made under the
Patents Act 1990
This compilation was prepared on 1 August 2010 taking into account amendments up to SLI 2010 No. 181
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
6.2 Prescribed period: grant of standard patent 75
6.3 Date of patent 75
6.4 Form of application for sealing of duplicate of patent 77
6.8 Information to accompany application 78
6.9 Application without pre-TGA marketing approval 78
6.10 Application with pre-TGA marketing approval 79
6.11 Further information 79
Chapter 6A Divisional applications 6A.1 Divisional applications: standard patents 81 6A.2 Divisional applications: innovation patents 81
Chapter 7 Patents of addition
7.2 Form of application for revocation of patent and grant of patent of addition instead 82
Chapter 8 PCT applications and Convention applications
Part 1 PCT applications
under the Act 83 8.1A Title of an invention 84
8.3 Modification of Act to apply to PCT applications 85
8.4 Form of request and prescribed documents: PCT applications 94
8.6 Particulars required for Convention application — general 95
8.6A Particulars required for Convention application — use of approved digital library 96
9.2 Request for re-examination of complete specification 97
9.3 Copy of report on re-examination 98
9.4 Prescribed period: statement disputing report by Commissioner 98
9.5 Completion of re-examination 99
9A.1 Request for examination 101 9A.2 Examination of complete specification 101 9A.2A Results of documentary searches — innovation patent 102 9A.2B Prescribed documentary searches by or on behalf of a foreign patent office 103 9A.3 Conduct of examination 105 9A.4 Period for examination 106 9A.5 Validity of innovation patent 107
10.2 Commissioner to consider and deal with requests for leave to amend 109
10.3 Amendments not allowable 112
10.4 Commissioner to refuse request for leave to amend 114
10.5 Commissioner to grant leave to amend 114
10.6 Time for allowance of amendments 115
10.7 Correction of Register or patent 116
10.8 Prescribed decisions: appeal to Federal Court 119
10.10 Prescribed period: filing of court order 119
10.11 Form of direction by Commissioner: patents 119
10.12 Form of direction by Commissioner: applications 119
10.14 Form of request: claim under assignment or agreement 119
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Chapter 11 11.1 | Infringement Infringement exemptions: prescribed foreign countries | 120 |
Chapter 12 12.1 12.2 12.3 12.4 | Compulsory licences and revocation of patents Lodgment of applications for compulsory licences Prescribed period: revocation of patent Form of notice: offer to surrender patent Applications to revoke patents | 121122122122 |
13.1 Publication of notice of withdrawal of application 124 13.1A Period in which standard patent applications may not be withdrawn 124
13.1B Period in which innovation patent applications may not be withdrawn 124
13.3 Prescribed period: continuation fees 125
13.4 Prescribed period: acceptance of request and specification 126
13.5 If applications lapse 128
13.6 Time for payment of renewal fee for patent 128
13.7 Prescribed period: ceasing of innovation patents 130
Chapter 15 Special provisions relating to associated technology
15.2 Requirements for reinstatement of international applications 131
15.3 Prescribed period: order relating to standard patent 131
innovation patent 132 17.1A Prescribed period: order relating to standard patent 132
Chapter 19 The register and official documents
19.2 Request for information from Commissioner 134 Page
Chapter 20 Patent attorneys
Part 1 Introduction
20.3 Evidence that applicant meets registration requirements 136
20.4 Certificate of registration 137
20.5 Evidence of academic qualifications 137
20.6 Academic qualifications 137
20.7 Evidence of knowledge requirements 138
20.8 Knowledge requirements 139
20.9 Exemption from a requirement in Schedule 5 140
20.10 Employment requirements 140
20.11 Statements of skill 141
20.12 Prescribed offences 142
Part 3 Accreditation of courses of study
20.14 Provisional accreditation 144
Part 4 Board examinations
20.16 Time for holding Board examinations 145
20.17 Examinable subject matter 145
20.18 Admission to sit for a Board examination 146
20.19 Notification of Board examination results 146
20.20 Reasons for failure of Board examination 146
20.21 Supplementary Board examination 146
Part 5 Maintaining registration
20.23 Payment of annual registration fee 148
20.24 Continuing professional education — number of hours 148
Page | ||
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20.25 | Method of demonstrating that continuing professional education has been undertaken | 149 |
Part 6 | Removal from Register | |
20.26 20.27 20.28 | Voluntary removal of name from Register Failure to pay annual registration fee Failure to comply with continuing professional education requirements | 150150150 |
Part 7 | Returning to Register | |
20.29 20.30 20.31 | Restoring attorney’s name to Register Restoring attorney’s name to Register following payment of unpaid fee Returning to Register in other circumstances | 152153153 |
Part 8 | Discipline | |
Division 1 | General | |
20.32 | Definitions | 155 |
20.33 20.34 20.35 | Role of Board in disciplinary proceedings Board may require attorney to cooperate with investigationCommencing disciplinary proceedings | 155 157157 |
Division 2 | Proceedings in Disciplinary Tribunal | |
20.36 20.37 20.38 | Procedure of Disciplinary Tribunal Notification of hearing of disciplinary proceedings Hearings to be public except in special circumstances | 157158158 |
20.39 20.40 20.41 | Representation before Disciplinary Tribunal Summoning of witnesses Offences by persons appearing before Disciplinary Tribunal | 159159 159 |
20.42 20.43 20.44 20.45 20.46 20.47 | Protection of person constituting Disciplinary Tribunal, witnesses etc Decision of Disciplinary Tribunal Penalties — professional misconduct Penalties — unsatisfactory professional conduct Finding that attorney was unqualified at time of registrationFinding that registration obtained by fraud | 161162162163 164164 |
Patents Regulations 1991 | 9 |
Page | ||
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20.48 20.49 20.50 20.51 20.52 | Matters that may be considered in determining penaltiesFindings of Disciplinary Tribunal Notification and publication of decisions of Disciplinary Tribunal Completion of outstanding business Former attorney may be required to provide assistance | 164164165165 166 |
Part 9 | Rights of registered patent attorneys | |
20.53 | Lien | 168 |
Part 10 | Administration | |
Division 1 | Professional Standards Board for Patent and Trade Marks Attorneys | |
20.54 20.55 | Constitution of Board (Act s 227A) Term of office of Board members | 169169 |
20.56 20.57 20.58 20.59 20.60 | Resignation and removal of members from Board Meetings of Board Member presiding at meetings of Board Quorum for Board meetings Absence of Chairperson from meeting — leave from Board | 169170171171171 |
Division 2 | Patent and Trade Marks Attorneys Disciplinary Tribunal | |
20.61 20.62 20.63 20.64 | Establishment of Disciplinary Tribunal Disciplinary Tribunal — substantive appointments Disciplinary Tribunal — acting appointments Disclosure of interest | 171171172173 |
20.65 | Qualifications for appointment to, or acting as, Disciplinary Tribunal | 174 |
Chapter 21 21.1 | Administration Patent Office and sub-offices | 175 |
21.2 | Employees to whom Commissioner may delegate (Act s 209 (1)) | 175 |
Chapter 22 Miscellaneous
22.2 General fees 176 22.2A Failure to pay: patent attorneys fees 177 22.2B Failure to pay: filing fees for patent requests 177 22.2C Failure to pay: certain other filing fees etc 178 22.2D Failure to pay: fees payable by patentee for requests under s 101A (b) of the Act 178 22.2E Failure to pay: response fee 179 22.2F Consequence if Commissioner does not invite payment 179 22.2G Failure to pay: hearing fees 180 22.2H Failure to pay: certain fees for actions by Commissioner 181 22.2I Failure to pay: acceptance fee 181
22.4 Fees for international applications payable for the benefit of the International Bureau 182
22.5 PCT Fund 183
22.6 Exemption from fees 183
22.7 Refund of certain fees 183
22.7A Proceedings to which this Division applies 184
22.10 Address for service 186 22.10A Address for correspondence 187 22.10AA Period for doing certain acts — office not open for business 187 22.10AB Days when office not open for business 187 22.10AC Period for doing certain acts — acts to which section 222A does not apply 188
22.13 Declarations 190
22.14 Directions not otherwise prescribed 191
22.15 Documents to be in English 191
22.16 Documents other than specifications and abstracts 192
22.17 Incapacity of certain persons 192
22.18 Destruction of documents 193
22.19 Copies of certain documents to be supplied 193
22.20 International applications and the Patent Office 194
22.21 Protection or compensation of certain persons 194
22.22 Exercise by Commissioner of certain powers 195
22.23 Hearings 195
22.24 Practice and procedure other than for opposition proceedings 196
22.25 Requirements cannot be complied with for reasonable cause 196
22.26 Review of decisions 197
23.2 Delegation: certain matters referred to in this Chapter 199
23.3 Opposition to grant: practice and procedure 199
23.4 Certain opposition: practice and procedure 200
23.5 Fees payable for certain matters relating to opposition 200
23.6 Certain delegations: opposition 200
23.7 Certain undertakings 201
23.8 Restoration of lapsed applications or ceased patents 201
23.9 Certain continuation and renewal fees 202
23.10 Fee taken to have been paid 202
23.11 Supply of product referred to in section 117 of the Act 202
23.12 Certain withdrawn, abandoned or refused applications 203
23.13 Certain certificates of validity 203
23.14 Certain action under the 1952 Act 204
23.15 Amendment of petty patents 204
23.16 Certain applications under 1952 Act: time for acceptance 204
Page | ||
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23.17 23.18 23.25 | PCT applications to which subsection 89 (5) of the Act does not apply Certain priority dates: saving Fees | 205205206 |
23.26 23.32 23.33 23.34 23.35 | Certain actions and proceedings Transitional: priority date and date of patent for innovation patent application that is a divisional application of a petty patent or petty patent applicationTransitional: examination of innovation patents converted from petty patent applications Transitional: certain PCT applications Transitional: payment of fees for petty patents | 206 207207208208 |
Schedule 1 | Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure | 211 |
Schedule 1A | Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure | 229 |
Schedule 2 | Patent Cooperation Treaty | 254 |
These Regulations are the Patents Regulations 1991.
These Regulations commence on 30 April 1991.
approved digital library means a library or oth er facility that the Comm issioner specifies as a digital library, for this definition, in the Official Journal.
Example
The library ad ministered by th e In ternational Bureau of th e World Intellectual Pro perty Org anization, kno wn as th e “Dig ital Access Serv ice for Priority Documents” or “DAS”.
basic documents m eans docum ents filed in a Convention country in respect of a basic application. certificate of verification means a statement:
(a) that a docu ment to which the sta tement relate s is a true and com plete trans lation of the acco mpanying docum ent to the best of the knowledge of the person who signs the
statement; and
(b) that is dated and signed. competent authority, in relation to a Convention country, means a person who, under the la ws of the country or the
arrangements in place in the c ountry, is authoris ed to certify copies of specifications of patents for the country. Disciplinary Tribunal m eans the Patent and Trade Marks
Attorneys Disciplinary Tribuna l established under regulation
20.41.
former attorneys Regulations means the follow ing Regulations:
before 1 July 2008.
former patents Regulations means the Patents Regulation s in
force immediately before the comm encing day under the 1952
Act.
International Bureau m eans the I nternational Bureau of the World Intellectual Property Organization. the Act means the Patents Act 1990. the Tribunal means the Administrative Appeals Tribunal.
to the Comm issioner or the Pate nt Office inclu des a reference to the filing of the document.
is available for them to collect electronically; the document is taken to have been given to the person on the day on which the notice is dated by Commi ssioner or the Office, unless the contrary intention appears.
1.3A Meaning of completed in relation to a search
For these regulations: A search is completed on the earliest of:
Note This regulation is made for the purposes of subsection 228 (5) of the Act.
Note A translation of a document into English that is filed must have with it a related certificate of verification (see regulation 22.15).
(2) A m atter th at was c laimed or disclosed in a disclaim er or acknowledgement of prior art in a basic application or in a specification or other docum ent filed in respect of, and at the same tim e as, the basic applic ation is not taken to have been disclosed.
1.6A Disclosure in basic applications — use of approved digital library
the specification or other doc ument in the approved digital library.
For the purposes of subsection 10 (2) of the Act, the translation of an inter national ap plication th at was not f iled in the receiving O ffice in English m ust have with it a rela ted certificate of verification.
Example
An online application facility.
(1) In this Regulation: Paris Convention m eans the P aris Convention for the
Protection of Industrial Property of 20 March 1883, as in force for Australia on the commencing day. recognised exhibition means:
(1A) For paragraph 24 (1) (a) of the Act, the circum stance that there was a publication or use of the invention within 12 m onths before the filing date of th e com plete application, is a prescribed circumstance.
(iii) if the f irst disclosu re o f the invention during the exhibition did not take place on that date — the date of that disclosure.
(1A) For information of the kind referred to in paragraph 24 (1) (a) of the Act, if the app licant relies on th e c ircumstance in subregulation 2.2 (1A), the prescr ibed period is the period of 12 m onths after the inform ation was first m ade publicly available.
2.2 (2) (d) — 12 m onths from the start of the first public working of the invention referred to in that paragraph.
For subsection 27 (1) of the Ac t, th e presc ribed period is the period:
For subsection 28 (2) of the Act, the prescribed period for an innovation patent is the period from the date that the com plete specification for the patent beco mes open to public inspection to immediately before the Comm issioner decides to certify the patent.
Notice of an assertion under s ubsection 27 (1) or 28 (1) of the Act must, if the assertion is based on a document, have with it:
Chapter 3 | From application to acceptance |
Part 1 | Inventions generally |
Regulation 3.1 |
Chapter 3 | From application to |
acceptance | |
Part 1 | Inventions generally |
(iii) if a receip t referred to in subparagraph (i) or (ii) is not in English — a translat ion of the rece ipt into English and a related certificate of verification; and
Regulation 3.2A
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.
A provisional specification must be in the approved form.
(3) If the Commissioner treats an application for a standard patent as having been filed, the Comm issioner may, within 1 m onth from the date of filing of the a pplication, direct the applicant to do anything necessary to ensure that the patent request and complete specif ication com ply with th e requ irements mentioned in subregulations (1) and (2).
Note See regulation 3.5 for what happens if certain information required for an application is not filed.
end of the period; the com plete applic ation to which the paten t request a nd complete specification relate lapses at the end of the period.
Regulation 3.2B
(ii) | be in English; and | ||||
---|---|---|---|---|---|
(iii) | comply substantially with the requirem Schedule 3; | ents of | |||
(b) | the patent request must be in the approved form; | ||||
(c) | if the applicant is an el igible person under section 34 of the Act — a copy of the cour t order declaring that the applicant is an elig ible person in re lation to the invention must be filed with the complete application; | ||||
(d) | the complete application must comply with regulation 3.8, 3.10, 6A.1, 6A.2 or subregulati on 8.5 (2), or subsection 79C (2) of the Act, if applicable; | ||||
(e) | if the applic ant is re lying on section 41 of the Act — the receipts m entioned in paragraph 3.1 (2) (c) m ust be filed with the complete application; | ||||
(f) | the complete specification must not be a cross-reference to an ear lier p atent applic ation f iled in Austra lia or in a Convention country; | ||||
(g) | the com plete sp ecification m ust not contraven subsection 18 (2) or (3) of the Act; | e | |||
(h) | if the application is a di visional application m ade under section 79B of the Act in relation to an original application that is a PCT applica tion, the com plete sp ecification f or the PCT application must be open to public inspection. |
Regulation 3.4
Regulation 3.5
Regulation 3.5A
(iii) if the e arlier app lication is no t in English — a translation of the application in to English tog ether with a related certificate of verification.
The Patent Office and each sub-office of the Patent Office may provide facilities for the filing of documents when the Office or sub-office is not open to the public for business.
For section 32 of the Act, a request must:
For the purposes of paragraphs 35 (1) (b) and 3 6 (1) (b) of the Act, an application must:
An application under section 29 of the Act must be made:
Regulation 3.12
For subsection 37 (1) of the Act, the prescribed period is:
For the purposes of section 38 of the Act, the period of 12 months from the filing date of the provisional application is prescribed.
the date mentioned in subregulation (2D).
(iii) a specification in respe ct of a b asic application that is related to that Conv ention application, being a specification that was f iled af ter the ba sic application was made;
Regulation 3.12
(c) | if: | ||||
---|---|---|---|---|---|
(i) | the applica tion tha t re lates to th e specif ication containing the claim is a PCT application that, under Article 8 of the PCT, claims the priority of an earlier application; and | ||||
(ii) | that earlier application is: | ||||
(A) | an application m ade in Australia not m ore than 12 months before the international filing date of the PCT application; or | ||||
(AA) | an applica tion m ade in Austra lia more than 12 months before the international filing date of the PCT application, for which: | ||||
(I) a rec eiving Office h as res priority under Rule 26bis.3; and | tored | ||||
(II) | the r estored prio rity h as not b een found to be ineffective by the Commissioner or a p rescribed cou rt under Rule 49ter.1; or | ||||
(B) | a basic application, m ade not more than 12 months before the international filing date of the PCT application, that is the first application made in a Convention country in respect of the invention; or | ||||
(BB) | a basic application m ade more than 12 months before the international filing date of the PCT application, that is the first application made in a Convention country in respect of the invention, for which: | ||||
(I) a rec eiving Office h as res priority under Rule 26bis.3; and | tored | ||||
(II) | the r estored prio rity h as not b een found to be ineffective by the Commissioner or a p rescribed cou rt under Rule 49ter.1; or |
(C) a basic application made after a basic application referred to in sub-subparagraph (B);
that earlier application, and a specification filed in relation to tha t ea rlier app lication af ter it was m ade, are p riority documents.
(2A) For the purposes of paragra ph (1) (b) and subregulation (2), ‘filed’ inclu des f iled with the Pa tent Of fice and f iled with a corresponding Office of another country.
(2B) A reference in subregulation (2) to a basic app lication does not include a basic application that has been disregarded by the Commissioner under section 96 of the Act.
(2C) The date for a specificati on to which paragraph 3.12 (1) (c) applies is the date that would have been the priority date of the claim if it had been included in the specification referred to in paragraph 79B (1) (a) of the Act.
(2D) The date for a specification to which paragraph 3.12 (1) (d) applies is the date that would have been the priority date of the claim if it had been included in the specification referred to in subsection 79C (1) of the Act.
Regulation 3.14
(4) If a PCT application claims priority from a basic application, a specification or other docum ent filed in respect of, and at the same time as, a basic application, section 96 of the Act is take n to apply to the PCT a pplication as if it were a Convention application.
If subsection 114 (1) of the Act applies to a claim of a specification, the priority date of the claim is:
Regulation 3.15
Regulation 3.17A
the period within whic h the applicant m ust i nform the Commissioner of the results of a d ocumentary search is taken to end on the date on which the application is filed in accordance with subregulation (6); and
Regulation 3.17B
Note Under subsection 79B (1) of the Act, if a complete patent application for a patent is made, the applicant may make a further complete application for a patent for an invention:
In paragraph (c), app lication A is th e ‘further co mplete ap plication’mentioned in subsection 79B (1) of the Act. It is described in paragraph (c)as a ‘d ivisional ap plication’. App lication B is th e ‘first-m entioned application’ i n rel ation t o a pplication A. If res ults of sea rches ha ve been disclosed in th e co urse of application B, th e results do not need to b edisclosed again in the course of application A.
However, it is possible under subsection 79B (1) of the Act that applicationB may also be a di visional application in relation to another application. In that case, there will also be a first-mentioned application for applicationB.If results of searc hes ha ve been disclosed i n t he co urse of t hat first-mentioned application, the results do not need to be disclosed again inthe course of application A.
(d) if the application is an application for a patent of addition under Chapter 7 of the Act — a search, the result of which was disclosed under subsecti on 45 (3) of the Act in relation to the application for the main invention;
(iii) if the pate nt reques t and com plete spec ification relating to the applicati on were accepted (whether before or after 22 October 2007) — the day 3 months after the notice of acceptan ce was published in the Official Journal under paragraph 49 (5) (b) of the Act;
the documentary search is prescribed (so th at information need not be given to the Commissioner).
Regulation 3.18
(b) the app licant ask ed f or th e exa mination on or af ter
22 October 2007; all documentary searches by, or on behalf of, a foreign patent office are prescrib ed (so that in formation need not be given to the Commissioner).
(iii) section 38 (‘time for making complete application’);
(vii) section 95 (‘m anner of m aking Conve ntion applications’);
Regulation 3.19
(iii) an amendment of a claim that is consequential on an omission referred to in subparagraph (ii); or
(1) If the Comm issioner reasonably believes that there a re lawful grounds of objection to the pa tent request or complete specification, he or she must state the grounds of objection in reporting on an examination.
Regulation 3.20
(1) In this regulation:
prescribed foreign country m eans a country prescribed in regulation 3.21.
Regulation 3.21
Commissioner; before acceptance, unless the applicant m akes a request un der subsection 47 (2) of the Act.
For the purposes of paragraphs 46 (1) (b) and 47 (1) (b) of the Act, the following countries are prescribed:
Regulation 3.22
(d) any inf ormation in the Commissioner’s possession that relates to a docum ent m entioned 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 Comm issioner m ust not disclose the application, docum ent or inform ation without the consent of the applicant.
Note Section 194 of th e Act also au thorises th e Co mmissioner to g ive a person cert ain i nformation abo ut pat ents, pat ent ap plications an d ot her documents in certain circumstances.
(3) The Commissioner m ay disclo se the pa tent applica tion, document or information by depositing it in an approved digital library or by any other means.
Regulation 3.23
3.23 Documents in accepted applications and patents involving micro-organisms
Regulation 3.25
10.2 (a) (iii) of the Budapest T reaty for a statement concerning the viability of a micro-o rganism if a sample of the micro-organism has been gi ven to the Commissioner in accordance with a request under subregulation (1).
(1) If a m icro-organism is depos ited with a prescribed depositary institution, a person may, in the approved form, request the Commissioner to gran t the cer tification ref erred to in R ule
(3A) For subregulation (3), the period is:
Regulation 3.25
(iii) | relevant proceedings in relation to the patent; | |||
---|---|---|---|---|
and not to m ake that micro-organism, or a culture derived from that micro-organism, available to another person; and | ||||
(d) | unless th e Comm issioner is r easonably satisf ied that th e undertaking given by the person making the request or the 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 been granted; and | in that subregulation has not | ||
(iii) | the application referred to in that subregulation has not lapsed or been withdrawn or refused; and | |||
(iv) | the Comm issioner is reasonably satisfied that the person nominated as a s killed 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 m aking that request is a person to whom the patentee has granted a licence under section 133 of the Act; and | |||
(iii) | the Comm issioner is r easonably s atisfied that the licence provides that the person m aking the request has a right to obtain a sa mple 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 m ay exploit the invention unde r section 163 of the Act; and | |||
(iii) | the Comm issioner is r easonably s atisfied that the terms for the exploitation of the invention provide that the person m aking the request has a right to obtain a sample of that micro-organism. |
Regulation 3.26
Regulation 3.28
3.29 (1) of the deposit requirem ent 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 appropriate period prescribed by subregulation 3.30 (1) for the purposes of that paragraph.
In proceedings referred to in subregu lation 3.26 (1) for breach of an undertaking:
Regulation 3.29
(iii) any products m ade by using those other micro-organisms.
Regulation 3.30
For the purposes of paragraph 41 (4) (b) of the Act, if, in relation to a patent applic ation or patent relating to a micro-organism:
the prescrib ed period is from the day when th e requ irement ceases to be so satisfied to the end of:
3.29 (2) the applicant or pa tentee a copy of a notice of that requirem ent — the period of 3 m onths a fter the copy was given; or
Regulation 3.30
(ii) if the Comm issioner 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 m icro-organism and the Commissioner has not, before the notification, given to the applicant or pate ntee 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
Regulation 3.31
Regulation 3.31
(b) the m aking of a decisi on of the Comm issioner under
subsection 42 (1) of the Act; notice of the m aking of the decl aration or decision m ust be published in the Official Journal.
(6) The term s of a declarati on or decision referred to in subregulation (5) need not be published, but the declaration or decision must be open to public inspection.
Chapter 4 Publication
For the purposes of section 53 of the Act, the following information is prescribed:
to in regulation 3.12; whichever is earlier.
This Chapter applies if a notice of opposition has been filed for the purposes of:
(iii) section 101M (opposition to innovation patent);
In this Chapter: applicant means:
opponent means a person who has filed a notice of opposition. party means applicant or opponent.
(5A) A person who intends to oppose a request for am endment of the Register or a patent under subregulation 10.7 (4) must file a notice of opposition in the approve d form within 3 m onths of the publication in the Official Journal of the no tice referred to in subregulation 10.7 (3).
approved form within 1 month from the day on which the copy was served on him or her.
(7) As soon as practicable after a notice of opposition is filed, the opponent must serve a copy of the notice on the applicant.
An opponent (except an opponent under section 101M of the Act) must:
request the Commissioner in the approved form to dismiss the opposition.
If the specification in relation to the opposed application is
re-examined under subsection 97 (1) of the Act:
(1A) For subparagraph (1) (a) (ii), the period is within 3 months after the day when the opponent served on the applicant a copy of the statement mentioned in paragraph 5.4 (a).
5.9A Amendment of statement: additional ground as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004
specifies; permit the party to serve further evidence on the other party.
A representation m entioned in any of the following provisions may be m ade to the Commissione r in writing or by any other means approved by the Commissioner:
If the Comm issioner believes, on reasonable grounds, that no party wishes to be heard in a m atter arising u nder regulation 5.12 or 5.13, the Comm issioner is not required to hold a hearing.
An opponent may at any time withdraw opposition by:
Grant and term of patents | Chapter 6 |
Patents generally | Part 1 |
Regulation 6.3 |
Chapter 6 Grant and term of patents
If a standard patent is gran ted under section 61 of the Act, the Commissioner m ust publish a notic e that the patent has been granted in the Official Journal.
directs; being satisfied that the grant of the patent should be postponed.
(2) A person may request the Co mmissioner in the approved for m to give a direction referred to in subparagraph (1) (b) (ii).
Chapter 6 | Grant and term of patents |
Part 1 | Patents generally |
Regulation 6.3 |
Grant and term of patents | Chapter 6 |
Patents generally | Part 1 |
Regulation 6.4 |
(iii) if that f irst-mentioned applica tion was itse lf a divisional application or was amended to be a divisional applic ation bef ore filing the late r application — the date that would be the date of the patent if a patent had been granted on the divisional application.
An application for the sealing of a duplicate of a patent under section 66 of the Act must be in the approved form.
Chapter 6 | Grant and term of patents |
Part 2 | Extension of pharmaceutical patents |
Regulation 6.7 |
In this Part: pre-TGA marketing approval has the sam e m eaning as in section 70 of the Act.
Regulation 6.11
the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance; or
(b) if the patentee does not ha ve a ce rtificate m entioned in paragraph (a) — inform ation showing the date of commencement of the f irst inc lusion 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.
Note For providing a copyof a written statement mentioned in paragraph
(2) (a), see the definition of document in subsection 71 (1) of the Act.
(1) This regulation applies if the Commissioner needs further information to decide whether he or she is s atisfied that the requirements set out in secti ons 70 and 71 of the Act are satisfied f or an applica tion f or an extension of the te rm of a standard patent.
Regulation 6.11
Note The period for giving the further information can be extended — see section 223 of the Act.
For section 79B of the Act, a divisional application m ust be made:
Chapter 7 Patents of addition
An application under section 82 of the Act must be in the approved form.
PCT applications and Convention applications | Chapter 8 |
PCT applications | Part 1 |
Regulation 8.1 |
Chapter 8 PCT applications and Convention applications
the publication under Article 21 of the PCT is taken to be the translation referred to in paragraph 89 (3) (a) of the Act and to have been verified in accordance with these regulations.
PCT applications and Convention applications | Chapter 8 |
PCT applications | Part 1 |
Regulation 8.3 |
(1) For paragraph 228 (2) (t) of the Act, the Act is modified under this r egulation f or PCT applic ations that are treated as patent applications under the Act.
(1AA) Subsection 45 (1):
omit
Where
insert
Subject to subsection (1AC), where
(1AB) After subsection 45 (1):
insert
(1AA) Where:
(a) an applican t asks for an exam ination of a p atent request and complete specification relating to a PCT application; and
Regulation 8.3
the Commissioner may report on these m atters and ask the applicant to provide a copy of the international preliminary exam ination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any am endments that m ay have been m ade under Article 34 of the PCT.
(1AB) Where:
the Commissioner may report on these m atters and ask the applicant to provide a copy of the international preliminary exam ination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any am endments that m ay have been m ade under Article 34 of the PCT.
PCT applications and Convention applications | Chapter 8 |
PCT applications | Part 1 |
Regulation 8.3 |
(1AC) | If subsection (1AA) or (1AB) applies Commissioner is not require d to performfunctions under subsection (1) unless: | , the his or her | ||||
---|---|---|---|---|---|---|
(a) | a copy of the internatio nal preliminary examination report is provided to the Commissioner; or | |||||
(b) | the applicant: | |||||
(i) | advises that: | |||||
(A) | no dem and was m ade under Article 31 of the PCT; or | |||||
(B) | no a mendments were m Article 34 of the PCT; or | ade under | ||||
(C) | the dem and was m ade under Article 31 of the PCT, or the inte rnational | |||||
preliminary exam ination report was established, af ter the applic ant complied with the req uirements of subsection 89 (3); or | ||||||
(ii) | elects to abandon any amendments that m ay have been made under Article 34 of the PCT. | |||||
Note Under s ubsection 89 (7) o f t he Act, as m odified by t he Patents Regulations 1991, if th e applicant provides the a dvice, or makes t he el ection, m entioned i n paragraph ( 1AC) (b ), anyamendments made under Article 34 of the PCT are not taken to be | ||||||
included in the application. |
(1AC) After subsection 45 (5):
insert
(6) In this section:
International Bureau m eans the International Bureau of the World Intellectual Property Organization. international preliminary examination report has the
same meaning as it has in the PCT.
(1AD) Subsection 48 (1):
omit
When
Chapter 8 | PCT applications and Convention applications |
Part 1 | PCT applications |
Regulation 8.3 |
insert
Subject to subsection (1AC), when
(1AE) After subsection 48 (1):
insert
(1AA) Where:
the Commissioner may report on these m atters and ask the applicant to provide a copy of the international preliminary exam ination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any am endments that m ay have been m ade under Article 34 of the PCT.
(1AB) Where:
Regulation 8.3
(d) a copy of an internationa l preliminary examination report relating to the application has not been provided to the Commissioner;
the Commissioner may report on these m atters and ask the applicant to provide a copy of the international preliminary exam ination repor t, o r to adv ise that no amendments were made under Article 34 of the PCT, or to abandon any am endments that m ay have been m ade under Article 34 of the PCT.
(1AC) If subsection (1AA) or (1AB) applies , the Commissioner is not require d to perform his or her functions under subsection (1) unless:
Note Under s ubsection 89 (7) o f t he Act, as m odified by t he Patents Regulations 1991, if th e applicant provides the a dvice, or makes t he el ection, m entioned i n paragraph ( 1AC) (b ), anyamendments made under Article 34 of the PCT are not taken to be included in the application.
Chapter 8 | PCT applications and Convention applications |
Part 1 | PCT applications |
Regulation 8.3 |
(1AF) After subsection 48 (2):
insert
(3) In this section:
International Bureau m eans the International Bureau of the World Intellectual Property Organization. international preliminary examination report has the
same meaning as it has in the PCT.
(1A) Section 53:
omit
Where
insert
(1) Where
(1B) Section 53:
insert
(2) For a PCT application, the prescribed inform ation is taken to have been published under subsection (1) when the application is published by the International Bureau of the World Intellectual Property Organization.
(1BA) Subsection 89 (5):
substitute
PCT applications and Convention applications | Chapter 8 |
PCT applications | Part 1 |
Regulation 8.3 |
(1BD) After subsection 89 (5):
insert
the description, drawings and claims contained in the application are, for the purposes of this Act, to be taken to have been am ended on the day on which the amendment was made.
(1C) Paragraph 90 (a):
omit
subsection 92 (1) or (2)
insert
subsection 92 (2) (1D) Paragraph 90 (b):
Chapter 8 | PCT applications and Convention applications |
Part 1 | PCT applications |
Regulation 8.3 |
substitute
(b) where subsection 92 (3) applies — on the day on which the application is published under Article 21 of the PCT.
(1E) Section 92:
substitute
the PCT; the application is open to public inspection.
Regulation 8.3
priority date, for an international application, has the same meaning as in the PCT.
(2) Section 141: omit the section, substitute:
‘141 Withdrawal of applications
Office or the Intern ational Bureau, a relevan t act that is required to be done within a certain tim e is not, or cannot be, done within that tim e, the Commissioner must extend the tim e for doing the act.’.
Chapter 8 | PCT applications and Convention applications |
Part 1 | PCT applications |
Regulation 8.4 |
(5) Schedule 1, definition of international filing date, including the cross-reference to section 10:
substitute
‘international filing date, in relation to a n interna tional application, means:
82ter
international filing date under Rule — that international filing date as so treated.
[See also section 10]’.
PCT applications and Convention applications | Chapter 8 |
Convention applications | Part 2 |
Regulation 8.6 |
Regulation 8.6A
8.6A Particulars required for Convention application — use of approved digital library
Commissioner has not been able to inspect the certified copy in the approved digital library.
A request under section 96 of the Act m ust be in the approved form.
If the Comm issioner decides, under subsectio n 97 (1) of the Act, to re-examine a com plete specif ication relating to an application for a patent, the Commissioner must tell:
(2A) A request must state the relevan ce of each of the documents mentioned in subregulation (2).
If the Commissioner m akes an adverse report on a re-examination under subsection 97 (1) of the Act and:
the re-exam ination is com pleted when the de cision is made whether or not the amendment is allowed; or
the re-exam ination is com pleted when the de cision is made whether or not the amendment is allowed; or
(d) a statem ent 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.
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.
101
(1A) For paragraph (1) (a), it is not nece ssary to refer in a lis t to a document that has been included in a list or report in relation to the patent, previously provide d to the Commissione r f or the Act or these Regulations.
(1B) For subsection 101D (1) of the Act, a patentee inform s the Commissioner of the results of documentary searches by o r on behalf of the European Patent Office or the UK Patent Office:
103
Commissioner’s decision to examine complete specification
the documentary search is prescribed (so th at information need not be given to the Commissioner).
(3) If the Comm issioner decides, on or after 22 O ctober 2007, to examine the com plete specifica tion relating to an innovation patent, all docum entary searches by, or on behalf of, a foreign patent office are prescribed (so that inform ation need not be given to the Commissioner).
Request for examination of complete specification
the documentary search is prescribed (so th at information need not be given to the Commissioner).
22 October 2007; all documentary searches by, or on behalf of, a foreign patent office are prescrib ed (so that in formation need not be given to the Commissioner).
105
For paragraph 101C (b) of th e A ct, the exam ination of a complete specification for an innovation patent m ust be completed before the end of whichever of the following periods ends latest:
subregulation 8.6 (2); the period of 5 months from the date on which the request is made;
and a ground for revocation is raised based on information in th e notice or the search results — the period of 3 months from the date of the report that first mentions the ground for revocation.
For the purposes of exam ination, if a notice has been filed under subsection 28 (1) of the Act, the Comm issioner 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.
107
(1) For the purposes of subs ection 104 (1) of the Ac t, an applicant or a patentee m ay ask the Comm issioner for leave to am end a patent request or complete specif ication or another filed document by filing a request for leave to am end in the approved form together with a statem ent of proposed amendments.
(1A) If an applicant proposes to am end a patent request, com plete specification or other filed document for a reason mentioned in subregulation (1B), the applicant is taken to h ave com plied with subreg ulation (1) if a wr itten statem ent of the propo sed amendments is filed.
(1B) For subregulation (1A), the reasons are:
make a proposed amendment by that means; the applicant or patentee must file:
109
advise the Commissioner of that fact; or
(iii) elect to abandon any am endments that m ay have been made under Article 34 of the PCT.
Note Under s ubsection 89 ( 7) of t he Act , as modified by t heseRegulations, i f t he ap plicant pro vides t he advi ce m entioned i n subparagraph (c) (ii), or makes t he el ection m entioned i n subparagraph (c) (iii), any amendments made under Article 3 4 of the PCT are not taken to be included in the application.
(5A) If, under subregulation (3), the applicant:
made under Article 34 of the PCT; the Comm issioner m ust report unde r subregulation (1) taking notice of that fact.
(6A) The Commissioner must:
111
the Commissioner must, as soon as practicable after the request for leave to am end has been filed, give a copy of that request and the statem ent of proposed am endments to the person referred to in paragraph (a).
(9) If a reques t for leave to am end a com plete specification in respect of a m icro-organism is m ade for the purpose of including in the spec ification a m atter in r espect 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.
113
The Commissioner must refuse the request for leave to am end, if:
an applicant for the patent; the proposed a mendments are not taken to m aterially alter the meaning or scope of the patent request or other filed document.
the Comm issioner m ust allow the proposed am endment immediately.
115
are pending; the Commissioner must allow the proposed am endment at the end of the time for bringing opposition proceedings.
are pending; the Comm issioner m ust allow the proposed am endment immediately after the opposition is fully determined.
117
the Comm issioner m ust am end the relevant entry in the Register to inser t the corre ct exte nsion of the term of the patent.
Note 1 Under section 77 of the Act, the term of t he extension must be equal to:
The extension of the term of a patent is one of the particulars included in the Register under paragraph 19.1 (1) (c). I f t he earl iest fi rst re gulatoryapproval date is earlier than the date that was used in calculating the term of the extension under section 77 of the Act, then the entry in the Register willbe incorrect.
Note 2 Subregulation 6 .9 (2) refe rs t o t he dat e of c ommencement of t he first inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, a pharmaceutical substance. The date is supplied withan app lication for th e ex tension of the term o f a p atent if pre-TGA marketing approval has not been given.
Subregulation 6. 10 (2) refers t o t he date of t he fi rst app roval o f a pharmaceutical substance. The date is supplied with a n application for t he extension of the term of a pat ent if pre-TGA marketing approval has beengiven.
Note Regulations 22.22 to 22.24 apply to discretionary decisions made by the Co mmissioner. However, th e p rocedures in th ose regulations will b eused to allo w th e Co mmissioner to estab lish wh ether the g rounds for a decision under subregulation (7) exist.
(9) An appeal lies to th e Federal Court against a d ecision of the Commissioner to amend the Register under subregulation (7).
For subsection 104 (7) of the Act, a prescribed decision is a decision to grant leave to am end a patent request or com plete specification to which paragraph 10.5 (1) (b) or (c) applies.
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.
A direction of the Comm issioner under subsection 106 (1) of the Act:
A direction of the Comm issioner under subsection 107 (1) of the Act:
A request under subsection 113 (1) of the Act for a direction of the Commissioner must be in the approved form.
119
Chapter 11 Infringement
For the purposes of the definitions of foreign aircraft, foreign land vehicle and foreign vessel in the Act, each of the foreig n countries specified in Schedule 4 is prescribed.
Chapter 12 Compulsory licences and revocation of patents
(iii) the identity of the patent; and
(iv) if the applicant reli es on the ground m entioned in paragraph 133 (2) (a) of the Act — facts supporting the assertion that the rea sonable requirements of the public with resp ect to the pa tented inven tion have not been satisfied; and
(iva) if the applicant reli es on the ground m entioned 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 o r an app lication law (as def ined in section 150A of that Act) in connection with the patent; and
121
(iii) a description that is sufficient to identify the act; and
to obtain its inspection; to, or by, each other party to the hearing of the application.
123
Chapter 13 Withdrawal and lapsing of applications and ceasing of patents
The Commissioner must publish notice in the Official Journal of the withdrawal of a patent application under section 141 of the Act.
The period of 9 m onths from the date on which the request for deferment of the exam ination was f iled is pre scribed f or the purposes of paragraph 142 (2) (c) of the Act.
(1A) However, if the continu ation fee is paid within 6 m onths after the end of the relevant anniversary (6 month period):
125
Note 1 For the date of a pat ent, see sect ion 65 of the Act and regulation
6.3.
Note 2 For the fees payable, see regulation 22.2.
(ii) | the Commi ssioner declar es under that subsection that the ap plicant in relation to the request and complete specification is an eligible person; | ||
---|---|---|---|
subject to subregulation (3), the period of 3 m onths from the date of that declaration; | |||
(g) | if: | ||
(i) | a person has applied under subsection 36 (1) of the Act in re lation to the p atent requ est and com plete specification; and | ||
(ii) | the Commi ssioner declares under that subsection that that person is an eligible person; | ||
either: | |||
(iii) | if the person has already lodged an application — subject to subregulation (3 ), the period of 3 months from the date of the Commissioner’s declaration; or | ||
(iv) | in any other case — the period determ ined under whichever of paragraphs (a), (b) and (c) applies; | ||
(h) | if an appeal has been m ade to a prescribed court, o r an application for review has been made to the Tribunal, in relation to the paten t request or co mplete specification — subject to subregulation (4), the period of 3 m onths from the day wh en 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 pres cribed court or an application for review has been made to the Tribunal in respect of the application for a patent for the main invention; | ||
subject to subregulation (4), the period of 3 months from the day wh en the appeal or application is withdrawn or finally dealt with or determined; | |||
(k) | if the Commissioner requests a docum ent unde r subregulation 1.6 (1) or subr egulation 8.6 (2) — 5 months from the date of the request; |
127
and an objection is raised based on inform ation in the notice or the search results — the period of 3 months from the date of the report that first mentions the objection.
(1A) However, if an extension of the term of a standard patent is granted under section 76 of the Act, the period in paragraph
(2A) For paragraph (2) (b), the additional fee is:
Note For the date of a patent, see section 65 of the Act and regulation 6.3.
129
For paragraph 143A (c) of the Ac t, the prescribed period is the period mentioned in regulation 9A.4 that applies to the patent.
Chapter 15 Special provisions relating to associated technology
A request under subsection 150 (1) of the Act m ust be filed within 3 m onths after the revo cation, under section 149 of the Act, of a direction in respect of th e applica tion to which the request relates.
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.
131
Chapter 17 The Crown
An application under subsection 169 (1) of the Act for a declaration that an innovation pa tent has been exploited by the Crown under section 163 of the Ac t 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.
Chapter 19 The register and official documents
133
Regulation 20.1
Chapter 20 Patent attorneys
(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. Disciplinary Tribunal m eans the Patent and Trade Marks
Attorneys Disciplinary Tri bunal established by regulation
20.32.
Register or Register of Patent Attorneys m eans the register kept under section 198 of the Act. statement of skill has the meaning given by regulation 20.11. unqualified, in relation to a particular time, means:
time by the former attorneys Regulations. unsatisfactory professional conduct has the m eaning 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. |
135
Regulation 20.2
An application for registration as a patent attorney must:
20.12 (1); and
Regulation 20.6
If the Designated Manager registers a person as a patent attorney, the Designated Manage r m ust give the person a certificate of registration.
Note A decision that a person does not have a qualification is reviewable under regulation 22.26.
137
Regulation 20.7
Regulation 20.8
(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 pe rson does not have a kn owledge requirement is reviewable under regulation 22.26.
139
Regulation 20.9
(6) If an applicant has been gr anted an exemption under regulation 20.9, the applicant is taken to m eet the requirem ent 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 personwho 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.
Regulation 20.11
(ii) preparing, filing and pr osecuting patent applications in Australia;
(iii) preparing, filing and pr osecuting patent applications in other countries and or ganisations, particularly countries and organisations that are regarded as major trading partners with Australia;
Examples of major trading partners for subparagraph (a) (iii)
(2) The requirem ents set out in subregulation (1) m ust be evidenced b y m eans of one or m ore s tatements 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 personwho satisfies certain conditions. Paragraph 198 (4) (c) requires that a perso n be employed as prescribed for not less than the prescribed period.
(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 le ast 5 years that, in the opinion of the reg istered p atent a ttorney, the applicant h as the experience m entioned in one or m ore of subparagraphs
141
Regulation 20.12
(3) If an applicant is unable to obtain a statem ent of skill f rom a registered patent attorney who ha s been registered for at least 5 years, the Board m ay, at the requ est of the applican t, prepare a statement of skill in relation to the applicant.
Note Subsection 198 (4) of the Act provides that the Designated Manager must register as a patent attorney a personwho satisfies certain conditions. Paragraph 198 (4) (e) re quires that a pe rson n ot have be en co nvicted of a prescribed of fence du ring t he pr evious 5 year s. Par agraph 19 8 (4) (f) requires th at a p erson not b e under se ntence of i mprisonment f or a prescribed offence.
Regulation 20.13
Part 3 Accreditation of courses of study
143
Regulation 20.14
Regulation 20.17
Part 4 Board examinations
From tim e to tim e, the Boar d m ust arrange to publish in the Official Journal particulars of:
145
Regulation 20.18
An application by a person to sit for an exam ination must be in the form approved by the Board.
As soon as practicable afte r an exam ination conducted by the Board, the Board m ust give to each candidate who sat for the examination his or her results in the examination.
Regulation 20.21
147
Regulation 20.22
(1) Subject to subregulation (3), a registered patent attorney must, in the 12 months imm ediately before the date on which the attorney applies for renewed registration, have com pleted 10 hours of activities th at the Designated Manager is satisfied are appropriate for an attorney to undertake as a m eans of maintaining the currency of his or her professional qualifications.
Regulation 20.25
patent attorney to renew his or her registration, other than the first application to renew his or her registration.
149
Regulation 20.26
The Design ated Man ager m ust, on the written request of a registered patent attorney, remove the attorney’s name from the Register of Patent Attorneys.
If a regis tered patent a ttorney does not pay the annual registration fee by 31 J uly in the year in which the fee is payable, the Designated Manager must:
(1) If a reg istered paten t atto rney f ails to co mply with the requirements applicable to th e attorney under subregulation
20.25 (1) or (2), the Designated Manager may rem ove the attorney’s name from the Register for a period not exceeding 6 months.
the Designated Manager m ust remove the attorney’s name from the Register.
Regulation 20.28
(3) If the Des ignated Mana ger re moves the nam e of a registered patent attorney from the Regist er under subregul ation (2), the name of the attorn ey must not be r eturned to the Registe r 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.
151
Regulation 20.29
the Designated Manager m ust rest ore the a ttorney’s nam e to the Register.
condition; the Designated Manager may remove the name of the attorney from the Register.
Regulation 20.31
The Designated Manager must restore a patent attorney’s name to the Register if:
153
Regulation 20.31
Patent attorneys | Chapter 20 |
Discipline | Part 8 |
General | Division 1 |
Part 8 Discipline
20.32 Definitions
In this Part: Code of Conduct means the document titled ‘Code of Conduct for Patent and Trade Marks Attorneys’ published by the
Professional Standards Board for Pat ent and Trade Marks Attorneys, as existing on 1 July 2008. 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:
Regulations to be professional misconduct. unsatisfactory professional conduct includes conduct, in connection with practice as a regi stered patent attorney, that falls sho rt of the s tandard of co mpetence, dilig ence a nd behaviour that a m ember of the pu blic is entitled to expect o f an attorney.
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Part 8 | Discipline |
Division 1 | General |
the Board must consider whet her or not the attorney has complied with the Code of Conduct.
Patent attorneys | Chapter 20 |
Discipline | Part 8 |
Proceedings in Disciplinary Tribunal | Division 2 |
20.36 Procedure of Disciplinary Tribunal
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Part 8 | Discipline |
Division 2 | Proceedings in Disciplinary Tribunal |
Penalty: 5 penalty units.
Patent attorneys | Chapter 20 |
Discipline | Part 8 |
Proceedings in Disciplinary Tribunal | Division 2 |
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Part 8 | Discipline |
Division 2 | Proceedings in Disciplinary Tribunal |
Penalty: 10 penalty units.
Note A d efendant b ears an ev idential b urden in relation to th e m atters mentioned in sub paragraph (2) (a) (i) (see sect ion 1 3.3 of the Criminal Code).
(iii) has been paid expenses and allowances; and
Penalty: 10 penalty units.
Patent attorneys | Chapter 20 |
Discipline | Part 8 |
Proceedings in Disciplinary Tribunal | Division 2 |
Note For strict liability, see section 6.1 of the Criminal Code.
Penalty: 10 penalty units.
functions of that Tribunal under this Part, the sam e protection and immunity as a Justice of the High Court.
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Division 2 | Proceedings in Disciplinary Tribunal |
subject to the same liabilities; as a witness in proceedings in the High Court.
Patent attorneys | Chapter 20 |
Discipline | Part 8 |
Proceedings in Disciplinary Tribunal | Division 2 |
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Part 8 | Discipline |
Division 2 | Proceedings in Disciplinary Tribunal |
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 registrati on and finds the charge proved, that Tribunal may:
If the Disciplinary Tribunal fi nds that a registered patent attorney obtained his or her regi stration by fraud, that Tribunal must cancel the registration of the attorney.
In deciding what to do about a registered patent attorney under regulation 20.44 or 20.45, the Disciplinary Tribunal m ay take into account the findings about the conduct of the attorney in any other proceedings:
Patent attorneys | Chapter 20 |
Discipline | Part 8 |
Proceedings in Disciplinary Tribunal | Division 2 |
The Disciplinary Tribunal m ust, within 14 days after m aking a decision under regulation 20.44, 20.45, 20.46 or 20.47:
(iii) sets out the findings on any m aterial questions of fact; and
(1) If the registration of a former attorney has been cancelled under paragraph 20.44 (1) (a), the Disciplinary Tribunal m ay appoint
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Part 8 | Discipline |
Division 2 | Proceedings in Disciplinary Tribunal |
a reg istered paten t atto rney to carry on th e p ractice of the former attorney until all outstanding matters are disposed of.
Patent attorneys | Chapter 20 |
Discipline | Part 8 |
Proceedings in Disciplinary Tribunal | Division 2 |
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).
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Regulation 20.53
A registered patent atto rney has the sam e right of lien over documents and property of a client as a solicitor.
Patent attorneys | Chapter 20 |
Administration | Part 10 |
Professional Standards Board for Patent and Trade Marks | Division 1 |
Attorneys |
Regulation 20.56
Part 10 Administration
20.54 Constitution of Board (Act s 227A)
The Board is constituted by:
The Minister may appoint a member of the Board for a term of up to 3 years.
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Division 1 | Professional Standards Board for Patent and Trade Marks |
Attorneys |
Regulation 20.57
Patent attorneys | Chapter 20 |
Administration | Part 10 |
Patent and Trade Marks Attorneys Disciplinary Tribunal | Division 2 |
At a meeting of the Board, a quorum is formed by the majority of the members of the Board.
If the Chairperson is ab sent from a m eeting of the Board, the members present m ust decide whether to give leave to the Chairperson.
20.61 Establishment of Disciplinary Tribunal
The Patent and Trade Marks Attorneys Disciplinary Tribunal is established.
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interest in accordance with regulation 20.64; the Minister must remove the person from office.
Patent attorneys | Chapter 20 |
Administration | Part 10 |
Patent and Trade Marks Attorneys Disciplinary Tribunal | Division 2 |
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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 y ears been enrolled, as a legal practitioner.
Chapter 21 Administration
The hours of business of the Pa tent Office and each sub-offic e of the Patent Office are from 9 a m to 5 pm on e ach day other than:
For subsection 209 (1) of the Act, the Comm issioner m ay delegate all or any of the Co mmissioner’s powers or functions under the Act, except the powers and functions under paragraphs 210 (a) and (c) of th e Act, to an employee of the Patent Office:
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Chapter 22 Miscellaneous Part 1 Fees and costs Division 1 Fees
Regulation 22.1
Miscellaneous Chapter 22 Fees and costs Part 1 Fees Division 1
The Designated Manager or the B oard m ust 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:
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Miscellaneous Chapter 22 Fees and costs Part 1 Fees Division 1
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Chapter 22 Miscellaneous Part 1 Fees and costs Division 1 Fees
Miscellaneous Chapter 22 Fees and costs Part 1 Fees Division 1
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Chapter 22 Miscellaneous Part 1 Fees and costs Division 1 Fees
Regulation 22.4
(iii) an Interna tional Prelim inary Examining Authority ; and
(b) the Commissioner o r th e Patent Office is em powered 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 f ee pay able to th e Comm issioner in resp ect of a m atter specified in an item of Part 3 in Schedule 7 is the am ount specified in that item.
Bureau) for the application ar e as set out in Part 4 of Schedule 7.
Miscellaneous Chapter 22 Fees and costs Part 1 Fees Division 1
(4) A determ ination has ef fect on the date sp ecified in the determination for that purpose or on the date of notification of the determination in the Official Journal, whichever is later.
Money paid as a fee to th e Commissioner under subregulation
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Chapter 22 Miscellaneous Part 1 Fees and costs Division 2 Costs
so much of the f ee paid on the filing of the app lication as the Commissioner reasonably thinks fit may, on written application made to him or her, be refunded.
extent that fee is to be ref unded to the applicant and the fee must be refunded accordingly.
This Division applies to proceedings before the Commissioner.
Miscellaneous Chapter 22 Fees and costs Part 1 Costs Division 2
(2A) A party to proceed ings m ay request taxation of an amount awarded under subregulation (2).
The legal represen tative of a deceased app licant, nom inated person or patentee who wishes:
must file th e approved form and such other docum ents as the Commissioner reasonably considers necessary to support the request.
For subsection 222A (1) of the Act, the circumstance is that the act is done at:
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 PatentOffice, is not op en fo r busin ess, the ac t may be done in presc ribed circumstances on t he next day whe n th e office or s ub-office is open for business.’.
187
For subsection 222A (7) of th e Act, the following acts are prescribed:
(1) For the purposes of subsection 223 (2) or (2A ) of the Act, an application for an extension of time m ust be in the approved form and have with it a decl aration setting out the grounds on which the application is made.
(1A) Subregulation (1B) applies if:
(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 oppositio n to the filed. | grant of the application is |
(1B) If the Comm issioner grants the application, the Comm issioner must extend the tim e to include the period from the day on which the notice of opposition is filed to the end of:
(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 a fter the end of the time within which th e ac t is required to be done.
189
(2A) If the declaration is m ade on behalf of another person, it m ust also state the other person’s name and address.
(2B) If the declaration is m ade for the purposes of a business whose details are set out in the declaration, it must also state:
If the Commissioner reasonably believes that it is necessary for the proper prosecution or com pletion of proceedings fo r a person to perform an act, file a document or produce evidence that is not provided for by the Act or these R egulations, the Commissioner may give notice to the person requiring him or her to pe rform the ac t, f ile the docum ent or produce the evidence, specified in the notice.
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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. |
(1) In this regulation: mental dysfunction means a disturbance or defect, to a severely disabling degree, of percep tual inte rpretation, comprehension, reasoning, learning, judgm ent, m emory, motivation, or emotion.
A copy of a document that:
consider the docum ent for the pu rposes of th e Act o r th ese regulations.
193
If, for the purposes of the PCT, the Patent Office is:
Authority, a s the case r equires, in r elation to a n intern ational application.
may apply, in the approved form , to the Comm issioner for the grant of licences to exploit the inventions.
and to such other persons as the Comm issioner reason ably directs.
195
Commissioner; the practice and procedu re to be followed for the purposes of enabling th e applicatio n or m atter to be decided is to be determined by him or her.
(2) A person to be heard at a hearing m ay apply to the Commissioner in resp ect of th e p ractice and procedure in relation to the hearing to be determined by the Commissioner.
If, under these Regulations, a person is required to:
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 sam | e m eaning as in the | Administrative |
Appeals Tribunal Act 1975.
(iia) paragraph 4.3 (2) (b) (‘prescribed documents: public inspection’);
(iii) subregulation 5.5 (3) (‘dismissal of opposition’);
except subregulations 10.7 (3), (7) or (8); (va) subregulation 13.4 (3);
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(c) | the Designated Manager under the following provisions: | |||||
---|---|---|---|---|---|---|
(i) | regulation 20.28 (‘failure to comply with continuing professional education requirements’); | |||||
(ii) | regulation 20.29 (‘restoring attorney’s nam Register’); | e to | ||||
(iii) | regulation 20.30 (‘restoring attorney’s nam Register following payment of unpaid fee’); | e to | ||||
(iv) | regulation 20.31 (‘returning to R egister in other circumstances’); or | |||||
(d) | the Disciplinary Tribunal under the following provisions: | |||||
(i) | regulation 20.43 (‘decision of Disciplinary Tribunal’); | |||||
(ii) | regulation 20.44 (‘penalties misconduct’); | — professional | ||||
(iii) | regulation 20.45 (‘penalties — professional conduct’); | unsatisfactory | ||||
(iv) | regulation 20.46 (‘finding that attorney was unqualified at time of registration’); | |||||
(v) | regulation 20.47 (‘finding that registration obtained by fraud’). |
Chapter 23 Transitional and savings provisions
Subsection 4 (2) of the 1952 Act continues in force.
Section 11 of the 1952 Ac t continues on and after the commencing day in respect of the ex ercise by the Commissioner of his or her power s and functions in relation to the operation of:
199
The f ee pa yable in res pect of opp osition pro ceedings 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.
The delegation of a person who, before the com mencing day, was:
matter to which regulation 23.3 or 23.4 applies; continues in relation to the matter.
If an undertaking re ferred to in paragra ph 3.25 (4) (c) is given in respect of an applicati on 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.
within the prescribed time; and an application is m ade for the res toration of the laps ed application or ceased patent, as the case may be, under:
corresponding provisions of the Act and these Regulations do not so apply.
201
item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in respect of the second anniversary.
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.
If:
the fee under item 22 is taken to have been paid in respect of the period referred to in paragraph (a).
person after the commencing day; section 117 of the Act does not apply to the supply referred to in paragraph (c).
If:
203
the commencing day; the certificate referred to in paragraph (a) is taken to have been issued under subsection 19 (1) of the Act.
If:
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.
The com plete specification of a petty patent granted under section 62A of the 1952 Act cannot be am ended under the Act so as to include more than 1 claim.
the priority date of which is earlier than the priority date of the first-mentioned claim.
Subsection 89 (5) of the Act does not apply to an application:
In the case of a claim of a specification:
(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.
205
(1) In this regulation:
continuation fee means a continuation fee for the purposes of section 47D of the 1952 Act. renewal fee means a renewal fee for the purposes of subsection
68 (2) of that Act.
that ends o n or after the comm encing day, if the fee b ecame payable, and was paid, before that day.
the prescribed period referred to in subregulation 13.3 (1) is extended to the day on which the fee is paid.
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
before the comm encement of the Patents Amendment (Innovation Patents) Act 2000. old Regulations m eans the Patents Regulations 1991 as in
force imm ediately before the comm encement of the Patents Amendment (Innovation Patents) Act 2000.
207
relation to the petty patent application, under section 50 of the old Act; and
before the comm encement of the Patents Amendment (Innovation Patents) Act 2000.
commencement day m eans the day the Patents Amendment (Innovation Patents) Act 2000 commences. old Act m eans the Patents Act 1990 as in for ce imm ediately
before the comm encement of the Patents Amendment (Innovation Patents) Act 2000.
before the comm encement of the Patents Amendment (Innovation Patents) Act 2000.
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old Regulations m eans the Patents Regulations 1991 as in force imm ediately before the comm encement of the Patents Amendment (Innovation Patents) Act 2000.
(subregulation 1.4 (1))
TABLE OF PROVISIONS
Introductory Provisions Article 1: Establishment of Union Article 2: Definitions
Chapter I: Substantive Provisions Article 3: Recognition and Effect of the Deposit of Microorganisms Article 4: New Deposit Article 5: Export and Import Restrictions Article 6: Status of International Depositary Authority Article 7: Acquisition of the Status of International Depositary
Authority Article 8: Termination and Limitation of the Status of International Depositary Authority Article 9: Intergovernmental Industrial Property Organisations
Chapter II: Administrative Provisions Article 10: Assembly Article 11: International Bureau Article 12: Regulations
Chapter III: Revision and Amendment Article 13: Revision of the Treaty Article 14: Amendment of Certain Provisions of the Treaty
Chapter IV: Final Provisions
Article 15: Becoming Party to the Treaty Article 16: Entry Into Force of the Treaty Article 17: Denunciation of the Treaty Article 18: Signature and Languages of the Treaty Article 19: Deposit of the Treaty; Transmittal of Copies; Registration of
the Treaty Article 20: Notifications
Done at Budapest on April 28, 1977, and amended on September 26, 1980
INTRODUCTORY PROVISIONS
Article 1
Establishment of a Union
The States party to th is Treaty (h ereinafter called “the Contracting States”) constitute a Union for the international recognition of the deposit of microorganisms for the purposes of patent procedure.
Article 2
Definitions
For the purposes of this Treaty and the Regulations:
(iii) “patent procedure” m eans any adm inistrative or judicial procedure relating to a patent application or a patent;
213
(vii) “depositary institution” means an institution which provides for the receipt, acceptance and s torage of m icroorganisms and th e furnishing of samples thereof;
(viii) “international depositary authority” means a depositary institution which has acquired the status of in ternational depositary authority as provided in Article 7;
(xii) “Organization” means the W orld Intelle ctual Property Organization;
(xiii) “Internation al Bureau” means the Intern ational Bureau of the Organization and, as long as it subsis ts, the United International Bureaux for the Protection of Intellectual Property (BIRPI);
(xiv) “Director General” m eans the Direc tor General of the Organization;
(xv) “Regulations” means the Regulations referred to in Article 12.
CHAPTER I
SUBSTANTIVE PROVISIONS
Article 3
Recognition and Effect of the Deposit of Microorganisms
Article 4
New Deposit
215
Article 5
Export and Import Restrictions
Each Contracting State recognises that it is highly desirable that, if and to the extent to which the export from or import into its te rritory of certain kinds of m icroorganisms is restricte d, s uch r estriction s hould a pply to microorganisms deposited, or destined for deposit, under this Treaty only where the restriction is necess ary in view of nationa l s ecurity or the dangers for health or the environment.
Article 6
Status of International Depositary Authority
(iii) be impartial and objective;
(vii) comply, in respec t of the deposited m icroorganisms, with the requirement of secrecy, as prescribed in the Regulations;
(viii) furnish samples of any deposited m icroorganism under the conditions and in conformity with the procedure prescribed in the Regulations.
Article 7
Acquisition of the Status of International Depositary Authority
(1) (a) A depositar y institution shall acqu ire the s tatus of interna tional depositary authority by virtue of a written communication addressed to the Director General by the Contrac ting State on the territory of whic h the depositary institu tion is located and including a declaration of assurances to th e effect that th e said ins titution com plies and will
217
continue to comply with the requirements specified in Article 6 (2). The said sta tus m ay be acquired also b y virtue of a written co mmunication addressed to the Direct or General by an intergovernm ental industrial property organisation and including the said declaration.
Article 8
Termination and Limitation of the Status of International Depositary Authority
Article 9
Intergovernmental Industrial Property Organizations
219
CHAPTER II
ADMINISTRATIVE PROVISIONS
Article 10
Assembly
(iii) give directions to the Director General concerning the preparations for revision conferences;
221
(vii) take any other appropriate action designed to f urther the objectives of the Union;
(viii) perform such other functions as are appropriate under this Treaty.
Article 11
International Bureau
223
Article 12
Regulations
(iii) any details useful in the implementation of this Treaty.
CHAPTER III
REVISION AND AMENDMENT
Article 13
Revision of the Treaty
Article 14
Amendment of Certain Provisions of the Treaty
CHAPTER IV
FINAL PROVISIONS
Article 15
Becoming Party to the Treaty
225
Article 16
Entry Into Force of the Treaty
Article 17
Denunciation of the Treaty
Article 18
Signature and Languages of the Treaty
Article 19
Deposit of the Treaty; Transmittal of Copies; Registration of the Treaty
227
Article 20
Notifications
The Director General shall no tify the Contracting States, the intergovernmental industrial property organizations and those States not members of the Union which are m embers of the In ternational (Par is) Union for the Protection of Industrial Property of:
(i) | signatures under Article 18; | |||
---|---|---|---|---|
(ii) | deposits of instruments of ratification or acces under Article 15 (2); | sion | ||
(iii) | declarations filed under Article 9 (1) (a) and notifications of withdraw al under Article 9 (2) (3); | or | ||
(iv) | the date of entry intoArticle 16 (1); | force of this Treaty und | er | |
(v) | the communications under Articles 7 and 8 anddecisions under Article 8; | the | ||
(vi) | acceptance of amendments to th is Treaty u Article 14 (3); | nder | ||
(vii) | any amendment of the Regulations; | |||
(viii) | the dates on which am endments to the Trea ty oRegulations enter into force; | r the | ||
(ix) | denunciations received under Article 17. |
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
(subregulation 1.4 (1))
TABLE OF PROVISIONS
Rule 1 Abbreviated Expressions and Interpretation of the Word “Signature”
1.1 “Treaty”
1.2 “Article”
1.3 “Signature”
Rule 2 International Depositary Authorities
2.1 Legal Status
2.2 Staff and Facilities
2.3 Furnishing of Samples
Rule 3 Acquisition of the Status of International Depositary Authority
3.1 Communication
3.2 Processing of the Communication
3.3 Extension of the List of Kinds of Microorganisms Accepted
Rule 4 Termination or Limitation of the Status of International Depositary Authority
4.1 Request; Processing of Request
4.2 Communication; Effective Date; Processing of Communication 4.3
Consequences for Deposits
Rule 5 Defaults by the International Depositary Authority
5.1 Discontinuance of Performance of Functions in Respect of Deposited Microorganisms
5.2
Refusal to Accept Certain Kinds of Microorganisms
Rule 6 Making the Original Deposit or New Deposit
6.1 Original Deposit
6.2 New Deposit
6.3 Requirements of the International Depositary Authority
Rule 7 Receipt
7.1 Issuance of Receipt
7.2 Form; Languages; Signature
7.3 Contents in the Case of the Original Deposit
7.4 Contents in the Case of the New Deposit
7.5 Receipt in the Case of Transfer
7.6 Communication in the Case of the Scientific Description and/or Proposed Taxonomic Designation
Rule 8 Later Indication of Amendment of the Scientific Description and/or Proposed Taxonomic Designation
8.1 Communication
8.2 Attestation
Rule 9 Storage of Microorganisms
9.1 Duration of the Storage
9.2 Secrecy
Rule 10 Viability Test and Statement
10.2 Viability Statement
Rule 11 Furnishing of Samples
11.1 Furnishing of Samples to Interested Industrial Property Offices
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
11.2 Furnishing of Samples to or with the Authorization of the Depositor
11.4 Common Rules
11.5 Changes in Rules 11.1 and 11.3 when applying to International Applications
Rule 12 Fees
12.2 Change in the Amounts
Rule 12bis Computation of Time Limits
12bis.1 Periods Expressed in Years 12bis.2 Periods Expressed in Months 12bis.3 Periods Expressed in Days
Rule 13 Publication by the International Bureau
13.2 Contents
Rule 14 Expenses of Delegations
Rule 15 Absence of Quorum in the Assembly
REGULATIONS UNDER THE BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE PURPOSES OF PATENT PROCEDURE
Adopted on April 28, 1977 and amended on January 20, 1981 and on October 1, 2002
Rule 1
Abbreviated Expressions and Interpretation of the Word “Signature”
1.1 “Treaty” In these Regulations, the word “Tre aty” means the Budapest Treaty on
the International Recognition of the Deposit of Microorganism s for the Purposes of Patent Procedure.
In these Regulations, the word “Article” refers to the specified Article o f the Treaty.
1.3 “Signature” In these Regulations, whenever the wo rd “signature” is used, it shall b e understood that, where the law of the State on the territory of which an international depositary author ity is loca ted r equires the u se of a sea l
instead of a signature, the said word shall mean “seal” for the purposes of that authority.
Rule 2
International Depositary Authorities
2.1 Legal Status Any international depos itary authority m ay be a government agency,
including any public institution attached to a public adm inistration other than the central government, or a private entity.
The require ments referred to in Artic le 6 ( 2) (ii) sh all inc lude in particular the following:
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
2.3 Furnishing of Samples The require ments referred to in Artic le 6 ( 2) (viii) sh all includ e in particular the requ irement th at an y inte rnational depos itary autho rity
must furnish samples of deposited microorganisms in an expeditious and proper manner.
Rule 3
Acquisition of the Status of International Depositary Authority
(iii) where th e said d epositary ins titution in tends to accep t for deposit only certain kinds of m icroorganisms, specify such kinds;
233
3.2 Processing of the Communication If the communication complies with Article 7 (1) and Rule 3.1, it shall be promptly notified by the Director Gene ral to all Contracting States and
intergovernmental industrial proper ty organizations and shall be promptly published by the International Bureau.
3.3 Extension of the List of Kinds of Microorganisms Accepted The Contracting State or inter governmental industrial property organization having made the communication referred to in Article 7 (1) may, at any tim e thereafter, notify the Dir ector Gene ral tha t its assurances are extended to specified kinds of m icroorganisms to which,
so far, the assurances have not exten ded. In such a case, and as far as the additional kinds of m icroorganisms are concerned, Article 7 and Rules
Rule 4
Termination or Limitation of the Status of International Depositary Authority
(iii) indicate in detail the facts on which it is based.
(c) If the reque st com plies with pa ragraphs (a) a nd (b), it s hall be promptly notified by the Director Gene ral to all Contracting States and intergovernmental industrial property organizations.
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
(iii) where the Contracting Stat e or intergovernmental industrial property organization m aking th e communication desires that the effects provided for in Article 8 (2) (b) take place on a date later than at the expiration of three months from the date of the communication, indicate that later date.
235
4.3 Consequences for Deposits In the ca se of a term ination of lim itation of th e statu s of interna tional
depositary authority under Articles 8 (1), 8 (2), 9 (4) or 17 (4 ), Rule 5.1 shall apply, mutatis mutandis.
Rule 5
Defaults by the International Depositary Authority
(iii) ensure, to the fullest extent possible, that the defaulting authority promptly notifies all depositors affected of the discontinuance of the performance of its functions and the transfers effected;
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
paragraph (a) (iv); the notif ication of the Directo r Gene ral and the notification rec eived by him shal l be promptly published by the International Bureau.
237
General and the notification received by him shall be prom ptly published by the International Bureau.
Rule 6
Making the Original Deposit or New Deposit
(iii) details of the conditio ns necessary for the cultiv ation o f the microorganism, for its storage an d f or testing its v iability and also, where a m ixture of m icroorganisms is deposited, descriptions of the components of the mixture and at least one of the methods permitting the checking of their presence;
(a) Subject to paragraph (b), in the case of a ne w deposit m ade under Article 4, the m icroorganism tra nsmitted b y the d epositor to th e international depositary authority sh all be acco mpanied by a copy of the receipt of the previous deposit, a copy of the m ost recen t statem ent concerning the viab ility of the m icroorganism which was the subject of the previous deposit indicating that the m icroorganism is viable and a written statement bearing the signature of the depositor and containing:
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
(iii) where a s cientific d escription and/or proposed taxonom ic designation was/were indicated in connection w ith the previous deposit, the most recen t scien tific descrip tion and/or prop osed taxonomic designation as comm unicated to the international depositary authority with which the previous deposit was made.
(iii) that the written statement referred to in Rule 6.1 (a) or 6.2 (a) be drafted in the language, or in a ny of the languages, specified by such authority, it being understood that such specification must at least include th e official language or languages indicated under Rule 3.1 (b) (v);
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(iii) where the deposit is receive d in a condition which clearly indicates that the m icroorganism is m issing or which precludes for scientific reasons the acceptance of the microorganism.
(b) Subject to paragraph (a), the international depositary authority shall accept the m icroorganism when all the requirements of Rule 6.1 (a) or
6.2 (a) and Rule 6.3 (a) are com plied with. If a ny of those requirem ents are no t co mplied with, the inte rnational depositary authority shall immediately notify the depositor in writing of that fact and invite h im to comply with those requirements.
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authority, to have been received, fo r the purposes of the Treaty, on the date on which such status was acquired.
Rule 7
Receipt
The intern ational depos itary au thority shall iss ue to the d epositor, in respect of each deposit of microorganism effected with it or transferred to it, a receipt in attestation of the fact that it ha s received and accepted the microorganism.
7.3 Contents in the Case of the Original Deposit Any receipt referred to in Rule 7.1 and issued in the case of an orig inal deposit shall indicate that it is issu ed by the de positary institution in its
capacity of international depositary au thority under the Treaty and sh all contain at least the following indications:
(iii) the date of the original deposit as defined in Rule 6.4 (c);
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7.4 Contents in the Case of the New Deposit Any rece ipt ref erred to in Rule 7. 1 and issued in the case of a new deposit effected under Article 4 sh all be acco mpanied by a copy of the receipt of the previous deposit (within the meaning of Rule 6.2 (c)) and a copy of the m ost recent statem ent concerning the viability of the microorganism which was the subject of the previous deposit (within the
meaning of Rule 6.2 (c)) indicating th at the microorganism is viable, and shall at least contain:
(iii) the date of the new deposit as defined in Rule 6.4 (c);
(vii) where Rule 6.2 (a) (iii) applie s, a reference to the fact that a scientific descripti on and/or a proposed taxonom ic designation has/have been indicated by the depositor;
(viii) the accession number given to the previous dep osit (within the meaning of Rule 6.2 (c)).
7.5 Receipt in the Case of Transfer The inte rnational de positary a uthority to which s amples of microorganisms are transferred under Ru le 5.1 (a) (i) shall issue to the depositor, in respect of each deposit in relation with which a sam ple is transferred, a receipt indicating th at it is is sued by th e depos itary
institution in its capacity of intern ational depositary authority under the Treaty and containing at least:
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
(iii) the date on which the transf erred sam ple was receiv ed b y the international depositary authority (date of the transfer);
(vii) the acces sion num ber given by the international depos itary authority from which the transfer was effected;
(viii) where the written statement referred to in Rule 6.1 (a) or 6.2 (a) contained the scientific descri ption and/or proposed taxonom ic designation of the m icroorganism, or where such scien tific description and/or proposed taxonomic designation was/were indicated or amended under Rule 8.1 at a later date, a reference to that fact.
On request of any party entitled to rece ive a sam ple of the depos ited microorganism under Rules 11.1, 11.2 or 11.3, the international depositary authority shall comm unicate to such party the m ost recent scientific description and/or proposed taxonom ic designation referred to in Rules 6.1 (b), 6.2 (a) (iii) or 8.1 (b) (iii).
Rule 8
Later Indication or Amendment of the Scientific Description and/or Proposed Taxonomic Designation
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(iii) the scientific description and/or proposed taxonomic designation of the microorganism;
(iv) in the c ase of an amendm ent, the las t prec eding sc ientific description and/or proposed taxonomic designation.
8.2 Attestation The inte rnational depo sitary au thority shall, on the r equest of the
depositor having made the communication referred to in Rule 8.1, deliver to him an attestation showing the data referred to in Rule 8 .1 (b) (i) to
(iv) and the date of receipt of such communication.
Rule 9
Storage of Microorganisms
9.1 Duration of the Storage
Any microorganism deposited with an international depositary authority shall be stored by such authority, w ith all the care necessary to keep it viable and uncontam inated, for a period of at leas t five y ears after th e most recen t reques t for the furn ishing of a sample of the deposited microorganism was received by the said authority and, in any case, for a period of at least 30 years after the date of the deposit.
9.2 Secrecy No international depositary authority shall give inform ation to anyone whether a m icroorganism has been deposited with it under the Treaty. Furthermore, it shall not give any infor mation to anyone concerning any microorganism deposited with it under the Treaty except to an authority, natural person or legal entity which is entitled to obtain a sam ple of the
said microorganism under Rule 11 and subject to the sam e conditions as provided in that Rule.
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Rule 10
Viability Test and Statement
10.1 Obligation to Test
The intern ational depo sitary autho rity sha ll te st the viab ility of each microorganism deposited with it:
(iii) at any time, on the request of the depositor.
10.2 Viability Statement
(iii) to any industrial property of fice, other authority, natural person or legal entity, other than the de positor, to whom or to which samples of the deposited m icroorganism were furnished in conformity with Rule 11, on his or its request, together with or at any time after such furnishing of samples.
(iii) the date referred to in R ule 7.3 (iii) or, where a new deposit or a transfer has been m ade, the m ost recent of the d ates referred to in Rules 7.4 (iii) and 7.5 (iii);
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Rule 11
Furnishing of Samples
11.1 Furnishing of Samples to Interested Industrial Property Offices Any interna tional deposita ry autho rity sha ll f urnish a sa mple of any deposited m icroorganism to the industrial property office of any Contracting State or of any inte rgovernmental industrial property
organization, on the request of such office, provided that the request shall be accompanied by a declaration to the effect that:
(iii) the sam ple is needed for the purposes of a patent procedure having effect in the said Cont racting Sta te or in the s aid organization or its member States;
(iv) the said s ample and any in formation accompanying or resulting from it will be used on ly f or th e purposes of the said patent procedure.
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11.2 Furnishing of Samples to or with the Authorisation of the Depositor
Any interna tional deposita ry autho rity sha ll f urnish a sa mple of any deposited microorganism:
11.3 Furnishing of Samples to Parties Legally Entitled
(iii) either that the certified party has a right to a sam ple of the microorganism under the law governing patent procedure before that office and, where the sa id law m akes the said right dependent on the fulfilment of certain conditions, that that office is satisfied that such co nditions have actually been fulfilled or that the certified party has affixed his signature on a for m before that office and that, as a consequence of the signature of the said form, the conditions f or f urnishing a sam ple to the certif ied party are d eemed to be fulfille d in accord ance with the law governing patent procedure befo re that office, where the certified party has the said right u nder th e sa id law pr ior to publication for the purposes of patent procedure by the said
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office and such publication has not yet been effected, the certification shall expressly state so and shall indicate, by citing it in the customary manner, the applicable provision of the said law, including any court decision.
(b) In respect of patents granted and published by any industrial property office, such office m ay from time to tim e communicate to any international depositary authority lists of the accession numbers given by that authority to the deposits of the microorganisms referred to in the said patents. The international depositary authority shall, on the request of any authority, n atural perso n or legal e ntity (h ereinafter ref erred to as “the requesting party”), furnish to it a sample of any microorganism where the accession num ber has been so communicated. In respect of deposited microorganisms whose access ion numbers have been so comm unicated, the said office shall not be required to provide the certification referred to in Rule 11.3 (a).
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French, on the request of that o ffice or the intern ational depositar y authority which received the said request.
(iii) in the case of Rule 11.1, the date and number of the application or patent referring to the deposit;
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with the said request, and of any fo rms or requests bearing the signature of the requesting party in accordance with Rule 11.3.
(h) The furnishing of sa mples referred to in Rule 11.1 shall be free of charge. W here the furnishing of sa mples is made under Rule 11.2 or 11.3, any fe e payable under Rule 12.1 (a) (iv) shall be chargeable to the depositor, to the authorised party, to the c ertified par ty or to th e requesting party, as the case m ay be, a nd shall be paid bef ore or at the time of making the said request.
Where an application was filed as an international application under the Patent Cooperation Treaty, the referen ce to the filing of the application with the industrial property office in Rules 11.1 (i) and 11.3 (a) (i) shall be considered a reference to the designation, in the international application, of the Contracting St ate for which the industrial property office is the “designated Office” within the m eaning of that Treaty, and the certification of publication whic h is required by Rule 11.3 (a) (ii) shall, at the option of the industr ial property office, be either a certification of international public ation under the said Treaty or a certification of publication by the industrial property office.
Rule 12
Fees
(a) Any interna tional depos itary autho rity m ay, with resp ect to the procedure under the Treaty and these Regulations, charge a fee:
(i ) for storage;
(ii) for the attestation referred to in Rule 8.2;
(iii) subject to Rule 10.2 (e), first sentence, for the issuance of viability statements;
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(c) The amount of any fee shall not vary on account of the nationality or residence of the depositor or on account of the nationality or residence of the authority, natural person or legal entity requesting the issuance of a viability statement or furnishing of samples.
Rule 12bis
Computation of Time Limits 12bis. 1 Periods Expressed in Years When a period is expressed as one year or a certain num ber of years, computation shall start on the day following the day o n which th e relevant event occurred, and the pe riod shall expire in the relevant subsequent year in the month having the same nam e and on the day having the sam e number as the m onth and the day on which the said event occurred, provided that if the relevant subsequent month has no day with the sam e number the period shall expire on the last day of that month.
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12bis. 2 Periods Expressed in Months When a period is expressed as one month or a certain number of months, computation shall start on the day following the day o n which th e relevant event occurred, and the pe riod shall expire in the relevant subsequent month on the day which ha s the same number as the day on which the s aid event occurred, provided th at if the relevant subsequent month has no day with the sam e number the period shall expire on the last day of that month.
12bis. 3 Periods Expressed in Days When a period is expressed as a certain num ber of days, com putation shall s tart o n the day f ollowing th e day on which the relevant event occurred, and the period shall expire on the day on which the last day of the count has been reached.
Rule 13
Publication by the International Bureau
Any publication by the International Bur eau referred to in th e Treaty or these Regulations shall be made on paper or in electronic form.
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(iii) any discontinuance of the functions of an international depositary authority, any refusal to accept certain kinds of microorganisms, and the m easures taken in connection with such discontinuance or refusal;
Rule 14
Expenses of Delegations
14.1 Coverage of Expenses The expenses of each delegation pa rticipating in any session of the Assembly and in any committee, working group or other meeting dealing
with m atters of conce rn to the U nion shall be borne by the State or organisation which has appointed it.
Rule 15
Absence of Quorum in the Assembly
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(subregulation 1.4 (2))
TABLE OF PROVISIONS
Preamble
Introductory Provisions
Article 1: Establishment of a Union Article 2: Definitions
Chapter I: International Application and International Search
Article 3: The International Application
Article 4: The Request
Article 5: The Description
Article 6: The Claims
Article 7: The Drawings
Article 8: Claiming Priority
Article 9: The Applicant
Article 10: The Receiving Office
Article 11: Filing Date and Effects of the International Application
Article 12: Transmittal of the International Application to the International Bureau and the International Searching Authority
Article 13: Availability of Copy of the International Application to Designated Offices
Article 14: Certain Defects in the International Application
Article 15: The International Search
Article 16: The International Searching Authority
Article 17: Procedure Before the International Searching Authority
Article 18: The International Search Report
Article 19: Amendment of the Claims Before the International Bureau
Article 20: Communication to Designated Offices
Article 21: International Publication Article 22: Copy, Translation, and Fee, to Designated Offices Article 23: Delaying of National Procedure Article 24: Possible Loss of Effect in Designated States Article 25: Review By Designated Offices Article 26: Opportunity to Correct Before Designated Offices Article 27: National Requirements Article 28: Amendment of the Claims, the Description, and the
Drawings, Before Designated Offices Article 29: Effects of the International Publication Article 30: Confidential Nature of the International Application
Chapter II: International Preliminary Examination
Article 31: Demand for International Preliminary Examination
Article 32: The International Preliminary Examining Authority Article 33: The International Preliminary Examination Article 34: Procedure Before the International Preliminary
Examining Authority Article 35: The International Preliminary Examination Report Article 36: Transmittal, Translation, and Communication, of the
International Preliminary Examination Report Article 37: Withdrawal of Demand or Election Article 38: Confidential Nature of the International Preliminary
Examination Article 39: Copy, Translation, and Fee, to Elected Offices Article 40: Delaying of National Examination and Other Processing Article 41: Amendment of the Claims, the Description, and the
Drawings, Before Elected Offices Article 42: Results of National Examination in Elected Offices
Chapter III: Common Provisions
Article 43: Seeking Certain Kinds of Protection Article 44: Seeking Two Kinds of Protection Article 45: Regional Patent Treaties Article 46: Incorrect Translation of the International Application Article 47: Time Limits Article 48: Delay in Meeting Certain Time Limits
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Article 49: Right to Practice Before International Authorities
Chapter IV: Technical Services
Article 50: Patent Information Services Article 51: Technical Assistance Article 52: Relations with Other Provisions of the Treaty
Chapter V: Administrative Provisions
Article 53: Assembly Article 54: Executive Committee Article 55: International Bureau Article 56: Committee for Technical Cooperation Article 57: Finances Article 58: Regulations
Chapter VI: Disputes
Article 59: Disputes
Chapter VII: Revision and Amendment
Article 60: Revision of the Treaty Article 61: Amendment of Certain Provisions of the Treaty
Chapter VIII: Final Provisions
Article 62: Becoming Party to the Treaty Article 63: Entry into Force of the Treaty Article 64: Reservations Article 65: Gradual Application Article 66: Denunciation Article 67: Signature and Languages Article 68: Depositary Functions Article 69: Notifications
Done at W ashington June 19, 1970, am ended on October 2, 1979 and modified on February 3, 1984 and on October 3, 2001.
The Contracting States,
Desiring to m ake a c ontribution to the progress of science and technology,
Desiring to perfect the legal protection of inventions,
Desiring to sim plify and render mo re econom ical the obtaining of protection for inventions where protection is sought in several countries,
Desiring to facilitate and acceler ate access by the public to th e technical information contained in documents describing new inventions,
Desiring to foster and accelerate the econo mic develo pment of developing countries through the a doption of m easures designed to increase th e efficiency of their legal system s, whether national o r regional, ins tituted f or the protec tion of inventions by providing eas ily accessible infor mation on the availabi lity of technolog ical solutions applicable to their special needs an d by facilitating acce ss to the ever expanding volume of modern technology,
Convinced that cooperation am ong na tions will greatly facilitate the attainment of these aims,
Have concluded the present Treaty.
Introductory Provisions
Article 1
Establishment of a Union
257
Article 2
Definitions
For the purposes of this Treaty and the Regulations and unless expressly stated otherwise:
(iii) “national patent” means a patent granted by a national authority;
(vii) “international application” means an application filed under this Treaty;
(viii) references to an “application” shall be construed as references to international applications and national applications;
(xii) “national Office” m eans the g overnment authority o f a Contracting State entru sted with the gr anting of patents; references to a “national Office” shall be co nstrued as referring also to any intergovernmental authority which several States have entrusted with the task of granting regional patents, provided that at least one of those States is a Contracting State, and provided th at the said States have authorized that authority to assum e the obliga tions and exercise the powers which this Treaty and the Regulations provide for in respect of national Offices;
(xiii) “designated Office” m eans the national Office of or acting for the State designated by the applicant under Chapter I of this Treaty;
(xiv) “elected Office” m eans the national Office of or actin g for the State elected by the applicant under Chapter II of this Treaty;
(xv) “receiving Office” m eans the national Office or the intergovernmental organization with which the international application has been filed;
(xvi) “Union” means the International Patent Cooperation Union;
(xvii) “Assembly” means the Assembly of the Union;
(xviii) “Organization” m eans the World In tellectual Pro perty Organization;
259
(xix) “International Bureau” m eans the I nternational Bureau of the Organization and, as long as it subsis ts, the United International Bureaux for the Protection of Intellectual Property (BIRPI);
(xx) “Director General” m eans the Directo r General of the Organization and, as long as BIRPI subsists, the Director of BIRPI.
CHAPTER I
Article 3
The International Application
(iii) comply with the p rescribed requirement of unity of invention;
(iv) be subject to the payment of the prescribed fees.
Article 4
The Request
treaty concerning a regional patent , the app licant c annot lim it his application to certain of the States party to that treaty, designation of one of those States and the indication of the wish to obtain the regional patent shall be tre ated as des ignation of all the States party to th at tr eaty; if , under the national law of the designat ed State, the designation of that State has the effect of an application for a regional patent, the designation of the said State shall be treated as an indication of the wish to obtain the regional patent;
(iii) the name of and other prescrib ed data concerning the applicant and the agent (if any);
261
Article 5
The Description
The description shall disclose the invention in a m anner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.
Article 6
The Claims
The claim or claim s s hall define the m atter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.
Article 7
The Drawings
Article 8
Claiming Priority
for a designated State is claimed, or where the priority of an international application having designated only one State is claim ed, the condition s for, and the effect of, the priority claim in that State shall be governed by the national law of that State.
Article 9
The Applicant
Article 10
The Receiving Office
The interna tional app lication sha ll be f iled with the p rescribed receiving Of fice, which will check and proces s it as p rovided in th is Treaty and the Regulations.
Article 11
Filing Date and Effects of the International Application
(iii) the in ternational app lication con tains at least the f ollowing elements:
263
Article 12
Transmittal of the International Application to the International Bureau and the International Searching Authority
Article 13
Availability of Copy of the International Application to Designated Offices
Article 14
Certain Defects in the International Application
(iii) it does not contain a title;
265
Article 15
The International Search
Article 16
The International Searching Authority
267
between such Office or organization and the International B ureau. The agreement shall spe cify the righ ts and obliga tions of the parties, in particular, the form al undertaking by the said Office or organization to apply and observe all the common rules of international search.
Article 17
Procedure Before the International Searching Authority
the said Authority shall so declare and shall notify the applicant and the International Bureau that no inte rnational search rep ort will b e established.
Article 18
The International Search Report
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Article 19
Amendment of the Claims Before the International Bureau
Article 20
Communication to Designated Offices
Article 21
International Publication
Article 22
Copy, Translation, and Fee, to Designated Offices
(1) The applicant shall furnis h a copy of the international application (unless the communicati on provided for in Ar ticle 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Offi ce not later than at th e expiration of 30 months from the priority date. Where the national law of the designated State requires the indi cation of the nam e of and other prescribed data concerning the inventor but allows that these indications be f urnished at a time late r tha n that of the f iling of a national
271
application, the applicant shall, unless they were contained in the request, furnish the said ind ications to the nationa l Of fice of or ac ting f or tha t State not later than at the expiration of 30 months from the priority date.
Article 23
Delaying of National Procedure
Article 24
Possible Loss of Effect in Designated States
(iii) if the applicant f ails to perf orm the acts r eferred to in Article 22 within the applicable time limit.
(2) Notwithstanding the provisions of paragraph (1), any designated Office may maintain the effect provided for in Article 11 (3 ) even where such effect is not required to be maintained by virtue of Article 25 (2).
Article 25
Review By Designated Offices
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Article 26
Opportunity to Correct Before Designated Offices
No designated Office shall reject an interna tional application on the grounds of non-com pliance with the requirem ents of this Treaty and the Regulations without first giving the applicant the opportunity to correct the said application to the extent and according to the procedure provided by the na tional law f or the sam e or comparable situations in respe ct of national applications.
Article 27
National Requirements
Article 28
Amendment of the Claims, the Description, and the Drawings, Before Designated Offices
275
Article 29
Effects of the International Publication
(iii) a translation into the la tter language has been tra nsmitted by the applicant to the actual o r prospective unauthorized user of th e inven tion cla imed in the in ternational application, or
Article 30
Confidential Nature of the International Application
(iii) date of the rece ipt of a copy of the interna tional application under Article 22.
(b) The provisions of subparagraph ( a) sha ll no t prev ent a ny national Office from informing third pa rties that it has been designated, or from publishing that fact. Su ch inform ation or publication m ay, however, contain only the following da ta: identification of the receiving
277
Office, name of the ap plicant, in ternational f iling date, in ternational application number, and title of the invention.
CHAPTER II
Article 31
Demand for International Preliminary Examination
Article 32
The International Preliminary Examining Authority
279
Article 33
The International Preliminary Examination
Article 34
Procedure Before the International Preliminary Examining Authority
(iii) no observations are intended to be m ade under Article 35 (2), last sentence.
281
considered withdrawn unless a special fee is paid by the applicant to that Office.
the sa id Authority sh all no t go into th e questions r eferred to in Article 33 (1) and sha ll inf orm the applicant of this opinion and the reasons therefor.
(b) If any of the situations referred to in subparagraph ( a) is f ound to exist in, or in connection with, certain claims only, the provisions of that subparagraph shall apply only to the said claims.
Article 35
The International Preliminary Examination Report
Article 36
Transmittal, Translation, and Communication, of the International Preliminary Examination Report
283
Article 37
Withdrawal of Demand or Election
Article 38
Confidential Nature of the International Preliminary Examination
Article 39
Copy, Translation, and Fee, to Elected Offices
Article 40
Delaying of National Examination and Other Processing
285
Article 41
Amendment of the Claims, the Description, and the Drawings, Before Elected Offices
Article 42
Results of National Examination in Elected Offices
No elected Office receiving the inte rnational preliminary examination report may require that the applicant furnish copies, or information on the contents, of any papers connected w ith the ex amination relating to th e same international application in any other elected Office.
CHAPTER III
Common Provisions
Article 43
Seeking Certain Kinds of Protection
In respect of any designated or el ected State wh ose law pro vides for the grant o f inventors’ certif icates, utility cer tificates, utility m odels, patents or certificates of addition, inve ntors’ certificates of addition, or utility certificates of addition, the applicant may indicate, as prescribed in the Regulations, that his international application is f or the grant, as f ar as that State is concerned, of an inve ntor’s certificate, a utility certificate, or a utility model, rath er than a p atent, o r tha t it is f or th e grant of a patent or certificate of addition, an i nventor’s certificate of addition, or a utility certificate of addition, and the ensuing effect shall be governed by the applican t’s cho ice. For the purpos es of this Artic le an d any Rule thereunder, Article 2 (ii) shall not apply.
Article 44
Seeking Two Kinds of Protection
In respect of any designated or el ected State whose law perm its an application, while being for the grant of a patent or one of the other kinds of protection referred to in Article 43, to be also for the grant of another of the said kinds of protection, the a pplicant may indicate, as prescribed in the Regulations, the two kinds of protection he is seeking, and the ensuing effect shall be governed by the applicant’s indications. For the purposes of this Article, Article 2 (ii) shall not apply.
Article 45
Regional Patent Treaties
Article 46
Incorrect Translation of the International Application
If, because of an incorrect trans lation of the in ternational application, the scope of any patent granted on that application exceeds the scope of the international application in it s original language, the com petent authorities of the Contrac ting St ate concerned m ay acc ordingly and retroactively limit the scope of the patent, and declare it null and void to the ex tent that its s cope has ex ceeded the sco pe of the interna tional application in its original language.
287
Article 47
Time Limits
Article 48
Delay in Meeting Certain Time Limits
Article 49
Right to Practice Before International Authorities
Any attorney, patent agent, or other person, having the right to practice b efore the n ational Offi ce with which the inte rnational application was filed, shall be entitled to practice before the International Bureau and the com petent In ternational Searching Authority and competent Interna tional Prelim inary Exam ining Authority in respect of that application.
CHAPTER IV
Technical Services
Article 50
Patent Information Services
289
Article 51
Technical Assistance
Article 52
Relations with Other Provisions of the Treaty
Nothing in this Chapter shall affect the financial provisions contained in any other Chapter of this T reaty. Such provisions are not applicable to the present Chapter or to its implementation.
CHAPTER V
Administrative Provisions
Article 53
Assembly
(iii) give directions to the In ternational Bureau concerning the preparation for revision conferences;
(vii) adopt the financial regulations of the Union;
(viii) establish su ch comm ittees and working group s as it deem s appropriate to achieve the objectives of the Union;
291
Article 54
Executive Committee
293
Article 55
International Bureau
295
Article 56
Committee for Technical Cooperation
(iii) on the initia tive of the Assembly or the Executive Committee, to the solution of the technica l problem s specifically involved in the establishment of a single International Searching Authority.
Article 57
Finances
297
(iii) gifts, bequests, and subventions;
Article 58
Regulations
(iii) concerning any details usef ul in the implementation of the provisions of this Treaty.
299
CHAPTER VI
Disputes
Article 59
Disputes
Subject to Article 64 (5), any dispute between two or m ore Contracting States con cerning th e inte rpretation or application of this Treaty or the Regulations, not settled by negotiation, m ay, by any one of the States concerned, be brought bef ore the International Court of Justice by application in conform ity with th e Statu te o f the Court, unless the States concerned agree on som e other m ethod of settlem ent. The Contracting State bringing the dispute before the Court shall inf orm the International Bureau; th e International Bureau shall br ing the m atter to the attention of the other Contracting States.
CHAPTER VII
Revision and Amendment
Article 60
Revision of the Treaty
Article 61 Amendment of Certain Provisions of the Treaty
301
CHAPTER VIII
Final Provisions
Article 62
Becoming Party to the Treaty
Article 63
Entry into Force of the Treaty
most recent annual statistics published by the International Bureau,
(iii) the national Office of th e State has received at least 10,000 applications from nationals or residents of foreign countries according to the m ost recent annual statistics pu blished by the International Bureau.
Article 64
Reservations
303
is not exempted from the limitations provided for in Articles 30 and 38.
Article 65
Gradual Application
305
Article 66
Denunciation
Article 67
Signature and Languages
Article 68
Depositary Functions
Article 69
Notifications
The Director General shall notify the Governments of all States p arty to the Paris Convention for the Protection of Industrial Property of:
(iii) the date of entry into force of this Treaty and the date from which Chapter II is applicable in accordance with Article 63 (3),
(vii) any declarations made under Article 31 (4).
307