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Intellectual Property Legislation
Amendment (TRIPS Protocol and Other
Measures) Regulation 2015
Select Legislative Instrument No. 88, 2015
I, General the Honourable Sir Peter Cosgrove AK MC (Ret’d),
Governor-General of the Commonwealth of Australia, acting with the
advice of the Federal Executive Council, make the following regulation.
Dated 17 June 2015
Peter Cosgrove
Governor-General
By His Excellency’s Command
Ian Macfarlane
Minister for Industry
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Contents 1 Name .................................................................................................1
2 Commencement.................................................................................1
3 Authority ...........................................................................................2
4 Schedules...........................................................................................2
Schedule 1—Amendments relating to the TRIPS Protocol
interim waiver 3
Patents Regulations 1991 3
Schedule 2—Further amendments relating to the TRIPS
Protocol 10
Patents Regulations 1991 10
Schedule 3—Amendments relating to document retention 11
Designs Regulations 2004 11
Patents Regulations 1991 11
Trade Marks Regulations 1995 11
Schedule 4—Amendments relating to amendments made by
Part 2 of Schedule 5 to the Intellectual Property
Laws Amendment Act 2015 12
Patents Regulations 1991 12
Schedule 5—Other amendments 20
Designs Regulations 2004 20
Patents Regulations 1991 21
Trade Marks Regulations 1995 27
Schedule 6—Application of amendments 30
Patents Regulations 1991 30
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1 Name
This is the Intellectual Property Legislation Amendment (TRIPS
Protocol and Other Measures) Regulation 2015.
2 Commencement
(1) Each provision of this instrument specified in column 1 of the table
commences, or is taken to have commenced, in accordance with
column 2 of the table. Any other statement in column 2 has effect
according to its terms.
Commencement information
Column 1 Column 2 Column 3
Provisions Commencement Date/Details
1. Sections 1 to 4
and anything in
this instrument
not elsewhere
covered by this
table
The day after this instrument is registered.
2. Schedule 1 At the same time as Schedule 1 to the
Intellectual Property Laws Amendment Act
2015 commences.
3. Schedule 2 At the same time as Schedule 2 to the
Intellectual Property Laws Amendment Act
2015 commences.
4. Schedule 3 The day after this instrument is registered.
5. Schedule 4 At the same time as items 9 to 17 of
Schedule 5 to the Intellectual Property Laws
Amendment Act 2015 commence.
6. Schedules 5
and 6
The day after this instrument is registered.
Note: This table relates only to the provisions of this instrument as originally
made. It will not be amended to deal with any later amendments of
this instrument.
(2) Any information in column 3 of the table is not part of this
instrument. Information may be inserted in this column, or
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information in it may be edited, in any published version of this
instrument.
3 Authority
This instrument is made under the following Acts:
(a) the Designs Act 2003;
(b) the Patents Act 1990;
(c) the Trade Marks Act 1995.
4 Schedules
Each instrument that is specified in a Schedule to this instrument is
amended or repealed as set out in the applicable items in the
Schedule concerned, and any other item in a Schedule to this
instrument has effect according to its terms.
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Schedule 1—Amendments relating to the TRIPS Protocol interim waiver
Patents Regulations 1991
1 Subregulation 1.3(1)
Insert:
Council for TRIPS means the Council for Trade-Related Aspects
of Intellectual Property Rights established under Article IV of the
WTO Agreement.
eligible importing country: see regulation 1.4A.
least developed country means a country included in the list of
least developed countries maintained by the United Nations, as in
force from time to time.
Note: The list of least developed countries could in 2015 be viewed on the
United Nations’ website (http://www.un.org).
WTO Agreement means the Marrakesh Agreement establishing the
World Trade Organization, done at Marrakesh on 15 April 1994.
WTO member means a country that is a full member of the World
Trade Organization.
Note: The list of members of the World Trade Organization could in 2015
be viewed on the World Trade Organization’s website
(http://www.wto.org).
2 After regulation 1.4
Insert:
1.4A Meaning of eligible importing country
For the definition of eligible importing country in Schedule 1 to
the Act, the following kinds of foreign countries are prescribed:
(a) a WTO member that notifies the Council for TRIPS, in
accordance with the WTO General Council decision of
30 August 2003, of the member’s intention to use the system
set out in that decision as an importer;
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(b) a least developed country.
3 Before regulation 12.1
Insert:
Part 1—Compulsory licences (general)
4 Regulation 12.1 (heading)
Repeal the heading, substitute:
12.1 Applications for orders for compulsory licences
5 After regulation 12.2
Insert:
Part 2—Patented pharmaceutical invention
compulsory licences (for manufacture and
export to eligible importing countries)
12.2A Applications for PPI orders
(1) An applicant for a PPI order in relation to the export of a
pharmaceutical product to an eligible importing country must
lodge, with the Registrar of the Federal Court, an application that
includes the following:
(a) the name and address of the applicant;
(b) the applicant’s address for service in relation to the
application;
(c) the name of the eligible importing country;
(d) if the pharmaceutical product is to be imported by a person
on behalf of, and with the authorisation of, the eligible
importing country—the name and address of that person;
(e) the name of the pharmaceutical product;
(f) the proposed use of the pharmaceutical product in the eligible
importing country;
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(g) the amount of the pharmaceutical product proposed to be
manufactured for export;
(h) the proposed duration of the PPI compulsory licence;
(i) the identity of the patent;
(j) the name of the patentee;
(k) if the patent is an innovation patent—the date of certification
of the innovation patent.
(2) For paragraph (1)(b), 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.
(3) The applicant must:
(a) serve a copy of the application on the patentee and any other
person who claims an interest in the patent as soon as
practicable after lodgement; 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, as in force from time to time.
12.2B PPI compulsory licences—notification requirements
(1) This regulation sets out the notification requirements for
paragraph 136E(1)(f) of the Act in relation to the importation of a
pharmaceutical product into an eligible importing country.
(2) Subregulation (3) applies if the eligible importing country is a
WTO member.
(3) The eligible importing country must have notified the Council for
TRIPS in accordance with paragraph 2(a) of the WTO General
Council decision of 30 August 2003.
(4) Subregulation (5) applies if the eligible importing country is:
(a) a least developed country; and
(b) not a WTO member.
(5) The eligible importing country must have given the Commissioner
a written notice:
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(a) stating:
(i) the name of the eligible importing country; and
(ii) the name of the pharmaceutical product; and
(iii) the expected quantity of the pharmaceutical product to
be imported into the eligible importing country; and
(b) confirming that, if the pharmaceutical product is patented in
the eligible importing country, it:
(i) has granted; or
(ii) intends to grant;
a compulsory licence that would accord with Article 31 of
the TRIPS Agreement and the provisions of the WTO
General Council decision of 30 August 2003 if the TRIPS
Agreement and the decision applied to the eligible importing
country.
12.2C PPI compulsory licences—labelling and marking of product
(1) For paragraph 136F(1)(c) of the Act, the pharmaceutical product
must be labelled or marked in a way that:
(a) clearly identifies the product as being exported from
Australia under the PPI compulsory licence; and
(b) distinguishes the product from:
(i) the same pharmaceutical product as sold in Australia;
and
(ii) the same pharmaceutical product as exported other than
under the licence.
(2) For subregulation (1), the labelling or marking must:
(a) be applied to:
(i) the immediate package containing the pharmaceutical
product; and
(ii) any other package containing that package (whether or
not other packages are involved); and
(b) remain clear and legible at all times while the product is
being exported.
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12.2D PPI compulsory licences—shipment information
(1) For paragraph 136F(1)(d) of the Act, the following shipment
information is prescribed in relation to each shipment of a
pharmaceutical product:
(a) the name of the pharmaceutical product;
(b) the amount of the product in the shipment;
(c) the name of the licensee;
(d) the licensee’s address for service;
(e) the name of the eligible importing country;
(f) if a person is importing the pharmaceutical product on behalf
of, and with the authorisation of, the eligible importing
country—the name and address of the person;
(g) a description of the packaging (including colour, size and
shape) and the labelling or marking of the pharmaceutical
product.
(2) For paragraph 136F(1)(d) of the Act, the shipment information
must be made available for at least the duration of the licence.
12.2E PPI compulsory licences—giving information to the
Commissioner
(1) This regulation sets out for paragraph 136F(1)(h) of the Act the
information that a licensee must give to the Commissioner in
relation to the licence.
Grant of licence
(2) The licensee must give the Commissioner the following
information in relation to the grant of the PPI compulsory licence:
(a) the date of the PPI order;
(b) the place at which the PPI order was made;
(c) the name and address of the licensee;
(d) the licensee’s address for service;
(e) the name of the pharmaceutical product;
(f) the quantity of the pharmaceutical product that the Federal
Court has determined may be manufactured for export;
(g) the eligible importing country to which the pharmaceutical
product is to be exported;
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(h) the duration of the licence;
(i) the identity of the patent;
(j) the address of the website on which the shipment information
is to be made available.
(3) The information mentioned in subregulation (2) must be given to
the Commissioner:
(a) in the approved form; and
(b) within 1 month after the Federal Court makes the order
requiring the grant of the licence.
Amendment of licence
(4) If the licence is amended by order under section 136G of the Act,
the licensee must give the Commissioner the following information
in relation to the amendment:
(a) the date of the amending order;
(b) the place at which the amending order was made;
(c) details of the amendment.
(5) The information mentioned in subregulation (4) must be given to
the Commissioner:
(a) in the approved form; and
(b) within 1 month after the Federal Court makes the order
amending the licence.
Revocation of licence
(6) If the licence is revoked by order under section 136H of the Act,
the licensee must give the Commissioner the following information
in relation to the revocation:
(a) the date of the revocation order;
(b) the place at which the revocation order was made.
(7) The information mentioned in subregulation (6) must be given to
the Commissioner:
(a) in the approved form; and
(b) within 1 month after the Federal Court makes the order
revoking the licence.
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Agreement or determination of remuneration
(8) If an amount of remuneration for the licence is agreed under
paragraph 136J(3)(a) of the Act or determined by the Federal Court
under paragraph 136J(3)(b) of the Act, the licensee must give the
Commissioner a statement that an amount of remuneration has
been agreed or determined, as the case may be.
(9) The information mentioned in subregulation (8) must be given to
the Commissioner:
(a) in the approved form; and
(b) within 1 month after the agreement is reached or the
determination is made.
12.2F Dealing with information provided under regulation 12.2E
(1) If the Commissioner receives the information mentioned in
subregulation 12.2E(2) in relation to the grant of a PPI compulsory
licence, the Commissioner must:
(a) if the eligible importing country is a WTO member—give a
copy of the information to the Council for TRIPS; or
(b) in any other case—publish the information on the internet.
(2) If the Commissioner receives the information mentioned in
subregulation 12.2E(8) in relation to a licence, the Commissioner
must give the eligible importing country to which the licence
relates a notice stating that the licensee has advised that an amount
of remuneration in respect of the licence has been agreed or
determined, as the case may be.
Part 3—Surrender and revocation of patents
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Schedule 2—Further amendments relating to the TRIPS Protocol
Patents Regulations 1991
1 Paragraph 1.4A(a)
Repeal the paragraph, substitute:
(a) a WTO member that notifies the Council for TRIPS, in
accordance with the Annex to the TRIPS Agreement, of the
member’s intention to use the system set out in Article 31bis
of the TRIPS Agreement and the Annex to that Agreement as
an importer;
2 Subregulation 12.2B(3)
Omit “paragraph 2(a) of the WTO General Council decision of
30 August 2003”, substitute “paragraph 2(a) of the Annex to the TRIPS
Agreement”.
3 Paragraph 12.2B(5)(b)
Omit all the words after “would accord with”, substitute “Articles 31
and 31bis of the TRIPS Agreement and the Annex to that Agreement if
the Agreement and Annex applied to the eligible importing country”.
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Schedule 3—Amendments relating to document retention
Designs Regulations 2004
1 Subregulation 5.08(1)
Omit “(1)”.
2 Subregulation 5.08(2)
Repeal the subregulation.
Patents Regulations 1991
3 Regulation 22.18
Repeal the regulation.
Trade Marks Regulations 1995
4 Subregulation 17A.39(1)
Omit “, 13.3 and 21.32”, substitute “and 13.3”.
5 Regulation 21.32
Repeal the regulation.
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Schedule 4—Amendments relating to amendments made by Part 2 of Schedule 5 to the Intellectual Property Laws Amendment Act 2015
Patents Regulations 1991
1 Regulation 3.11
Omit “subsections 29B(2) and 38(1A)”, substitute “subsection 38(1A)”.
2 Subregulation 3.12(4)
Repeal the subregulation, substitute:
(4) In this Division, a document, or a set of documents considered
together, clearly discloses an invention if the document, or set of
documents, 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.
(5) For the purposes of subregulation (4), a document, or a set of
documents considered together, is taken to clearly disclose an
invention as mentioned in that subregulation so far as such
disclosure requires a description of a micro-organism, if:
(a) the micro-organism is deposited with a prescribed depository
institution in accordance with such provisions of the
Budapest Treaty as are applicable; and
(b) the prescribed circumstances for paragraph 43(2B)(b) of the
Act apply.
3 Subregulation 3.13A(1)
Repeal the subregulation, substitute:
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (2) (a
prescribed circumstance for paragraph 43(2A)(a) of the Act)
applies to the invention defined in the claim; and
(b) either:
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(i) a document mentioned in subregulation (4) (a
prescribed document for paragraph 43(2A)(b) of the
Act) clearly discloses the invention in the claim; or
(ii) 2 or more of those documents (a prescribed set of
prescribed documents for paragraph 43(2A)(b) of the
Act), considered together, clearly disclose the invention
in the claim.
4 Subregulation 3.13A(4)
Repeal the subregulation (not including the heading), substitute:
(4) For paragraph (1)(b), the documents are the documents filed for the
earlier application at the time the application was made.
5 At the end of regulation 3.13A
Add:
Prescribed circumstances for micro-organisms
(6) For paragraph 43(2B)(b) of the Act, the prescribed circumstances
for a disclosure that requires a description of a micro-organism are
as follows:
(a) the deposit of the micro-organism with a prescribed
depository institution, in accordance with such provisions of
the Budapest Treaty as are applicable, occurs on or before the
date when the documents mentioned in subregulation (4) are
filed;
(b) either:
(i) a document mentioned in subregulation (4) includes the
relevant information on the characteristics of the
micro-organism that is known to the applicant at the
time the documents are filed; or
(ii) 2 or more of those documents, considered together,
include the relevant information on the characteristics of
the micro-organism that is known to the applicant at the
time the documents are filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by
the complete specification that contains the claim.
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6 Subregulations 3.13B(1) and (2)
Repeal the subregulations, substitute:
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (1A) (a
prescribed circumstance for paragraph 43(2A)(a) of the Act)
applies to the invention defined in the claim; and
(b) either:
(i) a document mentioned in subregulation (2) (a
prescribed document for paragraph 43(2A)(b) of the
Act) clearly discloses the invention in the claim; or
(ii) 2 or more of those documents (a prescribed set of
prescribed documents for paragraph 43(2A)(b) of the
Act), considered together, clearly disclose the invention
in the claim.
Circumstance
(1A) For paragraph (1)(a), the circumstance is that the specification
containing the claim that defines the invention was filed for:
(a) a Convention application; or
(b) a complete application that has been amended to become a
Convention application.
Documents
(2) For paragraph (1)(b), the documents are the documents filed for a
related basic application at the time when the application was
made.
7 At the end of regulation 3.13B
Add:
Prescribed circumstances for micro-organisms
(5) For paragraph 43(2B)(b) of the Act, the prescribed circumstances
for a disclosure that requires a description of a micro-organism are
as follows:
(a) the deposit of the micro-organism with a prescribed
depository institution, in accordance with such provisions of
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the Budapest Treaty as are applicable, occurs on or before the
date when the documents mentioned in subregulation (2) are
filed;
(b) either:
(i) a document mentioned in subregulation (2) includes the
relevant information on the characteristics of the
micro-organism that is known to the applicant at the
time the documents are filed; or
(ii) 2 or more of those documents, considered together,
include the relevant information on the characteristics of
the micro-organism that is known to the applicant at the
time the documents are filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by
the complete specification that contains the claim.
8 Subregulations 3.13C(1) and (2)
Repeal the subregulations, substitute:
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (1A) (a
prescribed circumstance for paragraph 43(2A)(a) of the Act)
applies to the invention defined in the claim; and
(b) either:
(i) a document mentioned in subregulation (2) (a
prescribed document for paragraph 43(2A)(b) of the
Act) clearly discloses the invention in the claim; or
(ii) 2 or more of those documents (a prescribed set of
prescribed documents for paragraph 43(2A)(b) of the
Act), considered together, clearly disclose the invention
in the claim.
Circumstance
(1A) For paragraph (1)(a), the circumstance is that 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.
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Documents
(2) For paragraph (1)(b), the documents are the documents filed for the
provisional application at the time when the application was made.
9 At the end of regulation 3.13C
Add:
Prescribed circumstances for micro-organisms
(4) For paragraph 43(2B)(b) of the Act, the prescribed circumstances
for a disclosure that requires a description of a micro-organism are
as follows:
(a) the deposit of the micro-organism with a prescribed
depository institution, in accordance with such provisions of
the Budapest Treaty as are applicable, occurs on or before the
date when the documents mentioned in subregulation (2) are
filed;
(b) either:
(i) a document mentioned in subregulation (2) includes the
relevant information on the characteristics of the
micro-organism that is known to the applicant at the
time the documents are filed; or
(ii) 2 or more of those documents, considered together,
include the relevant information on the characteristics of
the micro-organism that is known to the applicant at the
time the documents are filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by
the complete specification that contains the claim.
10 Paragraph 3.13D(1)(b)
Repeal the paragraph, substitute:
(b) the specification mentioned in subsection 79B(1) of the Act
(the earlier specification) clearly discloses the invention in
the claim.
11 Subregulation 3.13D(2)
Repeal the subregulation, substitute:
(2) However, this regulation does not apply to a claim if:
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(a) the deposit requirements must be satisfied in relation to the
invention to comply with paragraph 40(2)(a) of the Act; and
(b) 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
(c) the requirements of paragraph 6(c) of the Act are not satisfied
in relation to the earlier specification.
12 At the end of regulation 3.13D
Add:
(4) For subsection 43(2A) of the Act:
(a) the circumstance mentioned in paragraph (1)(a) is a
prescribed circumstance; and
(b) the document mentioned in paragraph (1)(b) is a prescribed
document.
(5) For paragraph 43(2B)(b) of the Act, the prescribed circumstances
for a disclosure that requires a description of a micro-organism are
as follows:
(a) the deposit of the micro-organism with a prescribed
depository institution, in accordance with such provisions of
the Budapest Treaty as are applicable, occurs on or before the
date when the document mentioned in paragraph (1)(b) is
filed;
(b) the document mentioned in paragraph (1)(b) includes the
relevant information on the characteristics of the
micro-organism that is known to the applicant at the time the
documents are filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by
the complete specification that contains the claim.
13 At the end of regulation 3.13E
Add:
(3) For subsection 43(2A) of the Act:
(a) the circumstance mentioned in paragraph (1)(a) is a
prescribed circumstance; and
(b) the document mentioned in paragraph (1)(b) is a prescribed
document.
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(4) For paragraph 43(2B)(b) of the Act, the prescribed circumstances
for a disclosure that requires a description of a micro-organism are
as follows:
(a) the deposit of the micro-organism with a prescribed
depository institution, in accordance with such provisions of
the Budapest Treaty as are applicable, occurs on or before the
date when the document mentioned in paragraph (1)(b) is
filed;
(b) the document mentioned in paragraph (1)(b) includes the
relevant information on the characteristics of the
micro-organism that is known to the applicant at the time the
document is filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by
the complete specification that contains the claim.
14 Subregulation 3.15(3)
Repeal the subregulation.
15 At the end of Part 2 of Chapter 3
Add:
3.32 Provisional specifications—prescribed circumstances
(1) For paragraph 41(1A)(b) of the Act, the prescribed circumstances
are all of the following:
(a) the micro-organism was deposited with a prescribed
depository institution, in accordance with such provisions of
the Budapest Treaty as are applicable, on or before the date
the provisional specification was filed;
(b) at the time the provisional application to which the
provisional specification relates was made, the provisional
specification clearly disclosed the invention, other than in
relation to the description of the micro-organism;
(c) at the time the provisional application to which the
provisional specification relates was made, either:
(i) a document filed for the provisional application
included the relevant information on the characteristics
of the micro-organism that was known to the applicant
at that time; or
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(ii) 2 or more documents filed for the provisional
application, considered together, included the relevant
information on the characteristics of the micro-organism
that was known to the applicant at that time;
(d) if the circumstances mentioned in subregulation (2) apply—
the requirements of paragraph 6(c) of the Act are satisfied by
the complete specification mentioned in paragraph (2)(a) of
this regulation.
(2) For paragraph (1)(d), the circumstances are that:
(a) a complete specification has been filed for a complete
application; and
(b) the complete application is associated with the provisional
application whose specification is referred to in
paragraph (1)(b).
Note: A complete application may be associated with a provisional
application when the complete application is filed, or as a result of a
subsequent amendment to the complete application.
16 Subregulation 10.1(1AA)
Repeal the subregulation.
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Schedule 5—Other amendments
Designs Regulations 2004
1 At the end of Chapter 1
Add:
1.06 Giving of documents by Registrar
(1) For these Regulations, the Registrar 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.
(2) If the Registrar 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 Registrar.
2 After subregulation 11.13(1)
Insert:
(1A) Subregulation (1B) applies if:
(a) an application for an extension of time for doing a relevant
act is made under subsection 137(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 Registrar grants the application, the Registrar 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 Registrar—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 Registrar decides the application.
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Patents Regulations 1991
3 Subregulation 2.1(2)
Repeal the subregulation, substitute:
(2) A person making an application under that section must file with
the application a notice stating the facts on which the application is
based.
4 Regulation 3.2
Repeal the regulation, substitute:
3.2 Provisional specifications
(1) A provisional specification must:
(a) be in the approved form; and
(b) be in English.
(2) If the Commissioner treats a provisional specification as having
been filed, the Commissioner may, within 1 month from the date of
filing of the provisional specification, direct the applicant to do
anything necessary to ensure that the provisional specification
complies with the requirements mentioned in subregulation (1).
(3) If an applicant to whom a direction has been given under
subregulation (2) does not comply with the direction within 2
months from the date of the direction, the provisional specification
is taken not to have been filed.
5 After paragraph 3.2C(2)(a)
Insert:
(aa) provide the name of the inventor of the invention to which
the application relates; and
6 Regulation 3.25
Repeal the regulation, substitute:
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3.25 Request for Commissioner’s certification authorising release of
sample of a micro-organism
(1) If a micro-organism is deposited with a prescribed depositary
institution, a person may request the Commissioner to grant the
certification referred to in Rule 11.3(a) of the Budapest Treaty in
respect of the deposit.
(2) The request:
(a) must be in the approved form; and
(b) must relate to a micro-organism:
(i) that is the subject of a patent application or patent; or
(ii) the use, modification or cultivation of which is the
subject of a patent application or patent; and
(c) may nominate another person as a skilled addressee.
(3) Before making a decision under regulation 3.25B (including a
decision about imposing conditions under regulation 3.25G), the
Commissioner must:
(a) give each person mentioned in subregulation (4) a written
notice inviting the person to make, within a reasonable time
specified in the notice, a submission about the matter; and
(b) if a person mentioned in subregulation (4) makes a
submission within the time specified in the notice—take the
submission into account.
(4) For subregulation (3), the persons are as follows:
(a) the person who made the request;
(b) the applicant or patentee;
(c) any other person who apparently has an interest in the
request.
3.25A Request for certification—micro-organism subject of
application for standard patent
(1) This regulation applies if:
(a) the micro-organism, or the use, modification or cultivation of
the micro-organism, is the subject of an application for a
standard patent; and
(b) the complete specification relating to the application is not
open to public inspection.
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(2) The applicant may notify the Commissioner that, if:
(a) a request is made under regulation 3.25 in relation to the
application; and
(b) regulation 3.25E does not apply to the request;
a sample of the deposited micro-organism is to be provided during
the period mentioned in subregulation (3) only to a person who is a
skilled addressee without an interest in the invention.
(3) For subregulation (2), the period:
(a) begins when the complete specification relating to the
application is open to public inspection; and
(b) ends when:
(i) the patent is granted on the application; or
(ii) the application lapses or is withdrawn or refused.
3.25B Grant of certification—when Commissioner must grant
certification
(1) Subregulation (2) applies to a request under regulation 3.25 in
relation to a patent application if:
(a) the applicant for the patent has notified the Commissioner as
mentioned in subregulation 3.25A(2); and
(b) the period mentioned in subregulation 3.25A(3) has not
ended; and
(c) regulation 3.25E does not apply to the request.
(2) The Commissioner must grant the certification if:
(a) the specification relating to the application is open to public
inspection; and
(b) the Commissioner is reasonably satisfied that the nominated
person is entitled to rely on the deposit for the purposes of
the Act; and
(c) a person has been nominated as a skilled addressee by the
person who made the request; and
(d) the Commissioner is reasonably satisfied that the nominated
person:
(i) is appropriately skilled; and
(ii) does not have an interest in the invention; and
(e) regulation 3.25C applies to the request.
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(3) Subregulation (4) applies to any other request under
regulation 3.25.
(4) The Commissioner must grant the certification if:
(a) the specification relating to the application or patent is open
to public inspection; and
(b) the Commissioner is reasonably satisfied that the nominated
person is entitled to rely on the deposit for the purposes of
the Act; and
(c) one or more of regulations 3.25C, 3.25D, 3.25E and 3.25F
apply to the request.
(5) Despite subregulations (1) to (4), the Commissioner must not grant
the certification if:
(a) the request relates to a micro-organism:
(i) that is the subject of a PCT application; or
(ii) the use, modification or cultivation of which is the
subject of a PCT application; and
(b) the applicant of the PCT application has not complied with
subsection 29A(5) of the Act.
3.25C Grant of certification—limited use undertaking
(1) For paragraphs 3.25B(2)(e) and (4)(c), this regulation applies to a
request if:
(a) the person making the request or the person nominated as a
skilled addressee has undertaken to use the micro-organism,
during the period mentioned in subregulation (2), 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 the micro-organism, or a culture derived
from the micro-organism, available to another person during
that period; and
(b) the Commissioner is reasonably satisfied that the undertaking
given by the person making the request or the person
nominated as a skilled addressee is given in good faith.
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(2) For paragraph (1)(a), the period is:
(a) for a request in respect of a patent application—the period
beginning when the request is granted and ending when:
(i) the application lapses, or is refused or withdrawn; or
(ii) a patent granted on the application expires, ceases or is
revoked; or
(b) for a request in respect of a patent—the period beginning
when the request is granted and ending when the patent
expires, ceases or is revoked.
3.25D Grant of certification—order under section 133 of Act
For paragraph 3.25B(4)(c), this regulation applies to a request if:
(a) an order has been made, under section 133 of the Act,
requiring the patentee to grant to the person making the
request a licence to work the patented invention; and
(b) the Commissioner is reasonably satisfied that the licence
provides that the person making the request has a right to
obtain a sample of the micro-organism.
3.25E Grant of certification—exploitation for purposes of
Commonwealth or a State
For paragraph 3.25B(4)(c), this regulation applies to a request if:
(a) the person making the request is authorised by the
Commonwealth or a State, under subsection 163(1) of the
Act, to exploit the invention for the purposes of the
Commonwealth or State; and
(b) 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 the
micro-organism.
3.25F Grant of certification—expired patent etc.
For paragraph 3.25B(4)(c), this regulation applies to a request if
the request is in respect of:
(a) a patent application that has lapsed or has been refused or
withdrawn; or
(b) a patent that is expired, ceased or revoked.
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3.25G Imposing conditions on certification
If the Commissioner grants the requested certification under
regulation 3.25B, the Commissioner may impose any conditions
the Commissioner considers reasonable, including a condition that
the person making the request give security for damages for any
breach of the undertaking mentioned in paragraph 3.25C(1)(a)
given by:
(a) the person; or
(b) another person who has been nominated by the person as a
skilled addressee.
3.25H Notice of decision on certification request
(1) If the Commissioner makes a decision under regulation 3.25B
(including a decision about imposing conditions under
regulation 3.25G), the Commissioner must inform each person
mentioned in subregulation (2) of the decision, and the reasons for
the decision, by notice in writing given as soon as practicable after
the date of the decision.
(2) For subregulation (1), the persons are as follows:
(a) the person who made the request;
(b) the applicant or patentee;
(c) any other person who apparently has an interest in the
request.
7 Paragraph 22.5(a)
Omit “Special Account established under section 20 of the Financial
Management and Accountability Act 1997”, substitute “special account
established under section 78 of the Public Governance, Performance
and Accountability Act 2013”.
8 Subregulation 22.15(4) (note)
Repeal the note, substitute:
Note: For a list of these documents, see subregulation 3.14D(1).
9 Subparagraphs 22.26(2)(a)(iii) and (iv)
Repeal the subparagraphs, substitute:
(iii) regulation 5.17 or 5.18 (‘dismissal of opposition’);
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(iv) regulation 5.19 (‘determination of opposition’);
10 Subparagraph 22.26(2)(a)(vaa)
Repeal the subparagraph.
11 Paragraph 22.26(2)(d)
Omit “AAT” (wherever occurring), substitute “Tribunal”.
12 Subclause 5(2) of Schedule 3
Omit “if a specification is numbered in accordance with
subclause 6(2),”.
13 Part 2 of Schedule 7 (table item 239)
Repeal the item.
14 Part 4 of Schedule 7 (paragraph (a) of table item 403)
Repeal the paragraph.
Trade Marks Regulations 1995
15 Regulation 2.1
Insert:
Code of Conduct means the standard of practice titled “Code of
Conduct for Patent and Trade Mark Attorneys” that is established
by the Board from time to time.
16 Subregulation 17A.33(3)
Omit “applicant”, substitute “holder of the IRDA”.
17 Subregulations 17A.34B(2) and (5)
Omit “applicant”, substitute “holder of the IRDA”.
18 Subregulation 17A.34H(5)
Omit “opponent”, substitute “holder”.
19 Subregulation 17A.34H(5)
Omit “opponent’s”, substitute “holder’s”.
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20 Subregulation 17A.34M(2)
Omit “An applicant”, substitute “The holder of an IRDA”.
21 Paragraph 17A.34M(6)(c)
Omit “applicant”, substitute “holder of the IRDA”.
22 Paragraph 17A.36(5)(a)
Omit “17A.29(3)”, substitute “17A.32(2)”.
23 Paragraph 20.14(b)
Omit “the ‘Register’”, substitute “the ‘Register of Patent Attorneys’”.
24 Paragraph 20.14(e)
Repeal the paragraph.
25 At the end of regulation 20.15
Add:
; and (d) the reference in subparagraph 20.33(2)(b)(i) of the Patents
Regulations 1991 to ‘regulation 20.6’ were a reference to
‘regulation 20.6 of the Trade Marks Regulations 1995’; and
(e) the reference in subparagraph 20.33(2)(b)(ii) of the Patents
Regulations 1991 to ‘regulation 20.8’ were a reference to
‘regulation 20.8 of the Trade Marks Regulations 1995’.
26 Regulation 21.14 (note)
Repeal the note, substitute:
Note: Regulation 5.19 deals with directions as to procedure in opposition
proceedings.
27 Subregulation 21.21A(2)
Omit “despite of”, substitute “despite”.
28 Paragraph 21.28(2)(b)
Omit “regulation 17.48F”, substitute “regulation 17A.48F”.
29 Clause 1 of Schedule 7
Omit “5.5”, substitute “5.18”.
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30 Schedule 9 (table item 13)
Repeal the item, substitute:
13 Filing an application for removal of a trade mark from
the Register for non-use under section 92 of the Act
$250
13A Filing an application for cessation of protection for
non-use under Subdivision D of Division 5 of Part 17A
$250
31 Schedule 9 (table item 18)
Repeal the item, substitute:
18 Handling an application for the international
registration of a trade mark under regulation 17A.7, if
the application is filed other than by approved means
$100
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Schedule 6—Application of amendments
Patents Regulations 1991
1 At the end of Chapter 23
Add:
23.37 Amendments made by Intellectual Property Legislation
Amendment (TRIPS Protocol and Other Measures)
Regulation 2015
(1) The amendments of these Regulations made by Schedule 1 to the
Intellectual Property Legislation Amendment (TRIPS Protocol and
Other Measures) Regulation 2015 (the amending instrument)
apply in relation to patents granted before or after the
commencement of that Schedule.
(2) The amendments of these Regulations made by items 2 to 13 of
Schedule 4 to the amending instrument apply in relation to the
following:
(a) patents for which the complete application is made after that
Schedule commences;
(b) standard patents for which the application had been made
before that Schedule commences, if the applicant had not
asked for an examination of the patent request and
specification for the application under section 44 of the
Patents Act 1990 before that time;
(c) innovation patents granted after that Schedule commences, if
the complete application to which the patent relates had been
made before that time;
(d) complete patent applications made after the time that
Schedule commences;
(e) complete applications for standard patents made before the
commencement of that Schedule, if the applicant had not
asked for an examination of the patent request and
specification for the application under section 44 of the
Patents Act 1990 before that time;
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(f) complete applications for innovation patents made before
that Schedule commences, if a patent had not been granted in
relation to the application on or before that time;
(g) innovation patents granted before that Schedule commences,
if:
(i) the Commissioner had not decided to examine the
complete specification relating to the patent under
section 101A of the Patents Act 1990 before that time;
and
(ii) the patentee or any other person had not asked the
Commissioner to examine the complete specification
relating to the patent under section 101A of the Patents
Act 1990 before that time.
(3) Regulation 3.25 as repealed and substituted by Schedule 5 of the
amending instrument applies in relation to requests made after the
commencement of that Schedule, regardless of when the
micro-organism was deposited with a prescribed depository
institution.
(4) Regulation 3.25A as inserted by Schedule 5 of the amending
instrument applies in relation to applications for standard patents
made:
(a) after the commencement of that Schedule; and
(b) before the commencement of that Schedule, if the complete
specification relating to the application is not open to public
inspection at that commencement.
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