made under the
Patents Act 1990
This compilation was prepared on 12 December 2009 taking into account amendments up to SLI 2009 No. 332
This document has been split into two volumes Volume 1 contains Chapters 1 to 23 and Schedules 1, 1A and 2, and Volume 2 contains Schedules 2A to 8 and the Notes Each volume has its own Table of Contents
Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra
Chapter 1 Introductory
1.2 Commencement 14
1.3 Interpretation 14 1.3A Meaning of completed in relation to a search 16
1.4 English text of treaties 17
1.5 Deposit requirements: prescribed period 17
1.6 Disclosure in basic applications — general 18 1.6A Disclosure in basic applications — use of approved digital library 18
1.7 Verification of translations of international applications 19
1.8 Completion of applications 19
2.2 Publication or use: prescribed circumstances 21
2.3 Publication or use: prescribed periods 23
2.4 Prescribed period: patents of addition 24
2.5 Prescribed period: assertion that invention is not a patentable invention 24
2.6 Prescribed period: notification of assertion of invalidity of innovation patent 25
2.7 Documents to accompany notice of assertion of invalidity 25
Chapter 3 From application to acceptance
Part 1 Inventions generally
3.2 Provisional specifications 27 3.2A Specifications — standard patents 27 3.2B Specifications: formalities check for innovation patents 28
3.4 Substitute abstracts 31
3.5 Filing date 32 3.5A Filing date: incomplete specifications 33 3.5B Filing of documents outside business hours 34
3.7 Form of certain applications 34
3.8 Time within which applications are to be made following certain decisions and declarations 34
3.9 Prescribed period: treatment of complete application as provisional 35
3.10 Prescribed period: making of complete applications 35
3.12 Priority dates generally 35
3.13 Priority dates: certain persons and applications 39
3.14 Priority dates: certain amended claims 39
3.15 Prescribed period and form of request for examination 40
3.16 Prescribed grounds and period for examination 40
3.17 Requirement for Commissioner to direct or expedite examination 40 3.17A Results of documentary searches — foreign patent office 41 3.17B Prescribed documentary searches by or on behalf of a foreign patent office 42
3.19 Conduct of examination: standard patents 46
3.20 Requests for deferment of examination or modified examination 47
3.21 Prescribed foreign countries: requests for deferment of examination and modified examination 48
3.22 Disclosure of patent documents and information to International Bureau etc 48
3.24 Commissioner may request samples and viability statement 50
3.25 Request for Commissioner’s certificate authorising release of sample of a micro-organism 51
3.26 Breach of undertakings given in respect of micro-organisms 54
3.28 Relief in proceedings for breach of undertakings 55
3.29 Notification that a deposit requirement has ceased to be satisfied 56
3.30 Prescribed period: deposit requirements taken to be satisfied 57
3.31 Application for declaration that deposit requirements are not satisfied 59
Chapter 4 Publication
4.2 Notice that specification is open to public inspection 61
4.3 Prescribed documents: public inspection 62
5.2 Interpretation 63
5.3 Filing of opposition (except under section 101M of the Act) 64 5.3AA Filing of opposition under section 101M of Act 65 5.3A Amendment of notice of opposition: correction of error or mistake 65 5.3B Amendment of notice of opposition: change of opponent 66
5.5 Dismissal of opposition 66
5.6 Determination of opposition 67
5.7 Opponent to serve copy of substitute statement 68
5.8 Time for giving of evidence 68
5.9 Amendment of statement 70 5.9A Amendment of statement: additional ground as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004 71
5.11 Commissioner may inform himself or herself 73
5.12 Hearing of opposition 73
5.13 Representations to Commissioner 74
5.14 Commissioner not required to hold hearing 74
5.15 Withdrawal of opposition 74 Page
Chapter 6 Grant and term of patents
Part 1 Patents generally
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
| Page | ||
|---|---|---|
| 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 | ||
|---|---|---|
| 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 | ||
|---|---|---|
| 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 180 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 182
22.6 Exemption from fees 183
22.7 Refund of certain fees 183
Division 2 Costs
22.7A Proceedings to which this Division applies 184
22.10 Address for service 185 22.10A Address for correspondence 186 22.10AA Period for doing certain acts — office not open for business 186 22.10AB Days when office not open for business 186 22.10AC Period for doing certain acts — acts to which section 222A does not apply 187
22.13 Declarations 189
22.14 Directions not otherwise prescribed 190
22.15 Documents to be in English 190
22.16 Documents other than specifications and abstracts 191
22.17 Incapacity of certain persons 191
22.18 Destruction of documents 192
22.19 Copies of certain documents to be supplied 192
22.20 International applications and the Patent Office 193
22.21 Protection or compensation of certain persons 193
22.22 Exercise by Commissioner of certain powers 194
22.23 Hearings 194
22.24 Practice and procedure other than for opposition proceedings 195
22.25 Requirements cannot be complied with for reasonable cause 195
22.26 Review of decisions 196
23.2 Delegation: certain matters referred to in this Chapter 198
23.3 Opposition to grant: practice and procedure 198
23.4 Certain opposition: practice and procedure 199
23.5 Fees payable for certain matters relating to opposition 199
23.6 Certain delegations: opposition 199
23.7 Certain undertakings 200
23.8 Restoration of lapsed applications or ceased patents 200
23.9 Certain continuation and renewal fees 201
23.10 Fee taken to have been paid 201
23.11 Supply of product referred to in section 117 of the Act 201
23.12 Certain withdrawn, abandoned or refused applications 202
23.13 Certain certificates of validity 202
23.14 Certain action under the 1952 Act 203
23.15 Amendment of petty patents 203
23.16 Certain applications under 1952 Act: time for acceptance 203
| Page | ||
|---|---|---|
| 23.17 23.18 23.25 | PCT applications to which subsection 89 (5) of the Act does not apply Certain priority dates: saving Fees | 204204205 |
| 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 | 205 206206207207 |
| Schedule 1 | Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure | 210 |
| Schedule 1A | Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure | 228 |
| Schedule 2 | Patent Cooperation Treaty | 253 |
These Regulations are the Patents Regulations 1991.
These Regulations commence on 30 April 1991.
approved digital library means a library or other facility that the Commissioner specifies as a digital library, for this definition, in the Official Journal.
Example
The library administered by the International Bureau of the World Intellectual Property Organization, known as the “Digital Access Service for Priority Documents” or “DAS”.
basic documents means documents filed in a Convention country in respect of a basic application. certificate of verification means a statement:
arrangements in place in the country, is authorised to certify copies of specifications of patents for the country. Disciplinary Tribunal means the Patent and Trade Marks
Attorneys Disciplinary Tribunal established under regulation
20.41.
former attorneys Regulations means the following Regulations:
before 1 July 2008.
former patents Regulations means the Patents Regulations in
force immediately before the commencing day under the 1952
Act.
International Bureau means the International Bureau of the World Intellectual Property Organization. the Act means the Patents Act 1990. the Tribunal means the Administrative Appeals Tribunal.
to the Commissioner or the Patent Office includes 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 Commissioner 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 matter that was claimed or disclosed in a disclaimer or acknowledgement of prior art in a basic application or in a specification or other document filed in respect of, and at the same time as, the basic application is not taken to have been disclosed.
1.6A Disclosure in basic applications — use of approved digital library
the specification or other document in the approved digital library.
For the purposes of subsection 10 (2) of the Act, the translation of an international application that was not filed in the receiving Office in English must have with it a related certificate of verification.
Example
An online application facility.
(1) In this Regulation: Paris Convention means the Paris Convention for the
Protection of Industrial Property of 20 March 1883, as in force for Australia on the commencing day. recognised exhibition means:
(1A) For paragraph 24 (1) (a) of the Act, the circumstance that there was a publication or use of the invention within 12 months before the filing date of the complete application, is a prescribed circumstance.
(iii) if the first disclosure of 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 applicant relies on the circumstance in subregulation 2.2 (1A), the prescribed period is the period of 12 months after the information was first made publicly available.
2.2 (2) (d) — 12 months from the start of the first public working of the invention referred to in that paragraph.
For subsection 27 (1) of the Act, the prescribed 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 complete specification for the patent becomes open to public inspection to immediately before the Commissioner decides to certify the patent.
Notice of an assertion under subsection 27 (1) or 28 (1) of the Act must, if the assertion is based on a document, have with it:
| 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 receipt referred to in subparagraph (i) or (ii) is not in English — a translation of the receipt into English and a related certificate of verification; and
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 Commissioner may, within 1 month from the date of filing of the application, direct the applicant to do anything necessary to ensure that the patent request and complete specification comply with the requirements mentioned in subregulations (1) and (2).
Note See regulation 3.5 for what happens if certain information required for an application is not filed.
end of the period; the complete application to which the patent request and complete specification relate lapses at the end of the period.
Regulation 3.2B
(ii) be in English; and
(iii) comply substantially with the requirements of Schedule 3;
| Chapter 3 | From application to acceptance |
| Part 1 | Inventions generally |
| Regulation 3.3 |
Regulation 3.4
Regulation 3.5
Regulation 3.5A
(iii) if the earlier application is not in English — a translation of the application into English together 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 36 (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 respect of a basic application that is related to that Convention application, being a specification that was filed after the basic application was made;
Regulation 3.12
| (c) | if: | |||
|---|---|---|---|---|
| (i) | the application that relates to the specification 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 made in Australia not more than 12 months before the international filing date of the PCT application; or | |||
| (AA) | an application made in Australia more than 12 months before the international filing date of the PCT application, for which: | |||
| (I) | a receiving Office has restored priority under Rule 26bis.3; and | |||
| (II) | the restored priority has not been found to be ineffective by the Commissioner or a prescribed court under Rule 49ter.1; or | |||
| (B) | a basic application, made 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 made 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 receiving Office has restored priority under Rule 26bis.3; and | |||
| (II) | the restored priority has not been found to be ineffective by the Commissioner or a prescribed court 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 that earlier application after it was made, are priority documents.
(2A) For the purposes of paragraph (1) (b) and subregulation (2), ‘filed’ includes filed with the Patent Office and filed with a corresponding Office of another country.
(2B) A reference in subregulation (2) to a basic application does not include a basic application that has been disregarded by the Commissioner under section 96 of the Act.
(2C) The date for a specification 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 document filed in respect of, and at the same time as, a basic application, section 96 of the Act is taken to apply to the PCT application 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 which the applicant must inform the Commissioner of the results of a documentary 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), application A is the ‘further complete application’mentioned in subsection 79B (1) of the Act. It is described in paragraph (c)as a ‘divisional application’. Application B is the ‘first-mentioned application’ in relation to application A. If results of searches have been disclosed in the course of application B, the results do not need to bedisclosed again in the course of application A.
However, it is possible under subsection 79B (1) of the Act that applicationB may also be a divisional application in relation to another application. In that case, there will also be a first-mentioned application for application B.If results of searches have been disclosed in the course of that 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 subsection 45 (3) of the Act in relation to the application for the main invention;
(iii) if the patent request and complete specification relating to the application were accepted (whether before or after 22 October 2007) — the day 3 months after the notice of acceptance was published in the Official Journal under paragraph 49 (5) (b) of the Act;
the documentary search is prescribed (so that information need not be given to the Commissioner).
Regulation 3.18
(b) the applicant asked for the examination on or after
22 October 2007; all documentary searches by, or on behalf of, a foreign patent office are prescribed (so that information need not be given to the Commissioner).
(iii) section 38 (‘time for making complete application’);
(vii) section 95 (‘manner of making Convention 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 Commissioner reasonably believes that there are lawful grounds of objection to the patent request or complete specification, he or she must state the grounds of objection in reporting on an examination.
Regulation 3.20
Regulation 3.21
Commissioner; before acceptance, unless the applicant makes a request under 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 information in the Commissioner’s possession that relates to a document mentioned in paragraph (a), (b) or (c);
whether or not the application is open for public inspection.
(2) However, if the patent application, document or information is not open for public inspection, the Commissioner must not disclose the application, document or information without the consent of the applicant.
Note Section 194 of the Act also authorises the Commissioner to give a person certain information about patents, patent applications and other documents in certain circumstances.
(3) The Commissioner may disclose the patent application, document or information by depositing it in an approved digital library or by any other means.
Regulation 3.23
3.23 Documents in accepted applications and patents involving micro-organisms
Regulation 3.25
10.2 (a) (iii) of the Budapest Treaty for a statement concerning the viability of a micro-organism if a sample of the micro-organism has been given to the Commissioner in accordance with a request under subregulation (1).
(1) If a micro-organism is deposited with a prescribed depositary institution, a person may, in the approved form, request the Commissioner to grant the certification referred to in Rule
(3A) For subregulation (3), the period is:
Regulation 3.25
(iii) relevant proceedings in relation to the patent;
and not to make that micro-organism, or a culture derived from that micro-organism, available to another person; and
(iii) the application referred to in that subregulation has not lapsed or been withdrawn or refused; and
(iii) the Commissioner is reasonably satisfied that the licence provides that the person making the request has a right to obtain a sample of that micro-organism; and
(iii) the Commissioner is reasonably satisfied that the terms for the exploitation of the invention provide that the person making the request has a right to obtain a sample of that micro-organism.
Regulation 3.26
Regulation 3.28
3.29 (1) of the deposit requirement that has ceased to be satisfied; and
(b) the applicant for the patent or the patentee fails to take the steps referred to in paragraph 41 (4) (b) of the Act within the appropriate period prescribed by subregulation 3.30 (1) for the purposes of that paragraph.
In proceedings referred to in subregulation 3.26 (1) for breach of an undertaking:
Regulation 3.29
(iii) any products made 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 application or patent relating to a micro-organism:
3.29 (2) the applicant or patentee a copy of a notice of that requirement — the period of 3 months after the copy was given; or
Regulation 3.30
(ii) if the Commissioner has given under subregulation
3.29 (3) to the applicant or patentee a notice of the requirement — the period of 3 months after the notice was given; or
(iii) if under Article 4 (1) of the Budapest Treaty the authority has notified the depositor of its inability to furnish samples of the micro-organism and the Commissioner has not, before the notification, given to the applicant or patentee under subregulation
3.29 (2) or (3) a copy of the notice, or the notice, as the case may be, of the requirement — the period of 3 months after the depositor received that notification under Article 4 (1) (d) of the Treaty; or
Regulation 3.31
Regulation 3.31
(b) the making of a decision of the Commissioner under
subsection 42 (1) of the Act; notice of the making of the declaration or decision must be published in the Official Journal.
(6) The terms of a declaration or decision referred to in subregulation (5) need not be published, but the declaration or decision must be open to public inspection.
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 amendment of the Register or a patent under subregulation 10.7 (4) must file a notice of opposition in the approved form within 3 months of the publication in the Official Journal of the notice 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 mentioned in any of the following provisions may be made to the Commissioner in writing or by any other means approved by the Commissioner:
If the Commissioner believes, on reasonable grounds, that no party wishes to be heard in a matter arising under regulation 5.12 or 5.13, the Commissioner 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 granted under section 61 of the Act, the Commissioner must publish a notice 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 Commissioner in the approved form 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 first-mentioned application was itself a divisional application or was amended to be a divisional application before filing the later application — the date that would be the date of the patent if a patent had been granted on the divisional application.
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 same meaning 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 have a certificate mentioned in paragraph (a) — information showing the date of commencement of the first inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance.
Note For providing a copy of a certificate mentioned in paragraph (2) (a),see the definition of document in subsection 71 (1) of the Act.
Note For providing a copy of a written statement mentioned in paragraph
(2) (a), see the definition of document in subsection 71 (1) of the Act.
(1) This regulation applies if the Commissioner needs further information to decide whether he or she is satisfied that the requirements set out in sections 70 and 71 of the Act are satisfied for an application for an extension of the term of a standard patent.
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 must 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 regulation for PCT applications 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:
| Chapter 8 | PCT applications and Convention applications |
| Part 1 | PCT applications |
| Regulation 8.3 |
the Commissioner may report on these matters and ask the applicant to provide a copy of the international preliminary examination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any amendments that may have been made under Article 34 of the PCT.
(1AB) Where:
the Commissioner may report on these matters and ask the applicant to provide a copy of the international preliminary examination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any amendments that may have been made under Article 34 of the PCT.
| PCT applications and Convention applications | Chapter 8 |
| PCT applications | Part 1 |
| Regulation 8.3 |
(1AC) If subsection (1AA) or (1AB) applies, the Commissioner is not required to perform his or her functions under subsection (1) unless:
Note Under subsection 89 (7) of the Act, as modified by the Patents Regulations 1991, if the applicant provides the advice, or makes the election, mentioned in 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 means 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:
| preliminary examination International Bureau; and | report | from | the | ||||
|---|---|---|---|---|---|---|---|
| (d) | the | International | Bureau | advises | that | the | |
international preliminary examination report is not
available; the Commissioner may report on these matters and ask the applicant to provide a copy of the international preliminary examination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any amendments that may have been made under Article 34 of the PCT.
(1AB) Where:
| PCT applications and Convention applications | Chapter 8 |
| PCT applications | Part 1 |
| Regulation 8.3 |
the Commissioner may report on these matters and ask the applicant to provide a copy of the international preliminary examination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any amendments that may have been made under Article 34 of the PCT.
(1AC) If subsection (1AA) or (1AB) applies, the Commissioner is not required to perform his or her functions under subsection (1) unless:
Note Under subsection 89 (7) of the Act, as modified by the Patents Regulations 1991, if the applicant provides the advice, or makes the election, mentioned in 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 means 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 information 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 amended 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
92 Notice of publication
the PCT; the application is open to public inspection.
| PCT applications and Convention applications | Chapter 8 |
| PCT applications | Part 1 |
| 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
| Chapter 8 | PCT applications and Convention applications |
| Part 1 | PCT applications |
| Regulation 8.4 |
substitute
‘international filing date, in relation to an international application, means:
[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 must be in the approved form.
If the Commissioner decides, under subsection 97 (1) of the Act, to re-examine a complete specification relating to an application for a patent, the Commissioner must tell:
(2A) A request must state the relevance of each of the documents mentioned in subregulation (2).
If the Commissioner makes an adverse report on a re-examination under subsection 97 (1) of the Act and:
the re-examination is completed when the decision is made whether or not the amendment is allowed; or
the re-examination is completed when the decision is made whether or not the amendment is allowed; or
(d) a statement is not filed under section 99 of the Act and subparagraphs (c) (i) and (ii) do not apply — the re-examination is completed 2 months from the day when the commissioner reports under section 98 of the Act.
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 necessary to refer in a list to a document that has been included in a list or report in relation to the patent, previously provided to the Commissioner for the Act or these Regulations.
(1B) For subsection 101D (1) of the Act, a patentee informs the Commissioner of the results of documentary searches by or 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 that information need not be given to the Commissioner).
(3) If the Commissioner decides, on or after 22 October 2007, to examine the complete specification relating to an innovation patent, all documentary searches by, or on behalf of, a foreign patent office are prescribed (so that information need not be given to the Commissioner).
Request for examination of complete specification
the documentary search is prescribed (so that information need not be given to the Commissioner).
22 October 2007; all documentary searches by, or on behalf of, a foreign patent office are prescribed (so that information need not be given to the Commissioner).
105
For paragraph 101C (b) of the Act, the examination of a complete specification for an innovation patent must be completed before the end of whichever of the following periods ends latest:
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 the 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 examination, if a notice has been filed under subsection 28 (1) of the Act, the Commissioner must consider a matter stated in the notice that addresses a claim that an invention does not comply with paragraph 18 (1A) (b) of the Act.
107
(1) For the purposes of subsection 104 (1) of the Act, an applicant or a patentee may ask the Commissioner for leave to amend a patent request or complete specification or another filed document by filing a request for leave to amend in the approved form together with a statement of proposed amendments.
(1A) If an applicant proposes to amend a patent request, complete specification or other filed document for a reason mentioned in subregulation (1B), the applicant is taken to have complied with subregulation (1) if a written statement of the proposed amendments is filed.
(1B) For subregulation (1A), the reasons are:
109
| (ii) | if: | |
|---|---|---|
| (A) | no demand was made under Article 31 of the PCT; or | |
| (B) | no amendments were made under Article 34 of the PCT; or | |
| (C) | the demand was made under Article 31 of the PCT, or the international preliminary examination report was established, after the applicant complied with the requirements of subsection 89 (3); | |
advise the Commissioner of that fact; or
(iii) elect to abandon any amendments that may have been made under Article 34 of the PCT.
Note Under subsection 89 (7) of the Act, as modified by theseRegulations, if the applicant provides the advice mentioned in subparagraph (c) (ii), or makes the election mentioned in subparagraph (c) (iii), any amendments made under Article 34 of the PCT are not taken to be included in the application.
(5A) If, under subregulation (3), the applicant:
made under Article 34 of the PCT; the Commissioner must report under 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 amend has been filed, give a copy of that request and the statement of proposed amendments to the person referred to in paragraph (a).
(9) If a request for leave to amend a complete specification in respect of a micro-organism is made for the purpose of including in the specification a matter in respect of which a notice has been filed by a person under subregulation 3.29 (1), the Commissioner must, as soon as practicable after the request for leave to amend has been filed, give the person a copy of the request and the statement of proposed amendments.
113
The Commissioner must refuse the request for leave to amend, if:
an applicant for the patent; the proposed amendments are not taken to materially alter the meaning or scope of the patent request or other filed document.
the Commissioner must allow the proposed amendment immediately.
115
are pending; the Commissioner must allow the proposed amendment at the end of the time for bringing opposition proceedings.
are pending; the Commissioner must allow the proposed amendment immediately after the opposition is fully determined.
117
the Commissioner must amend the relevant entry in the Register to insert the correct extension of the term of the patent.
Note 1 Under section 77 of the Act, the term of the 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). If the earliest first regulatoryapproval 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) refers to the date of commencement of the first inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, a pharmaceutical substance. The date is supplied with an application for the extension of the term of a patent if pre-TGAmarketing approval has not been given.
Subregulation 6.10 (2) refers to the date of the first approval of a pharmaceutical substance. The date is supplied with an application for the extension of the term of a patent if pre-TGA marketing approval has beengiven.
Note Regulations 22.22 to 22.24 apply to discretionary decisions made by the Commissioner. However, the procedures in those regulations will beused to allow the Commissioner to establish whether the grounds for a decision under subregulation (7) exist.
(9) An appeal lies to the Federal Court against a decision 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 amend a patent request or complete 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 Commissioner under subsection 106 (1) of the Act:
A direction of the Commissioner 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 foreign 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 relies on the ground mentioned in paragraph 133 (2) (a) of the Act — facts supporting the assertion that the reasonable requirements of the public with respect to the patented invention have not been satisfied; and
(iva) if the applicant relies on the ground mentioned in paragraph 133 (2) (b) of the Act — facts supporting the assertion that the patentee has contravened, or is contravening, Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act) in connection with the patent; and
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 months from the date on which the request for deferment of the examination was filed is prescribed for the purposes of paragraph 142 (2) (c) of the Act.
(1A) However, if the continuation fee is paid within 6 months after the end of the relevant anniversary (6 month period):
125
Note 1 For the date of a patent, see section 65 of the Act and regulation
6.3.
Note 2 For the fees payable, see regulation 22.2.
subject to subregulation (3), the period of 3 months from the date of that declaration;
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
subject to subregulation (4), the period of 3 months from the day when the appeal or application is withdrawn or finally dealt with or determined;
127
and an objection is raised based on information in the notice or the search results — the period of 3 months from the date of the report that first mentions the objection.
(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 Act, 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 must be filed within 3 months after the revocation, under section 149 of the Act, of a direction in respect of the application to which the request relates.
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 patent has been exploited by the Crown under section 163 of the Act must include the date on which the innovation patent was certified.
17.1A Prescribed period: order relating to standard patent
For subsection 174 (2) of the Act, the prescribed period is 1 month from the revocation of an order under subsection 173 (1) of the Act that relates to the application.
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 means the Patent and Trade Marks
Attorneys Disciplinary Tribunal established by regulation
20.32.
Register or Register of Patent Attorneys means 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 meaning given by regulation 20.32.
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 Manager must 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 person does not have a knowledge requirement is reviewable under regulation 22.26.
139
Regulation 20.9
(6) If an applicant has been granted an exemption under regulation 20.9, the applicant is taken to meet the requirement in Schedule 5 for which the exemption is granted.
Note Subsection 198 (4) of the Act provides that the Designated Manager must register as a patent attorney a person who satisfies certain conditions. Paragraph 198 (4) (b) requires that a person hold such qualifications as are specified in, or ascertained in accordance with, the Regulations.
Regulation 20.11
(ii) preparing, filing and prosecuting patent applications in Australia;
(iii) preparing, filing and prosecuting patent applications in other countries and organisations, particularly countries and organisations that are regarded as major trading partners with Australia;
Examples of major trading partners for subparagraph (a) (iii)
(2) The requirements set out in subregulation (1) must be evidenced by means of one or more statements of skill, as defined in regulation 20.11.
Note Subsection 198 (4) of the Act provides that the Designated Manager must register as a patent attorney a person who satisfies certain conditions. Paragraph 198 (4) (c) requires that a person be employed as prescribed for not less than the prescribed period.
(1) For paragraph 20.3 (1) (d) and subregulation 20.10 (2), a statement of skill is a statement by a registered patent attorney who has been registered for at least 5 years that, in the opinion of the registered patent attorney, the applicant has the experience mentioned in one or more of subparagraphs
141
Regulation 20.12
(b) include details of the evidence on which the opinion is
based; described by reference to:
(3) If an applicant is unable to obtain a statement of skill from a registered patent attorney who has been registered for at least 5 years, the Board may, at the request of the applicant, prepare a statement of skill in relation to the applicant.
Note Subsection 198 (4) of the Act provides that the Designated Manager must register as a patent attorney a person who satisfies certain conditions. Paragraph 198 (4) (e) requires that a person not have been convicted of a prescribed offence during the previous 5 years. Paragraph 198 (4) (f) requires that a person not be under sentence of imprisonment for a prescribed offence.
Regulation 20.13
Part 3 Accreditation of courses of study
143
Regulation 20.14
Regulation 20.17
Part 4 Board examinations
From time to time, the Board must arrange to publish in the Official Journal particulars of:
145
Regulation 20.18
An application by a person to sit for an examination must be in the form approved by the Board.
As soon as practicable after an examination conducted by the Board, the Board must give to each candidate who sat for the examination his or her results in the examination.
Regulation 20.21
147
Regulation 20.22
(1) Subject to subregulation (3), a registered patent attorney must, in the 12 months immediately before the date on which the attorney applies for renewed registration, have completed 10 hours of activities that the Designated Manager is satisfied are appropriate for an attorney to undertake as a means of maintaining the currency of his or her professional qualifications.
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 Designated Manager must, on the written request of a registered patent attorney, remove the attorney’s name from the Register of Patent Attorneys.
If a registered patent attorney does not pay the annual registration fee by 31 July in the year in which the fee is payable, the Designated Manager must:
(1) If a registered patent attorney fails to comply with the requirements applicable to the attorney under subregulation
20.25 (1) or (2), the Designated Manager may remove the attorney’s name from the Register for a period not exceeding 6 months.
the Designated Manager must remove the attorney’s name from the Register.
Regulation 20.28
(3) If the Designated Manager removes the name of a registered patent attorney from the Register under subregulation (2), the name of the attorney must not be returned to the Register 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 must restore the attorney’s name 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 Patent 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 registered patent attorney, that falls short of the standard of competence, diligence and behaviour that a member of the public is entitled to expect of an attorney.
155
| Chapter 20 | Patent attorneys |
| Part 8 | Discipline |
| Division 1 | General |
the Board must consider whether or not the attorney has complied with the Code of Conduct.
| Patent attorneys | Chapter 20 |
| Discipline | Part 8 |
| Proceedings in Disciplinary Tribunal | Division 2 |
Division 2 Proceedings in Disciplinary Tribunal
157
| Chapter 20 | Patent attorneys |
| 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 |
159
| Chapter 20 | Patent attorneys |
| Part 8 | Discipline |
| Division 2 | Proceedings in Disciplinary Tribunal |
Penalty: 10 penalty units.
Note A defendant bears an evidential burden in relation to the matters mentioned in subparagraph (2) (a) (i) (see section 13.3 of the Criminal Code).
(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 same protection and immunity as a Justice of the High Court.
161
| Chapter 20 | Patent attorneys |
| Part 8 | Discipline |
| 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 |
163
| Chapter 20 | Patent attorneys |
| 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 registration and finds the charge proved, that Tribunal may:
If the Disciplinary Tribunal finds that a registered patent attorney obtained his or her registration by fraud, that Tribunal must cancel the registration of the attorney.
In deciding what to do about a registered patent attorney under regulation 20.44 or 20.45, the Disciplinary Tribunal may 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 must, within 14 days after making a decision under regulation 20.44, 20.45, 20.46 or 20.47:
(iii) sets out the findings on any material questions of fact; and
(1) If the registration of a former attorney has been cancelled under paragraph 20.44 (1) (a), the Disciplinary Tribunal may appoint
165
| Chapter 20 | Patent attorneys |
| Part 8 | Discipline |
| Division 2 | Proceedings in Disciplinary Tribunal |
a registered patent attorney to carry on the practice 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).
167
Regulation 20.53
A registered patent attorney has the same 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.
169
| Chapter 20 | Patent attorneys |
| Part 10 | Administration |
| 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 absent from a meeting of the Board, the members present must decide whether to give leave to the Chairperson.
Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal
The Patent and Trade Marks Attorneys Disciplinary Tribunal is established.
171
| Chapter 20 | Patent attorneys |
| Part 10 | Administration |
| Division 2 | Patent and Trade Marks Attorneys Disciplinary Tribunal |
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 |
173
| Chapter 20 | Patent attorneys |
| Part 10 | Administration |
| Division 2 | Patent and Trade Marks Attorneys Disciplinary Tribunal |
A person is not qualified to be appointed under subregulation
20.62 (1) or 20.63 (1) or 20.64 (2) unless he or she is enrolled, and has for not less than 7 years been enrolled, as a legal practitioner.
Chapter 21 Administration
The hours of business of the Patent Office and each sub-office of the Patent Office are from 9 am to 5 pm on each day other than:
For subsection 209 (1) of the Act, the Commissioner may delegate all or any of the Commissioner’s powers or functions under the Act, except the powers and functions under paragraphs 210 (a) and (c) of the Act, to an employee of the Patent Office:
175
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 Board must not process an application mentioned in Part 1 of Schedule 7 if the fee payable for the application has not been paid.
22.2B Failure to pay: filing fees for patent requests
(1) This regulation applies if:
177
Chapter 22 Miscellaneous Part 1 Fees and costs Division 1 Fees
Miscellaneous Chapter 22 Fees and costs Part 1 Fees Division 1
179
Chapter 22 Miscellaneous Part 1 Fees and costs Division 1 Fees
Miscellaneous Chapter 22 Fees and costs Part 1 Fees Division 1
(iii) an International Preliminary Examining Authority; and
(b) the Commissioner or the Patent Office is empowered by the PCT to charge a fee, other than a fee for the benefit of the International Bureau;
for the purposes of subsection 227 (1) of the Act, the amount of the fee payable to the Commissioner in respect of a matter specified in an item of Part 3 in Schedule 7 is the amount specified in that item.
181
Chapter 22 Miscellaneous Part 1 Fees and costs Division 1 Fees
Regulation 22.4
Bureau) for the application are as set out in Part 4 of Schedule 7.
Money paid as a fee to the Commissioner under subregulation
(a) must be paid into a Special Account established under section 20 of the Financial Management and Accountability Act 1997; and
Miscellaneous Chapter 22 Fees and costs Part 1 Fees Division 1
(b) may be expended from the Special Account for the purposes of the PCT, including the making of refunds and the remission of fees to the International Bureau.
becomes open to public inspection; so much of the fee paid on the filing of the application as the Commissioner reasonably thinks fit may, on written application made to him or her, be refunded.
183
Chapter 22 Miscellaneous Part 1 Fees and costs Division 2 Costs
extent that fee is to be refunded to the applicant and the fee must be refunded accordingly.
Division 2 Costs
This Division applies to proceedings before the Commissioner.
(2A) A party to proceedings may request taxation of an amount awarded under subregulation (2).
The legal representative of a deceased applicant, nominated person or patentee who wishes:
must file the approved form and such other documents as the Commissioner reasonably considers necessary to support the request.
185
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 open for business, the act may be done in prescribed circumstances on the next day when the office or sub-office is open for business.’.
For subsection 222A (7) of the 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 must be in the approved form and have with it a declaration setting out the grounds on which the application is made.
(1A) Subregulation (1B) applies if:
(1B) If the Commissioner grants the application, the Commissioner must extend the time to include the period from the day on which the notice of opposition is filed to the end of:
187
(1C) For paragraph 223 (2A) (b) of the Act the prescribed period is 2 months after the circumstance that prevented the person from doing the relevant act within the time required ceases to exist.
(1D) For subsection 223 (2B) of the Act the prescribed period is 12 months after the end of the time within which the act is required to be done.
(1) In this regulation: diplomatic or consular officer means a person who holds or
performs the duties of any of the following offices of the Commonwealth in a country other than Australia:
189
(2A) If the declaration is made on behalf of another person, it must also state the other person’s name and address.
(2B) If the declaration is made 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 completion of proceedings for a person to perform an act, file a document or produce evidence that is not provided for by the Act or these Regulations, the Commissioner may give notice to the person requiring him or her to perform the act, file the document or produce the evidence, specified in the notice.
(1) In this regulation:
191
mental dysfunction means a disturbance or defect, to a severely disabling degree, of perceptual interpretation, comprehension, reasoning, learning, judgment, memory, motivation, or emotion.
A copy of a document that:
consider the document for the purposes of the Act or these regulations.
If, for the purposes of the PCT, the Patent Office is:
Authority, as the case requires, in relation to an international application.
may apply, in the approved form, to the Commissioner for the grant of licences to exploit the inventions.
and to such other persons as the Commissioner reasonably directs.
193
Commissioner; the practice and procedure to be followed for the purposes of enabling the application or matter to be decided is to be determined by him or her.
(2) A person to be heard at a hearing may apply to the Commissioner in respect of the practice and procedure in relation to the hearing to be determined by the Commissioner.
If, under these Regulations, a person is required to:
195
cannot comply with the requirement; the Commissioner may, subject to such conditions as he or she reasonably directs, dispense with the requirement.
(1) In this regulation:
decision has the same meaning 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);
(iii) regulation 20.30 (‘restoring attorney’s name to Register following payment of unpaid fee’);
(iii) regulation 20.45 (‘penalties — unsatisfactory professional conduct’);
197
Chapter 23 Transitional and savings provisions
Subsection 4 (2) of the 1952 Act continues in force.
Section 11 of the 1952 Act continues on and after the commencing day in respect of the exercise by the Commissioner of his or her powers and functions in relation to the operation of:
The fee payable in respect of opposition proceedings of the kind mentioned in regulation 23.3 or 23.4 is the fee that would have been payable if these Regulations applied to those proceedings.
The delegation of a person who, before the commencing day, was:
199
matter to which regulation 23.3 or 23.4 applies; continues in relation to the matter.
If an undertaking referred to in paragraph 3.25 (4) (c) is given in respect of an application lodged under the 1952 Act, the reference to Chapter 5 of the Act in subparagraph 3.25 (4) (c)
(i) includes a reference to Part V of the 1952 Act.
corresponding provisions of the Act and these Regulations do not so apply.
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).
201
person after the commencing day; section 117 of the Act does not apply to the supply referred to in paragraph (c).
If:
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 complete specification of a petty patent granted under section 62A of the 1952 Act cannot be amended under the Act so as to include more than 1 claim.
the priority date of which is earlier than the priority date of the first-mentioned claim.
203
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.
(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 on or after the commencing day, if the fee became 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.
205
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 commencement of the Patents Amendment (Innovation Patents) Act 2000. old Regulations means the Patents Regulations 1991 as in
force immediately before the commencement of the Patents Amendment (Innovation Patents) Act 2000.
before the commencement of the Patents Amendment (Innovation Patents) Act 2000.
commencement day means the day the Patents Amendment (Innovation Patents) Act 2000 commences. old Act means the Patents Act 1990 as in force immediately
before the commencement of the Patents Amendment (Innovation Patents) Act 2000.
207
before the commencement of the Patents Amendment (Innovation Patents) Act 2000.
old Regulations means the Patents Regulations 1991 as in force immediately before the commencement of the Patents Amendment (Innovation Patents) Act 2000.
209
(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 this Treaty (hereinafter 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” means any administrative or judicial procedure relating to a patent application or a patent;
(vii) “depositary institution” means an institution which provides for the receipt, acceptance and storage of microorganisms and the furnishing of samples thereof;
(viii) “international depositary authority” means a depositary institution which has acquired the status of international depositary authority as provided in Article 7;
(xii) “Organization” means the World Intellectual Property Organization;
(xiii) “International Bureau” means the International Bureau of the Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI);
(xiv) “Director General” means the Director 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
213
Article 4
New Deposit
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 territory of certain kinds of microorganisms is restricted, such restriction should apply to microorganisms deposited, or destined for deposit, under this Treaty only where the restriction is necessary in view of national security or the dangers for health or the environment.
Article 6
Status of International Depositary Authority
215
(iii) be impartial and objective;
(vii) comply, in respect of the deposited microorganisms, with the requirement of secrecy, as prescribed in the Regulations;
(viii) furnish samples of any deposited microorganism under the conditions and in conformity with the procedure prescribed in the Regulations.
Article 7
Acquisition of the Status of International Depositary Authority
Article 8
Termination and Limitation of the Status of International Depositary Authority
217
six months from the date of the said notification, take appropriate action to obviate the need for making the proposed request.
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;
(vii) take any other appropriate action designed to further the objectives of the Union;
(viii) perform such other functions as are appropriate under this Treaty.
221
Article 11
International Bureau
Article 12
Regulations
(iii) any details useful in the implementation of this Treaty.
CHAPTER III
REVISION AND AMENDMENT
Article 13
Revision of the Treaty
223
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
225
Article 18
Signature and Languages of the Treaty
Article 19
Deposit of the Treaty; Transmittal of Copies; Registration of the Treaty
Article 20
Notifications
The Director General shall notify the Contracting States, the intergovernmental industrial property organizations and those States not members of the Union which are members of the International (Paris) Union for the Protection of Industrial Property of:
(iii) declarations filed under Article 9 (1) (a) and notifications of withdrawal under Article 9 (2) or (3);
(vii) any amendment of the Regulations;
(viii) the dates on which amendments to the Treaty or the Regulations enter into force;
(ix) denunciations received under Article 17.
227
(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
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
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
229
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 Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
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 “Treaty” means the Budapest Treaty on
the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.
In these Regulations, the word “Article” refers to the specified Article of the Treaty.
1.3 “Signature” In these Regulations, whenever the word “signature” is used, it shall be understood that, where the law of the State on the territory of which an international depositary authority is located requires the use of a seal
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 depositary authority may be a government agency,
including any public institution attached to a public administration other than the central government, or a private entity.
The requirements referred to in Article 6 (2) (ii) shall include in particular the following:
231
2.3 Furnishing of Samples The requirements referred to in Article 6 (2) (viii) shall include in particular the requirement that any international depositary authority
must furnish samples of deposited microorganisms in an expeditious and proper manner.
Rule 3
Acquisition of the Status of International Depositary Authority
(iii) where the said depositary institution intends to accept for deposit only certain kinds of microorganisms, specify such kinds;
(iv) indicate the amount of any fees that the said institution will, upon acquiring the status of international depositary authority, charge for storage, viability statements and furnishing of samples of microorganisms;
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
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 General to all Contracting States and
intergovernmental industrial property 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 intergovernmental industrial property organization having made the communication referred to in Article 7 (1) may, at any time thereafter, notify the Director General that its assurances are extended to specified kinds of microorganisms to which,
so far, the assurances have not extended. In such a case, and as far as the additional kinds of microorganisms 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.
233
(iii) where the Contracting State or intergovernmental industrial property organization making the 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.
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
4.3 Consequences for Deposits In the case of a termination of limitation of the status of international
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;
235
paragraph (a) (iv); the notification of the Director General and the notification received by him shall be promptly published by the International Bureau.
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
General and the notification received by him shall be promptly published by the International Bureau.
Rule 6
Making the Original Deposit or New Deposit
(iii) details of the conditions necessary for the cultivation of the microorganism, for its storage and for testing its viability and also, where a mixture of microorganisms is deposited, descriptions of the components of the mixture and at least one of the methods permitting the checking of their presence;
237
(iii) where a scientific description and/or proposed taxonomic designation was/were indicated in connection with the previous deposit, the most recent scientific description and/or proposed taxonomic designation as communicated 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 any of the languages, specified by such authority, it being understood that such specification must at least include the official language or languages indicated under Rule 3.1 (b) (v);
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 deposit is received in a condition which clearly indicates that the microorganism is missing or which precludes for scientific reasons the acceptance of the microorganism.
(b) Subject to paragraph (a), the international depositary authority shall accept the microorganism when all the requirements of Rule 6.1 (a) or
6.2 (a) and Rule 6.3 (a) are complied with. If any of those requirements are not complied with, the international depositary authority shall immediately notify the depositor in writing of that fact and invite him to comply with those requirements.
239
authority, to have been received, for the purposes of the Treaty, on the date on which such status was acquired.
Rule 7
Receipt
The international depositary authority shall issue to the depositor, in respect of each deposit of microorganism effected with it or transferred to it, a receipt in attestation of the fact that it has 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 original deposit shall indicate that it is issued by the depositary institution in its
capacity of international depositary authority under the Treaty and shall contain at least the following indications:
(iii) the date of the original deposit as defined in Rule 6.4 (c);
(iv) the identification reference (number, symbols, etc.) given by the depositor to the microorganism;
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
7.4 Contents in the Case of the New Deposit Any receipt referred to in Rule 7.1 and issued in the case of a new deposit effected under Article 4 shall be accompanied by a copy of the receipt of the previous deposit (within the meaning of Rule 6.2 (c)) and a copy of the most recent statement concerning the viability of the microorganism which was the subject of the previous deposit (within the
meaning of Rule 6.2 (c)) indicating that 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) applies, a reference to the fact that a scientific description and/or a proposed taxonomic designation has/have been indicated by the depositor;
(viii) the accession number given to the previous deposit (within the meaning of Rule 6.2 (c)).
7.5 Receipt in the Case of Transfer The international depositary authority to which samples of microorganisms are transferred under Rule 5.1 (a) (i) shall issue to the depositor, in respect of each deposit in relation with which a sample is transferred, a receipt indicating that it is issued by the depositary
institution in its capacity of international depositary authority under the Treaty and containing at least:
241
(iii) the date on which the transferred sample was received by the international depositary authority (date of the transfer);
(vii) the accession number given by the international depositary 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 description and/or proposed taxonomic designation of the microorganism, or where such scientific 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 receive a sample of the deposited microorganism under Rules 11.1, 11.2 or 11.3, the international depositary authority shall communicate to such party the most recent scientific description and/or proposed taxonomic 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
(a) Where, in connection with the deposit of a microorganism, the scientific description and/or taxonomic designation of the microorganism was/were not indicated, the depositor may later indicate or, where already indicated, may amend such description and/or designation.
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
(iii) the scientific description and/or proposed taxonomic designation of the microorganism;
(iv) in the case of an amendment, the last preceding scientific description and/or proposed taxonomic designation.
8.2 Attestation The international depositary authority shall, on the request 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, with all the care necessary to keep it viable and uncontaminated, for a period of at least five years after the most recent request for the furnishing 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 information to anyone whether a microorganism has been deposited with it under the Treaty. Furthermore, it shall not give any information 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 sample of the
said microorganism under Rule 11 and subject to the same conditions as provided in that Rule.
243
Rule 10
Viability Test and Statement
10.1 Obligation to Test
The international depositary authority shall test the viability 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 office, other authority, natural person or legal entity, other than the depositor, to whom or to which samples of the deposited microorganism 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 Rule 7.3 (iii) or, where a new deposit or a transfer has been made, the most recent of the dates referred to in Rules 7.4 (iii) and 7.5 (iii);
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
Rule 11
Furnishing of Samples
11.1 Furnishing of Samples to Interested Industrial Property Offices Any international depositary authority shall furnish a sample of any deposited microorganism to the industrial property office of any Contracting State or of any intergovernmental 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 sample is needed for the purposes of a patent procedure having effect in the said Contracting State or in the said organization or its member States;
(iv) the said sample and any information accompanying or resulting from it will be used only for the purposes of the said patent procedure.
245
11.2 Furnishing of Samples to or with the Authorisation of the Depositor
Any international depositary authority shall furnish a sample of any deposited microorganism:
11.3 Furnishing of Samples to Parties Legally Entitled
(iii) either that the certified party has a right to a sample of the microorganism under the law governing patent procedure before that office and, where the said law makes the said right dependent on the fulfilment of certain conditions, that that office is satisfied that such conditions have actually been fulfilled or that the certified party has affixed his signature on a form before that office and that, as a consequence of the signature of the said form, the conditions for furnishing a sample to the certified party are deemed to be fulfilled in accordance with the law governing patent procedure before that office, where the certified party has the said right under the said law prior to publication for the purposes of patent procedure by the said
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
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 may from time to time 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, natural person or legal entity (hereinafter referred to as “the requesting party”), furnish to it a sample of any microorganism where the accession number has been so communicated. In respect of deposited microorganisms whose accession numbers have been so communicated, the said office shall not be required to provide the certification referred to in Rule 11.3 (a).
247
French, on the request of that office or the international depositary 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;
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
with the said request, and of any forms or requests bearing the signature of the requesting party in accordance with Rule 11.3.
(h) The furnishing of samples referred to in Rule 11.1 shall be free of charge. Where the furnishing of samples is made under Rule 11.2 or 11.3, any fee payable under Rule 12.1 (a) (iv) shall be chargeable to the depositor, to the authorised party, to the certified party or to the requesting party, as the case may be, and shall be paid before or at the time of making the said request.
Where an application was filed as an international application under the Patent Cooperation Treaty, the reference 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 State for which the industrial property office is the “designated Office” within the meaning of that Treaty, and the certification of publication which is required by Rule 11.3 (a) (ii) shall, at the option of the industrial property office, be either a certification of international publication under the said Treaty or a certification of publication by the industrial property office.
Rule 12
Fees
(iii) subject to Rule 10.2 (e), first sentence, for the issuance of viability statements;
249
Rule 12bis
Computation of Time Limits 12bis. 1 Periods Expressed in Years When a period is expressed as one year or a certain number of years, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month.
Regulations under the Budapest Treaty on the International Schedule 1A Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
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 on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same 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 number of days, computation shall start on the day following the 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 Bureau referred to in the Treaty or these Regulations shall be made on paper or in electronic form.
251
(iii) any discontinuance of the functions of an international depositary authority, any refusal to accept certain kinds of microorganisms, and the measures taken in connection with such discontinuance or refusal;
Rule 14
Expenses of Delegations
14.1 Coverage of Expenses The expenses of each delegation participating in any session of the Assembly and in any committee, working group or other meeting dealing
with matters of concern to the Union shall be borne by the State or organisation which has appointed it.
Rule 15
Absence of Quorum in the Assembly
(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
253
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 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 Washington June 19, 1970, amended on October 2, 1979 and modified on February 3, 1984 and on October 3, 2001.
The Contracting States,
Desiring to make a contribution to the progress of science and technology,
Desiring to perfect the legal protection of inventions,
Desiring to simplify and render more economical the obtaining of protection for inventions where protection is sought in several countries,
Desiring to facilitate and accelerate access by the public to the technical information contained in documents describing new inventions,
Desiring to foster and accelerate the economic development of developing countries through the adoption of measures designed to increase the efficiency of their legal systems, whether national or regional, instituted for the protection of inventions by providing easily accessible information on the availability of technological solutions applicable to their special needs and by facilitating access to the ever expanding volume of modern technology,
Convinced that cooperation among nations will greatly facilitate the attainment of these aims,
Have concluded the present Treaty.
Introductory Provisions
Article 1
Establishment of a Union
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;
257
(xii) “national Office” means the government authority of a Contracting State entrusted with the granting of patents; references to a “national Office” shall be construed 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 that the said States have authorized that authority to assume the obligations and exercise the powers which this Treaty and the Regulations provide for in respect of national Offices;
(xiii) “designated Office” means the national Office of or acting for the State designated by the applicant under Chapter I of this Treaty;
(xiv) “elected Office” means the national Office of or acting for the State elected by the applicant under Chapter II of this Treaty;
(xv) “receiving Office” means 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” means the World Intellectual Property Organization;
(xix) “International Bureau” means the International Bureau of the Organization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI);
(xx) “Director General” means the Director 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 prescribed requirement of unity of invention;
(iv) be subject to the payment of the prescribed fees.
Article 4
The Request
259
treaty concerning a regional patent, the applicant cannot limit 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 treated as designation of all the States party to that treaty; if, under the national law of the designated 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 prescribed data concerning the applicant and the agent (if any);
Article 5
The Description
The description shall disclose the invention in a manner 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 claims shall define the matter 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
261
for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions 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 international application shall be filed with the prescribed receiving Office, which will check and process it as provided in this Treaty and the Regulations.
Article 11
Filing Date and Effects of the International Application
(iii) the international application contains at least the following elements:
Article 12
Transmittal of the International Application to the International Bureau and the International Searching Authority
263
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;
Article 15
The International Search
265
law, request that a search similar to an international search (“international-type search”) be carried out on such application.
Article 16
The International Searching Authority
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 international search report will be established.
267
Article 18
The International Search Report
Article 19
Amendment of the Claims Before the International Bureau
Article 20
Communication to Designated Offices
269
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
(iii) if the applicant fails to perform the acts referred to in Article 22 within the applicable time limit.
271
(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
Article 26
Opportunity to Correct Before Designated Offices
No designated Office shall reject an international application on the grounds of non-compliance with the requirements 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 national law for the same or comparable situations in respect of national applications.
Article 27
National Requirements
273
requirements, instead of the latter requirements, to international applications, except where the applicant insists that the requirements provided for by this Treaty and the Regulations be applied to his international application.
Article 28
Amendment of the Claims, the Description, and the Drawings, Before Designated Offices
Article 29
Effects of the International Publication
(iii) a translation into the latter language has been transmitted by the applicant to the actual or prospective unauthorized user of the invention claimed in the international application, or
275
Article 30
Confidential Nature of the International Application
(iii) date of the receipt of a copy of the international application under Article 22.
CHAPTER II
Article 31
Demand for International Preliminary Examination
277
Article 32
The International Preliminary Examining Authority
Article 33
The International Preliminary Examination
Article 34
Procedure Before the International Preliminary Examining Authority
279
(iii) no observations are intended to be made under Article 35 (2), last sentence.
the said Authority shall not go into the questions referred to in Article 33 (1) and shall inform the applicant of this opinion and the reasons therefor.
(b) If any of the situations referred to in subparagraph (a) is found 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
281
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
283
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
No elected Office receiving the international preliminary examination report may require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the 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 elected State whose law provides for the grant of inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, or utility certificates of addition, the applicant may indicate, as prescribed in the Regulations, that his international application is for the grant, as far as that State is concerned, of an inventor’s certificate, a utility certificate, or a utility model, rather than a patent, or that it is for the grant of a
285
patent or certificate of addition, an inventor’s certificate of addition, or a utility certificate of addition, and the ensuing effect shall be governed by the applicant’s choice. For the purposes of this Article and any Rule thereunder, Article 2 (ii) shall not apply.
Article 44
Seeking Two Kinds of Protection
In respect of any designated or elected State whose law permits 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 applicant 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 translation of the international application, the scope of any patent granted on that application exceeds the scope of the international application in its original language, the competent authorities of the Contracting State concerned may accordingly and retroactively limit the scope of the patent, and declare it null and void to the extent that its scope has exceeded the scope of the international application in its original language.
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 before the national Office with which the international application was filed, shall be entitled to practice before the International Bureau and the competent International Searching Authority and competent International Preliminary Examining Authority in respect of that application.
287
CHAPTER IV
Technical Services
Article 50
Patent Information Services
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 Treaty. Such provisions are not applicable to the present Chapter or to its implementation.
289
CHAPTER V
Administrative Provisions
Article 53
Assembly
(iii) give directions to the International Bureau concerning the preparation for revision conferences;
(vii) adopt the financial regulations of the Union;
(viii) establish such committees and working groups as it deems appropriate to achieve the objectives of the Union;
291
Article 54
Executive Committee
293
Article 55
International Bureau
Article 56
Committee for Technical Cooperation
(iii) on the initiative of the Assembly or the Executive Committee, to the solution of the technical problems specifically involved in the establishment of a single International Searching Authority.
295
Article 57
Finances
(iii) gifts, bequests, and subventions;
297
Article 58
Regulations
(iii) concerning any details useful in the implementation of the provisions of this Treaty.
CHAPTER VI
Disputes
Article 59
Disputes
Subject to Article 64 (5), any dispute between two or more Contracting States concerning the interpretation or application of this Treaty or the Regulations, not settled by negotiation, may, by any one of the States concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the States concerned agree on some other method of settlement. The Contracting State bringing the dispute before the Court shall inform the International Bureau; the International Bureau shall bring the matter to the attention of the other Contracting States.
299
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
301
most recent annual statistics published by the International Bureau,
(iii) the national Office of the State has received at least 10,000 applications from nationals or residents of foreign countries according to the most recent annual statistics published by the International Bureau.
Article 64
Reservations
is not exempted from the limitations provided for in Articles 30 and 38.
303
Article 65
Gradual Application
Article 66
Denunciation
Article 67
Signature and Languages
Article 68
Depositary Functions
305
Article 69
Notifications
The Director General shall notify the Governments of all States party 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).