- Patents Regulations 1991
- Statutory Rules 1991 No. 71 as amended
- Contents
- Chapter 1 Introductory
- 1.1 Name of Regulations
- 1.2 Commencement
- 1.3 Interpretation
- 1.3A Meaning of completed in relation to a search
- 1.4 English text of treaties
- 1.5 Deposit requirements: prescribed period
- 1.6 Disclosure in basic applications — general
- 1.6A Disclosure in basic applications — use of approved digital library
- 1.7 Verification of translations of international applications
- 1.8 Completion of applications
- Chapter 2 Patent rights, ownership and validity
- 2.1 Applications by co-owners for directions
- 2.2 Publication or use: prescribed circumstances
- 2.3 Publication or use: prescribed periods
- 2.4 Prescribed period: patents of addition
- 2.5 Prescribed period: assertion that invention is not a patentable invention
- 2.6 Prescribed period: notification of assertion of invalidity of innovation patent
- 2.7 Documents to accompany notice of assertion of invalidity
- Chapter 3 From application to acceptance
- Part 1 Inventions generally
- 3.1 Prescribed documents: patent applications
- 3.1A Applicant taken to be nominated person
- 3.2 Provisional specifications
- 3.2A Specifications — standard patents
- 3.2B Specifications: formalities check for innovation patents
- 3.3 Abstracts
- 3.4 Substitute abstracts
- 3.5 Filing date
- 3.5A Filing date: incomplete specifications
- 3.5B Filing of documents outside business hours
- 3.6 Requests to make determinations between interested parties
- 3.7 Form of certain applications
- 3.8 Time within which applications are to be made following certain decisions and declarations
- 3.9 Prescribed period: treatment of complete applicationas provisional
- 3.10 Prescribed period: making of complete applications
- 3.12 Priority dates generally
- 3.13 Priority dates: certain persons and applications
- 3.14 Priority dates: certain amended claims
- 3.15 Prescribed period and form of request for examination
- 3.16 Prescribed grounds and period for examination
- 3.17 Requirement for Commissioner to direct or expedite examination
- 3.17A Results of documentary searches — foreign patent office
- 3.17B Prescribed documentary searches by or on behalf of a foreign patent office
- 3.18 Report of Commissioner: examination
- 3.19 Conduct of examination: standard patents
- 3.20 Requests for deferment of examination or modified examination
- 3.21 Prescribed foreign countries: requests for deferment of examination and modified examination
- 3.22 Disclosure of patent documents and information to International Bureau etc
- Part 2 Inventions that are micro-organisms
- 3.23 Documents in accepted applications and patents involving micro-organisms
- 3.24 Commissioner may request samples and viability statement
- 3.25 Request for Commissioner’s certificate authorising release of sample of a micro-organism
- 3.26 Breach of undertakings given in respect of micro-organisms
- 3.27 Procedure in proceedings for breach of an undertaking
- 3.28 Relief in proceedings for breach of undertakings
- 3.29 Notification that a deposit requirement has ceased to be satisfied
- 3.30 Prescribed period: deposit requirements taken to be satisfied
- 3.31 Application for declaration that deposit requirements are not satisfied
- Chapter 4 Publication
- 4.1 Prescribed information: applicants and applications
- 4.2 Notice that specification is open to public inspection
- 4.3 Prescribed documents: public inspection
- Chapter 5 Opposition
- 5.1 Application of this Chapter
- 5.2 Interpretation
- 5.3 Filing of opposition (except under section 101M of the Act)
- 5.3AA Filing of opposition under section 101M of Act
- 5.3A Amendment of notice of opposition: correction of error or mistake
- 5.3B Amendment of notice of opposition: change of opponent
- 5.4 Filing of statement
- 5.5 Dismissal of opposition
- 5.6 Determination of opposition
- 5.7 Opponent to serve copy of substitute statement
- 5.8 Time for giving of evidence
- 5.9 Amendment of statement
- 5.9A Amendment of statement: additional ground as a result of amendments of the Act by the US FreeTrade Agreement Implementation Act 2004
- 5.10 Conduct of proceedings to which this Chapter applies
- 5.11 Commissioner may inform himself or herself
- 5.12 Hearing of opposition
- 5.13 Representations to Commissioner
- 5.14 Commissioner not required to hold hearing
- 5.15 Withdrawal of opposition
- Chapter 6 Grant and term of patents
- Part 1 Patents generally
- Part 2 Extension of pharmaceutical patents
- Chapter 6A Divisional applications
- Chapter 7 Patents of addition
- Chapter 8 PCT applications and Convention applications
- Part 1 PCT applications
- Part 2 Convention applications
- Chapter 9 Re-examination
- Chapter 9A Examination of innovation patents
- 9A.1 Request for examination
- 9A.2 Examination of complete specification
- 9A.2A Results of documentary searches — innovation patent
- 9A.2B Prescribed documentary searches by or on behalf of a foreign patent office
- 9A.3 Conduct of examination
- 9A.4 Period for examination
- 9A.5 Validity of innovation patent
- Chapter 10 Amendments
- 10.1 Form of amendments
- 10.2 Commissioner to consider and deal with requests for leave to amend
- 10.3 Amendments not allowable
- 10.4 Commissioner to refuse request for leave to amend
- 10.5 Commissioner to grant leave to amend
- 10.6 Time for allowance of amendments
- 10.7 Correction of Register or patent
- 10.8 Prescribed decisions: appeal to Federal Court
- 10.10 Prescribed period: filing of court order
- 10.11 Form of direction by Commissioner: patents
- 10.12 Form of direction by Commissioner: applications
- 10.14 Form of request: claim under assignment or agreement
- Chapter 11 Infringement
- Chapter 12 Compulsory licences and revocation of patents
- Chapter 13 Withdrawal and lapsing of applications and ceasing of patents
- 13.1 Publication of notice of withdrawal of application
- 13.1A Period in which standard patent applications may not be withdrawn
- 13.1B Period in which innovation patent applications may not be withdrawn
- 13.2 Prescribed period: request for examination of applications
- 13.3 Prescribed period: continuation fees
- 13.4 Prescribed period: acceptance of request and specification
- 13.5 If applications lapse
- 13.6 Time for payment of renewal fee for patent
- 13.7 Prescribed period: ceasing of innovation patents
- Chapter 15 Special provisions relating to associated technology
- Chapter 17 The Crown
- Chapter 19 The register and official documents
- Chapter 20 Patent attorneys
- Part 1 Introduction
- Part 2 Obtaining registration for first time
- Part 3 Accreditation of courses of study
- 20.13 Accreditation of courses of study
- 20.14 Provisional accreditation
- 20.2 Form of application
- 20.3 Evidence that applicant meets registration requirements
- 20.4 Certificate of registration
- 20.5 Evidence of academic qualifications
- 20.6 Academic qualifications
- 20.7 Evidence of knowledge requirements
- 20.8 Knowledge requirements
- 20.9 Exemption from a requirement in Schedule 5
- 20.10 Employment requirements
- 20.11 Statements of skill
- 20.12 Prescribed offences
- Part 4 Board examinations
- Part 5 Maintaining registration
- Part 6 Removal from Register
- Part 7 Returning to Register
- Part 8 Discipline
- Division 1 General
- Division 2 Proceedings in Disciplinary Tribunal
- 20.36 Procedure of Disciplinary Tribunal
- 20.37 Notification of hearing of disciplinary proceedings
- 20.38 Hearings to be public except in special circumstances
- 20.39 Representation before Disciplinary Tribunal
- 20.40 Summoning of witnesses
- 20.41 Offences by persons appearing before Disciplinary Tribunal
- 20.42 Protection of person constituting Disciplinary Tribunal, witnesses etc
- 20.43 Decision of Disciplinary Tribunal
- 20.44 Penalties — professional misconduct
- 20.45 Penalties — unsatisfactory professional conduct
- 20.46 Finding that attorney was unqualified at time of registration
- 20.47 Finding that registration obtained by fraud
- 20.48 Matters that may be considered in determining penalties
- 20.49 Findings of Disciplinary Tribunal
- 20.50 Notification and publication of decisions of Disciplinary Tribunal
- 20.51 Completion of outstanding business
- 20.52 Former attorney may be required to provide assistance
- Part 9 Rights of registered patent attorneys
- Part 10 Administration
- Division 1 Professional Standards Board for Patent and Trade Marks Attorneys
- Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal
- Chapter 21 Administration
- Chapter 22 Miscellaneous
- Part 1 Fees and costs
- Division 1 Fees
- 22.1 Fees generally
- 22.2 General fees
- 22.2A Failure to pay: patent attorneys fees
- 22.2B Failure to pay: filing fees for patent requests
- 22.2C Failure to pay: certain other filing fees etc
- 22.2D Failure to pay: fees payable by patentee for requests unders 101A (b) of the Act
- 22.2E Failure to pay: response fee
- 22.2F Consequence if Commissioner does not invite payment
- 22.2G Failure to pay: hearing fees
- 22.2H Failure to pay: certain fees for actions by Commissioner
- 22.2I Failure to pay: acceptance fee
- 22.3 General fees for international applications
- 22.4 Fees for international applications payable for the benefit of the International Bureau
- 22.5 PCT Fund
- 22.6 Exemption from fees
- 22.7 Refund of certain fees
- Division 2 Costs
- Part 2 Other matters
- 22.9 Death of applicant or nominated person
- 22.10 Address for service
- 22.10A Address for correspondence
- 22.10AA Period for doing certain acts — office not open for business
- 22.10AB Days when office not open for business
- 22.10AC Period for doing certain acts — acts to which section 222A does not apply
- 22.11 Extension of time
- 22.12 Evidence
- 22.13 Declarations
- 22.14 Directions not otherwise prescribed
- 22.15 Documents to be in English
- 22.16 Documents other than specifications and abstracts
- 22.17 Incapacity of certain persons
- 22.18 Destruction of documents
- 22.19 Copies of certain documents to be supplied
- 22.20 International applications and the Patent Office
- 22.21 Protection or compensation of certain persons
- 22.22 Exercise by Commissioner of certain powers
- 22.23 Hearings
- 22.24 Practice and procedure other than for opposition proceedings
- 22.25 Requirements can not be complied with for reasonable cause
- 22.26 Review of decisions
- Chapter 23 Transitional and savings provisions
- 23.1 Saving: prohibition orders
- 23.2 Delegation: certain matters referred to in this Chapter
- 23.3 Opposition to grant: practice and procedure
- 23.4 Certain opposition: practice and procedure
- 23.5 Fees payable for certain matters relating to opposition
- 23.6 Certain delegations: opposition
- 23.7 Certain undertakings
- 23.8 Restoration of lapsed applications or ceased patents
- 23.9 Certain continuation and renewal fees
- 23.10 Fee taken to have been paid
- 23.11 Supply of product referred to in section 117 of the Act
- 23.12 Certain withdrawn, abandoned or refused applications
- 23.13 Certain certificates of validity
- 23.14 Certain action under the 1952 Act
- 23.15 Amendment of petty patents
- 23.16 Certain applications under 1952 Act: time for acceptance
- 23.17 PCT applications to which subsection 89 (5) of the Act does not apply
- 23.18 Certain priority dates: saving
- 23.25 Fees
- 23.26 Certain actions and proceedings
- 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
- 23.33 Transitional: examination of innovation patents converted from petty patent applications
- 23.34 Transitional: certain PCT applications
- 23.35 Transitional: payment of fees for petty patents
- Schedule 1
Patents Regulations 1991
Statutory Rules 1991 No. 71 as amended
made under the
Patents Act 1990
This compilation was prepared on 12 December 2009 taking into account amendments up to SLI 2009 No. 332
This document has been split into two volumes Volume 1 contains Chapters 1 to 23 and Schedules 1, 1A and 2, and Volume 2 contains Schedules 2A to 8 and the Notes Each volume has its own Table of Contents
Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra
Contents
Chapter 1 Introductory
1.1 Name of Regulations [see Note 1] 14
1.2 Commencement 14
1.3 Interpretation 14 1.3A Meaning of completed in relation to a search 16
1.4 English text of treaties 17
1.5 Deposit requirements: prescribed period 17
1.6 Disclosure in basic applications — general 18 1.6A Disclosure in basic applications — use of approved digital library 18
1.7 Verification of translations of international applications 19
1.8 Completion of applications 19
Chapter 2 Patent rights, ownership and validity
2.1 Applications by co-owners for directions 21
2.2 Publication or use: prescribed circumstances 21
2.3 Publication or use: prescribed periods 23
2.4 Prescribed period: patents of addition 24
2.5 Prescribed period: assertion that invention is not a patentable invention 24
2.6 Prescribed period: notification of assertion of invalidity of innovation patent 25
2.7 Documents to accompany notice of assertion of invalidity 25
Chapter 3 From application to acceptance
Part 1 Inventions generally
3.1 Prescribed documents: patent applications 26 3.1A Applicant taken to be nominated person 27
3.2 Provisional specifications 27 3.2A Specifications — standard patents 27 3.2B Specifications: formalities check for innovation patents 28
3.3 Abstracts 30
3.4 Substitute abstracts 31
3.5 Filing date 32 3.5A Filing date: incomplete specifications 33 3.5B Filing of documents outside business hours 34
3.6 Requests to make determinations between interested parties 34
3.7 Form of certain applications 34
3.8 Time within which applications are to be made following certain decisions and declarations 34
3.9 Prescribed period: treatment of complete application as provisional 35
3.10 Prescribed period: making of complete applications 35
3.12 Priority dates generally 35
3.13 Priority dates: certain persons and applications 39
3.14 Priority dates: certain amended claims 39
3.15 Prescribed period and form of request for examination 40
3.16 Prescribed grounds and period for examination 40
3.17 Requirement for Commissioner to direct or expedite examination 40 3.17A Results of documentary searches — foreign patent office 41 3.17B Prescribed documentary searches by or on behalf of a foreign patent office 42
3.18 Report of Commissioner: examination 45
3.19 Conduct of examination: standard patents 46
3.20 Requests for deferment of examination or modified examination 47
3.21 Prescribed foreign countries: requests for deferment of examination and modified examination 48
3.22 Disclosure of patent documents and information to International Bureau etc 48
Part 2 Inventions that are micro-organisms
3.23 Documents in accepted applications and patents involving micro-organisms 50
3.24 Commissioner may request samples and viability statement 50
3.25 Request for Commissioner’s certificate authorising release of sample of a micro-organism 51
3.26 Breach of undertakings given in respect of micro-organisms 54
3.27 Procedure in proceedings for breach of an undertaking 55
3.28 Relief in proceedings for breach of undertakings 55
3.29 Notification that a deposit requirement has ceased to be satisfied 56
3.30 Prescribed period: deposit requirements taken to be satisfied 57
3.31 Application for declaration that deposit requirements are not satisfied 59
Chapter 4 Publication
4.1 Prescribed information: applicants and applications 61
4.2 Notice that specification is open to public inspection 61
4.3 Prescribed documents: public inspection 62
Chapter 5 Opposition
5.1 Application of this Chapter 63
5.2 Interpretation 63
5.3 Filing of opposition (except under section 101M of the Act) 64 5.3AA Filing of opposition under section 101M of Act 65 5.3A Amendment of notice of opposition: correction of error or mistake 65 5.3B Amendment of notice of opposition: change of opponent 66
5.4 Filing of statement 66
5.5 Dismissal of opposition 66
5.6 Determination of opposition 67
5.7 Opponent to serve copy of substitute statement 68
5.8 Time for giving of evidence 68
5.9 Amendment of statement 70 5.9A Amendment of statement: additional ground as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004 71
5.10 Conduct of proceedings to which this Chapter applies 72
5.11 Commissioner may inform himself or herself 73
5.12 Hearing of opposition 73
5.13 Representations to Commissioner 74
5.14 Commissioner not required to hold hearing 74
5.15 Withdrawal of opposition 74 Page
Chapter 6 Grant and term of patents
Part 1 Patents generally
6.
Statutory Rules 1991 No. 71 as amended
made under the
Patents Act 1990
This compilation was prepared on 12 December 2009 taking into account amendments up to SLI 2009 No. 332
This document has been split into two volumes Volume 1 contains Chapters 1 to 23 and Schedules 1, 1A and 2, and Volume 2 contains Schedules 2A to 8 and the Notes Each volume has its own Table of Contents
Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra
Chapter 1 Introductory
1.2 Commencement 14
1.3 Interpretation 14 1.3A Meaning of completed in relation to a search 16
1.4 English text of treaties 17
1.5 Deposit requirements: prescribed period 17
1.6 Disclosure in basic applications — general 18 1.6A Disclosure in basic applications — use of approved digital library 18
1.7 Verification of translations of international applications 19
1.8 Completion of applications 19
2.2 Publication or use: prescribed circumstances 21
2.3 Publication or use: prescribed periods 23
2.4 Prescribed period: patents of addition 24
2.5 Prescribed period: assertion that invention is not a patentable invention 24
2.6 Prescribed period: notification of assertion of invalidity of innovation patent 25
2.7 Documents to accompany notice of assertion of invalidity 25
Chapter 3 From application to acceptance
Part 1 Inventions generally
3.2 Provisional specifications 27 3.2A Specifications — standard patents 27 3.2B Specifications: formalities check for innovation patents 28
3.4 Substitute abstracts 31
3.5 Filing date 32 3.5A Filing date: incomplete specifications 33 3.5B Filing of documents outside business hours 34
3.7 Form of certain applications 34
3.8 Time within which applications are to be made following certain decisions and declarations 34
3.9 Prescribed period: treatment of complete application as provisional 35
3.10 Prescribed period: making of complete applications 35
3.12 Priority dates generally 35
3.13 Priority dates: certain persons and applications 39
3.14 Priority dates: certain amended claims 39
3.15 Prescribed period and form of request for examination 40
3.16 Prescribed grounds and period for examination 40
3.17 Requirement for Commissioner to direct or expedite examination 40 3.17A Results of documentary searches — foreign patent office 41 3.17B Prescribed documentary searches by or on behalf of a foreign patent office 42
3.19 Conduct of examination: standard patents 46
3.20 Requests for deferment of examination or modified examination 47
3.21 Prescribed foreign countries: requests for deferment of examination and modified examination 48
3.22 Disclosure of patent documents and information to International Bureau etc 48
3.24 Commissioner may request samples and viability statement 50
3.25 Request for Commissioner’s certificate authorising release of sample of a micro-organism 51
3.26 Breach of undertakings given in respect of micro-organisms 54
3.28 Relief in proceedings for breach of undertakings 55
3.29 Notification that a deposit requirement has ceased to be satisfied 56
3.30 Prescribed period: deposit requirements taken to be satisfied 57
3.31 Application for declaration that deposit requirements are not satisfied 59
Chapter 4 Publication
4.2 Notice that specification is open to public inspection 61
4.3 Prescribed documents: public inspection 62
5.2 Interpretation 63
5.3 Filing of opposition (except under section 101M of the Act) 64 5.3AA Filing of opposition under section 101M of Act 65 5.3A Amendment of notice of opposition: correction of error or mistake 65 5.3B Amendment of notice of opposition: change of opponent 66
5.5 Dismissal of opposition 66
5.6 Determination of opposition 67
5.7 Opponent to serve copy of substitute statement 68
5.8 Time for giving of evidence 68
5.9 Amendment of statement 70 5.9A Amendment of statement: additional ground as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004 71
5.11 Commissioner may inform himself or herself 73
5.12 Hearing of opposition 73
5.13 Representations to Commissioner 74
5.14 Commissioner not required to hold hearing 74
5.15 Withdrawal of opposition 74 Page
Chapter 6 Grant and term of patents
Part 1 Patents generally
Contents
1.1 Name of Regulations [see Note 1] 14
Chapter 2 Patent rights, ownership and validity
2.1 Applications by co-owners for directions 21
3.1 Prescribed documents: patent applications 26 3.1A Applicant taken to be nominated person 27
3.3 Abstracts 30
3.6 Requests to make determinations between interested parties 34
3.18 Report of Commissioner: examination 45
Part 2 Inventions that are micro-organisms
3.23 Documents in accepted applications and patents involving micro-organisms 50
3.27 Procedure in proceedings for breach of an undertaking 55
4.1 Prescribed information: applicants and applications 61
Chapter 5 Opposition
5.1 Application of this Chapter 63
5.4 Filing of statement 66
5.10 Conduct of proceedings to which this Chapter applies 72
6.