making complete application);
(v) section 79B (Divisional applications prior to grant of
patent);
(vi) section 81 (Grant of patent of addition);
(c) whether acceptance of the request and specification should be
refused under section 50 of the Act („application or grant
may be refused in certain cases‟);
(e) whether a patent cannot be granted on the application
because of subsection 64(2) of the Act („grant: multiple
applications‟);
(f) for a PCT application—whether, to the best of the
Commissioner‟s knowledge, the application complies with
subregulations 3.2C(2) and (3).
(4) If a notice is filed under subsection 27(1) of the Act before the
patent request and complete specification to which the notice
relates have been accepted under subsection 49(1) of the Act, in
examining the patent request and complete specification under
section 45 of the Act, the Commissioner must consider a matter
stated in the notice that addresses a claim that the invention
concerned does not comply with paragraph 18(1)(b) of the Act.
3.19 Conduct of examination: standard patents
(1) If the Commissioner reasonably believes that there are lawful
grounds of objection to the patent request or complete
specification, he or she must state the grounds of objection in
reporting on an examination.
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(2) The applicant may contest the objection in writing or ask for leave
to amend the patent request or complete specification in
accordance with Chapter 10.
(3) If the applicant asks for leave to amend a patent request or
complete specification in response to, or in anticipation of, a report
under section 45 of the Act, the Commissioner must examine the
request and specification and report as if each proposed
amendment had been made.
(4) If the applicant contests the objection, the Commissioner must
examine the request and specification and take note of the matters
raised by the applicant.
3.22 Disclosure of patent documents and information to
International Bureau etc
(1) The Commissioner may disclose any or all of the following to the
International Bureau or a foreign patent office:
(a) the patent application or patent;
(b) a document given by the applicant, or another person, to the
Commissioner in connection with the patent application or
patent;
(c) a document in the Commissioner‟s possession that relates to
the patent application or the application of the patent;
(d) any information in the Commissioner‟s possession that
relates to a document mentioned in paragraph (a), (b) or (c);
whether or not the application is open for public inspection.
(2) However, if the patent application, document or information is not
open for public inspection, the Commissioner must not disclose the
application, document or information without the consent of the
applicant.
Note: Section 194 of the Act also authorises the Commissioner to give a person certain information about patents, patent applications and other documents in certain circumstances.
(3) The Commissioner may disclose the patent application, document
or information by depositing it in an approved digital library or by
any other means.
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Part 2—Inventions that are micro-organisms
3.23 Documents in accepted applications and patents involving
micro-organisms
(1) Where a micro-organism is deposited with a prescribed depositary
institution for the purposes of section 41 of the Act, the following
documents must be filed in relation to an application that has been
accepted under section 49 or 52 of the Act or a patent in respect of
the micro-organism:
(a) if the deposit is an original deposit within the meaning of
Rule 7.3 of the Budapest Treaty or a new deposit within the
meaning of Rule 7.4 of that Treaty—a copy of a receipt
issued by the institution under Rule 7 of the Treaty;
(b) if samples of the micro-organism were transferred to that
institution under Rule 5.1(a)(i) of the Treaty—a copy of a
receipt issued by the institution under Rule 7 of the Treaty;
(c) if a receipt referred to in paragraph (a) or (b) is not in
English—a translation of the receipt into English and a
related certificate of verification.
(2) The documents referred to in subregulation (1) must be filed within
3 months from the date of receipt of the micro-organism by the
prescribed depositary institution.
3.24 Commissioner may request samples and viability statement
(1) If, in relation to a patent application or patent in respect of a
micro-organism, the micro-organism is deposited with a prescribed
depositary institution, the Commissioner:
(a) on the order of a court in Australia, must; or
(b) on his or her own motion or on application in writing by
another person, may;
for the purposes of proceedings before the Commissioner or any
other legal proceedings in Australia:
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(c) make to that institution a request referred to in Rule 11.1 of
the Budapest Treaty for a sample of that micro-organism; and
(d) in relation to that micro-organism, make the declaration
referred to in that Rule.
(2) Before making a request, the Commissioner must give the
applicant or patentee concerned, and any other person who
apparently has an interest in the request, an opportunity to be
heard, unless the request is made on the order of a court.
(3) If the Commissioner decides to make, or to refuse to make, a
request, he or she must inform the applicant or patentee concerned,
and any other person who apparently has an interest in the request,
of the decision, and of the reasons for the decision, by notice in
writing as soon as practicable after the decision.
(4) The Commissioner may make a request referred to in Rule
10.2(a)(iii) of the Budapest Treaty for a statement concerning the
viability of a micro-organism if a sample of the micro-organism
has been given to the Commissioner in accordance with a request
under subregulation (1).
3.25 Request for Commissioner’s certificate authorising release of
sample of a micro-organism
(1) If a micro-organism is deposited with a prescribed depositary
institution, a person may, in the approved form, request the
Commissioner to grant the certification referred to in Rule 11.3(a)
of the Budapest Treaty in respect of the deposit.
(2) As soon as practicable after receiving a request, the Commissioner
must decide whether to:
(a) comply with the request; or
(b) impose such conditions as are reasonable, including a
condition that the person give security for damages for any
breach of the undertaking referred to in paragraph (4)(c)
given by:
(i) the person; or
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(ii) another person who has been nominated as a skilled
addressee; or
(c) refuse that request.
(3) If the application is for a standard patent, the applicant may, at any
time before the specification relating to the application is open for
public inspection, notify the Commissioner that a sample of the
deposited micro-organism is only to be provided in a period
mentioned in subregulation (3A) to a person who is:
(a) a skilled addressee without an interest in the invention; and
(b) nominated by the person who made the request.
(3A) For subregulation (3), the period is:
(a) before the patent is granted on that application; or
(b) before the application has lapsed or been withdrawn or
refused.
(4) The Commissioner must comply with a request in respect of a
patent application or patent:
(a) if the specification relating to that application or patent is
open to public inspection; and
(b) unless the Commissioner is reasonably satisfied that the
nominated person is not entitled to rely on the deposit for the
purposes of the Act; and
(c) if the person making the request or the person nominated as a
skilled addressee has undertaken to use that micro-organism
only for experimental purposes or in relation to:
(i) opposition proceedings under Chapter 5 of the Act in
relation to the grant of a standard patent on that
application; or
(ii) opposition proceedings under section 101M of the Act
in relation to an innovation patent; or
(iii) relevant proceedings in relation to the patent;
and not to make that micro-organism, or a culture derived
from that micro-organism, available to another person; and
(d) unless the Commissioner is reasonably satisfied that the
undertaking given by the person making the request or the
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person nominated as a skilled addressee was not given in
good faith; and
(e) if:
(i) the Commissioner has been notified under subregulation
(3); and
(ii) the patent referred to in that subregulation has not been
granted; and
(iii) the application referred to in that subregulation has not
lapsed or been withdrawn or refused; and
(iv) the Commissioner is reasonably satisfied that the person
nominated as a skilled addressee is a skilled addressee
without an interest in the invention; and
(f) if:
(i) the request is in respect of a patent; and
(ii) the person making that request is a person to whom the
patentee has granted a licence under section 133 of the
Act; and
(iii) the Commissioner is reasonably satisfied that the
licence provides that the person making the request has
a right to obtain a sample of that micro-organism; and
(g) if:
(i) the request is in respect of a patent; and
(ii) the person making that request is a person who may
exploit the invention under section 163 of the Act; and
(iii) the Commissioner is reasonably satisfied that the terms
for the exploitation of the invention provide that the
person making the request has a right to obtain a sample
of that micro-organism.
(5) Before making a decision under subregulation (2), the
Commissioner must give the person making the request, the
applicant or patentee concerned and any other person who
apparently has an interest in the request, an opportunity to be
heard.
(6) If the Commissioner makes a decision under subregulation (2), he
or she must inform the person who made the request, the applicant
or patentee concerned and any other person who apparently has an
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interest in the request, of the decision, and the reasons for the
decision, by notice in writing given as soon as practicable after the
date of the decision.
3.26 Breach of undertakings given in respect of micro-organisms
(1) Where the micro-organism is deposited with a prescribed
depositary institution, proceedings for breach of an undertaking
referred to in paragraph 3.25(4)(c) may be instituted in a prescribed
court by a person who is:
(a) if a patent has not been granted on that patent application—
the applicant; or
(b) if:
(i) a patent has been granted on that patent application; or
(ii) the deposit is effected in relation to a patent;
the patentee of, or an exclusive licensee under, that patent.
(2) In proceedings by an exclusive licensee, the patentee must be a
party to the proceedings.
(3) A patentee joined as a defendant in the proceedings by an
exclusive licensee is not liable for costs unless the patentee enters
an appearance and takes part in the proceedings.
(4) It is a defence in proceedings for breach of the undertaking given
in respect of a micro-organism to which a specification filed in
respect of a patent application or patent relates, that when the
matters complained of took place the specification did not comply
with the requirements referred to in paragraph 6(c) or (d) of the
Act.
(5) A defendant may not plead a defence referred to in subregulation
(4) unless:
(a) the defendant, before becoming a defendant in the
proceedings, notified the Commissioner under paragraph
3.29(1) of the deposit requirement that has ceased to be
satisfied; and
(b) the applicant for the patent or the patentee fails to take the
steps referred to in paragraph 41(4)(b) of the Act within the
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52 Patents Regulations 1991
appropriate period prescribed by subregulation 3.30(1) for
the purposes of that paragraph.
3.27 Procedure in proceedings for breach of an undertaking
In proceedings referred to in subregulation 3.26(1) for breach of an
undertaking:
(a) the plaintiff must deliver particulars of the breaches
complained of:
(i) with the statement of claim or declaration; or
(ii) by order of the court, at a later time; and
(b) the defendant must deliver particulars of any objections on
which the defendant relies:
(i) with the statement of defence or plea; or
(ii) by order of the court, at a later time.
3.28 Relief in proceedings for breach of undertakings
(1) In proceedings referred to in subregulation 3.26(1), the court may:
(a) make an order for inspection; and
(b) impose terms and give directions with respect to the
inspection.
(2) In proceedings referred to in subregulation 3.26(1), the court may
grant such relief as it thinks fit, including:
(a) an injunction on such terms as it thinks fit; or
(b) an order for damages; or
(c) an order for an account of profits; or
(d) an order with respect to any security given under
paragraph 3.25(2)(b); or
(e) an order on such terms as it thinks fit to deliver to such
person as it thinks fit the micro-organism or any substance or
thing derived directly or indirectly from that micro-organism
as a result of the breach of the undertaking, including:
(i) any products made by using that micro-organism; and
(ii) any other micro-organisms derived from that
micro-organism; and
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(iii) any products made by using those other
micro-organisms.
3.29 Notification that a deposit requirement has ceased to be
satisfied
(1) If a deposit requirement ceases to be satisfied in relation to a
micro-organism to which a specification filed in respect of a patent
application or patent relates, a person other than the applicant or
patentee may, after the specification has become open to public
inspection, notify the Commissioner in the approved form of the
requirement referred to in paragraph 6(c) or (d) of the Act that has
ceased to be satisfied.
(2) As soon as practicable after receiving a notice under subregulation
(1), the Commissioner must give a copy of the notice to the
applicant or patentee.
(3) If the Commissioner learns, otherwise than by a notice referred to
in subregulation (1), of facts that may establish that a requirement
referred to in that subregulation has ceased to be satisfied, the
Commissioner must cause a notice setting out those facts to be
given to the applicant or patentee.
(4) As soon as practicable after the Commissioner receives a notice
under subregulation (1) or gives a notice under subregulation (3), a
notice of the receipt or giving of that notification must be
published in the Official Journal.
(5) The terms of a notice under subregulation (1) or (3) need not be
published, but the notice must be open to public inspection.
(6) The applicant or patentee may file a written reply setting out the
facts relied upon to establish that the requirement referred to in
subregulation (1) is satisfied.
(7) If a reply filed under subregulation (6) is in answer to a notification
under subregulation (1) by a person, the Commissioner must, as
soon as practicable after receiving the reply, give a copy of the
reply to that person.
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54 Patents Regulations 1991
(8) As soon as practicable after a reply is filed under subregulation (6),
a notice of the filing must be published in the Official Journal.
(9) The terms of a reply filed under subregulation (6) need not be
published, but the reply must be open to public inspection.
3.30 Prescribed period: deposit requirements taken to be satisfied
For the purposes of paragraph 41(4)(b) of the Act, if, in relation to
a patent application or patent relating to a micro-organism:
(a) that micro-organism is deposited with a prescribed depositary
institution; and
(b) a requirement referred to in paragraph 6(c) or (d) of the Act
ceases to be satisfied in relation to the micro-organism;
the prescribed period is from the day when the requirement ceases
to be so satisfied to the end of:
(c) where the step referred to in paragraph 41(4)(b) of the Act is
the making of a new deposit of a sample of the
micro-organism:
(i) if the Commissioner has given under subregulation
3.29(2) the applicant or patentee a copy of a notice of
that requirement—the period of 3 months after the copy
was given; or
(ii) if the Commissioner has given under subregulation
3.29(3) to the applicant or patentee a notice of the
requirement—the period of 3 months after the notice
was given; or
(iii) if under Article 4(1) of the Budapest Treaty the
authority has notified the depositor of its inability to
furnish samples of the micro-organism and the
Commissioner has not, before the notification, given to
the applicant or patentee under subregulation 3.29(2) or
(3) a copy of the notice, or the notice, as the case may
be, of the requirement—the period of 3 months after the
depositor received that notification under Article 4(1)(d)
of the Treaty; or
(iv) in any other case—the day when that new deposit is so
made; or
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(d) where the step referred to in paragraph 41(4)(b) of the Act is
an amendment of the specification in respect of that patent
application or patent—the date of the allowance of the
amendment, unless:
(i) the Commissioner has given the applicant or patentee a
copy of a notice under subregulation 3.29(2) or a notice
under subregulation 3.29(3), and the applicant or
patentee has not asked for leave to amend the
specification within the period of 3 months after the
copy or the notice was given; or
(ii) the authority has notified the depositor under Article
4(1) of the Budapest Treaty of its inability to furnish
samples of the micro-organism and:
(A) the Commissioner has not, before the
notification, given to the applicant or patentee
under subregulation 3.29(2) or (3) the notice, or
a copy of the notice, as the case may be, of the
requirement; and
(B) the applicant or patentee has not asked for leave
to amend the specification within the period of
3 months after the depositor received the
notification under Article 4(1)(d) of the Treaty.
3.31 Application for declaration that deposit requirements are not
satisfied
(1) An application under section 42 of the Act for a declaration that a
specification does not comply with section 40 of the Act unless the
deposit requirements are satisfied in relation to a micro-organism,
must:
(a) be made in the approved form to a prescribed court or the
Commissioner; and
(b) be lodged at the court or filed.
(2) A person who applies for a declaration under section 42 of the Act
must give a copy of the application:
(a) to the applicant or patentee; and
(b) to such other person as the court or Commissioner directs.
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(3) If the Commissioner on his or her own motion proposes to declare
under section 42 of the Act that the specification in respect of a
patent application or patent does not comply with the requirements
of section 40 of the Act unless the deposit requirements are
satisfied in relation to a micro-organism, he or she must give to the
applicant or patentee a statement of the facts relied upon to justify
the making of that declaration.
(4) A person to whom:
(a) a copy of an application under subregulation (2); or
(b) a statement under subregulation (3);
has been given:
(c) may, within 3 months, give to the court to which the
application is made or to the Commissioner a reply to that
application or statement; and
(d) must give a copy of the reply to the applicant or patentee and
to such other persons as the court or the Commissioner
directs.
(5) As soon as practicable after:
(a) a copy of a declaration by a court under subsection 42(1) of
the Act is given to the Commissioner under subsection 42(6)
of the Act; or
(b) the making of a decision of the Commissioner under
subsection 42(1) of the Act;
notice of the making of the declaration or decision must be
published in the Official Journal.
(6) The terms of a declaration or decision referred to in subregulation
(5) need not be published, but the declaration or decision must be
open to public inspection.
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Regulation 4.1
Patents Regulations 1991 57
Chapter 4—Publication
4.1 Prescribed information: applicants and applications
For subsection 53(1) of the Act, the following information is
prescribed:
(a) the number allocated to the application by the Commissioner;
(b) the name of the applicant;
(c) in the case of a complete application—the name of the
nominated person;
(d) the title, or an abbreviated title, of the invention;
(e) the date on which the application was filed;
(f) particulars of priority documents.
4.2 Notice that specification is open to public inspection
(1) A request under subsection 54(1) of the Act must be in the
approved form.
(2) For the purposes of subsection 54(1) of the Act, the Commissioner
must publish the notice as soon as practicable after:
(a) being asked by the applicant to publish the notice; and
(b) the relevant abstract is finally completed; and
(c) if a direction has been given under subregulation 3.2A(2)—
the direction has been complied with.
(3) For the purposes of paragraph 54(3)(b) of the Act, the prescribed
period is from the day of filing of the specification to the end of 18
months after:
(a) that day; or
(b) the date of making the earliest priority document referred to
in regulation 3.12;
whichever is earlier.
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Chapter 4 Publication
Regulation 4.3
58 Patents Regulations 1991
4.3 Prescribed documents: public inspection
(1) For subsection 55(1) of the Act, all documents that are:
(a) associated with the application, or with any provisional
application associated with the application; and
(b) in the possession of the Patent Office;
are prescribed, other than:
(c) documents that would be privileged from production in legal
proceedings on the ground of legal professional privilege;
and
(e) the documents mentioned in subregulation (2).
(2) For paragraphs 55(2)(a), (b) and (c) of the Act, the following
documents are prescribed:
(a) a document that is subject to an order of a court or a tribunal
that prohibits disclosure of the document or information in
the document;
(b) a document that the Commissioner has reasonable grounds
for believing should not be open to public inspection.
4.4 Publication and inspection of PCT applications
(1) For subsection 56A(1) of the Act, a PCT application is taken to
have become open to public inspection, and to have been published
in Australia:
(a) if a notice in relation to the application is published under
subregulation (3)—on the day the notice is published; or
(b) if subregulation (5) applies—on the day the application is
published under Article 21 of the PCT.
(2) Subregulation (3) applies to a PCT application:
(a) that has not lapsed, or been withdrawn or refused; and
(b) for which the applicant has complied with subsection 29A(5)
of the Act before the end of 18 months after the priority date
of the application.
(3) The Commissioner must publish a notice in the Official Journal
stating that the PCT application is open to public inspection:
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Regulation 4.4
Patents Regulations 1991 59
(a) if the applicant asks the Commissioner in writing to publish
the notice; or
(b) in any case—as soon as practicable after the end of 18
months after the priority date of the application.
(4) A request for publication under subregulation (3) must be in the
approved form.
(5) The PCT application is open to public inspection if:
(a) the applicant does not comply with subsection 29A(5) of the
Act within 18 months after the priority date of the
application; and
(b) the application is published under Article 21 of the PCT.
(6) The following documents are open for inspection if a notice is
published under subregulation (3) or if subregulation (5) applies:
(a) a copy of the relevant application;
(b) all documents in the possession of the Patent Office, other
than those mentioned in subregulation (7), that are associated
with:
(i) the application; or
(ii) any provisional application from which the application
claims priority under Article 8 of the PCT.
(7) Subregulation (6) does not apply to the following documents:
(a) a document that would be privileged from production in legal
proceedings on the ground of legal professional privilege;
(b) a document mentioned in subregulation 4.3(2).
(8) In this regulation:
priority date has the same meaning as in the PCT.
Federal Register of Legislative Instruments F2013C00202
Chapter 5 Opposition
Part 5.1 Preliminary
Regulation 5.1
60 Patents Regulations 1991
Chapter 5—Opposition
Part 5.1—Preliminary
5.1 What this Chapter is about
This Chapter sets out requirements for the following:
(a) the filing of notices of opposition and associated documents;
(b) the amending of filed documents;
(c) the dismissal of an opposition;
(d) the hearing of an opposition;
(e) associated matters.
5.2 Definitions
General
In this Chapter:
applicant means:
(a) for a section 101M opposition—the patentee of an innovation
patent; or
(b) for any other opposition—a person whose application or
request under the Act or these Regulations is opposed by an
opponent.
notice of opposition means a notice filed under regulation 5.4, 5.6
or 5.10.
opponent means:
(a) for a section 101M opposition—a person who files a notice
of opposition under regulation 5.6; or
(b) for any other opposition—a person who files a notice of
opposition under regulation 5.4 or 5.10.
party means an applicant or an opponent.
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Opposition Chapter 5
Preliminary Part 5.1
Regulation 5.3
Patents Regulations 1991 61
procedural opposition means an opposition begun by filing a
notice of opposition under regulation 5.10.
section 101M opposition means an opposition under section 101M
of the Act.
statement of grounds and particulars means a statement by an
opponent that sets out:
(a) the grounds on which the opponent intends to rely; and
(b) the facts and circumstances forming the basis for the
grounds.
substantive opposition means:
(a) an opposition begun by filing a notice of opposition under
regulation 5.4; or
(b) a section 101M opposition.
Note: The following terms are defined in Schedule 1 to the Act:
(a) approved form;
(b) complete specification;
(c) file;
(d) patent request;
(e) patentee;
(f) re-examination.
5.3 Commissioner may give direction about filing document or
evidence
(1) If a document or evidence may or must be filed under this Chapter,
the Commissioner may give a direction specifying:
(a) the number of copies of the document or evidence to be filed;
and
(b) the form in which the document or evidence is to be filed;
and
(c) the means by which the document or evidence is to be filed.
(2) The Commissioner may make or revoke the direction as the
Commissioner sees fit.
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Chapter 5 Opposition
Part 5.1 Preliminary
Regulation 5.3
62 Patents Regulations 1991
(3) If a party does not comply with the direction, the Commissioner
may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
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Opposition Chapter 5
Filing of opposition documents Part 5.2
Substantive opposition Division 5.2.1
Regulation 5.4
Patents Regulations 1991 63
Part 5.2—Filing of opposition documents
Division 5.2.1—Substantive opposition
5.4 Notice of opposition—standard patent opposition
(1) For section 59 of the Act, a person opposes the grant of a standard
patent by filing a notice of opposition, in the approved form, within
3 months from the day the notice of acceptance is published under
paragraph 49(5)(b) of the Act.
(2) For subsection 75(1) of the Act, a person opposes the grant of an
extension of the term of a standard patent by filing a notice of
opposition, in the approved form, within 3 months from the day the
notice of acceptance is published under paragraph 74(2)(b) of the
Act.
(3) The Commissioner must give an applicant in relation to a notice of
opposition filed under subregulation (1) or (2) a copy of the notice
of opposition as soon as practicable.
5.5 Statement of grounds and particulars—standard patent
opposition
(1) An opponent in a substantive opposition, other than a
section 101M opposition, must file a statement of grounds and
particulars within 3 months from the day the notice of opposition is
filed.
(2) The statement of grounds and particulars must be:
(a) in the approved form; and
(b) accompanied by a copy of each document mentioned in the
statement, unless the document:
(i) is open to public inspection; and
(ii) relates to a provisional or complete application for a
patent.
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Chapter 5 Opposition
Part 5.2 Filing of opposition documents
Division 5.2.1 Substantive opposition
Regulation 5.6
64 Patents Regulations 1991
(3) The Commissioner must give the applicant a copy of the statement
and accompanying documents as soon as practicable.
5.6 Notice of opposition and statement of grounds and particulars—
section 101M opposition
(1) For section 101M of the Act, a person opposes an innovation
patent that has been certified by filing the following documents:
(a) a notice of opposition in the approved form;
(b) a statement of grounds and particulars;
(c) a copy of each document mentioned in the statement, unless
the document:
(i) is open to public inspection; and
(ii) relates to a provisional or complete application for a
patent.
(2) The documents:
(a) may be filed at any time after the certification of the patent;
and
(b) must be filed at the same time.
(3) The Commissioner must give copies of the documents to the
applicant as soon as practicable.
5.7 Filing of evidence
(1) A party who intends to file evidence in a substantive opposition
must:
(a) file the evidence within the relevant evidentiary period
mentioned in regulation 5.8; and
(b) if the party files all the evidence before the end of the
period—notify the Commissioner of that fact.
(2) The Commissioner must give a copy of any evidence filed by a
party under regulation 5.8 to the other party:
(a) before the end of the period, if the Commissioner considers it
appropriate to do so; or
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Opposition Chapter 5
Filing of opposition documents Part 5.2
Substantive opposition Division 5.2.1
Regulation 5.8
Patents Regulations 1991 65
(b) as soon as practicable after the relevant evidentiary period
ends.
(3) The Commissioner must, as soon as practicable, notify:
(a) the other party of a notification under paragraph (1)(b); or
(b) if no notification is given under paragraph (1)(b)—the parties
that:
(i) all the evidence for the period has been filed; or
(ii) no evidence was filed.
5.8 Evidentiary periods
Evidence in support
(1) An opponent in a substantive opposition must file any evidence in
support of the opposition:
(a) for a section 101M opposition—at the same time as the
documents mentioned in subregulation 5.6(1); or
(b) for any other substantive opposition—within 3 months from
the day the opponent files the statement of grounds and
particulars under regulation 5.5.
Evidence in answer
(2) If the opponent files evidence in support of the opposition, the
applicant must file any evidence in answer to the evidence in
support within 3 months from the day the Commissioner:
(a) gives the applicant:
(i) all the evidence in support; or
(ii) if the opponent files the evidence in support in
instalments—the final instalment of the evidence in
support; and
(b) notifies the applicant that all the evidence in support has been
filed.
(3) If the opponent does not file any evidence in support of the
opposition, the applicant must file any evidence in answer to the
statement of grounds and particulars within 3 months from the day
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Chapter 5 Opposition
Part 5.2 Filing of opposition documents
Division 5.2.1 Substantive opposition
Regulation 5.9
66 Patents Regulations 1991
the Commissioner notifies the applicant that no evidence in support
was filed.
Evidence in reply
(4) If the applicant files evidence in answer under subregulation (2) or
(3), the opponent must file any evidence in reply to the evidence in
answer within 2 months from the day the Commissioner:
(a) gives the opponent:
(i) all the evidence in answer; or
(ii) if the applicant files the evidence in answer in
instalments—the final instalment of the evidence in
answer; and
(b) notifies the opponent that all the evidence in answer has been
filed.
5.9 Extension of time for filing evidence
(1) The Commissioner may extend an evidentiary period mentioned in
regulation 5.8:
(a) if requested in writing by a party; or
(b) on the Commissioner‟s own initiative.
(2) The Commissioner may extend the period only if the
Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i) has made all reasonable efforts to comply with all
relevant filing requirements under this Chapter; and
(ii) despite acting promptly and diligently at all times to
ensure the appropriate evidence is filed within the
period, is unable to do so; or
(b) there are exceptional circumstances that warrant the
extension.
(3) The Commissioner must determine the length of the extended
period having regard to what is reasonable in the circumstances.
(4) The Commissioner must notify the parties of the extension as soon
as practicable.
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Opposition Chapter 5
Filing of opposition documents Part 5.2
Substantive opposition Division 5.2.1
Regulation 5.9
Patents Regulations 1991 67
(5) In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the
party from complying with a filing requirement under this
Chapter;
(b) an error or omission by the Commissioner that prevents a
party from complying with a filing requirement under this
Chapter;
(c) an order of a court, or a direction by the Commissioner, that
the opposition be stayed pending the completion of a related
proceeding or action under the Act.
Federal Register of Legislative Instruments F2013C00202
Chapter 5 Opposition
Part 5.2 Filing of opposition documents
Division 5.2.2 Procedural opposition
Regulation 5.10
68 Patents Regulations 1991
Division 5.2.2—Procedural opposition
5.10 Notice of opposition
Leave to amend filed document
(1) For subsection 104(4) of the Act, a person opposes a request for
leave to amend a filed document by filing a notice of opposition, in
the approved form, within 2 months from the day the notice of the
granting of leave to amend is published under subregulation
10.5(2).
Note: For the grounds on which an amendment may be opposed, see regulation 5.21.
Extension of time to do relevant act
(2) For subsection 223(6) of the Act, a person opposes the grant of an
application for an extension of time to do a relevant act by filing a
notice of opposition, in the approved form, within 2 months from
the day the advertisement of the extension application is advertised
under subsection 223(4) of the Act.
Application for grant of licence
(3) For subregulation 22.21(4), a person opposes the grant of a licence
by filing a notice of opposition, in the approved form, within 2
months from the day the Commissioner gives the person a copy of
the application under subregulation 22.21(3).
Commissioner to give copy of notice to applicant
(4) The Commissioner must give an applicant in relation to
subregulation (1), (2) or (3) a copy of the notice of opposition as
soon as practicable.
Federal Register of Legislative Instruments F2013C00202
Opposition Chapter 5
Filing of opposition documents Part 5.2
Procedural opposition Division 5.2.2
Regulation 5.11
Patents Regulations 1991 69
5.11 Statement of grounds and particulars
(1) An opponent in a procedural opposition must file a statement of
grounds and particulars within one month from the day the notice
of opposition is filed under regulation 5.10.
(2) The statement of grounds and particulars must be:
(a) in the approved form; and
(b) accompanied by a copy of each document mentioned in the
statement of grounds and particulars, unless the document:
(i) is open to public inspection; and
(ii) relates to a provisional or complete application for a
patent.
(3) The Commissioner must give the applicant a copy of the statement
of grounds and particulars and accompanying documents as soon
as practicable.
5.12 Practice and procedure
The Commissioner may:
(a) decide the practice and procedure to be followed in a
procedural opposition; and
(b) direct the parties accordingly.
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Chapter 5 Opposition
Part 5.3 Amendments to opposition documents
Regulation 5.13
70 Patents Regulations 1991
Part 5.3—Amendments to opposition documents
5.13 Application of regulation 22.22
Regulation 22.22 does not apply to an amendment made under this
Part.
5.14 Notice of opposition—correction of errors or mistake
(1) An opponent may request the Commissioner in writing to amend
the opponent‟s notice of opposition to correct a clerical error or
obvious mistake.
(2) The Commissioner must give the parties an opportunity to make
representations about the proposed amendment.
(3) The Commissioner must, as soon as practicable:
(a) notify the parties of the Commissioner‟s decision; and
(b) if the Commissioner decides to make the amendment—give
the applicant a copy of the amended notice of opposition.
5.15 Notice of opposition—change of opponent
(1) This regulation applies if an opponent‟s right or interest in an
opposition is transferred to another person (the new opponent)
during an opposition.
(2) The new opponent may:
(a) tell the Commissioner that the right or interest in the
opposition has been transferred to the new opponent; and
(b) request the Commissioner in writing to amend the notice of
opposition to record the new opponent‟s name.
(3) The Commissioner must give the applicant, the opponent and the
new opponent an opportunity to make representations about the
amendment.
(4) The Commissioner must:
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Opposition Chapter 5
Amendments to opposition documents Part 5.3
Regulation 5.16
Patents Regulations 1991 71
(a) as soon as practicable:
(i) notify the parties of the Commissioner‟s decision; and
(ii) if the Commissioner decides to make the amendment—
give the applicant a copy of the amended notice of
opposition; and
(b) ensure that the opposition proceeds in the name of the new
opponent.
5.16 Statement of grounds and particulars
(1) An opponent may request the Commissioner in writing to amend
the opponent‟s statement of grounds and particulars:
(a) to correct an error or omission in the grounds of opposition;
or
(b) to update the grounds of opposition to reflect an amendment
to the patent request or complete specification to which the
statement relates; or
(c) to amend the facts and circumstances forming the basis for
the grounds.
(2) The Commissioner must:
(a) notify the applicant of the opponent‟s request; and
(b) give the parties an opportunity to make representations about
the amendment.
(3) The Commissioner must not make the amendment if:
(a) the Commissioner is considering an application for dismissal
of the opposition under Part 5.4; or
(b) for an opposition begun under subregulation 5.4(1):
(i) the applicant‟s complete specification is being
re-examined; and
(ii) the re-examination is not completed as required by
regulation 9.5.
(4) The Commissioner must make the amendment if:
(a) subregulation (3) does not apply; and
(b) the Commissioner is satisfied that the amendment should be
made.
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Chapter 5 Opposition
Part 5.3 Amendments to opposition documents
Regulation 5.16
72 Patents Regulations 1991
(5) The Commissioner must, as soon as practicable:
(a) notify the parties of the Commissioner‟s decision; and
(b) if the Commissioner decides to make the amendment—give
the applicant a copy of the amended statement.
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Opposition Chapter 5
Dismissal of opposition Part 5.4
Regulation 5.17
Patents Regulations 1991 73
Part 5.4—Dismissal of opposition
5.17 Dismissal on request
(1) An applicant may request the Commissioner to dismiss an
opposition:
(a) within one month from the day the Commissioner gives the
applicant a copy of the statement of grounds and particulars
under subregulation 5.5(3), 5.6(3) or 5.11(3); or
(b) if the applicant‟s complete specification is re-examined under
subsection 97(1) of the Act—within one month from the day
the re-examination is completed as required by
regulation 9.5.
(2) The request must be in the approved form.
(3) The Commissioner must give the opponent a copy of the request as
soon as practicable.
(4) If the Commissioner decides to dismiss the opposition, the
Commissioner must, as soon as practicable, notify the parties of the
decision.
Note: For the requirements the Commissioner must satisfy when exercising a discretionary power adversely to a person, see regulation 22.22.
5.18 Dismissal on initiative of Commissioner
(1) The Commissioner may dismiss an opposition if the Commissioner
considers it appropriate to do so.
(2) The grounds on which the Commissioner may dismiss the
opposition include an opponent‟s failure to file a statement of
grounds and particulars or document mentioned in the statement in
accordance with regulation 5.5, 5.6 or 5.11.
(3) If the Commissioner decides to dismiss the opposition, the
Commissioner must notify the parties of the decision as soon as
practicable.
Federal Register of Legislative Instruments F2013C00202
Chapter 5 Opposition
Part 5.4 Dismissal of opposition
Regulation 5.18
74 Patents Regulations 1991
Note: For the requirements the Commissioner must satisfy when exercising a discretionary power adversely to a person, see regulation 22.22.
Federal Register of Legislative Instruments F2013C00202
Opposition Chapter 5
Hearing of opposition Part 5.5
Regulation 5.19
Patents Regulations 1991 75
Part 5.5—Hearing of opposition
5.19 Hearing and decision—re-examination
(1) This regulation applies to an opposition if:
(a) the applicant‟s complete specification is re-examined under
subsection 97(1) of the Act; and
(b) the re-examination is completed as required by
regulation 9.5.
(2) The Commissioner may hear and decide the opposition:
(a) on the Commissioner‟s own initiative, if the Commissioner
considers it appropriate to do so; or
(b) at the opponent‟s request, if the request is made:
(i) less than one month after the re-examination is
completed as required by regulation 9.5; and
(ii) in the approved form.
(3) The Commissioner must give the applicant a copy of a request
under paragraph (2)(b) as soon as practicable.
(4) The Commissioner must notify the parties of the decision as soon
as practicable.
5.20 Hearing and decision—other circumstances
(1) This regulation applies to an opposition if:
(a) the periods for filing evidence have ended; and
(b) the notice of opposition has not been withdrawn under
regulation 5.26; and
(c) the opposition has not been dismissed under Part 5.4 or heard
and decided under regulation 5.19.
(2) The Commissioner:
(a) must hold a hearing of the opposition if requested by a party
in writing; or
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Chapter 5 Opposition
Part 5.5 Hearing of opposition
Regulation 5.20
76 Patents Regulations 1991
(b) may decide, on the Commissioner‟s own initiative, to hold a
hearing of the opposition.
(3) The hearing may, at the Commissioner‟s discretion, be:
(a) an oral hearing; or
(b) by written submissions.
(4) If the Commissioner decides on an oral hearing:
(a) the Commissioner must notify the parties of the date, time
and place of the hearing; and
(b) the opponent must file a summary of submissions at least 10
business days before the hearing; and
(c) the applicant must file a summary of submissions at least 5
business days before the hearing; and
(d) the Commissioner must give a copy of each party‟s summary
of submissions to the other party as soon as practicable.
(5) The Commissioner must:
(a) decide the opposition; and
(b) notify the parties of the Commissioner‟s decision.
(6) The Commissioner, in making an award of costs in relation to an
opposition under subregulation 22.8(2), may consider a failure by a
party to file a summary of submissions under subregulation (4).
Federal Register of Legislative Instruments F2013C00202
Opposition Chapter 5
Miscellaneous Part 5.6
Regulation 5.21
Patents Regulations 1991 77
Part 5.6—Miscellaneous
5.21 Opposition to amendment—grounds
For subsection 104(4) of the Act, an opposition to an amendment
may be made only on the ground that the amendment is not
allowable under:
(a) section 102 of the Act; or
(b) regulation 10.3.
Note: For the period for filing a notice of opposition to the allowance of an amendment, see subregulation 5.10(1).
5.22 Commissioner may give directions
(1) The Commissioner may give a direction in relation to an
opposition to which this Chapter applies:
(a) if requested by a party in writing; or
(b) on the Commissioner‟s own initiative.
(2) If the Commissioner proposes to give a direction, the
Commissioner must give the parties an opportunity to make
representations about the direction.
(3) A direction must not be inconsistent with the Act or these
Regulations.
(4) The Commissioner must notify the parties of the direction as soon
as practicable.
5.23 Commissioner may consult documents
(1) For the purposes of deciding an opposition, the Commissioner may
consult a document that:
(a) is relevant to the opposition; and
(b) has not been filed under this Chapter; and
(c) is available in the Patent Office.
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Chapter 5 Opposition
Part 5.6 Miscellaneous
Regulation 5.24
78 Patents Regulations 1991
(2) If the Commissioner proposes to rely on the document, the
Commissioner must give the parties:
(a) notice of the Commissioner‟s intention to do so; and
(b) a copy of, or access to, the document; and
(c) an opportunity to give evidence or make representations
about the document.
5.24 Representations to Commissioner—formal requirements
A representation mentioned in a provision of this Chapter may be
made to the Commissioner by any means approved by the
Commissioner.
5.25 Extension of time for filing—amendment at Commissioner’s
direction
(1) This regulation applies if:
(a) the Commissioner directs an applicant to file a statement of
proposed amendments under subsection 107(1) of the Act;
and
(b) a period for filing a document under this Chapter begins or
ends during the amendment period.
(2) The period for filing the document is extended by the equivalent of
the amendment period.
(3) In this regulation:
amendment period means the period that:
(a) begins on the day the applicant is given an opportunity to be
heard under subsection 107(2) of the Act; and
(b) ends on the day the Commissioner decides whether to allow
the amendment.
5.26 Withdrawal of opposition
(1) An opponent may withdraw an opposition at any time by filing a
signed notice of withdrawal in the approved form.
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Opposition Chapter 5
Miscellaneous Part 5.6
Regulation 5.26
Patents Regulations 1991 79
(2) The Commissioner must give the applicant a copy of the notice of
withdrawal as soon as practicable.
Federal Register of Legislative Instruments F2013C00202
Chapter 6 Grant and term of patents
Part 1 Patents generally
Regulation 6.1
80 Patents Regulations 1991
Chapter 6—Grant and term of patents
Part 1—Patents generally
6.1 Publication of notice of grant of standard patent
If a standard patent is granted under section 61 of the Act, the
Commissioner must publish a notice that the patent has been
granted in the Official Journal.
6.1A Prescribed particulars—grant of standard patent
For subsection 61(1) of the Act, the following particulars are
prescribed:
(a) the date the patent is granted by the Commissioner;
(b) any other particulars of the grant that the Commissioner
considers appropriate.
6.2 Prescribed period: grant of standard patent
(1) For the purposes of subsection 61(2) of the Act, the prescribed
period is from 3 months after publication under paragraph 49(5)(b)
of the Act of the notice of the acceptance of the request and
complete specification to:
(a) 6 months after that publication; or
(b) such later day as:
(i) in the case of proceedings before a court or the AAT—
the court or AAT directs; or
(ii) in any other case—the Commissioner reasonably
directs;
being satisfied that the grant of the patent should be
postponed.
(2) A person may request the Commissioner in the approved form to
give a direction referred to in subparagraph (1)(b)(ii).
Federal Register of Legislative Instruments F2013C00202
Grant and term of patents Chapter 6
Patents generally Part 1
Regulation 6.2A
Patents Regulations 1991 81
6.2A Prescribed particulars—grant of innovation patent
For subsection 62(1) of the Act, the following particulars are
prescribed:
(a) the date the innovation patent is granted by the
Commissioner;
(b) any other particulars of the grant that the Commissioner
considers appropriate.
6.3 Date of patent
(1) For paragraph 65(b) of the Act, the date of a patent is as set out in
this regulation.
(2) For a patent granted under subsection 33(1) or (2) of the Act, the
date of the patent is the date that would have been the date of the
patent if the patent had been granted on the application for a
standard patent the grant of which was opposed under section 59 of
the Act.
(3) For a patent granted under subsection 33(3) or (4) of the Act, the
date of the patent is the date of the innovation patent that was
opposed under section 101M of the Act.
(4) For a patent granted under subsection 34(2) of the Act, the date of
the patent is the date of the patent referred to in subsection 34(1) of
the Act.
(5) For a patent granted under section 35 of the Act, the date of the
patent is the date of the revoked patent.
(6) For a patent granted as a result of a declaration under section 36 of
the Act, the date of the patent is:
(a) if the declaration is made in respect of a complete
application—the date that would have been the date of the
patent if the patent had been granted on that application; or
(b) if the declaration is made in respect of a provisional
application—the earlier of:
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Chapter 6 Grant and term of patents
Part 1 Patents generally
Regulation 6.3
82 Patents Regulations 1991
(i) the date 12 months from the date of filing of the
provisional specification in respect of that application;
and
(ii) the date of filing of the complete application referred to
in subsection 36(4) of the Act.
(7) For a patent granted on a divisional application made under
subsection 79B(1) of the Act, the date of the patent is:
(a) if the date of the patent was recorded in the Register before
1 January 2000—the date recorded in the Register; or
(b) if the Commissioner determined a date of the patent and told
the applicant in writing before 1 January 2000—the date
determined by the Commissioner; or
(c) in any other case—the earliest of:
(i) the date of the patent of the first-mentioned application
referred to in subsection 79B(1) of the Act; and
(ii) the date that would be the date of the patent if a patent
had been granted on that first-mentioned application;
and
(iii) if that first-mentioned application was itself a divisional
application or was amended to be a divisional
application before filing the later application—the date
that would be the date of the patent if a patent had been
granted on the divisional application.
(8) For an innovation patent granted on a divisional application made
under subsection 79C(1) of the Act, the date of the patent is the
date of the first patent mentioned in subsection 79C(1).
(9) If, under section 223 of the Act, the Commissioner has extended
the time for making, under section 38 of the Act, a complete
application associated with a provisional application, the date of
the patent is the date 12 months from the date of making the first
provisional application with which the complete application is
associated.
(10) If, under section 223 of the Act, the Commissioner has extended
the time for making, under subsections 29B(1) and (2) of the Act, a
Convention application in relation to a basic application, the date
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Grant and term of patents Chapter 6
Patents generally Part 1
Regulation 6.3
Patents Regulations 1991 83
of the patent is the date 12 months from the date of making the first
basic application to which the Convention application relates.
(11) If a PCT application claims the priority of an earlier application
under Article 8 of the PCT, and a circumstance mentioned in an
item of the following table applies, the date of the patent is the date
12 months from the date of making the first application mentioned
in the item.
Circumstances
Item Column 1
The earlier application was…
Column 2
and:
1 an application made in Australia
more than 12 months before the
international filing date of the PCT
application
both of the following apply:
(a) a receiving Office has restored
priority under Rule 26 bis
.3 of the
PCT;
(b) the restored priority has not been
found to be ineffective by the
Commissioner or a prescribed
court under Rule 49 ter
.1 of the
PCT
2 an application made in Australia
more than 12 months before the
international filing date of the PCT
application
the Commissioner has restored
priority under Rule 49 ter
.2 of the
PCT
3 an application made in Australia
more than 12 months before the
international filing date of the PCT
application
the Commissioner has granted an
extension of time under section 223
of the Act that has the effect of
restoring a right of priority
4 a basic application made more than
12 months before the international
filing date of the PCT application,
being the first application made in a
Convention country for the
invention
both of the following apply:
(a) a receiving Office has restored
priority under Rule 26 bis
.3 of the
PCT;
(b) the restored priority has not been
found to be ineffective by the
Commissioner or a prescribed
court under Rule 49 ter
.1 of the
PCT
5 a basic application made more than the Commissioner has restored
Federal Register of Legislative Instruments F2013C00202
Chapter 6 Grant and term of patents
Part 1 Patents generally
Regulation 6.3
84 Patents Regulations 1991
Circumstances
Item Column 1
The earlier application was…
Column 2
and:
12 months before the international
filing date of the PCT application,
being the first application made in a
Convention country for the
invention
priority under Rule 49 ter
.2 of the
PCT
6 a basic application made more than
12 months before the international
filing date of the PCT application,
being the first application made in a
Convention country for the
invention
the Commissioner has granted an
extension of time under section 223
of the Act that has the effect of
restoring a right of priority
Federal Register of Legislative Instruments F2013C00202
Grant and term of patents Chapter 6
Extension of pharmaceutical patents Part 2
Regulation 6.7
Patents Regulations 1991 85
Part 2—Extension of pharmaceutical patents
6.7 Definitions
In this Part:
pre-TGA marketing approval has the same meaning as in
section 70 of the Act.
6.8 Information to accompany application
(1) This regulation applies to an application under section 70 of the
Act for an extension of the term of a standard patent for a
pharmaceutical substance.
(2) For paragraph 71(1)(c) of the Act, the application must be
accompanied by information showing that goods containing, or
consisting of, the substance are currently included in the Australian
Register of Therapeutic Goods.
(3) The application must also be accompanied by information
identifying the substance, as it occurs in those goods, in the same
way (as far as possible) as the substance is identified in the
complete specification of the patent.
6.9 Application without pre-TGA marketing approval
(1) This regulation applies to an application under section 70 of the
Act for an extension of the term of a standard patent for a
pharmaceutical substance for which pre-TGA marketing approval
has not been given.
(2) For paragraphs 71(1)(b) and (c) of the Act, the application must be
accompanied by:
(a) a certificate under paragraph 25(3)(b) or subsection 26(4) or
26A(9) of the Therapeutic Goods Act 1989 stating the date of
commencement of the first inclusion in the Australian
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Chapter 6 Grant and term of patents
Part 2 Extension of pharmaceutical patents
Regulation 6.10
86 Patents Regulations 1991
Register of Therapeutic Goods of goods that contain, or
consist of, the substance; or
(b) if the patentee does not have a certificate mentioned in
paragraph (a)—information showing the date of
commencement of the first inclusion in the Australian
Register of Therapeutic Goods of goods that contain, or
consist of, the substance.
Note: For providing a copy of a certificate mentioned in paragraph (2)(a), see the definition of document in subsection 71(1) of the Act.
6.10 Application with pre-TGA marketing approval
(1) This regulation applies to an application under section 70 of the
Act for an extension of the term of a standard patent for a
pharmaceutical substance for which pre-TGA marketing approval
has been given.
(2) For paragraphs 71(1)(b) and (c) of the Act, the application must be
accompanied by:
(a) a written statement by the person who gave the approval
showing:
(i) that approval has been given; and
(ii) the date of the first approval; or
(b) if the patentee does not have a written statement mentioned
in paragraph (a)—information showing:
(i) that approval has been given; and
(ii) the date of the first approval.
Note: For providing a copy of a written statement mentioned in paragraph (2)(a), see the definition of document in subsection 71(1) of the Act.
6.11 Further information
(1) This regulation applies if the Commissioner needs further
information to decide whether he or she is satisfied that the
requirements set out in sections 70 and 71 of the Act are satisfied
for an application for an extension of the term of a standard patent.
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Grant and term of patents Chapter 6
Extension of pharmaceutical patents Part 2
Regulation 6.11
Patents Regulations 1991 87
(2) The Commissioner may give the applicant a notice requesting the
further information within the period mentioned in the notice.
(3) The period must not be shorter than 2 months or longer than 6
months from the day the notice is issued.
Note: The period for giving the further information can be extended—see section 223 of the Act.
(4) If the applicant does not give the further information within that
period, the Commissioner must decide whether he or she is
satisfied that the requirements set out in sections 70 and 71 of the
Act are satisfied.
(5) For subsection 71(2) of the Act, further information given within
the period mentioned in subregulation (2) is taken to have been
filed with the application for extension of the term of the standard
patent.
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Chapter 6A Divisional applications
Regulation 6A.1
88 Patents Regulations 1991
Chapter 6A—Divisional applications
6A.1 Divisional applications before grant—standard and innovation
patents
(1) For paragraph 79B(2)(a) and subparagraph 79B(3)(b)(iv) of the
Act, a further complete application must:
(a) be made in accordance with section 29 of the Act; and
(b) be filed:
(i) if the first application is for a standard patent—no later
than 3 months from the day the notice of acceptance of
the first application is published under
paragraph 49(5)(b) of the Act; or
(ii) if the first application is for an innovation patent—
before the grant of the patent under subsection 62(1) of
the Act.
Note: For the definition of first application, see section 79B of the Act.
(2) For paragraph 79B(2)(b) of the Act, the particulars are:
(a) a statement that the application is a further complete
application for section 79B of the Act; and
(b) the number of the first application.
6A.2 Divisional applications after grant—innovation patents
(1) For paragraph 79C(1A)(a) and subparagraph 79C(2)(b)(iv) of the
Act, a further complete application must be:
(a) made in accordance with section 29 of the Act; and
(b) filed no later than one month from the day the notice of the
occurrence of the examination of the first patent is published
under paragraph 101E(2)(b) of the Act.
Note: For the definition of first patent, see section 79C of the Act.
(2) For paragraph 79C(1A)(b) of the Act, the particulars are:
(a) a statement that the application is a further complete
application for section 79C of the Act; and
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Divisional applications Chapter 6A
Regulation 6A.2
Patents Regulations 1991 89
(b) the number of the first patent.
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Chapter 7 Patents of addition
Regulation 7.1
90 Patents Regulations 1991
Chapter 7—Patents of addition
7.1 Form of application for grant of patent of addition etc
(1) For paragraph 81(1)(c) of the Act, an application for a further
patent must be made under section 29 of the Act.
(2) The Commissioner must not grant a patent of addition under
subsection 81(1) of the Act unless the date that would be the date
of the patent if that patent of addition were granted is the same as,
or later than, the date of the patent for the main invention.
7.2 Form of application for revocation of patent and grant of patent
of addition instead
An application under section 82 of the Act must be in the approved
form.
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Re-examination Chapter 9
Regulation 9.1
Patents Regulations 1991 91
Chapter 9—Re-examination
9.1 Notice of Commissioner’s decision to re-examine complete
specification
If the Commissioner decides, under subsection 97(1) of the Act, to
re-examine a complete specification relating to an application for a
patent, the Commissioner must tell:
(a) the applicant; and
(b) if the application is opposed under section 59 of the Act—
each opponent.
9.2 Request for re-examination of complete specification
(1) For subsections 97(2) and 101G(1) of the Act, a request for
re-examination of a complete specification must be in the approved
form.
(1A) A request must state:
(a) the grounds of the request; and
(b) the reasons why the grounds are relevant to the complete
specification.
(2) Subregulations (2A) and (3) apply if the request includes an
assertion that the invention, so far as claimed in any claim and
when compared with the prior art base that existed before the
priority date of that claim:
(a) is not novel; or
(b) for a standard patent—does not involve an inventive step; or
(c) for an innovation patent—does not involve an innovative
step.
(2A) For subregulation (2), the request must:
(a) identify the documents on which the assertion is based; and
(b) state the relevance of each document.
(3) The request must have with it:
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Regulation 9.3
92 Patents Regulations 1991
(a) if the document is not available in the Patent Office—a copy
of the document; and
(b) if the document is not in English—a translation of the
document into English and a related certificate of
verification; and
(c) evidence of the date and place of publication of the
document.
(4) If the request does not comply with subregulation (1A), or
subregulations (2), (2A) and (3) if applicable, the Commissioner
may decide not to re-examine the complete specification.
(5) A person who has made a request may, by filing a notice in
writing, amend or withdraw the request before the Commissioner
reports under section 98 or subsection 101G(2) of the Act.
(6) If the person who made the request is not the patentee, the
Commissioner must notify the patentee of his or her decision to
re-examine the complete specification.
(7) A patentee or another person who has requested re-examination of
the complete specification under subsection 97(2) or 101G(1) of
the Act must give notice to the Commissioner of any relevant
proceedings in relation to the patent of which he or she is aware.
9.3 Copy of report on re-examination
(1) If a person who asked for the re-examination is not the patentee, a
copy of the report under section 98 or subsection 101G(2) of the
Act must be given to the person by the Commissioner.
(2) The Commissioner must give an opponent under Chapter 5 of the
Act a copy of the report in respect of a complete specification in
relation to the application in respect of which the grant of a patent
is opposed.
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Re-examination Chapter 9
Regulation 9.4
Patents Regulations 1991 93
9.4 Prescribed period: statement disputing report by Commissioner
(1) For subsection 99(1) or 101H(1) of the Act, the prescribed period
is the period of 2 months from the day when the Commissioner
reports under section 98 or subsection 101G(2) of the Act.
(2) The Commissioner must give a copy of a statement filed under
subsection 99(1) or subsection 101H(1) of the Act to:
(a) an opponent under Chapter 5 of the Act in respect of the
re-examined complete specification in relation to the
application in respect of which the grant of a patent is
opposed; and
(b) if the person who asked for the re-examination is not the
patentee—that person.
9.5 Completion of re-examination
If the Commissioner makes an adverse report on a re-examination
under subsection 97(1) of the Act and:
(a) a statement is filed under section 99 of the Act and:
(i) the Commissioner gives the applicant an opportunity to
be heard that is referred to in subsection 107(2) of the
Act within 3 months from the day when the
Commissioner reports under section 98 of the Act; or
(ii) the applicant or patentee asks for leave to amend the
complete specification to remove any lawful grounds of
objection specified in a report on re-examination within
3 months from the day referred to in subparagraph (i);
the re-examination is completed when the decision is made
whether or not the amendment is allowed; or
(b) a statement is filed under section 99 of the Act and
subparagraphs (a)(i) and (ii) do not apply—the
re-examination is completed 2 months from the day when the
Commissioner reports under section 98 of the Act; or
(c) a statement is not filed under section 99 of the Act and:
(i) the Commissioner gives the applicant an opportunity to
be heard that is referred to in subsection 107(2) of the
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Chapter 9 Re-examination
Regulation 9.5
94 Patents Regulations 1991
Act within 2 months from the day when the
Commissioner reports under section 98 of the Act; or
(ii) the applicant or patentee asks for leave to amend the
complete specification to remove any lawful grounds of
objection specified in a report on re-examination within
2 months from the day when the Commissioner reports
under section 98 of the Act;
the re-examination is completed when the decision is made
whether or not the amendment is allowed; or
(d) a statement is not filed under section 99 of the Act and
subparagraphs (c)(i) and (ii) do not apply—the
re-examination is completed 2 months from the day when the
commissioner reports under section 98 of the Act.
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Examination of innovation patents Chapter 9A
Regulation 9A.1
Patents Regulations 1991 95
Chapter 9A—Examination of innovation
patents
9A.1 Request for examination
(1) A request for examination of a complete specification relating to an
innovation patent must be in the approved form.
(2) If the Commissioner decides, under paragraph 101A(a) of the Act,
to examine a complete specification, the Commissioner must tell
the patentee about the decision.
(3) If a request is made under paragraph 101A(b) of the Act by a
person other than the patentee, the Commissioner must tell the
patentee about the request.
(4) A request for examination of a complete specification can be
withdrawn only:
(a) by the person who made the request; and
(b) before examination of the complete specification has begun;
and
(c) if the Commissioner is satisfied, on reasonable grounds, that
the request was made in error.
(5) If examination of a complete specification has begun, no further
requests for examination of the specification can be made.
9A.2 Examination of complete specification
For section 101B of the Act, the Commissioner may examine a
complete specification relating to an innovation patent only if the
patent has been granted.
9A.3 Conduct of examination
(1) If the Commissioner believes, on reasonable grounds, that there are
lawful grounds for revocation of the innovation patent, the
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Chapter 9A Examination of innovation patents
Regulation 9A.4
96 Patents Regulations 1991
Commissioner must state the grounds for revocation in reporting
on an examination.
(2) The patentee may contest a ground for revocation in writing or ask
for leave to amend the complete specification in accordance with
Chapter 10.
(3) If the patentee asks for leave to amend a complete specification in
response to, or in anticipation of, a report under section 101B of
the Act, the Commissioner must examine the specification and
report as if each proposed amendment had been made.
(4) If the patentee contests a ground for revocation, the Commissioner
must examine the specification and take note of the matters raised
by the applicant.
(5) If the request for examination was made by a person other than the
patentee, the Commissioner must send a copy of the report to the
person who requested the examination.
9A.4 Period for examination
For paragraph 101C(b) of the Act, the examination of a complete
specification for an innovation patent must be completed before the
end of whichever of the following periods ends latest:
(a) the period of 6 months from the date on which the first report
is issued under section 101B of the Act;
(b) the period mentioned in paragraph 13.4(1)(d);
(c) if an appeal has been made to a prescribed court in relation to
the patent—the period of 3 months from the date on which
the appeal is withdrawn, finally dealt with or determined, or
such longer period as the court allows;
(d) if the Commissioner requires a document to be made
available under subsection 43AA(4) of the Act—5 months
from the date the requirement is made;
(e) if:
(i) the Commissioner has informed the patentee of a notice
under subsection 28(1) of the Act; and
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Examination of innovation patents Chapter 9A
Regulation 9A.5
Patents Regulations 1991 97
(ii) a ground for revocation is raised based on information
in the notice;
3 months from the date of the report that first mentions the
ground for revocation;
(f) if:
(i) the Commissioner gives the applicant an opportunity to
be heard in relation to a report under section 101B of
the Act or regulation 10.2 by:
(A) notifying the applicant in writing of the date by
which written submissions must be filed; or
(B) notifying the applicant in writing of the date,
time and place of an oral hearing; and
(ii) the Commissioner makes a decision in writing in
relation to the report;
3 months from the date the decision is made;
(g) if the Commissioner revokes a certificate of examination
under section 101EA of the Act—3 months from the date the
decision to revoke is made.
9A.5 Validity of innovation patent
For the purposes of examination, if a notice has been filed under
subsection 28(1) of the Act, the Commissioner must consider a
matter stated in the notice that addresses a claim that an invention
does not comply with paragraph 18(1A)(b) of the Act.
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Chapter 10 Amendments
Regulation 10.1
98 Patents Regulations 1991
Chapter 10—Amendments
10.1 Form of amendments
(1) For the purposes of subsection 104(1) of the Act, an applicant or a
patentee may ask the Commissioner for leave to amend a patent
request or complete specification or another filed document by
filing a request for leave to amend in the approved form together
with a statement of proposed amendments.
(1AA) However, an applicant of a PCT application may not ask the
Commissioner for leave to amend until the applicant has complied
with the requirements of subsection 29A(5) of the Act.
(1A) If an applicant proposes to amend a patent request, complete
specification or other filed document for a reason mentioned in
subregulation (1B), the applicant is taken to have complied with
subregulation (1) if a written statement of the proposed
amendments is filed.
(1B) For subregulation (1A), the reasons are:
(a) to remove a lawful ground of objection or revocation raised
in an examination report; or
(b) for an application for a standard patent—in anticipation of
examination of the patent request and complete specification;
or
(c) for an innovation patent—in anticipation of examination of
the complete specification.
(2) If:
(a) a proposed amendment is to be made by means of
substituting a document or part of a document; or
(b) the Commissioner requires the applicant or patentee to make
a proposed amendment by that means;
the applicant or patentee must file:
(c) 2 copies of each document or part that is to be substituted for
a document or part; and
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Amendments Chapter 10
Regulation 10.2
Patents Regulations 1991 99
(d) on 1 of the copies, an indication, in a manner approved by the
Commissioner, of the nature and location of the proposed
amendment.
(3) The Commissioner may require an applicant or a patentee to file,
within 3 months of being asked to do so, a statement of the reasons
for the request being made and any evidence in support of the
request.
(4) The Commissioner may, before granting leave to amend, require a
patentee to file within 1 month of being asked to do so, a statement
that, to the best of his or her knowledge, relevant proceedings are
not pending in relation to the patent.
(5) For the purposes of this Chapter, a statement of proposed
amendments may be amended by filing a statement of proposed
amendments of the first-mentioned statement before leave is
granted under regulation 10.5 to amend the patent request or
complete specification or another filed document.
10.2 Commissioner to consider and deal with requests for leave to
amend
(1) For the purposes of subsection 104(2) of the Act, the
Commissioner must report on whether:
(a) the request for leave to amend and the statement of proposed
amendments do not comply with regulation 10.1 and
Schedule 3; and
(b) any proposed amendment of a complete specification is not
allowable under section 102 or 103 of the Act; and
(c) the proposed amendments are not allowable under
regulation 10.3 or, if made, would not otherwise be allowable
under the Act or these Regulations;
and may, if the request for leave to amend relates to a PCT
application, and a copy of an international preliminary examination
report relating to the application has not been provided to the
Commissioner:
(d) notify the applicant of that fact; and
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Chapter 10 Amendments
Regulation 10.2
100 Patents Regulations 1991
(e) ask the applicant to provide a copy of the international
preliminary examination report, or to advise that no
amendments were made under Article 34 of the PCT, or to
abandon any amendments that may have been made under
Article 34 of the PCT.
(2) The Commissioner must give a copy of each report made under
subregulation (1) to the applicant or patentee.
(3) The applicant or patentee may:
(a) contest the report in writing; or
(b) file a statement of proposed amendments of the statement
referred to in paragraph (1)(a); or
(c) if the report relates to a request for leave to amend a PCT
application, and the Commissioner has reported under
subregulation (1) that the international preliminary
examination report has not been provided to the
Commissioner:
(i) provide a copy of the international preliminary
examination report to the Commissioner; or
(ii) if:
(A) no demand was made under Article 31 of the
PCT; or
(B) no amendments were made under Article 34 of
the PCT; or
(C) the demand was made under Article 31 of the
PCT, or the international preliminary
examination report was established, after the
applicant complied with the requirements of
subsection 29A(5);
advise the Commissioner of that fact; or
(iii) elect to abandon any amendments that may have been
made under Article 34 of the PCT.
Note: If the applicant provides the advice mentioned in subparagraph (c)(ii), or makes the election mentioned in subparagraph (c)(iii), any amendments made under Article 34 of the PCT are not taken to be included in the application.
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Amendments Chapter 10
Regulation 10.2
Patents Regulations 1991 101
(4) If a statement of proposed amendments referred to in subregulation
(3) is filed, the Commissioner must report under subregulation (1)
as if the proposed amendments had been made.
(5) If, under subregulation (3), the applicant or patentee contests the
report, the Commissioner must report under subregulation (1) and
take notice of the matters raised by the applicant or patentee.
(5A) If, under subregulation (3), the applicant:
(a) provides a copy of the international preliminary examination
report to the Commissioner; or
(b) provides the advice mentioned in subparagraph (3)(c)(ii) to
the Commissioner; or
(c) elects to abandon any amendments that may have been made
under Article 34 of the PCT;
the Commissioner must report under subregulation (1) taking
notice of that fact.
(6) Subregulation (6A) applies if:
(a) either:
(i) the grant of a standard patent is opposed under
section 59 of the Act; or
(ii) an innovation patent is opposed under section 101M of
the Act; and
(b) the applicant or patentee has requested leave to amend the
patent request or complete specification concerned.
(6A) The Commissioner must:
(a) give a copy of the request for leave to amend and the
statement of proposed amendments to the opponent as soon
as practicable after the request for leave to amend has been
filed; and
(b) invite the opponent to comment on the request and statement.
(7) The opponent may file comments within 21 days, or any longer
period (up to 2 months) allowed by the Commissioner, after being
given the copy of the request for leave to amend and the statement
under paragraph (6A)(a).
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Chapter 10 Amendments
Regulation 10.2A
102 Patents Regulations 1991
(8) If:
(a) a person has, under subregulation 3.25(1), requested the
Commissioner to grant the certification referred to in that
subregulation; and
(b) the Commissioner has not made a decision under
subregulation 3.25(2); and
(c) the applicant or patentee has filed a request for leave to
amend the complete specification in respect of a matter
mentioned in paragraph 6(c) of the Act;
the Commissioner must, as soon as practicable after the request for
leave to amend has been filed, give a copy of that request and the
statement of proposed amendments to the person referred to in
paragraph (a).
(9) If a request for leave to amend a complete specification in respect
of a micro-organism is made for the purpose of including in the
specification a matter in respect of which a notice has been filed by
a person under subregulation 3.29(1), the Commissioner must, as
soon as practicable after the request for leave to amend has been
filed, give the person a copy of the request and the statement of
proposed amendments.
10.2A Documents considered for determining whether amendment
allowed
For paragraph 102(1)(b) of the Act, the following documents are
prescribed:
(a) an abstract that was filed with the complete specification;
(b) a missing part or element of a complete specification that was
incorporated into the specification, in accordance with
regulation 3.5A or Rule 20.5 or 20.6 of the PCT;
(c) an amendment that has been made to the complete
specification after filing, for the purpose of:
(i) correcting a clerical error or obvious mistake; or
(ii) complying with paragraph 6(c) of the Act.
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Amendments Chapter 10
Regulation 10.2B
Patents Regulations 1991 103
10.2B Amendments not allowable for patent requests
(1) This regulation is made for subsection 102(2D) of the Act.
(2) An amendment of a patent request is not allowable if:
(a) the patent request has been accepted under section 49 or 52
of the Act; and
(b) the amendment would convert the patent application from:
(i) an application for a standard patent to an application for
an innovation patent; or
(ii) an application for an innovation patent to an application
for a standard patent.
(3) If:
(a) a request for leave to amend a patent request for a standard
patent is filed within 3 weeks before the date a notice is due
to be published in the Official Journal under section 54 of the
Act in relation to the specification; and
(b) the amendment would:
(i) convert the patent application from an application for a
standard patent to an application for an innovation
patent; or
(ii) change the priority date of the application to a date that
is later than the priority date that is currently recorded
for the application;
the amendment is not allowable until after the date the notice is
published.
(4) An amendment of a patent request is not allowable if:
(a) the patent request has been accepted under section 49 or 52
of the Act; and
(b) the amendment would convert the patent application into a
further complete application within the meaning of
section 79B or 79C of the Act.
(5) An amendment of a patent request is not allowable if:
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Chapter 10 Amendments
Regulation 10.2C
104 Patents Regulations 1991
(a) the amendment would convert the patent application into a
further complete application within the meaning of
section 79B of the Act; and
(b) the period allowed under subsection 79B(3) of the Act for
making a further complete application has ended.
(6) An amendment of a patent request is not allowable if:
(a) the amendment would convert the patent application into a
further complete application within the meaning of
section 79C of the Act; and
(b) the period allowed under subsection 79C(2) of the Act for
making a further complete application has ended.
(7) An amendment of a patent request is not allowable after the patent
has been granted.
10.2C Amendments not allowable for complete specifications
(1) This regulation is made for subsection 102(2D) of the Act.
(2) An amendment of a complete specification is not allowable if:
(a) the amendment relates to a matter mentioned in
paragraph 6(c) of the Act; and
(b) after the amendment was made, the specification would not
include each of the matters specified in that paragraph.
(3) An amendment of a complete specification is not allowable if the
Commissioner:
(a) has given a copy of a request for leave to amend under
subregulation 10.2(8) or (9) to a person; and
(b) has not given the person a reasonable opportunity to be
heard.
(4) An amendment of a complete specification for an innovation
patent, other than an amendment proposed in response to a
direction under regulation 3.2B, is not allowable until after the
patent has been granted.
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Regulation 10.3
Patents Regulations 1991 105
(5) An amendment of a complete specification for an innovation patent
is not allowable if the amendment would result in the specification
claiming:
(a) a thing mentioned in subsection 18(2) of the Act; or
(b) a thing mentioned in subsection 18(3) of the Act (other than a
thing also mentioned in subsection 18(4) of the Act).
(6) An amendment of a complete specification is not allowable if
making an amendment would be contrary to section 112 or 112A
of the Act.
10.3 Amendments not allowable for other documents
(1) For a provisional specification, an amendment of the provisional
specification is not allowable if, as a result of the amendment, the
specification would disclose matter that extends beyond that
disclosed in the following documents taken together:
(a) the provisional specification as filed;
(b) an abstract that was filed with the provisional specification;
(c) a missing part of a provisional specification that was
incorporated into the specification in accordance with
regulation 3.5A.
(2) An amendment of an abstract is not allowable.
Note: An abstract may be substituted under regulation 3.4.
10.4 Commissioner to refuse request for leave to amend
The Commissioner must refuse the request for leave to amend, if:
(a) he or she reasonably believes that a proposed amendment is
not allowable, other than for the reasons mentioned in
subregulation 10.2C(3); or
(b) the applicant or patentee has not complied with a request of
the Commissioner under subregulation 10.1(3); or
(c) in the case of a proposed amendment of a complete
specification relating to a patent—the patentee has not
complied with a request of the Commissioner under
subregulation 10.1(4).
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Chapter 10 Amendments
Regulation 10.5
106 Patents Regulations 1991
10.5 Commissioner to grant leave to amend
(1) The Commissioner must grant leave to amend a patent request,
complete specification or other filed document:
(a) if the report on the proposed amendments under
subregulation 10.2(1) is not an adverse report; and
(b) in the case of amendments that are proposed in anticipation
of, or in response to, a report relating to an examination
under section 45 of the Act and that do not relate to matters
mentioned in paragraph 6(c) of the Act—if the
Commissioner is satisfied, on the balance of probabilities,
that the proposed amendments would remove all lawful
grounds of objection to the patent request and complete
specification; and
(c) in the case of amendments that are proposed in anticipation
of, or in response to, a report relating to an examination
under section 101B of the Act—if the Commissioner is
satisfied, on the balance of probabilities, that the proposed
amendments would remove all lawful grounds for revocation
of the innovation patent.
(2) If the Commissioner grants leave to amend, he or she must publish
a notice of that fact in the Official Journal, where:
(a) the patent request and complete specification to which the
leave to amend relates have been accepted under section 49
of the Act, or a decision to certify has been made under
section 101E of the Act; and
(b) the proposed amendments are in respect of:
(i) the complete specification; or
(ii) the patent request or another filed document and the
proposed amendments would materially alter the
meaning or scope of the request or document.
(3) The Minister or another person may oppose allowance of an
amendment if a notice is published under subregulation (2).
(4) For the purposes of paragraph (2)(b), if:
(a) a request for leave to amend is filed before a patent is granted
on an application under section 61 of the Act; and
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Regulation 10.6
Patents Regulations 1991 107
(b) the proposed amendments relate to the name or address of an
applicant for the patent;
the proposed amendments are not taken to materially alter the
meaning or scope of the patent request or other filed document.
10.6 Time for allowance of amendments
(1) If:
(a) the Commissioner grants leave to amend a patent request,
complete specification or other filed document; and
(b) subregulation 10.5(2) does not apply to the amendment;
the Commissioner must allow the proposed amendment
immediately.
(2) If:
(a) subregulation 10.5(2) applies to a proposed amendment of a
patent request, complete specification or other filed
document; and
(b) no person opposes the allowance of the proposed
amendment; and
(c) the Commissioner is satisfied that no relevant proceedings
are pending;
the Commissioner must allow the proposed amendment at the end
of the time for bringing opposition proceedings.
(3) If:
(a) subregulation 10.5(2) applies to a proposed amendment of a
patent request, complete specification or other filed
document; and
(b) a person opposes the allowance of the proposed amendment;
and
(c) the opposition is decided against the opponent; and
(d) the Commissioner is satisfied that no relevant proceedings
are pending;
the Commissioner must allow the proposed amendment
immediately after the opposition is fully determined.
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Chapter 10 Amendments
Regulation 10.6A
108 Patents Regulations 1991
(4) For the purposes of subregulation (3), an opposition is fully
determined when:
(a) a decision has been made in respect of the opposition and the
decision is no longer subject to any form of review (including
review by way of appeal against a decision of the AAT or a
prescribed court); or
(b) a decision that has been made in respect of the opposition
was subject to review (including review by way of appeal
against a decision of the AAT or a prescribed court) but the
period within which review proceedings could have been
instituted has expired without review proceedings having
been instituted; or
(c) the opposition is withdrawn.
(5) If the Commissioner requires a patentee to file a statement that, to
the best of the knowledge of the patentee, relevant proceedings are
not pending, the patentee must file the statement within 1 month of
the Commissioner so requiring.
10.6A Deferred consideration of request for amendment
(1) This regulation applies if:
(a) on or after 1 January 2012—an applicant asks the
Commissioner for leave to amend a complete specification;
and
(b) the complete specification relates to an application for a
standard patent; and
(c) the applicant has not filed a request for examination of the
patent request and complete specification relating to the
application; and
(d) the applicant asks the Commissioner to defer considering the
request for leave to amend until the Commissioner examines
the patent request and complete specification.
(2) The request for leave to amend the complete specification is taken
to be filed immediately after the applicant files the request for
examination of the patent request and complete specification.
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Amendments Chapter 10
Regulation 10.6B
Patents Regulations 1991 109
10.6B Revocation of grant of leave
(1) A grant of leave to amend a patent request, complete specification
or other filed document under regulation 10.5 is revoked if:
(a) leave to amend was granted at the same time as the
acceptance of the patent request and complete specification
under subsection 49(1) of the Act; and
(b) acceptance of the patent request and complete specification is
later revoked under section 50A of the Act.
(2) A grant of leave to amend a patent request, complete specification
or other filed document under regulation 10.5 is revoked if:
(a) leave to amend was granted at the same time as the decision
mentioned in paragraph 101E(a) of the Act was made; and
(b) the certificate of examination issued in relation to the patent
is later revoked under subsection 101EA(1) of the Act.
(3) The Commissioner may revoke a grant of leave to amend a patent
request, complete specification or other filed document under
regulation 10.5 if the Commissioner is satisfied that:
(a) leave to amend should not have been granted, taking into
account all of the circumstances that existed when leave was
granted (whether or not the Commissioner knew the
circumstances existed); and
(b) it is reasonable to revoke the grant and allowance of the
amendment(if applicable), taking into account all of the
circumstances; and
(c) there are no relevant proceedings pending.
(4) If leave to amend a patent request, complete specification or other
filed document under regulation 10.5 is revoked (whether
automatically or by the Commissioner):
(a) leave to amend is taken to never have been granted; and
(b) if allowed under regulation 10.6, the amendment is taken not
to have been allowed; and
(c) the Commissioner must continue to examine and report on
the amendment in accordance with subregulation 10.2(1);
and
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Chapter 10 Amendments
Regulation 10.7
110 Patents Regulations 1991
(d) regulations 10.5 and 10.6 continue to apply in relation to the
amendment.
10.7 Rectification of Register
(1) A person applying for rectification of the Register under
section 191A of the Act must do so in the approved form.
(2) The Commissioner:
(a) may seek further information from any person for the
purpose of considering the application; and
(b) is not required to consider the application while seeking the
further information.
(3) The Commissioner must publish a notice of the rectification
request in the Official Journal unless the rectification:
(a) relates to an address included in the Register; or
(b) relates to a name included in the Register and does not relate
to a change of identity; or
(c) relates to the title of an invention included in the Register; or
(d) is to correct an obvious mistake made in the Register; or
(e) does not materially alter the meaning or scope of an entry in
the Register.
(4) However, the Commissioner is not required to publish a notice
under subregulation (3) if the Commissioner is satisfied that the
rectification should not be made.
(5) If the Commissioner publishes a notice under subregulation (3), the
Commissioner must not rectify the Register until the later of:
(a) 2 months after publishing the notice; and
(b) if a person requests to be heard in relation to the rectification
request—after the person has been heard.
10.8 Prescribed decisions: appeal to Federal Court
For subsection 104(7) of the Act, a prescribed decision is a
decision to grant leave to amend a patent request or complete
specification to which paragraph 10.5(1)(b) or (c) applies.
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Amendments Chapter 10
Regulation 10.10
Patents Regulations 1991 111
10.10 Prescribed period: filing of court order
For the purposes of subsection 105(5) of the Act, the period of 14
days from the date of the order of the court is prescribed.
10.11 Form of direction by Commissioner: patents
A direction of the Commissioner under subsection 106(1) of the
Act:
(a) must be in writing; and
(b) must state the grounds on which he or she is satisfied that the
patent relating to the direction is invalid; and
(c) must specify the time within which the patentee must file a
relevant statement of proposed amendments.
10.12 Form of direction by Commissioner: applications
A direction of the Commissioner under subsection 107(1) of the
Act:
(a) must be in writing; and
(b) must state the grounds on which he or she is satisfied that
there are lawful grounds of objection to the patent request or
complete specification; and
(c) must specify the time within which the applicant must file a
relevant statement of proposed amendments.
10.14 Form of request: claim under assignment or agreement
A request under subsection 113(1) of the Act for a direction of the
Commissioner must be in the approved form.
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Chapter 11 Infringement
Regulation 11.1
112 Patents Regulations 1991
Chapter 11—Infringement
11.1 Infringement exemptions: prescribed foreign countries
For the purposes of the definitions of foreign aircraft, foreign land
vehicle and foreign vessel in the Act, each of the foreign countries
mentioned in regulation 1.4 is prescribed.
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Compulsory licences and revocation of patents Chapter 12
Regulation 12.1
Patents Regulations 1991 113
Chapter 12—Compulsory licences and
revocation of patents
12.1 Lodgment of applications for compulsory licences
(1) For the purposes of subsection 133(1) of the Act, the period of 3
years after the date of granting of the patent to which the
application relates is prescribed.
(2) An applicant must lodge with the Registrar of the Federal Court:
(a) a copy of the application that includes:
(i) the name and address of the applicant; and
(ii) the address for service in relation to the application; and
(iii) the identity of the patent; and
(iv) if the applicant relies on the ground mentioned in
paragraph 133(2)(a) of the Act—facts supporting the
assertion that the reasonable requirements of the public
with respect to the patented invention have not been
satisfied; and
(iva) if the applicant relies on the ground mentioned in
paragraph 133(2)(b) of the Act—facts supporting the
assertion that the patentee has contravened, or is
contravening, Part IV of the Trade Practices Act 1974
or an application law (as defined in section 150A of that
Act) in connection with the patent; and
(v) for an innovation patent—the date that the patent was
certified; and
(b) a declaration by the applicant to the effect that the facts in the
statement are true to the best of the knowledge of the
applicant.
(2A) For subparagraph (2)(a)(ii), the address for service must be an
address that is mentioned in Rules made by the Federal Court for
the service of the application, as in force from time to time.
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Chapter 12 Compulsory licences and revocation of patents
Regulation 12.2
114 Patents Regulations 1991
Note: In a transitional period after this subregulation commences, there may be different Rules made by the Federal Court to deal with suitable addresses for service in particular circumstances.
(3) The applicant must:
(a) serve a copy of the application and declaration on the
patentee and any other person who claims an interest in the
patent as soon as practicable after lodgment; and
(b) lodge with the Registrar notice of the date when, and the
place where, he or she complied with paragraph (a).
(4) For subregulation (3), the applicant must serve the copy in
accordance with Rules made by the Federal Court for the service of
the application and declaration, as in force from time to time.
Note: In a transitional period after this subregulation commences, there may be different Rules made by the Federal Court to deal with service in particular circumstances.
12.2 Prescribed period: revocation of patent
(1) For subsection 134(1) of the Act, the prescribed period is 2 years
from the date of the grant of the first compulsory licence in respect
of a patent.
(2) The Federal Court may, as a preliminary issue, hear and determine
the question of the right of the person concerned to apply for
revocation of a patent in respect of which a compulsory licence has
been ordered.
12.3 Form of notice: offer to surrender patent
(1) A notice under subsection 137(1) of the Act must be in the
approved form.
(2) Notice of an offer to surrender under subsection 137(2) of the Act
must be published in the Official Journal.
(3) An interested person must, not later than 1 month after the
publication, give the Commissioner notice of his or her wish to be
heard under subsection 137(3) of the Act.
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Compulsory licences and revocation of patents Chapter 12
Regulation 12.4
Patents Regulations 1991 115
(4) The Commissioner may, as a preliminary issue, hear and determine
the question of the right of the person concerned to be heard.
12.4 Applications to revoke patents
(1) An applicant to a prescribed court for an order to revoke a patent
under subsection 138(1) of the Act must include, in the pleading or
another document disputing the validity of the patent:
(a) particulars of the grounds on which the applicant relies; and
(b) for an innovation patent—the date on which the patent was
certified.
(2) If 1 of those grounds is that the invention is not a patentable
invention because of information about the invention in a
document or through the doing of an act, the particulars must
specify:
(a) in the case of a document—the time when, and the place
where, the document is alleged to have become publicly
available; and
(b) in the case of an act:
(i) the name of the person alleged to have done the act; and
(ii) the period in which, and the place where, the act is
alleged to have been done publicly; and
(iii) a description that is sufficient to identify the act; and
(iv) if the act relates to apparatus or machinery—whether
the apparatus or machinery exists and, if so, where it
can be inspected.
(3) Except by leave of the court:
(a) evidence is not admissible to prove a ground of invalidity
that has not been disclosed in the particulars in relation to
that ground; and
(b) evidence as to apparatus or machinery that exists at the date
of lodgment of the particulars is not admissible unless it is
proved that the party relying on the evidence:
(i) if the apparatus or machinery is in his or her
possession—has offered the opportunity to inspect it; or
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Chapter 12 Compulsory licences and revocation of patents
Regulation 12.4
116 Patents Regulations 1991
(ii) in any other case—has used reasonable endeavours to
obtain its inspection;
to, or by, each other party to the hearing of the application.
(4) The court may:
(a) extend the time for giving particulars; and
(b) allow the amendment of particulars.
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Withdrawal and lapsing of applications and ceasing of patents Chapter 13
Regulation 13.1
Patents Regulations 1991 117
Chapter 13—Withdrawal and lapsing of
applications and ceasing of patents
13.1 Publication of notice of withdrawal of application
The Commissioner must publish notice in the Official Journal of
the withdrawal of a patent application under section 141 of the Act.
13.1A Period in which standard patent applications may not be
withdrawn
(1) For paragraph 141(1)(c) of the Act, the prescribed period for an
application for a standard patent is:
(a) 3 weeks before the date on which a notice is due to be
published in the Official Journal under section 54 of the Act
in respect of the specification; or
(b) 3 weeks before the date on which a notice of acceptance is
due to be published in the Official Journal under
paragraph 49(5)(b) of the Act.
(2) Subregulation (1) does not apply if an order made under
subsection 152(3) or 173(1) of the Act is in force.
13.1B Period in which innovation patent applications may not be
withdrawn
(1) For paragraph 141(1)(c) of the Act, the prescribed period for an
application for an innovation patent is the period:
(a) beginning when the Commissioner accepts the patent request
and complete specification under subsection 52(2) of the Act;
and
(b) ending when the Commissioner grants the patent under
subsection 62(1) of the Act.
(2) Subregulation (1) does not apply if an order made under
subsection 152(3) or 173(1) of the Act is in force.
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Chapter 13 Withdrawal and lapsing of applications and ceasing of patents
Regulation 13.1C
118 Patents Regulations 1991
13.1C PCT applications—prescribed circumstances in which
application may be withdrawn or taken to be withdrawn
(1) For subsection 141(2) of the Act, a PCT application may be
withdrawn if the conditions mentioned in subsection 141(1) of the
Act are met.
(2) For subsection 141(2) of the Act, a PCT application is taken to be
withdrawn if Article 11(3) of the PCT ceases to have effect in
Australia in relation to the PCT application under Article 24(1)(i)
of the PCT.
13.3 Prescribed period: continuation fees
(1) For paragraph 142(2)(d) of the Act:
(a) a continuation fee for an application for a standard patent is
payable for a relevant anniversary at the last moment of the
anniversary; and
(b) the period in which the fee must be paid is the period ending
at the last moment of the anniversary.
(1A) However, if the continuation fee is paid within 6 months after the
end of the relevant anniversary (6 month period):
(a) the period mentioned in paragraph (1)(b) is taken to be
extended until the fee is paid; and
(b) the continuation fee includes the additional fee stated in
item 211 of Schedule 7; and
(c) the additional fee is payable from the first day of the 6 month
period.
(2) In the case of an application, filed before 1 April 2002, to which
section 33, 34, 35, 36 or 79B of the Act applies, a continuation fee
that is payable before 12 months after the date of filing the
application is taken to have been paid.
(3) In this regulation, relevant anniversary, for an application for a
standard patent, means an anniversary:
(a) of the date that would be the date of the patent if a patent had
been granted on the application; and
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Regulation 13.4
Patents Regulations 1991 119
(b) that is mentioned in item 211 of Schedule 7.
Note 1: For the date of a patent, see section 65 of the Act and regulation 6.3.
Note 2: For the fees payable, see regulation 22.2.
13.4 Prescribed period: acceptance of request and specification
(1) Subject to this regulation, the period prescribed for the purposes of
paragraph 142(2)(e) of the Act in relation to an application is:
(a) if examination of the patent request and complete
specification is requested before 15 April 2013—21 months
from the date of the first report (if any) under section 45 of
the Act;
(b) if examination is requested on or after 15 April 2013—12
months from the date of the first report (if any) under
section 45 of the Act;
(d) if the Commissioner has reported that the patent request or
complete specification relates to an invention that, so far as
claimed, is not novel in view of information of the kind
described in subparagraph (b)(ii) of the definition of prior art
base in the Act—the period of 3 months from the earlier of:
(i) the date of publication of the specification containing
that information; or
(ii) its lapsing, refusal or withdrawal;
(e) if the patent request and complete specification relate to an
application in relation to which a request has been made
under section 32 of the Act—subject to subregulation (3), the
period of 3 months from the date of the determination by the
Commissioner under that section;
(f) if:
(i) a person has applied under subsection 36(1) of the Act
in relation to the patent request and complete
specification; and
(ii) the Commissioner has made a declaration under
paragraph 36(1)(c) of the Act;
subject to subregulation (3), the period of 3 months from the
date of that declaration;
(g) subject to subregulation (3), if:
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Chapter 13 Withdrawal and lapsing of applications and ceasing of patents
Regulation 13.4
120 Patents Regulations 1991
(i) the Commissioner gives the applicant an opportunity to
be heard in relation to a report under section 45 of the
Act or regulation 10.2 by:
(A) notifying the applicant in writing of the date by
which written submissions must be filed; or
(B) notifying the applicant in writing of the date,
time and place of an oral hearing; and
(ii) the Commissioner makes a decision in writing in
relation to the report;
3 months from the date the decision is made;
(ga) subject to subregulation (3), if the Commissioner revokes an
acceptance under subsection 50A(1) of the Act—3 months
from the date the decision to revoke is made;
(h) if an appeal has been made to a prescribed court, or an
application for review has been made to the AAT, in relation
to the patent request or complete specification—subject to
subregulation (4), the period of 3 months from the day when
the appeal or application is withdrawn or finally dealt with or
determined;
(j) if:
(i) the application is for a patent of addition; and
(ii) an appeal has been made to a prescribed court or an
application for review has been made to the AAT in
respect of the application for a patent for the main
invention;
subject to subregulation (4), the period of 3 months from the
day when the appeal or application is withdrawn or finally
dealt with or determined;
(k) if the Commissioner requires a document to be made
available under subsection 43AA(4) of the Act—the period
of 5 months from the date the requirement is made;
(l) if:
(i) the Commissioner has informed the applicant of a notice
under subsection 27(1) of the Act; or
(ii) the applicant has informed the Commissioner, under
subsection 45(3) of the Act, of the results of any
documentary searches;
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Withdrawal and lapsing of applications and ceasing of patents Chapter 13
Regulation 13.5
Patents Regulations 1991 121
and an objection is raised based on information in the notice
or the search results—the period of 3 months from the date of
the report that first mentions the objection.
(2) If more than 1 of paragraphs (1)(a) to (l) applies in a particular
case, the lapsing period is whichever period ends latest.
(3) If paragraph (1)(e), (f), (g) or (ga) applies, the Commissioner may
substitute a period longer than 3 months, if the Commissioner is
satisfied that acceptance of the patent request and complete
specification should be postponed.
(4) If paragraph (1)(h) or (j) applies, the court or Tribunal may in its
discretion substitute a period longer than 3 months.
13.5 If applications lapse
(1) If a complete application lapses under section 142, the
Commissioner must advertise that fact in the Official Journal.
(2) Subregulation (1) does not apply in relation to a PCT application
that is treated as a patent application under the Act, if the PCT
application lapses under paragraph 142(2)(f) of the Act.
13.5A PCT application—prescribed circumstances for lapsing of
application
(1) For paragraph 142(2)(f) of the Act, a circumstance in which a PCT
application lapses is that the applicant has not met the requirements
of subsection 29A(5) of the Act within the prescribed period for
that subsection.
(2) For paragraph 142(2)(f) of the Act, a circumstance in which a PCT
application lapses is that the effect of the international application
under Article 11(3) of the PCT ceases in Australia under Article
24(1)(ii) of the PCT before the requirements of subsection 29A(5)
of the Act have been met.
13.6 Time for payment of renewal fee for patent
(1) For paragraphs 143(a) and 143A(d) of the Act:
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Chapter 13 Withdrawal and lapsing of applications and ceasing of patents
Regulation 13.6
122 Patents Regulations 1991
(a) a renewal fee for a patent is payable for a relevant
anniversary at the last moment of the anniversary; and
(b) the period in which the renewal fee must be paid is the period
ending at the last moment of the anniversary.
(1A) However, if an extension of the term of a standard patent is granted
under section 76 of the Act, the period in paragraph (1)(b) is taken
to be extended until 6 months after the extension is granted for
each relevant anniversary happening:
(a) on or after the twentieth anniversary of the date of the patent;
and
(b) on or before the day the extension is granted.
(2) However, if the period mentioned in paragraph (1)(b) is not taken
to be extended under subregulation (1A), and the renewal fee is
paid within 6 months after the end of the relevant anniversary (6
month period):
(a) the period mentioned in paragraph (1)(b) is taken to be
extended until the fee is paid; and
(b) the renewal fee includes the additional fee mentioned in
subregulation (2A); and
(c) the additional fee is payable from the first day of the 6 month
period.
(2A) For paragraph (2)(b), the additional fee is:
(a) for a standard patent—the fee stated in item 211 of
Schedule 7; and
(b) for an innovation patent—the fee stated in item 212 of
Schedule 7.
(3) If a continuation fee is paid for a relevant anniversary in
accordance with regulation 13.3, the renewal fee for that
anniversary is taken to have been paid.
(4) If an application for an innovation patent is made under
section 79B or 79C of the Act, a renewal fee that is payable within
1 month after the grant of the patent is taken to have been paid.
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Withdrawal and lapsing of applications and ceasing of patents Chapter 13
Regulation 13.7
Patents Regulations 1991 123
(5) The Commissioner must publish notice in the Official Journal of a
patent that ceases under section 143 or 143A of the Act.
(6) In this regulation, relevant anniversary, for a patent, means an
anniversary of the date of the patent that is mentioned:
(a) for a standard patent—in item 211 of Schedule 7; or
(b) for an innovation patent—in item 212 of Schedule 7.
Note: For the date of a patent, see section 65 of the Act and regulation 6.3.
13.7 Prescribed period: ceasing of innovation patents
For paragraph 143A(c) of the Act, the prescribed period is the
period mentioned in regulation 9A.4 that applies to the patent.
Federal Register of Legislative Instruments F2013C00202
Chapter 15 Special provisions relating to associated technology
Regulation 15.1
124 Patents Regulations 1991
Chapter 15—Special provisions relating to
associated technology
15.1 Time for restoration of application for patent
A request under subsection 150(1) of the Act must be filed within 3
months after the revocation, under section 149 of the Act, of a
direction in respect of the application to which the request relates.
15.2 Requirements for reinstatement of international applications
(1) For paragraph 151(4)(c) of the Act, the prescribed period is 3
months from the revocation of a direction under section 149 of the
Act.
(2) For the purposes of paragraph 151(4)(d) of the Act, the patent
request, the specification to which the request relates and such
other documents as are prescribed for the purposes of
subsection 29(1) of the Act are prescribed.
(3) For the purposes of paragraph 151(4)(d) of the Act, the fee that
would have been payable if the application had been filed under
section 29 of the Act is prescribed.
15.3 Prescribed period: order relating to standard patent
For subsection 153(3) of the Act, the prescribed period is 1 month
from the revocation of the order under subsection 152(3) of the Act
that relates to the application.
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The Crown Chapter 17
Regulation 17.1
Patents Regulations 1991 125
Chapter 17—The Crown
17.1 Application for declaration: exploitation of innovation patent
An application under subsection 169(1) of the Act for a declaration
that an innovation patent has been exploited by the Crown under
section 163 of the Act must include the date on which the
innovation patent was certified.
17.1A Prescribed period: order relating to standard patent
For subsection 174(2) of the Act, the prescribed period is 1 month
from the revocation of an order under subsection 173(1) of the Act
that relates to the application.
17.2 Prescribed period, document and fee: filing of international
applications
(1) For the purposes of paragraph 176(c) of the Act, the period of 3
months from the date on which an international application is
considered to be withdrawn under Article 12 of the PCT is
prescribed.
(2) For the purposes of paragraph 176(d) of the Act, the patent request,
the specification relating to the request and such other documents
as are prescribed for the purposes of subsection 29(1) of the Act
are prescribed.
(3) For the purposes of paragraph 176(d) of the Act, the fee that would
have been payable if the application had been filed under
section 29 of the Act is prescribed.
Federal Register of Legislative Instruments F2013C00202
Chapter 19 The register and official documents
Regulation 19.1
126 Patents Regulations 1991
Chapter 19—The register and official
documents
19.1 Particulars to be registered
(1) For subsections 187(1) and (2) of the Act, the following particulars
are prescribed, that is, particulars of:
(a) an entitlement as mortgagee, licensee or otherwise to an
interest in a patent;
(b) a transfer of an entitlement to a patent or licence, or to a
share in a patent or licence;
(c) an extension of the term of a patent;
(d) a restoration of a patent;
(e) an order of a court a copy of which is filed under
subsection 105(5) of the Act;
(f) an order of a prescribed court that has been served on the
Commissioner under section 140 of the Act;
(g) an order of a prescribed court made on appeal in relation to a
patent, being an order of which an office copy has been
served on the Commissioner;
(h) a decision of the Commissioner to revoke a patent under
Chapter 9 of the Act;
(i) the acquisition of a patent by the Commonwealth under
Part 3 of Chapter 17 of the Act;
(j) the cessation of a patent.
(2) A request for registration of particulars referred to in
paragraph (1)(a) or (b) must be in the approved form and have with
it proof to the reasonable satisfaction of the Commissioner of the
entitlement of the person making the request.
19.2 Request for information from Commissioner
(1) A request made to the Commissioner under section 194 of the Act
must be in the approved form.
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Individual Patent Attorneys Chapter 20
Introduction Part 1
Regulation 20.1A
Patents Regulations 1991 127
Chapter 20—Individual Patent Attorneys
Part 1—Introduction
20.1A Application of this Chapter
This Chapter applies to:
(a) a patent attorney who is not an incorporated patent attorney;
and
(b) an individual applying for registration as a patent attorney.
20.1 Interpretation
(1) In this Chapter:
AQF means the Australian Qualifications Framework.
Board means the Professional Standards Board for Patent and
Trade Marks Attorneys.
candidate means a person who proposes or proposed to sit, or has
sat, for an examination.
Chairperson means Chairperson of the Board.
professional misconduct has the meaning given by
regulation 20.32.
serious offence means an offence that:
(a) involves obtaining property or a financial advantage by
deception or fraudulent conduct; and
(b) is either:
(i) an indictable offence against a law of the
Commonwealth, a State or a Territory (whether or not
the offence may be dealt with summarily); or
(ii) an offence against a law of a foreign country that would
be an indictable offence against a law of the
Commonwealth, a State or a Territory if committed in
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Chapter 20 Individual Patent Attorneys
Part 1 Introduction
Regulation 20.1
128 Patents Regulations 1991
Australia (whether or not the offence could be dealt
with summarily if committed in Australia).
statement of skill has the meaning given by regulation 20.11.
unqualified, in relation to a particular time, means:
(a) not holding one or more of the academic qualifications or
knowledge requirements required for registration at that time
by these Regulations; or
(b) not holding a qualification required for registration at that
time by the former attorneys Regulations.
unsatisfactory professional conduct has the meaning given by
regulation 20.32.
(2) For regulation 20.6, the higher education sector comprises:
(a) universities; and
(b) higher education institutions other than universities; and
(c) higher education providers.
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Individual Patent Attorneys Chapter 20
Obtaining registration for first time Part 2
Regulation 20.2
Patents Regulations 1991 129
Part 2—Obtaining registration for first time
20.2 Form of application
An application for registration as a patent attorney must:
(a) be in writing, in a form approved by the Designated
Manager; and
(b) be accompanied by evidence and material mentioned in
regulation 20.3; and
(c) be accompanied by the fee mentioned in item 104 of
Schedule 7.
20.3 Evidence that applicant meets registration requirements
(1) An application for registration as a patent attorney must be
accompanied by the following:
(a) evidence that the applicant is ordinarily resident in Australia;
(b) evidence that the Board is satisfied that the applicant has, or
is entitled to the award of, an academic qualification of a
kind mentioned in regulation 20.6;
(c) evidence that the Board is satisfied that the applicant has the
knowledge of intellectual property law and practice that is
required for a person to practise as a patent attorney;
(d) one or more statements of skill, for the purposes of
regulation 20.11;
(e) a declaration, by the applicant, that he or she:
(i) has not, in the 5 years preceding the application,
committed an offence prescribed by subregulation
20.12(1); and
(ii) is not under sentence of imprisonment for an offence
prescribed by subregulation 20.12(2);
(f) a declaration, by another person, that the applicant is of good
fame, integrity and character.
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Chapter 20 Individual Patent Attorneys
Part 2 Obtaining registration for first time
Regulation 20.4
130 Patents Regulations 1991
(2) A declaration under paragraph (1)(f) must contain details of the
basis of the opinion that the applicant is of good fame, integrity
and character.
20.4 Certificate of registration
If the Designated Manager registers a person as a patent attorney,
the Designated Manager must give the person a certificate of
registration.
20.5 Evidence of academic qualifications
(1) The Board must be satisfied that a person has a qualification
mentioned in regulation 20.6 if:
(a) the person makes an application in the form approved by the
Board; and
(b) the application is accompanied by:
(i) evidence that the person has the qualification; and
(ii) the original or a certified copy of an academic record
that shows the units that make up the qualification.
(2) The Board must, within 42 days of deciding whether or not it is
satisfied that the person has the qualification, notify the person, in
writing, of its decision.
Note: A decision that a person does not have a qualification is reviewable under regulation 22.26.
20.6 Academic qualifications
(1) The Designated Manager must not approve an applicant for
registration as a patent attorney unless the applicant has, or is
entitled to:
(a) an AQF qualification from the higher education sector that
the Board is satisfied is an appropriate qualification for a
patent attorney; or
(b) a qualification awarded by an overseas institution that the
Board is satisfied is equivalent to an AQF qualification from
the higher education sector.
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Individual Patent Attorneys Chapter 20
Obtaining registration for first time Part 2
Regulation 20.7
Patents Regulations 1991 131
(2) The Board must not be satisfied that a person has an AQF
qualification unless the qualification, or a course taken for the
purpose of the qualification:
(a) is in a field of science or technology that contains potentially
patentable subject matter; and
(b) involves a depth of study that the Board considers is
sufficient to provide an appropriate foundation for practise as
a patent attorney.
(3) The Board must not be satisfied that a qualification from a foreign
institution is equivalent to an AQF qualification unless the
qualification, or a course taken for the purpose of the qualification:
(a) is in a field of science or technology that contains potentially
patentable subject matter; and
(b) involves a depth of study that the Board considers is
sufficient to provide an appropriate foundation for practise as
a patent attorney.
20.7 Evidence of knowledge requirements
(1) The Board must be satisfied that a person has a knowledge
requirement mentioned in regulation 20.8 if:
(a) the person makes an application in the form approved by the
Board; and
(b) the application is accompanied by:
(i) evidence that the applicant has the relevant knowledge;
and
(ii) the original or a certified copy of any academic record
that shows the study that contributes to the knowledge.
(2) The Board must, within 42 days of deciding whether or not it is
satisfied that the person has the knowledge requirement, notify the
person, in writing, of its decision.
Note: A decision that a person does not have a knowledge requirement is reviewable under regulation 22.26.
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Chapter 20 Individual Patent Attorneys
Part 2 Obtaining registration for first time
Regulation 20.8
132 Patents Regulations 1991
20.8 Knowledge requirements
(1) The Designated Manager must not approve an applicant for
registration as a patent attorney unless the Board is satisfied that
the applicant has the knowledge of intellectual property law and
practice that is required for a person to practise as a patent
attorney.
(2) Subject to subregulations (3), (4) and (5), the Board must, in
satisfying itself whether or not an applicant has the knowledge of
intellectual property law and practice that is required for a person
to practise as a patent attorney, take into account whether the
applicant has the knowledge requirements that meet the minimum
requirements set out in Schedule 5.
(3) The Board may publish guidelines setting out criteria for deciding
whether or not areas of study are likely:
(a) to meet the minimum requirements set out in Schedule 5;
(b) to provide a person with the appropriate level of
understanding to practise as a patent attorney.
(4) The Board may be satisfied that an applicant has the knowledge of
intellectual property law and practice that is required for a person
to practise as a patent attorney, despite the fact that the applicant
does not meet every requirement set out in Schedule 5.
(5) The Board is not able to be satisfied that the applicant has the
knowledge of intellectual property law and practice that is required
for a person to practise as a patent attorney if the knowledge
requirements on which the applicant relies were obtained more
than 10 years prior to the application.
(6) If an applicant has been granted an exemption under
regulation 20.9, the applicant is taken to meet the requirement in
Schedule 5 for which the exemption is granted.
Note: Subsection 198(4) of the Act provides that the Designated Manager must register as a patent attorney a person who satisfies certain conditions. Paragraph 198(4)(b) requires that a person hold such qualifications as are specified in, or ascertained in accordance with, the Regulations.
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Individual Patent Attorneys Chapter 20
Obtaining registration for first time Part 2
Regulation 20.9
Patents Regulations 1991 133
20.9 Exemption from a requirement in Schedule 5
(1) The Board may exempt an applicant from having to satisfy all or
some of the requirements mentioned in Schedule 5.
(2) The Board must not give an exemption to an applicant unless:
(a) the applicant makes an application in the form approved by
the Board; and
(b) the applicant gives the Board enough information for the
Board to be satisfied under paragraph (c); and
(c) the Board is satisfied that:
(i) the applicant has passed a course of study at a
satisfactory level; and
(ii) the course of study has outcomes that are the same as, or
similar to, those of a knowledge requirement for which
the exemption is sought.
(3) The Board may give an exemption under subregulation (1) if it is
satisfied that the applicant has successfully completed a relevant
course of study within the 7 years preceding the application or
within a longer period specified in writing by the Board.
(4) An exemption under subregulation (1) is valid for 5 years from the
date that the exemption was granted or for a longer period
specified in writing by the Board.
20.10 Employment requirements
(1) The applicant:
(a) must have been employed in a position, or positions, that
provided the applicant experience in the following skills:
(i) searching patent records;
(ii) preparing, filing and prosecuting patent applications in
Australia;
(iii) preparing, filing and prosecuting patent applications in
other countries and organisations, particularly countries
and organisations that are regarded as major trading
partners with Australia;
(iv) drafting patent specifications;
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Chapter 20 Individual Patent Attorneys
Part 2 Obtaining registration for first time
Regulation 20.11
134 Patents Regulations 1991
(v) providing advice on the interpretation, validity and
infringement of patents; and
(b) must have been employed in a position, or positions, of that
kind for at least:
(i) 2 continuous years; or
(ii) a total of 2 years within 5 continuous years.
Examples of major trading partners for subparagraph (a)(iii):
European Community
Japan
New Zealand
People‟s Republic of China
United States of America.
(2) The requirements set out in subregulation (1) must be evidenced by
means of one or more statements of skill, as defined in
regulation 20.11.
Note: Subsection 198(4) of the Act provides that the Designated Manager must register as a patent attorney a person who satisfies certain conditions. Paragraph 198(4)(c) requires that a person be employed as prescribed for not less than the prescribed period.
20.11 Statements of skill
(1) For paragraph 20.3(1)(d) and subregulation 20.10(2), a statement
of skill is a statement by a registered patent attorney who has been
registered for at least 5 years that, in the opinion of the registered
patent attorney, the applicant has the experience mentioned in one
or more of subparagraphs 20.10(1)(a)(i) to (v).
(2) Without limiting subregulation (1), a statement of skill must:
(a) contain details of the basis of the opinion that the applicant
has the required experience; and
(b) include details of the evidence on which the opinion is based;
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Individual Patent Attorneys Chapter 20
Obtaining registration for first time Part 2
Regulation 20.12
Patents Regulations 1991 135
described by reference to:
(c) the skills mentioned in paragraph 20.10(1)(a); and
(d) the employment requirements mentioned in paragraph
20.10(1)(b).
(3) If an applicant is unable to obtain a statement of skill from a
registered patent attorney who has been registered for at least 5
years, the Board may, at the request of the applicant, prepare a
statement of skill in relation to the applicant.
20.12 Prescribed offences
(1) An offence against the Act, the Designs Act 2003 or the Trade
Marks Act 1995 is a prescribed offence for paragraph 198(4)(e) of
the Act.
(2) An offence of dishonesty for which the maximum penalty is
imprisonment for at least 2 years is a prescribed offence for
paragraph 198(4)(f) of the Act.
Note: Subsection 198(4) of the Act provides that the Designated Manager must register as a patent attorney a person who satisfies certain conditions. Paragraph 198(4)(e) requires that a person not have been convicted of a prescribed offence during the previous 5 years. Paragraph 198(4)(f) requires that a person not be under sentence of imprisonment for a prescribed offence.
Federal Register of Legislative Instruments F2013C00202
Chapter 20 Individual Patent Attorneys
Part 3 Accreditation of courses of study
Regulation 20.13
136 Patents Regulations 1991
Part 3—Accreditation of courses of study
20.13 Accreditation of courses of study
(1) The Board may accredit a course of study that is provided by an
institution if the Board is satisfied that the learning outcomes of the
course would result in a person who passes the course acquiring
some or all of the knowledge of intellectual property law and
practice that the Board considers necessary for a person to practise
as a registered patent attorney.
(2) In deciding whether or not to accredit the course, the Board must
consider whether the learning outcomes of the course meet some or
all of the requirements set out in Schedule 5.
(3) In considering whether the learning outcomes of the course meets
some or all of the requirements set out in Schedule 5, the Board
must consider any information provided by the institution.
(4) If the institution gives the Board sufficient information for the
Board to decide whether the learning outcomes of the course meet
a requirement mentioned in Schedule 5, the Board must, within 4
months after receiving the information, decide whether to accredit
the course.
(5) Subject to subregulation (7), if the Board accredits a course,
accreditation is for 5 years.
(6) If an institution intends to change an accredited course, it must
advise the Board in writing.
(7) The Board may revoke an accreditation if:
(a) changes are made to the course; and
(b) the Board decides that the course no longer achieves the
learning outcomes stated for the knowledge requirements to
which it relates.
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Individual Patent Attorneys Chapter 20
Accreditation of courses of study Part 3
Regulation 20.14
Patents Regulations 1991 137
20.14 Provisional accreditation
(1) The Board may provisionally accredit a course if:
(a) the institution has sought accreditation for the course; and
(b) the information provided by the institution shows that the
course includes a requirement mentioned in Schedule 5; and
(c) either:
(i) the Board does not expect to complete its consideration
of the course under regulation 20.13 before the start of
the academic semester; or
(ii) the Board has not completed its consideration of the
course under regulation 20.13 when the academic
semester starts.
(2) The Board may provisionally accredit a changed course if:
(a) a consequence of the change to the course is that the learning
outcomes of the course may meet fewer of the requirements
set out in Schedule 5; and
(b) the Board considers that the changed course still achieves the
learning outcomes stated for the knowledge requirements
mentioned in Schedule 5.
(3) Provisional accreditation:
(a) starts when the course is provisionally accredited; and
(b) ends at the earlier of:
(i) when the course has concluded; and
(ii) when a decision in relation to the course is made under
regulation 20.13.
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Chapter 20 Individual Patent Attorneys
Part 4 Board examinations
Regulation 20.15
138 Patents Regulations 1991
Part 4—Board examinations
20.15 Board examinations
(1) The Board may hold examinations for a requirement mentioned in
Schedule 5.
(2) The Board may appoint examiners for the purposes of the
examinations, and give them instructions about the setting and
marking of papers.
(3) An examiner is entitled to be paid the fees that the Minister
determines in writing.
20.16 Time for holding Board examinations
(1) The Board must arrange to publish in the Official Journal, with
adequate notice:
(a) the time of each examination it holds and the place where it
is to be held; and
(b) the deadline for applications for admission to sit for each
examination it holds.
(2) Subregulation (1) does not apply to a supplementary examination
under regulation 20.21.
20.17 Examinable subject matter
From time to time, the Board must arrange to publish in the
Official Journal particulars of:
(a) the subject matter covered by the courses for which
examinations are to be held in relation to the relevant
requirements mentioned in Schedule 5; and
(b) the reading and study material it recommends to candidates.
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Individual Patent Attorneys Chapter 20
Board examinations Part 4
Regulation 20.18
Patents Regulations 1991 139
20.18 Admission to sit for a Board examination
An application by a person to sit for an examination must be in the
form approved by the Board.
20.19 Notification of Board examination results
As soon as practicable after an examination conducted by the
Board, the Board must give to each candidate who sat for the
examination his or her results in the examination.
20.20 Reasons for failure of Board examination
(1) A candidate who fails an examination conducted by the Board may
apply to the Board in the form approved by the Board within 1
month after being told of the failure for a report of the reasons for
the failure.
(2) For subregulation (1), a report may be given by:
(a) the Board; or
(b) if the Board approves—the examiner appointed under
subregulation 20.15(2).
20.21 Supplementary Board examination
(1) An application by a person to sit for a supplementary examination
must be in the form approved by the Board.
(2) The Board may let a candidate sit for a supplementary examination
if:
(a) the candidate:
(i) failed an examination; and
(ii) applies to the Board to sit for the supplementary
examination within 1 month of being told of the failure;
or
(b) the candidate:
(i) did not sit for the examination because of illness or
another reason that the Board reasonably considers
sufficient; and
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Chapter 20 Individual Patent Attorneys
Part 4 Board examinations
Regulation 20.21
140 Patents Regulations 1991
(ii) applies to the Board to sit for the supplementary
examination within 1 month of the examination.
(3) For an application under paragraph (2)(a), the Board may take
account of an examiner‟s comments on the candidate‟s
performance.
(4) A supplementary application under paragraph (2)(b) must be
accompanied by evidence of the reason for failing to sit the
examination that was obtained at the time of the illness or of the
occurrence of the other event giving rise to the reason.
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Individual Patent Attorneys Chapter 20
Maintaining registration Part 5
Regulation 20.22
Patents Regulations 1991 141
Part 5—Maintaining registration
20.22 Requirements for remaining on Register of Patent Attorneys
(1) To remain on the Register of Patent Attorneys, a registered patent
attorney must, for every year of registration:
(a) pay the annual registration fee set out in item 105 or 106 of
Schedule 7; and
(b) provide evidence that he or she has undertaken continuing
professional education, as required by regulation 20.24.
(2) Paragraph (1)(b) applies to a registered patent attorney who seeks
to remain on the Register of Patent Attorneys for the 12 months
commencing on 1 July 2009 and for each subsequent period of 12
months.
20.23 Payment of annual registration fee
(1) The annual registration fee is payable by a registered patent
attorney to whom regulation 20.26 does not apply on 1 July in a
year.
(2) The Designated Manager must, not later than 1 June in each year,
give to each registered patent attorney to whom regulation 20.26
does not apply, notice of the fee that is payable.
20.24 Continuing professional education—number of hours
(1) Subject to subregulation (3), a registered patent attorney must, in
the 12 months immediately before the date on which the attorney
applies for renewed registration, have completed 10 hours of
activities that the Designated Manager is satisfied are appropriate
for an attorney to undertake as a means of maintaining the currency
of his or her professional qualifications.
(2) The Board may publish guidelines setting out criteria for deciding
whether or not activities are likely to be appropriate for an attorney
Federal Register of Legislative Instruments F2013C00202
Chapter 20 Individual Patent Attorneys
Part 5 Maintaining registration
Regulation 20.25
142 Patents Regulations 1991
to undertake as a means of maintaining the currency of his or her
professional qualifications.
(3) A person who is both a registered patent attorney and a registered
trade marks attorney must, in the 12 months immediately before
the date on which the attorney applies for renewed registration,
have completed 15 hours of activities that the Designated Manager
is satisfied are appropriate for an attorney to undertake as a means
of maintaining the currency of his or her professional
qualifications.
(4) In this regulation:
renewed registration means an application by a registered patent
attorney to renew his or her registration, other than the first
application to renew his or her registration.
20.25 Method of demonstrating that continuing professional
education has been undertaken
(1) In making an application for a renewed registration, a registered
patent attorney must:
(a) give the Designated Manager a written statement made by
the attorney that states that the attorney has met the
requirements of this Part; and
(b) have kept written records in relation to each continuing
professional education activity on which the attorney relies.
(2) For paragraph (1)(b), the records must:
(a) enable an assessment of the activity to confirm that the
activity meets the requirements of this Part; and
(b) be produced to the Designated Manager on request; and
(c) be kept until 3 years after the end of the registration period
during which the activity was completed.
Federal Register of Legislative Instruments F2013C00202
Individual Patent Attorneys Chapter 20
Removal of attorney‟s name from Register of Patent Attorneys Part 6
Regulation 20.26
Patents Regulations 1991 143
Part 6—Removal of attorney’s name from Register
of Patent Attorneys
20.26 Voluntary removal of name from Register of Patent Attorneys
The Designated Manager must, on the written request of a
registered patent attorney, remove the attorney‟s name from the
Register of Patent Attorneys.
20.27 Failure to pay annual registration fee
If a registered patent attorney does not pay the annual registration
fee by 31 July in the year in which the fee is payable, the
Designated Manager must:
(a) remove the name of the attorney from the Register of Patent
Attorneys; and
(b) notify the attorney of that removal.
20.28 Failure to comply with continuing professional education
requirements
(1) If a registered patent attorney fails to comply with the requirements
applicable to the attorney under subregulation 20.25(1) or (2), the
Designated Manager may remove the attorney‟s name from the
Register of Patent Attorneys for a period not exceeding 6 months.
(2) If a registered patent attorney, without reasonable excuse:
(a) provides a written statement under paragraph 20.25(1)(a) that
is false in a material particular; or
(b) fails to produce written records of his or her continuing
professional education activities in accordance with a request
under paragraph 20.25(2)(b);
the Designated Manager must remove the attorney‟s name from the
Register of Patent Attorneys.
Federal Register of Legislative Instruments F2013C00202
Chapter 20 Individual Patent Attorneys
Part 6 Removal of attorney‟s name from Register of Patent Attorneys
Regulation 20.28
144 Patents Regulations 1991
(3) If the Designated Manager removes the name of a registered patent
attorney from the Register of Patent Attorneys under subregulation
(2), the name of the attorney must not be returned to the Register of
Patent Attorneys in accordance with regulation 20.29 for a period
of 6 months from the day on which the attorney‟s name was
removed from the Register of Patent Attorneys.
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Individual Patent Attorneys Chapter 20
Suspension of registration Part 6A
Regulation 20.28A
Patents Regulations 1991 145
Part 6A—Suspension of registration
20.28A Requirement to notify of serious offence
(1) A registered patent attorney who has been charged with a serious
offence must, within 14 days after being charged, notify the
Designated Manager, in writing, of the charge.
(2) If the registered patent attorney:
(a) fails to comply with subregulation (1); and
(b) does not have a reasonable excuse for failing to comply;
the failure to comply constitutes unsatisfactory professional
conduct.
20.28B Suspension of registration—serious offence
(1) The Designated Manager may, by written notice to a registered
patent attorney, suspend the registered patent attorney‟s
registration if the Designated Manager:
(a) is notified under subregulation 20.28A(1); or
(b) becomes aware that the registered patent attorney has been
charged with a serious offence.
(2) If the Designated Manager suspends the registered patent
attorney‟s registration:
(a) the suspension takes effect when the notice is given to the
registered patent attorney; and
(b) the Designated Manager must:
(i) give written notice to the Board of the suspension; and
(ii) by written notice, give the registered patent attorney 28
days after the date of the notice (a show cause notice)
within which to show cause why the suspension should
be lifted.
Federal Register of Legislative Instruments F2013C00202
Chapter 20 Individual Patent Attorneys
Part 6A Suspension of registration
Regulation 20.28B
146 Patents Regulations 1991
(3) The Designated Manager must consider any information provided
by the registered patent attorney in response to the show cause
notice.
(4) The Designated Manager must immediately end the suspension if:
(a) the Designated Manager becomes aware that the charge is not
proceeded with or the prosecution of the charge is
abandoned; or
(b) the Designated Manager becomes aware that the proceedings
have been completed without a conviction being recorded; or
(c) the proceedings have been completed with a conviction being
recorded and the Disciplinary Tribunal decides not to
continue the suspension or cancel the registered patent
attorney‟s registration; or
(d) the Designated Manager considers that the suspension is no
longer necessary.
(5) If the Designated Manager ends the suspension, the Designated
Manager must notify, in writing, each of the following that the
suspension has ended:
(a) the registered patent attorney;
(b) the Board;
(c) the Disciplinary Tribunal.
Federal Register of Legislative Instruments F2013C00202
Individual Patent Attorneys Chapter 20
Restoring attorney‟s name to Register of Patent Attorneys Part 7
Regulation 20.29
Patents Regulations 1991 147
Part 7—Restoring attorney’s name to Register of
Patent Attorneys
20.29 Restoring attorney’s name to Register of Patent Attorneys
(1) Subject to subregulation (2), if:
(a) a patent attorney‟s name was removed from the Register of
Patent Attorneys under regulation 20.26; and
(b) the attorney requests the Designated Manager, in writing, to
restore the attorney‟s name to the Register of Patent
Attorneys; and
(c) the attorney pays:
(i) the annual registration fee payable for the year in which
the reinstatement is made; and
(ii) the fee mentioned in item 107 of Schedule 7;
the Designated Manager must restore the attorney‟s name to the
Register of Patent Attorneys.
(2) A request under paragraph (1)(b) must be made no more than 3
years after the removal of the attorney‟s name from the Register of
Patent Attorneys.
(3) The Designated Manager may, in restoring the name of a registered
patent attorney to the Register of Patent Attorneys, impose a
condition that, before 1 July of the following registration year, the
registered patent attorney must undertake such continuing
professional education activities as the Designated Manager
considers reasonable in the circumstances.
(4) If:
(a) the Designated Manager imposes a condition; and
(b) the registered patent attorney fails to comply with the
condition;
the Designated Manager may remove the name of the attorney
from the Register of Patent Attorneys.
Federal Register of Legislative Instruments F2013C00202
Chapter 20 Individual Patent Attorneys
Part 7 Restoring attorney‟s name to Register of Patent Attorneys
Regulation 20.30
148 Patents Regulations 1991
20.30 Restoring attorney’s name to Register of Patent Attorneys
following payment of unpaid fee
The Designated Manager must restore a patent attorney‟s name to
the Register of Patent Attorneys if:
(a) the attorney‟s name was removed from the Register of Patent
Attorneys under regulation 20.27; and
(b) on or before 1 September of the year in which the attorney‟s
name was removed from the Register of Patent Attorneys, or
within such further period as the Designated Manager
reasonably allows, the attorney:
(i) pays the fee mentioned in regulation 20.27 and item 107
of Schedule 7;
(ii) makes an application in the form approved by the
Designated Manager.
20.31 Restoring attorney’s name to Register of Patent Attorneys in
other circumstances
(1) A person who has been a registered patent attorney, and to whom
regulation 20.29 or 20.30 does not apply, may apply to the
Designated Manager to have his or her name restored to the
Register of Patent Attorneys.
(2) An application under subsection (1) must be in a form approved by
the Designated Manager.
(3) An application under subsection (1) must be accompanied by the
following:
(a) evidence that the Board is satisfied with the currency of the
person‟s knowledge of intellectual property law and practice;
(b) a declaration, by the applicant, that he or she:
(i) has not, in the 5 years preceding the application,
committed an offence prescribed by subregulation
20.12(1); and
(ii) is not under sentence of imprisonment for an offence
prescribed by subregulation 20.12(2);
Federal Register of Legislative Instruments F2013C00202
Individual Patent Attorneys Chapter 20
Restoring attorney‟s name to Register of Patent Attorneys Part 7
Regulation 20.31
Patents Regulations 1991 149
(c) a declaration, by another person, that the person is of good
fame, integrity and character;
(d) a fee that is the sum of the fee mentioned in item 105 or 106
of Schedule 7, whichever is applicable, and the fee
mentioned in item 107 of Schedule 7.
(4) A declaration under paragraph (3)(c) must contain details of the
basis of the opinion that the applicant is of good fame, integrity
and character
Federal Register of Legislative Instruments F2013C00202
Chapter 20 Individual Patent Attorneys
Part 8 Discipline
Division 1 General
Regulation 20.32
150 Patents Regulations 1991
Part 8—Discipline
Division 1—General
20.32 Definitions
In this Part:
conduct includes an act and an omission.
former attorney means a person whose registration as a patent
attorney has been suspended or cancelled under this Part.
professional misconduct means:
(a) unsatisfactory professional conduct that involves a
substantial or consistent failure to reach reasonable standards
of competence and diligence; or
(b) any other conduct, whether occurring in connection with
practice as an attorney or otherwise, that shows that the
attorney is not of good fame, integrity and character; or
(c) any contravention of a law that is declared by these
Regulations to be professional misconduct.
unsatisfactory professional conduct includes conduct, in
connection with practice as a registered patent attorney, that falls
short of the standard of competence, diligence and behaviour that a
member of the public is entitled to expect of an attorney.
20.33 Role of Board in disciplinary proceedings
(1) The Board has the sole responsibility for commencing and
conducting disciplinary proceedings against a registered patent
attorney.
(2) The role of the Board in commencing disciplinary proceedings
includes investigating, either as a result of information received or
of its own motion, whether:
(a) a registered patent attorney has been engaged in:
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Discipline Part 8
General Division 1
Regulation 20.33
Patents Regulations 1991 151
(i) professional misconduct; or
(ii) unsatisfactory professional conduct; or
(b) at the time of his or her registration, a registered patent
attorney did not hold either or both of the following:
(i) the academic qualifications mentioned in
regulation 20.6;
(ii) the knowledge requirements mentioned in
regulation 20.8; or
(c) a registered patent attorney obtained his or her registration by
fraud.
(3) The Board may commence proceedings before the Disciplinary
Tribunal against a registered patent attorney if the Board is
satisfied that there is a reasonable likelihood of the attorney being
found guilty of unsatisfactory professional conduct.
(4) The Board must commence proceedings against a registered patent
attorney before the Disciplinary Tribunal if the Board is satisfied
that there is a reasonable likelihood of the attorney being found
guilty of an offence under subregulation (2), other than of
unsatisfactory professional conduct.
(5) In deciding whether or not to commence disciplinary proceedings
against a registered patent attorney, the Board may take into
account patterns of behaviour of the attorney when deciding
whether or not it is satisfied that there is a reasonable likelihood of
the attorney being found guilty of an offence under subregulation
(2).
(6) In deciding whether or not a registered patent attorney has been
engaged in:
(a) professional misconduct; or
(b) unsatisfactory professional conduct;
the Board must consider whether or not the attorney has complied
with the Code of Conduct.
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Chapter 20 Individual Patent Attorneys
Part 8 Discipline
Division 1 General
Regulation 20.34
152 Patents Regulations 1991
20.34 Board may require attorney to cooperate with investigation
(1) In investigating whether or not to commence proceedings against a
registered patent attorney, the Board may request the attorney who
is the subject of the investigation to provide information.
(2) The failure, without reasonable excuse, of a registered patent
attorney to provide information requested by the Board under
subregulation (1) is unsatisfactory professional conduct.
20.35 Commencing disciplinary proceedings
(1) The Board must commence disciplinary proceedings by way of a
notice given to the Disciplinary Tribunal.
(2) A notice must be in writing and must set out the charges that are
made against the registered patent attorney.
(3) The Board must, as soon as practicable after giving a notice to the
Disciplinary Tribunal, give a copy of the notice to the registered
patent attorney who is the subject of the notice.
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Individual Patent Attorneys Chapter 20
Discipline Part 8
Proceedings in Disciplinary Tribunal Division 2
Regulation 20.36
Patents Regulations 1991 153
Division 2—Proceedings in Disciplinary Tribunal
20.36 Procedure of Disciplinary Tribunal
(1) Subject to this Part, the Disciplinary Tribunal may determine its
procedure.
(2) Proceedings before the Disciplinary Tribunal are to be conducted
quickly and informally, while allowing for proper consideration of
the matter before that Tribunal.
(3) The Disciplinary Tribunal is not bound by the rules of evidence but
may be informed on any matter in the manner it chooses.
(4) The Disciplinary Tribunal may take evidence on oath or on
affirmation and, for that purpose, may administer an oath or
affirmation.
20.37 Notification of hearing of disciplinary proceedings
(1) The Disciplinary Tribunal must, as soon as practicable after
receiving a notice under regulation 20.35 in relation to a registered
patent attorney, fix a time and place for the hearing of the charges
set out in the notice.
(2) The Disciplinary Tribunal must, as soon as practicable after fixing
a time and date for the hearing of charges against a registered
patent attorney, notify the attorney and the Board of that time and
place.
(3) The time of hearing must not be less than 21 days after the day on
which the registered patent attorney is notified of the time and
place for the hearing.
20.38 Hearings to be public except in special circumstances
(1) Subject to subregulation (2), a hearing before the Disciplinary
Tribunal must be in public.
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Chapter 20 Individual Patent Attorneys
Part 8 Discipline
Division 2 Proceedings in Disciplinary Tribunal
Regulation 20.39
154 Patents Regulations 1991
(2) If the Disciplinary Tribunal is reasonably satisfied that it is
desirable to do so, in the public interest or because of the
confidential nature of any evidence or matter, the Tribunal may:
(a) direct that a hearing, or a part of a hearing, is to take place in
private and give directions as to the persons who may be
present; and
(b) give directions restricting or prohibiting the publication or
disclosure of:
(i) evidence given before the Tribunal, whether in public or
in private; or
(ii) matters contained in documents lodged with the
Tribunal or received in evidence by it.
(3) A person must comply with a direction given to him or her under
this regulation.
Penalty: 5 penalty units.
20.39 Representation before Disciplinary Tribunal
(1) At the hearing of proceedings before the Disciplinary Tribunal, a
party to the proceedings may appear in person or be represented by
a legal practitioner.
(2) The Disciplinary Tribunal may allow a person to be represented by
a person who is not a legal practitioner.
(3) A party to proceedings before the Disciplinary Tribunal, or his or
her representative, may request that Tribunal to summon witnesses.
20.40 Summoning of witnesses
(1) For the purpose of the hearing of a charge against a registered
patent attorney before the Disciplinary Tribunal, the Tribunal may,
by instrument in writing signed by the person constituting the
Tribunal:
(a) summon any person, other than the attorney, to appear before
the Tribunal to give evidence about the charge and to
produce any documents or articles mentioned in the
summons; or
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Individual Patent Attorneys Chapter 20
Discipline Part 8
Proceedings in Disciplinary Tribunal Division 2
Regulation 20.41
Patents Regulations 1991 155
(b) summon the attorney to appear before the Tribunal:
(i) to produce any documents or articles mentioned in the
summons; and
(ii) to give evidence to identify the documents or articles.
(2) A registered patent attorney summoned under this regulation must
appear in person.
20.41 Offences by persons appearing before Disciplinary Tribunal
(1) A person summoned to appear before the Disciplinary Tribunal
must comply with the summons by:
(a) appearing as required by the summons; and
(b) producing documents or articles as required by the summons;
and
(c) appearing and reporting to the Tribunal, as required.
Penalty: 10 penalty units.
(2) It is a defence to a prosecution for an offence against subregulation
(1) if:
(a) the defendant is prevented or hindered from complying with
the summons by:
(i) a circumstance mentioned in Part 2.3 of the Criminal
Code; or
(ii) any other circumstance that the Disciplinary Tribunal
reasonably considers is an impediment to the defendant
complying with the summons; or
(b) in relation to paragraph (1)(c)—the defendant is excused by
the Tribunal.
Note: A defendant bears an evidential burden in relation to the matters mentioned in subparagraph (2)(a)(i) (see section 13.3 of the Criminal Code).
(3) A person commits an offence if:
(a) the person:
(i) is not a registered patent attorney to whom
subregulation (5) applies; and
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Chapter 20 Individual Patent Attorneys
Part 8 Discipline
Division 2 Proceedings in Disciplinary Tribunal
Regulation 20.41
156 Patents Regulations 1991
(ii) appears as a witness before the Disciplinary Tribunal;
and
(iii) has been paid expenses and allowances; and
(b) the expenses and allowances have been determined by the
Tribunal in accordance with Part 2 of Schedule 8; and
(c) the person refuses:
(i) to be sworn or make an affirmation; or
(ii) to answer a question relevant to the evidence that he or
she was summoned to give.
Penalty: 10 penalty units.
(4) Strict liability applies to the physical element of an offence against
subregulation (3) that is constituted by:
(a) the circumstance mentioned in subparagraph (3)(a)(i); and
(b) the circumstance mentioned in paragraph (3)(b).
Note: For strict liability, see section 6.1 of the Criminal Code.
(5) A person commits an offence if the person:
(a) is a registered patent attorney against whom proceedings
have been instituted; and
(b) is summoned to appear at a hearing before the Disciplinary
Tribunal in respect of those proceedings; and
(c) refuses:
(i) to be sworn or to make an affirmation; or
(ii) to answer a question relevant to the evidence that he or
she was summoned to give.
Penalty: 10 penalty units.
(6) It is a defence for a person referred to in subregulation (3) or (5) to
refuse to answer a question or to produce a document or article, if
the answer to the question, or the document or article, may tend to
prove that he or she has committed an offence against a law of the
Commonwealth or of a State or Territory.
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Individual Patent Attorneys Chapter 20
Discipline Part 8
Proceedings in Disciplinary Tribunal Division 2
Regulation 20.42
Patents Regulations 1991 157
20.42 Protection of person constituting Disciplinary Tribunal,
witnesses etc
(1) A person:
(a) constituting or acting as the Disciplinary Tribunal; or
(b) appointed under subregulation 20.64(2);
has, in the exercise of the powers and the performance of the
functions of that Tribunal under this Part, the same protection and
immunity as a Justice of the High Court.
(2) A member of the Board has, in exercising a power under this Part,
the same protection and immunity as a Justice of the High Court.
(3) A legal practitioner or other person appearing before the
Disciplinary Tribunal has the same protection and immunity as a
barrister has in appearing for a party in proceedings in the High
Court.
(4) Subject to this Part, a person summoned to attend or appearing
before the Disciplinary Tribunal as a witness:
(a) has the same protection; and
(b) is, in addition to the penalties provided by this Part, subject
to the same liabilities;
as a witness in proceedings in the High Court.
20.43 Decision of Disciplinary Tribunal
(1) If the Disciplinary Tribunal has heard a charge of professional
misconduct against a registered patent attorney, it may find the
attorney guilty of professional misconduct.
(2) If the Disciplinary Tribunal has heard a charge of unsatisfactory
professional conduct against a registered patent attorney, it may
find the attorney guilty of unsatisfactory professional conduct.
(3) If the Disciplinary Tribunal has heard a charge that a registered
patent attorney was unqualified at the time of his or her
registration, that Tribunal may find the attorney guilty of being
unqualified at the time of registration.
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Chapter 20 Individual Patent Attorneys
Part 8 Discipline
Division 2 Proceedings in Disciplinary Tribunal
Regulation 20.44
158 Patents Regulations 1991
(4) If the Disciplinary Tribunal has heard a charge that a registered
patent attorney obtained his or her registration by fraud, that
Tribunal may find the attorney guilty of obtaining his or her
registration by fraud.
20.44 Penalties—professional misconduct
(1) Subject to subregulation (2), if the Disciplinary Tribunal finds a
registered patent attorney guilty of professional misconduct, it
may:
(a) cancel the attorney‟s registration as a patent attorney; or
(b) suspend the attorney‟s registration as a patent attorney for a
period of between 6 and 12 months.
(2) The Disciplinary Tribunal may, in addition to cancelling or
suspending a registered patent attorney‟s registration under
subregulation (1), impose conditions on the attorney‟s return to the
Register of Patent Attorneys after the cancellation has been lifted
or the period of suspension has elapsed.
(3) Without limiting subregulation (2), the conditions that the
Disciplinary Tribunal may impose include either or both of the
following:
(a) that the attorney undertake additional continuing professional
education, as specified by the Tribunal;
(b) that the attorney work for a period of time, not exceeding 2
years, under the supervision of a person who has been a
registered patent attorney for a period not less than 5 years.
(4) If a registered patent attorney is also a registered trade marks
attorney, the Disciplinary Tribunal may also cancel or suspend the
attorney‟s registration as a trade marks attorney.
20.45 Penalties—unsatisfactory professional conduct
(1) Subject to subregulation (2), if the Disciplinary Tribunal finds a
registered patent attorney guilty of unsatisfactory professional
conduct, it may:
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Individual Patent Attorneys Chapter 20
Discipline Part 8
Proceedings in Disciplinary Tribunal Division 2
Regulation 20.46
Patents Regulations 1991 159
(a) suspend the attorney‟s registration as a patent attorney for a
period of not more than 12 months; or
(b) administer a public reprimand to the attorney.
(2) The Disciplinary Tribunal may, in addition to suspending a
registered patent attorney‟s registration under subregulation (1),
also impose conditions on the attorney‟s return to the register after
the period of suspension has elapsed.
(3) Without limiting subregulation (2), the conditions that the
Disciplinary Tribunal may impose include either or both of the
following:
(a) that the attorney undertake additional continuing professional
education, as specified by the Tribunal;
(b) that the attorney work for a period of time, not exceeding 2
years, under the supervision of a person who has been a
registered patent attorney for a period of not less than 5
years.
20.46 Finding that attorney was unqualified at time of registration
If the Disciplinary Tribunal has heard a charge against a registered
patent attorney that the attorney was unqualified at the time of his
or her registration and finds the charge proved, that Tribunal may:
(a) if the attorney has, since that time, obtained that qualification
or the qualification is no longer required for registration—
reprimand the attorney; or
(b) in any other case—cancel his or her registration.
20.47 Finding that registration obtained by fraud
If the Disciplinary Tribunal finds that a registered patent attorney
obtained his or her registration by fraud, that Tribunal must cancel
the registration of the attorney.
20.48 Matters that may be considered in determining penalties
In deciding what to do about a registered patent attorney under
regulation 20.44 or 20.45, the Disciplinary Tribunal may take into
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Chapter 20 Individual Patent Attorneys
Part 8 Discipline
Division 2 Proceedings in Disciplinary Tribunal
Regulation 20.49
160 Patents Regulations 1991
account the findings about the conduct of the attorney in any other
proceedings:
(a) brought before that Tribunal; or
(b) brought before the Patent Attorneys Disciplinary Tribunal
under the former attorneys regulations.
20.49 Findings of Disciplinary Tribunal
(1) If the Disciplinary Tribunal reprimands a registered patent
attorney, or suspends or cancels the attorney‟s registration, the
Tribunal must give a written notice of the finding of the Tribunal
against the attorney that sets out particulars of the reprimand,
suspension or cancellation to:
(a) the attorney; and
(b) the Board; and
(c) the Designated Manager.
(2) If the registration of a registered patent attorney is suspended, the
Designated Manager must note the suspension and its duration in
the Register of Patent Attorneys.
(3) If the registration of a registered patent attorney is cancelled, the
Designated Manager must remove the name of the attorney from
the Register of Patent Attorneys.
(4) If the Disciplinary Tribunal does not find a charge proved, that
Tribunal must notify the registered patent attorney and the Board
accordingly.
20.50 Notification and publication of decisions of Disciplinary
Tribunal
The Disciplinary Tribunal must, within 14 days after making a
decision under regulation 20.44, 20.45, 20.46 or 20.47:
(a) prepare a written statement that:
(i) sets out the decision of the Tribunal; and
(ii) sets out the reasons for the decision; and
(iii) sets out the findings on any material questions of fact;
and
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Individual Patent Attorneys Chapter 20
Discipline Part 8
Proceedings in Disciplinary Tribunal Division 2
Regulation 20.51
Patents Regulations 1991 161
(iv) refers to evidence or other material on which the
findings of fact are based; and
(b) give:
(i) the registered patent attorney who is the subject of the
notice; and
(ii) the Board;
a copy of the statement referred to in paragraph (a); and
(c) publish, in the Official Journal, a written statement that sets
out the decision of the Tribunal; and
(d) arrange for the publication of a copy of the statement referred
to in paragraph (a).
20.51 Completion of outstanding business
(1) If the registration of a former attorney has been cancelled under
paragraph 20.44(1)(a), the Disciplinary Tribunal may appoint a
registered patent attorney to carry on the practice of the former
attorney until all outstanding matters are disposed of.
(2) If the registration of the former attorney has been suspended under
paragraph 20.44(1)(b) or 20.45(1)(a), the Disciplinary Tribunal
may appoint a registered patent attorney to carry on the practice of
the former attorney for the period of the suspension or for a
specified period, not longer than the period of suspension.
(3) The Disciplinary Tribunal must not appoint a registered patent
attorney under subregulation (1) or (2) unless the registered patent
attorney consents to the appointment.
(4) This regulation does not allow a registered patent attorney to act as
a registered patent attorney on behalf of a person without the
consent of the person.
20.52 Former attorney may be required to provide assistance
(1) A registered patent attorney appointed to carry on the practice of a
former attorney may give a written notice requiring the former
attorney to make available to the attorney so appointed:
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Chapter 20 Individual Patent Attorneys
Part 8 Discipline
Division 2 Proceedings in Disciplinary Tribunal
Regulation 20.52
162 Patents Regulations 1991
(a) any information about the practice that he or she may
reasonably require; or
(b) any books, accounts or other documents concerning the
practice that he or she may reasonably require; or
(c) any moneys held by the former attorney:
(i) on behalf of a client; or
(ii) that have been paid by a client in respect of services not
yet performed for the client.
(2) A former attorney who has been given a notice under subregulation
(1) must not refuse to comply with a requirement in the notice.
Penalty: 5 penalty units.
(3) It is a defence to a prosecution for an offence against subregulation
(2) if the former attorney is prevented or hindered from complying
with a requirement in the notice by:
(a) a circumstance mentioned in Part 2.3 of the Criminal Code;
or
(b) any other circumstance that the Disciplinary Tribunal
reasonably considers is an impediment to the defendant
complying with the summons.
Note: A defendant bears an evidential burden in relation to the question of whether he or she has a reasonable excuse (see section 13.3 of the Criminal Code).
Federal Register of Legislative Instruments F2013C00202
Individual Patent Attorneys Chapter 20
Rights of registered patent attorneys Part 9
Regulation 20.53
Patents Regulations 1991 163
Part 9—Rights of registered patent attorneys
20.53 Lien
A registered patent attorney has the same right of lien over
documents and property of a client as a solicitor.
Federal Register of Legislative Instruments F2013C00202
Chapter 20 Individual Patent Attorneys
Part 10 Administration
Division 1 Professional Standards Board for Patent and Trade Marks Attorneys
Regulation 20.54
164 Patents Regulations 1991
Part 10—Administration
Division 1—Professional Standards Board for Patent and
Trade Marks Attorneys
20.54 Constitution of Board (Act s 227A)
The Board is constituted by:
(a) the Chairperson, appointed by the Minister; and
(b) either:
(i) the person holding, or carrying out the duties of, the
office of the Director-General of the Division of the
Department known as IP Australia; or
(ii) the nominee of that person; and
(c) at least 2 other suitably qualified members, appointed by the
Minister.
20.55 Term of office of Board members
The Minister may appoint a member of the Board for a term of up
to 3 years.
20.56 Resignation and removal of members from Board
(1) A member of the Board may resign by giving the Minister his or
her resignation in writing.
(2) The Minister may remove the Chairperson of the Board if the
Chairperson:
(a) has been absent from 3 consecutive meetings of the Board
without leave given by the Board under regulation 20.60; or
(b) is convicted in Australia of an offence punishable by
imprisonment for at least 12 months; or
(c) cannot perform his or her duties as Chairperson of the Board;
or
Federal Register of Legislative Instruments F2013C00202
Individual Patent Attorneys Chapter 20
Administration Part 10
Professional Standards Board for Patent and Trade Marks Attorneys Division 1
Regulation 20.57
Patents Regulations 1991 165
(d) has behaved in an offensive or disorderly way, or in a way
that is likely to adversely affect the Board‟s reputation; or
(e) has carried out his or her duties as Chairperson of the Board
inefficiently; or
(f) becomes bankrupt; or
(g) applies to take the benefit of a law for the relief of bankrupt
or insolvent debtors; or
(h) has entered into a debt agreement under Part IX of the
Bankruptcy Act 1966; or
(i) compounds with his or her creditors or assigns his or her
salary and allowances for their benefit.
(3) The Minister may remove a member of the Board if the member:
(a) has been absent from 3 consecutive meetings of the Board
without leave given by the Chairperson; or
(b) is convicted in Australia of an offence punishable by
imprisonment for at least 12 months; or
(c) cannot perform his or her duties as a member of the Board; or
(d) has behaved in an offensive or disorderly way, or in a way
that is likely to adversely affect the Board‟s reputation; or
(e) has carried out his or her duties as a member of the Board
inefficiently; or
(f) becomes bankrupt; or
(g) applies to take the benefit of a law for the relief of bankrupt
or insolvent debtors; or
(h) has entered into a debt agreement under Part IX of the
Bankruptcy Act 1966; or
(i) compounds with his or her creditors or assigns his or her
salary and allowances for their benefit.
20.57 Meetings of Board
(1) The Board must hold as many meetings as are necessary for the
performance of its functions.
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Chapter 20 Individual Patent Attorneys
Part 10 Administration
Division 1 Professional Standards Board for Patent and Trade Marks Attorneys
Regulation 20.58
166 Patents Regulations 1991
(2) The Chairperson may, at any time, by notice in writing to the
members, call a meeting of the Board at the time and place
specified in the notice.
20.58 Member presiding at meetings of Board
(1) The Chairperson must preside at all meetings of the Board at which
he or she is present.
(2) In the absence of the Chairperson from a meeting, the members
present must appoint one of the members present at the meeting to
preside.
(3) The Chairperson or a member who presides at a meeting has a
deliberative vote and, in the event of an equality of votes, also has
a casting vote.
20.59 Quorum for Board meetings
At a meeting of the Board, a quorum is formed by the majority of
the members of the Board.
20.60 Absence of Chairperson from meeting—leave from Board
If the Chairperson is absent from a meeting of the Board, the
members present must decide whether to give leave to the
Chairperson.
Federal Register of Legislative Instruments F2013C00202
Individual Patent Attorneys Chapter 20
Administration Part 10
Patent and Trade Marks Attorneys Disciplinary Tribunal Division 2
Regulation 20.61
Patents Regulations 1991 167
Division 2—Patent and Trade Marks Attorneys
Disciplinary Tribunal
20.61 Establishment of Disciplinary Tribunal
The Patent and Trade Marks Attorneys Disciplinary Tribunal is
established.
20.62 Disciplinary Tribunal—substantive appointments
(1) The Minister may, in writing, appoint a person to constitute the
Disciplinary Tribunal.
(2) A copy of the instrument of appointment must be published in the
Official Journal.
(3) A person so appointed holds the office for the period specified in
the instrument.
(4) A person so appointed may resign in writing given to the Minister.
(5) The Minister may remove a person so appointed from office for
inefficiency, misbehaviour or incapacity.
(6) If a person so appointed:
(a) becomes bankrupt, applies to take the benefit of a law for the
relief of bankrupt or insolvent debtors, compounds with his
or her creditors or makes an assignment of his or her
remuneration for their benefit; or
(b) is convicted in Australia of an offence punishable by
imprisonment for 12 months or longer; or
(c) fails, without reasonable excuse, to disclose a conflict of
interest in accordance with regulation 20.64;
the Minister must remove the person from office.
20.63 Disciplinary Tribunal—acting appointments
(1) Subject to subregulation (2), the Minister may, in writing, appoint
a person to act as the Disciplinary Tribunal:
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Chapter 20 Individual Patent Attorneys
Part 10 Administration
Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal
Regulation 20.64
168 Patents Regulations 1991
(a) during a vacancy in the office, whether or not an appointment
has been previously made to the office; or
(b) during any period, or during all periods, when the holder of
the office is, or is expected to be, absent from duty or from
Australia or is, for any reason, unable to perform the
functions of the office.
(2) A person appointed to act during a vacancy must not continue to
act for more than 12 months.
(3) A copy of the instrument of appointment must be published in the
Official Journal.
(4) The Minister:
(a) may terminate the appointment at any time; and
(b) must terminate the appointment if the person appointed fails,
without reasonable excuse, to disclose a conflict of interest in
accordance with regulation 20.64.
(5) Anything done by or in relation to a person purporting to act under
the appointment is not invalid only because:
(a) the need for the appointment had not arisen; or
(b) there was a defect or irregularity in connection with the
appointment; or
(c) the appointment had ceased to have effect; or
(d) the need to act had not arisen or had ceased.
20.64 Disclosure of interest
(1) If a person constituting, or acting as, the Disciplinary Tribunal has
or acquires an interest that could conflict with the proper
performance of his or her functions in relation to proceedings he or
she is to hear, the person:
(a) must tell the parties to the proceedings about the interest; and
(b) must not perform those functions without the consent of the
parties.
(2) If such a person is unable to perform his or her functions because
of a conflict of interest, the Minister may in writing appoint
Federal Register of Legislative Instruments F2013C00202
Individual Patent Attorneys Chapter 20
Administration Part 10
Patent and Trade Marks Attorneys Disciplinary Tribunal Division 2
Regulation 20.65
Patents Regulations 1991 169
another person to be the Disciplinary Tribunal for the purpose of
conducting or completing those proceedings.
(3) A copy of the instrument of appointment must be published in the
Official Journal.
(4) A person so appointed may exercise all the powers and must
perform all of the functions of the Disciplinary Tribunal in relation
to those proceedings.
20.65 Qualifications for appointment to, or acting as, Disciplinary
Tribunal
A person is not qualified to be appointed under subregulation
20.62(1) or 20.63(1) or 20.64(2) unless he or she is enrolled, and
has for not less than 7 years been enrolled, as a legal practitioner.
Federal Register of Legislative Instruments F2013C00202
Chapter 20A Incorporated Patent Attorney
Part 1 Introduction
Regulation 20A.1
170 Patents Regulations 1991
Chapter 20A—Incorporated Patent Attorney
Part 1—Introduction
20A.1 Application of Chapter 20A
This Chapter applies to:
(a) an incorporated patent attorney; and
(b) a company applying for registration as an incorporated patent
attorney.
20A.2 Definitions
In this Chapter:
annual registration fee means the fee set out in item 109 or 110 of
Schedule 7.
professional indemnity insurance means insurance for claims that
may be made against the company in relation to its business,
practices or acts as an incorporated patent attorney.
Federal Register of Legislative Instruments F2013C00202
Incorporated Patent Attorney Chapter 20A
Obtaining registration for first time Part 2
Regulation 20A.3
Patents Regulations 1991 171
Part 2—Obtaining registration for first time
20A.3 Form of application
An application for registration as an incorporated patent attorney
must:
(a) be in writing, in a form approved by the Designated
Manager; and
(b) be accompanied by the following evidence and material:
(i) the name of each patent attorney director of the
company;
(ii) evidence that the company is a registered company
under the Corporations Act 2001;
(iii) evidence that the company has adequate and appropriate
professional indemnity insurance; and
(c) be accompanied by the fee set out in item 108 of Schedule 7.
20A.4 Certificate of registration
If the Designated Manager registers a company as an incorporated
patent attorney, the Designated Manager must give the company a
certificate of registration as soon as practicable.
Federal Register of Legislative Instruments F2013C00202
Chapter 20A Incorporated Patent Attorney
Part 3 Maintaining registration
Regulation 20A.5
172 Patents Regulations 1991
Part 3—Maintaining registration
20A.5 Requirements for remaining on Register of Patent Attorneys
(1) To remain on the Register of Patent Attorneys, a registered
incorporated patent attorney must, for every year of registration,
pay the annual registration fee.
(2) The Designated Manager must, not later than 1 June in each year,
give to each registered incorporated patent attorney notice of the
fee that is payable.
(3) The annual registration fee is payable on 1 July each year by a
registered incorporated patent attorney:
(a) whose name is on the Register of Patent Attorneys on that
day; and
(b) that has not asked the Designated Manager, under
regulation 20A.6, to remove its name from the Register of
Patent Attorneys.
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Incorporated Patent Attorney Chapter 20A
Removal from Register of Patent Attorneys Part 4
Regulation 20A.6
Patents Regulations 1991 173
Part 4—Removal from Register of Patent Attorneys
20A.6 Voluntary removal of name from Register of Patent Attorneys
If a patent attorney director of a registered incorporated patent
attorney asks the Designated Manager, in writing, to remove the
name of the registered incorporated patent attorney from the
Register of Patent Attorneys, the Designated Manager must
comply with the request.
20A.7 Failure to pay annual registration fee
If a registered incorporated patent attorney does not pay the annual
registration fee by 31 July in the year the fee is payable, the
Designated Manager must:
(a) remove the name of the incorporated patent attorney from the
Register of Patent Attorneys; and
(b) notify, in writing, the attorney of the removal.
20A.8 Failure to maintain professional indemnity insurance
(1) If an incorporated patent attorney does not maintain adequate and
appropriate professional indemnity insurance, the Designated
Manager may remove the name of the attorney from the Register
of Patent Attorneys.
(2) If the Designated Manager removes the name of the incorporated
patent attorney from the Register of Patent Attorneys, the
Designated Manager must notify, in writing, the attorney of the
removal.
Federal Register of Legislative Instruments F2013C00202
Chapter 20A Incorporated Patent Attorney
Part 5 Discipline
Division 1 General
Regulation 20A.9
174 Patents Regulations 1991
Part 5—Discipline
Division 1—General
20A.9 Definitions
In this Part:
former attorney means a person whose registration as an
incorporated patent attorney has been suspended or cancelled under
this Part.
20A.10 Board may apply for cancellation or suspension of
incorporated patent attorney’s registration
(1) The Board may apply to the Disciplinary Tribunal to cancel or
suspend an incorporated patent attorney‟s registration if:
(a) a registered patent attorney who is, or was, an employee or
officer of the incorporated patent attorney is found guilty of
professional misconduct under subregulation 20.43(1); and
(b) the professional misconduct occurred when the registered
patent attorney was an employee or officer of the
incorporated patent attorney; and
(c) The Disciplinary Tribunal has cancelled or suspended the
patent attorney‟s registration under subregulation 20.44(1).
(2) Before applying to the Disciplinary Tribunal, the Board may
request an incorporated patent attorney to provide the Board with
information relating to the professional misconduct.
(3) In deciding whether to apply to the Disciplinary Tribunal, the
Board may consider the following:
(a) the professional misconduct engaged in by the registered
patent attorney;
(b) the behaviour of the incorporated patent attorney‟s officers
and employees;
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Incorporated Patent Attorney Chapter 20A
Discipline Part 5
General Division 1
Regulation 20A.10
Patents Regulations 1991 175
(c) whether officers and employees of the incorporated patent
attorney have complied with the Code of Conduct;
(d) any information provided under subregulation (2).
(4) An application by the Board to the Disciplinary Tribunal must:
(a) be in writing; and
(b) set out the reasons why the Board considers the incorporated
patent attorney‟s registration should be cancelled or
suspended.
(5) The Board must give the incorporated patent attorney, as soon as
practicable after the application is made to the Disciplinary
Tribunal, a copy of the application.
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Chapter 20A Incorporated Patent Attorney
Part 5 Discipline
Division 2 Proceedings in Disciplinary Tribunal
Regulation 20A.11
176 Patents Regulations 1991
Division 2—Proceedings in Disciplinary Tribunal
20A.11 Procedure of Disciplinary Tribunal
(1) The Disciplinary Tribunal may determine procedure that is not set
out in this Division.
(2) Proceedings before the Tribunal are to be conducted quickly and
informally, while allowing for proper consideration of the matter
before the Tribunal.
(3) The Tribunal is not bound by the rules of evidence but may be
informed on any matter in the manner it chooses.
(4) The Tribunal may take evidence on oath or on affirmation and, for
that purpose, may administer an oath or affirmation.
20A.12 Notification of hearing
(1) The Disciplinary Tribunal must, as soon as practicable after
receiving an application under regulation 20A.10, fix a day, time
and place to hear the application.
(2) The Disciplinary Tribunal must, as soon as practicable, notify the
incorporated patent attorney and the Board of that day, time and
place.
(3) The day of hearing must not be less than 21 days after the day the
incorporated patent attorney is notified of the day, time and place
for the hearing.
20A.13 Hearings to be public except in special circumstances
(1) A hearing before the Disciplinary Tribunal must be in public.
(2) However, if the Disciplinary Tribunal is reasonably satisfied that it
is desirable to do so, in the public interest or because of the
confidential nature of any evidence or matter, the Tribunal may:
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Discipline Part 5
Proceedings in Disciplinary Tribunal Division 2
Regulation 20A.14
Patents Regulations 1991 177
(a) direct that a hearing, or a part of a hearing, is to take place in
private and give directions as to the persons who may be
present; and
(b) give directions restricting or prohibiting the publication or
disclosure of:
(i) evidence given before the Tribunal, whether in public or
in private; or
(ii) matters contained in documents lodged with the
Tribunal or received in evidence by the Tribunal.
(3) A person commits an offence if the person:
(a) is given a direction under paragraph (2)(a) or (b); and
(b) does not comply with the direction.
Penalty: 5 penalty units.
20A.14 Representation before Disciplinary Tribunal
(1) At the hearing before the Disciplinary Tribunal, the incorporated
patent attorney must be represented by a patent attorney director of
the incorporated patent attorney or a legal practitioner.
(2) A party to proceedings before the Disciplinary Tribunal, or a
representative of the party, may request the Tribunal to summon
witnesses.
20A.15 Summoning of witnesses
(1) For the purpose of the hearing before the Disciplinary Tribunal, the
Tribunal may, by instrument in writing signed by the person
constituting the Tribunal:
(a) summon a person to appear before the Tribunal to give
evidence and to produce any documents or articles mentioned
in the summons; or
(b) summon a patent attorney director of the incorporated patent
attorney to appear before the Tribunal:
(i) to produce any documents or articles mentioned in the
summons; and
(ii) to give evidence to identify the documents or articles.
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Chapter 20A Incorporated Patent Attorney
Part 5 Discipline
Division 2 Proceedings in Disciplinary Tribunal
Regulation 20A.16
178 Patents Regulations 1991
(2) A patent attorney director who is summoned must appear in
person.
20A.16 Offences by persons appearing before Disciplinary Tribunal
(1) A person commits an offence if the person:
(a) is summoned to appear before the Disciplinary Tribunal; and
(b) does not comply with the summons by:
(i) appearing as required by the summons; and
(ii) producing documents or articles as required by the
summons; and
(iii) appearing and reporting to the Tribunal, as required.
Penalty: 10 penalty units.
(2) It is a defence to a prosecution for an offence against subregulation
(1) if:
(a) the defendant is prevented or hindered from complying with
the summons by:
(i) a circumstance mentioned in Part 2.3 of the Criminal
Code; or
(ii) any other circumstance that the Disciplinary Tribunal
reasonably considers is an impediment to the defendant
complying with the summons; or
(b) in relation to paragraph (1)(c)—the defendant is excused by
the Disciplinary Tribunal.
Note: A defendant bears an evidential burden in relation to the matters mentioned in subparagraph (2)(a)(i)(see section 13.3 of the Criminal Code).
(3) A person commits an offence if:
(a) the person:
(i) is not a patent attorney director to whom subregulation
(5) applies; and
(ii) appears as a witness before the Disciplinary Tribunal;
and
(iii) has been paid expenses and allowances; and
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Incorporated Patent Attorney Chapter 20A
Discipline Part 5
Proceedings in Disciplinary Tribunal Division 2
Regulation 20A.17
Patents Regulations 1991 179
(b) the expenses and allowances have been determined by the
Disciplinary Tribunal in accordance with Part 2 of
Schedule 8; and
(c) the person refuses:
(i) to be sworn or make an affirmation; or
(ii) to answer a question relevant to the evidence that the
person was summoned to give.
Penalty: 10 penalty units.
(4) Strict liability applies to the physical element of an offence against
subregulation (3) that is constituted by:
(a) the circumstance mentioned in subparagraph (3)(a)(i); and
(b) the circumstance mentioned in paragraph (3)(b).
Note: For strict liability, see section 6.1 of the Criminal Code.
(5) A person commits an offence if the person:
(a) is a patent attorney director who has been summoned to
appear at a hearing before the Disciplinary Tribunal; and
(b) refuses:
(i) to be sworn or to make an affirmation; or
(ii) to answer a question relevant to the evidence that the
person was summoned to give.
Penalty: 10 penalty units.
(6) It is a defence to a prosecution for an offence against subregulation
(3) or (5) if a person mentioned in the subregulation refused to
answer a question or to produce a document or article because the
answer to the question, or the document or article, may tend to
prove that the person has committed an offence against a law of the
Commonwealth or of a State or Territory.
20A.17 Protection of person constituting Disciplinary Tribunal,
witnesses etc.
(1) A person:
(a) constituting the Disciplinary Tribunal; or
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Chapter 20A Incorporated Patent Attorney
Part 5 Discipline
Division 2 Proceedings in Disciplinary Tribunal
Regulation 20A.18
180 Patents Regulations 1991
(b) appointed under subregulation 20.64(2);
has, in the exercise of the powers and the performance of the
functions of the Tribunal under this Part, the same protection and
immunity as a Justice of the High Court.
(2) A member of the Board has, in exercising a power under this Part,
the same protection and immunity as a Justice of the High Court.
(3) A legal practitioner or other person appearing before the
Disciplinary Tribunal has the same protection and immunity as a
barrister has in appearing for a party in proceedings in the High
Court.
(4) A person summoned to attend or appearing before the Disciplinary
Tribunal as a witness:
(a) has the same protection; and
(b) is, in addition to the penalties provided by this Part, subject
to the same liabilities;
as a witness in proceedings in the High Court.
20A.18 Decision of Disciplinary Tribunal
(1) After hearing an application for the cancellation or suspension of
the incorporated patent attorney‟s registration, the Disciplinary
Tribunal may:
(a) cancel the attorney‟s registration as an incorporated patent
attorney; or
(b) suspend the attorney‟s registration as an incorporated patent
attorney.
(2) The Disciplinary Tribunal may also impose conditions on the
attorney‟s return to the Register of Patent Attorneys after the
cancellation has been lifted or the period of suspension has
elapsed.
(3) In making a decision under this regulation, the Disciplinary
Tribunal may consider the following:
(a) the professional misconduct engaged in;
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Incorporated Patent Attorney Chapter 20A
Discipline Part 5
Proceedings in Disciplinary Tribunal Division 2
Regulation 20A.19
Patents Regulations 1991 181
(b) the behaviour of the incorporated patent attorney‟s officers
and employees;
(c) whether officers and employees of the incorporated patent
attorney had complied with the Code of Conduct;
(d) findings made about the conduct of the incorporated patent
attorney in any other proceedings brought before the
Disciplinary Tribunal;
(e) findings made about the conduct of the incorporated patent
attorney‟s employees and officers in any other proceedings
brought before the Disciplinary Tribunal;
(f) if the incorporated patent attorney failed, without reasonable
excuse, to provide information requested by the Board under
subregulation 20A.10(2)—the incorporate patent attorney‟s
failure to provide requested information.
20A.19 Notification and publication of decisions of Disciplinary
Tribunal
(1) The Disciplinary Tribunal must, within 14 days after making a
decision under regulation 20A.18:
(a) prepare a written statement that states:
(i) the decision of the Tribunal; and
(ii) the reasons for the decision; and
(iii) the findings on any material questions of fact; and
(iv) evidence or other material on which the findings of fact
are based; and
(b) give a copy of the statement to:
(i) the incorporated patent attorney who is the subject of
the decision; and
(ii) the Board; and
(iii) the Designated Manager; and
(c) publish, in the Official Journal, a written statement that sets
out the decision of the Tribunal.
(2) If the registration of an incorporated patent attorney is suspended,
the Designated Manager must note the suspension and its duration
in the Register of Patent Attorneys.
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Chapter 20A Incorporated Patent Attorney
Part 5 Discipline
Division 2 Proceedings in Disciplinary Tribunal
Regulation 20A.20
182 Patents Regulations 1991
(3) If the registration of an incorporated patent attorney is cancelled,
the Designated Manager must remove the name of the incorporated
patent attorney from the Register of Patent Attorneys.
20A.20 Completion of outstanding business
(1) If the Disciplinary Tribunal cancels the registration of an
incorporated patent attorney, the Tribunal may appoint a registered
patent attorney to complete the unfinished patents work of the
former attorney.
(2) If the Disciplinary Tribunal suspends the registration of an
incorporated patent attorney, the Tribunal may appoint a registered
patent attorney to carry on the former attorney‟s patents work for:
(a) the period of the suspension; or
(b) a specified period, not longer than the period of suspension.
(3) The Disciplinary Tribunal must not appoint a registered patent
attorney under subregulation (1) or (2) unless the registered patent
attorney consents to the appointment.
(4) A registered patent attorney appointed under subregulation (1) or
(2) may only act as a registered patent attorney for a client of the
former attorney if the client has given consent for the appointed
attorney to act.
20A.21 Former attorney may be required to provide assistance
(1) A registered patent attorney appointed under subregulation
20A.20(1) or (2) may, by written notice, request the former
attorney to make available the following:
(a) information about the patents work that the appointed
attorney may reasonably require;
(b) books, accounts or other documents about the patents work
that the appointed attorney may reasonably require;
(c) money held by the former attorney:
(i) on behalf of a client; or
(ii) that has been paid by a client in relation to services not
yet performed for the client.
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Incorporated Patent Attorney Chapter 20A
Discipline Part 5
Proceedings in Disciplinary Tribunal Division 2
Regulation 20A.21
Patents Regulations 1991 183
(2) A person commits an offence if the person:
(a) is a former attorney; and
(b) is given a notice under subregulation (1); and
(c) fails to comply with the notice.
Penalty: 5 penalty units.
(3) It is a defence to a prosecution for an offence against subregulation
(2) if the former attorney is prevented or hindered from complying
with a request in the notice by:
(a) a circumstance mentioned in Part 2.3 of the Criminal Code;
or
(b) any other circumstance that the Disciplinary Tribunal
reasonably considers is an impediment to the defendant
complying with the summons.
Note: A defendant bears an evidential burden in relation to the question of whether he or she has a reasonable excuse (see section 13.3 of the Criminal Code).
Federal Register of Legislative Instruments F2013C00202
Chapter 20A Incorporated Patent Attorney
Part 6 Restoring attorney‟s name to Register of Patent Attorneys
Regulation 20A.22
184 Patents Regulations 1991
Part 6—Restoring attorney’s name to Register of
Patent Attorneys
20A.22 Restoring name to Register of Patent Attorneys
(1) This regulation sets out circumstances in which the Designated
Manager must restore to the Register of Patent Attorneys the name
of an incorporated patent attorney that has been removed under:
(a) regulation 20A.6, 20A.7 or 20A.8; or
(b) subsection 201B(7) of the Act.
(2) The Designated Manager must restore the name if:
(a) the attorney requests the Designated Manager, in the form
approved by the Designated Manager, to restore the name;
and
(b) the request includes:
(i) the name of each patent attorney director of the
company; and
(ii) evidence that the company is a registered company
under the Corporations Act 2001; and
(ii) evidence that the company has adequate and appropriate
professional indemnity insurance; and
(c) the request is made:
(i) if the name was removed under regulation 20A.7—on
or before 1 September of the year that the name was
removed from the Register of Patent Attorneys, or
within a further period that the Designated Manager
allows; or
(ii) in any other case—within 3 years after the name was
removed from the Register of Patent Attorneys; and
(d) the attorney pays:
(i) the annual registration fee for the year the reinstatement
is made; and
(ii) the fee mentioned in item 111 of Schedule 7.
Federal Register of Legislative Instruments F2013C00202
Administration Chapter 21
Regulation 21.1
Patents Regulations 1991 185
Chapter 21—Administration
21.1 Patent Office and sub-offices
The hours of business of the Patent Office and each sub-office of
the Patent Office are from 9 am to 5 pm on each day other than:
(a) a Saturday or a Sunday; or
(b) a public holiday:
(i) where the Office or sub-office is located; or
(ii) for the purposes of the Australian Public Service in that
place.
21.2 Employees to whom Commissioner may delegate (Act s 209(1))
For subsection 209(1) of the Act, the Commissioner may delegate
all or any of the Commissioner‟s powers or functions under the
Act, except the powers and functions under paragraphs 210(a) and
(c) of the Act, to an employee of the Patent Office:
(a) holding, or performing the duties of, the position of
Examiner of Patents; or
(b) employed at any of the following levels:
(i) Executive level 1 or 2;
(ii) APS level 2, 3, 4, 5 or 6.
Federal Register of Legislative Instruments F2013C00202
Chapter 22 Miscellaneous
Part 1 Fees and costs
Division 1 Fees
Regulation 22.1
186 Patents Regulations 1991
Chapter 22—Miscellaneous
Part 1—Fees and costs
Division 1—Fees
22.1 Fees generally
(1) A fee must be paid in such a manner as the Commissioner
reasonably directs.
(2) If the Commissioner has directed that a complete application is to
be treated as a provisional application, the amount by which the fee
payable on the filing of a complete application exceeds the fee
payable on the filing of a provisional application must be credited
towards the payment of the fee payable on the next filing of a
complete application associated with the provisional application by
the applicant concerned.
22.2 General fees
(1) For the purposes of subsection 227(1) of the Act, there is payable
to the Commissioner in respect of a matter specified in an item of
Part 1 or 2 in Schedule 7 a fee of the amount specified in that item.
(2) The fees are payable as follows:
(a) the fee for filing an application, request or other document is
payable when the application, request or other document is
filed;
(b) the fee for appearing and being heard at an oral hearing is
payable:
(i) for the first day—immediately before the hearing; and
(ii) for each day or part of a day after the first day—
immediately after the hearing;
(ba) the fee for a hearing on the basis of written submissions only
is payable when the written submissions are filed;
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Miscellaneous Chapter 22
Fees and costs Part 1
Fees Division 1
Regulation 22.2
Patents Regulations 1991 187
(c) the fee for making a representation mentioned in item 219 or
220 of Schedule 7 is payable when the representation is
made;
(d) the fee for acceptance of a patent request and complete
specification, under section 49 of the Act, is payable when
the application is accepted;
(e) if the Commissioner decides to conduct a search as part of
the examination of a patent request and complete
specification for a standard patent, the fee is payable when
the Commissioner notifies the applicant that the fee is
payable.
(3) If an item specifies the person by whom a fee is payable, the fee is
payable by that person.
(4) For paragraph 29A(5)(b) of the Act:
(a) if a PCT application is to be treated as an application for a
standard patent:
(i) the fee specified in item 214A of Schedule 7 is payable
in respect of the application for a standard patent; and
(ii) if the PCT application was filed in the Patent Office as a
receiving office for the purposes of the PCT—the fees
specified in item 301, and items 401 to 404, of
Schedule 7 are payable in respect of the PCT
application; and
(b) the fee specified in item 203 of Schedule 7 is not payable in
respect of a PCT application.
(5) The fees specified in item 213 of Schedule 7 do not apply to:
(a) an application for a standard patent filed before the
commencement of this subregulation; or
(b) a PCT application that meets the requirements of
subsection 89(3) of the Act before the commencement of this
subregulation.
(6) Paragraph 211(a) of Schedule 7, as in force on 1 July 2012, applies
to:
(a) a patent:
(i) that has a date of patent of 1 July 2008 or later; and
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Chapter 22 Miscellaneous
Part 1 Fees and costs
Division 1 Fees
Regulation 22.2AA
188 Patents Regulations 1991
(ii) the fourth anniversary of which falls on or after
commencement; and
(b) a patent application:
(i) filed on or after 1 July 2008; and
(ii) the fourth anniversary of which falls on or after
commencement.
(7) Paragraph 231(a) of Schedule 7, as in force on 1 July 2012, does
not apply to a person in relation to a hearing held after the
commencement of this subregulation if:
(a) the person requests the hearing, and pays the fee mentioned
in item 230 of Schedule 7, before the commencement of this
subregulation; or
(b) the person pays the fee mentioned in paragraph 231(a) of
Schedule 7 for the hearing before the commencement of this
subregulation; or
(c) the hearing relates to a representation or request by the
person for which the person paid the fee mentioned in
item 219, 220 or 229 of Schedule 7 before the
commencement of this subregulation.
(8) Paragraph 231(b) of Schedule 7, as in force on 1 July 2012, does
not apply to a person in relation to a hearing held after the
commencement of this subregulation if the person pays the fee
mentioned in paragraph 231(b) of Schedule 7 for the hearing
before the commencement of this subregulation.
22.2AA Approved means
(1) The Commissioner may, by notice published by the Commissioner,
specify one or more means for doing an action mentioned in
Schedule 7 or for paying a fee.
Examples of actions:
1 Filing a request.
2 Filing an application.
(2) The means may be an electronic means or any other means.
Note: The means become approved means when they are published.
Federal Register of Legislative Instruments F2013C00202
Miscellaneous Chapter 22
Fees and costs Part 1
Fees Division 1
Regulation 22.2A
Patents Regulations 1991 189
22.2A Failure to pay: patent attorneys fees
The Designated Manager or the Board must not process an
application mentioned in Part 1 of Schedule 7 if the fee payable for
the application has not been paid.
22.2B Failure to pay: filing fees for patent requests
(1) This regulation applies if:
(a) a fee mentioned in item 201, 202, 203 or 206 of Schedule 7 is
not paid when it is payable; and
(b) within 1 month after the fee is payable, the Commissioner
invites the person by whom the fee is payable to pay the fee
within 2 months after the date of the invitation; and
(c) the fee is not paid within the 2 month period.
(2) The application lapses, or the patent ceases, at the end of the 2
month period.
22.2C Failure to pay: certain other filing fees etc
(1) This regulation applies if:
(a) a fee mentioned in item 204 or 205, paragraph (a) of
item 208, or item 209, 210, 214, 215, 216, 217, 218, 219,
220, 222, 224, 225, 226, 227, 228, 236, 237, 238 or 239 of
Schedule 7 is not paid when it is payable; and
(b) within 1 month after the fee is payable, the Commissioner
invites the person by whom the fee is payable to pay the fee
within 1 month after the date of the invitation; and
(c) the fee is not paid within the 1 month period.
(2) The application, representation, request or other relevant document
is taken not to have been filed or made.
22.2D Failure to pay: fees payable by patentee for requests under s
101A(b) of the Act
(1) Subregulation (2) applies if:
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Chapter 22 Miscellaneous
Part 1 Fees and costs
Division 1 Fees
Regulation 22.2EA
190 Patents Regulations 1991
(a) a fee mentioned in item 207 of Schedule 7 is not paid when it
is payable; and
(b) within 1 month after the fee is payable, the Commissioner
invites the patentee to pay the fee within 1 month after the
date of the invitation; and
(c) the fee is not paid within the 1 month period.
(2) The innovation patent ceases at the end of the 1 month period.
(3) Subregulation (4) applies if:
(a) a fee mentioned in paragraph (b) of item 208 of Schedule 7
(the paragraph (b) fee) is not paid when it is payable; and
(b) within 1 month after the fee mentioned in paragraph (a) of
that item is paid for the request to which the paragraph (b)
fee relates, the Commissioner invites the patentee to pay the
paragraph (b) fee within 2 months after the date of the
invitation; and
(c) the fee is not paid within the 2 month period.
(4) The innovation patent ceases at the end of the 2 month period.
22.2EA Failure to pay: fee for grant of leave to amend specification
(person invited to pay)
(1) This regulation applies if:
(a) a fee mentioned in item 222A of Schedule 7 relating to a
grant of leave to amend a complete specification is not paid
when it is payable; and
(b) within 1 month after the fee first becomes payable, the
Commissioner invites the person by whom the fee is payable
to pay the fee within 2 months after the date on which notice
of the grant of leave is published under
subregulation 10.5(2); and
(c) the fee is not paid within that period of 2 months.
(2) The request for leave to amend the complete specification is taken
not to have been filed.
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Miscellaneous Chapter 22
Fees and costs Part 1
Fees Division 1
Regulation 22.2F
Patents Regulations 1991 191
22.2F Consequence if Commissioner does not invite payment
(1) Subregulation (2) applies if:
(a) a fee mentioned in regulation 22.2B, 22.2C or 22.2D is not
paid when it is payable; and
(b) the Commissioner does not give the invitation mentioned in
the relevant regulation within the time allowed.
(2) The application, representation, request or other relevant document
is to be treated as if the fee had been paid when the application,
representation, request or other document was filed or made.
(3) Subregulation (4) applies if:
(a) a fee mentioned in regulation 22.2I is not paid when it is
payable; and
(b) the Commissioner does not give the invitation mentioned in
regulation 22.2I within the time allowed.
(4) The accepted application is to be treated as if the fee for acceptance
mentioned in item 213 of Schedule 7 had been paid immediately
after its acceptance.
(5) Subregulation (6) applies if:
(a) a fee mentioned in paragraph 22.2EA(1)(a) relating to a grant
of leave to amend a complete specification is not paid when
it is payable; and
(b) the Commissioner does not give the invitation mentioned in
paragraph 22.2EA(1)(b) within the time mentioned in that
paragraph.
(6) The request for leave to amend the complete specification is to be
treated as if the fee had been paid when leave was granted to
amend the complete specification.
(7) Despite subregulations (2), (4) and (6), the fee remains payable and
can be recovered as a debt due to the Commonwealth.
22.2G Failure to pay: hearing fees
(1) Subregulation (2) applies if:
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Chapter 22 Miscellaneous
Part 1 Fees and costs
Division 1 Fees
Regulation 22.2H
192 Patents Regulations 1991
(a) the fee mentioned in item 230 of Schedule 7 is not paid when
it is payable; and
(b) within 1 month after the fee is payable, the Commissioner
invites the person making the request to pay the fee within 1
month after the date of the invitation or before the date of the
hearing, whichever is earlier; and
(c) the fee is not paid within the earlier of the periods mentioned
in paragraph (b).
(2) The request is taken not to have been made.
(3) A hearing cannot be held if the fee mentioned in item 230 of
Schedule 7 has not been paid for the hearing.
(4) A person cannot appear and be heard at an oral hearing if the fee
mentioned in paragraph 231(a) of Schedule 7 has not been paid for
the person.
(5) A person is not entitled to a hearing on the basis of written
submissions if the fee mentioned in item 231A of Schedule 7 has
not been paid.
22.2H Failure to pay: certain fees for actions by Commissioner
(1) This regulation applies to a fee mentioned in item 221, 223, 229,
233, 234 or 235 of Schedule 7.
(2) The Commissioner must not process a request or application for
which such a fee is payable if the fee has not been paid.
(3) If the fee mentioned in item 223 of Schedule 7 is paid for a request,
the request is taken to have been made on the date on which the fee
was paid.
(4) If:
(a) the fee is not paid when it is payable; and
(b) the Commissioner invites the person by whom the fee is
payable to pay the fee within 1 month after the date of the
invitation; and
(c) the fee is not paid within the 1 month period;
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Regulation 22.2I
Patents Regulations 1991 193
the request or application is taken not to have been made.
22.2I Failure to pay: acceptance fee
(1) This regulation applies if:
(a) a fee for acceptance mentioned in item 213 of Schedule 7 is
not paid when it is payable; and
(b) within 1 month after the fee is payable, the Commissioner
invites the person by whom the fee is payable to pay the fee
within 3 months after the date that the notice of the
acceptance is published under paragraph 49(5)(b) of the Act;
and
(c) the fee is not paid within the 3 month period.
(2) The application lapses.
22.3 General fees for international applications
(1) If:
(a) for the purposes of the PCT, the Patent Office is:
(i) a receiving Office; or
(ii) an International Searching Authority; or
(iii) an International Preliminary Examining Authority; and
(b) the Commissioner or the Patent Office is empowered by the
PCT to charge a fee, other than a fee for the benefit of the
International Bureau;
for the purposes of subsection 227(1) of the Act, the amount of the
fee payable to the Commissioner in respect of a matter specified in
an item of Part 3 in Schedule 7 is the amount specified in that item.
(2) The fees specified in items 301 and 302 in Schedule 7 are payable
to the Commissioner within 1 month of filing an international
application.
(3) The fee specified in item 304 in Schedule 7 is payable to the
Commissioner on filing a demand for a preliminary examination
under Article 31 of the PCT.
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Chapter 22 Miscellaneous
Part 1 Fees and costs
Division 1 Fees
Regulation 22.4
194 Patents Regulations 1991
22.4 Fees for international applications payable for the benefit of the
International Bureau
(1) If, for the purposes of the PCT, the Patent Office is:
(a) a receiving Office; or
(b) an International Searching Authority; or
(c) an International Preliminary Examining Authority;
for an international application, the amounts of the international
filing fee and handling fee (payable, under the PCT, to the
Commissioner for the benefit of the International Bureau) for the
application are as set out in Part 4 of Schedule 7.
(2) The Commissioner must, in accordance with the PCT, determine
the currency in which a fee payable under this regulation is payable
and the exchange rate between Swiss currency and the currency so
determined.
(3) The Commissioner must give notice of a determination in the
Official Journal.
(4) A determination has effect on the date specified in the
determination for that purpose or on the date of notification of the
determination in the Official Journal, whichever is later.
22.5 PCT Fund
Money paid as a fee to the Commissioner under subregulation
22.4(1):
(a) must be paid into a Special Account established under
section 20 of the Financial Management and Accountability
Act 1997; and
(b) may be expended from the Special Account for the purposes
of the PCT, including the making of refunds and the
remission of fees to the International Bureau.
22.6 Exemption from fees
(1) The Commissioner may exempt a person from the payment of the
whole or any part of a fee if the Commissioner is reasonably
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Fees Division 1
Regulation 22.7
Patents Regulations 1991 195
satisfied that the action is justified, having regard to all the
circumstances.
(2) If acceptance of a patent request and complete specification for a
standard patent has been delayed because of an error or omission
on the part of an employee, the period mentioned in subregulation
(3) is not, for the purposes of ascertaining the amount of a fee, to
be taken into account.
(3) For subregulation (2), the period is the period that the
Commissioner believes, on reasonable grounds, is equal to the
period of delay that resulted from the error or omission.
22.7 Refund of certain fees
(1) Subject to subregulation (2), if:
(a) a complete application for a standard patent has been filed;
and
(b) the application is withdrawn before the specification
becomes open to public inspection;
so much of the fee paid on the filing of the application as the
Commissioner reasonably thinks fit may, on written application
made to him or her, be refunded.
(2) If the PCT requires a fee paid to the Commissioner to be refunded
in whole or in part, that fee or that part of the fee must be refunded.
(3) If:
(a) a search fee or a preliminary examination fee is payable to an
International Searching Authority or an International
Preliminary Examining Authority; and
(b) the PCT provides for the refund of the fee in whole or in part;
and
(c) that fee has been paid to the Commissioner;
he or she must determine in accordance with the PCT to what
extent that fee is to be refunded to the applicant and the fee must be
refunded accordingly.
Federal Register of Legislative Instruments F2013C00202
Chapter 22 Miscellaneous
Part 1 Fees and costs
Division 2 Costs
Regulation 22.7A
196 Patents Regulations 1991
Division 2—Costs
22.7A Proceedings to which this Division applies
This Division applies to proceedings before the Commissioner.
22.8 Costs
(1) The Commissioner must not award costs in proceedings to which
this Division applies, other than costs specified in Schedule 8,
unless each party to the proceedings has had the reasonable
opportunity to make a submission on the matter of the award of
those costs.
(2) The Commissioner may award an amount:
(a) for costs in respect of a matter specified in column 2 of an
item of Part 1 in Schedule 8; or
(b) in respect of the expenses or allowances of a person in
relation to proceedings to which this Division applies.
(2A) A party to proceedings may request taxation of an amount awarded
under subregulation (2).
(3) If a request for taxation is made, the amount must be taxed,
allowed and certified, by an employee appointed by the
Commissioner for that purpose, in accordance with:
(a) the amount specified in column 3 of that item; or
(b) Part 2 in Schedule 8;
as the case may be.
(4) A taxation is subject to review by the Commissioner.
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Miscellaneous Chapter 22
Other matters Part 2
Regulation 22.9
Patents Regulations 1991 197
Part 2—Other matters
22.9 Death of applicant or nominated person
The legal representative of a deceased applicant, nominated person
or patentee who wishes:
(a) in accordance with subsection 215(1) of the Act to proceed
with the application; or
(b) in accordance with subsection 215(2) of the Act to have the
patent granted to him or her; or
(c) in accordance with subsection 215(3) of the Act to have the
patent amended by substituting for the name of the patentee
the name of the person to whom the patent should have been
granted;
must file the approved form and such other documents as the
Commissioner reasonably considers necessary to support the
request.
22.10 Address for service
(1) If provision is made in an approved form to state an address for
service, the person completing the form must state:
(a) an address in Australia at which a document under the Act or
these Regulations may be given to him or her personally or to
the person specified in the form as his or her representative;
or
(b) another address in Australia to which it is practicable and
reasonable for Australia Post, or a person acting on behalf of
Australia Post, to deliver mail.
(2) A person may file notice of a change of his or her address for
service to another address that complies with paragraph (1)(a) or
(b).
(4) If a person serves a document on a person other than the
Commissioner, the first-mentioned person must, as soon as
practicable after serving the document on the other person, file a
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Regulation 22.10A
198 Patents Regulations 1991
notice of the service in the approved form together with a copy of
the document served.
22.10A Address for correspondence
(1) If provision is made in an approved form to state an address for
correspondence, the person completing the form may state an
address to which all correspondence from the Commissioner can
be sent.
(2) A person may file notice of a change of his or her address for
correspondence.
(3) The address for correspondence need not be in Australia.
22.10AA Period for doing certain acts—office not open for business
For subsection 222A(1) of the Act, the circumstance is that the act
is done at:
(a) the Patent Office; or
(b) a sub-office of the Patent Office (if any);
that was not open for business.
Note: Subsection 222A(1) provides as follows:
„(1) If the last day of a period provided by this Act (except this section) for doing an act is a day when the Patent Office, or a sub-office of the Patent Office (if any), is not open for business, the act may be done in prescribed circumstances on the next day when the office or sub-office is open for business.‟.
22.10AB Days when office not open for business
(1) For paragraph 222A(2)(a) of the Act, the days on which the Patent
Office, or a sub-office of the Patent Office (if any), is not open for
business are:
(a) Saturday; and
(b) Sunday; and
(c) Australia Day; and
(d) Anzac Day.
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Regulation 22.10AC
Patents Regulations 1991 199
(2) For paragraph 222A(2)(b) of the Act, the table sets out prescribed
persons.
Item Person
1 The Director General of IP Australia
2 The Deputy Director General of IP Australia
3 Another person who:
(a) is an SES employee of IP Australia; and
(b) acts with the agreement of the Director General of IP Australia
4 Another person who:
(a) is an SES employee of IP Australia; and
(b) acts with the agreement of the Deputy Director General of IP Australia
5 Another person who:
(a) is an SES employee of IP Australia; and
(b) acts with the agreement of another SES employee of IP Australia
Note: SES employee is explained in section 34 of the Public Service Act 1999. That meaning is applied generally to Commonwealth legislation by section 2B of the Acts Interpretation Act 1901.
(3) For paragraph 222A(2)(b) of the Act, the prescribed way of
publishing a declaration is in the Official Journal.
22.10AC Prescribed acts
For subsection 222A(7) of the Act, the following are prescribed:
(a) lodging a return under section 76A of the Act;
(b) an act done in relation to proceedings in a court or a tribunal;
(c) an act done under Chapter 20.
22.11 Extension of time
(1) For the purposes of subsection 223(2) or (2A) of the Act, an
application for an extension of time must be in the approved form
and have with it a declaration setting out the grounds on which the
application is made.
(1A) Subregulation (1B) applies if:
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Chapter 22 Miscellaneous
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Regulation 22.11
200 Patents Regulations 1991
(a) an application for an extension of time for doing a relevant
act is made under subsection 223(2) of the Act; and
(b) the relevant act has not been done; and
(c) a notice of opposition to the grant of the application is filed.
(1B) If the Commissioner grants the application, the Commissioner
must extend the time to include the period from the day on which
the notice of opposition is filed to the end of:
(a) if an application is made to the AAT for a review of a
decision of the Commissioner—the day when the application
is withdrawn or finally dealt with or determined; or
(b) in any other case—21 days after the end of the day on which
the Commissioner decides the application.
(1C) For paragraph 223(2A)(b) of the Act the prescribed period is 2
months after the circumstance that prevented the person from
doing the relevant act within the time required ceases to exist.
(1D) For subsection 223(2B) of the Act the prescribed period is 12
months after the end of the time within which the act is required to
be done.
(2) Notice of the grant of an extension of time must be published in the
Official Journal.
(3) For subsection 223(4) and paragraph 223(9)(b) of the Act:
(a) the payment of a continuation fee or a renewal fee within the
6 month period mentioned in subregulation 13.3(1A) or
13.6(2) is a prescribed relevant act; and
(b) the prescribed circumstances are that the fee is not paid
within that 6 month period mentioned in subregulation
13.3(1A) or 13.6(2).
(4) For the definition of relevant act in subsection 223(11) of the Act,
the following are prescribed:
(a) an action mentioned in Chapter 5, other than an action or step
taken under regulation 5.4, 5.5, 5.10 or 5.11;
(b) filing, during the term of a standard patent under
subsection 71(2) of the Act, an application under
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Miscellaneous Chapter 22
Other matters Part 2
Regulation 22.12
Patents Regulations 1991 201
subsection 70(1) of the Act for an extension of the term of
the patent;
(c) an action mentioned in Chapter 20.
22.12 Evidence
(1) If evidence is given in writing to the Commissioner or to the
Disciplinary Tribunal for the purposes of the Act or these
regulations, the evidence must be in the form of a declaration.
(2) The Commissioner may:
(a) require a person who has made a declaration to appear before
him or her to give evidence orally on oath in substitution for,
or addition to, the evidence contained in the declaration; and
(b) allow the person to be cross-examined on the declaration.
22.13 Declarations
(1) A declaration required or permitted by the Act or these Regulations
must be in the approved form.
Note: Declaration forms in the approved form are available on the IP Australia website at www.ipaustralia.gov.au.
(2) A declaration in the form of a statutory declaration, required or
permitted to be given to a person mentioned in subregulation (3),
may be given to the person in an electronic form by a means of
electronic communication approved by the Commissioner.
Note: A declaration that is not in the form of statutory declaration may also be given in an electronic form by means of an electronic communication: see section 11 of the Electronic Transactions Act 1999.
(3) For subregulation (2), the following persons may be given
declarations, including statutory declarations, in electronic form by
electronic means:
(a) the Commissioner;
(b) the Designated Manager;
(c) the Disciplinary Tribunal;
(d) the Professional Standards Board.
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Chapter 22 Miscellaneous
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Regulation 22.14
202 Patents Regulations 1991
22.14 Directions not otherwise prescribed
If the Commissioner reasonably believes that it is necessary for the
proper prosecution or completion of proceedings for a person to
perform an act, file a document or produce evidence that is not
provided for by the Act or these Regulations, the Commissioner
may give notice to the person requiring him or her to perform the
act, file the document or produce the evidence, specified in the
notice.
22.15 Documents in English and English translations
(1) An abstract that is filed must be in English.
(2) A document required to be in an approved form that is filed must
be in English.
(3) If any other document is filed:
(a) the document must be in English; or
(b) the document must be filed with:
(i) a translation of the document into English; and
(ii) a related certificate of verification.
(4) However, this regulation does not apply to documents relating to a
basic application that are prescribed under subsection 43AA(1) of
the Act.
Note: For a list of these documents, see subregulation 3.14B(1).
22.16 Documents other than specifications and abstracts
(1) In this regulation:
document does not include:
(a) a patent request for a standard patent; or
(b) a patent request for an innovation patent; or
(c) a specification; or
(d) an abstract.
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Regulation 22.17
Patents Regulations 1991 203
(2) If a document received at the Patent Office does not substantially
comply with regulation 22.15 or Schedule 3, or is not in
accordance with whichever approved form is applicable, the
Commissioner may treat the document:
(a) as not having been filed and notify the person from whom it
was received, including in the notification a statement
indicating how the document or form does not so comply or
accord; or
(b) as having been filed, but direct the person from whom it was
received to do such things as are necessary to ensure that the
document will so comply or accord.
(4) If the Commissioner gives a direction under paragraph (2)(b) and
the person to whom the direction was given does not comply with
that direction within 2 months from the day when it was given, the
Commissioner must treat the document as not having been filed.
(5) Chapter 10 does not apply to a document to which this regulation
applies.
22.17 Incapacity of certain persons
(1) In this regulation:
mental dysfunction means a disturbance or defect, to a severely
disabling degree, of perceptual interpretation, comprehension,
reasoning, learning, judgment, memory, motivation, or emotion.
(2) If a person is incapable of doing anything required or permitted by
the Act or these Regulations to be done because of infancy or of
mental dysfunction or physical disability or disease, a court may,
on the application of a person acting on behalf of the incapable
person or of another person interested in the doing of the thing:
(a) do that thing; or
(b) appoint a person to do the thing;
in the name, and on behalf, of the incapable person.
(3) A thing done in the name of, and on behalf of, an incapable person
is taken to have been done by that person as if the person had not
been incapable when the thing was done.
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Chapter 22 Miscellaneous
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Regulation 22.18
204 Patents Regulations 1991
22.18 Destruction of documents
(1) The Commissioner may order the destruction of documents
relating to applications filed not less than 25 years before the date
of the order.
(2) Subregulation (1) does not authorise the destruction of:
(a) the Register; or
(b) documents relating to patents in force; or
(c) documents considered by the Commissioner, or the
Director-General of the Australian Archives, to be of legal or
historical interest.
22.19 Copies of certain documents to be supplied
A copy of a document that:
(a) affects the ownership of a patent or licence; and
(b) has been witnessed;
must be filed by a person who seeks to have the Commissioner
consider the document for the purposes of the Act or these
regulations.
22.20 International applications and the Patent Office
If, for the purposes of the PCT, the Patent Office is:
(a) a receiving Office; or
(b) an International Searching Authority; or
(c) an International Preliminary Examining Authority;
the Commissioner and the Patent Office may perform the functions
under the PCT of a receiving Office, an International Searching
Authority or an International Preliminary Examining Authority, as
the case requires, in relation to an international application.
22.21 Protection or compensation of certain persons
(1) The following provisions of this regulation are prescribed for
subsections 41(4), 150(4) and 223(9) of the Act.
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Other matters Part 2
Regulation 22.22
Patents Regulations 1991 205
(2) Persons who availed themselves of or exploited, or took definite
steps by contract or otherwise to avail themselves of or exploit,
inventions:
(a) in the case of inventions to which subsection 41(4) of the Act
applies—in the period mentioned in paragraph 41(4)(c) of the
Act; and
(b) in the case of inventions to which subsection 150(4) of the
Act applies—after the lapse of the applications and before the
day on which their restoration was notified in the Official
Journal; and
(c) in the case of inventions to which subsection 223(9) of the
Act applies—within the period of time extended under that
subsection;
may apply, in the approved form, to the Commissioner for the
grant of licences to exploit the inventions.
(3) The Commissioner must give a copy of the application to:
(a) a person whose application was restored under section 150 of
the Act; or
(b) a patent applicant or patentee of the application or patent for
which an extension of time was granted under section 223 of
the Act; or
(c) the patent applicant or patentee of the application or patent to
which subsection 41(4) of the Act applies;
and to any other person the Commissioner believes to have an
interest in the application.
(4) A person mentioned in subregulation (3) may oppose the grant of
the licence to which the application relates.
(5) The Commissioner, if reasonably satisfied that the application
should be granted, must grant a licence to the applicant on such
terms as the Commissioner thinks reasonable.
22.22 Exercise of discretionary powers by Commissioner
(1) The Commissioner must give a person an opportunity to be heard
before exercising a discretionary power under the Act or these
Regulations adversely to the person.
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Regulation 22.23
206 Patents Regulations 1991
Note: See section 216 of the Act for a similar provision.
(2) The Commissioner must give the person an opportunity to be heard
by:
(a) asking the person for written submissions; or
(b) notifying the person that, on request to the Commissioner,
the person may be heard by way of an oral hearing on a date,
and at a time and place, determined by the Commissioner; or
(c) notifying the person of the date, time and place of an oral
hearing.
(3) The Commissioner may exercise the discretionary power if the
person:
(a) notifies the Commissioner that the person does not want to be
heard; or
(b) does not file written submissions if requested under
subregulation 22.23(1); or
(c) does not attend an oral hearing if notified under
subregulation 22.23(2).
(4) If the Commissioner exercises discretionary power in any of the
circumstances mentioned in subregulation (3), the Commissioner
must notify the person of the Commissioner‟s decision.
22.23 Written submissions and oral hearings
Written submissions
(1) If the Commissioner decides that a person may be heard by way of
written submissions, the Commissioner must:
(a) notify the person of the period in which the submissions must
be filed (being at least 10 business days); and
(b) determine the matter after considering the written
submissions; and
(c) notify the person of the Commissioner‟s decision in relation
to the exercise of the discretionary power.
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Regulation 22.24
Patents Regulations 1991 207
Oral hearings
(2) If the Commissioner decides that a person may be heard by way of
an oral hearing, the Commissioner must give notice of the date,
time and place of the hearing, to the person, at least 10 business
days before the day the hearing is to begin.
(3) The Commissioner may adjourn an oral hearing from time to time
or from place to place by notifying the person.
(4) The Commissioner may hold an oral hearing in which:
(a) a person appears in person; or
(b) a person participates by telephone or other means of
telecommunications that the Commissioner reasonably
allows.
(5) In addition to the Commissioner‟s other powers, the Commissioner
may direct a person to provide a written summary of submissions.
(6) The Commissioner must notify a person who appears at the hearing
of the Commissioner‟s decision in relation to the exercise of the
discretionary power.
22.24 Practice and procedure other than for opposition proceedings
(1) Subject to these Regulations:
(a) if the Act or these Regulations authorise the Commissioner to
hear and decide an application or matter that is not an
opposition; or
(b) in a matter being decided on the motion of the
Commissioner;
the practice and procedure to be followed for the purposes of
enabling the application or matter to be decided is to be determined
by him or her.
(2) A person to be heard at a hearing may apply to the Commissioner
in respect of the practice and procedure in relation to the hearing to
be determined by the Commissioner.
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Chapter 22 Miscellaneous
Part 2 Other matters
Regulation 22.25
208 Patents Regulations 1991
22.25 Requirements cannot be complied with for reasonable cause
If, under these Regulations, a person is required to:
(a) sign a document, make a declaration or file or give the
Commissioner a document or evidence; and
(b) the Commissioner is reasonably satisfied that the person
cannot comply with the requirement;
the Commissioner may, subject to such conditions as he or she
reasonably directs, dispense with the requirement.
22.26 Review of decisions
(1) In this regulation:
decision has the same meaning as in the Administrative Appeals
Tribunal Act 1975.
(2) Application may be made to the AAT for review of a decision of:
(a) the Commissioner under the following provisions:
(i) paragraph 3.24(1)(b) („Commissioner may request
samples and viability statement‟);
(ii) subregulation 3.25(2) („request for Commissioner‟s
certificate authorising release of sample of a
micro-organism‟);
(iia) paragraph 4.3(2)(b) („prescribed documents: public
inspection‟);
(iii) subregulation 5.5(3) („dismissal of opposition‟);
(iv) subregulation 5.6(3) („determination of opposition‟);
(v) subparagraph 6.2(1)(b)(ii) („prescribed period: grant of
standard patent‟);
(vaa) regulation 10.7 („correction of register or patent‟),
except subregulations 10.7(3), (7) or (8);
(va) subregulation 13.4(3);
(vi) subregulation 22.21(5) („protection or compensation of
certain persons‟); or
(b) the Board under the following provisions:
(i) regulation 20.5 („evidence of academic qualifications‟);
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Miscellaneous Chapter 22
Other matters Part 2
Regulation 22.26
Patents Regulations 1991 209
(ii) regulation 20.7 („evidence of knowledge requirements‟);
or
(c) the Designated Manager under the following provisions:
(i) regulation 20.28 („failure to comply with continuing
professional education requirements‟);
(ii) regulation 20.28B (suspension of registration—serious
offence);
(iii) subregulation 20.29(3) (imposing a condition when
restoring attorney‟s name to Register of Patent
Attorneys);
(iv) regulation 20.31 („returning to Register of Patent
Attorneys in other circumstances);
(v) regulation 20A.8 (failing to maintain professional
indemnity insurance); or
(d) the Disciplinary AAT under the following provisions:
(i) regulation 20.43 („decision of Disciplinary AAT‟);
(ii) regulation 20.44 („penalties—professional
misconduct‟);
(iii) regulation 20.45 („penalties—unsatisfactory
professional conduct‟);
(iv) regulation 20.46 („finding that attorney was unqualified
at time of registration‟);
(v) regulation 20.47 („finding that registration obtained by
fraud‟);
(vi) regulation 20A.18 (decision of Disciplinary Tribunal).
(3) If the Commissioner gives a person affected by a decision referred
to in subregulation (2) written notice of the making of the decision,
the notice must include a statement to the effect that, subject to the
Administrative Appeals Tribunal Act 1975, application may be
made to the AAT for review of that decision by or on behalf of the
person whose interests are affected by it.
(4) Failure to comply with subregulation (3) in relation to a decision
does not affect the validity of the decision.
(5) If the AAT reviews a decision of the Commissioner under
subsection 224(1) of the Act and the decision is not affirmed, the
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Chapter 22 Miscellaneous
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Regulation 22.27
210 Patents Regulations 1991
Commissioner must publish a notice of the decision of the AAT in
the Official Journal.
22.27 Documents not to infringe copyright—prescribed documents
(1) For paragraph 226(2)(c) of the Act, the following documents are
prescribed:
(a) a document open to public inspection under Chapter 4 of the
Act;
(b) a document open to public inspection under these
Regulations.
(2) However, a journal, book or catalogue is not prescribed if:
(a) it is provided for prosecution, examination or proceedings in
relation to a patent application, or subsequent patent; and
(b) a right subsisting in the journal, book or catalogue under the
Copyright Act 1968 is held by a party other than the patent
applicant, patentee or another person who has filed a
document for the application or patent.
Federal Register of Legislative Instruments F2013C00202
Transitional and savings provisions Chapter 23
General Part 1
Regulation 23.1
Patents Regulations 1991 211
Chapter 23—Transitional and savings
provisions
Part 1—General
23.1 Saving: prohibition orders
Subsection 4(2) of the 1952 Act continues in force.
23.2 Delegation: certain matters referred to in this Chapter
Section 11 of the 1952 Act continues on and after the commencing
day in respect of the exercise by the Commissioner of his or her
powers and functions in relation to the operation of:
(a) subsection 234(3) of the Act; or
(b) a following provision of this Chapter.
23.3 Opposition to grant: practice and procedure
(1) Division 1 of Part XIV and regulations 82 and 83A of the former
patents Regulations continue to apply in relation to opposition to
the grant of a standard patent on an application:
(a) to which subsection 234(3) of the Act refers; and
(b) acceptance of which has been advertised under the 1952 Act.
(2) Chapter 5 of these Regulations does not apply to opposition to an
application to which subregulation (1) applies.
(3) Chapter 5 of these Regulations applies to opposition to an
application:
(a) to which subsection 234(3) of the Act refers; and
(b) of which advertisement of acceptance has taken place under
the Act.
23.4 Certain opposition: practice and procedure
(1) If, before the commencing day:
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Chapter 23 Transitional and savings provisions
Part 1 General
Regulation 23.5
212 Patents Regulations 1991
(a) a matter is advertised in the Official Journal; or
(b) a document is served on a person;
to enable opposition proceedings to be taken, other than in relation
to the grant of a standard patent:
(c) the following provisions of the 1952 Act continue to apply:
(i) sections 82, 83, 84, 85 and 94;
(ii) subsections 160(5) and (6); and
(d) the following provisions of the former patents Regulations
continue to apply:
(i) regulations 36, 39B, 39C, 39D, 48, 49, 50, 51, 52, 76,
77, 78, 82, 83A and 92;
(ii) Divisions 1 and 2 of Part XIV.
(2) If provisions specified in subregulation (1) continue to apply, the
following provisions do not apply to the opposition referred to in
that subregulation:
(a) sections 104 and 223 of the Act;
(b) Chapter 5 and regulations 22.21, 22.22 and 22.23 of these
Regulations.
23.5 Fees payable for certain matters relating to opposition
The fee payable in respect of opposition proceedings of the kind
mentioned in regulation 23.3 or 23.4 is the fee that would have
been payable if these Regulations applied to those proceedings.
23.6 Certain delegations: opposition
The delegation of a person who, before the commencing day, was:
(a) the delegate of the Commissioner under the 1952 Act; and
(b) exercising the powers of the Commissioner in relation to a
matter to which regulation 23.3 or 23.4 applies;
continues in relation to the matter.
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23.7 Certain undertakings
If an undertaking referred to in paragraph 3.25(4)(c) is given in
respect of an application lodged under the 1952 Act, the reference
to Chapter 5 of the Act in subparagraph 3.25(4)(c)(i) includes a
reference to Part V of the 1952 Act.
23.8 Restoration of lapsed applications or ceased patents
(1) If, before the commencing day:
(a) an application lapses under:
(i) section 47C or 47D of the 1952 Act; or
(ii) subregulation 7B(4) or (5) of the former patents
Regulations; or
(b) a patent ceases because of failure to pay a prescribed fee
within the prescribed time;
and an application is made for the restoration of the lapsed
application or ceased patent, as the case may be, under:
(c) subsection 47E(2) or 97(1) of the 1952 Act; or
(d) subregulation 7B(6) of the former patents Regulations;
section 47E, subsection 97(2) or (3) or section 98 of the 1952 Act
or the prescribed provisions of the former patents Regulations, as
the case requires, continues to apply in relation to that lapsed
application or ceased patent and the corresponding provisions of
the Act and these Regulations do not so apply.
(2) There is payable to the Commissioner in respect of a lapsed
application or ceased patent to which subregulation (1) applies a
fee of the amount specified in column 3 of item 8 of Part 1 in
Schedule 2 to the former patents Regulations.
(3) In subregulation (1), prescribed provisions means:
(a) regulations 16D, 16E, 16F, 41, 42, 43, 44, 82, 83A, 92; or
(b) Division 1 of Part XIV.
23.9 Certain continuation and renewal fees
(1) If, before the commencing day:
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(a) the second year after lodgment of a complete specification
ends; and
(b) the continuation fee prescribed in respect of that year in
relation to the specification is payable but has not been paid;
item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in
respect of the second anniversary.
(2) If, before the commencing day:
(a) the second year of a patent ends; and
(b) the renewal fee prescribed in respect of that year in relation
to the patent is payable but has not been paid;
item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in
respect of the second anniversary.
23.10 Fee taken to have been paid
If:
(a) in respect of the lodging of an application for an extension of
time, a fee specified in item 27 of Part 1 in Schedule 2 to the
former patents Regulations is paid in respect of a period
referred to in subsection 54(1B) of the 1952 Act; and
(b) the application has not been accepted before the commencing
day; and
(c) the applicant is required to pay the fee specified in item 22 of
Part 2 in Schedule 7 to these Regulations in relation to the
application;
the fee under item 22 is taken to have been paid in respect of the
period referred to in paragraph (a).
23.11 Supply of product referred to in section 117 of the Act
(1) If:
(a) a product to which section 117 of the Act applies is supplied
by a person to another person before the commencing day;
and
(b) the supply would not have infringed a patent under the 1952
Act before the commencing day; and
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(c) the first-mentioned person supplies the product to another
person after the commencing day;
section 117 of the Act does not apply to the supply referred to in
paragraph (c).
(2) In subregulation (1), a reference to the first-mentioned person
includes:
(a) on the death of the person—the legal personal representative
of the estate of the person who has died; or
(b) if the person becomes bankrupt—the person who becomes,
under the Bankruptcy Act 1966, the trustee in bankruptcy of
the estate of the first-mentioned person; or
(c) if a body corporate is being wound up—the person appointed
to be the liquidator of the body corporate; or
(d) if the person agrees to dispose of a business relating to the
supply of the product—a person who acquires that business,
whether from the first-mentioned person or from some other
person.
23.12 Certain withdrawn, abandoned or refused applications
(1) On and after the commencing day, section 142AA of the 1952 Act
continues to apply to an application referred to in
subsection 234(2) of the Act.
(2) Section 96 of the Act does not apply to an application to which
subregulation (1) applies.
23.13 Certain certificates of validity
If:
(a) a court certifies under section 169 of the 1952 Act in relation
to the validity of a patent or of a claim; and
(b) the validity of the patent or claim is disputed on or after the
commencing day;
the certificate referred to in paragraph (a) is taken to have been
issued under subsection 19(1) of the Act.
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23.14 Certain action under the 1952 Act
If:
(a) a provision of the Act requires an act to be done under that or
another particular provision of the Act; and
(b) the act was done under a corresponding provision of the 1952
Act;
that act is taken to have been done under the provision referred to
in paragraph (a) under which the act is required to be done.
23.15 Amendment of petty patents
The complete specification of a petty patent granted under
section 62A of the 1952 Act cannot be amended under the Act so
as to include more than 1 claim.
23.16 Certain applications under 1952 Act: time for acceptance
(1) This regulation applies to an invention referred to in paragraph
45(1)(b) or 48(1)(a) of the Act that is, so far as claimed in any
claim, the subject of:
(a) a claim of the complete specification in relation to an
application for a standard patent referred to in
subparagraph 48(3)(a)(i) of the 1952 Act; or
(b) the claim of the complete specification in relation to an
application for a petty patent referred to in subparagraph
48(3)(a)(ii) of the 1952 Act;
the priority date of which is earlier than the priority date of the
first-mentioned claim.
(2) If, under paragraph 45(1)(b) or 48(1)(a) of the Act, the
Commissioner reports that the first-mentioned claim in
subregulation (1) is a claim the priority date of which is later than
the priority date of the claim referred to in paragraph (1)(a) or (b),
he or she may defer acceptance of the application and complete
specification until the end of 3 months after:
(a) the date on which a patent was sealed on the application
referred to in paragraph (1)(a) or (b); or
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(b) the date on which that application lapsed or was withdrawn
or refused.
23.17 PCT applications to which subsection 89(5) of the Act does not
apply
Subsection 89(5) of the Act does not apply to an application:
(a) to which subsection 234(2) of the Act applies; and
(b) that is a PCT application in respect of which Australia has
been elected under Chapter II of the PCT within the period
specified in Article 39 of the PCT; and
(c) in respect of which a filed Preliminary Examination Report
made under the PCT reports that an amendment to the
application goes beyond the disclosure in the relevant
international application that has been filed.
23.18 Certain priority dates: saving
In the case of a claim of a specification:
(a) relating to a further application for a standard patent or for a
petty patent under section 51 of the 1952 Act in respect of an
invention disclosed in a provisional specification under that
Act; or
(b) to which subsection 45(2), (3), (3A) or (4A) of the 1952 Act
applies; or
(c) to which subsection 191(8) of the Statute Law
(Miscellaneous Amendments) Act (No. 1) 1982 applies;
the priority date is determined under section 45 of the 1952 Act or
subsection 191(8) of the Statute Law (Miscellaneous Amendments)
Act (No. 1) 1982, as the case requires.
23.25 Fees
(1) In this regulation:
continuation fee means a continuation fee for the purposes of
section 47D of the 1952 Act.
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renewal fee means a renewal fee for the purposes of
subsection 68(2) of that Act.
(2) Subregulation 22.2(1) does not apply in respect of:
(a) a continuation fee in respect of a year; or
(b) a renewal fee in respect of a year of a patent;
that ends on or after the commencing day, if the fee became
payable, and was paid, before that day.
(3) If an application for a standard patent was accepted under
section 52 or 52D of the 1952 Act before the commencing day, the
fee payable for the sealing of that patent is the fee that was
applicable to the sealing of the patent immediately before that day.
(4) In the case of a PCT application, if:
(a) a continuation fee in respect of an anniversary that occurs
within the period of 9 months immediately preceding the
commencing day; and
(b) the continuation fee is not paid in the period referred to in
subregulation 13.3(1) but is paid within 9 months after the
anniversary concerned;
the prescribed period referred to in subregulation 13.3(1) is
extended to the day on which the fee is paid.
23.26 Certain actions and proceedings
(1) The 1952 Act applies to an action or proceeding made or started
under that Act and not finally dealt with or determined before the
commencing day:
(a) in which the validity of a patent is disputed; or
(b) concerning infringement of a patent.
(2) The 1952 Act applies to an action or proceeding in which the
validity of a patent granted under the Patents Act 1990 on an
application made under the 1952 Act is disputed.
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23.32 Transitional: priority date and date of patent for innovation
patent application that is a divisional application of a
petty patent or petty patent application
(1) For an innovation patent that is a divisional application of a petty
patent or a petty patent application under section 39 of the old Act:
(a) the priority date of the innovation patent is the date that
would have been the priority date of the application under
paragraph 3.12(1)(c) of the old Regulations if the innovation
patent application had been filed as a divisional application
under section 39 of the old Act; and
(b) the date of the innovation patent is the date that would have
been the date of the patent under paragraph 6.3(1)(f) or (g) of
the old Regulations if the innovation patent application had
been filed as a divisional application under section 39 of the
old Act.
(2) In this regulation:
old Act means the Patents Act 1990 as in force immediately before
the commencement of the Patents Amendment (Innovation
Patents) Act 2000.
old Regulations means the Patents Regulations 1991 as in force
immediately before the commencement of the Patents Amendment
(Innovation Patents) Act 2000.
23.33 Transitional: examination of innovation patents converted
from petty patent applications
(1) This regulation applies if:
(a) an innovation patent has been granted; and
(b) the application for the innovation patent was converted from
an application for a petty patent; and
(c) the Commissioner had begun to consider the petty patent
application, or had begun to make any investigations in
relation to the petty patent application, under section 50 of
the old Act; and
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220 Patents Regulations 1991
(d) the innovation patent is to be examined under Part 1 of
Chapter 9A of the Act.
(2) In examining the innovation patent, the Commissioner is not
required to consider the results of:
(a) the consideration of the petty patent application; or
(b) any investigations made in relation to the petty patent
application.
(3) In this regulation:
old Act means the Patents Act 1990 as in force immediately before
the commencement of the Patents Amendment (Innovation
Patents) Act 2000.
23.34 Transitional: certain PCT applications
(1) This regulation applies to a PCT application that:
(a) is made on or after the commencement day; and
(b) would, if the old Act applied to the application, be an
application to which paragraph 88(2)(a) of the old Act
applied.
(2) The application is to be treated as an application for a standard
patent.
(3) In this regulation:
commencement day means the day the Patents Amendment
(Innovation Patents) Act 2000 commences.
old Act means the Patents Act 1990 as in force immediately before
the commencement of the Patents Amendment (Innovation
Patents) Act 2000.
23.35 Transitional: payment of fees for petty patents
(1) This regulation makes provision in respect of the payment of fees
payable for petty patents to which the old Act applies under Part 1
of Schedule 2 to the Patents Amendment (Innovation Patents) Act
2000.
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(2) Subregulations (3) and (4) apply to an application for which the fee
mentioned in item 13 of Part 2 of Schedule 7 to the old Regulations
is payable.
(3) If:
(a) the fee is not paid when the application is made; and
(b) within 1 month after the application is made, the
Commissioner invites the person by whom the fee is payable
to pay the fee within 1 month after the date of the invitation;
and
(c) the fee is not paid within the 1 month period;
the application is taken not to have been made.
(4) If the fee is paid, the application is taken to have been made on the
date on which the fee was paid.
(5) Subregulations (6), (7) and (8) apply to a request for which the fee
mentioned in paragraph (b) of item 15 of Part 2 of Schedule 7 to
the old Regulations is payable.
(6) The Commissioner must not process the request if the fee has not
been paid.
(7) If:
(a) the fee is not paid when the request is made; and
(b) within 1 month after the request is made, the Commissioner
invites the person by whom the fee is payable to pay the fee
within 1 month after the date of the invitation; and
(c) the fee is not paid within the 1 month period;
the request is taken not to have been made.
(8) If the fee is paid, the request is taken to have been made on the date
on which the fee was paid.
(9) In this regulation:
old Act means the Patents Act 1990 as in force immediately before
the commencement of the Patents Amendment (Innovation
Patents) Act 2000.
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old Regulations means the Patents Regulations 1991 as in force
immediately before the commencement of the Patents Amendment
(Innovation Patents) Act 2000.
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Part 2—Amendments made by particular
instruments
23.36 Amendments made by Intellectual Property Legislation
Amendment (Raising the Bar) Regulation 2013 (No. 1)
(1) The amendments of these Regulations made by the items of
Schedule 1 to the Intellectual Property Legislation Amendment
(Raising the Bar) Regulation 2013 (No. 1) apply as set out in the
following table.
Transitional provisions
Item Column 1
The amendments made
by:
Column 2
apply in relation to:
1 item 1 the matters referred to in subitem 55(1) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
2 item 2 the matters referred to in subitem 55(9) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
3 item 3 the matters referred to in subitem 55(1) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
4 item 5 the matters referred to in subitem 55(4) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
5 items 6, 7 and 8, in their
application to the
re-examination of a
standard patent
the matters referred to in subitem 55(5) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
6 items 6, 7 and 8, in their
application to the
re-examination of an
innovation patent
the matters referred to in subitem 55(7) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
7 item 9 the matters referred to in subitem 55(9) of
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Transitional provisions
Item Column 1
The amendments made
by:
Column 2
apply in relation to:
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
8 item 10, new
subregulation 10.3(1)
a provisional specification filed on or after
15 April 2013
9 item 10, new
subregulation 10.3(2)
the matters referred to in subitem 55(9) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012, but
treating the first reference to a complete
specification in that subitem as a reference to an
abstract
10 item 11 the matters referred to in subitem 55(9) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
11 item 12 the matters referred to in subitem 55(4) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
12 item 13 the matters referred to in subitem 55(8) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
13 items 15, 16, 17, 18 and
20
the matters referred to in subitem 55(3) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
(2) The amendments of these Regulations made by the items of Part 1
of Schedule 3 to the Intellectual Property Legislation Amendment
(Raising the Bar) Regulation 2013 (No. 1) apply as set out in the
following table.
Transitional provisions
Item Column 1
The amendments made
by:
Column 2
apply in relation to:
1 item 2 (new
regulation 5.3)
an opposition proceeding commenced before
15 April 2013
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Transitional provisions
Item Column 1
The amendments made
by:
Column 2
apply in relation to:
2 item 2 (new
subregulations 5.9(1) to
(5)) and item 9 (new
item 218 of Schedule 7)
an opposition proceeding commenced before
15 April 2013 in which an extension of time is
requested for a period that commences on or
after 15 April 2013
However:
(a) a reference in subregulation 5.9(1) to
regulation 5.8 is taken to be a reference to
regulation 5.8 as in force immediately before
15 April 2013; and
(b) paragraph 5.10(1)(b) and subregulation
5.10(2), as in force immediately before
15 April 2013, are taken not to apply
3 item 2 (new
regulation 5.20)
an opposition proceeding commenced before
15 April 2013 in which the Commissioner has
not set a hearing date, or issued a notice of
hearing to the parties, before 15 April 2013
However:
(a) a reference in that regulation to
regulation 5.26 is taken to be a reference to
regulation 5.15 as in force immediately
before 15 April 2013; and
(b) a reference in that regulation to Part 5.4 is
taken to be a reference to regulation 5.5 as in
force immediately before 15 April 2013; and
(c) a reference in that regulation to
regulation 5.19 is taken to be a reference to
regulation 5.6 as in force immediately before
15 April 2013; and
(d) regulation 5.12, as in force immediately
before 15 April 2013, is taken not to apply
4 items 2, 7 and 9 an opposition proceeding commenced by the
filing of a notice of opposition on or after
15 April 2013
However, if:
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Transitional provisions
Item Column 1
The amendments made
by:
Column 2
apply in relation to:
(a) an amendment was advertised under
regulation 10.5 before 15 April 2013; and
(b) a notice of opposition is filed for
subsection 104(4) of the Act on or after
15 April 2013;
the reference in subregulation 5.10(1) to 2
months is taken to be a reference to 3 months
Also, if:
(a) an opposition proceeding was commenced
by the filing of a notice of opposition before
15 April 2013; and
(b) a document or evidence was not served in
relation to the opposition proceeding before
15 April 2013; and
(c) the document or evidence is required to be
served on or after 15 April 2013;
then:
(d) a requirement in Chapter 5, or
regulation 22.21, as in force immediately
before 15 April 2013, for a party to serve a
document or evidence on a person is taken to
be a requirement to file the document or
evidence; and
(e) a reference to a document or evidence
having been served is taken to be a reference
to the document or evidence having been
filed; and
(f) the Commissioner must give a copy of the
document or evidence to the person; and
(g) if:
(i) under Chapter 5, as in force
immediately before 15 April 2013, a
period for the person to do an action
was calculated from the date that a
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Transitional provisions
Item Column 1
The amendments made
by:
Column 2
apply in relation to:
party served the document or
evidence; and
(ii) the Commissioner does not give the
document or evidence to the person
on the filing date;
the Commissioner must extend the period
for the person to do the action by a number
of days equal to the number of days between
when the document or evidence was filed
and when the Commissioner gave the
document or evidence to the person
5 item 3 (new
regulation 6A.1)
the matters referred to in subitem 32(3) of
Schedule 3 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
6 item 3 (new
regulation 6A.2)
the matters referred to in subitem 32(4) of
Schedule 3 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
(3) The amendment of these Regulations made by item 14 of
Schedule 4 to the Intellectual Property Legislation Amendment
(Raising the Bar) Regulation 2013 (No. 1) applies in relation to a
charge that:
(a) is laid against a registered patent attorney on or after 15 April
2013; and
(b) alleges the commission of a serious offence.
(4) The amendments of these Regulations made by the items of Part 2
of Schedule 6 to the Intellectual Property Legislation Amendment
(Raising the Bar) Regulation 2013 (No. 1) apply as set out in the
following table.
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Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
1 item 5 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
2 item 6 the matters referred to in
subitem 133(1) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
3 item 7 the matters referred to in
subitem 133(4) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
4 item 8 a complete application for a standard
patent in which a request for
examination is made on or after
15 April 2013
5 items 9 to 12 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
6 item 13 a PCT application that enters the
national phase on or after 15 April
2013
7 items 14 to 18 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
8 item 20 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
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Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
Amendment (Raising the Bar) Act
2012
9 item 21 the matters referred to in
subitem 55(9) of Schedule 1 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
10 item 22 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
11 item 23 the matters referred to in
subitem 55(9) of Schedule 1 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
12 item 24, regulation 3.14C the matters referred to in
subitem 133(8) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
13 item 25 and 26 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
14 item 27 a direction issued under
subsection 44(2) of the Act, on or
after 15 April 2013
15 item 28 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
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Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
16 item 30 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
17 item 31 a PCT application that enters the
national phase on or after 15 April
2013
18 items 36 and 37 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
19 item 38 a document that:
(a) is related to a patent application;
and
(b) is not a specification;
filed before, on or after 15 April
2013
20 item 39 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
21 items 40 and 41 the matters referred to in
subitem 133(9) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
22 item 42 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
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Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
23 item 43 a PCT application filed with a
receiving Office on or after 15 April
2013
24 item 44 the matters referred to in
subitem 133(9) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
25 item 45 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
26 item 47, paragraph 9A.4(f) an application in relation to which a
request for examination is made on
or after 15 April 2013
27 item 47, paragraph 9A.4(g) the matters referred to in
subitem 133(12) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
28 items 48 to 50 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
29 item 51 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
30 item 53 an application or patent in relation to
which leave to amend the patent
request, complete specification or
other filed document is granted on or
Federal Register of Legislative Instruments F2013C00202
Chapter 23 Transitional and savings provisions
Part 2 Amendments made by particular instruments
Regulation 23.36
232 Patents Regulations 1991
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
after 15 April 2013
31 item 54 the matters referred to in
subitem 133(3) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012 unless other arrangements are
made in this regulation
32 item 54 a request to rectify the Register to
which the following apply:
(a) the request was published before
15 April 2013;
(b) the period to file an opposition
under subregulation 5.3(5A) had
not expired before 15 April
2013;
(c) no notice of opposition was filed
before 15 April 2013;
as if it were a request to rectify the
Register made on 15 April under
regulation 10.7
33 item 55 all of the following:
(a) aircraft, land vehicles and vessels
that were foreign aircraft, foreign
land vehicles or foreign vessels,
within the meaning of the Act,
immediately before 15 April
2013;
(b) aircraft and vessels that are
registered on or after 15 April
2013;
(c) land vehicles the ownership of
which is acquired on or after
15 April 2013
34 item 56 the matters referred to in
subitem 133(9) of Schedule 6 to the
Federal Register of Legislative Instruments F2013C00202
Transitional and savings provisions Chapter 23
Amendments made by particular instruments Part 2
Regulation 23.36
Patents Regulations 1991 233
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
35 item 57 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
36 item 58 the matters referred to in
subitem 133(15) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
37 item 61 the matters referred to in
subitem 133(6) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
38 item 62, new paragraph 13.4(1)(g) an application in relation to which a
request for examination is made on
or after 15 April 2013
39 item 62, new paragraph 13.4(1)(ga) the matters referred to in
subitem 133(11) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
40 item 64, reference to new
paragraph 13.4(1)(g)
an application in relation to which a
request for examination is made on
or after 15 April 2013
41 item 64, reference to new
paragraph 13.4(1)(ga)
the matters referred to in
subitem 133(11) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
42 items 65 and 66 the matters referred to in
Federal Register of Legislative Instruments F2013C00202
Chapter 23 Transitional and savings provisions
Part 2 Amendments made by particular instruments
Regulation 23.36
234 Patents Regulations 1991
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
43 items 67 and 68 an application in relation to which a
request for examination is made on
or after 15 April 2013
44 item 77, other than the insertion of
new subregulation 22.22(1)
a hearing for which the
Commissioner has issued a hearing
notice, or an invitation to be heard,
on or after 15 April 2013
45 item 78 an act referred to in
subsection 226(1) of the Act done in
relation to a prescribed document on
or after 15 April 2013
46 item 80 a PCT application that enters the
national phase on or after 15 April
2013
47 item 81 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
48 item 82 the matters referred to in
subitem 133(3) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
49 item 83 the matters referred to in
subitem 133(2) of Schedule 6 to the
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
50 items 84 and 85 the matters referred to in
subitem 133(9) of Schedule 6 to the
Federal Register of Legislative Instruments F2013C00202
Transitional and savings provisions Chapter 23
Amendments made by particular instruments Part 2
Regulation 23.36
Patents Regulations 1991 235
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
51 item 86 an application in relation to which a
request for examination is made on
or after 15 April 2013
(5) The amendments of these Regulations made by the items of Part 2
of Schedule 6 to the Intellectual Property Legislation Amendment
(Raising the Bar) Regulation 2013 (No. 1) do not apply as set out
in the following table.
Transitional provisions
Item Column 1
The amendments made
by:
Column 2
do not apply:
1 item 29 in relation to the matters referred to in
subitem 134(1) of Schedule 6 to the Intellectual
Property Laws Amendment (Raising the Bar)
Act 2012
2 items 32 to 35 in relation to the matters referred to in
subitem 134(1) of Schedule 6 to the Intellectual
Property Laws Amendment (Raising the Bar)
Act 2012
3 item 52 in relation to the matters referred to in item 134
of Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
4 item 54 to the extent that they would prevent the
correction of a patent granted before 15 April
2013 in accordance with regulation 10.7 as in
force immediately before 15 April 2013
5 item 60 in relation to the matters referred to in item 134
of Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
Federal Register of Legislative Instruments F2013C00202
Chapter 23 Transitional and savings provisions
Part 2 Amendments made by particular instruments
Regulation 23.36
236 Patents Regulations 1991
(6) Regulation 8.3, as continued in force in accordance with this
regulation, is amended by omitting subregulation 8.3(2) and
inserting:
(2) At the end of section 141:
Add:
(3) Despite subsection (2), a PCT application is also to be treated as
having been withdrawn if Article 11(3) of the PCT ceases to have
effect in Australia in relation to the application under Article
24(1)(i) of the PCT.
Note: This amendment applies in relation to a PCT application that was made before 15 April 2013 and for which a notice of withdrawal was filed on or after 15 April 2013.
Federal Register of Legislative Instruments F2013C00202
Prepared by the Office of Parliamentary Counsel, Canberra
Patents Regulations 1991 Statutory Rules No. 71, 1991 as amended
made under the
Patents Act 1990
Compilation start date: 15 April 2013
Includes amendments up to: SLI No. 13, 2013
Volume 1: Chapters 1 to 23
Volume 2: Schedules and Endnotes
Each volume has its own contents
Federal Register of Legislative Instruments F2013C00202
About this compilation
The compiled instrument
This is a compilation of the Patents Regulations 1991 as amended and in force
on 15 April 2013. It includes any amendment affecting the compiled instrument
to that date.
This compilation was prepared on 15 April 2013.
The notes at the end of this compilation (the endnotes) include information
about amending Acts and instruments and the amendment history of each
amended provision.
Uncommenced provisions and amendments
If a provision of the compiled instrument has not commenced or is affected by
an uncommenced amendment, the text of the uncommenced provision or
amendment is set out only in the endnotes.
Application provisions for amendments
If the operation of an amendment is affected by an application provision, this
provision is set out in the endnotes.
Modifications
If a provision of the compiled instrument is affected by a textual modification
that is in force, the text of the modifying provision is set out in the endnotes.
Provision ceasing to have effect
If a provision of the compiled instrument has expired or otherwise ceased to
have effect, or is to expire or otherwise cease to have effect, in accordance with
a provision of the instrument, details of the provision are set out in the endnotes.
Federal Register of Legislative Instruments F2013C00202
Patents Regulations 1991 i
Contents
Schedule 3—Formal requirements for documents to
be filed 1 1 Terminology and signs ......................................................................1
1A Title of specification..........................................................................1
2 Fitness for reproduction.....................................................................1
3 Separate sheets ..................................................................................2
4 Margins..............................................................................................2
5 Numeration........................................................................................3
7 Writing of textual matter ...................................................................3
8 Drawings, formulas and tables in textual matter................................4
9 Words in drawings.............................................................................4
10 Alterations .........................................................................................4
11 Special requirements for drawings ....................................................5
12 Amino acid sequences and nucleotide sequences ..............................6
13 Electronic documents ........................................................................6
14 Scandalous matter..............................................................................6
Federal Register of Legislative Instruments F2013C00202
ii Patents Regulations 1991
Schedule 5—Knowledge requirements 7
Part 1—Overall requirement 7
Part 2—Legal process and overview of intellectual property 8
Part 3—Professional conduct 9
Part 4—Intellectual property law 9
Part 5—Intellectual property systems 10
Schedule 7—Fees 11
Part 1—Patent Attorneys 11
Part 2—General fees 12
Part 3—General fees for international applications 19
Part 4—Fees payable for benefit of International Bureau 20
Schedule 8—Costs, expenses and allowances 22
Part 1—Costs 22
Part 2—Expenses and allowances 22 Division 1—Expenses ....................................................................................22
Division 2 Allowances................................................................................23
Endnotes 24
Endnote 1—Legislation history 24
Endnote 2—Amendment history 29
Endnote 3—Application, saving and transitional provisions 54
Patents Regulations (Amendment) (1997 No. 345) ........................................54
Patents Regulations (Amendment) (1998 No. 56)..........................................54
Patents Amendment Regulations 1999 (No. 3) (1999 No. 261) .....................56
Patents Amendment Regulations 2002 (No. 1) (2002 No. 59) .......................56
Patents Amendment Regulations 2002 (No. 4) (2002 No. 317) .....................56
Patents Amendment Regulations 2003 (No. 3) (2003 No. 316) .....................57
Patents Amendment Regulations 2004 (No. 2) (2004 No. 193) .....................58
Patents Amendment Regulations 2004 (No. 4) (2004 No. 395) .....................58
Patents Amendment Regulations 2005 (No. 1) (2005 No. 51) .......................59
Patents Amendment Regulations 2006 (No. 1) (2006 No. 55) .......................59
Federal Register of Legislative Instruments F2013C00202
Patents Regulations 1991 iii
Intellectual Property Legislation Amendment Regulations 2007 (No.
1) (2007 No. 40) ..............................................................................60
Patents and Trade Marks Legislation Amendment Regulations 2008
(2008 No. 122) ................................................................................63
Patents Amendment Regulations 2008 (No. 1) (2008 No. 178) .....................64
Intellectual Property Legislation Amendment Regulations 2008 (No.
1) (2008 No. 279) ............................................................................65
Intellectual Property Law Amendment Regulations 2009 (No. 1)
(2009 No. 150) ................................................................................65
Intellectual Property Legislation Amendment Regulations 2011 (No.
1) (2011 No. 62) ..............................................................................65
Intellectual Property Legislation Amendment Regulations 2012 (No.
1) (2012 No. 66) ..............................................................................67
Endnote 4—Uncommenced amendments 69
Endnote 5—Misdescribed amendments 70
Federal Register of Legislative Instruments F2013C00202
Federal Register of Legislative Instruments F2013C00202
Formal requirements for documents to be filed Schedule 3
Patents Regulations 1991 1
Schedule 3—Formal requirements for
documents to be filed (paragraph 3.2A(1)(c), paragraph 3.2A(2)(c), subparagraph 3.2B(1)(a)(ii), paragraph 10.2(1)(a)
and subregulation 22.16(2))
1 Terminology and signs
In a document:
(a) units of description must be expressed in terms of the metric
system or, if first expressed in other terms, must be expressed
also in terms of that system; and
(b) temperatures must be expressed in degrees Celsius or, if first
expressed in another manner, must be expressed also in
degrees Celsius; and
(c) to indicate units of measurement, the rules of international
practice must be observed; and
(d) in chemical formulas, the symbols, atomic weights and
molecular formulas in general use must be employed; and
(e) other terms, signs and symbols that are generally accepted in
the art to which the document principally relates must be
employed; and
(f) if the document is expressed in English—the beginning of
any decimal fraction must be marked by a period; and
(g) units, signs, symbols and other terms must be used
consistently.
1A Title of specification
A specification must commence with a short and precise title.
2 Fitness for reproduction
Each sheet comprising a document or part of a document:
(a) must be presented in a manner that allows any number of
copies of the sheet to be reproduced directly by means of
photography, an electrostatic or photo-offset process and
microfilming; and
(b) must not be folded, creased or cracked; and
Federal Register of Legislative Instruments F2013C00202
Schedule 3 Formal requirements for documents to be filed
2 Patents Regulations 1991
(c) subject to subclause 8(4) (‘drawings, formulas and tables in
textual matter’) and subclause 11(14) (‘special requirements
for drawings’), must be presented in a vertical format; and
(d) must be durable, flexible, smooth, strong, white and have a
matt finish; and
(e) must be international sheet size A4; and
(f) must be printed on only one side of the sheet.
3 Separate sheets
(1) The patent request, the description of the invention, the claim or
claims, any drawing, and an abstract, must each commence on a
separate sheet.
(2) The sheets comprising a document must be connected so that they
may be readily:
(a) turned to be read; and
(b) separated for the purposes of reproduction and then rejoined.
4 Margins
(1) Subject to subclause (2), each sheet of a specification, or an
abstract, must have a margin that is not less than:
(a) at the top—2 cm; and
(b) on the left—2.5 cm; and
(c) on the right—2 cm; and
(d) at the bottom—2 cm.
(2) A sheet of drawings:
(a) must have a margin that is not less than:
(i) at the top—2.5 cm; and
(ii) on the left—2.5 cm; and
(iii) on the right—1.5 cm; and
(iv) at the bottom—1 cm; and
(b) must show the drawings entirely within that margin and
within an area of the sheet measuring 26.2 cm 17.0 cm (the
useable surface); and
(c) must not contain a frame surrounding the drawings or the
useable surface.
Federal Register of Legislative Instruments F2013C00202
Formal requirements for documents to be filed Schedule 3
Patents Regulations 1991 3
5 Numeration
(1) The parts of a patent application must be presented in the following
order:
(a) patent request;
(b) description of the invention, other than any sequence listing
part of the description;
(c) claim or claims;
(d) abstract;
(e) drawing or drawings;
(f) sequence listing part of the description, if applicable.
(2) Subject to subclause (3), if a specification is numbered in
accordance with subclause 6(2), the sheets of the specification
must be numbered consecutively in arabic numerals beginning with
‘1’ that are placed at the top, and in the middle, of the sheet, but
not within the margins of the sheet.
(3) The sheets of a specification that contain drawings must be
numbered by means of sets of 2 arabic numerals separated by an
oblique stroke, the first numeral in each set being the consecutive
number of each sheet, beginning with the arabic number ‘1’, and
the second being the total number of the sheets containing the
drawings.
(4) If there is more than 1 claim referred to in a complete specification,
the claims must be numbered consecutively in arabic numerals
beginning with ‘1’.
(5) In a statement of proposed amendments:
(a) the proposed amendments must be numbered consecutively;
and
(b) if the statement is a subsequent one, the numbering must be
consecutive with the numbers in the previous statement.
7 Writing of textual matter
(1) Subject to subclause (2), except with the consent of the
Commissioner, a patent request, specification and any abstract
relating to a patent application must be typewritten or otherwise
machine printed.
Federal Register of Legislative Instruments F2013C00202
Schedule 3 Formal requirements for documents to be filed
4 Patents Regulations 1991
(2) If necessary, symbols relating to graphic matter, or chemical or
mathematical formulas, may be handwritten or drawn, as the case
may be.
(3) The lines of text in a typewritten document must be 1 1 /2 spaced.
(4) The text in a document must be presented in letters the capitals of
which are not less than 0.21 cm high, in a dark colour and be
indelible.
8 Drawings, formulas and tables in textual matter
(1) A patent request must not include a drawing.
(2) The description of an invention or an abstract:
(a) must not include a drawing; and
(b) may include chemical or mathematical formulas or tables.
(3) A claim:
(a) must not include a drawing; and
(b) may include chemical or mathematical formulas; and
(c) if, in the reasonable opinion of the Commissioner, the subject
matter of the claim makes the use of a table desirable—may
include tables.
(4) A table or a chemical or mathematical formula may be presented in
a horizontal format if it cannot be presented in a vertical format in
a satisfactory manner.
(5) If a table or a chemical or mathematical formula is presented in a
horizontal format, the top of the table or formula must be placed on
the left side of the paper.
9 Words in drawings
A drawing must not include text, other than a word or words
indispensable to the understanding of the drawing.
10 Alterations
(1) Subject to subclause (2), a document must be free from erasures,
alterations, overwritings and interlineations.
Federal Register of Legislative Instruments F2013C00202
Formal requirements for documents to be filed Schedule 3
Patents Regulations 1991 5
(2) If, in the reasonable opinion of the Commissioner, failure to
comply with subclause (1) would not:
(a) compromise the authenticity; or
(b) jeopardise the likelihood of clear reproduction;
of a document, the Commissioner may excuse it from compliance
with subclause (1).
11 Special requirements for drawings
(1) A drawing must be executed in durable, black, dense, dark,
uniformly thick and well-defined, lines and strokes without
colouring.
(2) A cross-section must be indicated by oblique hatching that does not
impede the clear reading of reference letters, numbers or signs and
leading lines.
(3) The scale of a drawing and the distinctness of its execution must
enable all the details to be distinguished without difficulty on a
photographic reproduction of the drawing with a two-thirds linear
reduction in size.
(4) If the scale of a drawing is given on the drawing, it must be
represented graphically.
(5) A letter, number or reference line that is shown on a drawing must
be presented simply and be clear.
(6) Brackets, braces, circles or inverted commas must not be used in
association with letters or numbers.
(7) A line in a drawing must ordinarily be drawn with the aid of
drafting instruments.
(8) A sheet of drawings may include more than 1 drawing.
(9) Each element of a drawing must be shown in proper proportion to
each other element of the drawing, other than where the use of a
different proportion is indispensable for the clarity of the drawing.
(10) The height of a letter or a number in a drawing must not be less
than 0.32 cm.
Federal Register of Legislative Instruments F2013C00202
Schedule 3 Formal requirements for documents to be filed
6 Patents Regulations 1991
(11) For the lettering of a drawing, the Latin or, if customary, the Greek
alphabet must be used.
(12) If drawings on 2 or more sheets of drawings form in effect a single
drawing, the drawings must be so arranged that the single drawing
can be assembled without concealing any part of the other
drawings.
(13) Subject to subclause (14), if there is more than 1 drawing on a
sheet of drawings, the drawings must be presented on the sheet of
drawings in a vertical format and separate from each other.
(14) If the drawings on a sheet of drawings cannot be presented in a
vertical format, they must be presented in a horizontal format with
the tops of the drawings on the left of the sheet of drawings.
(15) The drawings must be numbered consecutively in arabic numerals
beginning with ‘1’.
(16) A reference sign that is not mentioned in the description of the
invention must not be referred to in a drawing.
(17) A reference sign that is not mentioned in a drawing must not be
referred to in the description.
(18) A feature of a drawing that is denoted by a reference sign must be
so denoted consistently.
12 Amino acid sequences and nucleotide sequences
An amino acid sequence or a nucleotide sequence that is part of a
specification may be filed in a format approved by the
Commissioner on a compact disk or by other electronic means
approved by the Commissioner.
13 Electronic documents
A document that is filed in electronic form must be in the approved
form.
14 Scandalous matter
A complete application must not contain or consist of scandalous
matter.
Federal Register of Legislative Instruments F2013C00202
Knowledge requirements Schedule 5
Overall requirement Part 1
Patents Regulations 1991 7
Schedule 5—Knowledge requirements (regulation 20.8)
Part 1—Overall requirement
1. A course of study must provide for a student to have an appropriate
level of:
(a) knowledge and practical application so that the student can
give advice about applicable categories of protection for
particular activities; and
(b) appreciation of the advantages of each form of protection for
a client; and
(c) understanding of how to get and maintain appropriate
protection for a client; and
(d) understanding of the required standard of professional
conduct.
Federal Register of Legislative Instruments F2013C00202
Schedule 5 Knowledge requirements
Part 2 Legal process and overview of intellectual property
8 Patents Regulations 1991
Part 2—Legal process and overview of intellectual
property
2. A course of study must provide for a student to have an appropriate
level of understanding of the Australian legal system and how
intellectual property rights may be protected, including by
reference to:
(a) the Australian legal system; and
(b) intellectual property rights.
Federal Register of Legislative Instruments F2013C00202
Knowledge requirements Schedule 5
Professional conduct Part 3
Patents Regulations 1991 9
Part 3—Professional conduct
3. A course of study must provide for a student to have an appropriate
level of understanding of the rights, privileges and responsibilities
of a patent attorney or trade marks attorney.
Part 4—Intellectual property law
4. A course of study must provide for a student to have an appropriate
level of understanding of the principles of trade marks, patents,
designs and copyright.
Federal Register of Legislative Instruments F2013C00202
Schedule 5 Knowledge requirements
Part 5 Intellectual property systems
10 Patents Regulations 1991
Part 5—Intellectual property systems
5. A course of study must provide for a student to have an appropriate
level of understanding of the system of protecting and exploiting
trade marks, patents and designs, both in Australia and other
countries. This includes:
(a) the ability to draft patent specifications; and
(b) an understanding of patent specifications; and
(c) the ability to advise on the interpretation, validity and
infringement of patent specifications.
Federal Register of Legislative Instruments F2013C00202
Fees Schedule 7
Patent Attorneys Part 1
Patents Regulations 1991 11
Schedule 7—Fees (regulations 22.2, 22.2AA, 22.3 and 22.4)
Part 1—Patent Attorneys
Item Matter Fee ($)
101 Applying for admission to sit for an examination
conducted by the Board
400
102 Applying for grant of a supplementary examination
conducted by the Board
200
103 Applying for a report of reasons for failure of an
examination conducted by the Board
200
104 Applying for registration as a patent attorney 300
105 Annual registration of a patent attorney 350
106 Annual registration fee payable for combined
registration as a patent attorney and trade marks
attorney
550
107 Applying under regulation 20.29, 20.30 or 20.31 250
108 Applying for registration as an incorporated patent
attorney
300
109 Annual registration of an incorporated patent attorney 350
110 Annual registration fee payable for combined
registration as an incorporated patent attorney and
incorporated trade marks attorney
550
111 Applying to be restored to the Register of Patent
Attorneys, as authorised by regulation 20A.22
250
Federal Register of Legislative Instruments F2013C00202
Schedule 7 Fees
Part 2 General fees
12 Patents Regulations 1991
Part 2—General fees
Item Matter Fee
201 Filing a request for a patent accompanied by a
provisional specification:
(a) by approved means; $110
(b) by another means $210
202 Filing a request for an innovation patent
accompanied by a complete specification:
(a) by approved means; $180
(b) by another means $280
203 Filing a request for a standard patent accompanied
by a complete specification:
(a) by approved means; $370
(b) by another means $470
204 Filing a request for an examination, under
section 45 of the Act, of a standard patent request
and complete specification for a PCT application if
the Patent Office has established an international
preliminary examination report under Article 35 of
the PCT, other than a report under Rule 44bis.1 of
the PCT, in respect of the application
$300
205 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
$490
206 Search by the Commissioner in relation to a patent
request and complete specification for a standard
patent as part of an examination, if the complete
application was made on or after 15 April 2013
$1,400
207 Filing a request under paragraph 101A(b) of the
Act, by the patentee of an innovation patent, for
examination of the complete specification relating
to the innovation patent
$500
208 Filing a request under paragraph 101A(b) of the
Act, by a person other than the patentee of an
innovation patent, for examination of the complete
specification relating to the innovation patent:
Federal Register of Legislative Instruments F2013C00202
Fees Schedule 7
General fees Part 2
Patents Regulations 1991 13
Item Matter Fee
(a) payable by the person making the request; and $250
(b) payable by the patentee $250
209 Filing a request under subsection 44(3) of the Act
requiring the Commissioner to direct an applicant
to request examination
$100
210 Filing a request under subsection 97(2) or
paragraph 101G(1)(b) of the Act for re-examination
of a complete specification
$800
211 Continuation fee under paragraph 142(2)(d) of the
Act, or renewal fee under paragraph 143(a) of the
Act, for:
(a) the fourth anniversary:
(i) fee paid by approved means; $300
(ii) fee paid by another means; $350
(b) the fifth anniversary:
(i) fee paid by approved means; $300
(ii) fee paid by another means; $350
(c) the sixth anniversary:
(i) fee paid by approved means; $300
(ii) fee paid by another means; $350
(d) the seventh anniversary:
(i) fee paid by approved means; $300
(ii) fee paid by another means; $350
(e) the eighth anniversary:
(i) fee paid by approved means; $300
(ii) fee paid by another means; $350
(f) the ninth anniversary:
(i) fee paid by approved means; $300
(ii) fee paid by another means; $350
(g) the tenth anniversary:
(i) fee paid by approved means; $500
(ii) fee paid by another means; $550
(h) the eleventh anniversary:
(i) fee paid by approved means; $500
(ii) fee paid by another means; $550
(i) the twelfth anniversary:
(i) fee paid by approved means; $500
Federal Register of Legislative Instruments F2013C00202
Schedule 7 Fees
Part 2 General fees
14 Patents Regulations 1991
Item Matter Fee
(ii) fee paid by another means; $550
(j) the thirteenth anniversary:
(i) fee paid by approved means; $500
(ii) fee paid by another means; $550
(k) the fourteenth anniversary:
(i) fee paid by approved means; $500
(ii) fee paid by another means; $550
(l) the fifteenth anniversary:
(i) fee paid by approved means; $1 120
(ii) fee paid by another means; $1 170
(m) the sixteenth anniversary:
(i) fee paid by approved means; $1 120
(ii) fee paid by another means; $1 170
(n) the seventeenth anniversary:
(i) fee paid by approved means; $1 120
(ii) fee paid by another means; $1 170
(o) the eighteenth anniversary:
(i) fee paid by approved means; $1 120
(ii) fee paid by another means; $1 170
(p) the nineteenth anniversary:
(i) fee paid by approved means; $1 120
(ii) fee paid by another means; $1 170
(q) if an extension of the term of a standard patent
is granted under section 76 of the Act:
(i) the twentieth anniversary, fee paid using
by approved means;
$2 300
(ii) the twentieth anniversary, fee paid by
another means;
$2 350
(iii) each subsequent anniversary during the
period of extension, fee paid by approved
means;
$2 300
(iv) each subsequent anniversary during the
period of extension, fee paid by another
means
$2 350
and, in addition, if the fee is not paid on or before
the anniversary but is paid within 6 months after the
anniversary
$100 for each month, or
part of a month, in the
period between the
anniversary and the day
when the fee is paid
Federal Register of Legislative Instruments F2013C00202
Fees Schedule 7
General fees Part 2
Patents Regulations 1991 15
Item Matter Fee
212 Renewal fee under paragraph 143A(d) of the Act
for:
(a) the second anniversary:
(i) fee paid by approved means; $110
(ii) fee paid by another means; $160
(b) the third anniversary:
(i) fee paid by approved means; $110
(ii) fee paid by another means; $160
(c) the fourth anniversary:
(i) fee paid by approved means; $110
(ii) fee paid by another means; $160
(d) the fifth anniversary:
(i) fee paid by approved means; $220
(ii) fee paid by another means; $270
(e) the sixth anniversary:
(i) fee paid by approved means; $220
(ii) fee paid by another means; $270
(f) the seventh anniversary:
(i) fee paid by approved means; $220
(ii) fee paid by another means $270
and, in addition, if the fee is not paid on or before
the anniversary but is paid within 6 months after the
anniversary
$100 for each month, or
part of a month, in the
period between the
anniversary and the day
when the fee is paid
213 Acceptance of a patent request and complete
specification under section 49 of the Act:
(a) for acceptance; and $250
(b) if more than 20 claims are contained in the
specification at acceptance
$110 for each claim in
excess of 20
214 Filing an application or request under section 17, 32
or 36, or subsection 191A(2) of the Act
$600
214A National phase entry of a PCT application under
paragraph 29A(5)(b) of the Act:
(a) fee paid by approved means; $370
(b) fee paid by another means $470
Federal Register of Legislative Instruments F2013C00202
Schedule 7 Fees
Part 2 General fees
16 Patents Regulations 1991
Item Matter Fee
215 Filing a request under subregulation 3.25(1) for the
certification referred to in Rule 11.3(a) of the
Budapest Treaty
$550
216 Filing a notice of opposition under regulation 5.4,
5.6 or 5.10
$600
217 Filing a request under subregulation 5.17(1) for
dismissal of opposition
$600
218 Filing an application under subregulation 5.9(1) for
an extension of time
$500 for each month or
part of a month for
which the extension is
sought
219 Making a representation to the Commissioner,
under subregulation 5.14(2) or 5.15(3) or
paragraph 5.16(2)(b), objecting to a proposed
amendment
$600
220 Making a representation to the Commissioner under
subregulation 5.22(2) objecting to a proposed
direction
$600
222 Filing a request for leave to amend:
(a) a complete specification relating to an
application for a standard patent, before a
request for examination is filed or after the
complete specification is accepted; or
(b) a complete specification relating to a standard
patent
$250
222A Grant of leave to amend a complete specification
relating to a standard patent, or relating to an
application for a standard patent, after the complete
specification is accepted, if:
$110 for each additional
claim that arises as
described in
paragraph (b)
(a) more than 20 claims are contained in the
complete specification as proposed to be
amended; and
(b) the effect of the proposed amendment would be
to increase the number of claims in the complete
specification
223 Filing a request for leave to amend a patent request
for an innovation patent to make it a patent request
for a standard patent
$190
Federal Register of Legislative Instruments F2013C00202
Fees Schedule 7
General fees Part 2
Patents Regulations 1991 17
Item Matter Fee
224 Filing a request for leave to amend a complete
specification relating to an innovation patent:
(a) after the patent is granted but before a request
for examination is filed; or
(b) after the patent is certified
$250
226 Filing an application for an extension of time under
subsection 223(2) of the Act on a ground specified
in paragraph 223(2)(a) of the Act
$100 for each month or
part of a month for
which the extension is
sought
227 Filing an application under subsection 223(2) of the
Act for an extension of time on the ground
specified in paragraph 223(2)(b) of the Act
$100
228 Filing an application for an extension of time under
subsection 223(2A) of the Act
$100 for each month or
part of a month for
which the extension is
sought
229 Filing a request under regulation 22.22 for the
exercise of discretionary power
$600
230 Filing a request for a hearing $600
231 Appearing and being heard at an oral hearing in
person or by other means:
(a) for the first day $1 000 less any amount
paid under item 219,
220, 229 or 230 in
relation to the
hearing
(b) if the hearing runs for more than a day $1 000 for each day, or
part of a day, after
the first day
231A Hearing on the basis of written submissions only,
where the submissions are filed after the notice of
hearing or invitation to be heard is issued
$600 less any amount
paid under item 219,
220, 229 or 230 in
relation to the hearing
233 Requesting the supply of a copy of a patent
specification
$50
234 Requesting the supply of a copy of a document
other than a patent specification:
(a) for more than 6 documents from a single source
and supplied at the same time;
$200 plus $1 per page
for each document
Federal Register of Legislative Instruments F2013C00202
Schedule 7 Fees
Part 2 General fees
18 Patents Regulations 1991
Item Matter Fee
in excess of 6
documents
(b) otherwise $50 per document
235 Requesting the supply of a certificate by the
Commissioner
$50
236 Filing a request under regulation 3.14A for an
international-type search
$2 200
236A Preliminary search and opinion by the
Commissioner in relation to a patent request and
complete specification under subsection 43A(1) of
the Act
$2,200
238 Filing an application under subsection 70(1) of the
Act for the grant of an extension of the term of a
standard patent
$2 000
239 Filing an application to the Commissioner, for an
extension of time under subregulation 3.17A(5):
(a) if the application is filed on or before the date
on which notice of acceptance is published; $100 per month or part
of a month
(b) if the application is filed after the date on which
notice of acceptance is published $150 per month or part
of a month
Federal Register of Legislative Instruments F2013C00202
Fees Schedule 7
General fees for international applications Part 3
Patents Regulations 1991 19
Part 3—General fees for international applications
Item Matter Fee
301 Transmittal fee under Rule 14 of the PCT $200
302 Search fee under Rule 16 of the PCT $2 200
303 Additional fee for search under Article 17(3)(a) of
the PCT
$2 200
304 Preliminary examination fee under Rule 58 of the
PCT
(a) if the international search report was issued by
the Patent Office in respect of the international
application;
$590
(b) in other cases $820
305 Additional fee for international preliminary
examination under Article 34(3)(a) of the PCT
$590
306 For a copy of a document in accordance with
Rule 44.3(b) or 71.2(b) of the PCT
$50
307 Late payment fee under Rule 16 bis
.2 of the PCT the greater of:
(a) 50% of the amount
of the unpaid fees
specified in the
invitation; and
(b) the amount of the
transmittal fee;
but not more than 50%
of the international
filing fee, not taking
into account any fee for
each sheet of the
international
application in excess of
30 sheets
308 For processing a request for restoration of priority
under Rule 26 bis
of the PCT.
$200
Federal Register of Legislative Instruments F2013C00202
Schedule 7 Fees
Part 4 Fees payable for benefit of International Bureau
20 Patents Regulations 1991
Part 4—Fees payable for benefit of International
Bureau
Ite
m
Matter Fee
401 International filing fee:
(Rule 15.2 of the PCT)
1,330 Swiss francs
plus 15 Swiss francs
for each sheet of the
international
application in excess
of 30 sheets
402 Handling fee:
(Rule 57.2 of the PCT)
200 Swiss francs
Reductions
403 The international filing fee is reduced by the following amount if the
international application is, as provided for in the Administrative Instructions,
filed:
(a) on paper together with a copy in electronic form,
in character coded format, of the request and the
abstract:
100 Swiss francs
(b) in electronic form, the request not being in
character coded format: 100 Swiss francs
(c) in electronic form, the request being in character
coded format: 200 Swiss francs
(d) in electronic form, the request, description,
claims and abstract being in character coded
format:
300 Swiss francs
404 The international filing fee (where applicable, as reduced under item 403) and
the handling fee are reduced by 90% if the international application is filed
by:
(a) an applicant who is a natural person and who is a national of and resides in
a State whose per capita national income is below US$3,000 (according to
the average per capita national income figures used by the United Nations
for determining its scale of assessments for the contributions payable for
the years 1995, 1996 and 1997) or, until December 31, 2009, one of the
following States: Antigua and Barbuda, Bahrain, Barbados, Libyan Arab
Jamahiriya, Oman, Seychelles, Singapore, Trinidad & Tobago and United
Arab Emirates; or
Federal Register of Legislative Instruments F2013C00202
Fees Schedule 7
Fees payable for benefit of International Bureau Part 4
Patents Regulations 1991 21
Ite
m
Matter Fee
(b) an applicant, whether a natural person or not, who is a national of and
resides in a State that is classed as a least developed country by the United
Nations;
provided that, if there are several applicants, each must satisfy the criteria set
out in either sub-item (a) or (b).
Federal Register of Legislative Instruments F2013C00202
Schedule 8 Costs, expenses and allowances
Part 1 Costs
22 Patents Regulations 1991
Schedule 8—Costs, expenses and allowances (subregulation 20.30(2) and regulation 22.8)
Part 1—Costs
Column 1 Column 2 Column 3
Item Matter Amount
1 Notice of opposition $200
2 Statement of grounds and particulars $750
3 Receiving and perusing statement of grounds
and particulars
$500
4 Evidence in support $1 500
5 Receiving and perusing notice of opposition $200
6 Receiving and perusing evidence in support $750
7 Evidence in answer $1 500
8 Receiving and perusing evidence in answer $750
9 Evidence in reply $750
10 Receiving and perusing evidence in reply $350
11 Preparation of case for hearing $1 000
12 Attendance at hearing by registered patent
attorney or solicitor without counsel
$260 an hour, but
not more than
$1 170 a day
13 Attendance at hearing by registered patent
attorney or solicitor instructing counsel
$200 an hour, but
not more than $900
a day
14 Counsel fees for attendance at a hearing $300 an hour, but
not more than
$1 350 a day
Part 2—Expenses and allowances
Division 1—Expenses
1 A person who has paid a fee prescribed in these Regulations in
relation to proceedings before the Commissioner or the
Disciplinary Tribunal may be paid the amount of the fee.
Federal Register of Legislative Instruments F2013C00202
Costs, expenses and allowances Schedule 8
Expenses and allowances Part 2
Patents Regulations 1991 23
2 A person attending proceedings before the Commissioner or the
Disciplinary Tribunal must be paid:
(a) a reasonable amount for allowances for transport between the
usual place of residence of the person and the place that he or
she attends for that purpose; and
(b) if the person is required to be absent overnight from his or
her usual place of residence—a reasonable amount for
allowances up to a daily maximum of $700 for meals and
accommodation.
Division 2 Allowances
3 A person who, because of his or her professional, scientific or
other special skill or knowledge, is summoned to appear before the
Commissioner or the Disciplinary Tribunal as a witness must be
paid:
(a) if the person is remunerated in his or her occupation by
wages, salary or fees—an amount equal to the amount of
wages, salary or fees not paid to the person because of his or
her attendance for that purpose; or
(b) in any other case—an amount of not less than $140, or more
than $700, for each day on which he or she so attends.
4 A person summoned to appear before the Commissioner or the
Disciplinary Tribunal as a witness, other than a witness referred to
in clause 3, must be paid:
(a) if the person is remunerated in his or her occupation by
wages, salary or fees—an amount equal to the amount of
wages, salary or fees not paid to the person because of his or
her attendance for that purpose; or
(b) in any other case—an amount of not less than $80, or more
than $130, for each day on which he or she so attends.
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 1—Legislation history
24 Patents Regulations 1991
Endnotes
Endnote 1—Legislation history
This endnote sets out details of the legislation history of the Patents
Regulations 1991.
Number and year Gazettal or FRLI
registration date
Commencement
date
Application, saving
and transitional
provisions
1991 No. 71 26 Apr 1991 30 Apr 1991
1991 No. 456 19 Dec 1991 rr. 3, 5 and 7: 1 Jan
1992
Remainder: 19 Dec
1991
—
1992 No. 148 9 June 1992 r. 5: 9 June 1992
Remainder: 1 July 1992
r. 7
1993 No. 113 3 June 1993 1 July 1993 r. 9
1993 No. 227 26 Aug 1993 rr. 3.1, 4.1 and 4.4: 1
Oct 1992
Remainder: 1 Jan 1993
—
1993 No. 340 10 Dec 1993 10 Dec 1993 r. 8
1993 No. 341 10 Dec 1993 1 Jan 1994 —
1994 No. 182 16 June 1994 29 June 1994 —
1994 No. 317 6 Sept 1994 1 Oct 1994 r. 10
1994 No. 387 21 Nov 1994 rr. 9 and 10: 30 May
1995
Remainder: 21 Nov
1994
r. 10
1995 No. 16 14 Feb 1995 r. 38: 30 Apr 1991
Remainder: 14 Feb 1995
r. 45
1995 No. 20 22 Feb 1995 23 Feb 1995 —
1995 No. 82 9 May 1995 rr. 4–9, 11.2 and 12–14:
1 July 1995
Remainder: 9 May 1995
r. 14
1995 No. 427 22 Dec 1995 1 Jan 1996 —
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 1—Legislation history
Patents Regulations 1991 25
Number and year Gazettal or FRLI
registration date
Commencement
date
Application, saving
and transitional
provisions
1996 No. 271 11 Dec 1996 11 Dec 1996 —
1997 No. 192 4 July 1997 4 July 1997 —
1997 No. 345 9 Dec 1997 rr. 3, 4, 8–10, 13 and 14:
1 Jan 1998
Remainder: 9 Dec 1997
r. 3
1998 No. 45 25 Mar 1998 25 Mar 1998 —
1998 No. 56 8 Apr 1998 8 Apr 1998 rr. 13–17
1998 No. 141 25 June 1998 rr. 3–5: 1 July 1998
Remainder: 25 June
1998
—
1998 No. 241 31 July 1998 31 July 1998 —
1998 No. 257 12 Aug 1998 12 Aug 1998 —
1998 No. 264 26 Aug 1998 rr. 7.1, 7.2 and 7.4: 1
Nov 1998
Remainder: 26 Aug
1998
—
1998 No. 291 7 Sept 1998 7 Sept 1998 —
1998 No. 319 1 Dec 1998 27 Jan 1999 (see r. 2) —
1998 No. 342 22 Dec 1998 1 Jan 1999 —
1998 No. 345 22 Dec 1998 27 Jan 1999 —
1999 No. 154 14 July 1999 14 July 1999 —
1999 No. 184 1 Sept 1999 rr. 1–3 and Schedule 1:
1 Sept 1999
Remainder: 6 Sept 1999
—
1999 No. 261 27 Oct 1999 rr. 1–4 and Schedule 1:
27 Oct 1999
Remainder: 1 Jan 2000
r. 4
1999 No. 349 22 Dec 1999 rr. 1–3 and Schedule 1:
22 Dec 1999
Remainder: 1 Jan 2000
—
2000 No. 317 29 Nov 2000 rr. 1–3 and Schedule 1:
29 Nov 2000
Schedule 2: 1 Jan 2001
Remainder: 1 Mar 2001
—
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 1—Legislation history
26 Patents Regulations 1991
Number and year Gazettal or FRLI
registration date
Commencement
date
Application, saving
and transitional
provisions
2001 No. 98 23 May 2001 24 May 2001 (see r. 2) —
2001 No. 184 5 July 2001 5 July 2001 —
2001 No. 345 21 Dec 2001 Schedule 2: 1 Jan 2002
Remainder: 21 Dec
2001
—
2002 No. 59 28 Mar 2002 1 Apr 2002 r. 4
2002 No. 100 23 May 2002 23 May 2002 —
2002 No. 173 11 July 2002 rr. 1–5 and Schedules 1–
3: 11 July 2002
Remainder: 1 Sept 2002
—
2002 No. 263 6 Nov 2002 6 Nov 2002 —
2002 No. 317 19 Dec 2002 rr. 1–3 and Schedule 1:
19 Dec 2002
Remainder: 1 Jan 2003
r. 4
2003 No. 71 28 Apr 2003 28 Apr 2003 —
2003 No. 213 21 Aug 2003 rr. 1–3 and Schedule 1:
21 Aug 2003
Remainder: 26 Aug
2003 (see r. 2(b))
—
2003 No. 316 11 Dec 2003 rr. 1–4 and Schedule 1:
11 Dec 2003
Remainder: 1 Jan 2004
r. 4
2004 No. 23 26 Feb 2004 11 Mar 2004 —
2004 No. 193 1 July 2004 1 July 2004 r. 4
2004 No. 250 20 Aug 2004 20 Aug 2004 —
2004 No. 395 23 Dec 2004 23 Dec 2004 r. 4
2005 No. 51 29 Mar 2005 (see
F2005L00753)
rr. 1–4 and Schedule 1:
30 Mar 2005
Schedule 2: 1 Apr 2005
Schedule 3: 3 Apr 2005
r. 4
2006 No. 55 22 Mar 2006 (see
F2006L00846)
1 Apr 2006 r. 4
2006 No. 355 15 Dec 2006 (see
F2006L03971)
1 Mar 2007 —
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 1—Legislation history
Patents Regulations 1991 27
Number and year Gazettal or FRLI
registration date
Commencement
date
Application, saving
and transitional
provisions
2007 No. 40 23 Mar 2007 (see
F2007L00650)
rr. 1–10 and
Schedules 1, 2, 3, 5 and
6: 27 Mar 2007
Schedules 4 and 8: 1
Apr 2007 (see r. 2(b))
Schedule 7: 27 Mar
2007 (see r. 2(c))
r. 8
2007 No. 357 18 Oct 2007 (see
F2007L04114)
22 Oct 2007 —
2008 No. 122 23 June 2008 (see
F2008L02119)
1 July 2008 r. 5
2008 No. 178 2 Sept 2008 (see
F2008L03228)
1 July 2008 —
2008 No. 279 19 Dec 2008 (see
F2008L04588)
1 Jan 2009 r. 3
2009 No. 150 26 June 2009 (see
F2009L02472)
1 July 2009 r. 3
2009 No. 332 27 Nov 2009 (see
F2009L04297)
12 Dec 2009 —
2010 No. 181 30 June 2010 (see
F2010L01791)
rr. 1–3 and Schedule 1:
1 July 2010
r. 4 and Schedule 2:
1 Aug 2010
—
2011 No. 62 16 May 2011 (see
F2011L00773)
1 July 2011 rr. 3 and 4
2011 No. 217 29 Nov 2011 (see
F2011L02480)
rr. 1–3 and Schedule 1:
27 Dec 2011
r. 4 and Schedule 2:
1 Jan 2012
—
2012 No. 66 14 May 2012 (see
F2012L01031)
Schedule 1 (Parts 1–4):
1 July 2012
Schedule 1 (Part 5): 1
Oct 2012
s. 3
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 1—Legislation history
28 Patents Regulations 1991
Number and year Gazettal or FRLI
registration date
Commencement
date
Application, saving
and transitional
provisions
2012 No. 221 17 Sept 2012 (see
F2012L01878)
18 Sept 2012 —
31, 2013 18 Mar 2013 (see
F2013L00479)
Schedule 1, Schedule 3
(items 1–9), Schedule 4
(items 1–29), Schedule
6 (items 5–86) and
Schedule 7 (items 1, 2):
15 Apr 2013
—
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 29
Endnote 2—Amendment history
This endnote sets out the amendment history of the Patents Regulations 1991.
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
Chapter 1
r. 1.1 ..............................................rs. 1998 No. 257
r. 1.3 ..............................................am. 1998 No. 345; 2001 No. 98; 2004 No. 395; 2008
Nos. 122 and 279; 2009 No. 332; 2011 No. 217; 2012 No. 66; No. 31,
2013
r. 1.3A ...........................................ad. 2003 No. 213
r. 1.4 ..............................................am. 1991 No. 456; 1992 No. 148; 1993 Nos. 227 and 341
rs. 1995 Nos. 16 and 427
am. 1997 No. 345; 1998 Nos. 141 and 342; 1999 No. 349; 2000 No. 317;
2001 No. 345; 2002 Nos. 59 and 317; 2003 No. 316; 2005 No. 51; 2006
No. 55; 2007 No. 40; 2008 No. 279; 2009 No. 150; 2010 No. 181; 2011
No. 62; 2012 No. 66
rs. No. 31, 2013
r. 1.5 ..............................................am. 1995 No. 16
rs. 2001 No. 98
Heading to r. 1.6 ............................rs. 2009 No. 332; No. 31, 2013
r. 1.6 ..............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2008 No. 279
rs. No. 31, 2013
r. 1.6A ...........................................rep. No. 31, 2013
r. 1.7 ..............................................am. 2001 No. 98
r. 1.8 ..............................................ad. 2009 No. 332
Chapter 2
r. 2.1 ..............................................am. 2001 No. 98
Heading to r. 2.2 ............................rs. 2002 No. 59; No. 31, 2013
r. 2.2 ..............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 59
rs. No. 31, 2013
r. 2.2A ...........................................ad. No. 31, 2013
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
30 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 2.2B............................................ad. No. 31, 2013
r. 2.2C............................................ad. No. 31, 2013
r. 2.2D ...........................................ad. No. 31, 2013
Heading to r. 2.3 ............................rs. 2002 No. 59; No. 31, 2013
r. 2.3 ..............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 59
rs. No. 31, 2013
r. 2.4 ..............................................rs. 1995 No. 16
am. 2001 No. 98
r. 2.5 ..............................................am. 2001 No. 98
rs. 2007 No. 357
r. 2.6 ..............................................rs. 2001 No. 98
r. 2.7 ..............................................am. 1995 No. 16
rs. 2001 No. 98
Chapter 3
Part 1
Division 1
Heading to Div. 1 .........................
of Part 1
ad. No. 31, 2013
r. 3.1 ..............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2003 No. 316; No. 31,
2013
r. 3.1A ...........................................ad. 2001 No. 98
am. No. 31, 2013
r. 3.2 ..............................................am. 1995 No. 16; 2000 No. 317
rs. 2001 No. 98
r. 3.2A ...........................................ad. 2001 No. 98
rs. 2009 No. 332
am. No. 31, 2013
r. 3.2AB.........................................ad. No. 31, 2013
r. 3.2B............................................ad. 2001 No. 98
am. 2002 No. 59; No. 31, 2013
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 31
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 3.2C............................................ad. No. 31, 2013
r. 3.3 ..............................................am. 1995 No. 16; 2002 No. 59; No. 31, 2013
r. 3.4 ..............................................am. 1995 No. 16; 2002 No. 59
Heading to r. 3.5 ............................rs. No. 31, 2013
r. 3.5 ..............................................am. 2000 No. 317
rs. 2001 No. 98
am. No. 31, 2013
r .3.5AA.........................................ad. No. 31, 2013
r. 3.5A ...........................................ad. 2001 No. 98
am. 2002 No. 59; 2008 No. 279; No. 31, 2013
r. 3.5AB.........................................ad. No. 31, 2013
r. 3.5AC.........................................ad. No. 31, 2013
r. 3.5AD.........................................ad. No. 31, 2013
r. 3.5AE .........................................ad. No. 31, 2013
r. 3.5AF .........................................ad. No. 31, 2013
r. 3.5AG.........................................ad. No. 31, 2013
r. 3.5B............................................ad. 2001 No. 98
am. No. 31, 2013
r. 3.6 ..............................................rs. 2001 No. 98
r. 3.7 ..............................................am. 2001 No. 98
r. 3.8 ..............................................rs. 1995 No. 16
am. 2001 No. 98
r. 3.9 ..............................................rs. 2001 No. 98
r. 3.10 ............................................am. 2001 No. 98
r. 3.11 ............................................rep. 2001 No. 98
ad. No. 31, 2013
Division 2
Heading to Div. 2 ..........................
of Part 1
ad. No. 31, 2013
r. 3.12 ............................................am. 1995 No. 16; 2001 No. 98; 2007 No. 40
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
32 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
rs. No. 31, 2013
r. 3.13 ............................................rs. 2001 No. 98; No. 31, 2013
r. 3.13A..........................................ad. No. 31, 2013
r. 3.13B..........................................ad. No. 31, 2013
r. 3.13C..........................................ad. No. 31, 2013
r. 3.13D..........................................ad. No. 31, 2013
r. 3.13E..........................................ad. No. 31, 2013
r. 3.14 ............................................am. 2001 No. 98; No. 31, 2013
Division 3
Heading to Div. 3 ..........................
of Part 1
ad. No. 31, 2013
r. 3.14A..........................................ad. No. 31, 2013
r. 3.14B..........................................ad. No. 31, 2013
r. 3.14C..........................................ad. No. 31, 2013
r. 3.14D..........................................ad. No. 31, 2013
Heading to r. 3.15 ..........................rs. No. 31, 2013
r. 3.15 ............................................am. 2001 No. 98; No. 31, 2013
r. 3.16 ............................................am. 2001 No. 98; No. 31, 2013
r. 3.17 ............................................am. 2001 No. 98
r. 3.17A..........................................ad. 2002 No. 59
am. 2002 No. 263, 2003 No. 71
rs. 2003 No. 213; No. 31, 2013
r. 3.17B..........................................ad. 2003 No. 213
am. 2007 No. 357
rs. No. 31, 2013
r. 3.17C.......................................... ad.ad. No. 31, 2013
r. 3.18 ............................................am. 1995 No. 16; 2001 No. 98; 2007 No. 357; 2008 No. 279; No. 31,
2013
Heading to r. 3.19 ..........................rs. 2001 No. 98
r. 3.19 ............................................am. 1995 No. 16; 2001 No. 98; No. 31, 2013
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 33
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 3.20 ............................................am. 2001 No. 98; 2008 No. 279
rep. No. 31, 2013
r. 3.21 ............................................am. 1995 No. 16; 2001 No. 98
rep. No. 31, 2013
r. 3.22 ............................................am. 1995 No. 16
rep. 2001 No. 98
ad. 2008 No. 279
rs. 2009 No. 332
Part 2
r. 3.23 ............................................am. 1995 No. 16; 2001 No. 98
r. 3.24 ............................................am. 1995 No. 16
r. 3.25 ............................................am. 1995 No. 16; 2001 No. 98
r. 3.26 ............................................am. 2001 No. 98
r. 3.27 ............................................am. 2001 No. 98
r. 3.28 ............................................am. 2001 No. 98
r. 3.29 ............................................am. 2001 No. 98
r. 3.30 ............................................am. 1995 No. 16; 2001 No. 98
r. 3.31 ............................................am. 2001 No. 98
Chapter 4
r. 4.1 ..............................................am. 2001 No. 98; No. 31, 2013
r. 4.2 ..............................................am. 1995 Nos. 16 and 82; 2001 No. 98
r. 4.3 ..............................................am. 1995 No. 16; 1998 No. 45; 1999 No. 261; 2002 No. 100; 2009
No. 332; No. 31, 2013
r. 4.4 ..............................................ad. No. 31, 2013
Chapter 5
Chapter 5 .......................................rs. No. 31, 2013
Part 5.1
r. 5.1 ..............................................am. 1995 Nos. 16 and 82; 1997 No. 192; 1998 No. 319; 2001 No. 98
rs. No. 31, 2013
r. 5.2 ..............................................am. 2001 No. 98
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
34 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
rs. No. 31, 2013
Heading to r. 5.3 ............................rs. 2001 No. 98
rs. No. 31, 2013
r. 5.3 ..............................................am. 1995 Nos. 16 and 82; 1998 No. 319; 2001 No. 98
rs. No. 31, 2013
Part 5.2
Division 5.2.1
r. 5.3AA.........................................ad. 2001 No. 98
rep. No. 31, 2013
Heading to r. 5.3A .........................rs. 2001 No. 98
rep. No. 31, 2013
r. 5.3A ...........................................ad. 1995 No. 16
rep. No. 31, 2013
r. 5.3B............................................ad. 2001 No. 98
rep. No. 31, 2013
r. 5.4 ..............................................am. 1993 No. 113; 1995 No. 82
rs. 2001 No. 98; No. 31, 2013
r. 5.5 ..............................................am. 2001 No. 98
rs. No. 31, 2013
r. 5.6 ..............................................am. 2001 No. 98
rs. No. 31, 2013
r. 5.7 ..............................................am. 2001 No. 98
rs. No. 31, 2013
r. 5.8 ..............................................am. 1995 Nos. 16 and 82; 2001 No. 98; 2002 No. 59
rs. No. 31, 2013
r. 5.9 ..............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98
rs. No. 31, 2013
r. 5.9A ...........................................ad. 2004 No. 250
rep. No. 31, 2013
Division 5.2.2
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 35
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 5.10 ............................................am. 1993 Nos. 113 and 340; 2000 No. 317; 2001 No. 98; 2002 No. 59;
2004 No. 250
rs. No. 31, 2013
r. 5.11 ............................................am. 2001 No. 98
rs. No. 31, 2013
r. 5.12 ............................................rs. 2001 No. 98
rs. No. 31, 2013
Part 5.3
r. 5.13 ............................................am. 1995 No. 16
rs. 2001 No. 98; No. 31, 2013
r. 5.14 ............................................rs. 2001 No. 98; No. 31, 2013
r. 5.15 ............................................rs. No. 31, 2013
r. 5.16 ............................................ad. No. 31, 2013
Part 5.4
r. 5.17 ............................................ad. No. 31, 2013
r. 5.18 ............................................ad. No. 31, 2013
Part 5.5
r. 5.19 ............................................ad. No. 31, 2013
r. 5.20 ............................................ad. No. 31, 2013
Part 5.6
r. 5.21 ............................................ad. No. 31, 2013
r. 5.22 ............................................ad. No. 31, 2013
r. 5.23 ............................................ad. No. 31, 2013
r. 5.24 ............................................ad. No. 31, 2013
r. 5.25 ............................................ad. No. 31, 2013
r. 5.26 ............................................ad. No. 31, 2013
Chapter 6
Part 1
Heading to Part 1 of.......................
Chapt. 6
ad. 1998 No. 319
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
36 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 6.1 ..............................................am. 2001 No. 98
r. 6.1A ...........................................ad. No. 31, 2013
r. 6.2 ..............................................am. 2001 No. 98; No. 31, 2013
r. 6.2A ...........................................ad. No. 31, 2013
r. 6.3 ..............................................am. 1999 No. 261
rs. 2001 No. 98
am. No. 31, 2013
r. 6.4 ..............................................am. 2001 No. 98
rep. No. 31, 2013
rr. 6.5, 6.6 ......................................rep. 2001 No. 98
Part 2
r. 6.7 ..............................................am. 1995 No. 16
rep. 1995 No. 82
Part 2 of Chapt. 6...........................ad. 1998 No. 319
r. 6.7 ..............................................ad. 1998 No. 319
r. 6.8 ..............................................ad. 1998 No. 319
r. 6.9 ..............................................ad. 1998 No. 319
r. 6.10 ............................................ad. 1998 No. 319
r. 6.11 ............................................ad. 1998 No. 319
am. 2001 No. 98
Chapter 6A
Chapter 6A ....................................ad. 2001 No. 98
rs. No. 31, 2013
r. 6A.1 ...........................................ad. 2001 No. 98
rs. No. 31, 2013
r. 6A.2 ...........................................ad. 2001 No. 98
rs. 2007 No. 40; No. 31, 2013
Chapter 7
r. 7.1 ..............................................am. 2001 No. 98
r. 7.2 ..............................................am. 2001 No. 98
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 37
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
Chapter 8 .......................................rep. No. 31, 2013
r. 8.1 ..............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 59
rep. No. 31, 2013
r. 8.1A ...........................................ad. 1999 No. 184
rep. No. 31, 2013
r. 8.1B............................................ad. 2003 No. 213
rep. 2004 No. 395
r. 8.2 ..............................................am. 1995 No. 16; 2001 No. 98
rep. No. 31, 2013
r. 8.3 ..............................................am. 1995 No. 16; 1999 No. 261; 2001 No. 98; 2003 No. 316; 2004 Nos.
193 and 395; 2007 No. 40
rep. No. 31, 2013
r. 8.4 ..............................................am. 1995 No. 16; 2001 Nos. 98 and 345; 2002 No. 100; 2004 No. 193;
2010 No. 181
rep. No. 31, 2013
r. 8.5 ..............................................am. 2001 No. 98
rep. No. 31, 2013
Heading to r. 8.6 ............................rs. 2009 No. 332
rep. No. 31, 2013
r. 8.6 ..............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2008
No. 279
rep. No. 31, 2013
r. 8.6A ...........................................ad. 2009 No. 332
rep. No. 31, 2013
r. 8.7 ..............................................am. 2001 No. 98
rep. No. 31, 2013
Chapter 9
r. 9.1 ..............................................am. 2001 No. 98
rs. 2002 No. 59
r. 9.2 ..............................................am. 2001 No. 98; No. 31, 2013
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
38 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 9.3 ..............................................am. 2001 No. 98
r. 9.4 ..............................................am. 1995 No. 16; 2001 No. 98
r. 9.5 ..............................................am. 2001 No. 98
Chapter 9A
Chapter 9A ....................................ad. 2001 No. 98
r. 9A.1 ...........................................ad. 2001 No. 98
r. 9A.2 ...........................................ad. 2001 No. 98
r. 9A.2A.........................................ad. 2002 No. 59
am. 2002 No. 173; 2003 No. 213
rep. No. 31, 2013
r. 9A.2B.........................................ad. 2003 No. 213
am. 2007 No. 357
rep. No. 31, 2013
r. 9A.3 ...........................................ad. 2001 No. 98
r. 9A.4 ...........................................ad. 2001 No. 98
am. 2002 No. 59; 2008 No. 279; No. 31, 2013
r. 9A.5 ...........................................ad. 2001 No. 98
Chapter 10
r. 10.1 ............................................am. 1995 No. 16; 2001 No. 98; 2003 No. 316; No. 31, 2013
r. 10.2 ............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2004 No. 395; No. 31,
2013
Note to r. 10.2(3)(c)(iii) .................rs. No. 31, 2013
r. 10.2A..........................................ad. No. 31, 2013
r. 10.2B..........................................ad. No. 31, 2013
r. 10.2C..........................................ad. No. 31, 2013
r. 10.3 ............................................am. 1997 No. 345; 2001 No. 98
rs. No. 31, 2013
r. 10.4 ............................................am. 2001 No. 98; No. 31, 2013
r. 10.5 ............................................am. 1995 No. 16; 2001 No. 98; No. 31, 2013
r. 10.6 ............................................rs. 1995 No. 16
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 39
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
am. No. 31, 2013
r. 10.6A..........................................ad. 2011 No. 217
r. 10.6B..........................................ad. No. 31, 2013
r. 10.7 ............................................am. 2005 No. 51; No. 31, 2013
rs. No. 31, 2013
r. 10.8 ............................................rs. 2001 No. 98
r. 10.9 ............................................rep. 2001 No. 98
r. 10.10 ..........................................am. 2001 No. 98
r. 10.11 ..........................................am. 2001 No. 98
r. 10.12 ..........................................am. 2001 No. 98
r. 10.13 ..........................................rep. 2001 No. 98
r. 10.14 ..........................................am. 2001 No. 98
Chapter 11
r. 11.1 ............................................am. 1997 No. 345; No. 31, 2013
Chapter 12
r. 12.1 ............................................am. 2001 No. 98; 2007 No. 40; 2011 No. 62; No. 31, 2013
Heading to r. 12.2 ..........................rs. 2001 No. 98
r. 12.2 ............................................am. 2001 No. 98; 2011 No. 62
r. 12.3 ............................................am. 2001 No. 98
r. 12.4 ............................................am. 2001 No. 98
Chapter 13
r. 13.1 ............................................am. 2001 No. 98
r. 13.1A..........................................ad. 2001 No. 98
am. 2004 No. 395; No. 31, 2013
r. 13.1B..........................................ad. 2004 No. 395
am. No. 31, 2013
r. 13.1C..........................................ad. No. 31, 2013
r. 13.2 ............................................am. 2001 No. 98
rep. No. 31, 2013
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
40 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 13.3 ............................................am. 1994 No. 317; 1998 No. 264; 2001 No. 98; 2002 Nos. 59, 100 and
173
Notes 1, 2 to r. 13.3 .......................ad. 1998 No. 264
r. 13.4 ............................................rs. 1995 No. 16
am. 2000 No. 317; 2001 No. 98; 2002 No. 59; 2008
No. 279; No. 31, 2013
r. 13.5 ............................................am. 2001 No. 98; 2004 No. 193
r. 13.5A..........................................ad. No. 31, 2013
Heading to r. 13.6 ..........................rs. 2001 No. 98
r. 13.6 ............................................am. 1994 No. 317; 1995 No. 82; 1998 Nos. 264 and 319; 2001 No. 98;
2002 Nos. 59 and 173
Notes 1, 2 to r. 13.6 .......................ad. 1998 No. 264
r. 13.7 ............................................ad. 2002 No. 59
Chapter 15
r. 15.1 ............................................rs. 2001 No. 98
r. 15.2 ............................................am. 2001 No. 98
r. 15.3 ............................................am. 1995 No. 16
rs. 2001 No. 98
Chapter 17
r. 17.1 ............................................rs. 2001 No. 98
r. 17.1A..........................................ad. 2001 No. 98
r. 17.2 ............................................am. 1995 No. 16; 2001 No. 98
Chapter 19
r. 19.1 ............................................am. 2001 No. 98
r. 19.2 ............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 59; No. 31, 2013
Chapter 20
Heading to Chapt. 20.....................rs. No. 31, 2013
Part 1
r. 20.1A..........................................ad. No. 31, 2013
r. 20.1 ............................................am. 1994 No. 387; 1998 Nos. 56 and 345; 2001 No. 98
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 41
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
rs. 2008 No. 122
am. No. 31, 2013
Part 2
r. 20.2 ............................................rs. 1998 No. 56; 2008 No. 122
r. 20.2A..........................................ad. 1998 No. 345
rep. 2008 No. 122
r. 20.2B..........................................ad. 1998 No. 345
rep. 2008 No. 122
r. 20.3 ............................................rs. 1998 No. 345; 2008 No. 122
am. 2009 No. 150; 2012 No. 66
r. 20.3A..........................................ad. 1998 No. 345
rep. 2008 No. 122
r. 20.4 ............................................am. 1998 No. 345; 2001 No. 98; 2002 No. 173
rs. 2008 No. 122
r. 20.5 ............................................am. 1998 No. 345
rs. 2008 No. 122
Heading to r. 20.6 ..........................rs. 1998 No. 345
r. 20.6 ............................................am. 1998 No. 345
rs. 2008 No. 122
am. 2009 No. 150
r. 20.7 ............................................rs. 1998 No. 345
am. 2001 No. 98
rs. 2008 No. 122
Heading to r. 20.8 ..........................rs. 1998 No. 345
r. 20.8 ............................................am. 1998 No. 345
rs. 2008 No. 122
am. 2009 No. 150
Heading to r. 20.9 ..........................rs. 1998 No. 345
r. 20.9 ............................................am. 1998 No. 345; 1999 No. 154
rs. 2008 No. 122
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
42 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
Heading to r. 20.10 ........................rs. 1998 No. 345
r. 20.10 ..........................................am. 1998 No. 345
rs. 2008 No. 122
r. 20.11 ..........................................rs. 1998 No. 345
rs. 2008 No. 122
Heading to r. 20.12 ........................rs. 1998 No. 345
r. 20.12 ..........................................am. 1998 No. 345
rs. 2008 No. 122
Part 3
r. 20.13 ..........................................am. 1998 No. 345
rs. 2008 No. 122
am. 2009 No. 150
r. 20.14 ..........................................am. 1998 No. 345
rs. 2008 No. 122
Part 4
Heading to r. 20.15 ........................rs. 1998 No. 345
r. 20.15 ..........................................am. 1998 No. 345
rs. 2008 No. 122
r. 20.16 ..........................................am. 1995 No. 16
rs. 1998 No. 345; 2008 No. 122
Heading to Div. 3 of ......................
Part 2 of Chapt. 20
rs. 1998 No. 345
rep. 2008 No. 122
r. 20.17 ..........................................am. 1998 No. 345
rs. 2008 No. 122
r. 20.18 ..........................................am. 1998 No. 345
rs. 2008 No. 122
r. 20.19 ..........................................am. 1998 No. 345; 1999 Nos. 184 and 349; 2001 No. 98; 2002 No. 173
rs. 2008 No. 122
r. 20.19A........................................ad. 1998 No. 345
am. 1999 No. 349; 2002 No. 173
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 43
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
rep. 2008 No. 122
r. 20.20 ..........................................am. 1998 No. 345
rs. 2008 No. 122
Heading to r. 20.21 ........................rs. 1998 No. 345
r. 20.21 ..........................................am. 1998 No. 345; 2001 No. 98
rs. 2008 No. 122
Part 5
Heading to r. 20.22 ........................rs. No. 31, 2013
r. 20.22 ..........................................am. 1998 No. 345
rs. 2008 No. 122
am. No. 31, 2013
r. 20.23 ..........................................am. 1998 No. 345
rs. 2008 No. 122
r. 20.24 ..........................................am. 2001 No. 98
rs. 2008 No. 122
r. 20.25 ..........................................am. 1998 No. 345; 2001 Nos. 98 and 345
rs. 2008 No. 122
Part 6
Heading to Part 6 ...........................
of Chapt. 20
rs. No. 31, 2013
Heading to r. 20.26 ........................rs. No. 31, 2013
r. 20. 26 .........................................rs. 2008 No. 122
r. 20.27 ..........................................am. 2001 No. 345
rs. 2008 No. 122
r. 20.28 ..........................................rs. 2008 No. 122
am. No. 31, 2013
Part 6A
Part 6A of Chapt. 20......................ad. No. 31, 2013
r. 20.28A........................................ad. No. 31, 2013
r. 20.28B........................................ad. No. 31, 2013
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
44 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
Part 7
Heading to Part 7 ...........................
of Chapt. 20
rs. No. 31, 2013
Heading to r. 20.29 ........................rs. No. 31, 2013
r. 20.29 ..........................................am. 1998 No. 345; 2001 No. 345
rs. 2008 No. 122
am. No. 31, 2013
Heading to r. 20.30 ........................rs. No. 31, 2013
r. 20.30 ..........................................am. 1998 No. 345; 2001 No. 345
rs. 2008 No. 122
am. No. 31, 2013
Heading to r. 20.31 ........................rs. No. 31, 2013
r. 20.31 ..........................................am. 2001 No. 98
rs. 2008 No. 122
am. 2012 No. 66; No. 31, 2013
Part 8
Division 1
Heading to Div. 1 of ......................
Part 5 of Chapt. 20
rs. 1998 No. 56
rep. 2008 No. 122
Heading to Div. 1 of ......................
Part 8 of Chapt. 20
ad. 2008 No. 122
Heading to r. 20.32 ........................rs. 1998 No. 345
r. 20.32 ..........................................am. 1994 No. 387; 1995 No. 82
rs. 1998 No. 56
am. 1998 No. 345
rs. 2008 No. 122
am. No. 31, 2013
r. 20.33 ..........................................rep. 1998 No. 56
ad. 2008 No. 122
r. 20.34 ..........................................rs. 1998 Nos. 56 and 345; 2008 No. 122
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 45
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 20.35 ..........................................rs. 1998 No. 56; 2008 No. 122
Division 2
r. 20.36 ..........................................rep. 1998 No. 56
ad. 2008 No. 122
r. 20.37 ..........................................am. 1994 No. 387
rs. 2008 No. 122
r. 20.38 ..........................................am. 1994 No. 387
rs. 2008 No. 122
r. 20.39 ..........................................am. 1994 No. 387
rs. 1998 No. 56; 2008 No. 122
r. 20.40 ..........................................am. 1994 No. 387
rs. 1998 No. 56; 2008 No. 122
Heading to Div. 2 of ......................
Part 5 of Chapt. 20
rs. 1998 No. 345
rep. 2008 No. 122
r. 20.41 ..........................................am. 1998 No. 345
rs. 2008 No. 122
r. 20.42 ..........................................am. 2001 No. 98
rs. 2008 No. 122
r. 20.43 ..........................................am. 1997 No. 345; 2001 No. 98
rs. 2008 No. 122
r. 20.44 ..........................................am. 2001 No. 98
rs. 2008 No. 122
am. No. 31, 2013
r. 20.45 ..........................................rs. 2008 No. 122
r. 20.46 ..........................................ad. 2008 No. 122
r. 20.47 ..........................................ad. 2008 No. 122
r. 20.48 ..........................................ad. 2008 No. 122
r. 20.49 ..........................................ad. 2008 No. 122
r. 20.50 ..........................................ad. 2008 No. 122
r. 20.51 ..........................................ad. 2008 No. 122
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
46 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 20.52 ..........................................ad. 2008 No. 122
Note to r. 20.52(3) ........................am. 2008 No. 279
Part 9
r. 20.53 ..........................................ad. 2008 No. 122
Part 10
Division 1
r. 20.54 ..........................................ad. 2008 No. 122
r. 20.55 ..........................................ad. 2008 No. 122
r. 20.56 ..........................................ad. 2008 No. 122
r. 20.57 ..........................................ad. 2008 No. 122
r. 20.58 ..........................................ad. 2008 No. 122
r. 20.59 ..........................................ad. 2008 No. 122
r. 20.60 ..........................................ad. 2008 No. 122
Division 2
r. 20.61 ..........................................ad. 2008 No. 122
r. 20.62 ..........................................ad. 2008 No. 122
r. 20.63 ..........................................ad. 2008 No. 122
r. 20.64 ..........................................ad. 2008 No. 122
r. 20.65 ..........................................ad. 2008 No. 122
Chapter 20A
Chapter 20A ..................................ad. No. 31, 2013
Part 1
r. 20A.1..........................................ad. No. 31, 2013
r. 20A.2..........................................ad. No. 31, 2013
Part 2
r. 20A.3..........................................ad. No. 31, 2013
r. 20A.4..........................................ad. No. 31, 2013
Part 3
r. 20A.5..........................................ad. No. 31, 2013
Part 4
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 47
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 20A.6..........................................ad. No. 31, 2013
r. 20A.7..........................................ad. No. 31, 2013
r. 20A. 8.........................................ad. No. 31, 2013
Part 5
Division 1
r. 20A.9..........................................ad. No. 31, 2013
r. 20A.10........................................ad. No. 31, 2013
Division 2
r. 20A.11........................................ad. No. 31, 2013
r. 20A.12........................................ad. No. 31, 2013
r. 20A.13........................................ad. No. 31, 2013
r. 20A.14........................................ad. No. 31, 2013
r. 20A.15........................................ad. No. 31, 2013
r. 20A.16........................................ad. No. 31, 2013
r. 20A.17........................................ad. No. 31, 2013
r. 20A.18........................................ad. No. 31, 2013
r. 20A.19........................................ad. No. 31, 2013
r. 20A.20........................................ad. No. 31, 2013
r. 20A.21........................................ad. No. 31, 2013
Part 6
r. 20A.22........................................ad. No. 31, 2013
Chapter 21
r. 21.1 ............................................am. 1999 No. 184
r. 21.2 ............................................ad. 1994 No. 182
rs. 1998 No. 257; 1999 No. 184
Chapter 22
Part 1
Division 1
r. 22.1 ............................................am. 1998 Nos. 241 and 342
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
48 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 22.2 ............................................am. 1991 No. 456; 1993 No. 113; 1994 No. 317; 1997 No. 345; 2001
No. 98; 2002 No. 173; 2003 No. 316; 2010 No. 181; 2012 No. 66; No.
31, 2013
r. 22.2AA.......................................ad. 2012 No. 66
r. 22.2A..........................................ad. 1998 No. 241
rs. 2001 No. 98
r. 22.2B..........................................ad. 2001 No. 98
am. 2002 No. 173; No. 31, 2013
r. 22.2C..........................................ad. 2001 No. 98
am. 2002 Nos. 59 and 173; 2003 No. 213; No. 31, 2013
r. 22.2D..........................................ad. 2001 No. 98
am. 2002 No. 173
r. 22.2E..........................................ad. 2001 No. 98
am. 2002 No. 173
rep. No. 31, 2013
r. 22.2EA .......................................ad. 2010 No. 181
rs. 2011 No. 62
r. 22.2F ..........................................ad. 2001 No. 98
am. 2002 No. 173; 2010 No. 181; No. 31, 2013
r. 22.2G..........................................ad. 2001 No. 98
am. 2002 No. 173; 2012 No. 66
r. 22.2H..........................................ad. 2001 No. 98
am. 2002 No. 173
r. 22.2I ...........................................ad. 2002 No. 173
r. 22.3 ............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 173
r. 22.4 ............................................am. 1995 Nos. 16 and 427; 1998 No. 342; 2003 No. 316
Note to r. 22.4(1C) ........................rep. 2003 No. 316
r. 22.5 ............................................am. 1995 No. 16; 2001 No. 98
r. 22.6 ............................................am. 1995 No. 16; 2001 No. 98
r. 22.7 ............................................am. 1995 No. 16
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 49
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
Division 2
r. 22.7A..........................................ad. 1993 No. 340
r. 22.8 ............................................am. 1993 No. 340; 1995 No. 16; 2001 No. 98
Part 2
r. 22.8A..........................................ad. 2001 No. 98
rep. 2009 No. 332
r. 22.9 ............................................am. 2001 No. 98
r. 22.10 ..........................................am. 2001 No. 98; 2011 No. 62; No. 31, 2013
r. 22.10A........................................ad. 2001 No. 98
r. 22.10AA.....................................ad. 2007 No. 40
am. No. 31, 2013
Note to r. 22.10AA ........................am. No. 31, 2013
r. 22.10AB.....................................ad. 2007 No. 40
am. 2011 No. 62; No. 31, 2013
Note to r. 22.10AB (2) ..................am. 2011 No. 217
r. 22.10AC.....................................ad. 2007 No. 40
rs. No. 31, 2013
r. 22.11 ..........................................am. 1993 No. 113; 1995 No. 82; 1998 Nos. 241, 264 and 319; 2001
No. 98; 2002 No. 59; 2004 No. 250; 2008 No. 122; No. 31, 2013
r. 22.12 ..........................................am. No. 31, 2013
r. 22.13 ..........................................am. 1995 No. 16; 2009 No. 150
rs. 2012 No. 66
r. 22.15 ..........................................am. 1995 No. 16
rs. 1998 No. 141
am. 2003 No. 213
rs. No. 31, 2013
r. 22.16 ..........................................am. 2001 No. 98; 2009 No. 332; No. 31, 2013
r. 22.20 ..........................................am. 1995 No. 16
r. 22.21 ..........................................am. 2001 No. 98; No. 31, 2013
r. 22.22 ..........................................rs. No. 31, 2013
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
50 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
r. 22.23 ..........................................am. 1995 No. 16
rs. No. 31, 2013
r. 22.26 ..........................................am. 1995 No. 16; 1998 Nos. 45, 291 and 345; 2001 No. 98; 2004
No. 395; 2005 No. 51; 2008 No. 122; No. 31, 2013
r. 22.27 ..........................................ad. No. 31, 2013
Chapter 23
Part 1
Heading to Part 1 ...........................
of Chapt. 23
ad. No. 31, 2013
r. 23.2 ............................................am. 2001 No. 98
r. 23.3 ............................................am. 1995 No. 16; 2001 No. 98
r. 23.4 ............................................am. 1995 Nos. 16 and 82; 2001 No. 98
r. 23.5 ............................................am. 2001 No. 98
r. 23.6 ............................................am. 2001 No. 98
r. 23.7 ............................................am. 2001 No. 98
r. 23.8 ............................................am. 1995 No. 16
r. 23.9 ............................................am. 1994 No. 317
r. 23.10 ..........................................am. 1994 No. 317; 1995 No. 16; 1997 No. 345
r. 23.11 ..........................................am. 1995 No. 16; 2001 No. 98
r. 23.12 ..........................................am. 2001 No. 98
r. 23.13 ..........................................am. 2001 No. 98
r. 23.14 ..........................................am. 1995 No. 16
r. 23.16 ..........................................am. 2001 No. 98
r. 23.17 ..........................................am. 1995 No. 16; 2001 No. 98
r. 23.18 ..........................................am. 1995 No. 16
r. 23.19 ..........................................am. 2001 No. 98
rep. 2008 No. 122
r. 23.20 ..........................................am. 1995 No. 16; 2001 No. 98
rep. 2008 No. 122
r. 23.21 ..........................................am. 2001 No. 98
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 51
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
rep. 2008 No. 122
r. 23.22 ..........................................am. 2001 No. 98
rep. 2008 No. 122
r. 23.23 ..........................................am. 2001 No. 98
rep. 2008 No. 122
r. 23.24 ..........................................rep. 2008 No. 122
r. 23.25 ..........................................am. 1995 No. 16; 2001 No. 98
r. 23.27 ..........................................ad. 1998 No. 345
rep. 2008 No. 122
r. 23.28 ..........................................ad. 1998 No. 345
rep. 2008 No. 122
r. 23.29 ..........................................ad. 1998 No. 345
rep. 2008 No. 122
r. 23.30 ..........................................ad. 1998 No. 345
rep. 2008 No. 122
r. 23.31 ..........................................ad. 1998 No. 345
rep. 2008 No. 122
r. 23.32 ..........................................ad. 2001 No. 98
r. 23.33 ..........................................ad. 2001 No. 98
r. 23.34 ..........................................ad. 2001 No. 98
r. 23.35 ..........................................ad. 2001 No. 98
Part 2
Part 2 of Chapt. 23.........................ad. No. 31, 2013
r. 23.36 ..........................................ad. No. 31, 2013
Schedule 1 .....................................am. 1995 No. 16
rep. No. 31, 2013
Heading to Schedule 1A................ad. 1995 No. 16
rep. No. 31, 2013
Schedule 1A ..................................am. 1995 No. 16; 2002 No. 317
rep. No. 31, 2013
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
52 Patents Regulations 1991
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
Schedule 2 .....................................am. 1991 No. 456
rs. 1992 No. 148
am. 1993 Nos. 227 and 341; 1995 No. 16; 2002 No. 59
rep. No. 31, 2013
Heading to Schedule 2A................ad. 1995 No. 16
rep. No. 31, 2013
Schedule 2A ..................................am. 1995 Nos. 16 and 427; 1997 No. 345
rs. 1998 No. 141
am. 1998 No. 342; 1999 No. 349; 2000 No. 317; 2001 No. 345; 2002
Nos. 59 and 317; 2003 No. 316; 2005 No. 51; 2006 No. 55; 2007 No. 40;
2008 Nos. 178 and 279; 2009 No. 150; 2010 No. 181; 2011 No. 62; 2012
No. 66
rep. No. 31, 2013
Schedule 3
Heading to Schedule 3...................rs. 2001 No. 98; 2009 No. 332; No. 31, 2013
Schedule 3 .....................................am. 1995 No. 16; 1998 No. 141; 2000 No. 317; 2001 No. 98; 2003
No. 213; 2011 No. 62
Schedule 4 .....................................rs. 1991 No. 456
am. 1992 No. 148
rs. 1993 No. 340
am. 1994 No. 182; 1995 Nos. 20 and 427
rs. 1996 No. 271; 1997 No. 345
am. 1998 Nos. 257 and 342; 1999 No. 349; 2002 Nos. 173 and 317; 2004
Nos. 23 and 193; 2005 No. 51; 2007 No. 40; 2008 No. 279; 2012 No. 66
rep. No. 31, 2013
Schedule 5
Schedule 5 .....................................am. 1994 No. 387
rs. 1998 No. 345; 2008 No. 122
Schedule 6 .....................................am. 1998 No. 345; 2001 No. 184
rep. 2008 No. 279
Schedule 6A ..................................ad. 1994 No. 182
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 2—Amendment history
Patents Regulations 1991 53
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
exp. = expired or ceased to have effect
Provision affected How affected
rs. 1997 No. 192
am. 1997 No. 345
rs. 1998 No. 257
rep. 1999 No. 184
Schedule 7
Schedule 7 .....................................am. 1991 No. 456
rs. 1992 No. 148
am. 1993 Nos. 113 and 340; 1994 No. 317; 1995 Nos. 16, 82 and 427;
1997 Nos. 192 and 345; 1998 Nos. 264, 319, 342 and 345; 1999 Nos. 261
and 349; 2000 No. 317; 2001 Nos. 98 and 345; 2002 Nos. 59 and 173;
2003 Nos. 213 and 316; 2006 No. 355; 2007 No. 40; 2008 Nos. 122 and
178; 2010 No. 181
rs. 2012 No. 66
am. 2012 Nos. 66 and 221; No. 31, 2013
Schedule 8
Schedule 8 .....................................am. 1992 No. 148
rs. 1993 No. 113
am. 1993 No. 340; 1994 No. 317; 1998 No. 345; 1999 No. 184; 2006
No. 355
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
54 Patents Regulations 1991
Endnote 3—Application, saving and transitional provisions
This endnote sets out application, saving and transitional provisions for
amendments of the Patents Regulations 1991.
Patents Regulations (Amendment) (1997 No. 345)
3 Application to certain applications
3.1 The amendment of Part 4 of Schedule 7 of the Patents Regulations
by regulation 14 of these Regulations applies only to an
international application filed on or after 1 January 1998.
Patents Regulations (Amendment) (1998 No. 56)
13 Definitions
13.1 In this Part:
new Board means the Professional Standards Board for Patent and
Trade Marks Attorneys established under Chapter 20 of the Patents
Regulations as amended by these Regulations.
old Board means the Patent Attorneys Professional Standards
Board:
(a) established under Chapter 20 of the Patents Regulations
before the commencement of these Regulations; and
(b) as constituted at any time before the commencement of these
Regulations.
14 Continuing effect of certain applications
14.1 This regulation applies to an application (including anything
accompanying the application) made in accordance with
regulation 20.2 of the Patents Regulations if:
(a) the application was made before the commencement of these
Regulations; and
(b) anything that could have been done by the old Board under
Chapter 20 of the Patents Regulations in relation to the
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Endnotes
Endnote 3—Application, saving and transitional provisions
Patents Regulations 1991 55
application (unfinished business) was not done before the
commencement of these Regulations.
14.2 The application is taken to have been made in accordance with
regulation 20.2 of the Patents Regulations as amended by these
Regulations.
14.3 The unfinished business may be finished by the new Board in
accordance with Chapter 20 of the Patents Regulations as amended
by these Regulations.
15 Continuing effect of decisions of old Board
15.1 This regulation applies to any act done, or decision made, by the
old Board under Chapter 20 of the Patents Regulations as amended
and in force at any time before the commencement of these
Regulations.
15.2 The act or decision has effect as if the act had been done, or
decision had been made, by the new Board.
16 Continuing effect of certificates
16.1 This regulation applies to each certificate given by the old Board
under Chapter 20 of the Patent Regulations as amended and in
force at any time before the commencement of these Regulations.
16.2 The certificate is as valid as it would be if it had been given by the
new Board.
17 Continuing effect of certain complaints
17.1 This regulation applies to a complaint in writing to the old Board
made under Part 4 of Chapter 20 of the Patents Regulations as
amended and in force at any time, if:
(a) the complaint was made before the commencement of these
Regulations; and
(b) anything that could have been done by the old Board in
relation to the complaint under the Part (unfinished
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
56 Patents Regulations 1991
business) was not done before the commencement of these
Regulations.
17.2 The unfinished business may be finished by the new Board in
accordance with Part 4 of Chapter 20 of the Patents Regulations.
17.3 Any reply or further information sought by the old Board under
regulation 20.20 of the Patents Regulations, but not given to the
old Board before the commencement of these Regulations must be
given to the new Board in accordance with regulation 20.20 as if
the reply or further information had been sought by the new Board.
Patents Amendment Regulations 1999 (No. 3) (1999 No. 261)
4 Transitional
Paragraphs 6.3(ea) and (eb) as substituted by these Regulations do
not apply to a patent or patent application for which, before the
commencement of these Regulations, the Commissioner extended
the time for making an application under section 38 or 94 of the
Act.
Patents Amendment Regulations 2002 (No. 1) (2002 No. 59)
4 Transitional
(1) The amendment made by item [3] of Schedule 1 applies to
information made publicly available on or after 1 April 2002.
(2) The amendment made by item [19] of Schedule 1 does not apply to
an application that has lapsed because of paragraph 142(2)(f) of the
Act.
(3) The amendment made by item [28] of Schedule 1 applies to an
application made on or after 1 April 2002.
Patents Amendment Regulations 2002 (No. 4) (2002 No. 317)
4 Transitional
(1) The amendments made by items [1] to [4] and [6] to [15] of
Schedule 2 apply in relation to an international application if the
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Endnotes
Endnote 3—Application, saving and transitional provisions
Patents Regulations 1991 57
international filing date of the application is a date on or after
1 January 2003.
(2) The amendments made by items [5] and [16] of Schedule 2 apply
in relation to an international application if the applicable time
limit under Article 22 or 39(1) of the PCT expires on or after
1 January 2003.
Note: international application, international filing date and PCT have the meanings given in the dictionary in Schedule 1 to the Act.
Patents Amendment Regulations 2003 (No. 3) (2003 No. 316)
4 Transitional
(1) The amendments made by items [7] to [171] of Schedule 2 apply to
an international application if the international filing date of the
application is a date on or after 1 January 2004.
(2) However:
(a) the amendments made by items [50] and [171] of Schedule 2
do not apply to an international application that is filed
before 1 January 2004 but is given an international filing date
that is on or after 1 January 2004; and
(b) the amendments made by items [44], [104], [105], [106],
[108], [114] to [125] and [166] of Schedule 2 also apply to an
international application that was filed before 1 January 2004
if a demand for international preliminary examination of the
application is filed on or after 1 January 2004; and
(c) the amendments made by items [143] to [145] of Schedule 2
also apply to an international application that was filed
before 1 January 2004, for which an international preliminary
examination report is established on or after 1 January 2004;
and
(d) the amendment made by item [170] of Schedule 2 also
applies to the giving, on or after 1 January 2004, of copies of
an international preliminary examination report for an
application that was filed before 1 January 2004.
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
58 Patents Regulations 1991
Patents Amendment Regulations 2004 (No. 2) (2004 No. 193)
4 Transitional—amendments made by Schedule 2
(1) This regulation applies to a PCT application that, before 1 July
2004 was not open to public inspection.
(2) If the PCT application was filed before 1 January 2004,
regulations 8.3, 8.4 and 13.5 of the Patents Regulations 1991, as in
force immediately before 1 July 2004, continue to apply in relation
to the application.
(3) If the PCT application was filed after 31 December 2003 and
published under Article 21 of the PCT before 1 July 2004, it is
taken, for paragraph 90(b) of the Act as modified under
regulation 8.3 of the Patents Regulations 1991, to have been
published on 1 July 2004.
Patents Amendment Regulations 2004 (No. 4) (2004 No. 395)
4 Transitional
(1) The amendments made by items [2] and [4] of Schedule 1 apply to
an application in relation to which the applicant had not met the
requirements of subsection 89(3) of the Patents Act 1990 before
these Regulations commence.
(2) The amendment made by item [3] of Schedule 1 applies to an
application in relation to which a patent request and complete
specification had not been accepted under section 49 of the Patents
Act 1990 before these Regulations commence.
(3) The amendments made by items [5] to [8] of Schedule 1 apply to
requests for leave to amend in relation to which the Commissioner
had not granted leave under regulation 10.5, and in respect of
which the corresponding patent request and complete specification
had not been accepted under section 49 of the Patents Act 1990,
before these Regulations commence.
(4) The amendment made by item [10] of Schedule 1 applies to an
application for an innovation patent in relation to which a patent
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
Patents Regulations 1991 59
request and complete specification had not been accepted under
section 52 of the Patents Act 1990 before these Regulations
commence.
Patents Amendment Regulations 2005 (No. 1) (2005 No. 51)
4 Transitional
(1) The amendments made by Schedule 1 apply to an entry in the
Register made:
(a) on or after the commencement of these Regulations; and
(b) before the commencement of these Regulations.
(2) The amendments made by items [2] to [23] of Schedule 2 apply to
an international application if the international filing date of the
application is a date on or after 1 April 2005.
(3) However, the amendments made by items [10] and [18] to [21] of
Schedule 2 also apply to an international application that was filed
before 1 April 2005 if a demand for international preliminary
examination of the application is filed on or after 1 April 2005.
Patents Amendment Regulations 2006 (No. 1) (2006 No. 55)
4 Transitional
(1) The amendments made by Part 2 of Schedule 1 apply in relation to:
(a) an international application:
(i) the filing date of which occurred before 1 April 2006;
and
(ii) that is published under Article 21 of the Patent
Cooperation Treaty on or after 1 April 2006; and
(b) an international application the filing date of which occurs on
or after 1 April 2006.
(2) The amendments made by Part 3 of Schedule 1 apply in relation to:
(a) an international application:
(i) the filing date of which occurred before 1 April 2006;
and
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
60 Patents Regulations 1991
(ii) that is communicated under Article 20 of the Patent
Cooperation Treaty on or after 1 April 2006; and
(b) an international application the filing date of which occurs on
or after 1 April 2006.
(3) The amendments made by Part 4 of Schedule 1 apply in relation to
the issue, on or after 1 April 2006, of a Gazette in relation to an
international application the filing date of which occurred at any
time.
(4) The amendments made by Part 5 of Schedule 1 apply in relation to:
(a) the communication, on or after 1 April 2006, of an
international application the filing date of which occurred at
any time; and
(b) the communication, on or after 1 April 2006, of a Gazette in
relation to an international application the filing date of
which occurred at any time; and
(c) the communication, on or after 1 April 2006, of another
publication in relation to an international application the
filing date of which occurred at any time.
Intellectual Property Legislation Amendment Regulations 2007 (No. 1)
(2007 No. 40)
8 Transitional provisions for Schedule 4—amendments of Patents
Regulations 1991 commencing on 1 April 2007
(1) Subject to subregulation (2), the amendments made by Schedule 4
apply to an international application whose filing date is on or after
1 April 2007.
(2) An amendment made by an item of Schedule 4 mentioned in an
item in table 1, to a provision of the Rules mentioned in that table,
does not apply to an international application in respect of which 1
or more elements referred to in Article 11(1)(iii) were first received
by the receiving Office before 1 April 2007.
Table 1
Item Item of Schedule 4 Provision of the Rules
1 29 Rule 4.1(c)(iv)
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Endnotes
Endnote 3—Application, saving and transitional provisions
Patents Regulations 1991 61
Item Item of Schedule 4 Provision of the Rules
2 31 Rule 4.18
Rule 4.19
3 35 Rule 12.1 bis
4 38 Rule 12.3
5 39 Rule 20.1
Rule 20.2
Rule 20.3
Rule 20.4
Rule 20.5
Rule 20.6
Rule 20.7
Rule 20.8
6 40 Rule 21.2
7 41 Rule 22.1
8 42 Rule 26.1
Rule 26.2
9 43 and 44 Rule 26.3 ter
10 45 Rule 26.4
Rule 26.5
11 55 Rule 48.2(b)(v)
12 58 Rule 51.1
Rule 51.2
13 59 Rule 51 bis
.1(e)
14 61 Rule 55.2
15 69 and 70 Rule 76.5
16 71 Rule 82 ter
.1
(3) The amendments made by Schedule 4 do not apply to an
international application whose filing date is before 1 April 2007,
except as mentioned in subregulation (4).
(4) For subregulation (3), an amendment made by an item of
Schedule 4 mentioned in an item in table 2, to a provision of the
Rules mentioned in that table, applies to an international
application whose filing date is before 1 April 2007, in the
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
62 Patents Regulations 1991
circumstance or subject to the condition mentioned in the item in
table 2.
Table 2
Item Item of
Schedule 4
Provision of the
Rules
Circumstance or condition
1 48 and 49 Rule 34.1 Applies in relation to any
international search carried out on
or after 1 April 2007
2 52 Rule 43.4 Applies in relation to an
international application in respect
of which an international search
report is established on or after
1 April 2007
3 53
54
65
66
67
Rule 43.6 bis
Rule 43 bis
.1(b)
Rule 66.1(d)
Rule 66.4 bis
Rule 70.2(e)
Apply in relation to international
search reports, written opinions
and international preliminary
examination reports established on
or after 1 April 2007, as if
references to rectifications of
obvious mistakes authorised under
Rule 91.1 were references to
rectifications of obvious errors
authorised under that Rule before
1 April 2007
4 56 Rule 48.3(c) Applies in relation to an
international application that is
published under Article 21 on or
after 1 April 2007
5 57 Rule 49 ter
.2 Applies in respect of acts
mentioned in Article 22 (1) that
are performed on or after 1 April
2007
6 60
61
62
62
Rule 54 bis
.1(a)
Rule 55.2 (a ter
)
Rule 55.2(c)
Rule 55.2(d)
Apply in relation to an
international application in respect
of which a demand for
international preliminary
examination is made on or after
1 April 2007
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
Patents Regulations 1991 63
Item Item of
Schedule 4
Provision of the
Rules
Circumstance or condition
7 70 Rule 76.5 Applies, to the extent that it has
the effect of making Rule 49 ter
.2
applicable, in respect of acts
mentioned in Article 39 (1)(a) that
are performed on or after 1 April
2007
(5) In relation to the amendment made by item 39 of Schedule 4,
information as to incompatibility given to the International Bureau
under Rule 20.4(d) before 1 April 2007 is taken to remain effective
under Rule 20.1(d) on or after 1 April 2007.
(6) In relation to the amendment made by item 60 of Schedule 4,
information as to incompatibility given to the International Bureau
under Rule 51 bis
.1(f) in relation to Rule 51 bis
.1(e) before 1 April
2007 is taken to remain effective under Rule 51 bis
.1(f) in relation to
Rule 51 bis
.1(e) on or after 1 April 2007.
Patents and Trade Marks Legislation Amendment Regulations 2008 (2008
No. 122)
5 Transitional
(1) The amendments made by Schedules 1 and 2 apply to:
(a) an application for registration received on or after 1 July
2008; and
(b) a disciplinary proceeding commenced on or after 1 July
2008.
(2) For paragraph (1)(b), disciplinary proceedings are taken to have
commenced on or before 30 June 2008 if, on or before that date,
the Board has given written authority to a complainant to bring
proceedings against a registered patent attorney.
(3) If, on or before 30 June 2008:
(a) a person has been granted an exemption from a requirement
in Schedule 5 to the Patents Regulations 1991; or
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
64 Patents Regulations 1991
(b) the Board has decided that it is satisfied that a person has an
academic qualification; or
(c) the Board has accredited a course of study;
the exemption, decision or accreditation applies to that person or
course, as if it had been exempted, decided or accredited under the
relevant provision of the Patents Regulations 1991, as amended by
these Regulations.
(4) If, in the period starting on 1 July 2008 and ending at the end of
30 June 2009:
(a) a person would have satisfied the employment requirements
set out in regulation 20.3 of the Patents Regulations 1991
immediately before the commencement of Schedule 1; and
(b) the person applies for registration as a patent attorney;
the person is taken to meet the employment requirements.
Patents Amendment Regulations 2008 (No. 1) (2008 No. 178)
4 Transitional provision for international applications received or
filed before commencement
(1) Despite the amendment of Schedule 2A to the Patents
Regulations 1991 by Schedule 1 to these Regulations, Schedule 2A
to the Patents Regulations 1991, as in force immediately before
1 July 2008, continues to apply in relation to an international
application whose international filing date is earlier than 1 July
2008.
(2) Despite the amendment of:
(a) the Schedule of Fees in Schedule 2A to the Patent
Regulations 1991 by Schedule 1 to these Regulations; and
(b) Part 4 of Schedule 7 to the Patents Regulations 1991 by
Schedule 1 to these Regulations;
the Schedule of Fees in Schedule 2A, and Part 4 of Schedule 7, to
the Patents Regulations 1991, as in force immediately before
1 July 2008, continue to apply in relation to an international
application:
(c) whose international filing date is earlier than 1 July 2008; or
(d) that was received by the Patent Office before 1 July 2008.
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
Patents Regulations 1991 65
Intellectual Property Legislation Amendment Regulations 2008 (No. 1)
(2008 No. 279)
3 Amendment of Patents Regulations 1991—Schedule 1
(1) Schedule 1 amends the Patents Regulations 1991.
(2) The amendments made by Schedule 1 apply in relation to an
international application whose international filing date is on or
after 1 January 2009.
(3) The amendments made by items [1] to [5] and [7] to [17] of
Schedule 1 also apply in relation to an international application if:
(a) the international filing date of the application is earlier than
1 January 2009; and
(b) the time limit for making a supplementary search request in
relation to the application under Rule 45bis.1(a) of
Schedule 2A to the Patents Regulations 1991, as amended by
Schedule 1 to these Regulations, expires on or after 1 January
2009.
Intellectual Property Law Amendment Regulations 2009 (No. 1) (2009
No. 150)
3 Amendment of Patents Regulations 1991—Schedule 1
(1) Schedule 1 amends the Patents Regulations 1991.
(2) The amendment made by item [3] of Schedule 1 applies in relation
to an international application whose international filing date is on
or after 1 July 2009.
(3) The amendments made by items [4] to [7] of Schedule 1 apply in
relation to an international application for which an amendment
under Article 19 or 34 of the PCT is made on or after 1 July 2009.
Intellectual Property Legislation Amendment Regulations 2011 (No. 1)
(2011 No. 62)
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
66 Patents Regulations 1991
3 Amendment of Patents Regulations 1991
(1) Schedule 1 amends the Patents Regulations 1991.
(2) The amendment of regulation 22.2EA of the Patents
Regulations 1991 made by item [7] of Schedule 1 applies in
relation to request for leave to amend a complete specification:
(a) if:
(i) the request was made before the commencement of
Schedule 1; and
(ii) on or after the commencement of Schedule 1, the
Commissioner invites the person by whom the fee
relating to the grant of leave is payable to pay the fee in
accordance with regulation 22.2EA; or
(b) if the request is made on or after the commencement of
Schedule 1.
(3) The amendments made by items [8] to [10] of Schedule 1 apply in
relation to a document filed on or after the commencement of
Schedule 1.
4 Amendment of Patents Regulations 1991
(1) Schedule 2 amends the Patents Regulations 1991.
(2) The amendments made by items [5], [6], [8] to [12] and [14] of
Schedule 2 apply in relation to an international application under
the Patent Cooperation Treaty whose international filing date is on
or after 1 July 2011.
(3) The amendment made by item [7] of Schedule 2 applies in relation
to an international application under the Patent Cooperation Treaty
in respect of which:
(a) the applicant has performed the acts referred to in Article 22
or Article 39 of the Treaty on or after 1 July 2011; and
(b) an amendment under Article 19 or Article 34 of the Treaty
was filed on or after 1 July 2009.
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
Patents Regulations 1991 67
(4) The amendment made by item [13] of Schedule 2 applies in
relation to an international preliminary examination report under
the Patent Cooperation Treaty which is completed in accordance
with Rule 70.4 of the Treaty on or after 1 July 2011, irrespective of
the international filing date of the relevant international
application.
Intellectual Property Legislation Amendment Regulations 2012 (No. 1)
(2012 No. 66)
3 Amendment of Patents Regulations 1991
(1) Schedule 1 amends the Patents Regulations 1991.
(2) The amendments made by Part 1 of Schedule 1 apply in relation to
a declaration required or permitted by the Patents Act 1990 or the
Patents Regulations 1991 on or after 1 July 2012.
(3) The amendment made by item [9] of Schedule 1 applies to an
international application under the Patent Cooperation Treaty,
irrespective of its international filing date, in respect of which the
time limit under amended Rule 17.1(b-bis) expires on or after
1 July 2012.
(4) The amendment made by item [10] of Schedule 1 applies to an
international application under the Patent Cooperation Treaty
whose international filing date is on or after 1 July 2012.
(5) The amendments made by items [11] and [12] of Schedule 1 apply
to an international application under the Patent Cooperation Treaty,
irrespective of its international filing date, in respect of which an
international search is carried out on or after 1 July 2012.
(6) Despite the omission of Rule 82.2 by item [13] of Schedule 1,
Rule 82.2 as in force immediately before the commencement of
Schedule 1 continues to apply to an international application under
the Patent Cooperation Treaty whose international filing date is
before 1 July 2012, and in relation to which the six months time
limit for the submission of evidence referred to in Rule 82.1(c), as
applicable because of Rule 82.2(b) (in force immediately before
the commencement of Schedule 1), expires on or after 1 July 2012.
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 3—Application, saving and transitional provisions
68 Patents Regulations 1991
(7) The amendment made by item [14] of Schedule 1 applies to an
international application under the Patent Cooperation Treaty,
irrespective of its international filing date, in relation to which the
six months time limit for the submission of evidence referred to in
Rule 82quater.1(a) (inserted by item [14]) expires on or after 1 July
2012.
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Endnotes
Endnote 4—Uncommenced amendments
Patents Regulations 1991 69
Endnote 4—Uncommenced amendments
This endnote sets out amendments of the Patents Regulations 1991 that have
not yet commenced.
There are no uncommenced amendments.
Federal Register of Legislative Instruments F2013C00202
Endnotes
Endnote 5—Misdescribed amendments
70 Patents Regulations 1991
Endnote 5—Misdescribed amendments
This endnote sets out amendments of the Patents Regulations 1991 that have
been misdescribed.
There are no misdescribed amendments.
Federal Register of Legislative Instruments F2013C00202