Prepared by the Office of Parliamentary Counsel, Canberra
Patents Regulations 1991
Statutory Rules No. 71, 1991
made under the
Patents Act 1990
Compilation No. 64
Compilation date: 24 February 2017
Includes amendments up to: F2016L01754
Registered: 24 February 2017
This compilation is in 2 volumes
Volume 1: Chapters 1 to 23
Volume 2: Schedules and Endnotes
Each volume has its own contents
Authorised Version F2017C00128 registered 24/02/2017
About this compilation
This compilation
This is a compilation of the Patents Regulations 1991 that shows the text of the law as
amended and in force on 24 February 2017 (the compilation date).
The notes at the end of this compilation (the endnotes) include information about amending
laws and the amendment history of provisions of the compiled law.
Uncommenced amendments
The effect of uncommenced amendments is not shown in the text of the compiled law. Any
uncommenced amendments affecting the law are accessible on the Legislation Register
(www.legislation.gov.au). The details of amendments made up to, but not commenced at, the
compilation date are underlined in the endnotes. For more information on any uncommenced
amendments, see the series page on the Legislation Register for the compiled law.
Application, saving and transitional provisions for provisions and amendments
If the operation of a provision or amendment of the compiled law is affected by an
application, saving or transitional provision that is not included in this compilation, details are
included in the endnotes.
Editorial changes
For more information about any editorial changes made in this compilation, see the endnotes.
Modifications
If the compiled law is modified by another law, the compiled law operates as modified but the
modification does not amend the text of the law. Accordingly, this compilation does not show
the text of the compiled law as modified. For more information on any modifications, see the
series page on the Legislation Register for the compiled law.
Self-repealing provisions
If a provision of the compiled law has been repealed in accordance with a provision of the
law, details are included in the endnotes.
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Contents
Chapter 1—Introductory 1 1.1 Name of Regulations ........................................................ 1
1.3 Interpretation .................................................................... 1
1.3A Meaning of completed in relation to a search ................... 3
1.4 Meaning of Convention country ....................................... 3
1.4A Meaning of eligible importing country ............................. 4
1.5 Deposit requirements: prescribed period .......................... 4
1.6 Secret use—prescribed period .......................................... 5
1.7 Verification of translations of international
applications....................................................................... 5
1.8 Completion of applications ............................................... 5
Chapter 2—Patent rights, ownership and validity 6 2.1 Applications by co-owners for directions ......................... 6
2.2 Information made publicly available—recognised
exhibitions ........................................................................ 6
2.2A Information made publicly available—learned
societies ............................................................................ 7
2.2B Information made publicly available—reasonable
trial of invention ............................................................... 7
2.2C Information made publicly available—other
circumstances.................................................................... 8
2.2D Information made publicly available without
consent—period................................................................ 8
2.3 Divisional applications—period ....................................... 8
2.4 Prescribed period: patents of addition............................... 9
2.5 Prescribed period: assertion that invention is not a
patentable invention.......................................................... 9
2.6 Prescribed period: notification of assertion of
invalidity of innovation patent .......................................... 9
2.7 Documents to accompany notice of assertion of
invalidity........................................................................... 9
Chapter 3—From application to acceptance 11
Part 1—Inventions generally 11
Division 1—Applications 11
3.1 Prescribed documents: patent applications ..................... 11
3.1A Applicant taken to be nominated person......................... 11
3.2 Provisional specifications ............................................... 12
3.2A Specifications—standard patents .................................... 12
3.2AB PCT application—title of specification........................... 13
3.2B Specifications: formalities check for innovation
patents............................................................................. 13
3.2C Specifications—formalities check for PCT
application ...................................................................... 14
3.3 Abstracts ......................................................................... 15
3.4 Substitute abstracts ......................................................... 16
3.5 Filing date—patent applications other than PCT
applications..................................................................... 16
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3.5AA Filing date—PCT applications........................................ 17
3.5A Filing date: incomplete specifications............................. 17
3.5AB PCT applications—international applications taken
to be applications under the Act...................................... 18
3.5AC PCT applications—amendment ...................................... 19
3.5AD PCT applications—prescribed requirements................... 20
3.5AE PCT applications—prescribed period ............................. 20
3.5AF PCT applications—translations and prescribed
documents....................................................................... 20
3.5AG Convention application—prescribed particulars ............. 21
3.5B Filing of documents outside business hours.................... 21
3.6 Requests to make determinations between
interested parties ............................................................. 21
3.7 Form of certain applications ........................................... 21
3.8 Time within which applications are to be made
following certain decisions and declarations .................. 22
3.9 Prescribed period: treatment of complete
application as provisional ............................................... 22
3.10 Prescribed period: making of complete
applications..................................................................... 22
3.11 Prescribed period—making Convention
application ...................................................................... 22
Division 2—Priority date of claim 23
3.12 What this Division is about............................................. 23
3.13 Priority date for application by person declared
under section 36 of the Act ............................................. 23
3.13A Priority date for PCT application .................................... 24
3.13B Priority date for Convention application......................... 26
3.13C Priority date for complete application associated
with provisional application............................................ 27
3.13D Priority date for divisional application filed prior
to grant of patent............................................................. 28
3.13E Priority date for divisional application after grant
of innovation patent ........................................................ 29
3.14 Priority dates: certain amended claims ........................... 29
Division 3—Examination 30
3.14A Request for international-type search relating to
provisional application.................................................... 30
3.14B Request for preliminary search and opinion
relating to complete application...................................... 30
3.14C Priority dates—Convention applications and PCT
applications: prescribed period for disregarding
earlier applications.......................................................... 30
3.14D Prescribed documents: basic application ........................ 30
3.15 Requirements of request for examination ....................... 31
3.16 Prescribed grounds and period for examination.............. 31
3.17 Requirement for Commissioner to direct or
expedite examination ...................................................... 32
3.17A PCT applications—Commissioner not to give
certain directions............................................................. 32
3.17B PCT applications—examination requirements................ 32
3.17C PCT applications—notice if examination declined......... 33
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3.18 Report of Commissioner: examination ........................... 33
3.19 Conduct of examination: standard patents ...................... 34
3.22 Disclosure of patent documents and information to
International Bureau etc.................................................. 34
Part 2—Inventions that are micro-organisms 35 3.23 Documents in accepted applications and patents
involving micro-organisms ............................................. 35
3.24 Commissioner may request samples and viability
statement......................................................................... 35
3.25 Request for Commissioner’s certification
authorising release of sample of a micro-organism......... 36
3.25A Request for certification—micro-organism subject
of application for standard patent.................................... 36
3.25B Grant of certification—when Commissioner must
grant certification............................................................ 37
3.25C Grant of certification—limited use undertaking ............. 38
3.25D Grant of certification—order under section 133 of
Act .................................................................................. 38
3.25E Grant of certification—exploitation for purposes
of Commonwealth or a State........................................... 38
3.25F Grant of certification—expired patent etc....................... 39
3.25G Imposing conditions on certification............................... 39
3.25H Notice of decision on certification request...................... 39
3.26 Breach of undertakings given in respect of
micro-organisms ............................................................. 39
3.27 Procedure in proceedings for breach of an
undertaking ..................................................................... 40
3.28 Relief in proceedings for breach of undertakings ........... 40
3.29 Notification that a deposit requirement has ceased
to be satisfied .................................................................. 41
3.30 Prescribed period: deposit requirements taken to
be satisfied ...................................................................... 41
3.31 Application for declaration that deposit
requirements are not satisfied ......................................... 42
3.32 Provisional specifications—prescribed
circumstances.................................................................. 43
Chapter 4—Publication 45 4.1 Prescribed information: applicants and
applications..................................................................... 45
4.2 Notice that specification is open to public
inspection........................................................................ 45
4.3 Prescribed documents: public inspection ........................ 45
4.4 Publication and inspection of PCT applications.............. 46
Chapter 5—Opposition 48
Part 5.1—Preliminary 48 5.1 What this Chapter is about.............................................. 48
5.2 Definitions ...................................................................... 48
5.3 Commissioner may give direction about filing
document or evidence ..................................................... 49
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Part 5.2—Filing of opposition documents 50
Division 5.2.1—Substantive opposition 50
5.4 Notice of opposition—standard patent opposition.......... 50
5.5 Statement of grounds and particulars—standard
patent opposition............................................................. 50
5.6 Notice of opposition and statement of grounds and
particulars—section 101M opposition ............................ 50
5.7 Filing of evidence ........................................................... 51
5.8 Evidentiary periods......................................................... 51
5.9 Extension of time for filing evidence.............................. 52
Division 5.2.2—Procedural opposition 53
5.10 Notice of opposition ....................................................... 53
5.11 Statement of grounds and particulars.............................. 53
5.12 Practice and procedure.................................................... 54
Part 5.3—Amendments to opposition documents 55 5.13 Application of regulation 22.22 ...................................... 55
5.14 Notice of opposition—correction of errors or
mistake............................................................................ 55
5.15 Notice of opposition—change of opponent .................... 55
5.16 Statement of grounds and particulars .............................. 55
Part 5.4—Dismissal of opposition 57 5.17 Dismissal on request ....................................................... 57
5.18 Dismissal on initiative of Commissioner ........................ 57
Part 5.5—Hearing of opposition 58 5.19 Hearing and decision—re-examination........................... 58
5.20 Hearing and decision—other circumstances ................... 58
Part 5.6—Miscellaneous 60 5.21 Opposition to amendment—grounds .............................. 60
5.22 Commissioner may give directions................................. 60
5.23 Commissioner may consult documents........................... 60
5.24 Representations to Commissioner—formal
requirements ................................................................... 60
5.25 Extension of time for filing—amendment at
Commissioner’s direction ............................................... 61
5.26 Withdrawal of opposition ............................................... 61
Chapter 6—Grant and term of patents 62
Part 1—Patents generally 62 6.1 Publication of notice of grant of standard patent ............ 62
6.1A Prescribed particulars—grant of standard patent ............ 62
6.2 Prescribed period: grant of standard patent..................... 62
6.2A Prescribed particulars—grant of innovation patent......... 62
6.3 Date of patent.................................................................. 62
Part 2—Extension of pharmaceutical patents 65 6.7 Definitions ...................................................................... 65
6.8 Information to accompany application............................ 65
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6.9 Application without pre-TGA marketing approval ......... 65
6.10 Application with pre-TGA marketing approval .............. 65
6.11 Further information......................................................... 66
Chapter 6A—Divisional applications 67 6A.1 Divisional applications before grant—standard and
innovation patents........................................................... 67
6A.2 Divisional applications after grant—innovation
patents............................................................................. 67
Chapter 7—Patents of addition 68 7.1 Form of application for grant of patent of addition
etc ................................................................................... 68
7.2 Form of application for revocation of patent and
grant of patent of addition instead................................... 68
Chapter 9—Re-examination 69 9.1 Notice of Commissioner’s decision to re-examine
complete specification .................................................... 69
9.2 Request for re-examination of complete
specification.................................................................... 69
9.3 Copy of report on re-examination................................... 70
9.4 Prescribed period: statement disputing report by
Commissioner ................................................................. 70
9.5 Completion of re-examination ........................................ 70
Chapter 9A—Examination of innovation patents 72 9A.1 Request for examination ................................................. 72
9A.2 Examination of complete specification........................... 72
9A.3 Conduct of examination.................................................. 72
9A.4 Period for examination.................................................... 73
9A.5 Validity of innovation patent .......................................... 73
Chapter 10—Amendments 74 10.1 Form of amendments ...................................................... 74
10.2 Commissioner to consider and deal with requests
for leave to amend .......................................................... 75
10.2A Documents considered for determining whether
amendment allowed ........................................................ 77
10.2B Amendments not allowable for patent requests .............. 77
10.2C Amendments not allowable for complete
specifications .................................................................. 78
10.3 Amendments not allowable for other documents............ 78
10.4 Commissioner to refuse request for leave to amend ....... 79
10.5 Commissioner to grant leave to amend........................... 79
10.6 Time for allowance of amendments................................ 80
10.6A Deferred consideration of request for amendment .......... 81
10.6B Revocation of grant of leave ........................................... 81
10.7 Rectification of Register ................................................. 82
10.8 Prescribed decisions: appeal to Federal Court ................ 82
10.10 Prescribed period: filing of court order ........................... 83
10.11 Form of direction by Commissioner: patents.................. 83
10.12 Form of direction by Commissioner: applications .......... 83
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10.14 Form of request: claim under assignment or
agreement........................................................................ 83
Chapter 11—Infringement 84 11.1 Infringement exemptions: prescribed foreign
countries ......................................................................... 84
Chapter 12—Compulsory licences and revocation of
patents 85
Part 1—Compulsory licences (general) 85 12.1 Applications for orders for compulsory licences ............ 85
12.2 Prescribed period: revocation of patent........................... 86
Part 2—Patented pharmaceutical invention compulsory
licences (for manufacture and export to eligible
importing countries) 87 12.2A Applications for PPI orders............................................. 87
12.2B PPI compulsory licences—notification
requirements ................................................................... 87
12.2C PPI compulsory licences—labelling and marking
of product........................................................................ 88
12.2D PPI compulsory licences—shipment information........... 88
12.2E PPI compulsory licences—giving information to
the Commissioner ........................................................... 89
12.2F Dealing with information provided under
regulation 12.2E.............................................................. 90
Part 3—Surrender and revocation of patents 92 12.3 Form of notice: offer to surrender patent ........................ 92
12.4 Applications to revoke patents........................................ 92
Chapter 13—Withdrawal and lapsing of applications
and ceasing of patents 94 13.1 Publication of notice of withdrawal of application ......... 94
13.1A Period in which standard patent applications may
not be withdrawn ............................................................ 94
13.1B Period in which innovation patent applications
may not be withdrawn..................................................... 94
13.1C PCT applications—prescribed circumstances in
which application may be withdrawn or taken to
be withdrawn .................................................................. 94
13.3 Prescribed period: continuation fees ............................... 94
13.4 Prescribed period: acceptance of request and
specification.................................................................... 95
13.5 If applications lapse ........................................................ 97
13.5A PCT application—prescribed circumstances for
lapsing of application...................................................... 97
13.6 Time for payment of renewal fee for patent.................... 97
13.7 Prescribed period: ceasing of innovation patents ............ 98
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Chapter 15—Special provisions relating to associated
technology 99 15.1 Time for restoration of application for patent ................. 99
15.2 Requirements for reinstatement of international
applications..................................................................... 99
15.3 Prescribed period: order relating to standard patent........ 99
Chapter 17—The Crown 100 17.1 Application for declaration: exploitation of
innovation patent .......................................................... 100
17.1A Prescribed period: order relating to standard patent...... 100
17.2 Prescribed period, document and fee: filing of
international applications .............................................. 100
Chapter 19—The register and official documents 101 19.1 Particulars to be registered............................................ 101
19.2 Request for information from Commissioner ............... 101
Chapter 20—Individual Patent Attorneys 102
Part 1—Introduction 102 20.1A Application of this Chapter........................................... 102
20.1B Performance of functions and exercise of powers......... 102
20.1C Conduct in New Zealand does not constitute an
offence under this Chapter ............................................ 102
20.1 Interpretation ................................................................ 102
Part 2—Obtaining registration for first time 104 20.2 Form of application....................................................... 104
20.3 Evidence that applicant meets registration
requirements ................................................................. 104
20.4 Certificate of registration .............................................. 104
20.5 Evidence of academic qualifications............................. 104
20.6 Academic qualifications ............................................... 105
20.7 Evidence of knowledge requirements ........................... 105
20.8 Knowledge requirements .............................................. 106
20.9 Exemption from a requirement in Schedule 5............... 106
20.10 Employment requirements ............................................ 107
20.11 Statements of skill......................................................... 108
20.12 Prescribed offences ....................................................... 108
Part 3—Accreditation of courses of study 109 20.13 Accreditation of courses of study.................................. 109
20.14 Provisional accreditation............................................... 109
Part 4—Board examinations 111 20.15 Board examinations ...................................................... 111
20.16 Time for holding Board examinations .......................... 111
20.17 Examinable subject matter ............................................ 111
20.18 Admission to sit for a Board examination..................... 111
20.19 Notification of Board examination results .................... 111
20.20 Reasons for failure of Board examination .................... 111
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20.21 Supplementary Board examination ............................... 112
Part 5—Maintaining registration 113 20.22 Requirements for remaining on Register of Patent
Attorneys ...................................................................... 113
20.23 Payment of annual registration fee................................ 113
20.24 Continuing professional education—number of
hours ............................................................................. 113
20.25 Method of demonstrating that continuing
professional education has been undertaken ................. 114
Part 6—Removal of attorney’s name from Register of Patent
Attorneys 115 20.26 Voluntary removal of name from Register of
Patent Attorneys............................................................ 115
20.27 Failure to pay annual registration fee............................ 115
20.28 Failure to comply with continuing professional
education requirements ................................................. 115
Part 6A—Suspension of registration 116 20.28A Requirement to notify of serious offence...................... 116
20.28B Suspension of registration—serious offence................. 116
Part 7—Restoring attorney’s name to Register of Patent
Attorneys 118 20.29 Restoring attorney’s name to Register of Patent
Attorneys ...................................................................... 118
20.30 Restoring attorney’s name to Register of Patent
Attorneys following payment of unpaid fee.................. 118
20.31 Restoring attorney’s name to Register of Patent
Attorneys in other circumstances .................................. 119
Part 8—Discipline 120
Division 1—General 120
20.32 Definitions .................................................................... 120
20.33 Role of Board in disciplinary proceedings.................... 120
20.34 Board may require attorney to cooperate with
investigation.................................................................. 121
20.35 Commencing disciplinary proceedings ......................... 121
Division 2—Proceedings in Disciplinary Tribunal 122
20.36 Panel of the Disciplinary Tribunal to be
constituted..................................................................... 122
20.36A Meetings of Panel of Disciplinary Tribunal.................. 122
20.36B Procedure of Panel of Disciplinary Tribunal................. 122
20.36C Panel Chair unavailable to complete hearing................ 123
20.36D Member other than the Panel Chair unavailable to
complete hearing........................................................... 123
20.36E No member ordinarily resident in same country as
registered patent attorney subject to proceedings.......... 124
20.37 Notification of hearing of disciplinary proceedings ...... 125
20.38 Hearings to be public except in special
circumstances................................................................ 125
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20.39 Representation before Panel of Disciplinary
Tribunal ........................................................................ 125
20.40 Summoning of witnesses .............................................. 125
20.41 Offences by persons appearing before a Panel of
Disciplinary Tribunal.................................................... 126
20.42 Protection of certain persons......................................... 127
20.43 Decision of Panel of Disciplinary Tribunal................... 127
20.44 Penalties—professional misconduct ............................. 128
20.45 Penalties—unsatisfactory professional conduct............ 128
20.46 Finding that attorney was unqualified at time of
registration .................................................................... 129
20.47 Finding that registration obtained by fraud ................... 129
20.48 Matters that may be considered in determining
penalties........................................................................ 129
20.49 Findings of Panel of Disciplinary Tribunal................... 129
20.50 Notification and publication of decisions of Panel
of Disciplinary Tribunal................................................ 130
20.51 Completion of outstanding business ............................. 130
20.52 Former attorney may be required to provide
assistance ...................................................................... 131
Part 9—Rights of registered patent attorneys 132 20.53 Lien............................................................................... 132
Part 10—Administration 133
Division 1—Trans-Tasman IP Attorneys Board 133
20.56 Resignation and removal of members from Board ....... 133
20.57 Meetings of Board ........................................................ 134
20.58 Member presiding at meetings of Board ....................... 134
20.59 Quorum for Board meetings ......................................... 134
Division 2—Trans-Tasman IP Attorneys Disciplinary Tribunal 135
20.61 Establishment of the Trans-Tasman IP Attorneys
Disciplinary Tribunal.................................................... 135
20.61A Functions of Disciplinary Tribunal ............................... 135
20.62 Membership of the Disciplinary Tribunal etc. .............. 135
20.63 Eligibility for appointment as Tribunal member ........... 136
20.63A Acting President............................................................ 136
20.63B Acting Tribunal members ............................................. 137
20.64 Disclosure of interests................................................... 137
Chapter 20A—Incorporated Patent Attorney 139
Part 1—Introduction 139 20A.1 Application of Chapter 20A.......................................... 139
20A.1A Performance of functions and exercise of powers......... 139
20A.1B Conduct in New Zealand does not constitute an
offence under this Chapter ............................................ 139
20A.2 Definitions .................................................................... 139
Part 2—Obtaining registration for first time 140 20A.3 Form of application....................................................... 140
20A.4 Certificate of registration .............................................. 140
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Part 3—Maintaining registration 141 20A.5 Requirements for remaining on Register of Patent
Attorneys ...................................................................... 141
Part 4—Removal from Register of Patent Attorneys 142 20A.6 Voluntary removal of name from Register of
Patent Attorneys............................................................ 142
20A.7 Failure to pay annual registration fee............................ 142
20A.8 Failure to maintain professional indemnity
insurance....................................................................... 142
Part 5—Discipline 143
Division 1—General 143
20A.9 Definitions .................................................................... 143
20A.10 Board may apply for cancellation or suspension of
incorporated patent attorney’s registration.................... 143
Division 2—Proceedings in Disciplinary Tribunal 144
20A.11 Panel of the Disciplinary Tribunal to be
constituted..................................................................... 144
20A.11A Meetings of Panel of Disciplinary Tribunal.................. 144
20A.11B Procedure of Panel of Disciplinary Tribunal................. 144
20A.11C Panel Chair unavailable to complete hearing................ 145
20A.11D Member other than the Panel Chair unavailable to
complete hearing........................................................... 145
20A.11E No member ordinarily resident in same country in
which incorporated patent attorney subject to
proceedings is registered............................................... 146
20A.12 Notification of hearing.................................................. 147
20A.13 Hearings to be public except in special
circumstances................................................................ 147
20A.14 Representation before a Panel of Disciplinary
Tribunal ........................................................................ 147
20A.15 Summoning of witnesses .............................................. 147
20A.16 Offences by persons appearing before a Panel of
Disciplinary Tribunal.................................................... 148
20A.17 Protection of certain persons......................................... 149
20A.18 Decision of Panel of Disciplinary Tribunal................... 149
20A.19 Notification and publication of decisions of Panel
of Disciplinary Tribunal................................................ 150
20A.20 Completion of outstanding business ............................. 151
20A.21 Former attorney may be required to provide
assistance ...................................................................... 151
Part 6—Restoring attorney’s name to Register of Patent
Attorneys 153 20A.22 Restoring name to Register of Patent Attorneys ........... 153
Chapter 21—Administration 154 21.1 Patent Office and sub-offices........................................ 154
21.2 Employees to whom Commissioner may delegate
(Act s 209(1))................................................................ 154
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Chapter 22—Miscellaneous 155
Part 1—Fees and costs 155
Division 1—Fees 155
22.1 Fees generally ............................................................... 155
22.2 General fees .................................................................. 155
22.2AA Approved means ........................................................... 156
22.2A Failure to pay: patent attorneys fees.............................. 156
22.2B Failure to pay: filing fees for patent requests ................ 156
22.2C Failure to pay: certain other filing fees etc.................... 157
22.2D Failure to pay: fees payable by patentee for
requests under s 101A(b) of the Act ............................. 157
22.2EA Failure to pay: fee for grant of leave to amend
specification (person invited to pay) ............................. 157
22.2F Consequence if Commissioner does not invite
payment ........................................................................ 158
22.2G Failure to pay: hearing fees........................................... 158
22.2H Failure to pay: certain fees for actions by
Commissioner ............................................................... 159
22.2I Failure to pay: acceptance fee....................................... 159
22.3 General fees for international applications.................... 159
22.4 Fees for international applications payable for the
benefit of the International Bureau ............................... 160
22.5 PCT Fund...................................................................... 160
22.6 Exemption from fees..................................................... 160
22.7 Refund of certain fees ................................................... 161
Division 2—Costs 162
22.7A Proceedings to which this Division applies .................. 162
22.8 Costs ............................................................................. 162
Part 2—Other matters 163 22.9 Death of applicant or nominated person ....................... 163
22.10 Address for service ....................................................... 163
22.10A Address for correspondence.......................................... 163
22.10AA Period for doing certain acts—office not open for
business......................................................................... 164
22.10AB Days when office not open for business ....................... 164
22.10AC Prescribed acts .............................................................. 165
22.11 Extension of time.......................................................... 165
22.12 Evidence ....................................................................... 166
22.13 Declarations .................................................................. 166
22.14 Directions not otherwise prescribed.............................. 166
22.15 Documents in English and English translations ............ 167
22.16 Documents other than specifications and abstracts ....... 167
22.17 Incapacity of certain persons ........................................ 167
22.19 Copies of certain documents to be supplied.................. 168
22.20 International applications and the Patent Office ........... 168
22.21 Protection or compensation of certain persons.............. 168
22.22 Exercise of discretionary powers by Commissioner ..... 169
22.23 Written submissions and oral hearings ......................... 169
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22.24 Practice and procedure other than for opposition
proceedings................................................................... 170
22.25 Requirements cannot be complied with for
reasonable cause ........................................................... 170
22.26 Review of decisions ...................................................... 171
22.27 Documents not to infringe copyright—prescribed
documents..................................................................... 172
Chapter 23—Transitional and savings provisions 173
Part 1—General 173 23.1 Saving: prohibition orders............................................. 173
23.2 Delegation: certain matters referred to in this
Chapter ......................................................................... 173
23.3 Opposition to grant: practice and procedure ................. 173
23.4 Certain opposition: practice and procedure................... 173
23.5 Fees payable for certain matters relating to
opposition ..................................................................... 174
23.6 Certain delegations: opposition..................................... 174
23.7 Certain undertakings ..................................................... 174
23.8 Restoration of lapsed applications or ceased
patents........................................................................... 174
23.9 Certain continuation and renewal fees .......................... 175
23.10 Fee taken to have been paid .......................................... 175
23.11 Supply of product referred to in section 117 of the
Act ................................................................................ 175
23.12 Certain withdrawn, abandoned or refused
applications................................................................... 176
23.13 Certain certificates of validity....................................... 176
23.14 Certain action under the 1952 Act ................................ 176
23.15 Amendment of petty patents ......................................... 176
23.16 Certain applications under 1952 Act: time for
acceptance..................................................................... 176
23.17 PCT applications to which subsection 89(5) of the
Act does not apply ........................................................ 177
23.18 Certain priority dates: saving ........................................ 177
23.25 Fees............................................................................... 177
23.26 Certain actions and proceedings ................................... 178
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 .................................................................... 178
23.33 Transitional: examination of innovation patents
converted from petty patent applications ...................... 179
23.34 Transitional: certain PCT applications.......................... 179
23.35 Transitional: payment of fees for petty patents ............. 179
Part 2—Amendments made by particular instruments 181 23.36 Amendments made by Intellectual Property
Legislation Amendment (Raising the Bar)
Regulation 2013 (No. 1)................................................ 181
23.37 Amendments made by Intellectual Property
Legislation Amendment (TRIPS Protocol and
Other Measures) Regulation 2015 ................................ 189
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Part 3—Transitional provisions for Schedule 4 to the
Intellectual Property Laws Amendment Act 2015 and
Schedule 1 to the Intellectual Property Legislation
Amendment (Single Economic Market and Other
Measures) Regulation 2016 191 23.38 Definitions .................................................................... 191
23.39 Removal of name from Register if New Zealand
court determines person should not practise as a
patent attorney in New Zealand .................................... 191
23.40 Restoring attorney’s name after advice from New
Zealand Commissioner of Patents................................. 191
23.41 Transitional—registration as a patent attorney ............. 192
23.42 Continuation of certain disciplinary proceedings—
individuals .................................................................... 193
23.43 Continuation of certain disciplinary proceedings—
incorporated patent attorneys ........................................ 193
23.44 Termination of appointment of Patents and Trade
Marks Attorneys Disciplinary Tribunal upon
completion of all proceedings ....................................... 194
23.45 Transitional—exemptions from patents knowledge
requirements ................................................................. 194
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Chapter 1—Introductory
1.1 Name of Regulations
These Regulations are the Patents Regulations 1991.
1.3 Interpretation
(1) In these Regulations, unless the contrary intention appears:
AAT means the Administrative Appeals Tribunal.
abstract means abstract of a complete specification.
acceptance means:
(a) in relation to a patent request and complete specification relating to an
application for a standard patent—acceptance of the patent request and
complete specification under section 49 of the Act; and
(b) in relation to a patent request and complete specification relating to an
application for an innovation patent—acceptance of the patent request and
complete specification under section 52 of the Act.
approved digital library means a library or other facility that the Commissioner
specifies as a digital library, for this definition, in the Official Journal.
Example: The library administered by the International Bureau of the World Intellectual Property
Organization, known as the “Digital Access Service for Priority Documents” or
“DAS”.
approved means, for doing an action or paying a fee, means the means specified
for the action or payment by the Commissioner in a notice made under
regulation 22.2AA and published by the Commissioner.
basic documents means documents filed in a Convention country in respect of a
basic application.
certificate of verification means a statement:
(a) that a document to which the statement relates is a true and complete
translation of the accompanying document to the best of the knowledge of
the person who signs the statement; and
(b) that is dated and signed.
Code of Conduct means the standard of practice titled “Code of Conduct for
Patent and Trade Marks Attorneys” that is established by the Board from time to
time.
competent authority, in relation to a Convention country, means a person who,
under the laws of the country or the arrangements in place in the country, is
authorised to certify copies of specifications of patents for the country.
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Council for TRIPS means the Council for Trade-Related Aspects of Intellectual
Property Rights established under Article IV of the WTO Agreement.
Disciplinary Tribunal means the Trans-Tasman IP Attorneys Disciplinary
Tribunal established by regulation 20.61.
eligible importing country: see regulation 1.4A.
former attorneys Regulations means the Patent Attorneys Regulations as in
force under the 1952 Act immediately before 30 April 1991.
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.
least developed country means a country included in the list of least developed
countries maintained by the United Nations, as in force from time to time.
Note: The list of least developed countries could in 2015 be viewed on the United Nations’
website (http://www.un.org).
New Zealand has the meaning given by section 29 of the Interpretation Act 1999
of New Zealand, as in force at the commencement of this definition.
ordinarily resident: a person is taken to be ordinarily resident in a country if:
(a) the person has his or her home in that country; or
(b) that country is the country of his or her permanent abode even though he or
she is temporarily absent from that country.
However, the person is taken not to be so resident if he or she resides in that
country for a special or temporary purpose only.
Panel Chair, in relation to a Panel of the Disciplinary Tribunal, means:
(a) the President; or
(b) if the President is unable to perform his or her functions in proceedings of
the Panel because of a conflict of interest—the person appointed under
subregulation 20.64(2) to be the Panel Chair for the proceedings.
Panel of the Disciplinary Tribunal means a Panel constituted under
regulation 20.36 or 20A.11.
President means the President of the Disciplinary Tribunal.
Register of Patent Attorneys means the register mentioned in section 198 of the
Act.
the Act means the Patents Act 1990.
Tribunal member means a member of the Disciplinary Tribunal and includes the
President.
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WTO Agreement means the Marrakesh Agreement establishing the World Trade
Organization, done at Marrakesh on 15 April 1994.
WTO member means a country that is a full member of the World Trade
Organization.
Note: The list of members of the World Trade Organization could in 2015 be viewed on the
World Trade Organization’s website (http://www.wto.org).
(2) A reference in these Regulations to:
(a) the giving of a notice or other document; or
(b) the making of a request or an application;
to the Commissioner or the Patent Office includes a reference to the filing of the
document.
(3) A reference in these Regulations to a document that is open to public inspection
is a reference to a document that may be inspected by the public at the Patent
Office.
(4) If the Commissioner gives a document to a person, the document is taken to have
been given to the person on the day the document is dated by the Commissioner.
(5) The Commissioner may give a document to a person by:
(a) making the document available to the person in an electronic form; and
(b) notifying the person that the document is available.
(6) A requirement in these Regulations to give information to the Commissioner or
to another person (whether the expression ‘give’, ‘tell’, ‘inform’ or another
expression is used) is a requirement to give the information in writing, unless the
contrary intention appears.
(7) For these Regulations, a period expressed in months is to be worked out in the
way described in rule 80.2 of the Regulations under the Patent Cooperation
Treaty set out in Schedule 2A.
1.3A Meaning of completed in relation to a search
For these regulations:
A search is completed on the earliest of:
(a) the date, if any, specified in the report as the date that the report was
issued; and
(b) the date, if any, specified in the report as the date that the search was
completed; and
(c) the date that the search results were issued to the applicant or patentee by
the foreign patent office.
1.4 Meaning of Convention country
For the definition of Convention country in subsection 29B(5) of the Act, the
following countries are prescribed:
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(a) a foreign country that is a signatory to the Paris Convention for the
Protection of Industrial Property of 20 March 1883, as in force from time
to time;
(b) a foreign country that is a full member of the World Trade Organization.
Note 1: For signatories to the Paris Convention for the Protection of Industrial Property, see
www.wipo.int.
Note 2: For full members of the World Trade Organization, see www.wto.org.
1.4A Meaning of eligible importing country
For the definition of eligible importing country in Schedule 1 to the Act, the
following kinds of foreign countries are prescribed:
(a) a WTO member that notifies the Council for TRIPS, in accordance with the
Annex to the TRIPS Agreement, of the member’s intention to use the
system set out in Article 31bis of the TRIPS Agreement and the Annex to
that Agreement as an importer;
(b) a least developed country.
1.5 Deposit requirements: prescribed period
(1) For paragraph 6(c) of the Act, the prescribed period is:
(a) if the Commissioner makes a declaration under subsection 42(1) of the Act
in relation to the specification concerned—the period mentioned in
subregulation (2); or
(b) in any other case:
(i) for a complete specification in respect of a standard patent
application—the period mentioned in subregulation (3); or
(ii) for a complete specification in respect of an innovation patent
application—the period mentioned in subregulation (4).
(2) For paragraph (1)(a), the period begins on the filing date of the application to
which the specification relates and ends 3 months from the date taken to be the
date of filing of the specification under paragraph 42(2)(b) of the Act.
(3) For subparagraph (1)(b)(i), the period begins on the filing date of the application
to which the specification relates and ends:
(a) at the end of the day immediately before the day on which the application
becomes open to public inspection; or
(b) if the application is accepted before the end of the day first mentioned in
paragraph (a)—immediately before acceptance.
(4) For subparagraph (1)(b)(ii), the period begins on the filing date of the application
to which the specification relates to and ends immediately before acceptance.
(5) If a matter mentioned in paragraph 6(c) of the Act has been included in the
specification, the applicant or patentee is taken to consent to a micro-organism
being obtained by a person to whom the Commissioner has granted the
certification under regulation 3.25 in respect of the deposit:
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(a) after the period mentioned in subregulation (1) for the specification to
which the application relates; and
(b) from the prescribed depositary institution with which the micro-organism is
deposited.
1.6 Secret use—prescribed period
For paragraph 9(e) of the Act, the period is 12 months after the first use of the
invention that would, but for the application of paragraph 9(e), have constituted
secret use.
1.7 Verification of translations of international applications
For the purposes of subsection 10(2) of the Act, the translation of an
international application that was not filed in the receiving Office in English
must have with it a related certificate of verification.
1.8 Completion of applications
(1) A person who makes an application or request using an application form must:
(a) comply with any directions given on the form; and
(b) provide information for each part of the form that describes the information
as being mandatory.
(2) A person who makes an application or request using an application procedure
other than a form must:
(a) comply with any directions given as part of the procedure; and
(b) provide information for each part of the procedure that describes the
information as being mandatory.
Example: An online application facility.
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Chapter 2—Patent rights, ownership and validity
2.1 Applications by co-owners for directions
(1) An application under section 17 of the Act must be in the approved form.
(2) A person making an application under that section must file with the application
a notice stating the facts on which the application is based.
2.2 Information made publicly available—recognised exhibitions
(1) This regulation sets out:
(a) for paragraph 24(1)(a) of the Act—a circumstance in relation to
information made publicly available by, or with the consent of, the
nominated person, patentee or predecessor in title of the nominated person
or patentee; and
(b) for subsection 24(1) of the Act—a period for making a complete
application for an invention if the circumstance applies.
Circumstance—invention shown, used or published at recognised exhibition
(2) The circumstance is that the information has been made publicly available
because the invention was:
(a) shown or used at a recognised exhibition; or
(b) published during a recognised exhibition at which the invention was shown
or used.
Period
(3) The period for making a complete application for the invention is:
(a) if the complete application claims priority from a basic application made
within 6 months of the day of the showing, use or publication—12 months
from the day the basic application was made; or
(b) if the complete application is associated with a provisional application
made within 6 months of the day of the showing, use or publication—12
months from the day the provisional application was made; or
(c) otherwise—12 months from the day of the showing, use or publication.
(4) In this regulation:
Paris Convention means the Paris Convention for the Protection of Industrial
Property of 20 March 1883, as in force for Australia on the commencing day.
recognised exhibition means:
(a) an official or officially recognised international exhibition within the
meaning of Article 11 of the Paris Convention or Article 1 of the
Convention relating to International Exhibitions done at Paris on
22 November 1928, as in force for Australia on the commencing day; or
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(b) an international exhibition recognised by the Commissioner by a notice
published in the Official Journal before the beginning of the exhibition.
2.2A Information made publicly available—learned societies
(1) This regulation sets out:
(a) for paragraph 24(1)(a) of the Act—a circumstance in relation to
information made publicly available by, or with the consent of, the
nominated person, patentee or predecessor in title of the nominated person
or patentee; and
(b) for subsection 24(1) of the Act—a period for making a complete
application for an invention if the circumstance applies.
Circumstance—information read before learned society or published by or on
behalf of learned society
(2) The circumstance is that the information has been made publicly available in a
paper:
(a) read before a learned society; or
(b) published by or on behalf of a learned society.
Period
(3) The period for making a complete application for the invention is:
(a) if the complete application claims priority from a basic application made
within 6 months of the day of the reading or publication—12 months from
the day the basic application was made; or
(b) if the complete application is associated with a provisional application
made within 6 months of the day of the reading or publication—12 months
from the day the provisional application was made; or
(c) otherwise—12 months from the day of the reading or publication.
2.2B Information made publicly available—reasonable trial of invention
(1) This regulation sets out:
(a) for paragraph 24(1)(a) of the Act—a circumstance in relation to
information made publicly available by, or with the consent of, the
nominated person, patentee or predecessor in title of the nominated person
or patentee; and
(b) for subsection 24(1) of the Act—a period for making a complete
application for an invention if the circumstance applies.
Circumstance—working of invention for reasonable trial
(2) The circumstance is that:
(a) the information has been made publicly available because the invention
was worked in public; and
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(b) the working of the invention was for the purposes of a reasonable trial of
the invention; and
(c) because of the nature of the invention, it was reasonably necessary for the
working to be in public.
Period
(3) The period for making a complete application for the invention is:
(a) if the complete application claims priority from a basic application made
within 12 months of the start of the public working of the invention—12
months from the day the basic application was made; or
(b) if the complete application is associated with a provisional application
made within 12 months of the start of the public working of the
invention—12 months from the day the provisional application was made;
or
(c) otherwise—12 months from the start of the public working of the
invention.
2.2C Information made publicly available—other circumstances
(1) This regulation sets out:
(a) for paragraph 24(1)(a) of the Act—a circumstance in relation to
information made publicly available by, or with the consent of, the
nominated person, patentee or predecessor in title of the nominated person
or patentee; and
(b) for subsection 24(1) of the Act—a period for making a complete
application for an invention if the circumstance applies.
Circumstance
(2) The circumstance is that the information has been made publicly available in
circumstances other than the circumstances described in regulations 2.2, 2.2A
and 2.2B.
Period
(3) The period for making a complete application for the invention is 12 months
from the day the information was made publicly available.
2.2D Information made publicly available without consent—period
For subsection 24(1) of the Act, for information made publicly available in the
circumstances mentioned in paragraph 24(1)(b) of the Act, the prescribed period
for making a complete application for an invention is 12 months from the day the
information was made publicly available.
2.3 Divisional applications—period
(1) For subsection 24(1) of the Act, this regulation applies to an invention if:
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(a) the specification containing the claim in which the invention is defined was
filed for a divisional application under section 79B or 79C of the Act; and
(b) the claim is entitled under regulation 3.13D or 3.13E to the priority date
that it would have if the claim was in the specification filed with a previous
application (the original application); and
(c) a circumstance mentioned in regulations 2.2 to 2.2D applies; and
(d) the original application was filed in the period prescribed in the
circumstance under regulations 2.2 to 2.2D.
(2) The prescribed period for making the divisional application is:
(a) if the divisional application was filed in the period mentioned in
paragraph (1)(d)—that period; or
(b) otherwise—the period ending on the day the divisional application was
made.
2.4 Prescribed period: patents of addition
(1) For the purposes of section 25 of the Act, the prescribed period is the period that
commences on the priority date of the claim of the specification of the main
invention and ends immediately before the priority date of the relevant claim of
the specification of the patent of addition.
(2) In subregulation (1), a reference to the claim of the specification of the main
invention is a reference to:
(a) the claim defining that main invention; or
(b) if there are 2 or more claims defining the main invention—the claim that
has the earlier or earliest priority date.
2.5 Prescribed period: assertion that invention is not a patentable invention
For subsection 27(1) of the Act, the prescribed period is the period:
(a) beginning immediately after the complete specification filed in relation to
the application for a standard patent becomes open to public inspection;
and
(b) ending 3 months after the date of publication in the Official Journal of the
notice of acceptance under paragraph 49(5)(b) of the Act.
2.6 Prescribed period: notification of assertion of invalidity of innovation patent
For subsection 28(2) of the Act, the prescribed period for an innovation patent is
the period from the date that the complete specification for the patent becomes
open to public inspection to immediately before the Commissioner decides to
certify the patent.
2.7 Documents to accompany notice of assertion of invalidity
Notice of an assertion under subsection 27(1) or 28(1) of the Act must, if the
assertion is based on a document, have with it:
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(a) a copy of the document; and
(b) if the document is not in English, a copy of:
(i) a translation of the document into English; and
(ii) a related certificate of verification; and
(c) evidence of the date and place of publication of the document.
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Chapter 3—From application to acceptance
Part 1—Inventions generally
Division 1—Applications
3.1 Prescribed documents: patent applications
(1) For the purposes of subsection 29(1) of the Act, an abstract is required to be filed
with a patent request made in relation to a complete application.
(2) For the purposes of subsection 29(1) of the Act, if a complete application for a
standard patent is made, the following documents are required to be filed before
acceptance:
(c) if a micro-organism is deposited with a prescribed depositary institution:
(i) if the deposit is an original deposit within the meaning of Rule 7.3 of
the Budapest Treaty or a new deposit within the meaning of Rule 7.4
of that Treaty—a copy of a receipt issued by the institution under
Rule 7 of the Treaty; and
(ii) if samples of the micro-organism were transferred to that institution
under Rule 5.1(a)(i) of the Treaty—a copy of a receipt issued by the
institution under Rule 7 of the Treaty; and
(iii) if a receipt referred to in subparagraph (i) or (ii) is not in English—a
translation of the receipt into English and a related certificate of
verification; and
(d) if the application relies on section 6 of the Act—a notice by the applicant
stating the entitlement of the nominated person to rely on the deposit for
the purposes of the Act; and
(e) if the application is an application to which subsection 34(2) of the Act
applies—a copy of the court order declaring the applicant to be an eligible
person in relation to the invention so far as claimed in a claim of the
specification; and
(f) if the application is an application to which subsection 36(4) of the Act
applies—a copy of the declaration of the Commissioner that the applicant
is an eligible person in relation to the invention as disclosed in the
specification; and
(g) if the request is for a patent of addition and is made by a person authorised
by the applicant or patentee—a statement authorising the person that is
signed by the applicant or patentee.
3.1A Applicant taken to be nominated person
For an application for a standard patent or an innovation patent, the applicant is
taken to be the nominated person.
(2) For a PCT application, the applicant is taken to be the nominated person.
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3.2 Provisional specifications
(1) A provisional specification must:
(a) be in the approved form; and
(b) be in English.
(2) If the Commissioner treats a provisional specification as having been filed, the
Commissioner may, within 1 month from the date of filing of the provisional
specification, direct the applicant to do anything necessary to ensure that the
provisional specification complies with the requirements mentioned in
subregulation (1).
(3) If an applicant to whom a direction has been given under subregulation (2) does
not comply with the direction within 2 months from the date of the direction, the
provisional specification is taken not to have been filed.
3.2A Specifications—standard patents
(1) A patent request for a standard patent must:
(a) be in the approved form; and
(b) be in English; and
(c) comply substantially with the requirements of Schedule 3.
(2) A complete specification for a standard patent must:
(a) be in the approved form; and
(b) be in English; and
(c) comply substantially with the requirements of Schedule 3.
(3) If the Commissioner treats an application for a standard patent (other than a PCT
application) as having been filed, the Commissioner may, within 1 month from
the date of filing of the application, direct the applicant to do anything necessary
to ensure that the patent request and complete specification comply with the
requirements mentioned in subregulations (1) and (2).
Note: See regulation 3.5 for what happens if certain information required for an application is
not filed.
(4) If:
(a) the Commissioner gives the applicant a direction under subregulation (3) to
assist the Commissioner in deciding whether a filed abstract is in
accordance with these Regulations; and
(b) the Commissioner has specified in the direction a period of not less than 1
month within which the applicant must comply with the direction; and
(c) the applicant does not comply with the direction before the end of the
period;
the complete application to which the patent request and complete specification
relate lapses at the end of the period.
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(5) Subject to subregulation (4), if an applicant to whom a direction has been given
under subregulation (3) does not comply with the direction within 2 months from
the date of the direction, the application lapses.
(6) If an application lapses under subregulation (4) or (5), the Commissioner must:
(a) advertise that fact in the Official Journal; and
(b) tell the applicant that the complete application has lapsed.
3.2AB PCT application—title of specification
(1) The title of a specification for a PCT application is taken to be:
(a) the title approved by the ISA for the application under rule 44.2 of the
PCT; or
(b) the title established by the ISA for the application under rule 37.2 of the
PCT.
(2) For subregulation (1), if the title is in a language other than English, the title is
taken to be the English translation of the title.
3.2B Specifications: formalities check for innovation patents
(1) For section 52 of the Act, a complete application for an innovation patent passes
the formalities check only if the application meets all of the following
requirements:
(a) the complete specification for the application must:
(i) be in the approved form; and
(ii) be in English; and
(iii) comply substantially with the requirements of Schedule 3;
(b) the patent request must be in the approved form;
(c) if the applicant is an eligible person under section 34 of the Act—a copy of
the court order declaring that the applicant is an eligible person in relation
to the invention must be filed with the complete application;
(d) the complete application must comply with regulation 3.8, 3.10, 3.11, 6A.1
or 6A.2, or subsection 79C(2) of the Act, if applicable;
(e) if the applicant is relying on section 41 of the Act—the receipts mentioned
in paragraph 3.1(2)(c) must be filed with the complete application;
(f) the complete specification must not be a cross-reference to an earlier patent
application filed in Australia or in a Convention country;
(g) the complete specification must not contravene subsection 18(2) or (3) of
the Act;
(h) if the application is a divisional application made under section 79B of the
Act in relation to an original application that is a PCT application, the
complete specification for the PCT application must be open to public
inspection.
(2) If the application does not meet a requirement mentioned in paragraph (1)(a), (b),
(c), (d), (e), (f) or (h), the Commissioner must direct the applicant to do anything
necessary to ensure that the application meets the requirement.
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(3) If an applicant to whom a direction under subregulation (2) has been given does
not comply with the direction within 2 months from the date of the direction, the
application lapses.
(4) If the application does not meet the requirement mentioned in paragraph (1)(g),
the Commissioner must direct the applicant to ensure that the application meets
the requirement.
(5) If an applicant to whom a direction under subregulation (4) has been given does
not respond to the direction within 2 months from the date of the direction, the
application lapses.
(6) If an applicant to whom a direction under subregulation (4) has been given does
not comply with the direction within 4 months from the date of the direction, the
application lapses.
(7) If an application lapses under subregulation (3), (5) or (6), the Commissioner
must:
(a) advertise that fact in the Official Journal; and
(b) tell the applicant of the lapse.
3.2C Specifications—formalities check for PCT application
(1) This regulation applies to a PCT application that complies with
subsection 29A(5) of the Act.
Note: This regulation was added on 15 April 2013. If the PCT application was filed before
15 April 2013, see subregulation (7).
(2) The applicant must:
(a) provide:
(i) an address for service in Australia or New Zealand at which a
document under the Act or these Regulations may be given to the
applicant personally, or to a person nominated as the applicant’s
representative; or
(ii) another address for service in Australia to which it is practicable and
reasonable for Australia Post, or a person acting for Australia Post, to
deliver mail; or
(iii) an address for service in New Zealand to which it is practicable and
reasonable for a person providing mail delivery services to deliver
mail; and
(aa) provide the name of the inventor of the invention to which the application
relates; and
(b) if a translation of the application is filed for subsection 29A(5) of the Act—
file a certificate of verification for the translation.
(3) The PCT application must substantially comply with the requirements of
Schedule 3.
(4) The Commissioner may, within one month from the date the PCT application
complies with subsection 29A(5) of the Act, direct the applicant to do anything
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necessary to ensure that the application complies with the requirements
mentioned in subregulations (2) and (3).
(5) The PCT application lapses if:
(a) the applicant has been given a direction under subregulation (4); and
(b) the applicant has not complied with the direction within 2 months of the
date of the direction.
(6) If the PCT application lapses under subregulation (5), the Commissioner must:
(a) advertise that fact in the Official Journal; and
(b) tell the applicant that the PCT application has lapsed.
(7) If the PCT application was filed before 15 April 2013:
(a) a reference in this regulation to subsection 29A(5) of the Act:
(i) is taken to be a reference to subsection 89(3) of the Act, as in force
immediately before 15 April 2013; and
(ii) if a translation of a PCT application is required to be filed—is taken
not to include the requirement to file a related certificate of
verification; and
(b) for the purposes of the reference to subsection 89(3) of the Act, as in force
immediately before 15 April 2013, paragraph 8.2(3)(c) of these
Regulations, as in force immediately before 15 April 2013:
(i) is taken to apply in relation to the PCT application; and
(ii) is taken not to include the requirement to file a related certificate of
verification; and
(iii) is taken not to include the requirement to file a document setting out
an address for service of documents in Australia.
3.3 Abstracts
(1) An abstract must consist of:
(a) a summary of the disclosure as contained in the description, the claims and
any drawings, being a summary:
(i) that indicates the technical field to which the invention pertains; and
(ii) that is drafted in a way that allows the clear understanding of the
technical problem, the gist of the solution of that problem through the
invention, and the principal use or uses of the invention; and
(b) if applicable, any chemical formula that, among all the formulas contained
in the specification, best characterises the invention.
(2) An abstract must be as concise as the disclosure permits, preferably 50 to 150
words.
(3) An abstract must not contain statements on the alleged merits or value of the
claimed invention or on its speculative application.
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(4) Each main technical feature mentioned in the abstract and illustrated by a
drawing in the specification must be followed by a reference sign placed between
parentheses.
(5) An abstract must be so drafted that it can efficiently serve as a scanning tool for
the purposes of searching in the particular art, especially by assisting in the
formulation of an opinion on whether there is a need to consult the specification
itself for those purposes.
(6) An abstract is not taken into account in construing the nature of the invention
that is the subject of the specification to which the abstract relates.
3.4 Substitute abstracts
(1) If a filed abstract is not in accordance with these Regulations, the Commissioner
may prepare a draft of a new abstract in substitution for the filed abstract.
(2) A copy of the draft of a new abstract must be given to the applicant who may
give the Commissioner written comments on the draft within 1 month of the
draft being given to him or her.
(3) The Commissioner must take the comments into account in the final preparation
of the new abstract.
(4) If the Commissioner prepares a new abstract, the new abstract is taken to be the
abstract of the specification to which it relates.
(5) If an applicant who files a complete specification does not file with it an abstract,
the Commissioner, within 1 month of the date of filing of the complete
specification, may direct the applicant to file an abstract within 1 month of the
day on which the direction is given.
(6) If an abstract is not filed within 1 month from the day on which the direction was
given, the application lapses.
(7) If an application lapses under subregulation (6), the Commissioner must:
(a) advertise that fact in the Official Journal; and
(b) advise the applicant of the lapse.
3.5 Filing date—patent applications other than PCT applications
(1) Subject to this regulation, the filing date of a patent application (other than a PCT
application) is the date on which the following information is filed:
(a) information in English that indicates that what is filed is intended to be an
application for a patent;
(b) information that allows the identity of the applicant to be established or
allows the applicant to be contacted by the Patent Office;
(c) information that appears to be a description.
(2) For paragraph (1)(c), a description:
(a) does not have to be in English; and
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(b) may be a drawing; and
(c) may be a reference, in English, to an earlier patent application filed in
Australia or in a Convention country.
(3) For paragraph (2)(c), the earlier patent application does not have to be in English.
(4) If all of the information mentioned in subregulation (1) is not filed in respect of
an application, the Commissioner must give the applicant notice in writing:
(a) telling the applicant that all of the information mentioned in
subregulation (1) was not filed in respect of the application; and
(b) asking the applicant to file the additional information required.
(5) If an applicant to whom a notice under subregulation (4) has been given does not
file the additional information within 2 months from the date of the notice, the
application is taken not to have been filed.
(6) Subregulation (7) applies if an applicant to whom a notice under
subregulation (4) has been given files the additional information within 2 months
from the date of the notice.
(7) For section 30 of the Act, the filing date of the patent application is the date on
which the additional information is filed.
3.5AA Filing date—PCT applications
For section 30 of the Act, the filing date of a PCT application is:
(a) the international filing date; or
(b) if the Commissioner has treated another date as the international filing date
under Rule 82 ter
of the PCT—that date; or
(c) if section 10 of the Act applies to the application—the date taken to have
been given as the international filing date under that section.
3.5A Filing date: incomplete specifications
(1) This regulation applies if the information mentioned in subregulation 3.5(1) has
been filed in respect of a patent application (other than a PCT application) but a
part of the patent specification is missing.
(2) If the Commissioner notices that a part of the specification is missing, the
Commissioner must give the applicant notice in writing:
(a) telling the applicant that a part of the specification is missing; and
(b) asking the applicant to file the missing part.
(3) The missing part must be incorporated into the specification if, within the period
applying under subregulation (4), the applicant:
(a) files the missing part; or
(b) if the applicant claims priority from an earlier basic application or
associated provisional application—files:
(i) the missing part; and
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(ii) a copy of the earlier application that contains, and indicates the
location of, the missing part; and
(iii) if the earlier application is not in English—a translation of the
application into English together with a related certificate of
verification.
(4) For subregulation (3), the period is:
(a) if a notice is given under subregulation (2)—2 months from the date of the
notice; or
(b) in any other case—the period ending on the earlier of:
(i) 2 months after the filing date; and
(ii) the time of acceptance.
(5) For section 30 of the Act, the filing date of the application is:
(a) if paragraph (3)(a) applies—the date on which the missing part is filed; and
(b) if paragraph (3)(b) applies—the date that would have been the filing date if
the missing part had not been incorporated.
(6) If paragraph (5)(a) applies, the Commissioner must tell the applicant of the new
filing date.
(7) Despite paragraph (5)(a), if within 1 month after being told of the new filing
date, the applicant withdraws the missing part from the specification, the filing
date of the application, for section 30 of the Act, is the date that would have been
the filing date if the missing part had not been incorporated.
3.5AB PCT applications—international applications taken to be applications
under the Act
(1) This regulation applies to an international application that specifies Australia as a
designated State under Article 4(1)(ii) of the PCT if:
(a) the receiving Office has declared that the international application is taken
to be withdrawn; or
(b) the International Bureau has made a finding under Article 12(3) of the
PCT.
(2) The international application is taken to be a PCT application, as if a declaration
or finding had not been made, if:
(a) the applicant has made a request referred to in Article 25(1)(a) of the PCT
within the time limit specified in Rule 51.1 of the PCT; and
(b) the Commissioner has received, within the time limit specified in Rule 51.3
of the PCT:
(i) the fees prescribed for paragraph 29A(5)(b) of the Act; and
(ii) if the application is not in English—a translation of the application
into English; and
(c) the Commissioner believes on reasonable grounds that:
(i) the declaration was the result of an error or omission by the receiving
Office; or
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(ii) the finding was the result of an error or omission by the International
Bureau.
3.5AC PCT applications—amendment
(1) For subsection 29A(3) of the Act, this regulation sets out the circumstances and
manner in which, and the day on which, a specification of a PCT application is
taken to be amended.
Translation of application into English
(2) If paragraph 29A(5)(a) of the Act applies to the PCT application:
(a) the description, drawings and claims contained in the application are taken
to have been amended by substituting the description, drawings and claims
in the translation; and
(b) the amendment is taken to have occurred on the day the translation was
filed.
Application amended under Article 19 of PCT
(3) If:
(a) a PCT application was amended under Article 19 of the PCT; and
(b) the application was amended before the applicant met the requirements of
subsection 29A(5) of the Act;
the description, drawings and claims contained in the application are to be taken
to have been amended on the day the amendment was made.
Application rectified under Rule 91 of PCT
(4) If:
(a) a PCT application was rectified under Rule 91 of the PCT; and
(b) the rectification was made before the applicant met the requirements of
subsection 29A(5) of the Act;
the description, drawings and claims contained in the application are to be taken
to have been amended on the day the rectification was effective, unless the
Commissioner disregards the rectification under Rule 91.3(f) of the PCT.
Application amended under Article 34 of PCT
(5) If:
(a) a PCT application in respect of which Australia has been elected under
Chapter II of the PCT has been amended under Article 34 of the PCT; and
(b) an international preliminary examination report is established before the
applicant meets the requirements of subsection 29A(5) of the Act;
the description, drawings and claims contained in the application are taken to
have been amended on the day the amendment was made.
(6) However, subregulation (5) does not apply if:
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(a) the Commissioner has notified the applicant under regulation 3.17C or
paragraph 10.2(1)(d); and
(b) the applicant:
(i) provides the advice mentioned in paragraph 3.17B(2)(b) or
subparagraph 10.2(3)(c)(ii); or
(ii) elects under paragraph 3.17B(2)(c) or subparagraph 10.2(3)(c)(iii) to
abandon any amendments that may have been made under Article 34
of the PCT.
Indications under Rule 13 bis
.4 of the PCT
(7) If an indication in relation to a deposited micro-organism is furnished according
to Rule 13 bis
.4 of the PCT in relation to a PCT application:
(a) the description contained in the application is taken to have been amended
to include that indication; and
(b) the amendment is taken to have occurred on the day that indication is
furnished to the International Bureau.
3.5AD PCT applications—prescribed requirements
For subsection 29A(4) of the Act, the following requirements are prescribed:
(a) the requirements of subsection 29(4) of the Act;
(b) subregulation 3.1(1);
(c) subregulation 3.2A(1);
(d) paragraphs 3.2A(2)(a) and (b).
3.5AE PCT applications—prescribed period
(1) For subsection 29A(5) of the Act, the prescribed period is 31 months after the
priority date of the application.
(2) In this regulation:
priority date has the same meaning as in the PCT.
3.5AF PCT applications—translations and prescribed documents
Translations published under Article 21 of PCT
(1) For paragraph 29A(5)(a) of the Act, subregulation (2) applies if:
(a) a PCT application is not filed in English; and
(b) the PCT application has been published in English under Article 21 of the
PCT; and
(c) a translation of the application into English was not filed before the date of
publication under Article 21 of the PCT.
(2) The publication under Article 21 of the PCT is taken:
(a) to be the translation mentioned in paragraph 29A(5)(a) of the Act; and
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(b) to have been filed within the prescribed period; and
(c) to have been verified in accordance with these Regulations.
Copy of application
(3) For paragraph 29A(5)(b) of the Act, if a PCT application has not been published
under Article 21 of the PCT, a copy of the application is a prescribed document.
(4) In this regulation:
PCT application includes:
(a) an amendment under Article 19 or 34 of the PCT; and
(b) a rectification under Rule 91 of the PCT.
3.5AG Convention application—prescribed particulars
(1) For paragraph 29B(4)(a) of the Act, the following particulars are prescribed in
relation to a relevant basic application:
(a) the country in which the application was made;
(b) the number allocated to the application by the foreign patent office of the
Convention country in which the application was made;
(c) the date the application was made.
(2) A reference to a country or a Convention country in subregulation (1) includes an
intergovernmental authority to the extent that Rule 4.10 of the PCT permits for a
PCT application.
Note: An example for subregulation (2) is that the PCT allows the European Patent Office to
be specified for a regional application instead of a particular Convention country.
3.5B Filing of documents outside business hours
The Patent Office and each sub-office of the Patent Office (if any) may provide
facilities for the filing of documents when the Office or sub-office is not open to
the public for business.
3.6 Requests to make determinations between interested parties
For section 32 of the Act, a request must:
(a) be in the approved form; and
(b) have with it a notice, by the person making the request, stating the grounds
on which the request is made.
3.7 Form of certain applications
For the purposes of paragraphs 35(1)(b) and 36(1)(b) of the Act, an application
must:
(a) be in the approved form; and
(b) have with it a notice by the applicant stating the grounds on which the
application is made.
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3.8 Time within which applications are to be made following certain decisions
and declarations
An application under section 29 of the Act must be made:
(a) in the case of an application of the kind described in section 33 of the
Act—within 3 months of the decision of the Commissioner referred to in
paragraph 33(1)(c), (2)(c), (3)(c) or (4)(b) of the Act, as the case requires;
or
(b) in the case of an application of the kind described in section 34 of the
Act—within 3 months of the declaration of a court under subsection 34(1)
of the Act; or
(c) in the case of an application of the kind described in section 35 of the
Act—within 3 months of the declaration of the Commissioner under
subsection 35(1) of the Act; or
(d) in the case of an application of the kind described in section 36 of the
Act—within 3 months of the declaration of the Commissioner under
subsection 36(1) of the Act.
3.9 Prescribed period: treatment of complete application as provisional
For subsection 37(1) of the Act, the prescribed period is:
(a) for an application for a standard patent—the period from the date of filing
of the complete application until the earlier of:
(i) the end of 12 months from the filing date of the complete application;
and
(ii) the day that is 3 weeks before the due date for publishing a notice
under section 54 of the Act; and
(b) for an application for an innovation patent—12 months from the filing date
of the complete application.
3.10 Prescribed period: making of complete applications
For the purposes of section 38 of the Act, the period of 12 months from the filing
date of the provisional application is prescribed.
3.11 Prescribed period—making Convention application
For subsection 38(1A) of the Act, the prescribed period is 12 months from the
day a basic application is first made in a Convention country for the invention.
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Division 2—Priority date of claim
3.12 What this Division is about
(1) This Division determines the priority date of a claim:
(a) for subsection 36(4) of the Act (see regulation 3.13); and
(b) for paragraph 43(2)(a) of the Act (see regulations 3.13A to 3.13E); and
(c) for section 114 of the Act (see regulation 3.14).
(2) However, if more than one of regulations 3.13A to 3.13E applies to a single
claim, the priority date of the claim, for paragraph 43(2)(a) of the Act, is the
earliest of the dates that is determined by those regulations.
(3) Despite regulations 3.13A to 3.13E, the priority date of a claim, for
paragraph 43(2)(a) of the Act, is no later than the date of the filing of the
specification.
(4) In this Division, a document, or a set of documents considered together, clearly
discloses an invention if the document, or set of documents, discloses the
invention in a manner that is clear enough, and complete enough, for the
invention to be performed by a person skilled in the relevant art.
(5) For the purposes of subregulation (4), a document, or a set of documents
considered together, is taken to clearly disclose an invention as mentioned in that
subregulation so far as such disclosure requires a description of a
micro-organism, if:
(a) the micro-organism is deposited with a prescribed depository institution in
accordance with such provisions of the Budapest Treaty as are applicable;
and
(b) the prescribed circumstances for paragraph 43(2B)(b) of the Act apply.
3.13 Priority date for application by person declared under section 36 of the Act
(1) This regulation determines the priority date of a claim under subsection 36(4) of
the Act.
(2) If the claimed invention is clearly disclosed in the specification mentioned in
paragraph 36(1)(c) of the Act:
(a) if the specification was filed in relation to a complete application, the
priority date of the claim is the priority date that the claim would have had
if the claim was included in the specification; and
(b) if the specification was filed in relation to a provisional application, the
priority date of the claim is the date the specification was filed.
(3) If the claimed invention is not clearly disclosed in the specification mentioned in
paragraph 36(1)(c) of the Act, the priority date of the claim is the date the
specification for the complete application referred to in subsection 36(4) of the
Act was filed.
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3.13A Priority date for PCT application
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (2) (a prescribed
circumstance for paragraph 43(2A)(a) of the Act) applies to the invention
defined in the claim; and
(b) either:
(i) a document mentioned in subregulation (4) (a prescribed document
for paragraph 43(2A)(b) of the Act) clearly discloses the invention in
the claim; or
(ii) 2 or more of those documents (a prescribed set of prescribed
documents for paragraph 43(2A)(b) of the Act), considered together,
clearly disclose the invention in the claim.
Circumstance
(2) For paragraph (1)(a), the circumstance is that the specification containing the
claim that defines the invention was filed for a PCT application, and:
(a) either:
(i) the PCT application claims the priority of an earlier application under
Article 8 of the PCT; or
(ii) the PCT application has been amended to include a claim to priority
from an earlier application that, at the time of filing the PCT
application, was a claim to priority that could have been made under
Article 8 of the PCT; and
(b) either:
(i) the earlier application was made in Australia no more than 12 months
before the filing date of the PCT application; or
(ii) the earlier application was made in Australia more than 12 months
before the filing date of the PCT application, and:
(A) a receiving Office has restored the priority under Rule 26 bis
.3,
and the restored priority has not been found to be ineffective
by the Commissioner or a prescribed court under Rule 49 ter
.1;
or
(B) the Commissioner has restored the priority under Rule 49 ter
.2;
or
(C) the Commissioner has granted an extension of time under
section 223 of the Act that has the effect of restoring a right
of priority; or
(iii) the earlier application is a basic application that was the first
application made in a Convention country in relation to the invention,
and:
(A) the earlier application was made no more than 12 months
before the filing date of the PCT application; or
(B) the earlier application was made more than 12 months before
the filing date of the PCT application, and a receiving Office
has restored the priority under Rule 26 bis
.3, and the restored
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priority has not been found to be ineffective by the
Commissioner or a prescribed court under Rule 49 ter
.1; or
(C) the earlier application was made more than 12 months before
the filing date of the PCT application, and the Commissioner
has restored the priority under Rule 49 ter
.2; or
(D) the earlier application was made more than 12 months before
the filing date of the PCT application, and the Commissioner
has granted an extension of time under section 223 of the Act
that has the effect of restoring a right of priority; or
(iv) the earlier application is a basic application that was made after a
basic application mentioned in subparagraph (iii).
(3) For the purposes of this regulation, if a provisional specification was filed for a
basic application when the application was made, a complete specification later
filed for the basic application is taken to be another basic application from which
the PCT application claims priority, made on the day when the complete
specification was filed.
Documents
(4) For paragraph (1)(b), the documents are the documents filed for the earlier
application at the time the application was made.
Priority date
(5) Subject to regulation 3.12, the priority date is:
(a) the date when the earlier application was made; or
(b) if there is more than one earlier application—the date the earliest of those
applications was made for which paragraph (1)(b) is satisfied.
Prescribed circumstances for micro-organisms
(6) For paragraph 43(2B)(b) of the Act, the prescribed circumstances for a disclosure
that requires a description of a micro-organism are as follows:
(a) the deposit of the micro-organism with a prescribed depository institution,
in accordance with such provisions of the Budapest Treaty as are
applicable, occurs on or before the date when the documents mentioned in
subregulation (4) are filed;
(b) either:
(i) a document mentioned in subregulation (4) includes the relevant
information on the characteristics of the micro-organism that is known
to the applicant at the time the documents are filed; or
(ii) 2 or more of those documents, considered together, include the
relevant information on the characteristics of the micro-organism that
is known to the applicant at the time the documents are filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by the complete
specification that contains the claim.
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3.13B Priority date for Convention application
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (1A) (a prescribed
circumstance for paragraph 43(2A)(a) of the Act) applies to the invention
defined in the claim; and
(b) either:
(i) a document mentioned in subregulation (2) (a prescribed document
for paragraph 43(2A)(b) of the Act) clearly discloses the invention in
the claim; or
(ii) 2 or more of those documents (a prescribed set of prescribed
documents for paragraph 43(2A)(b) of the Act), considered together,
clearly disclose the invention in the claim.
Circumstance
(1A) For paragraph (1)(a), the circumstance is that the specification containing the
claim that defines the invention was filed for:
(a) a Convention application; or
(b) a complete application that has been amended to become a Convention
application.
Documents
(2) For paragraph (1)(b), the documents are the documents filed for a related basic
application at the time when the application was made.
(3) For this regulation, if a provisional specification was filed for a related basic
application when the application was made, a complete specification later filed
for the basic application is taken to be another related basic application made on
the day the complete specification was filed.
(4) Subject to regulation 3.12, the priority date is:
(a) the date the related basic application was made; or
(b) if there is more than one related basic application—the date the earliest of
those applications was made for which paragraph (1)(b) is satisfied.
Prescribed circumstances for micro-organisms
(5) For paragraph 43(2B)(b) of the Act, the prescribed circumstances for a disclosure
that requires a description of a micro-organism are as follows:
(a) the deposit of the micro-organism with a prescribed depository institution,
in accordance with such provisions of the Budapest Treaty as are
applicable, occurs on or before the date when the documents mentioned in
subregulation (2) are filed;
(b) either:
(i) a document mentioned in subregulation (2) includes the relevant
information on the characteristics of the micro-organism that is known
to the applicant at the time the documents are filed; or
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(ii) 2 or more of those documents, considered together, include the
relevant information on the characteristics of the micro-organism that
is known to the applicant at the time the documents are filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by the complete
specification that contains the claim.
3.13C Priority date for complete application associated with provisional
application
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (1A) (a prescribed
circumstance for paragraph 43(2A)(a) of the Act) applies to the invention
defined in the claim; and
(b) either:
(i) a document mentioned in subregulation (2) (a prescribed document
for paragraph 43(2A)(b) of the Act) clearly discloses the invention in
the claim; or
(ii) 2 or more of those documents (a prescribed set of prescribed
documents for paragraph 43(2A)(b) of the Act), considered together,
clearly disclose the invention in the claim.
Circumstance
(1A) For paragraph (1)(a), the circumstance is that the specification containing the
claim that defines the invention was filed for a complete application that is
associated with a provisional application under section 38 of the Act.
Documents
(2) For paragraph (1)(b), the documents are the documents filed for the provisional
application at the time when the application was made.
(3) Subject to regulation 3.12, the priority date is:
(a) the date the provisional application was made; or
(b) if there is more than one provisional application—the date the earliest of
those applications was made for which paragraph (1)(b) is satisfied.
Prescribed circumstances for micro-organisms
(4) For paragraph 43(2B)(b) of the Act, the prescribed circumstances for a disclosure
that requires a description of a micro-organism are as follows:
(a) the deposit of the micro-organism with a prescribed depository institution,
in accordance with such provisions of the Budapest Treaty as are
applicable, occurs on or before the date when the documents mentioned in
subregulation (2) are filed;
(b) either:
(i) a document mentioned in subregulation (2) includes the relevant
information on the characteristics of the micro-organism that is known
to the applicant at the time the documents are filed; or
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(ii) 2 or more of those documents, considered together, include the
relevant information on the characteristics of the micro-organism that
is known to the applicant at the time the documents are filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by the complete
specification that contains the claim.
3.13D Priority date for divisional application filed prior to grant of patent
(1) This regulation applies to a claim if:
(a) the specification containing the claim that defines the invention was filed
for:
(i) a divisional application under section 79B of the Act; or
(ii) a complete application that has been amended to become a divisional
application under section 79B of the Act; and
(b) the specification mentioned in subsection 79B(1) of the Act (the earlier
specification) clearly discloses the invention in the claim.
(2) However, this regulation does not apply to a claim if:
(a) the deposit requirements must be satisfied in relation to the invention to
comply with paragraph 40(2)(a) of the Act; and
(b) when the divisional application under section 79B of the Act is made, the
period prescribed in subregulation 1.5(1) has ended in relation to the earlier
specification; and
(c) the requirements of paragraph 6(c) of the Act are not satisfied in relation to
the earlier specification.
(3) Subject to regulation 3.12, the priority date is the priority date that the claim
would have had if the claim was in the earlier specification.
(4) For subsection 43(2A) of the Act:
(a) the circumstance mentioned in paragraph (1)(a) is a prescribed
circumstance; and
(b) the document mentioned in paragraph (1)(b) is a prescribed document.
(5) For paragraph 43(2B)(b) of the Act, the prescribed circumstances for a disclosure
that requires a description of a micro-organism are as follows:
(a) the deposit of the micro-organism with a prescribed depository institution,
in accordance with such provisions of the Budapest Treaty as are
applicable, occurs on or before the date when the document mentioned in
paragraph (1)(b) is filed;
(b) the document mentioned in paragraph (1)(b) includes the relevant
information on the characteristics of the micro-organism that is known to
the applicant at the time the documents are filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by the complete
specification that contains the claim.
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3.13E Priority date for divisional application after grant of innovation patent
(1) This regulation applies to a claim if:
(a) both of the following apply:
(i) the specification containing the claim that defines the invention was
filed for a divisional application under section 79C of the Act;
(ii) examination of the divisional application is requested within 2 months
from the date of the grant of the divisional application; and
(b) the specification referred to in subsection 79C(1) of the Act clearly
discloses the invention in the claim.
(2) Subject to regulation 3.12, the priority date is the priority date that the claim
would have had if the claim had been in the specification mentioned in
subsection 79C(1) of the Act.
(3) For subsection 43(2A) of the Act:
(a) the circumstance mentioned in paragraph (1)(a) is a prescribed
circumstance; and
(b) the document mentioned in paragraph (1)(b) is a prescribed document.
(4) For paragraph 43(2B)(b) of the Act, the prescribed circumstances for a disclosure
that requires a description of a micro-organism are as follows:
(a) the deposit of the micro-organism with a prescribed depository institution,
in accordance with such provisions of the Budapest Treaty as are
applicable, occurs on or before the date when the document mentioned in
paragraph (1)(b) is filed;
(b) the document mentioned in paragraph (1)(b) includes the relevant
information on the characteristics of the micro-organism that is known to
the applicant at the time the document is filed;
(c) the requirements of paragraph 6(c) of the Act are satisfied by the complete
specification that contains the claim.
3.14 Priority dates: certain amended claims
If section 114 of the Act applies to a claim of a specification, the priority date of
the claim is:
(a) in the case of an amendment to which subsection 29A(3) of the Act
applies—the date on which the amendment is taken to have been made
under that subsection; and
(b) in any other case—the date of filing of the statement of proposed
amendments that resulted in the disclosure referred to in
subparagraph 114(1)(c)(ii) of the Act.
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Division 3—Examination
3.14A Request for international-type search relating to provisional application
(1) An applicant for a provisional application may make a request under Article
15(5) of the PCT for an international-type search in relation to the application.
(2) The applicant must make the request within 10 months from the date the
provisional application was filed.
(3) If more than one International Searching Authority is competent under Article
15(5) of the PCT to carry out the search, the Commissioner may choose the
Authority that will carry out the search.
3.14B Request for preliminary search and opinion relating to complete
application
(1) This regulation applies to a complete application for a standard patent made on
or after 15 April 2013.
(2) If the applicant has not asked for an examination under section 44 of the Act, the
applicant may request a preliminary search and opinion relating to the
application under section 43A of the Act.
(3) The request must be in the approved form.
Note: Section 43A of the Act does not require a request to be made before the Commissioner
conducts a preliminary search and opinion.
3.14C Priority dates—Convention applications and PCT applications:
prescribed period for disregarding earlier applications
For paragraph 43(5)(b) of the Act, the period of more than 12 months before the
filing of the Convention application or PCT application is prescribed.
3.14D Prescribed documents: basic application
(1) For subsection 43AA(1) of the Act, the following documents that relate to a
basic application are prescribed:
(a) a copy of the specification filed for, and at the same time as, the basic
application;
(b) a copy of any other document filed for the basic application, whether filed
at the same time as, or after, the basic application is filed;
(c) a document mentioned in paragraph (a) or (b) that has been certified by the
competent authority of the Convention country in which the basic
application was made;
(d) if the application relates to a micro-organism—a copy of a receipt for the
deposit of the micro-organism issued by a prescribed depository institution;
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(e) if a document mentioned in paragraphs (a) to (d) is not in English—a
translation of the document into English and a certificate of verification of
the translation.
(2) For subsection 43AA(4) of the Act, if the Commissioner requires that a
prescribed document relating to a basic application be made available to the
Commissioner:
(a) the prescribed means for making the document available are:
(i) filing the document with the Australian Patent Office; or
(ii) making the document available through an approved digital library;
and
(b) the prescribed period for making the document available is 3 months from
the day the Commissioner requires the document be made available.
(3) However, if the Commissioner is satisfied that:
(a) a document was made available for inspection by the Commissioner in an
approved digital library within the period mentioned in paragraph (2)(b);
and
(b) the document is no longer available for inspection;
the prescribed period is 2 months after the day the Commissioner notifies the
applicant or patentee that the Commissioner has not been able to inspect the
document in the approved digital library.
3.15 Requirements of request for examination
(1) For the purposes of subsection 44(1) of the Act, the period of 5 years from the
filing date of the complete application is prescribed.
(2) For the purposes of subsection 44(1) of the Act, a request for an examination of a
patent request and complete specification must be in the approved form.
3.16 Prescribed grounds and period for examination
(1) For the purposes of subsection 44(2) of the Act, the following grounds are
prescribed:
(a) that the Commissioner reasonably considers it expedient to give the
direction having regard to the progress made in the examination of
applications filed before the filing date of the application concerned;
(b) that the Commissioner reasonably considers it to be in the public interest to
give the direction;
(c) that the Commissioner reasonably considers it expedient to give the
direction, having regard to the examination of another application for a
standard patent or the examination of an innovation patent.
(2) For the purposes of subsection 44(2) of the Act, the prescribed period is 2
months from the day on which the direction was given.
(3) A direction must be given in writing and state the grounds on which it is given.
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3.17 Requirement for Commissioner to direct or expedite examination
(1) For the purposes of subsection 44(3) of the Act, a person may, in the approved
form, request the Commissioner to direct an applicant for a standard patent to ask
for an examination of the patent request and complete specification under
subsection 44(2) of the Act.
(2) If an applicant has asked for an examination of the patent request and complete
specification to be expedited, the Commissioner may do so if he or she is
reasonably satisfied that:
(a) it is in the public interest; or
(b) there are special circumstances that make it desirable.
3.17A PCT applications—Commissioner not to give certain directions
(1) This regulation applies to a PCT application that is treated as an application for a
standard patent under the Act.
(2) The Commissioner must not give a direction under section 44 of the Act unless
the applicant has complied with the requirements of subsection 29A(5) of the
Act.
3.17B PCT applications—examination requirements
(1) For subsection 45(1A) of the Act, this regulation prescribes requirements for a
PCT application.
(2) The requirements are that the applicant must:
(a) give a copy of the international preliminary examination report to the
Commissioner; or
(b) advise that:
(i) no demand was made under Article 31 of the PCT; or
(ii) no amendments were made under Article 34 of the PCT; or
(iii) the demand was made under Article 31 of the PCT, or the
international preliminary examination report was established, after the
applicant complied with the requirements of subsection 29A(5) of the
Act; or
(c) elect to abandon any amendments that may have been made under Article
34 of the PCT.
(3) However, subregulation (2) applies only if:
(a) each of the following applies:
(i) the applicant demanded an international preliminary examination
under Article 31 of the PCT before complying with the requirements
of subsection 29A(5) of the Act;
(ii) at least 3 months after the applicant complied with the requirements of
subsection 29A(5) of the Act, the Commissioner asks for a copy of the
international preliminary examination report from the International
Bureau;
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(iii) the International Bureau advises that the international preliminary
examination report is not available; or
(b) both of the following apply:
(i) the applicant asks for the examination to be expedited under
subregulation 3.17(2);
(ii) a copy of an international preliminary examination report relating to
the application has not been provided to the Commissioner.
Note: Under subparagraph 3.5AC(9)(b)(ii), if the applicant provides the advice, or makes the
election, mentioned in paragraph (2)(b) or (c), any amendments made under Article 34
of the PCT are not taken to be included in the application.
(4) In this regulation:
international preliminary examination report has the same meaning as it has in
the PCT.
3.17C PCT applications—notice if examination declined
If the Commissioner declines to examine a request and specification under
subsection 45(1A) of the Act, the Commissioner must notify the applicant and
ask the applicant to meet the requirements in subregulation 3.17B(2).
3.18 Report of Commissioner: examination
(2) For paragraph 45(1)(d) of the Act, the following matters are prescribed:
(a) whether, to the best of the Commissioner’s knowledge, the request and
specification comply with the following provisions of the Act:
(i) section 15 (Who may be granted a patent?);
(ii) section 29 (Application for patent—general rules);
(iii) section 29B (Applications for patents—special rules for Convention
applications);
(iv) section 38 (Time for making complete application);
(v) section 79B (Divisional applications prior to grant of patent);
(vi) section 81 (Grant of patent of addition);
(c) whether acceptance of the request and specification should be refused
under section 50 of the Act (‘application or grant may be refused in certain
cases’);
(e) whether a patent cannot be granted on the application because of
subsection 64(2) of the Act (‘grant: multiple applications’);
(f) for a PCT application—whether, to the best of the Commissioner’s
knowledge, the application complies with subregulations 3.2C(2) and (3).
(4) If a notice is filed under subsection 27(1) of the Act before the patent request and
complete specification to which the notice relates have been accepted under
subsection 49(1) of the Act, in examining the patent request and complete
specification under section 45 of the Act, the Commissioner must consider a
matter stated in the notice that addresses a claim that the invention concerned
does not comply with paragraph 18(1)(b) of the Act.
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3.19 Conduct of examination: standard patents
(1) If the Commissioner reasonably believes that there are lawful grounds of
objection to the patent request or complete specification, he or she must state the
grounds of objection in reporting on an examination.
(2) The applicant may contest the objection in writing or ask for leave to amend the
patent request or complete specification in accordance with Chapter 10.
(3) If the applicant asks for leave to amend a patent request or complete specification
in response to, or in anticipation of, a report under section 45 of the Act, the
Commissioner must examine the request and specification and report as if each
proposed amendment had been made.
(4) If the applicant contests the objection, the Commissioner must examine the
request and specification and take note of the matters raised by the applicant.
3.22 Disclosure of patent documents and information to International Bureau
etc
(1) The Commissioner may disclose any or all of the following to the International
Bureau or a foreign patent office:
(a) the patent application or patent;
(b) a document given by the applicant, or another person, to the Commissioner
in connection with the patent application or patent;
(c) a document in the Commissioner’s possession that relates to the patent
application or the application of the patent;
(d) any information in the Commissioner’s possession that relates to a
document mentioned in paragraph (a), (b) or (c);
whether or not the application is open for public inspection.
(2) However, if the patent application, document or information is not open for
public inspection, the Commissioner must not disclose the application, document
or information without the consent of the applicant.
Note: Section 194 of the Act also authorises the Commissioner to give a person certain
information about patents, patent applications and other documents in certain
circumstances.
(3) The Commissioner may disclose the patent application, document or information
by depositing it in an approved digital library or by any other means.
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Part 2—Inventions that are micro-organisms
3.23 Documents in accepted applications and patents involving micro-organisms
(1) Where a micro-organism is deposited with a prescribed depositary institution for
the purposes of section 41 of the Act, the following documents must be filed in
relation to an application that has been accepted under section 49 or 52 of the Act
or a patent in respect of the micro-organism:
(a) if the deposit is an original deposit within the meaning of Rule 7.3 of the
Budapest Treaty or a new deposit within the meaning of Rule 7.4 of that
Treaty—a copy of a receipt issued by the institution under Rule 7 of the
Treaty;
(b) if samples of the micro-organism were transferred to that institution under
Rule 5.1(a)(i) of the Treaty—a copy of a receipt issued by the institution
under Rule 7 of the Treaty;
(c) if a receipt referred to in paragraph (a) or (b) is not in English—a
translation of the receipt into English and a related certificate of
verification.
(2) The documents referred to in subregulation (1) must be filed within 3 months
from the date of receipt of the micro-organism by the prescribed depositary
institution.
3.24 Commissioner may request samples and viability statement
(1) If, in relation to a patent application or patent in respect of a micro-organism, the
micro-organism is deposited with a prescribed depositary institution, the
Commissioner:
(a) on the order of a court in Australia, must; or
(b) on his or her own motion or on application in writing by another person,
may;
for the purposes of proceedings before the Commissioner or any other legal
proceedings in Australia:
(c) make to that institution a request referred to in Rule 11.1 of the Budapest
Treaty for a sample of that micro-organism; and
(d) in relation to that micro-organism, make the declaration referred to in that
Rule.
(2) Before making a request, the Commissioner must give the applicant or patentee
concerned, and any other person who apparently has an interest in the request, an
opportunity to be heard, unless the request is made on the order of a court.
(3) If the Commissioner decides to make, or to refuse to make, a request, he or she
must inform the applicant or patentee concerned, and any other person who
apparently has an interest in the request, of the decision, and of the reasons for
the decision, by notice in writing as soon as practicable after the decision.
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(4) The Commissioner may make a request referred to in Rule 10.2(a)(iii) of the
Budapest Treaty for a statement concerning the viability of a micro-organism if a
sample of the micro-organism has been given to the Commissioner in accordance
with a request under subregulation (1).
3.25 Request for Commissioner’s certification authorising release of sample of a
micro-organism
(1) If a micro-organism is deposited with a prescribed depositary institution, a
person may request the Commissioner to grant the certification referred to in
Rule 11.3(a) of the Budapest Treaty in respect of the deposit.
(2) The request:
(a) must be in the approved form; and
(b) must relate to a micro-organism:
(i) that is the subject of a patent application or patent; or
(ii) the use, modification or cultivation of which is the subject of a patent
application or patent; and
(c) may nominate another person as a skilled addressee.
(3) Before making a decision under regulation 3.25B (including a decision about
imposing conditions under regulation 3.25G), the Commissioner must:
(a) give each person mentioned in subregulation (4) a written notice inviting
the person to make, within a reasonable time specified in the notice, a
submission about the matter; and
(b) if a person mentioned in subregulation (4) makes a submission within the
time specified in the notice—take the submission into account.
(4) For subregulation (3), the persons are as follows:
(a) the person who made the request;
(b) the applicant or patentee;
(c) any other person who apparently has an interest in the request.
3.25A Request for certification—micro-organism subject of application for
standard patent
(1) This regulation applies if:
(a) the micro-organism, or the use, modification or cultivation of the
micro-organism, is the subject of an application for a standard patent; and
(b) the complete specification relating to the application is not open to public
inspection.
(2) The applicant may notify the Commissioner that, if:
(a) a request is made under regulation 3.25 in relation to the application; and
(b) regulation 3.25E does not apply to the request;
a sample of the deposited micro-organism is to be provided during the period
mentioned in subregulation (3) only to a person who is a skilled addressee
without an interest in the invention.
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(3) For subregulation (2), the period:
(a) begins when the complete specification relating to the application is open
to public inspection; and
(b) ends when:
(i) the patent is granted on the application; or
(ii) the application lapses or is withdrawn or refused.
3.25B Grant of certification—when Commissioner must grant certification
(1) Subregulation (2) applies to a request under regulation 3.25 in relation to a patent
application if:
(a) the applicant for the patent has notified the Commissioner as mentioned in
subregulation 3.25A(2); and
(b) the period mentioned in subregulation 3.25A(3) has not ended; and
(c) regulation 3.25E does not apply to the request.
(2) The Commissioner must grant the certification if:
(a) the specification relating to the application is open to public inspection; and
(b) the Commissioner is reasonably satisfied that the nominated person is
entitled to rely on the deposit for the purposes of the Act; and
(c) a person has been nominated as a skilled addressee by the person who
made the request; and
(d) the Commissioner is reasonably satisfied that the nominated person:
(i) is appropriately skilled; and
(ii) does not have an interest in the invention; and
(e) regulation 3.25C applies to the request.
(3) Subregulation (4) applies to any other request under regulation 3.25.
(4) The Commissioner must grant the certification if:
(a) the specification relating to the application or patent is open to public
inspection; and
(b) the Commissioner is reasonably satisfied that the nominated person is
entitled to rely on the deposit for the purposes of the Act; and
(c) one or more of regulations 3.25C, 3.25D, 3.25E and 3.25F apply to the
request.
(5) Despite subregulations (1) to (4), the Commissioner must not grant the
certification if:
(a) the request relates to a micro-organism:
(i) that is the subject of a PCT application; or
(ii) the use, modification or cultivation of which is the subject of a PCT
application; and
(b) the applicant of the PCT application has not complied with
subsection 29A(5) of the Act.
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3.25C Grant of certification—limited use undertaking
(1) For paragraphs 3.25B(2)(e) and (4)(c), this regulation applies to a request if:
(a) the person making the request or the person nominated as a skilled
addressee has undertaken to use the micro-organism, during the period
mentioned in subregulation (2), only for experimental purposes or in
relation to:
(i) opposition proceedings under Chapter 5 of the Act in relation to the
grant of a standard patent on that application; or
(ii) opposition proceedings under section 101M of the Act in relation to
an innovation patent; or
(iii) relevant proceedings in relation to the patent;
and not to make the micro-organism, or a culture derived from the
micro-organism, available to another person during that period; and
(b) the Commissioner is reasonably satisfied that the undertaking given by the
person making the request or the person nominated as a skilled addressee is
given in good faith.
(2) For paragraph (1)(a), the period is:
(a) for a request in respect of a patent application—the period beginning when
the request is granted and ending when:
(i) the application lapses, or is refused or withdrawn; or
(ii) a patent granted on the application expires, ceases or is revoked; or
(b) for a request in respect of a patent—the period beginning when the request
is granted and ending when the patent expires, ceases or is revoked.
3.25D Grant of certification—order under section 133 of Act
For paragraph 3.25B(4)(c), this regulation applies to a request if:
(a) an order has been made, under section 133 of the Act, requiring the
patentee to grant to the person making the request a licence to work the
patented invention; and
(b) the Commissioner is reasonably satisfied that the licence provides that the
person making the request has a right to obtain a sample of the
micro-organism.
3.25E Grant of certification—exploitation for purposes of Commonwealth or a
State
For paragraph 3.25B(4)(c), this regulation applies to a request if:
(a) the person making the request is authorised by the Commonwealth or a
State, under subsection 163(1) of the Act, to exploit the invention for the
purposes of the Commonwealth or State; and
(b) the Commissioner is reasonably satisfied that the terms for the exploitation
of the invention provide that the person making the request has a right to
obtain a sample of the micro-organism.
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3.25F Grant of certification—expired patent etc.
For paragraph 3.25B(4)(c), this regulation applies to a request if the request is in
respect of:
(a) a patent application that has lapsed or has been refused or withdrawn; or
(b) a patent that is expired, ceased or revoked.
3.25G Imposing conditions on certification
If the Commissioner grants the requested certification under regulation 3.25B,
the Commissioner may impose any conditions the Commissioner considers
reasonable, including a condition that the person making the request give
security for damages for any breach of the undertaking mentioned in
paragraph 3.25C(1)(a) given by:
(a) the person; or
(b) another person who has been nominated by the person as a skilled
addressee.
3.25H Notice of decision on certification request
(1) If the Commissioner makes a decision under regulation 3.25B (including a
decision about imposing conditions under regulation 3.25G), the Commissioner
must inform each person mentioned in subregulation (2) of the decision, and the
reasons for the decision, by notice in writing given as soon as practicable after
the date of the decision.
(2) For subregulation (1), the persons are as follows:
(a) the person who made the request;
(b) the applicant or patentee;
(c) any other person who apparently has an interest in the request.
3.26 Breach of undertakings given in respect of micro-organisms
(1) Where the micro-organism is deposited with a prescribed depositary institution,
proceedings for breach of an undertaking referred to in paragraph 3.25(4)(c) may
be instituted in a prescribed court by a person who is:
(a) if a patent has not been granted on that patent application—the applicant;
or
(b) if:
(i) a patent has been granted on that patent application; or
(ii) the deposit is effected in relation to a patent;
the patentee of, or an exclusive licensee under, that patent.
(2) In proceedings by an exclusive licensee, the patentee must be a party to the
proceedings.
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(3) A patentee joined as a defendant in the proceedings by an exclusive licensee is
not liable for costs unless the patentee enters an appearance and takes part in the
proceedings.
(4) It is a defence in proceedings for breach of the undertaking given in respect of a
micro-organism to which a specification filed in respect of a patent application or
patent relates, that when the matters complained of took place the specification
did not comply with the requirements referred to in paragraph 6(c) or (d) of the
Act.
(5) A defendant may not plead a defence referred to in subregulation (4) unless:
(a) the defendant, before becoming a defendant in the proceedings, notified the
Commissioner under paragraph 3.29(1) of the deposit requirement that has
ceased to be satisfied; and
(b) the applicant for the patent or the patentee fails to take the steps referred to
in paragraph 41(4)(b) of the Act within the appropriate period prescribed
by subregulation 3.30(1) for the purposes of that paragraph.
3.27 Procedure in proceedings for breach of an undertaking
In proceedings referred to in subregulation 3.26(1) for breach of an undertaking:
(a) the plaintiff must deliver particulars of the breaches complained of:
(i) with the statement of claim or declaration; or
(ii) by order of the court, at a later time; and
(b) the defendant must deliver particulars of any objections on which the
defendant relies:
(i) with the statement of defence or plea; or
(ii) by order of the court, at a later time.
3.28 Relief in proceedings for breach of undertakings
(1) In proceedings referred to in subregulation 3.26(1), the court may:
(a) make an order for inspection; and
(b) impose terms and give directions with respect to the inspection.
(2) In proceedings referred to in subregulation 3.26(1), the court may grant such
relief as it thinks fit, including:
(a) an injunction on such terms as it thinks fit; or
(b) an order for damages; or
(c) an order for an account of profits; or
(d) an order with respect to any security given under paragraph 3.25(2)(b); or
(e) an order on such terms as it thinks fit to deliver to such person as it thinks
fit the micro-organism or any substance or thing derived directly or
indirectly from that micro-organism as a result of the breach of the
undertaking, including:
(i) any products made by using that micro-organism; and
(ii) any other micro-organisms derived from that micro-organism; and
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(iii) any products made by using those other micro-organisms.
3.29 Notification that a deposit requirement has ceased to be satisfied
(1) If a deposit requirement ceases to be satisfied in relation to a micro-organism to
which a specification filed in respect of a patent application or patent relates, a
person other than the applicant or patentee may, after the specification has
become open to public inspection, notify the Commissioner in the approved form
of the requirement referred to in paragraph 6(c) or (d) of the Act that has ceased
to be satisfied.
(2) As soon as practicable after receiving a notice under subregulation (1), the
Commissioner must give a copy of the notice to the applicant or patentee.
(3) If the Commissioner learns, otherwise than by a notice referred to in
subregulation (1), of facts that may establish that a requirement referred to in that
subregulation has ceased to be satisfied, the Commissioner must cause a notice
setting out those facts to be given to the applicant or patentee.
(4) As soon as practicable after the Commissioner receives a notice under
subregulation (1) or gives a notice under subregulation (3), a notice of the receipt
or giving of that notification must be published in the Official Journal.
(5) The terms of a notice under subregulation (1) or (3) need not be published, but
the notice must be open to public inspection.
(6) The applicant or patentee may file a written reply setting out the facts relied upon
to establish that the requirement referred to in subregulation (1) is satisfied.
(7) If a reply filed under subregulation (6) is in answer to a notification under
subregulation (1) by a person, the Commissioner must, as soon as practicable
after receiving the reply, give a copy of the reply to that person.
(8) As soon as practicable after a reply is filed under subregulation (6), a notice of
the filing must be published in the Official Journal.
(9) The terms of a reply filed under subregulation (6) need not be published, but the
reply must be open to public inspection.
3.30 Prescribed period: deposit requirements taken to be satisfied
For the purposes of paragraph 41(4)(b) of the Act, if, in relation to a patent
application or patent relating to a micro-organism:
(a) that micro-organism is deposited with a prescribed depositary institution;
and
(b) a requirement referred to in paragraph 6(c) or (d) of the Act ceases to be
satisfied in relation to the micro-organism;
the prescribed period is from the day when the requirement ceases to be so
satisfied to the end of:
(c) where the step referred to in paragraph 41(4)(b) of the Act is the making of
a new deposit of a sample of the micro-organism:
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(i) if the Commissioner has given under subregulation 3.29(2) the
applicant or patentee a copy of a notice of that requirement—the
period of 3 months after the copy was given; or
(ii) if the Commissioner has given under subregulation 3.29(3) to the
applicant or patentee a notice of the requirement—the period of 3
months after the notice was given; or
(iii) if under Article 4(1) of the Budapest Treaty the authority has notified
the depositor of its inability to furnish samples of the micro-organism
and the Commissioner has not, before the notification, given to the
applicant or patentee under subregulation 3.29(2) or (3) a copy of the
notice, or the notice, as the case may be, of the requirement—the
period of 3 months after the depositor received that notification under
Article 4(1)(d) of the Treaty; or
(iv) in any other case—the day when that new deposit is so made; or
(d) where the step referred to in paragraph 41(4)(b) of the Act is an
amendment of the specification in respect of that patent application or
patent—the date of the allowance of the amendment, unless:
(i) the Commissioner has given the applicant or patentee a copy of a
notice under subregulation 3.29(2) or a notice under
subregulation 3.29(3), and the applicant or patentee has not asked for
leave to amend the specification within the period of 3 months after
the copy or the notice was given; or
(ii) the authority has notified the depositor under Article 4(1) of the
Budapest Treaty of its inability to furnish samples of the
micro-organism and:
(A) the Commissioner has not, before the notification, given to
the applicant or patentee under subregulation 3.29(2) or (3)
the notice, or a copy of the notice, as the case may be, of the
requirement; and
(B) the applicant or patentee has not asked for leave to amend the
specification within the period of 3 months after the depositor
received the notification under Article 4(1)(d) of the Treaty.
3.31 Application for declaration that deposit requirements are not satisfied
(1) An application under section 42 of the Act for a declaration that a specification
does not comply with section 40 of the Act unless the deposit requirements are
satisfied in relation to a micro-organism, must:
(a) be made in the approved form to a prescribed court or the Commissioner;
and
(b) be lodged at the court or filed.
(2) A person who applies for a declaration under section 42 of the Act must give a
copy of the application:
(a) to the applicant or patentee; and
(b) to such other person as the court or Commissioner directs.
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(3) If the Commissioner on his or her own motion proposes to declare under
section 42 of the Act that the specification in respect of a patent application or
patent does not comply with the requirements of section 40 of the Act unless the
deposit requirements are satisfied in relation to a micro-organism, he or she must
give to the applicant or patentee a statement of the facts relied upon to justify the
making of that declaration.
(4) A person to whom:
(a) a copy of an application under subregulation (2); or
(b) a statement under subregulation (3);
has been given:
(c) may, within 3 months, give to the court to which the application is made or
to the Commissioner a reply to that application or statement; and
(d) must give a copy of the reply to the applicant or patentee and to such other
persons as the court or the Commissioner directs.
(5) As soon as practicable after:
(a) a copy of a declaration by a court under subsection 42(1) of the Act is
given to the Commissioner under subsection 42(6) of the Act; or
(b) the making of a decision of the Commissioner under subsection 42(1) of
the Act;
notice of the making of the declaration or decision must be published in the
Official Journal.
(6) The terms of a declaration or decision referred to in subregulation (5) need not be
published, but the declaration or decision must be open to public inspection.
3.32 Provisional specifications—prescribed circumstances
(1) For paragraph 41(1A)(b) of the Act, the prescribed circumstances are all of the
following:
(a) the micro-organism was deposited with a prescribed depository institution,
in accordance with such provisions of the Budapest Treaty as are
applicable, on or before the date the provisional specification was filed;
(b) at the time the provisional application to which the provisional
specification relates was made, the provisional specification clearly
disclosed the invention, other than in relation to the description of the
micro-organism;
(c) at the time the provisional application to which the provisional
specification relates was made, either:
(i) a document filed for the provisional application included the relevant
information on the characteristics of the micro-organism that was
known to the applicant at that time; or
(ii) 2 or more documents filed for the provisional application, considered
together, included the relevant information on the characteristics of
the micro-organism that was known to the applicant at that time;
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(d) if the circumstances mentioned in subregulation (2) apply—the
requirements of paragraph 6(c) of the Act are satisfied by the complete
specification mentioned in paragraph (2)(a) of this regulation.
(2) For paragraph (1)(d), the circumstances are that:
(a) a complete specification has been filed for a complete application; and
(b) the complete application is associated with the provisional application
whose specification is referred to in paragraph (1)(b).
Note: A complete application may be associated with a provisional application when the
complete application is filed, or as a result of a subsequent amendment to the complete
application.
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Chapter 4—Publication
4.1 Prescribed information: applicants and applications
For subsection 53(1) of the Act, the following information is prescribed:
(a) the number allocated to the application by the Commissioner;
(b) the name of the applicant;
(c) in the case of a complete application—the name of the nominated person;
(d) the title, or an abbreviated title, of the invention;
(e) the date on which the application was filed;
(f) particulars of priority documents.
4.2 Notice that specification is open to public inspection
(1) A request under subsection 54(1) of the Act must be in the approved form.
(2) For the purposes of subsection 54(1) of the Act, the Commissioner must publish
the notice as soon as practicable after:
(a) being asked by the applicant to publish the notice; and
(b) the relevant abstract is finally completed; and
(c) if a direction has been given under subregulation 3.2A(2)—the direction
has been complied with.
(3) For the purposes of paragraph 54(3)(b) of the Act, the prescribed period is from
the day of filing of the specification to the end of 18 months after:
(a) that day; or
(b) the date of making the earliest priority document referred to in
regulation 3.12;
whichever is earlier.
4.3 Prescribed documents: public inspection
(1) For subsection 55(1) of the Act, all documents that are:
(a) associated with the application, or with any provisional application
associated with the application; and
(b) in the possession of the Patent Office;
are prescribed, other than:
(c) documents that would be privileged from production in legal proceedings
on the ground of legal professional privilege; and
(e) the documents mentioned in subregulation (2).
(2) For paragraphs 55(2)(a), (b) and (c) of the Act, the following documents are
prescribed:
(a) a document that is subject to an order of a court or a tribunal that prohibits
disclosure of the document or information in the document;
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(b) a document that the Commissioner has reasonable grounds for believing
should not be open to public inspection.
4.4 Publication and inspection of PCT applications
(1) For subsection 56A(1) of the Act, a PCT application is taken to have become
open to public inspection, and to have been published in Australia:
(a) if a notice in relation to the application is published under
subregulation (3)—on the day the notice is published; or
(b) if subregulation (5) applies—on the day the application is published under
Article 21 of the PCT.
(2) Subregulation (3) applies to a PCT application:
(a) that has not lapsed, or been withdrawn or refused; and
(b) for which the applicant has complied with subsection 29A(5) of the Act
before the end of 18 months after the priority date of the application.
(3) The Commissioner must publish a notice in the Official Journal stating that the
PCT application is open to public inspection:
(a) if the applicant asks the Commissioner in writing to publish the notice; or
(b) in any case—as soon as practicable after the end of 18 months after the
priority date of the application.
(4) A request for publication under subregulation (3) must be in the approved form.
(5) The PCT application is open to public inspection if:
(a) the applicant does not comply with subsection 29A(5) of the Act within 18
months after the priority date of the application; and
(b) the application is published under Article 21 of the PCT.
(6) The following documents are open for inspection if a notice is published under
subregulation (3) or if subregulation (5) applies:
(a) a copy of the relevant application;
(b) all documents in the possession of the Patent Office, other than those
mentioned in subregulation (7), that are associated with:
(i) the application; or
(ii) any provisional application from which the application claims priority
under Article 8 of the PCT.
(7) Subregulation (6) does not apply to the following documents:
(a) a document that would be privileged from production in legal proceedings
on the ground of legal professional privilege;
(b) a document mentioned in subregulation 4.3(2);
(c) a document setting out any information that was not transmitted to the
International Bureau in accordance with Rule 26bis.3(h-bis) of the PCT;
(d) a document setting out any information in respect of which the
International Bureau has, under Rule 48.2(n) of the PCT, notified the
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Commissioner that it has omitted that information from international
publication;
(e) a document setting out any information in respect of which the
International Bureau has, under Rule 94.1(f) of the PCT, notified the
Commissioner that it has omitted that information from public access.
(7A) However, if the Commissioner makes a copy of a document mentioned in
paragraph (7)(c), (d) or (e) in a form that does not contain information of the
kind mentioned in those paragraphs then, unless the copy is covered by
paragraph (7)(a) or (b), it is open for public inspection under paragraph (6)(b).
(8) In this regulation:
priority date has the same meaning as in the PCT.
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Part 5.1 Preliminary
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Chapter 5—Opposition
Part 5.1—Preliminary
5.1 What this Chapter is about
This Chapter sets out requirements for the following:
(a) the filing of notices of opposition and associated documents;
(b) the amending of filed documents;
(c) the dismissal of an opposition;
(d) the hearing of an opposition;
(e) associated matters.
5.2 Definitions
General
In this Chapter:
applicant means:
(a) for a section 101M opposition—the patentee of an innovation patent; or
(b) for any other opposition—a person whose application or request under the
Act or these Regulations is opposed by an opponent.
notice of opposition means a notice filed under regulation 5.4, 5.6 or 5.10.
opponent means:
(a) for a section 101M opposition—a person who files a notice of opposition
under regulation 5.6; or
(b) for any other opposition—a person who files a notice of opposition under
regulation 5.4 or 5.10.
party means an applicant or an opponent.
procedural opposition means an opposition begun by filing a notice of
opposition under regulation 5.10.
section 101M opposition means an opposition under section 101M of the Act.
statement of grounds and particulars means a statement by an opponent that
sets out:
(a) the grounds on which the opponent intends to rely; and
(b) the facts and circumstances forming the basis for the grounds.
substantive opposition means:
(a) an opposition begun by filing a notice of opposition under regulation 5.4;
or
(b) a section 101M opposition.
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Note: The following terms are defined in Schedule 1 to the Act:
(a) approved form;
(b) complete specification;
(c) file;
(d) patent request;
(e) patentee;
(f) re-examination.
5.3 Commissioner may give direction about filing document or evidence
(1) If a document or evidence may or must be filed under this Chapter, the
Commissioner may give a direction specifying:
(a) the number of copies of the document or evidence to be filed; and
(b) the form in which the document or evidence is to be filed; and
(c) the means by which the document or evidence is to be filed.
(2) The Commissioner may make or revoke the direction as the Commissioner sees
fit.
(3) If a party does not comply with the direction, the Commissioner may:
(a) treat the document or evidence as not having been filed; or
(b) tell the party to comply with the direction.
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Part 5.2 Filing of opposition documents
Division 5.2.1 Substantive opposition
Regulation 5.4
50 Patents Regulations 1991
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Part 5.2—Filing of opposition documents
Division 5.2.1—Substantive opposition
5.4 Notice of opposition—standard patent opposition
(1) For section 59 of the Act, a person opposes the grant of a standard patent by
filing a notice of opposition, in the approved form, within 3 months from the day
the notice of acceptance is published under paragraph 49(5)(b) of the Act.
(2) For subsection 75(1) of the Act, a person opposes the grant of an extension of the
term of a standard patent by filing a notice of opposition, in the approved form,
within 3 months from the day the notice of acceptance is published under
paragraph 74(2)(b) of the Act.
(3) The Commissioner must give an applicant in relation to a notice of opposition
filed under subregulation (1) or (2) a copy of the notice of opposition as soon as
practicable.
5.5 Statement of grounds and particulars—standard patent opposition
(1) An opponent in a substantive opposition, other than a section 101M opposition,
must file a statement of grounds and particulars within 3 months from the day the
notice of opposition is filed.
(2) The statement of grounds and particulars must be:
(a) in the approved form; and
(b) accompanied by a copy of each document mentioned in the statement,
unless the document:
(i) is open to public inspection; and
(ii) relates to a provisional or complete application for a patent.
(3) The Commissioner must give the applicant a copy of the statement and
accompanying documents as soon as practicable.
5.6 Notice of opposition and statement of grounds and particulars—
section 101M opposition
(1) For section 101M of the Act, a person opposes an innovation patent that has been
certified by filing the following documents:
(a) a notice of opposition in the approved form;
(b) a statement of grounds and particulars;
(c) a copy of each document mentioned in the statement, unless the document:
(i) is open to public inspection; and
(ii) relates to a provisional or complete application for a patent.
(2) The documents:
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(a) may be filed at any time after the certification of the patent; and
(b) must be filed at the same time.
(3) The Commissioner must give copies of the documents to the applicant as soon as
practicable.
5.7 Filing of evidence
(1) A party who intends to file evidence in a substantive opposition must:
(a) file the evidence within the relevant evidentiary period mentioned in
regulation 5.8; and
(b) if the party files all the evidence before the end of the period—notify the
Commissioner of that fact.
(2) The Commissioner must give a copy of any evidence filed by a party under
regulation 5.8 to the other party:
(a) before the end of the period, if the Commissioner considers it appropriate
to do so; or
(b) as soon as practicable after the relevant evidentiary period ends.
(3) The Commissioner must, as soon as practicable, notify:
(a) the other party of a notification under paragraph (1)(b); or
(b) if no notification is given under paragraph (1)(b)—the parties that:
(i) all the evidence for the period has been filed; or
(ii) no evidence was filed.
5.8 Evidentiary periods
Evidence in support
(1) An opponent in a substantive opposition must file any evidence in support of the
opposition:
(a) for a section 101M opposition—at the same time as the documents
mentioned in subregulation 5.6(1); or
(b) for any other substantive opposition—within 3 months from the day the
opponent files the statement of grounds and particulars under
regulation 5.5.
Evidence in answer
(2) If the opponent files evidence in support of the opposition, the applicant must file
any evidence in answer to the evidence in support within 3 months from the day
the Commissioner:
(a) gives the applicant:
(i) all the evidence in support; or
(ii) if the opponent files the evidence in support in instalments—the final
instalment of the evidence in support; and
(b) notifies the applicant that all the evidence in support has been filed.
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Division 5.2.1 Substantive opposition
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(3) If the opponent does not file any evidence in support of the opposition, the
applicant must file any evidence in answer to the statement of grounds and
particulars within 3 months from the day the Commissioner notifies the applicant
that no evidence in support was filed.
Evidence in reply
(4) If the applicant files evidence in answer under subregulation (2) or (3), the
opponent must file any evidence in reply to the evidence in answer within 2
months from the day the Commissioner:
(a) gives the opponent:
(i) all the evidence in answer; or
(ii) if the applicant files the evidence in answer in instalments—the final
instalment of the evidence in answer; and
(b) notifies the opponent that all the evidence in answer has been filed.
5.9 Extension of time for filing evidence
(1) The Commissioner may extend an evidentiary period mentioned in
regulation 5.8:
(a) if requested in writing by a party; or
(b) on the Commissioner’s own initiative.
(2) The Commissioner may extend the period only if the Commissioner is satisfied
that:
(a) the party who intended to file evidence in the period:
(i) has made all reasonable efforts to comply with all relevant filing
requirements under this Chapter; and
(ii) despite acting promptly and diligently at all times to ensure the
appropriate evidence is filed within the period, is unable to do so; or
(b) there are exceptional circumstances that warrant the extension.
(3) The Commissioner must determine the length of the extended period having
regard to what is reasonable in the circumstances.
(4) The Commissioner must notify the parties of the extension as soon as
practicable.
(5) In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from
complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from
complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition
be stayed pending the completion of a related proceeding or action under
the Act.
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Division 5.2.2—Procedural opposition
5.10 Notice of opposition
Leave to amend filed document
(1) For subsection 104(4) of the Act, a person opposes a request for leave to amend a
filed document by filing a notice of opposition, in the approved form, within 2
months from the day the notice of the granting of leave to amend is published
under subregulation 10.5(2).
Note: For the grounds on which an amendment may be opposed, see regulation 5.21.
Extension of time to do relevant act
(2) For subsection 223(6) of the Act, a person opposes the grant of an application for
an extension of time to do a relevant act by filing a notice of opposition, in the
approved form, within 2 months from the day the advertisement of the extension
application is advertised under subsection 223(4) of the Act.
Application for grant of licence
(3) For subregulation 22.21(4), a person opposes the grant of a licence by filing a
notice of opposition, in the approved form, within 2 months from the day the
Commissioner gives the person a copy of the application under
subregulation 22.21(3).
Commissioner to give copy of notice to applicant
(4) The Commissioner must give an applicant in relation to subregulation (1), (2) or
(3) a copy of the notice of opposition as soon as practicable.
5.11 Statement of grounds and particulars
(1) An opponent in a procedural opposition must file a statement of grounds and
particulars within one month from the day the notice of opposition is filed under
regulation 5.10.
(2) The statement of grounds and particulars must be:
(a) in the approved form; and
(b) accompanied by a copy of each document mentioned in the statement of
grounds and particulars, unless the document:
(i) is open to public inspection; and
(ii) relates to a provisional or complete application for a patent.
(3) The Commissioner must give the applicant a copy of the statement of grounds
and particulars and accompanying documents as soon as practicable.
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Part 5.2 Filing of opposition documents
Division 5.2.2 Procedural opposition
Regulation 5.12
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5.12 Practice and procedure
The Commissioner may:
(a) decide the practice and procedure to be followed in a procedural
opposition; and
(b) direct the parties accordingly.
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Part 5.3—Amendments to opposition documents
5.13 Application of regulation 22.22
Regulation 22.22 does not apply to an amendment made under this Part.
5.14 Notice of opposition—correction of errors or mistake
(1) An opponent may request the Commissioner in writing to amend the opponent’s
notice of opposition to correct a clerical error or obvious mistake.
(2) The Commissioner must give the parties an opportunity to make representations
about the proposed amendment.
(3) The Commissioner must, as soon as practicable:
(a) notify the parties of the Commissioner’s decision; and
(b) if the Commissioner decides to make the amendment—give the applicant a
copy of the amended notice of opposition.
5.15 Notice of opposition—change of opponent
(1) This regulation applies if an opponent’s right or interest in an opposition is
transferred to another person (the new opponent) during an opposition.
(2) The new opponent may:
(a) tell the Commissioner that the right or interest in the opposition has been
transferred to the new opponent; and
(b) request the Commissioner in writing to amend the notice of opposition to
record the new opponent’s name.
(3) The Commissioner must give the applicant, the opponent and the new opponent
an opportunity to make representations about the amendment.
(4) The Commissioner must:
(a) as soon as practicable:
(i) notify the parties of the Commissioner’s decision; and
(ii) if the Commissioner decides to make the amendment—give the
applicant a copy of the amended notice of opposition; and
(b) ensure that the opposition proceeds in the name of the new opponent.
5.16 Statement of grounds and particulars
(1) An opponent may request the Commissioner in writing to amend the opponent’s
statement of grounds and particulars:
(a) to correct an error or omission in the grounds of opposition; or
(b) to update the grounds of opposition to reflect an amendment to the patent
request or complete specification to which the statement relates; or
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Part 5.3 Amendments to opposition documents
Regulation 5.16
56 Patents Regulations 1991
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(c) to amend the facts and circumstances forming the basis for the grounds.
(2) The Commissioner must:
(a) notify the applicant of the opponent’s request; and
(b) give the parties an opportunity to make representations about the
amendment.
(3) The Commissioner must not make the amendment if:
(a) the Commissioner is considering an application for dismissal of the
opposition under Part 5.4; or
(b) for an opposition begun under subregulation 5.4(1):
(i) the applicant’s complete specification is being re-examined; and
(ii) the re-examination is not completed as required by regulation 9.5.
(4) The Commissioner must make the amendment if:
(a) subregulation (3) does not apply; and
(b) the Commissioner is satisfied that the amendment should be made.
(5) The Commissioner must, as soon as practicable:
(a) notify the parties of the Commissioner’s decision; and
(b) if the Commissioner decides to make the amendment—give the applicant a
copy of the amended statement.
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Dismissal of opposition Part 5.4
Regulation 5.17
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Part 5.4—Dismissal of opposition
5.17 Dismissal on request
(1) An applicant may request the Commissioner to dismiss an opposition:
(a) within one month from the day the Commissioner gives the applicant a
copy of the statement of grounds and particulars under
subregulation 5.5(3), 5.6(3) or 5.11(3); or
(b) if the applicant’s complete specification is re-examined under
subsection 97(1) of the Act—within one month from the day the
re-examination is completed as required by regulation 9.5.
(2) The request must be in the approved form.
(3) The Commissioner must give the opponent a copy of the request as soon as
practicable.
(4) If the Commissioner decides to dismiss the opposition, the Commissioner must,
as soon as practicable, notify the parties of the decision.
Note: For the requirements the Commissioner must satisfy when exercising a discretionary
power adversely to a person, see regulation 22.22.
5.18 Dismissal on initiative of Commissioner
(1) The Commissioner may dismiss an opposition if the Commissioner considers it
appropriate to do so.
(2) The grounds on which the Commissioner may dismiss the opposition include an
opponent’s failure to file a statement of grounds and particulars or document
mentioned in the statement in accordance with regulation 5.5, 5.6 or 5.11.
(3) If the Commissioner decides to dismiss the opposition, the Commissioner must
notify the parties of the decision as soon as practicable.
Note: For the requirements the Commissioner must satisfy when exercising a discretionary
power adversely to a person, see regulation 22.22.
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Part 5.5 Hearing of opposition
Regulation 5.19
58 Patents Regulations 1991
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Part 5.5—Hearing of opposition
5.19 Hearing and decision—re-examination
(1) This regulation applies to an opposition if:
(a) the applicant’s complete specification is re-examined under
subsection 97(1) of the Act; and
(b) the re-examination is completed as required by regulation 9.5.
(2) The Commissioner may hear and decide the opposition:
(a) on the Commissioner’s own initiative, if the Commissioner considers it
appropriate to do so; or
(b) at the opponent’s request, if the request is made:
(i) less than one month after the re-examination is completed as required
by regulation 9.5; and
(ii) in the approved form.
(3) The Commissioner must give the applicant a copy of a request under
paragraph (2)(b) as soon as practicable.
(4) The Commissioner must notify the parties of the decision as soon as practicable.
5.20 Hearing and decision—other circumstances
(1) This regulation applies to an opposition if:
(a) the periods for filing evidence have ended; and
(b) the notice of opposition has not been withdrawn under regulation 5.26; and
(c) the opposition has not been dismissed under Part 5.4 or heard and decided
under regulation 5.19.
(2) The Commissioner:
(a) must hold a hearing of the opposition if requested by a party in writing; or
(b) may decide, on the Commissioner’s own initiative, to hold a hearing of the
opposition.
(3) The hearing may, at the Commissioner’s discretion, be:
(a) an oral hearing; or
(b) by written submissions.
(4) If the Commissioner decides on an oral hearing:
(a) the Commissioner must notify the parties of the date, time and place of the
hearing; and
(b) the opponent must file a summary of submissions at least 10 business days
before the hearing; and
(c) the applicant must file a summary of submissions at least 5 business days
before the hearing; and
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Regulation 5.20
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(d) the Commissioner must give a copy of each party’s summary of
submissions to the other party as soon as practicable.
(5) The Commissioner must:
(a) decide the opposition; and
(b) notify the parties of the Commissioner’s decision.
(6) The Commissioner, in making an award of costs in relation to an opposition
under subregulation 22.8(2), may consider a failure by a party to file a summary
of submissions under subregulation (4).
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Chapter 5 Opposition
Part 5.6 Miscellaneous
Regulation 5.21
60 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
Part 5.6—Miscellaneous
5.21 Opposition to amendment—grounds
For subsection 104(4) of the Act, an opposition to an amendment may be made
only on the ground that the amendment is not allowable under:
(a) section 102 of the Act; or
(b) regulation 10.3.
Note: For the period for filing a notice of opposition to the allowance of an amendment, see
subregulation 5.10(1).
5.22 Commissioner may give directions
(1) The Commissioner may give a direction in relation to an opposition to which this
Chapter applies:
(a) if requested by a party in writing; or
(b) on the Commissioner’s own initiative.
(2) If the Commissioner proposes to give a direction, the Commissioner must give
the parties an opportunity to make representations about the direction.
(3) A direction must not be inconsistent with the Act or these Regulations.
(4) The Commissioner must notify the parties of the direction as soon as practicable.
5.23 Commissioner may consult documents
(1) For the purposes of deciding an opposition, the Commissioner may consult a
document that:
(a) is relevant to the opposition; and
(b) has not been filed under this Chapter; and
(c) is available in the Patent Office.
(2) If the Commissioner proposes to rely on the document, the Commissioner must
give the parties:
(a) notice of the Commissioner’s intention to do so; and
(b) a copy of, or access to, the document; and
(c) an opportunity to give evidence or make representations about the
document.
5.24 Representations to Commissioner—formal requirements
A representation mentioned in a provision of this Chapter may be made to the
Commissioner by any means approved by the Commissioner.
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5.25 Extension of time for filing—amendment at Commissioner’s direction
(1) This regulation applies if:
(a) the Commissioner directs an applicant to file a statement of proposed
amendments under subsection 107(1) of the Act; and
(b) a period for filing a document under this Chapter begins or ends during the
amendment period.
(2) The period for filing the document is extended by the equivalent of the
amendment period.
(3) In this regulation:
amendment period means the period that:
(a) begins on the day the applicant is given an opportunity to be heard under
subsection 107(2) of the Act; and
(b) ends on the day the Commissioner decides whether to allow the
amendment.
5.26 Withdrawal of opposition
(1) An opponent may withdraw an opposition at any time by filing a signed notice of
withdrawal in the approved form.
(2) The Commissioner must give the applicant a copy of the notice of withdrawal as
soon as practicable.
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Chapter 6 Grant and term of patents
Part 1 Patents generally
Regulation 6.1
62 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
Chapter 6—Grant and term of patents
Part 1—Patents generally
6.1 Publication of notice of grant of standard patent
If a standard patent is granted under section 61 of the Act, the Commissioner
must publish a notice that the patent has been granted in the Official Journal.
6.1A Prescribed particulars—grant of standard patent
For subsection 61(1) of the Act, the following particulars are prescribed:
(a) the date the patent is granted by the Commissioner;
(b) any other particulars of the grant that the Commissioner considers
appropriate.
6.2 Prescribed period: grant of standard patent
(1) For the purposes of subsection 61(2) of the Act, the prescribed period is from 3
months after publication under paragraph 49(5)(b) of the Act of the notice of the
acceptance of the request and complete specification to:
(a) 6 months after that publication; or
(b) such later day as:
(i) in the case of proceedings before a court or the AAT—the court or
AAT directs; or
(ii) in any other case—the Commissioner reasonably directs;
being satisfied that the grant of the patent should be postponed.
(2) A person may request the Commissioner in the approved form to give a direction
referred to in subparagraph (1)(b)(ii).
6.2A Prescribed particulars—grant of innovation patent
For subsection 62(1) of the Act, the following particulars are prescribed:
(a) the date the innovation patent is granted by the Commissioner;
(b) any other particulars of the grant that the Commissioner considers
appropriate.
6.3 Date of patent
(1) For paragraph 65(b) of the Act, the date of a patent is as set out in this regulation.
(2) For a patent granted under subsection 33(1) or (2) of the Act, the date of the
patent is the date that would have been the date of the patent if the patent had
been granted on the application for a standard patent the grant of which was
opposed under section 59 of the Act.
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(3) For a patent granted under subsection 33(3) or (4) of the Act, the date of the
patent is the date of the innovation patent that was opposed under section 101M
of the Act.
(4) For a patent granted under subsection 34(2) of the Act, the date of the patent is
the date of the patent referred to in subsection 34(1) of the Act.
(5) For a patent granted under section 35 of the Act, the date of the patent is the date
of the revoked patent.
(6) For a patent granted as a result of a declaration under section 36 of the Act, the
date of the patent is:
(a) if the declaration is made in respect of a complete application—the date
that would have been the date of the patent if the patent had been granted
on that application; or
(b) if the declaration is made in respect of a provisional application—the
earlier of:
(i) the date 12 months from the date of filing of the provisional
specification in respect of that application; and
(ii) the date of filing of the complete application referred to in
subsection 36(4) of the Act.
(7) For a patent granted on a divisional application made under subsection 79B(1) of
the Act, the date of the patent is:
(a) if the date of the patent was recorded in the Register before 1 January
2000—the date recorded in the Register; or
(b) if the Commissioner determined a date of the patent and told the applicant
in writing before 1 January 2000—the date determined by the
Commissioner; or
(c) in any other case—the earliest of:
(i) the date of the patent of the first-mentioned application referred to in
subsection 79B(1) of the Act; and
(ii) the date that would be the date of the patent if a patent had been
granted on that first-mentioned application; and
(iii) if that first-mentioned application was itself a divisional application or
was amended to be a divisional application before filing the later
application—the date that would be the date of the patent if a patent
had been granted on the divisional application.
(8) For an innovation patent granted on a divisional application made under
subsection 79C(1) of the Act, the date of the patent is the date of the first patent
mentioned in subsection 79C(1).
(9) If, under section 223 of the Act, the Commissioner has extended the time for
making, under section 38 of the Act, a complete application associated with a
provisional application, the date of the patent is the date 12 months from the date
of making the first provisional application with which the complete application is
associated.
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Regulation 6.3
64 Patents Regulations 1991
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(10) If, under section 223 of the Act, the Commissioner has extended the time for
making, under subsections 29B(1) and (2) of the Act, a Convention application
in relation to a basic application, the date of the patent is the date 12 months from
the date of making the first basic application to which the Convention application
relates.
(11) If a PCT application claims the priority of an earlier application under Article 8
of the PCT, and a circumstance mentioned in an item of the following table
applies, the date of the patent is the date 12 months from the date of making the
first application mentioned in the item.
Circumstances
Item Column 1
The earlier application was…
Column 2
and:
1 an application made in Australia more than
12 months before the international filing
date of the PCT application
both of the following apply:
(a) a receiving Office has restored priority
under Rule 26 bis
.3 of the PCT;
(b) the restored priority has not been found
to be ineffective by the Commissioner
or a prescribed court under Rule 49 ter
.1
of the PCT
2 an application made in Australia more than
12 months before the international filing
date of the PCT application
the Commissioner has restored priority
under Rule 49 ter
.2 of the PCT
3 an application made in Australia more than
12 months before the international filing
date of the PCT application
the Commissioner has granted an extension
of time under section 223 of the Act that
has the effect of restoring a right of priority
4 a basic application made more than 12
months before the international filing date
of the PCT application, being the first
application made in a Convention country
for the invention
both of the following apply:
(a) a receiving Office has restored priority
under Rule 26 bis
.3 of the PCT;
(b) the restored priority has not been found
to be ineffective by the Commissioner
or a prescribed court under Rule 49 ter
.1
of the PCT
5 a basic application made more than 12
months before the international filing date
of the PCT application, being the first
application made in a Convention country
for the invention
the Commissioner has restored priority
under Rule 49 ter
.2 of the PCT
6 a basic application made more than 12
months before the international filing date
of the PCT application, being the first
application made in a Convention country
for the invention
the Commissioner has granted an extension
of time under section 223 of the Act that
has the effect of restoring a right of priority
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Extension of pharmaceutical patents Part 2
Regulation 6.7
Patents Regulations 1991 65
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Part 2—Extension of pharmaceutical patents
6.7 Definitions
In this Part:
pre-TGA marketing approval has the same meaning as in section 70 of the Act.
6.8 Information to accompany application
(1) This regulation applies to an application under section 70 of the Act for an
extension of the term of a standard patent for a pharmaceutical substance.
(2) For paragraph 71(1)(c) of the Act, the application must be accompanied by
information showing that goods containing, or consisting of, the substance are
currently included in the Australian Register of Therapeutic Goods.
(3) The application must also be accompanied by information identifying the
substance, as it occurs in those goods, in the same way (as far as possible) as the
substance is identified in the complete specification of the patent.
6.9 Application without pre-TGA marketing approval
(1) This regulation applies to an application under section 70 of the Act for an
extension of the term of a standard patent for a pharmaceutical substance for
which pre-TGA marketing approval has not been given.
(2) For paragraphs 71(1)(b) and (c) of the Act, the application must be accompanied
by:
(a) a certificate under paragraph 25(3)(b) or subsection 26(4) or 26A(9) of the
Therapeutic Goods Act 1989 stating the date of commencement of the first
inclusion in the Australian Register of Therapeutic Goods of goods that
contain, or consist of, the substance; or
(b) if the patentee does not have a certificate mentioned in paragraph (a)—
information showing the date of commencement of the first inclusion in the
Australian Register of Therapeutic Goods of goods that contain, or consist
of, the substance.
Note: For providing a copy of a certificate mentioned in paragraph (2)(a), see the definition
of document in subsection 71(1) of the Act.
6.10 Application with pre-TGA marketing approval
(1) This regulation applies to an application under section 70 of the Act for an
extension of the term of a standard patent for a pharmaceutical substance for
which pre-TGA marketing approval has been given.
(2) For paragraphs 71(1)(b) and (c) of the Act, the application must be accompanied
by:
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(a) a written statement by the person who gave the approval showing:
(i) that approval has been given; and
(ii) the date of the first approval; or
(b) if the patentee does not have a written statement mentioned in
paragraph (a)—information showing:
(i) that approval has been given; and
(ii) the date of the first approval.
Note: For providing a copy of a written statement mentioned in paragraph (2)(a), see the
definition of document in subsection 71(1) of the Act.
6.11 Further information
(1) This regulation applies if the Commissioner needs further information to decide
whether he or she is satisfied that the requirements set out in sections 70 and 71
of the Act are satisfied for an application for an extension of the term of a
standard patent.
(2) The Commissioner may give the applicant a notice requesting the further
information within the period mentioned in the notice.
(3) The period must not be shorter than 2 months or longer than 6 months from the
day the notice is issued.
Note: The period for giving the further information can be extended—see section 223 of the
Act.
(4) If the applicant does not give the further information within that period, the
Commissioner must decide whether he or she is satisfied that the requirements
set out in sections 70 and 71 of the Act are satisfied.
(5) For subsection 71(2) of the Act, further information given within the period
mentioned in subregulation (2) is taken to have been filed with the application
for extension of the term of the standard patent.
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Regulation 6A.1
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Chapter 6A—Divisional applications
6A.1 Divisional applications before grant—standard and innovation patents
(1) For paragraph 79B(2)(a) and subparagraph 79B(3)(b)(iv) of the Act, a further
complete application must:
(a) be made in accordance with section 29 of the Act; and
(b) be filed:
(i) if the first application is for a standard patent—no later than 3 months
from the day the notice of acceptance of the first application is
published under paragraph 49(5)(b) of the Act; or
(ii) if the first application is for an innovation patent—before the grant of
the patent under subsection 62(1) of the Act.
Note: For the definition of first application, see section 79B of the Act.
(2) For paragraph 79B(2)(b) of the Act, the particulars are:
(a) a statement that the application is a further complete application for
section 79B of the Act; and
(b) the number of the first application.
6A.2 Divisional applications after grant—innovation patents
(1) For paragraph 79C(1A)(a) and subparagraph 79C(2)(b)(iv) of the Act, a further
complete application must be:
(a) made in accordance with section 29 of the Act; and
(b) filed no later than one month from the day the notice of the occurrence of
the examination of the first patent is published under paragraph 101E(2)(b)
of the Act.
Note: For the definition of first patent, see section 79C of the Act.
(2) For paragraph 79C(1A)(b) of the Act, the particulars are:
(a) a statement that the application is a further complete application for
section 79C of the Act; and
(b) the number of the first patent.
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Chapter 7 Patents of addition
Regulation 7.1
68 Patents Regulations 1991
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Chapter 7—Patents of addition
7.1 Form of application for grant of patent of addition etc
(1) For paragraph 81(1)(c) of the Act, an application for a further patent must be
made under section 29 of the Act.
(2) The Commissioner must not grant a patent of addition under subsection 81(1) of
the Act unless the date that would be the date of the patent if that patent of
addition were granted is the same as, or later than, the date of the patent for the
main invention.
7.2 Form of application for revocation of patent and grant of patent of addition
instead
An application under section 82 of the Act must be in the approved form.
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Chapter 9—Re-examination
9.1 Notice of Commissioner’s decision to re-examine complete specification
If the Commissioner decides, under subsection 97(1) of the Act, to re-examine a
complete specification relating to an application for a patent, the Commissioner
must tell:
(a) the applicant; and
(b) if the application is opposed under section 59 of the Act—each opponent.
9.2 Request for re-examination of complete specification
(1) For subsections 97(2) and 101G(1) of the Act, a request for re-examination of a
complete specification must be in the approved form.
(1A) A request must state:
(a) the grounds of the request; and
(b) the reasons why the grounds are relevant to the complete specification.
(2) Subregulations (2A) and (3) apply if the request includes an assertion that the
invention, so far as claimed in any claim and when compared with the prior art
base that existed before the priority date of that claim:
(a) is not novel; or
(b) for a standard patent—does not involve an inventive step; or
(c) for an innovation patent—does not involve an innovative step.
(2A) For subregulation (2), the request must:
(a) identify the documents on which the assertion is based; and
(b) state the relevance of each document.
(3) The request must have with it:
(a) if the document is not available in the Patent Office—a copy of the
document; and
(b) if the document is not in English—a translation of the document into
English and a related certificate of verification; and
(c) evidence of the date and place of publication of the document.
(4) If the request does not comply with subregulation (1A), or subregulations (2),
(2A) and (3) if applicable, the Commissioner may decide not to re-examine the
complete specification.
(5) A person who has made a request may, by filing a notice in writing, amend or
withdraw the request before the Commissioner reports under section 98 or
subsection 101G(2) of the Act.
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Regulation 9.3
70 Patents Regulations 1991
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(6) If the person who made the request is not the patentee, the Commissioner must
notify the patentee of his or her decision to re-examine the complete
specification.
(7) A patentee or another person who has requested re-examination of the complete
specification under subsection 97(2) or 101G(1) of the Act must give notice to
the Commissioner of any relevant proceedings in relation to the patent of which
he or she is aware.
9.3 Copy of report on re-examination
(1) If a person who asked for the re-examination is not the patentee, a copy of the
report under section 98 or subsection 101G(2) of the Act must be given to the
person by the Commissioner.
(2) The Commissioner must give an opponent under Chapter 5 of the Act a copy of
the report in respect of a complete specification in relation to the application in
respect of which the grant of a patent is opposed.
9.4 Prescribed period: statement disputing report by Commissioner
(1) For subsection 99(1) or 101H(1) of the Act, the prescribed period is the period of
2 months from the day when the Commissioner reports under section 98 or
subsection 101G(2) of the Act.
(2) The Commissioner must give a copy of a statement filed under subsection 99(1)
or subsection 101H(1) of the Act to:
(a) an opponent under Chapter 5 of the Act in respect of the re-examined
complete specification in relation to the application in respect of which the
grant of a patent is opposed; and
(b) if the person who asked for the re-examination is not the patentee—that
person.
9.5 Completion of re-examination
If the Commissioner makes an adverse report on a re-examination under
subsection 97(1) of the Act and:
(a) a statement is filed under section 99 of the Act and:
(i) the Commissioner gives the applicant an opportunity to be heard that
is referred to in subsection 107(2) of the Act within 3 months from the
day when the Commissioner reports under section 98 of the Act; or
(ii) the applicant or patentee asks for leave to amend the complete
specification to remove any lawful grounds of objection specified in a
report on re-examination within 3 months from the day referred to in
subparagraph (i);
the re-examination is completed when the decision is made whether or not
the amendment is allowed; or
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(b) a statement is filed under section 99 of the Act and subparagraphs (a)(i)
and (ii) do not apply—the re-examination is completed 2 months from the
day when the Commissioner reports under section 98 of the Act; or
(c) a statement is not filed under section 99 of the Act and:
(i) the Commissioner gives the applicant an opportunity to be heard that
is referred to in subsection 107(2) of the Act within 2 months from the
day when the Commissioner reports under section 98 of the Act; or
(ii) the applicant or patentee asks for leave to amend the complete
specification to remove any lawful grounds of objection specified in a
report on re-examination within 2 months from the day when the
Commissioner reports under section 98 of the Act;
the re-examination is completed when the decision is made whether or not
the amendment is allowed; or
(d) a statement is not filed under section 99 of the Act and subparagraphs (c)(i)
and (ii) do not apply—the re-examination is completed 2 months from the
day when the commissioner reports under section 98 of the Act.
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Chapter 9A Examination of innovation patents
Regulation 9A.1
72 Patents Regulations 1991
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Chapter 9A—Examination of innovation patents
9A.1 Request for examination
(1) A request for examination of a complete specification relating to an innovation
patent must be in the approved form.
(2) If the Commissioner decides, under paragraph 101A(a) of the Act, to examine a
complete specification, the Commissioner must tell the patentee about the
decision.
(3) If a request is made under paragraph 101A(b) of the Act by a person other than
the patentee, the Commissioner must tell the patentee about the request.
(4) A request for examination of a complete specification can be withdrawn only:
(a) by the person who made the request; and
(b) before examination of the complete specification has begun; and
(c) if the Commissioner is satisfied, on reasonable grounds, that the request
was made in error.
(5) If examination of a complete specification has begun, no further requests for
examination of the specification can be made.
9A.2 Examination of complete specification
For section 101B of the Act, the Commissioner may examine a complete
specification relating to an innovation patent only if the patent has been granted.
9A.3 Conduct of examination
(1) If the Commissioner believes, on reasonable grounds, that there are lawful
grounds for revocation of the innovation patent, the Commissioner must state the
grounds for revocation in reporting on an examination.
(2) The patentee may contest a ground for revocation in writing or ask for leave to
amend the complete specification in accordance with Chapter 10.
(3) If the patentee asks for leave to amend a complete specification in response to, or
in anticipation of, a report under section 101B of the Act, the Commissioner
must examine the specification and report as if each proposed amendment had
been made.
(4) If the patentee contests a ground for revocation, the Commissioner must examine
the specification and take note of the matters raised by the applicant.
(5) If the request for examination was made by a person other than the patentee, the
Commissioner must send a copy of the report to the person who requested the
examination.
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9A.4 Period for examination
For paragraph 101C(b) of the Act, the examination of a complete specification
for an innovation patent must be completed before the end of whichever of the
following periods ends latest:
(a) the period of 6 months from the date on which the first report is issued
under section 101B of the Act;
(b) the period mentioned in paragraph 13.4(1)(d);
(c) if an appeal has been made to a prescribed court in relation to the patent—
the period of 3 months from the date on which the appeal is withdrawn,
finally dealt with or determined, or such longer period as the court allows;
(d) if the Commissioner requires a document to be made available under
subsection 43AA(4) of the Act—5 months from the date the requirement is
made;
(e) if:
(i) the Commissioner has informed the patentee of a notice under
subsection 28(1) of the Act; and
(ii) a ground for revocation is raised based on information in the notice;
3 months from the date of the report that first mentions the ground for
revocation;
(f) if:
(i) the Commissioner gives the applicant an opportunity to be heard in
relation to a report under section 101B of the Act or regulation 10.2
by:
(A) notifying the applicant in writing of the date by which written
submissions must be filed; or
(B) notifying the applicant in writing of the date, time and place
of an oral hearing; and
(ii) the Commissioner makes a decision in writing in relation to the
report;
3 months from the date the decision is made;
(g) if the Commissioner revokes a certificate of examination under
section 101EA of the Act—3 months from the date the decision to revoke
is made.
9A.5 Validity of innovation patent
For the purposes of examination, if a notice has been filed under
subsection 28(1) of the Act, the Commissioner must consider a matter stated in
the notice that addresses a claim that an invention does not comply with
paragraph 18(1A)(b) of the Act.
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Chapter 10—Amendments
10.1 Form of amendments
(1) For the purposes of subsection 104(1) of the Act, an applicant or a patentee may
ask the Commissioner for leave to amend a patent request or complete
specification or another filed document by filing a request for leave to amend in
the approved form together with a statement of proposed amendments.
(1A) If an applicant proposes to amend a patent request, complete specification or
other filed document for a reason mentioned in subregulation (1B), the applicant
is taken to have complied with subregulation (1) if a written statement of the
proposed amendments is filed.
(1B) For subregulation (1A), the reasons are:
(a) to remove a lawful ground of objection or revocation raised in an
examination report; or
(b) for an application for a standard patent—in anticipation of examination of
the patent request and complete specification; or
(c) for an innovation patent—in anticipation of examination of the complete
specification.
(2) If:
(a) a proposed amendment is to be made by means of substituting a document
or part of a document; or
(b) the Commissioner requires the applicant or patentee to make a proposed
amendment by that means;
the applicant or patentee must file:
(c) 2 copies of each document or part that is to be substituted for a document
or part; and
(d) on 1 of the copies, an indication, in a manner approved by the
Commissioner, of the nature and location of the proposed amendment.
(3) The Commissioner may require an applicant or a patentee to file, within 3
months of being asked to do so, a statement of the reasons for the request being
made and any evidence in support of the request.
(4) The Commissioner may, before granting leave to amend, require a patentee to
file within 1 month of being asked to do so, a statement that, to the best of his or
her knowledge, relevant proceedings are not pending in relation to the patent.
(5) For the purposes of this Chapter, a statement of proposed amendments may be
amended by filing a statement of proposed amendments of the first-mentioned
statement before leave is granted under regulation 10.5 to amend the patent
request or complete specification or another filed document.
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10.2 Commissioner to consider and deal with requests for leave to amend
(1) For the purposes of subsection 104(2) of the Act, the Commissioner must report
on whether:
(a) the request for leave to amend and the statement of proposed amendments
do not comply with regulation 10.1 and Schedule 3; and
(b) any proposed amendment of a complete specification is not allowable
under section 102 or 103 of the Act; and
(c) the proposed amendments are not allowable under regulation 10.3 or, if
made, would not otherwise be allowable under the Act or these
Regulations;
and may, if the request for leave to amend relates to a PCT application, and a
copy of an international preliminary examination report relating to the
application has not been provided to the Commissioner:
(d) notify the applicant of that fact; and
(e) ask the applicant to provide a copy of the international preliminary
examination report, or to advise that no amendments were made under
Article 34 of the PCT, or to abandon any amendments that may have been
made under Article 34 of the PCT.
(2) The Commissioner must give a copy of each report made under subregulation (1)
to the applicant or patentee.
(3) The applicant or patentee may:
(a) contest the report in writing; or
(b) file a statement of proposed amendments of the statement referred to in
paragraph (1)(a); or
(c) if the report relates to a request for leave to amend a PCT application, and
the Commissioner has reported under subregulation (1) that the
international preliminary examination report has not been provided to the
Commissioner:
(i) provide a copy of the international preliminary examination report to
the Commissioner; or
(ii) if:
(A) no demand was made under Article 31 of the PCT; or
(B) no amendments were made under Article 34 of the PCT; or
(C) the demand was made under Article 31 of the PCT, or the
international preliminary examination report was established,
after the applicant complied with the requirements of
subsection 29A(5);
advise the Commissioner of that fact; or
(iii) elect to abandon any amendments that may have been made under
Article 34 of the PCT.
Note: If the applicant provides the advice mentioned in subparagraph (c)(ii), or makes the election mentioned in subparagraph (c)(iii), any amendments made under Article 34 of the PCT are not taken to be included in the application.
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(4) If a statement of proposed amendments referred to in subregulation (3) is filed,
the Commissioner must report under subregulation (1) as if the proposed
amendments had been made.
(5) If, under subregulation (3), the applicant or patentee contests the report, the
Commissioner must report under subregulation (1) and take notice of the matters
raised by the applicant or patentee.
(5A) If, under subregulation (3), the applicant:
(a) provides a copy of the international preliminary examination report to the
Commissioner; or
(b) provides the advice mentioned in subparagraph (3)(c)(ii) to the
Commissioner; or
(c) elects to abandon any amendments that may have been made under Article
34 of the PCT;
the Commissioner must report under subregulation (1) taking notice of that fact.
(6) Subregulation (6A) applies if:
(a) either:
(i) the grant of a standard patent is opposed under section 59 of the Act;
or
(ii) an innovation patent is opposed under section 101M of the Act; and
(b) the applicant or patentee has requested leave to amend the patent request or
complete specification concerned.
(6A) The Commissioner must:
(a) give a copy of the request for leave to amend and the statement of proposed
amendments to the opponent as soon as practicable after the request for
leave to amend has been filed; and
(b) invite the opponent to comment on the request and statement.
(7) The opponent may file comments within 21 days, or any longer period (up to 2
months) allowed by the Commissioner, after being given the copy of the request
for leave to amend and the statement under paragraph (6A)(a).
(8) If:
(a) a person has, under subregulation 3.25(1), requested the Commissioner to
grant the certification referred to in that subregulation; and
(b) the Commissioner has not made a decision under subregulation 3.25(2);
and
(c) the applicant or patentee has filed a request for leave to amend the
complete specification in respect of a matter mentioned in paragraph 6(c)
of the Act;
the Commissioner must, as soon as practicable after the request for leave to
amend has been filed, give a copy of that request and the statement of proposed
amendments to the person referred to in paragraph (a).
(9) If a request for leave to amend a complete specification in respect of a
micro-organism is made for the purpose of including in the specification a matter
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in respect of which a notice has been filed by a person under
subregulation 3.29(1), the Commissioner must, as soon as practicable after the
request for leave to amend has been filed, give the person a copy of the request
and the statement of proposed amendments.
10.2A Documents considered for determining whether amendment allowed
For paragraph 102(1)(b) of the Act, the following documents are prescribed:
(a) an abstract that was filed with the complete specification;
(b) a missing part or element of a complete specification that was incorporated
into the specification, in accordance with regulation 3.5A or Rule 20.5 or
20.6 of the PCT;
(c) an amendment that has been made to the complete specification after filing,
for the purpose of:
(i) correcting a clerical error or obvious mistake; or
(ii) complying with paragraph 6(c) of the Act.
10.2B Amendments not allowable for patent requests
(1) This regulation is made for subsection 102(2D) of the Act.
(2) An amendment of a patent request is not allowable if:
(a) the patent request has been accepted under section 49 or 52 of the Act; and
(b) the amendment would convert the patent application from:
(i) an application for a standard patent to an application for an innovation
patent; or
(ii) an application for an innovation patent to an application for a standard
patent.
(3) If:
(a) a request for leave to amend a patent request for a standard patent is filed
within 3 weeks before the date a notice is due to be published in the
Official Journal under section 54 of the Act in relation to the specification;
and
(b) the amendment would:
(i) convert the patent application from an application for a standard
patent to an application for an innovation patent; or
(ii) change the priority date of the application to a date that is later than
the priority date that is currently recorded for the application;
the amendment is not allowable until after the date the notice is published.
(4) An amendment of a patent request is not allowable if:
(a) the patent request has been accepted under section 49 or 52 of the Act; and
(b) the amendment would convert the patent application into a further
complete application within the meaning of section 79B or 79C of the Act.
(5) An amendment of a patent request is not allowable if:
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(a) the amendment would convert the patent application into a further
complete application within the meaning of section 79B of the Act; and
(b) the period allowed under subsection 79B(3) of the Act for making a further
complete application has ended.
(6) An amendment of a patent request is not allowable if:
(a) the amendment would convert the patent application into a further
complete application within the meaning of section 79C of the Act; and
(b) the period allowed under subsection 79C(2) of the Act for making a further
complete application has ended.
(7) An amendment of a patent request is not allowable after the patent has been
granted.
10.2C Amendments not allowable for complete specifications
(1) This regulation is made for subsection 102(2D) of the Act.
(2) An amendment of a complete specification is not allowable if:
(a) the amendment relates to a matter mentioned in paragraph 6(c) of the Act;
and
(b) after the amendment was made, the specification would not include each of
the matters specified in that paragraph.
(3) An amendment of a complete specification is not allowable if the Commissioner:
(a) has given a copy of a request for leave to amend under
subregulation 10.2(8) or (9) to a person; and
(b) has not given the person a reasonable opportunity to be heard.
(4) An amendment of a complete specification for an innovation patent, other than
an amendment proposed in response to a direction under regulation 3.2B, is not
allowable until after the patent has been granted.
(5) An amendment of a complete specification for an innovation patent is not
allowable if the amendment would result in the specification claiming:
(a) a thing mentioned in subsection 18(2) of the Act; or
(b) a thing mentioned in subsection 18(3) of the Act (other than a thing also
mentioned in subsection 18(4) of the Act).
(6) An amendment of a complete specification is not allowable if making an
amendment would be contrary to section 112 or 112A of the Act.
10.3 Amendments not allowable for other documents
(1) For a provisional specification, an amendment of the provisional specification is
not allowable if, as a result of the amendment, the specification would disclose
matter that extends beyond that disclosed in the following documents taken
together:
(a) the provisional specification as filed;
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(b) an abstract that was filed with the provisional specification;
(c) a missing part of a provisional specification that was incorporated into the
specification in accordance with regulation 3.5A.
(2) An amendment of an abstract is not allowable.
Note: An abstract may be substituted under regulation 3.4.
10.4 Commissioner to refuse request for leave to amend
The Commissioner must refuse the request for leave to amend, if:
(a) he or she reasonably believes that a proposed amendment is not allowable,
other than for the reasons mentioned in subregulation 10.2C(3); or
(b) the applicant or patentee has not complied with a request of the
Commissioner under subregulation 10.1(3); or
(c) in the case of a proposed amendment of a complete specification relating to
a patent—the patentee has not complied with a request of the
Commissioner under subregulation 10.1(4).
10.5 Commissioner to grant leave to amend
(1) The Commissioner must grant leave to amend a patent request, complete
specification or other filed document:
(a) if the report on the proposed amendments under subregulation 10.2(1) is
not an adverse report; and
(b) in the case of amendments that are proposed in anticipation of, or in
response to, a report relating to an examination under section 45 of the Act
and that do not relate to matters mentioned in paragraph 6(c) of the Act—if
the Commissioner is satisfied, on the balance of probabilities, that the
proposed amendments would remove all lawful grounds of objection to the
patent request and complete specification; and
(c) in the case of amendments that are proposed in anticipation of, or in
response to, a report relating to an examination under section 101B of the
Act—if the Commissioner is satisfied, on the balance of probabilities, that
the proposed amendments would remove all lawful grounds for revocation
of the innovation patent.
(2) If the Commissioner grants leave to amend, he or she must publish a notice of
that fact in the Official Journal, where:
(a) the patent request and complete specification to which the leave to amend
relates have been accepted under section 49 of the Act, or a decision to
certify has been made under section 101E of the Act; and
(b) the proposed amendments are in respect of:
(i) the complete specification; or
(ii) the patent request or another filed document and the proposed
amendments would materially alter the meaning or scope of the
request or document.
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(3) The Minister or another person may oppose allowance of an amendment if a
notice is published under subregulation (2).
(4) For the purposes of paragraph (2)(b), if:
(a) a request for leave to amend is filed before a patent is granted on an
application under section 61 of the Act; and
(b) the proposed amendments relate to the name or address of an applicant for
the patent;
the proposed amendments are not taken to materially alter the meaning or scope
of the patent request or other filed document.
10.6 Time for allowance of amendments
(1) If:
(a) the Commissioner grants leave to amend a patent request, complete
specification or other filed document; and
(b) subregulation 10.5(2) does not apply to the amendment;
the Commissioner must allow the proposed amendment immediately.
(2) If:
(a) subregulation 10.5(2) applies to a proposed amendment of a patent request,
complete specification or other filed document; and
(b) no person opposes the allowance of the proposed amendment; and
(c) the Commissioner is satisfied that no relevant proceedings are pending;
the Commissioner must allow the proposed amendment at the end of the time for
bringing opposition proceedings.
(3) If:
(a) subregulation 10.5(2) applies to a proposed amendment of a patent request,
complete specification or other filed document; and
(b) a person opposes the allowance of the proposed amendment; and
(c) the opposition is decided against the opponent; and
(d) the Commissioner is satisfied that no relevant proceedings are pending;
the Commissioner must allow the proposed amendment immediately after the
opposition is fully determined.
(4) For the purposes of subregulation (3), an opposition is fully determined when:
(a) a decision has been made in respect of the opposition and the decision is no
longer subject to any form of review (including review by way of appeal
against a decision of the AAT or a prescribed court); or
(b) a decision that has been made in respect of the opposition was subject to
review (including review by way of appeal against a decision of the AAT
or a prescribed court) but the period within which review proceedings
could have been instituted has expired without review proceedings having
been instituted; or
(c) the opposition is withdrawn.
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(5) If the Commissioner requires a patentee to file a statement that, to the best of the
knowledge of the patentee, relevant proceedings are not pending, the patentee
must file the statement within 1 month of the Commissioner so requiring.
10.6A Deferred consideration of request for amendment
(1) This regulation applies if:
(a) on or after 1 January 2012—an applicant asks the Commissioner for leave
to amend a complete specification; and
(b) the complete specification relates to an application for a standard patent;
and
(c) the applicant has not filed a request for examination of the patent request
and complete specification relating to the application; and
(d) the applicant asks the Commissioner to defer considering the request for
leave to amend until the Commissioner examines the patent request and
complete specification.
(2) The request for leave to amend the complete specification is taken to be filed
immediately after the applicant files the request for examination of the patent
request and complete specification.
10.6B Revocation of grant of leave
(1) A grant of leave to amend a patent request, complete specification or other filed
document under regulation 10.5 is revoked if:
(a) leave to amend was granted at the same time as the acceptance of the
patent request and complete specification under subsection 49(1) of the
Act; and
(b) acceptance of the patent request and complete specification is later revoked
under section 50A of the Act.
(2) A grant of leave to amend a patent request, complete specification or other filed
document under regulation 10.5 is revoked if:
(a) leave to amend was granted at the same time as the decision mentioned in
paragraph 101E(a) of the Act was made; and
(b) the certificate of examination issued in relation to the patent is later
revoked under subsection 101EA(1) of the Act.
(3) The Commissioner may revoke a grant of leave to amend a patent request,
complete specification or other filed document under regulation 10.5 if the
Commissioner is satisfied that:
(a) leave to amend should not have been granted, taking into account all of the
circumstances that existed when leave was granted (whether or not the
Commissioner knew the circumstances existed); and
(b) it is reasonable to revoke the grant and allowance of the amendment(if
applicable), taking into account all of the circumstances; and
(c) there are no relevant proceedings pending.
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(4) If leave to amend a patent request, complete specification or other filed
document under regulation 10.5 is revoked (whether automatically or by the
Commissioner):
(a) leave to amend is taken to never have been granted; and
(b) if allowed under regulation 10.6, the amendment is taken not to have been
allowed; and
(c) the Commissioner must continue to examine and report on the amendment
in accordance with subregulation 10.2(1); and
(d) regulations 10.5 and 10.6 continue to apply in relation to the amendment.
10.7 Rectification of Register
(1) A person applying for rectification of the Register under section 191A of the Act
must do so in the approved form.
(2) The Commissioner:
(a) may seek further information from any person for the purpose of
considering the application; and
(b) is not required to consider the application while seeking the further
information.
(3) The Commissioner must publish a notice of the rectification request in the
Official Journal unless the rectification:
(a) relates to an address included in the Register; or
(b) relates to a name included in the Register and does not relate to a change of
identity; or
(c) relates to the title of an invention included in the Register; or
(d) is to correct an obvious mistake made in the Register; or
(e) does not materially alter the meaning or scope of an entry in the Register.
(4) However, the Commissioner is not required to publish a notice under
subregulation (3) if the Commissioner is satisfied that the rectification should not
be made.
(5) If the Commissioner publishes a notice under subregulation (3), the
Commissioner must not rectify the Register until the later of:
(a) 2 months after publishing the notice; and
(b) if a person requests to be heard in relation to the rectification request—
after the person has been heard.
10.8 Prescribed decisions: appeal to Federal Court
For subsection 104(7) of the Act, a prescribed decision is a decision to grant
leave to amend a patent request or complete specification to which
paragraph 10.5(1)(b) or (c) applies.
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10.10 Prescribed period: filing of court order
For the purposes of subsection 105(5) of the Act, the period of 14 days from the
date of the order of the court is prescribed.
10.11 Form of direction by Commissioner: patents
A direction of the Commissioner under subsection 106(1) of the Act:
(a) must be in writing; and
(b) must state the grounds on which he or she is satisfied that the patent
relating to the direction is invalid; and
(c) must specify the time within which the patentee must file a relevant
statement of proposed amendments.
10.12 Form of direction by Commissioner: applications
A direction of the Commissioner under subsection 107(1) of the Act:
(a) must be in writing; and
(b) must state the grounds on which he or she is satisfied that there are lawful
grounds of objection to the patent request or complete specification; and
(c) must specify the time within which the applicant must file a relevant
statement of proposed amendments.
10.14 Form of request: claim under assignment or agreement
A request under subsection 113(1) of the Act for a direction of the Commissioner
must be in the approved form.
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Chapter 11—Infringement
11.1 Infringement exemptions: prescribed foreign countries
For the purposes of the definitions of foreign aircraft, foreign land vehicle and
foreign vessel in the Act, each of the foreign countries mentioned in
regulation 1.4 is prescribed.
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Chapter 12—Compulsory licences and revocation of
patents
Part 1—Compulsory licences (general)
12.1 Applications for orders for compulsory licences
(1) For the purposes of subsection 133(1) of the Act, the period of 3 years after the
date of granting of the patent to which the application relates is prescribed.
(2) An applicant must lodge with the Registrar of the Federal Court:
(a) a copy of the application that includes:
(i) the name and address of the applicant; and
(ii) the address for service in relation to the application; and
(iii) the identity of the patent; and
(iv) if the applicant relies on the ground mentioned in paragraph 133(2)(a)
of the Act—facts supporting the assertion that the reasonable
requirements of the public with respect to the patented invention have
not been satisfied; and
(iva) if the applicant relies on the ground mentioned in paragraph 133(2)(b)
of the Act—facts supporting the assertion that the patentee has
contravened, or is contravening, Part IV of the Trade Practices Act
1974 or an application law (as defined in section 150A of that Act) in
connection with the patent; and
(v) for an innovation patent—the date that the patent was certified; and
(b) a declaration by the applicant to the effect that the facts in the statement are
true to the best of the knowledge of the applicant.
(2A) For subparagraph (2)(a)(ii), the address for service must be an address that is
mentioned in Rules made by the Federal Court for the service of the application,
as in force from time to time.
Note: In a transitional period after this subregulation commences, there may be different
Rules made by the Federal Court to deal with suitable addresses for service in
particular circumstances.
(3) The applicant must:
(a) serve a copy of the application and declaration on the patentee and any
other person who claims an interest in the patent as soon as practicable
after lodgment; and
(b) lodge with the Registrar notice of the date when, and the place where, he or
she complied with paragraph (a).
(4) For subregulation (3), the applicant must serve the copy in accordance with
Rules made by the Federal Court for the service of the application and
declaration, as in force from time to time.
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Note: In a transitional period after this subregulation commences, there may be different
Rules made by the Federal Court to deal with service in particular circumstances.
12.2 Prescribed period: revocation of patent
(1) For subsection 134(1) of the Act, the prescribed period is 2 years from the date
of the grant of the first compulsory licence in respect of a patent.
(2) The Federal Court may, as a preliminary issue, hear and determine the question
of the right of the person concerned to apply for revocation of a patent in respect
of which a compulsory licence has been ordered.
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Part 2—Patented pharmaceutical invention compulsory
licences (for manufacture and export to eligible
importing countries)
12.2A Applications for PPI orders
(1) An applicant for a PPI order in relation to the export of a pharmaceutical product
to an eligible importing country must lodge, with the Registrar of the Federal
Court, an application that includes the following:
(a) the name and address of the applicant;
(b) the applicant’s address for service in relation to the application;
(c) the name of the eligible importing country;
(d) if the pharmaceutical product is to be imported by a person on behalf of,
and with the authorisation of, the eligible importing country—the name and
address of that person;
(e) the name of the pharmaceutical product;
(f) the proposed use of the pharmaceutical product in the eligible importing
country;
(g) the amount of the pharmaceutical product proposed to be manufactured for
export;
(h) the proposed duration of the PPI compulsory licence;
(i) the identity of the patent;
(j) the name of the patentee;
(k) if the patent is an innovation patent—the date of certification of the
innovation patent.
(2) For paragraph (1)(b), the address for service must be an address that is
mentioned in Rules made by the Federal Court for the service of the application,
as in force from time to time.
(3) The applicant must:
(a) serve a copy of the application on the patentee and any other person who
claims an interest in the patent as soon as practicable after lodgement; and
(b) lodge with the Registrar notice of the date when, and the place where, he or
she complied with paragraph (a).
(4) For subregulation (3), the applicant must serve the copy in accordance with
Rules made by the Federal Court for the service of the application, as in force
from time to time.
12.2B PPI compulsory licences—notification requirements
(1) This regulation sets out the notification requirements for paragraph 136E(1)(f) of
the Act in relation to the importation of a pharmaceutical product into an eligible
importing country.
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(2) Subregulation (3) applies if the eligible importing country is a WTO member.
(3) The eligible importing country must have notified the Council for TRIPS in
accordance with paragraph 2(a) of the Annex to the TRIPS Agreement.
(4) Subregulation (5) applies if the eligible importing country is:
(a) a least developed country; and
(b) not a WTO member.
(5) The eligible importing country must have given the Commissioner a written
notice:
(a) stating:
(i) the name of the eligible importing country; and
(ii) the name of the pharmaceutical product; and
(iii) the expected quantity of the pharmaceutical product to be imported
into the eligible importing country; and
(b) confirming that, if the pharmaceutical product is patented in the eligible
importing country, it:
(i) has granted; or
(ii) intends to grant;
a compulsory licence that would accord with Articles 31 and 31bis of the
TRIPS Agreement and the Annex to that Agreement if the Agreement and
Annex applied to the eligible importing country.
12.2C PPI compulsory licences—labelling and marking of product
(1) For paragraph 136F(1)(c) of the Act, the pharmaceutical product must be
labelled or marked in a way that:
(a) clearly identifies the product as being exported from Australia under the
PPI compulsory licence; and
(b) distinguishes the product from:
(i) the same pharmaceutical product as sold in Australia; and
(ii) the same pharmaceutical product as exported other than under the
licence.
(2) For subregulation (1), the labelling or marking must:
(a) be applied to:
(i) the immediate package containing the pharmaceutical product; and
(ii) any other package containing that package (whether or not other
packages are involved); and
(b) remain clear and legible at all times while the product is being exported.
12.2D PPI compulsory licences—shipment information
(1) For paragraph 136F(1)(d) of the Act, the following shipment information is
prescribed in relation to each shipment of a pharmaceutical product:
(a) the name of the pharmaceutical product;
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(b) the amount of the product in the shipment;
(c) the name of the licensee;
(d) the licensee’s address for service;
(e) the name of the eligible importing country;
(f) if a person is importing the pharmaceutical product on behalf of, and with
the authorisation of, the eligible importing country—the name and address
of the person;
(g) a description of the packaging (including colour, size and shape) and the
labelling or marking of the pharmaceutical product.
(2) For paragraph 136F(1)(d) of the Act, the shipment information must be made
available for at least the duration of the licence.
12.2E PPI compulsory licences—giving information to the Commissioner
(1) This regulation sets out for paragraph 136F(1)(h) of the Act the information that
a licensee must give to the Commissioner in relation to the licence.
Grant of licence
(2) The licensee must give the Commissioner the following information in relation
to the grant of the PPI compulsory licence:
(a) the date of the PPI order;
(b) the place at which the PPI order was made;
(c) the name and address of the licensee;
(d) the licensee’s address for service;
(e) the name of the pharmaceutical product;
(f) the quantity of the pharmaceutical product that the Federal Court has
determined may be manufactured for export;
(g) the eligible importing country to which the pharmaceutical product is to be
exported;
(h) the duration of the licence;
(i) the identity of the patent;
(j) the address of the website on which the shipment information is to be made
available.
(3) The information mentioned in subregulation (2) must be given to the
Commissioner:
(a) in the approved form; and
(b) within 1 month after the Federal Court makes the order requiring the grant
of the licence.
Amendment of licence
(4) If the licence is amended by order under section 136G of the Act, the licensee
must give the Commissioner the following information in relation to the
amendment:
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(a) the date of the amending order;
(b) the place at which the amending order was made;
(c) details of the amendment.
(5) The information mentioned in subregulation (4) must be given to the
Commissioner:
(a) in the approved form; and
(b) within 1 month after the Federal Court makes the order amending the
licence.
Revocation of licence
(6) If the licence is revoked by order under section 136H of the Act, the licensee
must give the Commissioner the following information in relation to the
revocation:
(a) the date of the revocation order;
(b) the place at which the revocation order was made.
(7) The information mentioned in subregulation (6) must be given to the
Commissioner:
(a) in the approved form; and
(b) within 1 month after the Federal Court makes the order revoking the
licence.
Agreement or determination of remuneration
(8) If an amount of remuneration for the licence is agreed under
paragraph 136J(3)(a) of the Act or determined by the Federal Court under
paragraph 136J(3)(b) of the Act, the licensee must give the Commissioner a
statement that an amount of remuneration has been agreed or determined, as the
case may be.
(9) The information mentioned in subregulation (8) must be given to the
Commissioner:
(a) in the approved form; and
(b) within 1 month after the agreement is reached or the determination is made.
12.2F Dealing with information provided under regulation 12.2E
(1) If the Commissioner receives the information mentioned in
subregulation 12.2E(2) in relation to the grant of a PPI compulsory licence, the
Commissioner must:
(a) if the eligible importing country is a WTO member—give a copy of the
information to the Council for TRIPS; or
(b) in any other case—publish the information on the internet.
(2) If the Commissioner receives the information mentioned in
subregulation 12.2E(8) in relation to a licence, the Commissioner must give the
eligible importing country to which the licence relates a notice stating that the
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licensee has advised that an amount of remuneration in respect of the licence has
been agreed or determined, as the case may be.
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Part 3—Surrender and revocation of patents
12.3 Form of notice: offer to surrender patent
(1) A notice under subsection 137(1) of the Act must be in the approved form.
(2) Notice of an offer to surrender under subsection 137(2) of the Act must be
published in the Official Journal.
(3) An interested person must, not later than 1 month after the publication, give the
Commissioner notice of his or her wish to be heard under subsection 137(3) of
the Act.
(4) The Commissioner may, as a preliminary issue, hear and determine the question
of the right of the person concerned to be heard.
12.4 Applications to revoke patents
(1) An applicant to a prescribed court for an order to revoke a patent under
subsection 138(1) of the Act must include, in the pleading or another document
disputing the validity of the patent:
(a) particulars of the grounds on which the applicant relies; and
(b) for an innovation patent—the date on which the patent was certified.
(2) If 1 of those grounds is that the invention is not a patentable invention because of
information about the invention in a document or through the doing of an act, the
particulars must specify:
(a) in the case of a document—the time when, and the place where, the
document is alleged to have become publicly available; and
(b) in the case of an act:
(i) the name of the person alleged to have done the act; and
(ii) the period in which, and the place where, the act is alleged to have
been done publicly; and
(iii) a description that is sufficient to identify the act; and
(iv) if the act relates to apparatus or machinery—whether the apparatus or
machinery exists and, if so, where it can be inspected.
(3) Except by leave of the court:
(a) evidence is not admissible to prove a ground of invalidity that has not been
disclosed in the particulars in relation to that ground; and
(b) evidence as to apparatus or machinery that exists at the date of lodgment of
the particulars is not admissible unless it is proved that the party relying on
the evidence:
(i) if the apparatus or machinery is in his or her possession—has offered
the opportunity to inspect it; or
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(ii) in any other case—has used reasonable endeavours to obtain its
inspection;
to, or by, each other party to the hearing of the application.
(4) The court may:
(a) extend the time for giving particulars; and
(b) allow the amendment of particulars.
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Chapter 13—Withdrawal and lapsing of applications
and ceasing of patents
13.1 Publication of notice of withdrawal of application
The Commissioner must publish notice in the Official Journal of the withdrawal
of a patent application under section 141 of the Act.
13.1A Period in which standard patent applications may not be withdrawn
(1) For paragraph 141(1)(c) of the Act, the prescribed period for an application for a
standard patent is:
(a) 3 weeks before the date on which a notice is due to be published in the
Official Journal under section 54 of the Act in respect of the specification;
or
(b) 3 weeks before the date on which a notice of acceptance is due to be
published in the Official Journal under paragraph 49(5)(b) of the Act.
(2) Subregulation (1) does not apply if an order made under subsection 152(3) or
173(1) of the Act is in force.
13.1B Period in which innovation patent applications may not be withdrawn
(1) For paragraph 141(1)(c) of the Act, the prescribed period for an application for
an innovation patent is the period:
(a) beginning when the Commissioner accepts the patent request and complete
specification under subsection 52(2) of the Act; and
(b) ending when the Commissioner grants the patent under subsection 62(1) of
the Act.
(2) Subregulation (1) does not apply if an order made under subsection 152(3) or
173(1) of the Act is in force.
13.1C PCT applications—prescribed circumstances in which application may be
withdrawn or taken to be withdrawn
(1) For subsection 141(2) of the Act, a PCT application may be withdrawn if the
conditions mentioned in subsection 141(1) of the Act are met.
(2) For subsection 141(2) of the Act, a PCT application is taken to be withdrawn if
Article 11(3) of the PCT ceases to have effect in Australia in relation to the PCT
application under Article 24(1)(i) of the PCT.
13.3 Prescribed period: continuation fees
(1) For paragraph 142(2)(d) of the Act:
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(a) a continuation fee for an application for a standard patent is payable for a
relevant anniversary at the last moment of the anniversary; and
(b) the period in which the fee must be paid is the period ending at the last
moment of the anniversary.
(1A) However, if the continuation fee is paid within 6 months after the end of the
relevant anniversary (6 month period):
(a) the period mentioned in paragraph (1)(b) is taken to be extended until the
fee is paid; and
(b) the continuation fee includes the additional fee stated in item 211 of
Schedule 7; and
(c) the additional fee is payable from the first day of the 6 month period.
(2) In the case of an application, filed before 1 April 2002, to which section 33, 34,
35, 36 or 79B of the Act applies, a continuation fee that is payable before 12
months after the date of filing the application is taken to have been paid.
(3) In this regulation, relevant anniversary, for an application for a standard patent,
means an anniversary:
(a) of the date that would be the date of the patent if a patent had been granted
on the application; and
(b) that is mentioned in item 211 of Schedule 7.
Note 1: For the date of a patent, see section 65 of the Act and regulation 6.3.
Note 2: For the fees payable, see regulation 22.2.
13.4 Prescribed period: acceptance of request and specification
(1) Subject to this regulation, the period prescribed for the purposes of
paragraph 142(2)(e) of the Act in relation to an application is:
(a) if examination of the patent request and complete specification is requested
before 15 April 2013—21 months from the date of the first report (if any)
under section 45 of the Act;
(b) if examination is requested on or after 15 April 2013—12 months from the
date of the first report (if any) under section 45 of the Act;
(d) if the Commissioner has reported that the patent request or complete
specification relates to an invention that, so far as claimed, is not novel in
view of information of the kind described in subparagraph (b)(ii) of the
definition of prior art base in the Act—the period of 3 months from the
earlier of:
(i) the date of publication of the specification containing that
information; or
(ii) its lapsing, refusal or withdrawal;
(e) if the patent request and complete specification relate to an application in
relation to which a request has been made under section 32 of the Act—
subject to subregulation (3), the period of 3 months from the date of the
determination by the Commissioner under that section;
(f) if:
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(i) a person has applied under subsection 36(1) of the Act in relation to
the patent request and complete specification; and
(ii) the Commissioner has made a declaration under paragraph 36(1)(c) of
the Act;
subject to subregulation (3), the period of 3 months from the date of that
declaration;
(g) subject to subregulation (3), if:
(i) the Commissioner gives the applicant an opportunity to be heard in
relation to a report under section 45 of the Act or regulation 10.2 by:
(A) notifying the applicant in writing of the date by which written
submissions must be filed; or
(B) notifying the applicant in writing of the date, time and place
of an oral hearing; and
(ii) the Commissioner makes a decision in writing in relation to the
report;
3 months from the date the decision is made;
(ga) subject to subregulation (3), if the Commissioner revokes an acceptance
under subsection 50A(1) of the Act—3 months from the date the decision
to revoke is made;
(h) if an appeal has been made to a prescribed court, or an application for
review has been made to the AAT, in relation to the patent request or
complete specification—subject to subregulation (4), the period of 3
months from the day when the appeal or application is withdrawn or finally
dealt with or determined;
(j) if:
(i) the application is for a patent of addition; and
(ii) an appeal has been made to a prescribed court or an application for
review has been made to the AAT in respect of the application for a
patent for the main invention;
subject to subregulation (4), the period of 3 months from the day when the
appeal or application is withdrawn or finally dealt with or determined;
(k) if the Commissioner requires a document to be made available under
subsection 43AA(4) of the Act—the period of 5 months from the date the
requirement is made;
(l) if:
(i) the Commissioner has informed the applicant of a notice under
subsection 27(1) of the Act; or
(ii) the applicant has informed the Commissioner, under subsection 45(3)
of the Act, of the results of any documentary searches;
and an objection is raised based on information in the notice or the search
results—the period of 3 months from the date of the report that first
mentions the objection.
(2) If more than 1 of paragraphs (1)(a) to (l) applies in a particular case, the lapsing
period is whichever period ends latest.
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(3) If paragraph (1)(e), (f), (g) or (ga) applies, the Commissioner may substitute a
period longer than 3 months, if the Commissioner is satisfied that acceptance of
the patent request and complete specification should be postponed.
(4) If paragraph (1)(h) or (j) applies, the court or Tribunal may in its discretion
substitute a period longer than 3 months.
13.5 If applications lapse
(1) If a complete application lapses under section 142, the Commissioner must
advertise that fact in the Official Journal.
(2) Subregulation (1) does not apply in relation to a PCT application that is treated
as a patent application under the Act, if the PCT application lapses under
paragraph 142(2)(f) of the Act.
13.5A PCT application—prescribed circumstances for lapsing of application
(1) For paragraph 142(2)(f) of the Act, a circumstance in which a PCT application
lapses is that the applicant has not met the requirements of subsection 29A(5) of
the Act within the prescribed period for that subsection.
(2) For paragraph 142(2)(f) of the Act, a circumstance in which a PCT application
lapses is that the effect of the international application under Article 11(3) of the
PCT ceases in Australia under Article 24(1)(ii) of the PCT before the
requirements of subsection 29A(5) of the Act have been met.
13.6 Time for payment of renewal fee for patent
(1) For paragraphs 143(a) and 143A(d) of the Act:
(a) a renewal fee for a patent is payable for a relevant anniversary at the last
moment of the anniversary; and
(b) the period in which the renewal fee must be paid is the period ending at the
last moment of the anniversary.
(1A) However, if an extension of the term of a standard patent is granted under
section 76 of the Act, the period in paragraph (1)(b) is taken to be extended until
6 months after the extension is granted for each relevant anniversary happening:
(a) on or after the twentieth anniversary of the date of the patent; and
(b) on or before the day the extension is granted.
(2) However, if the period mentioned in paragraph (1)(b) is not taken to be extended
under subregulation (1A), and the renewal fee is paid within 6 months after the
end of the relevant anniversary (6 month period):
(a) the period mentioned in paragraph (1)(b) is taken to be extended until the
fee is paid; and
(b) the renewal fee includes the additional fee mentioned in
subregulation (2A); and
(c) the additional fee is payable from the first day of the 6 month period.
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(2A) For paragraph (2)(b), the additional fee is:
(a) for a standard patent—the fee stated in item 211 of Schedule 7; and
(b) for an innovation patent—the fee stated in item 212 of Schedule 7.
(3) If a continuation fee is paid for a relevant anniversary in accordance with
regulation 13.3, the renewal fee for that anniversary is taken to have been paid.
(4) If an application for an innovation patent is made under section 79B or 79C of
the Act, a renewal fee that is payable within 1 month after the grant of the patent
is taken to have been paid.
(5) The Commissioner must publish notice in the Official Journal of a patent that
ceases under section 143 or 143A of the Act.
(6) In this regulation, relevant anniversary, for a patent, means an anniversary of the
date of the patent that is mentioned:
(a) for a standard patent—in item 211 of Schedule 7; or
(b) for an innovation patent—in item 212 of Schedule 7.
Note: For the date of a patent, see section 65 of the Act and regulation 6.3.
13.7 Prescribed period: ceasing of innovation patents
For paragraph 143A(c) of the Act, the prescribed period is the period mentioned
in regulation 9A.4 that applies to the patent.
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Chapter 15—Special provisions relating to associated
technology
15.1 Time for restoration of application for patent
A request under subsection 150(1) of the Act must be filed within 3 months after
the revocation, under section 149 of the Act, of a direction in respect of the
application to which the request relates.
15.2 Requirements for reinstatement of international applications
(1) For paragraph 151(4)(c) of the Act, the prescribed period is 3 months from the
revocation of a direction under section 149 of the Act.
(2) For the purposes of paragraph 151(4)(d) of the Act, the patent request, the
specification to which the request relates and such other documents as are
prescribed for the purposes of subsection 29(1) of the Act are prescribed.
(3) For the purposes of paragraph 151(4)(d) of the Act, the fee that would have been
payable if the application had been filed under section 29 of the Act is
prescribed.
15.3 Prescribed period: order relating to standard patent
For subsection 153(3) of the Act, the prescribed period is 1 month from the
revocation of the order under subsection 152(3) of the Act that relates to the
application.
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Regulation 17.1
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Chapter 17—The Crown
17.1 Application for declaration: exploitation of innovation patent
An application under subsection 169(1) of the Act for a declaration that an
innovation patent has been exploited by the Crown under section 163 of the Act
must include the date on which the innovation patent was certified.
17.1A Prescribed period: order relating to standard patent
For subsection 174(2) of the Act, the prescribed period is 1 month from the
revocation of an order under subsection 173(1) of the Act that relates to the
application.
17.2 Prescribed period, document and fee: filing of international applications
(1) For the purposes of paragraph 176(c) of the Act, the period of 3 months from the
date on which an international application is considered to be withdrawn under
Article 12 of the PCT is prescribed.
(2) For the purposes of paragraph 176(d) of the Act, the patent request, the
specification relating to the request and such other documents as are prescribed
for the purposes of subsection 29(1) of the Act are prescribed.
(3) For the purposes of paragraph 176(d) of the Act, the fee that would have been
payable if the application had been filed under section 29 of the Act is
prescribed.
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Regulation 19.1
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Chapter 19—The register and official documents
19.1 Particulars to be registered
(1) For subsections 187(1) and (2) of the Act, the following particulars are
prescribed, that is, particulars of:
(a) an entitlement as mortgagee, licensee or otherwise to an interest in a patent;
(b) a transfer of an entitlement to a patent or licence, or to a share in a patent or
licence;
(c) an extension of the term of a patent;
(d) a restoration of a patent;
(e) an order of a court a copy of which is filed under subsection 105(5) of the
Act;
(f) an order of a prescribed court that has been served on the Commissioner
under section 140 of the Act;
(g) an order of a prescribed court made on appeal in relation to a patent, being
an order of which an office copy has been served on the Commissioner;
(h) a decision of the Commissioner to revoke a patent under Chapter 9 of the
Act;
(i) the acquisition of a patent by the Commonwealth under Part 3 of
Chapter 17 of the Act;
(j) the cessation of a patent.
(2) A request for registration of particulars referred to in paragraph (1)(a) or (b) must
be in the approved form and have with it proof to the reasonable satisfaction of
the Commissioner of the entitlement of the person making the request.
19.2 Request for information from Commissioner
(1) A request made to the Commissioner under section 194 of the Act must be in the
approved form.
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Chapter 20 Individual Patent Attorneys
Part 1 Introduction
Regulation 20.1A
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Chapter 20—Individual Patent Attorneys
Part 1—Introduction
20.1A Application of this Chapter
This Chapter applies to:
(a) a patent attorney who is not an incorporated patent attorney; and
(b) an individual applying for registration as a patent attorney.
20.1B Performance of functions and exercise of powers
(1) A function that is conferred on a person or body under this Chapter may be
exercised in Australia or New Zealand.
(2) A power that is conferred on a person or body under this Chapter may be
exercised in Australia or New Zealand.
(3) For the purposes of this Chapter and subject to regulation 20.1C, it is immaterial
whether an act or omission mentioned in this Chapter took place in New
Zealand.
(4) For the purposes of this Chapter and subject to regulation 20.1C, it is immaterial
whether a matter mentioned in this Chapter concerns something that took place
in New Zealand.
20.1C Conduct in New Zealand does not constitute an offence under this
Chapter
A person is not liable to be prosecuted for an offence against these Regulations if
the act or omission constituting the offence occurred in New Zealand.
20.1 Interpretation
In this Chapter:
AQF means the Australian Qualifications Framework.
Board Chair means the Chair of the Board mentioned in paragraph 227A(2A)(a)
of the Act.
candidate means a person who proposes or proposed to sit, or has sat, for an
examination.
NZQF means the New Zealand Qualifications Framework established under
section 248 of the Education Act 1989 of New Zealand, as in force at the
commencement of this definition.
professional misconduct has the meaning given by regulation 20.32.
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serious offence means an offence that:
(a) involves obtaining property or a financial advantage by deception or
fraudulent conduct; and
(b) is either:
(i) an indictable offence against a law of the Commonwealth, a State or a
Territory (whether or not the offence may be dealt with summarily);
or
(ii) an offence against a law of a foreign country that would be an
indictable offence against a law of the Commonwealth, a State or a
Territory if committed in Australia (whether or not the offence could
be dealt with summarily if committed in Australia).
statement of skill has the meaning given by regulation 20.11.
unqualified, in relation to a particular time, means:
(a) not holding one or more of the academic qualifications or knowledge
requirements required for registration at that time by these Regulations; or
(b) not holding a qualification required for registration at that time by the
former attorneys Regulations.
unsatisfactory professional conduct has the meaning given by regulation 20.32.
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Part 2 Obtaining registration for first time
Regulation 20.2
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Part 2—Obtaining registration for first time
20.2 Form of application
An application for registration as a patent attorney must:
(a) be in writing, in a form approved by the Designated Manager; and
(b) be accompanied by evidence and material mentioned in regulation 20.3;
and
(c) be accompanied by the fee mentioned in item 104 of Schedule 7.
20.3 Evidence that applicant meets registration requirements
(1) An application for registration as a patent attorney must be accompanied by the
following:
(b) evidence that the Board is satisfied that the applicant has, or is entitled to
the award of, an academic qualification of a kind mentioned in
regulation 20.6;
(c) evidence that the Board is satisfied that the applicant has the knowledge of
intellectual property law and practice that is required for a person to
practise as a patent attorney;
(d) one or more statements of skill, for the purposes of regulation 20.11;
(e) a declaration, by the applicant, that he or she:
(i) has not, in the 5 years preceding the application, committed an
offence prescribed by subregulation 20.12(1); and
(ii) is not under sentence of imprisonment for an offence prescribed by
subregulation 20.12(2);
(f) a declaration, by another person, that the applicant is of good fame,
integrity and character.
(2) A declaration under paragraph (1)(f) must contain details of the basis of the
opinion that the applicant is of good fame, integrity and character.
20.4 Certificate of registration
If the Designated Manager registers a person as a patent attorney, the Designated
Manager must give the person a certificate of registration.
20.5 Evidence of academic qualifications
(1) The Board must be satisfied that a person has a qualification mentioned in
regulation 20.6 if:
(a) the person makes an application in the form approved by the Board; and
(b) the application is accompanied by:
(i) evidence that the person has the qualification; and
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(ii) the original or a certified copy of an academic record that shows the
units that make up the qualification.
(2) The Board must, within 42 days of deciding whether or not it is satisfied that the
person has the qualification, notify the person, in writing, of its decision.
Note: A decision that a person does not have a qualification is reviewable under
regulation 22.26.
20.6 Academic qualifications
(1) The Designated Manager must not approve an applicant for registration as a
patent attorney unless the applicant has, or is entitled to:
(a) a level 5 or higher AQF, or NZQF, qualification that the Board is satisfied
is an appropriate qualification for a patent attorney; or
(b) a qualification awarded by an overseas institution that the Board is satisfied
is equivalent to a level 5 or higher AQF, or NZQF, qualification.
(2) The Board must not be satisfied that a person has an AQF or NZQF qualification
unless the qualification, or a course taken for the purpose of the qualification:
(a) is in a field of science or technology that contains potentially patentable
subject matter; and
(b) involves a depth of study that the Board considers is sufficient to provide
an appropriate foundation for practise as a patent attorney.
(3) The Board must not be satisfied that a qualification from a foreign institution is
equivalent to an AQF or NZQF qualification unless the qualification, or a course
taken for the purpose of the qualification:
(a) is in a field of science or technology that contains potentially patentable
subject matter; and
(b) involves a depth of study that the Board considers is sufficient to provide
an appropriate foundation for practise as a patent attorney.
20.7 Evidence of knowledge requirements
(1) The Board must be satisfied that a person has a knowledge requirement
mentioned in regulation 20.8 if:
(a) the person makes an application in the form approved by the Board; and
(b) the application is accompanied by:
(i) evidence that the applicant has the relevant knowledge; and
(ii) the original or a certified copy of any academic record that shows the
study that contributes to the knowledge.
(2) The Board must, within 42 days of deciding whether or not it is satisfied that the
person has the knowledge requirement, notify the person, in writing, of its
decision.
Note: A decision that a person does not have a knowledge requirement is reviewable under
regulation 22.26.
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20.8 Knowledge requirements
(1) The Designated Manager must not approve an applicant for registration as a
patent attorney unless the Board is satisfied that the applicant has the knowledge
of intellectual property law and practice that is required for a person to practise
as a patent attorney.
(2) Subject to subregulations (3), (4) and (5), the Board must, in satisfying itself
whether or not an applicant has the knowledge of intellectual property law and
practice that is required for a person to practise as a patent attorney, take into
account whether the applicant has the knowledge requirements that meet the
minimum requirements set out in Schedule 5.
(3) The Board may publish guidelines setting out criteria for deciding whether or not
areas of study are likely:
(a) to meet the minimum requirements set out in Schedule 5;
(b) to provide a person with the appropriate level of understanding to practise
as a patent attorney.
(4) The Board may be satisfied that an applicant has the knowledge of intellectual
property law and practice that is required for a person to practise as a patent
attorney, despite the fact that the applicant does not meet every requirement set
out in Schedule 5.
(5) The Board is not able to be satisfied that the applicant has the knowledge of
intellectual property law and practice that is required for a person to practise as a
patent attorney if the knowledge requirements on which the applicant relies were
obtained more than 10 years prior to the application.
(6) If an applicant has been granted an exemption under regulation 20.9, the
applicant is taken to meet the requirement in Schedule 5 for which the exemption
is granted.
Note: Subsection 198(4) of the Act provides that the Designated Manager must register as a
patent attorney a person who satisfies certain conditions. Paragraph 198(4)(b) requires
that a person hold such qualifications as are specified in, or ascertained in accordance
with, the Regulations.
20.9 Exemption from a requirement in Schedule 5
(1) The Board may exempt an applicant from having to satisfy all or some of the
requirements mentioned in Schedule 5.
(2) The Board must not give an exemption to an applicant unless:
(a) the applicant makes an application in the form approved by the Board; and
(b) the applicant gives the Board enough information for the Board to be
satisfied under paragraph (c); and
(c) the Board is satisfied that:
(i) the applicant has passed a course of study at a satisfactory level; and
(ii) the course of study has outcomes that are the same as, or similar to,
those of a knowledge requirement for which the exemption is sought.
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(3) The Board may give an exemption under subregulation (1) if it is satisfied that
the applicant has successfully completed a relevant course of study within the 7
years preceding the application or within a longer period specified in writing by
the Board.
(4) An exemption under subregulation (1) is valid for 5 years from the date that the
exemption was granted or for a longer period specified in writing by the Board.
20.10 Employment requirements
(1) The applicant:
(a) must have been employed in Australia or New Zealand, or in both
countries, in a position, or positions, that provided the applicant experience
in the following skills:
(i) searching patent records;
(ii) preparing, filing and prosecuting patent applications in relation to
Australia and New Zealand;
(iii) preparing, filing and prosecuting patent applications in relation to
other countries and organisations, particularly countries and
organisations that are regarded as major trading partners with
Australia and New Zealand;
(iv) drafting patent specifications;
(v) providing advice on the interpretation, validity and infringement of
patents; and
(b) must have been employed in a position, or positions, of that kind for at
least:
(i) 2 continuous years; or
(ii) a total of 2 years within 5 continuous years.
Note: Examples of major trading partners for subparagraph (1)(a)(iii) are as follows:
(a) European Union;
(b) Japan;
(c) People’s Republic of China;
(d) Republic of Korea;
(e) United States of America.
(2) The requirements set out in subregulation (1) must be evidenced by means of one
or more statements of skill, as defined in regulation 20.11.
(3) For subregulation (1), a person is employed in Australia only if the person is, in
accordance with the terms of his or her employment, required to undertake (and
does undertake) the duties of his or her employment in Australia.
(4) For subregulation (1), a person is employed in New Zealand only if the person
is, in accordance with the terms of his or her employment, required to undertake
(and does undertake) the duties of his or her employment in New Zealand.
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.
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20.11 Statements of skill
(1) For paragraph 20.3(1)(d) and subregulation 20.10(2), a statement of skill is a
statement by a registered patent attorney who has been registered for at least 5
years that, in the opinion of the registered patent attorney, the applicant has the
experience mentioned in one or more of subparagraphs 20.10(1)(a)(i) to (v).
(2) Without limiting subregulation (1), a statement of skill must:
(a) contain details of the basis of the opinion that the applicant has the required
experience; and
(b) include details of the evidence on which the opinion is based;
described by reference to:
(c) the skills mentioned in paragraph 20.10(1)(a); and
(d) the employment requirements mentioned in paragraph 20.10(1)(b).
(3) If an applicant is unable to obtain a statement of skill from a registered patent
attorney who has been registered for at least 5 years, the Board may, at the
request of the applicant, prepare a statement of skill in relation to the applicant.
20.12 Prescribed offences
(1) An offence against any of the following Acts is a prescribed offence for
paragraph 198(4)(e) of the Act:
(a) the Act;
(b) the Designs Act 2003;
(c) the Plant Breeder’s Rights Act 1994;
(d) the Trade Marks Act 1995;
(e) the Designs Act 1953 of New Zealand;
(f) the Patents Act 1953 of New Zealand;
(g) the Patents Act 2013 of New Zealand;
(h) the Plant Variety Rights Act 1987 of New Zealand;
(i) the Trade Marks Act 2002 of New Zealand.
(2) An offence of dishonesty for which the maximum penalty is imprisonment for at
least 2 years is a prescribed offence for paragraph 198(4)(f) of the Act.
Note: Subsection 198(4) of the Act provides that the Designated Manager must register as a
patent attorney a person who satisfies certain conditions. Paragraph 198(4)(e) requires
that a person not have been convicted of a prescribed offence during the previous 5
years. Paragraph 198(4)(f) requires that a person not be under sentence of
imprisonment for a prescribed offence.
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Part 3—Accreditation of courses of study
20.13 Accreditation of courses of study
(1) The Board may accredit a course of study that is provided by an institution if the
Board is satisfied that the learning outcomes of the course would result in a
person who passes the course acquiring some or all of the knowledge of
intellectual property law and practice that the Board considers necessary for a
person to practise as a registered patent attorney.
(2) In deciding whether or not to accredit the course, the Board must consider
whether the learning outcomes of the course meet some or all of the requirements
set out in Schedule 5.
(3) In considering whether the learning outcomes of the course meets some or all of
the requirements set out in Schedule 5, the Board must consider any information
provided by the institution.
(4) If the institution gives the Board sufficient information for the Board to decide
whether the learning outcomes of the course meet a requirement mentioned in
Schedule 5, the Board must, within 4 months after receiving the information,
decide whether to accredit the course.
(5) Subject to subregulation (7), if the Board accredits a course, accreditation is for 5
years.
(6) If an institution intends to change an accredited course, it must advise the Board
in writing.
(7) The Board may revoke an accreditation if:
(a) changes are made to the course; and
(b) the Board decides that the course no longer achieves the learning outcomes
stated for the knowledge requirements to which it relates.
20.14 Provisional accreditation
(1) The Board may provisionally accredit a course if:
(a) the institution has sought accreditation for the course; and
(b) the information provided by the institution shows that the course includes a
requirement mentioned in Schedule 5; and
(c) either:
(i) the Board does not expect to complete its consideration of the course
under regulation 20.13 before the start of the academic semester; or
(ii) the Board has not completed its consideration of the course under
regulation 20.13 when the academic semester starts.
(2) The Board may provisionally accredit a changed course if:
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(a) a consequence of the change to the course is that the learning outcomes of
the course may meet fewer of the requirements set out in Schedule 5; and
(b) the Board considers that the changed course still achieves the learning
outcomes stated for the knowledge requirements mentioned in Schedule 5.
(3) Provisional accreditation:
(a) starts when the course is provisionally accredited; and
(b) ends at the earlier of:
(i) when the course has concluded; and
(ii) when a decision in relation to the course is made under
regulation 20.13.
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Part 4—Board examinations
20.15 Board examinations
(1) The Board may hold examinations for a requirement mentioned in Schedule 5.
(2) The Board may appoint examiners for the purposes of the examinations, and give
them instructions about the setting and marking of papers.
(3) An examiner is entitled to be paid the fees that the Minister determines in
writing.
20.16 Time for holding Board examinations
(1) The Board must arrange to publish in the Official Journal, with adequate notice:
(a) the time of each examination it holds and the place where it is to be held;
and
(b) the deadline for applications for admission to sit for each examination it
holds.
(2) Subregulation (1) does not apply to a supplementary examination under
regulation 20.21.
20.17 Examinable subject matter
From time to time, the Board must arrange to publish in the Official Journal
particulars of:
(a) the subject matter covered by the courses for which examinations are to be
held in relation to the relevant requirements mentioned in Schedule 5; and
(b) the reading and study material it recommends to candidates.
20.18 Admission to sit for a Board examination
An application by a person to sit for an examination must be in the form
approved by the Board.
20.19 Notification of Board examination results
As soon as practicable after an examination conducted by the Board, the Board
must give to each candidate who sat for the examination his or her results in the
examination.
20.20 Reasons for failure of Board examination
(1) A candidate who fails an examination conducted by the Board may apply to the
Board in the form approved by the Board within 1 month after being told of the
failure for a report of the reasons for the failure.
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(2) For subregulation (1), a report may be given by:
(a) the Board; or
(b) if the Board approves—the examiner appointed under
subregulation 20.15(2).
20.21 Supplementary Board examination
(1) An application by a person to sit for a supplementary examination must be in the
form approved by the Board.
(2) The Board may let a candidate sit for a supplementary examination if:
(a) the candidate:
(i) failed an examination; and
(ii) applies to the Board to sit for the supplementary examination within 1
month of being told of the failure; or
(b) the candidate:
(i) did not sit for the examination because of illness or another reason
that the Board reasonably considers sufficient; and
(ii) applies to the Board to sit for the supplementary examination within 1
month of the examination.
(3) For an application under paragraph (2)(a), the Board may take account of an
examiner’s comments on the candidate’s performance.
(4) A supplementary application under paragraph (2)(b) must be accompanied by
evidence of the reason for failing to sit the examination that was obtained at the
time of the illness or of the occurrence of the other event giving rise to the
reason.
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Part 5—Maintaining registration
20.22 Requirements for remaining on Register of Patent Attorneys
(1) To remain on the Register of Patent Attorneys, a registered patent attorney must,
for every year of registration:
(a) pay the annual registration fee set out in item 105 or 106 of Schedule 7;
and
(b) provide evidence that he or she has undertaken continuing professional
education, as required by regulation 20.24.
(2) Paragraph (1)(b) applies to a registered patent attorney who seeks to remain on
the Register of Patent Attorneys for the 12 months commencing on 1 July 2009
and for each subsequent period of 12 months.
20.23 Payment of annual registration fee
(1) The annual registration fee is payable by a registered patent attorney to whom
regulation 20.26 does not apply on 1 July in a year.
(2) The Designated Manager must, not later than 1 June in each year, give to each
registered patent attorney to whom regulation 20.26 does not apply, notice of the
fee that is payable.
20.24 Continuing professional education—number of hours
(1) Subject to subregulation (3), a registered patent attorney must, in the 12 months
immediately before the date on which the attorney applies for renewed
registration, have completed 10 hours of activities that the Designated Manager
is satisfied are appropriate for an attorney to undertake as a means of maintaining
the currency of his or her professional qualifications.
(2) The Board may publish guidelines setting out criteria for deciding whether or not
activities are likely to be appropriate for an attorney to undertake as a means of
maintaining the currency of his or her professional qualifications.
(3) A person who is both a registered patent attorney and a registered trade marks
attorney must, in the 12 months immediately before the date on which the
attorney applies for renewed registration, have completed 15 hours of activities
that the Designated Manager is satisfied are appropriate for an attorney to
undertake as a means of maintaining the currency of his or her professional
qualifications.
(4) In this regulation:
renewed registration means an application by a registered patent attorney to
renew his or her registration, other than the first application to renew his or her
registration.
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20.25 Method of demonstrating that continuing professional education has been
undertaken
(1) In making an application for a renewed registration, a registered patent attorney
must:
(a) give the Designated Manager a written statement made by the attorney that
states that the attorney has met the requirements of this Part; and
(b) have kept written records in relation to each continuing professional
education activity on which the attorney relies.
(2) For paragraph (1)(b), the records must:
(a) enable an assessment of the activity to confirm that the activity meets the
requirements of this Part; and
(b) be produced to the Designated Manager on request; and
(c) be kept until 3 years after the end of the registration period during which
the activity was completed.
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Regulation 20.26
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Part 6—Removal of attorney’s name from Register of Patent
Attorneys
20.26 Voluntary removal of name from Register of Patent Attorneys
The Designated Manager must, on the written request of a registered patent
attorney, remove the attorney’s name from the Register of Patent Attorneys.
20.27 Failure to pay annual registration fee
If a registered patent attorney does not pay the annual registration fee by 31 July
in the year in which the fee is payable, the Designated Manager must:
(a) remove the name of the attorney from the Register of Patent Attorneys; and
(b) notify the attorney of that removal.
20.28 Failure to comply with continuing professional education requirements
(1) If a registered patent attorney fails to comply with the requirements applicable to
the attorney under subregulation 20.25(1) or (2), the Designated Manager may
remove the attorney’s name from the Register of Patent Attorneys for a period
not exceeding 6 months.
(2) If a registered patent attorney, without reasonable excuse:
(a) provides a written statement under paragraph 20.25(1)(a) that is false in a
material particular; or
(b) fails to produce written records of his or her continuing professional
education activities in accordance with a request under paragraph
20.25(2)(b);
the Designated Manager must remove the attorney’s name from the Register of
Patent Attorneys.
(3) If the Designated Manager removes the name of a registered patent attorney from
the Register of Patent Attorneys under subregulation (2), the name of the
attorney must not be returned to the Register of Patent Attorneys in accordance
with regulation 20.29 for a period of 6 months from the day on which the
attorney’s name was removed from the Register of Patent Attorneys.
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Part 6A Suspension of registration
Regulation 20.28A
116 Patents Regulations 1991
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Part 6A—Suspension of registration
20.28A Requirement to notify of serious offence
(1) A registered patent attorney who has been charged with a serious offence must,
within 14 days after being charged, notify the Designated Manager, in writing, of
the charge.
(2) If the registered patent attorney:
(a) fails to comply with subregulation (1); and
(b) does not have a reasonable excuse for failing to comply;
the failure to comply constitutes unsatisfactory professional conduct.
20.28B Suspension of registration—serious offence
(1) The Designated Manager may, by written notice to a registered patent attorney,
suspend the registered patent attorney’s registration if the Designated Manager:
(a) is notified under subregulation 20.28A(1); or
(b) becomes aware that the registered patent attorney has been charged with a
serious offence.
(2) If the Designated Manager suspends the registered patent attorney’s registration:
(a) the suspension takes effect when the notice is given to the registered patent
attorney; and
(b) the Designated Manager must:
(i) give written notice to the Board of the suspension; and
(ii) by written notice, give the registered patent attorney 28 days after the
date of the notice (a show cause notice) within which to show cause
why the suspension should be lifted.
(3) The Designated Manager must consider any information provided by the
registered patent attorney in response to the show cause notice.
(4) The Designated Manager must immediately end the suspension if:
(a) the Designated Manager becomes aware that the charge is not proceeded
with or the prosecution of the charge is abandoned; or
(b) the Designated Manager becomes aware that the proceedings have been
completed without a conviction being recorded; or
(c) the proceedings have been completed with a conviction being recorded and
a Panel of the Disciplinary Tribunal decides not to continue the suspension
or cancel the registered patent attorney’s registration; or
(d) the Designated Manager considers that the suspension is no longer
necessary.
(5) If the Designated Manager ends the suspension, the Designated Manager must
notify, in writing, each of the following that the suspension has ended:
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(a) the registered patent attorney;
(b) the Board;
(c) the President.
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Regulation 20.29
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Part 7—Restoring attorney’s name to Register of Patent
Attorneys
20.29 Restoring attorney’s name to Register of Patent Attorneys
(1) Subject to subregulation (2), if:
(a) a patent attorney’s name was removed from the Register of Patent
Attorneys under regulation 20.26; and
(b) the attorney requests the Designated Manager, in writing, to restore the
attorney’s name to the Register of Patent Attorneys; and
(c) the attorney pays:
(i) the annual registration fee payable for the year in which the
reinstatement is made; and
(ii) the fee mentioned in item 107 of Schedule 7;
the Designated Manager must restore the attorney’s name to the Register of
Patent Attorneys.
(2) A request under paragraph (1)(b) must be made no more than 3 years after the
removal of the attorney’s name from the Register of Patent Attorneys.
(3) The Designated Manager may, in restoring the name of a registered patent
attorney to the Register of Patent Attorneys, impose a condition that, before
1 July of the following registration year, the registered patent attorney must
undertake such continuing professional education activities as the Designated
Manager considers reasonable in the circumstances.
(4) If:
(a) the Designated Manager imposes a condition; and
(b) the registered patent attorney fails to comply with the condition;
the Designated Manager may remove the name of the attorney from the Register
of Patent Attorneys.
20.30 Restoring attorney’s name to Register of Patent Attorneys following
payment of unpaid fee
The Designated Manager must restore a patent attorney’s name to the Register of
Patent Attorneys if:
(a) the attorney’s name was removed from the Register of Patent Attorneys
under regulation 20.27; and
(b) on or before 1 September of the year in which the attorney’s name was
removed from the Register of Patent Attorneys, or within such further
period as the Designated Manager reasonably allows, the attorney:
(i) pays the fee mentioned in regulation 20.27 and item 107 of
Schedule 7;
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(ii) makes an application in the form approved by the Designated
Manager.
20.31 Restoring attorney’s name to Register of Patent Attorneys in other
circumstances
(1) A person who has been a registered patent attorney, and to whom
regulation 20.29 or 20.30 does not apply, may apply to the Designated Manager
to have his or her name restored to the Register of Patent Attorneys.
(2) An application under subsection (1) must be in a form approved by the
Designated Manager.
(3) An application under subsection (1) must be accompanied by the following:
(a) evidence that the Board is satisfied with the currency of the person’s
knowledge of intellectual property law and practice;
(b) a declaration, by the applicant, that he or she:
(i) has not, in the 5 years preceding the application, committed an
offence prescribed by subregulation 20.12(1); and
(ii) is not under sentence of imprisonment for an offence prescribed by
subregulation 20.12(2);
(c) a declaration, by another person, that the person is of good fame, integrity
and character;
(d) a fee that is the sum of the fee mentioned in item 105 or 106 of Schedule 7,
whichever is applicable, and the fee mentioned in item 107 of Schedule 7.
(4) A declaration under paragraph (3)(c) must contain details of the basis of the
opinion that the applicant is of good fame, integrity and character
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Part 8 Discipline
Division 1 General
Regulation 20.32
120 Patents Regulations 1991
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Part 8—Discipline
Division 1—General
20.32 Definitions
In this Part:
conduct includes an act and an omission.
former attorney means a person whose registration as a patent attorney has been
suspended or cancelled under this Part.
professional misconduct means:
(a) unsatisfactory professional conduct that involves a substantial or consistent
failure to reach reasonable standards of competence and diligence; or
(b) any other conduct, whether occurring in connection with practice as an
attorney or otherwise, that shows that the attorney is not of good fame,
integrity and character; or
(c) any contravention of a law that is declared by these Regulations to be
professional misconduct.
unsatisfactory professional conduct includes conduct, in connection with
practice as a registered patent attorney, that falls short of the standard of
competence, diligence and behaviour that a member of the public is entitled to
expect of an attorney.
20.33 Role of Board in disciplinary proceedings
(1) The Board has the sole responsibility for commencing and conducting
disciplinary proceedings against a registered patent attorney.
(2) The role of the Board in commencing disciplinary proceedings includes
investigating, either as a result of information received or of its own motion,
whether:
(a) a registered patent attorney has been engaged in:
(i) professional misconduct; or
(ii) unsatisfactory professional conduct; or
(b) at the time of his or her registration, a registered patent attorney did not
hold either or both of the following:
(i) the academic qualifications mentioned in regulation 20.6;
(ii) the knowledge requirements mentioned in regulation 20.8; or
(c) a registered patent attorney obtained his or her registration by fraud.
(3) The Board may commence proceedings before the Disciplinary Tribunal against
a registered patent attorney if the Board is satisfied that there is a reasonable
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likelihood of the attorney being found guilty of unsatisfactory professional
conduct.
(4) The Board must commence proceedings against a registered patent attorney
before the Disciplinary Tribunal if the Board is satisfied that there is a reasonable
likelihood of the attorney being found guilty of an offence under
subregulation (2), other than of unsatisfactory professional conduct.
(5) In deciding whether or not to commence disciplinary proceedings against a
registered patent attorney, the Board may take into account patterns of behaviour
of the attorney when deciding whether or not it is satisfied that there is a
reasonable likelihood of the attorney being found guilty of an offence under
subregulation (2).
(6) In deciding whether or not a registered patent attorney has been engaged in:
(a) professional misconduct; or
(b) unsatisfactory professional conduct;
the Board must consider whether or not the attorney has complied with the Code
of Conduct.
20.34 Board may require attorney to cooperate with investigation
(1) In investigating whether or not to commence proceedings against a registered
patent attorney, the Board may request the attorney who is the subject of the
investigation to provide information.
(2) The failure, without reasonable excuse, of a registered patent attorney to provide
information requested by the Board under subregulation (1) is unsatisfactory
professional conduct.
20.35 Commencing disciplinary proceedings
(1) The Board must commence disciplinary proceedings by way of a notice given to
the President.
(2) A notice must be in writing and must set out the charges that are made against
the registered patent attorney.
(3) The Board must, as soon as practicable after giving a notice to the President, give
a copy of the notice to the registered patent attorney who is the subject of the
notice.
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122 Patents Regulations 1991
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Division 2—Proceedings in Disciplinary Tribunal
20.36 Panel of the Disciplinary Tribunal to be constituted
(1) Except as otherwise provided by this Part, the Disciplinary Tribunal’s functions
and powers in relation to disciplinary proceedings under this Part are to be
performed and exercised by a Panel of the Disciplinary Tribunal.
(2) A Panel of the Disciplinary Tribunal is to be constituted by:
(a) a Panel Chair; and
(b) 2 other members determined by the Panel Chair under subregulation (3).
(3) The Panel Chair is to determine, in writing, the other members of the
Disciplinary Tribunal who are to constitute the Panel that is to conduct the
disciplinary proceedings.
(4) Subject to subregulation 20.36E(5), if disciplinary proceedings are commenced
against a registered patent attorney who is ordinarily resident in Australia or New
Zealand, one of the members of the Panel that is conducting the proceedings
must also be ordinarily resident in the same country as the registered patent
attorney.
Note: Regulation 20.64 sets out requirements relating to the disclosure of conflicts of interest.
20.36A Meetings of Panel of Disciplinary Tribunal
(1) The Panel Chair of a Panel of the Disciplinary Tribunal must:
(a) convene such meetings of the Panel as the Panel Chair considers necessary
for the purpose of conducting disciplinary proceedings being heard by the
Panel; and
(b) preside at all meetings of the Panel.
(2) Subject to paragraph 20.36D(2)(a) and subregulation 20.36E(5), all members of a
Panel of the Disciplinary Tribunal must be present at a meeting of the Panel.
(3) A question arising at a meeting of a Panel of the Disciplinary Tribunal must be
determined by a majority of the votes of the members of the Panel present and
voting.
(4) However, if, in accordance with paragraph 20.36D(2)(a) or
subregulation 20.36E(5), a hearing of proceedings is continued with 2 members
of a Panel of the Disciplinary Tribunal, questions arising at the hearing must be
determined by a unanimous vote of the 2 members.
20.36B Procedure of Panel of Disciplinary Tribunal
(1) Subject to this Part, the procedures for convening meetings of a Panel of the
Disciplinary Tribunal and for the conduct of business by a Panel of the
Disciplinary Tribunal are as the Panel Chair determines.
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(2) Proceedings before the Panel are to be conducted quickly and informally, while
allowing for proper consideration of the matter before the Panel.
(3) The Panel is not bound by the rules of evidence but may be informed on any
matter in the manner it chooses.
(4) The Panel may take evidence on oath or on affirmation and, for that purpose, the
Panel Chair may administer an oath or affirmation.
20.36C Panel Chair unavailable to complete hearing
(1) This regulation applies if:
(a) a hearing of proceedings in relation to a particular matter has been
commenced or completed by a Panel of the Disciplinary Tribunal; and
(b) before the matter has been determined, the Panel Chair has:
(i) ceased to be a member; or
(ii) for any reason, ceased to be available as a member of the Panel.
(2) The matter is to be reheard by a new Panel constituted in accordance with
regulation 20.36.
(3) The new Panel may, for the purposes of performing or exercising the
Disciplinary Tribunal’s functions or powers in relation to that matter, have
regard to any record of the proceedings before the Panel as previously
constituted for the purposes of hearing that matter.
20.36D Member other than the Panel Chair unavailable to complete hearing
(1) This regulation applies if:
(a) a hearing of proceedings in relation to a particular matter has been
commenced or completed by a Panel of the Disciplinary Tribunal; and
(b) before the matter has been determined, one of the members (other than the
Panel Chair) constituting the Panel has:
(i) ceased to be a member; or
(ii) for any reason, ceased to be available as a member of the Panel.
(2) Subject to regulation 20.36E, the Panel Chair may determine that:
(a) the hearing and determination, or the determination, of the matter is to be
completed by the Panel constituted by the remaining members of the Panel;
or
(b) the matter is to be reheard by a new Panel constituted in accordance with
regulation 20.36.
(3) If a matter is reheard under paragraph (2)(b), the new Panel may, for the
purposes of performing or exercising the Disciplinary Tribunal’s functions or
powers in relation to that matter, have regard to any record of the proceedings
before the Panel as previously constituted for the purposes of hearing that matter.
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124 Patents Regulations 1991
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20.36E No member ordinarily resident in same country as registered patent
attorney subject to proceedings
(1) This regulation applies if:
(a) a hearing of proceedings in relation to a particular matter has been
commenced or completed by a Panel of the Disciplinary Tribunal; and
(b) before the matter has been determined, one of the members (other than the
Panel Chair) constituting the Panel has:
(i) ceased to be a member; or
(ii) for any reason, ceased to be available as a member of the Panel; and
(c) the registered patent attorney who is subject to the proceedings is ordinarily
resident in Australia or New Zealand; and
(d) neither of the remaining members of the Panel is ordinarily resident in the
same country as the registered patent attorney who is subject to the
proceedings.
(2) The Panel Chair must, as soon as practicable, give the registered patent attorney
notice in writing that:
(a) one of the members constituting the Panel has ceased to be, or to be
available as, a member of the Panel; and
(b) neither of the remaining members is ordinarily resident in the same country
as the registered patent attorney; and
(c) the registered patent attorney may, within the period specified in the notice:
(i) elect to have the matter completed by the Panel constituted by the
remaining members of the Panel; or
(ii) elect to have the matter reheard by a new Panel constituted in
accordance with regulation 20.36.
(3) An election under paragraph (2)(c) must be in writing and given to the Panel
Chair within the period specified in the notice.
(4) The period specified in the notice must be not less than 21 days after the day on
which the notice is given.
(5) Despite subregulation 20.36(4), if the registered patent attorney elects to have the
matter completed by the Panel constituted by the remaining members of the
Panel, the Panel constituted by the remaining members may hear and determine,
or determine, the matter.
(6) If the Panel Chair does not receive an election within the period specified in the
notice or such longer period as the Panel Chair allows, the Panel Chair must
arrange for the matter to be reheard by a new Panel constituted in accordance
with regulation 20.36.
(7) If the matter is reheard in accordance with subparagraph (2)(c)(ii) or
subregulation (6), the new Panel may, for the purposes of performing or
exercising the Disciplinary Tribunal’s functions or powers in relation to that
matter, have regard to any record of the proceedings before the Panel as
previously constituted for the purposes of hearing that matter.
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20.37 Notification of hearing of disciplinary proceedings
(1) As soon as practicable after receiving a notice under regulation 20.35, the Panel
Chair of a Panel of the Disciplinary Tribunal must:
(a) fix a day, time and place to hear the charges set out in the notice; and
(b) notify the registered patent attorney and the Board of that day, time and
place.
(3) The time of hearing must not be less than 21 days after the day on which the
registered patent attorney is notified of the time and place for the hearing.
20.38 Hearings to be public except in special circumstances
(1) Subject to subregulation (2), a hearing before a Panel of the Disciplinary
Tribunal must be in public.
(2) If the Panel Chair of a Panel of the Disciplinary Tribunal is reasonably satisfied
that it is desirable to do so, in the public interest or because of the confidential
nature of any evidence or matter, the Panel Chair may:
(a) direct that a hearing, or a part of a hearing, is to take place in private and
give directions as to the persons who may be present; and
(b) give directions restricting or prohibiting the publication or disclosure of:
(i) evidence given before the Panel, whether in public or in private; or
(ii) matters contained in documents lodged with the Panel or received in
evidence by it.
(3) A person must comply with a direction given to him or her under this regulation.
Penalty: 5 penalty units.
20.39 Representation before Panel of Disciplinary Tribunal
(1) At a hearing of proceedings before a Panel of the Disciplinary Tribunal, a party
to the proceedings may appear in person or be represented by a legal practitioner.
(2) The Panel Chair may allow a person to be represented by a person who is not a
legal practitioner.
(3) A party to proceedings before the Panel, or his or her representative, may request
the Panel Chair to summon witnesses.
20.40 Summoning of witnesses
(1) For the purpose of the hearing of a charge against a registered patent attorney
before a Panel of the Disciplinary Tribunal, the Panel Chair may, by written
instrument signed by the Panel Chair:
(a) summon any person, other than the attorney, to appear before the Panel to
give evidence about the charge and to produce any documents or articles
mentioned in the summons; or
(b) summon the attorney to appear before the Panel:
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(i) to produce any documents or articles mentioned in the summons; and
(ii) to give evidence to identify the documents or articles.
(2) A registered patent attorney summoned under this regulation must appear in
person.
20.41 Offences by persons appearing before a Panel of Disciplinary Tribunal
(1) A person summoned to appear before a Panel of the Disciplinary Tribunal must
comply with the summons by:
(a) appearing as required by the summons; and
(b) producing documents or articles as required by the summons; and
(c) appearing and reporting to the Panel, as required.
Penalty: 10 penalty units.
(2) It is a defence to a prosecution for an offence against subregulation (1) if:
(a) the defendant is prevented or hindered from complying with the summons
by:
(i) a circumstance mentioned in Part 2.3 of the Criminal Code; or
(ii) any other circumstance that the Panel Chair reasonably considers is an
impediment to the defendant complying with the summons; or
(b) in relation to paragraph (1)(c)—the defendant is excused by the Panel
Chair.
Note: A defendant bears an evidential burden in relation to the matters mentioned in
subparagraph (2)(a)(i) (see section 13.3 of the Criminal Code).
(3) A person commits an offence if:
(a) the person:
(i) is not a registered patent attorney to whom subregulation (5) applies;
and
(ii) appears as a witness before a Panel of the Disciplinary Tribunal; and
(iii) has been paid expenses and allowances in accordance with Part 2 of
Schedule 8; and
(c) the person refuses:
(i) to be sworn or make an affirmation; or
(ii) to answer a question relevant to the evidence that he or she was
summoned to give.
Penalty: 10 penalty units.
(4) Strict liability applies to the physical element of an offence against
subregulation (3) that is constituted by:
(a) the circumstance mentioned in subparagraph (3)(a)(i); and
(b) the circumstance mentioned in subparagraph (3)(a)(iii).
Note: For strict liability, see section 6.1 of the Criminal Code.
(5) A person commits an offence if the person:
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(a) is a registered patent attorney against whom proceedings have been
instituted; and
(b) is summoned to appear at a hearing before a Panel of the Disciplinary
Tribunal in respect of those proceedings; and
(c) refuses:
(i) to be sworn or to make an affirmation; or
(ii) to answer a question relevant to the evidence that he or she was
summoned to give.
Penalty: 10 penalty units.
(6) It is a defence for a person referred to in subregulation (3) or (5) to refuse to
answer a question or to produce a document or article, if the answer to the
question, or the document or article, may tend to prove that he or she has
committed an offence against a law of the Commonwealth or of a State or
Territory.
20.42 Protection of certain persons
(1) A person who is a member of a Panel of the Disciplinary Tribunal conducting a
hearing of disciplinary proceedings under this Part has, in the performance of his
or her duties as a member of the Panel, the same protection and immunity as a
Justice of the High Court.
(2) A member of the Board has, in exercising a power under this Part, the same
protection and immunity as a Justice of the High Court.
(3) A legal practitioner or other person appearing before a Panel of the Disciplinary
Tribunal has the same protection and immunity as a barrister has in appearing for
a party in proceedings in the High Court.
(4) Subject to this Part, a person summoned to attend or appearing before a Panel of
the Disciplinary Tribunal as a witness:
(a) has the same protection; and
(b) is, in addition to the penalties provided by this Part, subject to the same
liabilities;
as a witness in proceedings in the High Court.
20.43 Decision of Panel of Disciplinary Tribunal
(1) If a Panel of the Disciplinary Tribunal has heard a charge of professional
misconduct against a registered patent attorney, it may find the attorney guilty of
professional misconduct.
(2) If a Panel of the Disciplinary Tribunal has heard a charge of unsatisfactory
professional conduct against a registered patent attorney, it may find the attorney
guilty of unsatisfactory professional conduct.
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128 Patents Regulations 1991
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(3) If a Panel of the Disciplinary Tribunal has heard a charge that a registered patent
attorney was unqualified at the time of his or her registration, it may find the
attorney guilty of being unqualified at the time of registration.
(4) If a Panel of the Disciplinary Tribunal has heard a charge that a registered patent
attorney obtained his or her registration by fraud, it may find the attorney guilty
of obtaining his or her registration by fraud.
20.44 Penalties—professional misconduct
(1) Subject to subregulation (2), if a Panel of the Disciplinary Tribunal finds a
registered patent attorney guilty of professional misconduct, it may:
(a) cancel the attorney’s registration as a patent attorney; or
(b) suspend the attorney’s registration as a patent attorney for a period of
between 6 and 12 months.
(2) The Panel may, in addition to cancelling or suspending a registered patent
attorney’s registration under subregulation (1), impose conditions on the
attorney’s return to the Register of Patent Attorneys after the cancellation has
been lifted or the period of suspension has elapsed.
(3) Without limiting subregulation (2), the conditions that the Panel may impose
include either or both of the following:
(a) that the attorney undertake additional continuing professional education, as
specified by the Panel;
(b) that the attorney work for a period of time, not exceeding 2 years, under the
supervision of a person who has been a registered patent attorney for a
period not less than 5 years.
(4) If a registered patent attorney is also a registered trade marks attorney, the Panel
may also cancel or suspend the attorney’s registration as a trade marks attorney.
20.45 Penalties—unsatisfactory professional conduct
(1) Subject to subregulation (2), if a Panel of the Disciplinary Tribunal finds a
registered patent attorney guilty of unsatisfactory professional conduct, it may:
(a) suspend the attorney’s registration as a patent attorney for a period of not
more than 12 months; or
(b) administer a public reprimand to the attorney.
(2) The Panel may, in addition to suspending a registered patent attorney’s
registration under subregulation (1), also impose conditions on the attorney’s
return to the register after the period of suspension has elapsed.
(3) Without limiting subregulation (2), the conditions that the Panel may impose
include either or both of the following:
(a) that the attorney undertake additional continuing professional education, as
specified by the Panel;
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(b) that the attorney work for a period of time, not exceeding 2 years, under the
supervision of a person who has been a registered patent attorney for a
period of not less than 5 years.
20.46 Finding that attorney was unqualified at time of registration
If a Panel of 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, the Panel may:
(a) if the attorney has, since that time, obtained that qualification or the
qualification is no longer required for registration—reprimand the attorney;
or
(b) in any other case—cancel his or her registration.
20.47 Finding that registration obtained by fraud
If a Panel of the Disciplinary Tribunal finds that a registered patent attorney
obtained his or her registration by fraud, the Panel must cancel the registration of
the attorney.
20.48 Matters that may be considered in determining penalties
(1) In deciding what action to take in relation to a registered patent attorney under
regulation 20.44 or 20.45, a Panel of the Disciplinary Tribunal may take into
account any findings about the conduct of the attorney in any other disciplinary
proceedings:
(a) under these Regulations; or
(b) under the former attorneys Regulations.
(2) For subregulation (1), it is immaterial when the findings were made.
20.49 Findings of Panel of Disciplinary Tribunal
(1) If a Panel of the Disciplinary Tribunal reprimands a registered patent attorney, or
suspends or cancels the attorney’s registration, the Panel must give a written
notice of the finding of the Panel against the attorney that sets out particulars of
the reprimand, suspension or cancellation to:
(a) the attorney; and
(b) the Board; and
(c) the Designated Manager.
(2) If the registration of a registered patent attorney is suspended, the Designated
Manager must note the suspension and its duration in the Register of Patent
Attorneys.
(3) If the registration of a registered patent attorney is cancelled, the Designated
Manager must remove the name of the attorney from the Register of Patent
Attorneys.
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130 Patents Regulations 1991
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(4) If the Panel does not find a charge proved, the Panel must notify the registered
patent attorney and the Board accordingly.
20.50 Notification and publication of decisions of Panel of Disciplinary Tribunal
Within 14 days after a Panel of the Disciplinary Tribunal makes a decision under
regulation 20.44, 20.45, 20.46 or 20.47, the Panel must:
(a) prepare a written statement that:
(i) sets out the decision of the Panel; and
(ii) sets out the reasons for the decision; and
(iii) sets out the findings on any material questions of fact; and
(iv) refers to evidence or other material on which the findings of fact are
based; and
(b) give:
(i) the registered patent attorney who is the subject of the notice; and
(ii) the Board;
a copy of the statement referred to in paragraph (a); and
(c) publish, in the Official Journal, a written statement that sets out the
decision of the Panel; and
(d) arrange for the publication of a copy of the statement referred to in
paragraph (a).
20.51 Completion of outstanding business
(1) If the registration of a former attorney has been cancelled by a Panel of the
Disciplinary Tribunal under paragraph 20.44(1)(a), the Panel Chair may appoint
a registered patent attorney to carry on the practice of the former attorney until
all outstanding matters are disposed of.
(2) If the registration of the former attorney has been suspended by a Panel of the
Disciplinary Tribunal under paragraph 20.44(1)(b) or 20.45(1)(a), the Panel
Chair may appoint a registered patent attorney to carry on the practice of the
former attorney for the period of the suspension or for a specified period, not
longer than the period of suspension.
(3) The Panel Chair of a Panel of the Disciplinary Tribunal must not appoint a
registered patent attorney under subregulation (1) or (2) unless the registered
patent attorney consents to the appointment.
(4) This regulation does not allow a registered patent attorney to act as a registered
patent attorney on behalf of a person without the consent of the person.
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Patents Regulations 1991 131
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20.52 Former attorney may be required to provide assistance
(1) A registered patent attorney appointed to carry on the practice of a former
attorney may give a written notice requiring the former attorney to make
available to the attorney so appointed:
(a) any information about the practice that he or she may reasonably require;
or
(b) any books, accounts or other documents concerning the practice that he or
she may reasonably require; or
(c) any moneys held by the former attorney:
(i) on behalf of a client; or
(ii) that have been paid by a client in respect of services not yet performed
for the client.
(2) A former attorney who has been given a notice under subregulation (1) must not
refuse to comply with a requirement in the notice.
Penalty: 5 penalty units.
(3) It is a defence to a prosecution for an offence against subregulation (2) if the
former attorney is prevented or hindered from complying with a requirement in
the notice by:
(a) a circumstance mentioned in Part 2.3 of the Criminal Code; or
(b) any other circumstance that the Panel Chair of a relevant Panel of the
Disciplinary Tribunal reasonably considers is an impediment to the
defendant complying with the summons.
Note: A defendant bears an evidential burden in relation to the question of whether he or she
has a reasonable excuse (see section 13.3 of the Criminal Code).
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Regulation 20.53
132 Patents Regulations 1991
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Part 9—Rights of registered patent attorneys
20.53 Lien
A registered patent attorney has the same right of lien over documents and
property of a client as a solicitor.
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Trans-Tasman IP Attorneys Board Division 1
Regulation 20.56
Patents Regulations 1991 133
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Part 10—Administration
Division 1—Trans-Tasman IP Attorneys Board
20.56 Resignation and removal of members from Board
(1) A member of the Board mentioned in paragraph 227A(2A)(a), (d) or (e) of the
Act may resign by giving the Minister his or her resignation in writing.
(2) The Minister may terminate the appointment of the Board Chair if the Board
Chair:
(a) has been absent from 3 consecutive meetings of the Board without leave
given by the Board; or
(b) is convicted in Australia or New Zealand of an offence punishable by
imprisonment for at least 12 months; or
(c) cannot perform his or her duties as Board Chair; or
(d) has behaved in an offensive or disorderly way, or in a way that is likely to
adversely affect the Board’s reputation; or
(e) has carried out his or her duties as Board Chair inefficiently; or
(f) becomes bankrupt; or
(g) applies to take the benefit of a law for the relief of bankrupt or insolvent
debtors; or
(h) has entered into a debt agreement under Part IX of the Bankruptcy Act
1966; or
(i) compounds with his or her creditors or assigns his or her salary and
allowances for their benefit.
(3) The Minister may terminate the appointment of a member of the Board
mentioned in paragraph 227A(2A)(d) or (e) of the Act if the member:
(a) has been absent from 3 consecutive meetings of the Board without leave
given by the Board Chair; or
(b) is convicted in Australia or New Zealand of an offence punishable by
imprisonment for at least 12 months; or
(c) cannot perform his or her duties as a member of the Board; or
(d) has behaved in an offensive or disorderly way, or in a way that is likely to
adversely affect the Board’s reputation; or
(e) has carried out his or her duties as a member of the Board inefficiently; or
(f) becomes bankrupt; or
(g) applies to take the benefit of a law for the relief of bankrupt or insolvent
debtors; or
(h) has entered into a debt agreement under Part IX of the Bankruptcy Act
1966; or
(i) compounds with his or her creditors or assigns his or her salary and
allowances for their benefit.
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134 Patents Regulations 1991
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20.57 Meetings of Board
(1) The Board must hold as many meetings as are necessary for the performance of
its functions.
(2) The Board Chair may, at any time, by notice in writing to the members, call a
meeting of the Board at the time and place specified in the notice.
20.58 Member presiding at meetings of Board
(1) The Board Chair must preside at all meetings of the Board at which he or she is
present.
(2) In the absence of the Board Chair from a meeting, the members present must
appoint one of the members present at the meeting to preside.
(3) The Board Chair or a member who presides at a meeting has a deliberative vote
and, in the event of an equality of votes, also has a casting vote.
20.59 Quorum for Board meetings
(1) At a meeting of the Board, a quorum is formed by the majority of the members
of the Board.
(2) One of the members of the majority must be ordinarily resident in Australia and
one of the members of the majority must be ordinarily resident in New Zealand.
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Regulation 20.61
Patents Regulations 1991 135
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Division 2—Trans-Tasman IP Attorneys Disciplinary Tribunal
20.61 Establishment of the Trans-Tasman IP Attorneys Disciplinary Tribunal
The Trans-Tasman IP Attorneys Disciplinary Tribunal is established.
20.61A Functions of Disciplinary Tribunal
The functions of the Disciplinary Tribunal are to hear and determine disciplinary
proceedings commenced by the Board:
(a) against a registered patent attorney in accordance with Part 8 of this
Chapter or Part 5 of Chapter 20A; and
(b) against a registered trade marks attorney (within the meaning of the Trade
Marks Act 1995) in accordance with Division 6 of Part 20 of the Trade
Marks Regulations 1995 or Division 5 of Part 20A of those Regulations.
20.62 Membership of the Disciplinary Tribunal etc.
(1) The Disciplinary Tribunal consists of the following members:
(a) a President;
(b) at least 2 other members.
(1A) Each Tribunal member is to be appointed by the Minister in writing on a
part-time basis.
(2) A copy of the instrument of appointment must be published in the Official
Journal.
(3) A Tribunal member holds the office for the period specified in the instrument.
(4) A Tribunal member may resign in writing given to the Minister.
(5) The Minister may terminate the appointment of a Tribunal member for
inefficiency, misbehaviour or incapacity.
(6) If a Tribunal member:
(a) becomes bankrupt, applies to take the benefit of a law for the relief of
bankrupt or insolvent debtors, compounds with his or her creditors or
makes an assignment of his or her remuneration for their benefit; or
(b) is convicted in Australia or New Zealand of an offence punishable by
imprisonment for 12 months or longer; or
(c) fails, without reasonable excuse, to disclose a conflict of interest in
accordance with regulation 20.64;
the Minister must terminate the Tribunal member’s appointment.
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Division 2 Trans-Tasman IP Attorneys Disciplinary Tribunal
Regulation 20.63
136 Patents Regulations 1991
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20.63 Eligibility for appointment as Tribunal member
President
(1) A person is not eligible to be appointed as President unless the person is enrolled
as a legal practitioner (however described) in Australia or New Zealand and has
been so enrolled for at least 7 years.
Other Tribunal members
(2) A person is not eligible to be appointed as a Tribunal member (other than the
President) unless the person:
(a) is a registered patent attorney in Australia or New Zealand and has been so
registered for at least 5 years; or
(b) is a person who was, but is no longer, registered as a patent attorney in
Australia or New Zealand and had been so registered for at least 5 years; or
(c) is a registered trade marks attorney (within the meaning of the Trade
Marks Act 1995) and has been so registered for at least 5 years; or
(d) is a person who was, but is no longer, a registered trade marks attorney
(within the meaning of that Act) and had been so registered for at least 5
years; or
(e) satisfies both of the following:
(i) the person is enrolled as a legal practitioner (however described) in
Australia or New Zealand and has been so enrolled for at least 5
years;
(ii) the person is a registered patent attorney or a trade marks attorney in
Australia or New Zealand.
(3) A person is not eligible for appointment as a Tribunal member unless the person
is an individual.
20.63A Acting President
(1) The Minister may, in writing, appoint a person to act as the President:
(a) during a vacancy in the office of President (whether or not an appointment
has been previously made to the office); or
(b) during any period, or during all periods, when the President:
(i) is absent from duty or from Australia and New Zealand; or
(ii) is, for any reason, unable to perform the duties of the office.
(2) A copy of the instrument of appointment must be published in the Official
Journal.
(3) The Minister:
(a) may terminate the appointment at any time; and
(b) must terminate the appointment if the person appointed fails, without
reasonable excuse, to disclose a conflict of interest in accordance with
regulation 20.64.
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Patents Regulations 1991 137
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(4) A person is not eligible for appointment to act as President unless the person is
eligible for appointment as President under subregulation 20.63(1).
20.63B Acting Tribunal members
(1) The Minister may, in writing, appoint a person to act as a Tribunal member
(other than the President):
(a) during a vacancy in the office, whether or not an appointment has been
previously made to the office; or
(b) during any period, or during all periods, when the holder of the office:
(i) is absent from duty or from Australia and New Zealand; or
(ii) is, for any reason, unable to perform the duties of the office.
(2) A copy of the instrument of appointment must be published in the Official
Journal.
(3) The Minister:
(a) may terminate the appointment at any time; and
(b) must terminate the appointment if the person appointed fails, without
reasonable excuse, to disclose a conflict of interest in accordance with
regulation 20.64.
(4) A person is not eligible for appointment to act as a Tribunal member (other than
the President) unless the person is eligible for appointment as a Tribunal member
under subregulation 20.63(2).
20.64 Disclosure of interests
President
(1) If the President has or acquires an interest that could conflict with the proper
performance of his or her functions as Panel Chair in relation to proceedings that
he or she is hearing or is to hear, the President:
(a) must tell the parties to the proceedings about the interest; and
(b) must not perform those functions without the consent of the parties.
(2) If the President is unable to perform his or her functions because of a conflict of
interest, the Minister may, in writing, appoint another person to be the Panel
Chair for the purpose of conducting or completing those proceedings.
(3) A person is not eligible for appointment under subregulation (2) unless the
person is eligible for appointment as President under subregulation 20.63(1).
(4) A person so appointed may exercise all the powers and must perform all of the
functions of the Panel Chair in relation to those proceedings.
Other Tribunal members
(5) If a Tribunal Member (other than the President) has or acquires an interest that
could conflict with the proper performance of his or her functions as a member
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of a Panel of the Disciplinary Tribunal in relation to proceedings that he or she is
hearing or is to hear, the member:
(a) must tell the parties to the proceedings about the interest; and
(b) must not perform those functions without the consent of the parties.
(6) If the Tribunal member is unable to perform his or her functions because of a
conflict of interest, the Panel Chair may in writing appoint another Tribunal
member for the purpose of conducting or completing those proceedings.
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Introduction Part 1
Regulation 20A.1
Patents Regulations 1991 139
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Chapter 20A—Incorporated Patent Attorney
Part 1—Introduction
20A.1 Application of Chapter 20A
This Chapter applies to:
(a) an incorporated patent attorney; and
(b) a company applying for registration as an incorporated patent attorney.
20A.1A Performance of functions and exercise of powers
(1) A function that is conferred on a person or body under this Chapter may be
exercised in Australia or New Zealand.
(2) A power that is conferred on a person or body under this Chapter may be
exercised in Australia or New Zealand.
(3) For the purposes of this Chapter and subject to regulation 20A.1B, it is
immaterial whether an act or omission mentioned in this Chapter took place in
New Zealand.
(4) For the purposes of this Chapter and subject to regulation 20A.1B, it is
immaterial whether a matter mentioned in this Chapter concerns something that
took place in New Zealand.
20A.1B Conduct in New Zealand does not constitute an offence under this
Chapter
A person is not liable to be prosecuted for an offence against these Regulations if
the act or omission constituting the offence occurred in New Zealand.
20A.2 Definitions
In this Chapter:
annual registration fee means the fee set out in item 109 or 110 of Schedule 7.
professional indemnity insurance means insurance for claims that may be made
against the company in relation to its business, practices or acts as an
incorporated patent attorney.
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Regulation 20A.3
140 Patents Regulations 1991
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Part 2—Obtaining registration for first time
20A.3 Form of application
An application for registration as an incorporated patent attorney must:
(a) be in writing, in a form approved by the Designated Manager; and
(b) be accompanied by the following evidence and material:
(i) the name of each patent attorney director of the company;
(ii) evidence that the company is a registered company under the
Corporations Act 2001 or the Companies Act 1993 of New Zealand;
(iii) evidence that the company has adequate and appropriate professional
indemnity insurance; and
(c) be accompanied by the fee set out in item 108 of Schedule 7.
20A.4 Certificate of registration
If the Designated Manager registers a company as an incorporated patent
attorney, the Designated Manager must give the company a certificate of
registration as soon as practicable.
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Regulation 20A.5
Patents Regulations 1991 141
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Part 3—Maintaining registration
20A.5 Requirements for remaining on Register of Patent Attorneys
(1) To remain on the Register of Patent Attorneys, a registered incorporated patent
attorney must, for every year of registration, pay the annual registration fee.
(2) The Designated Manager must, not later than 1 June in each year, give to each
registered incorporated patent attorney notice of the fee that is payable.
(3) The annual registration fee is payable on 1 July each year by a registered
incorporated patent attorney:
(a) whose name is on the Register of Patent Attorneys on that day; and
(b) that has not asked the Designated Manager, under regulation 20A.6, to
remove its name from the Register of Patent Attorneys.
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Regulation 20A.6
142 Patents Regulations 1991
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Part 4—Removal from Register of Patent Attorneys
20A.6 Voluntary removal of name from Register of Patent Attorneys
If a patent attorney director of a registered incorporated patent attorney asks the
Designated Manager, in writing, to remove the name of the registered
incorporated patent attorney from the Register of Patent Attorneys, the
Designated Manager must comply with the request.
20A.7 Failure to pay annual registration fee
If a registered incorporated patent attorney does not pay the annual registration
fee by 31 July in the year the fee is payable, the Designated Manager must:
(a) remove the name of the incorporated patent attorney from the Register of
Patent Attorneys; and
(b) notify, in writing, the attorney of the removal.
20A.8 Failure to maintain professional indemnity insurance
(1) If an incorporated patent attorney does not maintain adequate and appropriate
professional indemnity insurance, the Designated Manager may remove the
name of the attorney from the Register of Patent Attorneys.
(2) If the Designated Manager removes the name of the incorporated patent attorney
from the Register of Patent Attorneys, the Designated Manager must notify, in
writing, the attorney of the removal.
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General Division 1
Regulation 20A.9
Patents Regulations 1991 143
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Part 5—Discipline
Division 1—General
20A.9 Definitions
In this Part:
former attorney means a person whose registration as an incorporated patent
attorney has been suspended or cancelled under this Part.
20A.10 Board may apply for cancellation or suspension of incorporated patent
attorney’s registration
(1) The Board may apply to the Disciplinary Tribunal to cancel or suspend an
incorporated patent attorney’s registration if:
(a) a registered patent attorney who is, or was, an employee or officer of the
incorporated patent attorney has, at any time, been found guilty of
professional misconduct under subregulation 20.43(1); and
(b) the professional misconduct occurred when the registered patent attorney
was an employee or officer of the incorporated patent attorney; and
(c) the patent attorney’s registration was cancelled or suspended under
subregulation 20.44(1) because he or she was found guilty of professional
misconduct.
(2) Before applying to the Disciplinary Tribunal, the Board may request the
incorporated patent attorney to provide the Board with information relating to the
professional misconduct.
(3) In deciding whether to apply to the Disciplinary Tribunal, the Board may
consider the following:
(a) the professional misconduct engaged in by the registered patent attorney;
(b) the behaviour of the incorporated patent attorney’s officers and employees;
(c) whether officers and employees of the incorporated patent attorney have
complied with the Code of Conduct;
(d) any information provided under subregulation (2).
(4) An application by the Board to the Disciplinary Tribunal must:
(a) be in writing; and
(b) set out the reasons why the Board considers the incorporated patent
attorney’s registration should be cancelled or suspended; and
(c) be addressed and sent to the President.
(5) The Board must give the incorporated patent attorney, as soon as practicable
after the application is made to the Disciplinary Tribunal, a copy of the
application.
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Division 2 Proceedings in Disciplinary Tribunal
Regulation 20A.11
144 Patents Regulations 1991
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Division 2—Proceedings in Disciplinary Tribunal
20A.11 Panel of the Disciplinary Tribunal to be constituted
(1) Except as otherwise provided by this Part, the Disciplinary Tribunal’s functions
and powers in relation to disciplinary proceedings under this Part are to be
performed and exercised by a Panel of the Disciplinary Tribunal.
(2) A Panel of the Disciplinary Tribunal is to be constituted by:
(a) a Panel Chair; and
(b) 2 other members determined by the Panel Chair under subregulation (3).
(3) The Panel Chair is to determine, in writing, the other members of the
Disciplinary Tribunal who are to constitute the Panel that is to conduct the
disciplinary proceedings.
(4) Subject to subregulation 20A.11E(5), if disciplinary proceedings are commenced
against an incorporated patent attorney that is incorporated in Australia or New
Zealand, one of the members of the Panel that is conducting the proceedings
must also be ordinarily resident in the same country as the country in which the
incorporated patent attorney is registered.
Note: Regulation 20.64 sets out requirements relating to the disclosure of conflicts of interest.
20A.11A Meetings of Panel of Disciplinary Tribunal
(1) The Panel Chair of a Panel of the Disciplinary Tribunal must:
(a) convene such meetings of the Panel as the Panel Chair considers necessary
for the purpose of conducting disciplinary proceedings being heard by the
Panel; and
(b) preside at all meetings of the Panel.
(2) Subject to paragraph 20A.11D(2)(a) and subregulation 20A.11E(5), all members
of a Panel of the Disciplinary Tribunal must be present at a meeting of the Panel.
(3) A question arising at a meeting of a Panel of the Disciplinary Tribunal must be
determined by a majority of the votes of the members of the Panel present and
voting.
(4) However, if, in accordance with paragraph 20A.11D(2)(a) or
subregulation 20A.11E(5), a hearing of proceedings is continued with 2 members
of the Panel, questions arising at the hearing must be determined by a unanimous
vote of the 2 members.
20A.11B Procedure of Panel of Disciplinary Tribunal
(1) Subject to this Part, the procedures for convening meetings of a Panel of the
Disciplinary Tribunal and for the conduct of business by a Panel of the
Disciplinary Tribunal are as the Panel Chair determines.
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(2) Proceedings before the Panel are to be conducted quickly and informally, while
allowing for proper consideration of the matter before that Panel.
(3) The Panel is not bound by the rules of evidence but may be informed on any
matter in the manner it chooses.
(4) The Panel may take evidence on oath or on affirmation and, for that purpose, the
Panel Chair may administer an oath or affirmation.
20A.11C Panel Chair unavailable to complete hearing
(1) This regulation applies if:
(a) a hearing of proceedings in relation to a particular matter has been
commenced or completed by a Panel of the Disciplinary Tribunal; and
(b) before the matter has been determined, the Panel Chair has:
(i) ceased to be a member; or
(ii) for any reason, ceased to be available as a member of the Panel.
(2) The matter is to be reheard by a new Panel constituted in accordance with
regulation 20A.11.
(3) The new Panel may, for the purposes of performing or exercising the
Disciplinary Tribunal’s functions or powers in relation to that matter, have
regard to any record of the proceedings before the Panel as previously
constituted for the purposes of hearing that matter.
20A.11D Member other than the Panel Chair unavailable to complete hearing
(1) This regulation applies if:
(a) a hearing of proceedings in relation to a particular matter has been
commenced or completed by a Panel of the Disciplinary Tribunal; and
(b) before the matter has been determined, one of the members (other than the
Panel Chair) constituting the Panel has:
(i) ceased to be a member; or
(ii) for any reason, ceased to be available as a member of the Panel.
(2) Subject to regulation 20A.11E, the Panel Chair may determine that:
(a) the hearing and determination, or the determination, of the matter is to be
completed by the Panel constituted by the remaining members of the Panel;
or
(b) the matter is to be reheard by a new Panel constituted in accordance with
regulation 20A.11.
(3) If a matter is reheard under paragraph (2)(b), the new Panel may, for the
purposes of performing or exercising the Disciplinary Tribunal’s functions or
powers in relation to that matter, have regard to any record of the proceedings
before the Panel as previously constituted for the purposes of hearing that matter.
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Regulation 20A.11E
146 Patents Regulations 1991
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20A.11E No member ordinarily resident in same country in which incorporated
patent attorney subject to proceedings is registered
(1) This regulation applies if:
(a) a hearing of proceedings in relation to a particular matter has been
commenced or completed by a Panel of the Disciplinary Tribunal; and
(b) before the matter has been determined, one of the members (other than the
Panel Chair) constituting the Panel has:
(i) ceased to be a member; or
(ii) for any reason, ceased to be available as a member of the Panel; and
(c) neither of the remaining members of the Panel is ordinarily resident in the
same country in which the incorporated patent attorney that is subject to
the proceedings is registered.
(2) The Panel Chair must, as soon as practicable, give the incorporated patent
attorney notice in writing that:
(a) one of the members constituting the Panel has ceased to be, or to be
available as, a member of the Panel; and
(b) neither of the remaining members is ordinarily resident in the same country
in which the incorporated patent attorney is registered; and
(c) the incorporated patent attorney may, within the period specified in the
notice:
(i) elect to have the matter completed by the Panel constituted by the
remaining members of the Panel; or
(ii) elect to have the matter reheard by a new Panel constituted in
accordance with regulation 20A.11.
(3) An election under paragraph (2)(c) must be in writing and given to the Panel
Chair within the period specified in the notice.
(4) The period specified in the notice must be not less than 21 days after the day on
which the notice is given.
(5) Despite subregulation 20A.11(4), if the incorporated patent attorney elects to
have the matter completed by the Panel constituted by the remaining members of
the Panel, the Panel constituted by the remaining members may hear and
determine, or determine, the matter.
(6) If the Panel Chair does not receive an election within the period specified in the
notice or such longer period as the Panel Chair allows, the Panel Chair must
arrange for the matter to be reheard by a new Panel constituted in accordance
with regulation 20A.11.
(7) If the matter is reheard in accordance with subparagraph (2)(c)(ii) or
subregulation (6), the new Panel may, for the purposes of performing or
exercising the Disciplinary Tribunal’s functions or powers in relation to that
matter, have regard to any record of the proceedings before the Panel as
previously constituted for the purposes of hearing that matter.
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20A.12 Notification of hearing
(1) As soon as practicable after receiving an application under regulation 20A.10,
the Panel Chair of a Panel of the Disciplinary Tribunal must:
(a) fix a day, time and place to hear the application; and
(b) notify the incorporated patent attorney and the Board of that day, time and
place.
(3) The day of hearing must not be less than 21 days after the day the incorporated
patent attorney is notified of the day, time and place for the hearing.
20A.13 Hearings to be public except in special circumstances
(1) A hearing before a Panel of the Disciplinary Tribunal must be in public.
(2) However, if the Panel Chair is reasonably satisfied that it is desirable to do so, in
the public interest or because of the confidential nature of any evidence or
matter, the Panel Chair may:
(a) direct that a hearing, or a part of a hearing, is to take place in private and
give directions as to the persons who may be present; and
(b) give directions restricting or prohibiting the publication or disclosure of:
(i) evidence given before the Panel, whether in public or in private; or
(ii) matters contained in documents lodged with the Panel or received in
evidence by the Panel.
(3) A person commits an offence if the person:
(a) is given a direction under paragraph (2)(a) or (b); and
(b) does not comply with the direction.
Penalty: 5 penalty units.
20A.14 Representation before a Panel of Disciplinary Tribunal
(1) At a hearing before a Panel of the Disciplinary Tribunal, the incorporated patent
attorney must be represented by a patent attorney director of the incorporated
patent attorney or a legal practitioner.
(2) A party to proceedings before the Panel, or a representative of the party, may
request the Panel Chair to summon witnesses.
20A.15 Summoning of witnesses
(1) For the purpose of a hearing before a Panel of the Disciplinary Tribunal, the
Panel Chair may, by written instrument signed by the Panel Chair:
(a) summon a person to appear before the Panel to give evidence and to
produce any documents or articles mentioned in the summons; or
(b) summon a patent attorney director of the incorporated patent attorney to
appear before the Panel:
(i) to produce any documents or articles mentioned in the summons; and
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(ii) to give evidence to identify the documents or articles.
(2) A patent attorney director who is summoned must appear in person.
20A.16 Offences by persons appearing before a Panel of Disciplinary Tribunal
(1) A person commits an offence if the person:
(a) is summoned to appear before a Panel of the Disciplinary Tribunal; and
(b) does not comply with the summons by:
(i) appearing as required by the summons; and
(ii) producing documents or articles as required by the summons; and
(iii) appearing and reporting to the Panel, as required.
Penalty: 10 penalty units.
(2) It is a defence to a prosecution for an offence against subregulation (1) if:
(a) the defendant is prevented or hindered from complying with the summons
by:
(i) a circumstance mentioned in Part 2.3 of the Criminal Code; or
(ii) any other circumstance that the Panel Chair reasonably considers is an
impediment to the defendant complying with the summons; or
(b) in relation to subparagraph (1)(b)(iii)—the defendant is excused by the
Panel Chair.
Note: A defendant bears an evidential burden in relation to the matters mentioned in
subparagraph (2)(a)(i)(see section 13.3 of the Criminal Code).
(3) A person commits an offence if:
(a) the person:
(i) is not a patent attorney director to whom subregulation (5) applies;
and
(ii) appears as a witness before a Panel of the Disciplinary Tribunal; and
(iii) has been paid expenses and allowances in accordance with Part 2 of
Schedule 8; and
(c) the person refuses:
(i) to be sworn or make an affirmation; or
(ii) to answer a question relevant to the evidence that the person was
summoned to give.
Penalty: 10 penalty units.
(4) Strict liability applies to the physical element of an offence against
subregulation (3) that is constituted by:
(a) the circumstance mentioned in subparagraph (3)(a)(i); and
(b) the circumstance mentioned in subparagraph (3)(a)(iii).
Note: For strict liability, see section 6.1 of the Criminal Code.
(5) A person commits an offence if the person:
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(a) is a patent attorney director who has been summoned to appear at a hearing
before a Panel of the Disciplinary Tribunal; and
(b) refuses:
(i) to be sworn or to make an affirmation; or
(ii) to answer a question relevant to the evidence that the person was
summoned to give.
Penalty: 10 penalty units.
(6) It is a defence to a prosecution for an offence against subregulation (3) or (5) if a
person mentioned in the subregulation refused to answer a question or to produce
a document or article because the answer to the question, or the document or
article, may tend to prove that the person has committed an offence against a law
of the Commonwealth or of a State or Territory.
20A.17 Protection of certain persons
(1) A person who is a member of a Panel of the Disciplinary Tribunal conducting a
hearing of disciplinary proceedings under this Part has, in the performance of his
or her duties as a member of the Panel, the same protection and immunity as a
Justice of the High Court.
(2) A member of the Board has, in exercising a power under this Part, the same
protection and immunity as a Justice of the High Court.
(3) A legal practitioner or other person appearing before a Panel of the Disciplinary
Tribunal has the same protection and immunity as a barrister has in appearing for
a party in proceedings in the High Court.
(4) A person summoned to attend or appearing before a Panel of the Disciplinary
Tribunal as a witness:
(a) has the same protection; and
(b) is, in addition to the penalties provided by this Part, subject to the same
liabilities;
as a witness in proceedings in the High Court.
20A.18 Decision of Panel of Disciplinary Tribunal
(1) After hearing an application for the cancellation or suspension of the
incorporated patent attorney’s registration, a Panel of the Disciplinary Tribunal
may:
(a) cancel the attorney’s registration as an incorporated patent attorney; or
(b) suspend the attorney’s registration as an incorporated patent attorney.
(2) The Panel may also impose conditions on the attorney’s return to the Register of
Patent Attorneys after the cancellation has been lifted or the period of suspension
has elapsed.
(3) In making a decision under this regulation, the Panel may consider the following:
(a) the professional misconduct engaged in;
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(b) the behaviour of the incorporated patent attorney’s officers and employees;
(c) whether officers and employees of the incorporated patent attorney had
complied with the Code of Conduct;
(d) findings made (regardless of when the findings were made) about the
conduct of the incorporated attorney in any other proceedings brought
before a relevant disciplinary tribunal;
(e) findings made (regardless of when the findings were made) about the
conduct of the incorporated attorney’s employees and officers in any other
proceedings brought before a relevant disciplinary tribunal;
(f) if the incorporated patent attorney failed, without reasonable excuse, to
provide information requested by the Board under
subregulation 20A.10(2)—the incorporate patent attorney’s failure to
provide requested information.
(4) In this regulation:
relevant disciplinary tribunal means any of the following:
(a) the Patents and Trade Marks Attorneys Disciplinary Tribunal established
by regulation 20.61 as in force before the commencement of this
subregulation;
(b) the Trans-Tasman IP Attorneys Disciplinary Tribunal established by
regulation 20.61 as in force on the commencement of this subregulation;
(c) the Patents and Trade Marks Attorneys Disciplinary Tribunal as continued
in force by subregulation 23.42(1) or 23.43(1) of these Regulations or
subregulation 22.16(1) or 22.17(1) of the Trade Marks Regulations 1995.
20A.19 Notification and publication of decisions of Panel of Disciplinary
Tribunal
(1) Within 14 days after a Panel of the Disciplinary Tribunal makes a decision under
regulation 20A.18, the Panel must:
(a) prepare a written statement that states:
(i) the decision of the Panel; and
(ii) the reasons for the decision; and
(iii) the findings on any material questions of fact; and
(iv) evidence or other material on which the findings of fact are based; and
(b) give a copy of the statement to:
(i) the incorporated patent attorney who is the subject of the decision;
and
(ii) the Board; and
(iii) the Designated Manager; and
(c) publish, in the Official Journal, a written statement that sets out the
decision of the Panel.
(2) If the registration of an incorporated patent attorney is suspended, the Designated
Manager must note the suspension and its duration in the Register of Patent
Attorneys.
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(3) If the registration of an incorporated patent attorney is cancelled, the Designated
Manager must remove the name of the incorporated patent attorney from the
Register of Patent Attorneys.
20A.20 Completion of outstanding business
(1) If a Panel of the Disciplinary Tribunal cancels the registration of an incorporated
patent attorney, the Panel Chair may appoint a registered patent attorney to
complete the unfinished patents work of the former attorney.
(2) If a Panel of the Disciplinary Tribunal suspends the registration of an
incorporated patent attorney, the Panel Chair may appoint a registered patent
attorney to carry on the former attorney’s patents work for:
(a) the period of the suspension; or
(b) a specified period, not longer than the period of suspension.
(3) The Panel Chair must not appoint a registered patent attorney under
subregulation (1) or (2) unless the registered patent attorney consents to the
appointment.
(4) A registered patent attorney appointed under subregulation (1) or (2) may only
act as a registered patent attorney for a client of the former attorney if the client
has given consent for the appointed attorney to act.
20A.21 Former attorney may be required to provide assistance
(1) A registered patent attorney appointed under subregulation 20A.20(1) or (2)
may, by written notice, request the former attorney to make available the
following:
(a) information about the patents work that the appointed attorney may
reasonably require;
(b) books, accounts or other documents about the patents work that the
appointed attorney may reasonably require;
(c) money held by the former attorney:
(i) on behalf of a client; or
(ii) that has been paid by a client in relation to services not yet performed
for the client.
(2) A person commits an offence if the person:
(a) is a former attorney; and
(b) is given a notice under subregulation (1); and
(c) fails to comply with the notice.
Penalty: 5 penalty units.
(3) It is a defence to a prosecution for an offence against subregulation (2) if the
former attorney is prevented or hindered from complying with a request in the
notice by:
(a) a circumstance mentioned in Part 2.3 of the Criminal Code; or
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(b) any other circumstance that the relevant Panel Chair reasonably considers
is an impediment to the defendant complying with the summons.
Note: A defendant bears an evidential burden in relation to the question of whether he or she
has a reasonable excuse (see section 13.3 of the Criminal Code).
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Part 6—Restoring attorney’s name to Register of Patent
Attorneys
20A.22 Restoring name to Register of Patent Attorneys
(1) This regulation sets out circumstances in which the Designated Manager must
restore to the Register of Patent Attorneys the name of an incorporated patent
attorney that has been removed under:
(a) regulation 20A.6, 20A.7 or 20A.8; or
(b) subsection 201B(7) of the Act.
(2) The Designated Manager must restore the name if:
(a) the attorney requests the Designated Manager, in the form approved by the
Designated Manager, to restore the name; and
(b) the request includes:
(i) the name of each patent attorney director of the company; and
(ii) evidence that the company is a registered company under the
Corporations Act 2001 or the Companies Act 1993 of New Zealand;
and
(iii) evidence that the company has adequate and appropriate professional
indemnity insurance; and
(c) the request is made:
(i) if the name was removed under regulation 20A.7—on or before
1 September of the year that the name was removed from the Register
of Patent Attorneys, or within a further period that the Designated
Manager allows; or
(ii) in any other case—within 3 years after the name was removed from
the Register of Patent Attorneys; and
(d) the attorney pays:
(i) the annual registration fee for the year the reinstatement is made; and
(ii) the fee mentioned in item 111 of Schedule 7.
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Chapter 21—Administration
21.1 Patent Office and sub-offices
The hours of business of the Patent Office and each sub-office of the Patent
Office are from 9 am to 5 pm on each day other than:
(a) a Saturday or a Sunday; or
(b) a public holiday:
(i) where the Office or sub-office is located; or
(ii) for the purposes of the Australian Public Service in that place.
21.2 Employees to whom Commissioner may delegate (Act s 209(1))
For subsection 209(1) of the Act, the Commissioner may delegate all or any of
the Commissioner’s powers or functions under the Act, except the powers and
functions under paragraphs 210(a) and (c) of the Act, to an employee of the
Patent Office:
(a) holding, or performing the duties of, the position of Examiner of Patents;
or
(b) employed at any of the following levels:
(i) Executive level 1 or 2;
(ii) APS level 2, 3, 4, 5 or 6.
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Chapter 22—Miscellaneous
Part 1—Fees and costs
Division 1—Fees
22.1 Fees generally
(1) A fee must be paid in such a manner as the Commissioner reasonably directs.
(2) If the Commissioner has directed that a complete application is to be treated as a
provisional application, the amount by which the fee payable on the filing of a
complete application exceeds the fee payable on the filing of a provisional
application must be credited towards the payment of the fee payable on the next
filing of a complete application associated with the provisional application by the
applicant concerned.
22.2 General fees
(1) For the purposes of subsection 227(1) of the Act, there is payable to the
Commissioner in respect of a matter specified in an item of Part 1 or 2 in
Schedule 7 a fee of the amount specified in that item.
(2) The fees are payable as follows:
(a) the fee for filing an application, request or other document is payable when
the application, request or other document is filed;
(b) the fee for appearing and being heard at an oral hearing is payable:
(i) for the first day—immediately before the hearing; and
(ii) for each day or part of a day after the first day—immediately after the
hearing;
(ba) the fee for a hearing on the basis of written submissions only is payable
when the written submissions are filed;
(d) the fee for acceptance of a patent request and complete specification, under
section 49 of the Act, is payable when the application is accepted;
(e) if the Commissioner decides to conduct a search as part of the examination
of a patent request and complete specification for a standard patent, the fee
is payable when the Commissioner notifies the applicant that the fee is
payable.
(3) If an item specifies the person by whom a fee is payable, the fee is payable by
that person.
(4) For paragraph 29A(5)(b) of the Act:
(a) if a PCT application is to be treated as an application for a standard patent:
(i) the fee specified in item 214A of Schedule 7 is payable in respect of
the application for a standard patent; and
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(ii) if the PCT application was filed in the Patent Office as a receiving
office for the purposes of the PCT—the fees specified in item 301,
and items 401 to 404, of Schedule 7 are payable in respect of the PCT
application; and
(b) the fee specified in item 203 of Schedule 7 is not payable in respect of a
PCT application.
(5) The fees specified in item 213 of Schedule 7 do not apply to:
(a) an application for a standard patent filed before the commencement of this
subregulation; or
(b) a PCT application that meets the requirements of subsection 89(3) of the
Act before the commencement of this subregulation.
(6) Paragraph 211(a) of Schedule 7, as in force on 1 July 2012, applies to:
(a) a patent:
(i) that has a date of patent of 1 July 2008 or later; and
(ii) the fourth anniversary of which falls on or after commencement; and
(b) a patent application:
(i) filed on or after 1 July 2008; and
(ii) the fourth anniversary of which falls on or after commencement.
22.2AA Approved means
(1) The Commissioner may, by notice published by the Commissioner, specify one
or more means for doing an action mentioned in Schedule 7 or for paying a fee.
Examples of actions:
1 Filing a request.
2 Filing an application.
(2) The means may be an electronic means or any other means.
Note: The means become approved means when they are published.
22.2A Failure to pay: patent attorneys fees
The Designated Manager or the Board must not process an application
mentioned in Part 1 of Schedule 7 if the fee payable for the application has not
been paid.
22.2B Failure to pay: filing fees for patent requests
(1) This regulation applies if:
(a) a fee mentioned in item 201, 202, 203 or 206 of Schedule 7 is not paid
when it is payable; and
(b) within 1 month after the fee is payable, the Commissioner invites the
person by whom the fee is payable to pay the fee within 2 months after the
date of the invitation; and
(c) the fee is not paid within the 2 month period.
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(2) The application lapses, or the patent ceases, at the end of the 2 month period.
22.2C Failure to pay: certain other filing fees etc
(1) This regulation applies if:
(a) a fee mentioned in item 204 or 205, paragraph (a) of item 208, or item 209,
210, 214, 215, 216, 218, 222, 224, 225, 226, 227, 228, 236, 237, 238 or
239 of Schedule 7 is not paid when it is payable; and
(b) within 1 month after the fee is payable, the Commissioner invites the
person by whom the fee is payable to pay the fee within 1 month after the
date of the invitation; and
(c) the fee is not paid within the 1 month period.
(2) The application, representation, request or other relevant document is taken not
to have been filed or made.
22.2D Failure to pay: fees payable by patentee for requests under s 101A(b) of
the Act
(1) Subregulation (2) applies if:
(a) a fee mentioned in item 207 of Schedule 7 is not paid when it is payable;
and
(b) within 1 month after the fee is payable, the Commissioner invites the
patentee to pay the fee within 1 month after the date of the invitation; and
(c) the fee is not paid within the 1 month period.
(2) The innovation patent ceases at the end of the 1 month period.
(3) Subregulation (4) applies if:
(a) a fee mentioned in paragraph (b) of item 208 of Schedule 7 (the
paragraph (b) fee) is not paid when it is payable; and
(b) within 1 month after the fee mentioned in paragraph (a) of that item is paid
for the request to which the paragraph (b) fee relates, the Commissioner
invites the patentee to pay the paragraph (b) fee within 2 months after the
date of the invitation; and
(c) the fee is not paid within the 2 month period.
(4) The innovation patent ceases at the end of the 2 month period.
22.2EA Failure to pay: fee for grant of leave to amend specification (person
invited to pay)
(1) This regulation applies if:
(a) a fee mentioned in item 222A of Schedule 7 relating to a grant of leave to
amend a complete specification is not paid when it is payable; and
(b) within 1 month after the fee first becomes payable, the Commissioner
invites the person by whom the fee is payable to pay the fee within 2
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months after the date on which notice of the grant of leave is published
under subregulation 10.5(2); and
(c) the fee is not paid within that period of 2 months.
(2) The request for leave to amend the complete specification is taken not to have
been filed.
22.2F Consequence if Commissioner does not invite payment
(1) Subregulation (2) applies if:
(a) a fee mentioned in regulation 22.2B, 22.2C or 22.2D is not paid when it is
payable; and
(b) the Commissioner does not give the invitation mentioned in the relevant
regulation within the time allowed.
(2) The application, representation, request or other relevant document is to be
treated as if the fee had been paid when the application, representation, request or
other document was filed or made.
(3) Subregulation (4) applies if:
(a) a fee mentioned in regulation 22.2I is not paid when it is payable; and
(b) the Commissioner does not give the invitation mentioned in
regulation 22.2I within the time allowed.
(4) The accepted application is to be treated as if the fee for acceptance mentioned in
item 213 of Schedule 7 had been paid immediately after its acceptance.
(5) Subregulation (6) applies if:
(a) a fee mentioned in paragraph 22.2EA(1)(a) relating to a grant of leave to
amend a complete specification is not paid when it is payable; and
(b) the Commissioner does not give the invitation mentioned in
paragraph 22.2EA(1)(b) within the time mentioned in that paragraph.
(6) The request for leave to amend the complete specification is to be treated as if
the fee had been paid when leave was granted to amend the complete
specification.
(7) Despite subregulations (2), (4) and (6), the fee remains payable and can be
recovered as a debt due to the Commonwealth.
22.2G Failure to pay: hearing fees
(1) Subregulation (2) applies if:
(a) the fee mentioned in item 230 of Schedule 7 is not paid when it is payable;
and
(b) within 1 month after the fee is payable, the Commissioner invites the
person making the request to pay the fee within 1 month after the date of
the invitation or before the date of the hearing, whichever is earlier; and
(c) the fee is not paid within the earlier of the periods mentioned in
paragraph (b).
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(2) The request is taken not to have been made.
(3) A hearing cannot be held if the fee mentioned in item 230 of Schedule 7 has not
been paid for the hearing.
(4) A person cannot appear and be heard at an oral hearing if the fee mentioned in
paragraph 231(a) of Schedule 7 has not been paid for the person.
(5) A person is not entitled to a hearing on the basis of written submissions if the fee
mentioned in item 231A of Schedule 7 has not been paid.
22.2H Failure to pay: certain fees for actions by Commissioner
(1) This regulation applies to a fee mentioned in item 221, 223, 233 or 234 of
Schedule 7.
(2) The Commissioner must not process a request or application for which such a fee
is payable if the fee has not been paid.
(3) If the fee mentioned in item 223 of Schedule 7 is paid for a request, the request is
taken to have been made on the date on which the fee was paid.
(4) If:
(a) the fee is not paid when it is payable; and
(b) the Commissioner invites the person by whom the fee is payable to pay the
fee within 1 month after the date of the invitation; and
(c) the fee is not paid within the 1 month period;
the request or application is taken not to have been made.
22.2I Failure to pay: acceptance fee
(1) This regulation applies if:
(a) a fee for acceptance mentioned in item 213 of Schedule 7 is not paid when
it is payable; and
(b) within 1 month after the fee is payable, the Commissioner invites the
person by whom the fee is payable to pay the fee within 3 months after the
date that the notice of the acceptance is published under paragraph 49(5)(b)
of the Act; and
(c) the fee is not paid within the 3 month period.
(2) The application lapses.
22.3 General fees for international applications
(1) If:
(a) for the purposes of the PCT, the Patent Office is:
(i) a receiving Office; or
(ii) an International Searching Authority; or
(iii) an International Preliminary Examining Authority; and
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(b) the Commissioner or the Patent Office is empowered by the PCT to charge
a fee, other than a fee for the benefit of the International Bureau;
for the purposes of subsection 227(1) of the Act, the amount of the fee payable to
the Commissioner in respect of a matter specified in an item of Part 3 in
Schedule 7 is the amount specified in that item.
(2) The fees specified in items 301 and 302 in Schedule 7 are payable to the
Commissioner within 1 month of filing an international application.
(3) The fee specified in item 304 in Schedule 7 is payable to the Commissioner on
filing a demand for a preliminary examination under Article 31 of the PCT.
22.4 Fees for international applications payable for the benefit of the
International Bureau
(1) If, for the purposes of the PCT, the Patent Office is:
(a) a receiving Office; or
(b) an International Searching Authority; or
(c) an International Preliminary Examining Authority;
for an international application, the amounts of the international filing fee and
handling fee (payable, under the PCT, to the Commissioner for the benefit of the
International Bureau) for the application are as set out in Part 4 of Schedule 7.
(2) The Commissioner must, in accordance with the PCT, determine the currency in
which a fee payable under this regulation is payable and the exchange rate
between Swiss currency and the currency so determined.
(3) The Commissioner must give notice of a determination in the Official Journal.
(4) A determination has effect on the date specified in the determination for that
purpose or on the date of notification of the determination in the Official Journal,
whichever is later.
22.5 PCT Fund
Money paid as a fee to the Commissioner under subregulation 22.4(1):
(a) must be paid into a special account established under section 78 of the
Public Governance, Performance and Accountability Act 2013; and
(b) may be expended from the Special Account for the purposes of the PCT,
including the making of refunds and the remission of fees to the
International Bureau.
22.6 Exemption from fees
(1) The Commissioner may exempt a person from the payment of the whole or any
part of a fee if the Commissioner is reasonably satisfied that the action is
justified, having regard to all the circumstances.
(2) If acceptance of a patent request and complete specification for a standard patent
has been delayed because of an error or omission on the part of an employee, the
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period mentioned in subregulation (3) is not, for the purposes of ascertaining the
amount of a fee, to be taken into account.
(3) For subregulation (2), the period is the period that the Commissioner believes, on
reasonable grounds, is equal to the period of delay that resulted from the error or
omission.
22.7 Refund of certain fees
(1) Subject to subregulation (2), if:
(a) a complete application for a standard patent has been filed; and
(b) the application is withdrawn before the specification becomes open to
public inspection;
so much of the fee paid on the filing of the application as the Commissioner
reasonably thinks fit may, on written application made to him or her, be
refunded.
(2) If the PCT requires a fee paid to the Commissioner to be refunded in whole or in
part, that fee or that part of the fee must be refunded.
(3) If:
(a) a search fee or a preliminary examination fee is payable to an International
Searching Authority or an International Preliminary Examining Authority;
and
(b) the PCT provides for the refund of the fee in whole or in part; and
(c) that fee has been paid to the Commissioner;
he or she must determine in accordance with the PCT to what extent that fee is to
be refunded to the applicant and the fee must be refunded accordingly.
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Regulation 22.7A
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Division 2—Costs
22.7A Proceedings to which this Division applies
This Division applies to proceedings before the Commissioner.
22.8 Costs
(1) The Commissioner must not award costs in proceedings to which this Division
applies, other than costs specified in Schedule 8, unless each party to the
proceedings has had the reasonable opportunity to make a submission on the
matter of the award of those costs.
(2) The Commissioner may award an amount:
(a) for costs in respect of a matter specified in column 2 of an item of Part 1 in
Schedule 8; or
(b) in respect of the expenses or allowances of a person in relation to
proceedings to which this Division applies.
(2A) A party to proceedings may request taxation of an amount awarded under
subregulation (2).
(3) If a request for taxation is made, the amount must be taxed, allowed and
certified, by an employee appointed by the Commissioner for that purpose, in
accordance with:
(a) the amount specified in column 3 of that item; or
(b) Part 2 in Schedule 8;
as the case may be.
(4) A taxation is subject to review by the Commissioner.
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22.9 Death of applicant or nominated person
The legal representative of a deceased applicant, nominated person or patentee
who wishes:
(a) in accordance with subsection 215(1) of the Act to proceed with the
application; or
(b) in accordance with subsection 215(2) of the Act to have the patent granted
to him or her; or
(c) in accordance with subsection 215(3) of the Act to have the patent
amended by substituting for the name of the patentee the name of the
person to whom the patent should have been granted;
must file the approved form and such other documents as the Commissioner
reasonably considers necessary to support the request.
22.10 Address for service
(1) If provision is made in an approved form to state an address for service, the
person completing the form must state:
(a) an address in Australia or New Zealand at which a document under the Act
or these Regulations may be given to him or her personally or to the person
specified in the form as his or her representative; or
(b) an address in Australia to which it is practicable and reasonable for
Australia Post, or a person acting on behalf of Australia Post, to deliver
mail; or
(c) an address in New Zealand to which it is practicable and reasonable for a
person providing mail delivery services to deliver mail.
(2) A person may file notice of a change of his or her address for service to another
address that complies with paragraph (1)(a), (b) or (c).
(4) If a person serves a document on a person other than the Commissioner, the
first-mentioned person must, as soon as practicable after serving the document
on the other person, file a notice of the service in the approved form together
with a copy of the document served.
(5) Service by post is a prescribed means by which a document may be served on, or
given or sent to, a person for the purposes of subsection 221(1) of the Act.
22.10A Address for correspondence
(1) If provision is made in an approved form to state an address for correspondence,
the person completing the form may state an address to which all correspondence
from the Commissioner can be sent.
(2) A person may file notice of a change of his or her address for correspondence.
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(3) The address for correspondence need not be in Australia.
22.10AA Period for doing certain acts—office not open for business
For subsection 222A(1) of the Act, the circumstance is that the act is done at:
(a) the Patent Office; or
(b) a sub-office of the Patent Office (if any);
that was not open for business.
Note: Subsection 222A(1) provides as follows:
‘(1) If the last day of a period provided by this Act (except this section) for doing an act is a
day when the Patent Office, or a sub-office of the Patent Office (if any), is not open for
business, the act may be done in prescribed circumstances on the next day when the
office or sub-office is open for business.’.
22.10AB Days when office not open for business
(1) For paragraph 222A(2)(a) of the Act, the days on which the Patent Office, or a
sub-office of the Patent Office (if any), is not open for business are:
(a) Saturday; and
(b) Sunday; and
(c) Australia Day; and
(d) Anzac Day.
(2) For paragraph 222A(2)(b) of the Act, the table sets out prescribed persons.
Item Person
1 The Director General of IP Australia
2 The Deputy Director General of IP Australia
3 Another person who:
(a) is an SES employee of IP Australia; and
(b) acts with the agreement of the Director General of IP Australia
4 Another person who:
(a) is an SES employee of IP Australia; and
(b) acts with the agreement of the Deputy Director General of IP Australia
5 Another person who:
(a) is an SES employee of IP Australia; and
(b) acts with the agreement of another SES employee of IP Australia
Note: SES employee is explained in section 34 of the Public Service Act 1999. That meaning
is applied generally to Commonwealth legislation by section 2B of the Acts
Interpretation Act 1901.
(3) For paragraph 222A(2)(b) of the Act, the prescribed way of publishing a
declaration is in the Official Journal.
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22.10AC Prescribed acts
For subsection 222A(7) of the Act, the following are prescribed:
(a) lodging a return under section 76A of the Act;
(b) an act done in relation to proceedings in a court or a tribunal;
(c) an act done under Chapter 20.
22.11 Extension of time
(1) For the purposes of subsection 223(2) or (2A) of the Act, an application for an
extension of time must be in the approved form and have with it a declaration
setting out the grounds on which the application is made.
(1A) Subregulation (1B) applies if:
(a) an application for an extension of time for doing a relevant act is made
under subsection 223(2) of the Act; and
(b) the relevant act has not been done; and
(c) a notice of opposition to the grant of the application is filed.
(1B) If the Commissioner grants the application, the Commissioner must extend the
time to include the period from the day on which the notice of opposition is filed
to the end of:
(a) if an application is made to the AAT for a review of a decision of the
Commissioner—the day when the application is withdrawn or finally dealt
with or determined; or
(b) in any other case—21 days after the end of the day on which the
Commissioner decides the application.
(1C) For paragraph 223(2A)(b) of the Act the prescribed period is 2 months after the
circumstance that prevented the person from doing the relevant act within the
time required ceases to exist.
(1D) For subsection 223(2B) of the Act the prescribed period is 12 months after the
end of the time within which the act is required to be done.
(2) Notice of the grant of an extension of time must be published in the Official
Journal.
(3) For subsection 223(4) and paragraph 223(9)(b) of the Act:
(a) the payment of a continuation fee or a renewal fee within the 6 month
period mentioned in subregulation 13.3(1A) or 13.6(2) is a prescribed
relevant act; and
(b) the prescribed circumstances are that the fee is not paid within that 6 month
period mentioned in subregulation 13.3(1A) or 13.6(2).
(4) For the definition of relevant act in subsection 223(11) of the Act, the following
are prescribed:
(a) an action mentioned in Chapter 5, other than an action or step taken under
regulation 5.4, 5.5, 5.10 or 5.11;
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(b) filing, during the term of a standard patent under subsection 71(2) of the
Act, an application under subsection 70(1) of the Act for an extension of
the term of the patent;
(c) an action mentioned in Chapter 20.
22.12 Evidence
(1) If evidence is given in writing to the Commissioner or to the Disciplinary
Tribunal for the purposes of the Act or these regulations, the evidence must be in
the form of a declaration.
(2) The Commissioner may:
(a) require a person who has made a declaration to appear before him or her to
give evidence orally on oath in substitution for, or addition to, the evidence
contained in the declaration; and
(b) allow the person to be cross-examined on the declaration.
22.13 Declarations
(1) A declaration required or permitted by the Act or these Regulations must be in
the approved form.
Note: Declaration forms in the approved form are available on the IP Australia website at
www.ipaustralia.gov.au.
(2) A declaration in the form of a statutory declaration, required or permitted to be
given to a person mentioned in subregulation (3), may be given to the person in
an electronic form by a means of electronic communication approved by the
Commissioner.
Note: A declaration that is not in the form of statutory declaration may also be given in an
electronic form by means of an electronic communication: see section 11 of the
Electronic Transactions Act 1999.
(3) For subregulation (2), the following persons may be given declarations,
including statutory declarations, in electronic form by electronic means:
(a) the Commissioner;
(b) the Designated Manager;
(c) in relation to a Panel of the Disciplinary Tribunal—the Panel Chair;
(d) the Board.
22.14 Directions not otherwise prescribed
If the Commissioner reasonably believes that it is necessary for the proper
prosecution or completion of proceedings for a person to perform an act, file a
document or produce evidence that is not provided for by the Act or these
Regulations, the Commissioner may give notice to the person requiring him or
her to perform the act, file the document or produce the evidence, specified in the
notice.
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22.15 Documents in English and English translations
(1) An abstract that is filed must be in English.
(2) A document required to be in an approved form that is filed must be in English.
(3) If any other document is filed:
(a) the document must be in English; or
(b) the document must be filed with:
(i) a translation of the document into English; and
(ii) a related certificate of verification.
(4) However, this regulation does not apply to documents relating to a basic
application that are prescribed under subsection 43AA(1) of the Act.
Note: For a list of these documents, see subregulation 3.14D(1).
22.16 Documents other than specifications and abstracts
(1) In this regulation:
document does not include:
(a) a patent request for a standard patent; or
(b) a patent request for an innovation patent; or
(c) a specification; or
(d) an abstract.
(2) If a document received at the Patent Office does not substantially comply with
regulation 22.15 or Schedule 3, or is not in accordance with whichever approved
form is applicable, the Commissioner may treat the document:
(a) as not having been filed and notify the person from whom it was received,
including in the notification a statement indicating how the document or
form does not so comply or accord; or
(b) as having been filed, but direct the person from whom it was received to do
such things as are necessary to ensure that the document will so comply or
accord.
(4) If the Commissioner gives a direction under paragraph (2)(b) and the person to
whom the direction was given does not comply with that direction within 2
months from the day when it was given, the Commissioner must treat the
document as not having been filed.
(5) Chapter 10 does not apply to a document to which this regulation applies.
22.17 Incapacity of certain persons
(1) In this regulation:
mental dysfunction means a disturbance or defect, to a severely disabling
degree, of perceptual interpretation, comprehension, reasoning, learning,
judgment, memory, motivation, or emotion.
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(2) If a person is incapable of doing anything required or permitted by the Act or
these Regulations to be done because of infancy or of mental dysfunction or
physical disability or disease, a court may, on the application of a person acting
on behalf of the incapable person or of another person interested in the doing of
the thing:
(a) do that thing; or
(b) appoint a person to do the thing;
in the name, and on behalf, of the incapable person.
(3) A thing done in the name of, and on behalf of, an incapable person is taken to
have been done by that person as if the person had not been incapable when the
thing was done.
22.19 Copies of certain documents to be supplied
A copy of a document that:
(a) affects the ownership of a patent or licence; and
(b) has been witnessed;
must be filed by a person who seeks to have the Commissioner consider the
document for the purposes of the Act or these regulations.
22.20 International applications and the Patent Office
If, for the purposes of the PCT, the Patent Office is:
(a) a receiving Office; or
(b) an International Searching Authority; or
(c) an International Preliminary Examining Authority;
the Commissioner and the Patent Office may perform the functions under the
PCT of a receiving Office, an International Searching Authority or an
International Preliminary Examining Authority, as the case requires, in relation
to an international application.
22.21 Protection or compensation of certain persons
(1) The following provisions of this regulation are prescribed for subsections 41(4),
150(4) and 223(9) of the Act.
(2) Persons who availed themselves of or exploited, or took definite steps by
contract or otherwise to avail themselves of or exploit, inventions:
(a) in the case of inventions to which subsection 41(4) of the Act applies—in
the period mentioned in paragraph 41(4)(c) of the Act; and
(b) in the case of inventions to which subsection 150(4) of the Act applies—
after the lapse of the applications and before the day on which their
restoration was notified in the Official Journal; and
(c) in the case of inventions to which subsection 223(9) of the Act applies—
within the period of time extended under that subsection;
may apply, in the approved form, to the Commissioner for the grant of licences
to exploit the inventions.
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(3) The Commissioner must give a copy of the application to:
(a) a person whose application was restored under section 150 of the Act; or
(b) a patent applicant or patentee of the application or patent for which an
extension of time was granted under section 223 of the Act; or
(c) the patent applicant or patentee of the application or patent to which
subsection 41(4) of the Act applies;
and to any other person the Commissioner believes to have an interest in the
application.
(4) A person mentioned in subregulation (3) may oppose the grant of the licence to
which the application relates.
(5) The Commissioner, if reasonably satisfied that the application should be granted,
must grant a licence to the applicant on such terms as the Commissioner thinks
reasonable.
22.22 Exercise of discretionary powers by Commissioner
(1) The Commissioner must give a person an opportunity to be heard before
exercising a discretionary power under the Act or these Regulations adversely to
the person.
Note: See section 216 of the Act for a similar provision.
(2) The Commissioner must give the person an opportunity to be heard by:
(a) asking the person for written submissions; or
(b) notifying the person that, on request to the Commissioner, the person may
be heard by way of an oral hearing on a date, and at a time and place,
determined by the Commissioner; or
(c) notifying the person of the date, time and place of an oral hearing.
(3) The Commissioner may exercise the discretionary power if the person:
(a) notifies the Commissioner that the person does not want to be heard; or
(b) does not file written submissions if requested under subregulation 22.23(1);
or
(c) does not attend an oral hearing if notified under subregulation 22.23(2).
(4) If the Commissioner exercises discretionary power in any of the circumstances
mentioned in subregulation (3), the Commissioner must notify the person of the
Commissioner’s decision.
22.23 Written submissions and oral hearings
Written submissions
(1) If the Commissioner decides that a person may be heard by way of written
submissions, the Commissioner must:
(a) notify the person of the period in which the submissions must be filed
(being at least 10 business days); and
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(b) determine the matter after considering the written submissions; and
(c) notify the person of the Commissioner’s decision in relation to the exercise
of the discretionary power.
Oral hearings
(2) If the Commissioner decides that a person may be heard by way of an oral
hearing, the Commissioner must give notice of the date, time and place of the
hearing, to the person, at least 10 business days before the day the hearing is to
begin.
(3) The Commissioner may adjourn an oral hearing from time to time or from place
to place by notifying the person.
(4) The Commissioner may hold an oral hearing in which:
(a) a person appears in person; or
(b) a person participates by telephone or other means of telecommunications
that the Commissioner reasonably allows.
(5) In addition to the Commissioner’s other powers, the Commissioner may direct a
person to provide a written summary of submissions.
(6) The Commissioner must notify a person who appears at the hearing of the
Commissioner’s decision in relation to the exercise of the discretionary power.
22.24 Practice and procedure other than for opposition proceedings
(1) Subject to these Regulations:
(a) if the Act or these Regulations authorise the Commissioner to hear and
decide an application or matter that is not an opposition; or
(b) in a matter being decided on the motion of the Commissioner;
the practice and procedure to be followed for the purposes of enabling the
application or matter to be decided is to be determined by him or her.
(2) A person to be heard at a hearing may apply to the Commissioner in respect of
the practice and procedure in relation to the hearing to be determined by the
Commissioner.
22.25 Requirements cannot be complied with for reasonable cause
If, under these Regulations, a person is required to:
(a) sign a document, make a declaration or file or give the Commissioner a
document or evidence; and
(b) the Commissioner is reasonably satisfied that the person cannot comply
with the requirement;
the Commissioner may, subject to such conditions as he or she reasonably
directs, dispense with the requirement.
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22.26 Review of decisions
(1) In this regulation:
decision has the same meaning as in the Administrative Appeals Tribunal Act
1975.
(2) Application may be made to the AAT for review of a decision of:
(a) the Commissioner under the following provisions:
(i) paragraph 3.24(1)(b) (‘Commissioner may request samples and
viability statement’);
(ii) subregulation 3.25(2) (‘request for Commissioner’s certificate
authorising release of sample of a micro-organism’);
(iia) paragraph 4.3(2)(b) (‘prescribed documents: public inspection’);
(iii) regulation 5.17 or 5.18 (‘dismissal of opposition’);
(iv) regulation 5.19 (‘determination of opposition’);
(v) subparagraph 6.2(1)(b)(ii) (‘prescribed period: grant of standard
patent’);
(va) subregulation 13.4(3);
(vi) subregulation 22.21(5) (‘protection or compensation of certain
persons’); or
(b) the Board under the following provisions:
(i) regulation 20.5 (‘evidence of academic qualifications’);
(ii) regulation 20.7 (‘evidence of knowledge requirements’); or
(c) the Designated Manager under the following provisions:
(i) regulation 20.28 (‘failure to comply with continuing professional
education requirements’);
(ii) regulation 20.28B (suspension of registration—serious offence);
(iii) subregulation 20.29(3) (imposing a condition when restoring
attorney’s name to Register of Patent Attorneys);
(iv) regulation 20.31 (‘returning to Register of Patent Attorneys in other
circumstances);
(v) regulation 20A.8 (failing to maintain professional indemnity
insurance); or
(d) a Panel of the Disciplinary Tribunal under the following provisions:
(i) regulation 20.43 (‘decision of Panel of Disciplinary Tribunal’);
(ii) regulation 20.44 (‘penalties—professional misconduct’);
(iii) regulation 20.45 (‘penalties—unsatisfactory professional conduct’);
(iv) regulation 20.46 (‘finding that attorney was unqualified at time of
registration’);
(v) regulation 20.47 (‘finding that registration obtained by fraud’);
(vi) regulation 20A.18 (decision of Panel of Disciplinary Tribunal).
(3) If the Commissioner gives a person affected by a decision referred to in
subregulation (2) written notice of the making of the decision, the notice must
include a statement to the effect that, subject to the Administrative Appeals
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Tribunal Act 1975, application may be made to the AAT for review of that
decision by or on behalf of the person whose interests are affected by it.
(4) Failure to comply with subregulation (3) in relation to a decision does not affect
the validity of the decision.
(5) If the AAT reviews a decision of the Commissioner under subsection 224(1) of
the Act and the decision is not affirmed, the Commissioner must publish a notice
of the decision of the AAT in the Official Journal.
22.27 Documents not to infringe copyright—prescribed documents
(1) For paragraph 226(2)(c) of the Act, the following documents are prescribed:
(a) a document open to public inspection under Chapter 4 of the Act;
(b) a document open to public inspection under these Regulations.
(2) However, a journal, book or catalogue is not prescribed if:
(a) it is provided for prosecution, examination or proceedings in relation to a
patent application, or subsequent patent; and
(b) a right subsisting in the journal, book or catalogue under the Copyright Act
1968 is held by a party other than the patent applicant, patentee or another
person who has filed a document for the application or patent.
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Chapter 23—Transitional and savings provisions
Part 1—General
23.1 Saving: prohibition orders
Subsection 4(2) of the 1952 Act continues in force.
23.2 Delegation: certain matters referred to in this Chapter
Section 11 of the 1952 Act continues on and after the commencing day in respect
of the exercise by the Commissioner of his or her powers and functions in
relation to the operation of:
(a) subsection 234(3) of the Act; or
(b) a following provision of this Chapter.
23.3 Opposition to grant: practice and procedure
(1) Division 1 of Part XIV and regulations 82 and 83A of the former patents
Regulations continue to apply in relation to opposition to the grant of a standard
patent on an application:
(a) to which subsection 234(3) of the Act refers; and
(b) acceptance of which has been advertised under the 1952 Act.
(2) Chapter 5 of these Regulations does not apply to opposition to an application to
which subregulation (1) applies.
(3) Chapter 5 of these Regulations applies to opposition to an application:
(a) to which subsection 234(3) of the Act refers; and
(b) of which advertisement of acceptance has taken place under the Act.
23.4 Certain opposition: practice and procedure
(1) If, before the commencing day:
(a) a matter is advertised in the Official Journal; or
(b) a document is served on a person;
to enable opposition proceedings to be taken, other than in relation to the grant of
a standard patent:
(c) the following provisions of the 1952 Act continue to apply:
(i) sections 82, 83, 84, 85 and 94;
(ii) subsections 160(5) and (6); and
(d) the following provisions of the former patents Regulations continue to
apply:
(i) regulations 36, 39B, 39C, 39D, 48, 49, 50, 51, 52, 76, 77, 78, 82, 83A
and 92;
(ii) Divisions 1 and 2 of Part XIV.
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(2) If provisions specified in subregulation (1) continue to apply, the following
provisions do not apply to the opposition referred to in that subregulation:
(a) sections 104 and 223 of the Act;
(b) Chapter 5 and regulations 22.21, 22.22 and 22.23 of these Regulations.
23.5 Fees payable for certain matters relating to opposition
The fee payable in respect of opposition proceedings of the kind mentioned in
regulation 23.3 or 23.4 is the fee that would have been payable if these
Regulations applied to those proceedings.
23.6 Certain delegations: opposition
The delegation of a person who, before the commencing day, was:
(a) the delegate of the Commissioner under the 1952 Act; and
(b) exercising the powers of the Commissioner in relation to a matter to which
regulation 23.3 or 23.4 applies;
continues in relation to the matter.
23.7 Certain undertakings
If an undertaking referred to in paragraph 3.25(4)(c) is given in respect of an
application lodged under the 1952 Act, the reference to Chapter 5 of the Act in
subparagraph 3.25(4)(c)(i) includes a reference to Part V of the 1952 Act.
23.8 Restoration of lapsed applications or ceased patents
(1) If, before the commencing day:
(a) an application lapses under:
(i) section 47C or 47D of the 1952 Act; or
(ii) subregulation 7B(4) or (5) of the former patents Regulations; or
(b) a patent ceases because of failure to pay a prescribed fee within the
prescribed time;
and an application is made for the restoration of the lapsed application or ceased
patent, as the case may be, under:
(c) subsection 47E(2) or 97(1) of the 1952 Act; or
(d) subregulation 7B(6) of the former patents Regulations;
section 47E, subsection 97(2) or (3) or section 98 of the 1952 Act or the
prescribed provisions of the former patents Regulations, as the case requires,
continues to apply in relation to that lapsed application or ceased patent and the
corresponding provisions of the Act and these Regulations do not so apply.
(2) There is payable to the Commissioner in respect of a lapsed application or ceased
patent to which subregulation (1) applies a fee of the amount specified in column
3 of item 8 of Part 1 in Schedule 2 to the former patents Regulations.
(3) In subregulation (1), prescribed provisions means:
(a) regulations 16D, 16E, 16F, 41, 42, 43, 44, 82, 83A, 92; or
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(b) Division 1 of Part XIV.
23.9 Certain continuation and renewal fees
(1) If, before the commencing day:
(a) the second year after lodgment of a complete specification ends; and
(b) the continuation fee prescribed in respect of that year in relation to the
specification is payable but has not been paid;
item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in respect of the
second anniversary.
(2) If, before the commencing day:
(a) the second year of a patent ends; and
(b) the renewal fee prescribed in respect of that year in relation to the patent is
payable but has not been paid;
item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in respect of the
second anniversary.
23.10 Fee taken to have been paid
If:
(a) in respect of the lodging of an application for an extension of time, a fee
specified in item 27 of Part 1 in Schedule 2 to the former patents
Regulations is paid in respect of a period referred to in subsection 54(1B)
of the 1952 Act; and
(b) the application has not been accepted before the commencing day; and
(c) the applicant is required to pay the fee specified in item 22 of Part 2 in
Schedule 7 to these Regulations in relation to the application;
the fee under item 22 is taken to have been paid in respect of the period referred
to in paragraph (a).
23.11 Supply of product referred to in section 117 of the Act
(1) If:
(a) a product to which section 117 of the Act applies is supplied by a person to
another person before the commencing day; and
(b) the supply would not have infringed a patent under the 1952 Act before the
commencing day; and
(c) the first-mentioned person supplies the product to another person after the
commencing day;
section 117 of the Act does not apply to the supply referred to in paragraph (c).
(2) In subregulation (1), a reference to the first-mentioned person includes:
(a) on the death of the person—the legal personal representative of the estate
of the person who has died; or
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(b) if the person becomes bankrupt—the person who becomes, under the
Bankruptcy Act 1966, the trustee in bankruptcy of the estate of the
first-mentioned person; or
(c) if a body corporate is being wound up—the person appointed to be the
liquidator of the body corporate; or
(d) if the person agrees to dispose of a business relating to the supply of the
product—a person who acquires that business, whether from the
first-mentioned person or from some other person.
23.12 Certain withdrawn, abandoned or refused applications
(1) On and after the commencing day, section 142AA of the 1952 Act continues to
apply to an application referred to in subsection 234(2) of the Act.
(2) Section 96 of the Act does not apply to an application to which subregulation (1)
applies.
23.13 Certain certificates of validity
If:
(a) a court certifies under section 169 of the 1952 Act in relation to the validity
of a patent or of a claim; and
(b) the validity of the patent or claim is disputed on or after the commencing
day;
the certificate referred to in paragraph (a) is taken to have been issued under
subsection 19(1) of the Act.
23.14 Certain action under the 1952 Act
If:
(a) a provision of the Act requires an act to be done under that or another
particular provision of the Act; and
(b) the act was done under a corresponding provision of the 1952 Act;
that act is taken to have been done under the provision referred to in
paragraph (a) under which the act is required to be done.
23.15 Amendment of petty patents
The complete specification of a petty patent granted under section 62A of the
1952 Act cannot be amended under the Act so as to include more than 1 claim.
23.16 Certain applications under 1952 Act: time for acceptance
(1) This regulation applies to an invention referred to in paragraph 45(1)(b) or
48(1)(a) of the Act that is, so far as claimed in any claim, the subject of:
(a) a claim of the complete specification in relation to an application for a
standard patent referred to in subparagraph 48(3)(a)(i) of the 1952 Act; or
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(b) the claim of the complete specification in relation to an application for a
petty patent referred to in subparagraph 48(3)(a)(ii) of the 1952 Act;
the priority date of which is earlier than the priority date of the first-mentioned
claim.
(2) If, under paragraph 45(1)(b) or 48(1)(a) of the Act, the Commissioner reports
that the first-mentioned claim in subregulation (1) is a claim the priority date of
which is later than the priority date of the claim referred to in paragraph (1)(a) or
(b), he or she may defer acceptance of the application and complete specification
until the end of 3 months after:
(a) the date on which a patent was sealed on the application referred to in
paragraph (1)(a) or (b); or
(b) the date on which that application lapsed or was withdrawn or refused.
23.17 PCT applications to which subsection 89(5) of the Act does not apply
Subsection 89(5) of the Act does not apply to an application:
(a) to which subsection 234(2) of the Act applies; and
(b) that is a PCT application in respect of which Australia has been elected
under Chapter II of the PCT within the period specified in Article 39 of the
PCT; and
(c) in respect of which a filed Preliminary Examination Report made under the
PCT reports that an amendment to the application goes beyond the
disclosure in the relevant international application that has been filed.
23.18 Certain priority dates: saving
In the case of a claim of a specification:
(a) relating to a further application for a standard patent or for a petty patent
under section 51 of the 1952 Act in respect of an invention disclosed in a
provisional specification under that Act; or
(b) to which subsection 45(2), (3), (3A) or (4A) of the 1952 Act applies; or
(c) to which subsection 191(8) of the Statute Law (Miscellaneous
Amendments) Act (No. 1) 1982 applies;
the priority date is determined under section 45 of the 1952 Act or
subsection 191(8) of the Statute Law (Miscellaneous Amendments) Act (No. 1)
1982, as the case requires.
23.25 Fees
(1) In this regulation:
continuation fee means a continuation fee for the purposes of section 47D of the
1952 Act.
renewal fee means a renewal fee for the purposes of subsection 68(2) of that Act.
(2) Subregulation 22.2(1) does not apply in respect of:
(a) a continuation fee in respect of a year; or
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(b) a renewal fee in respect of a year of a patent;
that ends on or after the commencing day, if the fee became payable, and was
paid, before that day.
(3) If an application for a standard patent was accepted under section 52 or 52D of
the 1952 Act before the commencing day, the fee payable for the sealing of that
patent is the fee that was applicable to the sealing of the patent immediately
before that day.
(4) In the case of a PCT application, if:
(a) a continuation fee in respect of an anniversary that occurs within the period
of 9 months immediately preceding the commencing day; and
(b) the continuation fee is not paid in the period referred to in
subregulation 13.3(1) but is paid within 9 months after the anniversary
concerned;
the prescribed period referred to in subregulation 13.3(1) is extended to the day
on which the fee is paid.
23.26 Certain actions and proceedings
(1) The 1952 Act applies to an action or proceeding made or started under that Act
and not finally dealt with or determined before the commencing day:
(a) in which the validity of a patent is disputed; or
(b) concerning infringement of a patent.
(2) The 1952 Act applies to an action or proceeding in which the validity of a patent
granted under the Patents Act 1990 on an application made under the 1952 Act is
disputed.
23.32 Transitional: priority date and date of patent for innovation patent
application that is a divisional application of a petty patent or petty
patent application
(1) For an innovation patent that is a divisional application of a petty patent or a
petty patent application under section 39 of the old Act:
(a) the priority date of the innovation patent is the date that would have been
the priority date of the application under paragraph 3.12(1)(c) of the old
Regulations if the innovation patent application had been filed as a
divisional application under section 39 of the old Act; and
(b) the date of the innovation patent is the date that would have been the date
of the patent under paragraph 6.3(1)(f) or (g) of the old Regulations if the
innovation patent application had been filed as a divisional application
under section 39 of the old Act.
(2) In this regulation:
old Act means the Patents Act 1990 as in force immediately before the
commencement of the Patents Amendment (Innovation Patents) Act 2000.
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old Regulations means the Patents Regulations 1991 as in force immediately
before the commencement of the Patents Amendment (Innovation Patents) Act
2000.
23.33 Transitional: examination of innovation patents converted from petty
patent applications
(1) This regulation applies if:
(a) an innovation patent has been granted; and
(b) the application for the innovation patent was converted from an application
for a petty patent; and
(c) the Commissioner had begun to consider the petty patent application, or
had begun to make any investigations in relation to the petty patent
application, under section 50 of the old Act; and
(d) the innovation patent is to be examined under Part 1 of Chapter 9A of the
Act.
(2) In examining the innovation patent, the Commissioner is not required to consider
the results of:
(a) the consideration of the petty patent application; or
(b) any investigations made in relation to the petty patent application.
(3) In this regulation:
old Act means the Patents Act 1990 as in force immediately before the
commencement of the Patents Amendment (Innovation Patents) Act 2000.
23.34 Transitional: certain PCT applications
(1) This regulation applies to a PCT application that:
(a) is made on or after the commencement day; and
(b) would, if the old Act applied to the application, be an application to which
paragraph 88(2)(a) of the old Act applied.
(2) The application is to be treated as an application for a standard patent.
(3) In this regulation:
commencement day means the day the Patents Amendment (Innovation Patents)
Act 2000 commences.
old Act means the Patents Act 1990 as in force immediately before the
commencement of the Patents Amendment (Innovation Patents) Act 2000.
23.35 Transitional: payment of fees for petty patents
(1) This regulation makes provision in respect of the payment of fees payable for
petty patents to which the old Act applies under Part 1 of Schedule 2 to the
Patents Amendment (Innovation Patents) Act 2000.
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Regulation 23.35
180 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
(2) Subregulations (3) and (4) apply to an application for which the fee mentioned in
item 13 of Part 2 of Schedule 7 to the old Regulations is payable.
(3) If:
(a) the fee is not paid when the application is made; and
(b) within 1 month after the application is made, the Commissioner invites the
person by whom the fee is payable to pay the fee within 1 month after the
date of the invitation; and
(c) the fee is not paid within the 1 month period;
the application is taken not to have been made.
(4) If the fee is paid, the application is taken to have been made on the date on which
the fee was paid.
(5) Subregulations (6), (7) and (8) apply to a request for which the fee mentioned in
paragraph (b) of item 15 of Part 2 of Schedule 7 to the old Regulations is
payable.
(6) The Commissioner must not process the request if the fee has not been paid.
(7) If:
(a) the fee is not paid when the request is made; and
(b) within 1 month after the request is made, the Commissioner invites the
person by whom the fee is payable to pay the fee within 1 month after the
date of the invitation; and
(c) the fee is not paid within the 1 month period;
the request is taken not to have been made.
(8) If the fee is paid, the request is taken to have been made on the date on which the
fee was paid.
(9) In this regulation:
old Act means the Patents Act 1990 as in force immediately before the
commencement of the Patents Amendment (Innovation Patents) Act 2000.
old Regulations means the Patents Regulations 1991 as in force immediately
before the commencement of the Patents Amendment (Innovation Patents) Act
2000.
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Regulation 23.36
Patents Regulations 1991 181
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Part 2—Amendments made by particular instruments
23.36 Amendments made by Intellectual Property Legislation Amendment
(Raising the Bar) Regulation 2013 (No. 1)
(1) The amendments of these Regulations made by the items of Schedule 1 to the
Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013
(No. 1) apply as set out in the following table.
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
1 item 1 the matters referred to in subitem 55(1) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
2 item 2 the matters referred to in subitem 55(9) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
3 item 3 the matters referred to in subitem 55(1) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
4 item 5 the matters referred to in subitem 55(4) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
5 items 6, 7 and 8, in their
application to the
re-examination of a standard
patent
the matters referred to in subitem 55(5) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
6 items 6, 7 and 8, in their
application to the
re-examination of an
innovation patent
the matters referred to in subitem 55(7) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
7 item 9 the matters referred to in subitem 55(9) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
8 item 10, new
subregulation 10.3(1)
a provisional specification filed on or after 15 April 2013
9 item 10, new
subregulation 10.3(2)
the matters referred to in subitem 55(9) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012, but treating the first reference to a
complete specification in that subitem as a reference to an
abstract
10 item 11 the matters referred to in subitem 55(9) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
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Regulation 23.36
182 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
11 item 12 the matters referred to in subitem 55(4) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
12 item 13 the matters referred to in subitem 55(8) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
13 items 15, 16, 17, 18 and 20 the matters referred to in subitem 55(3) of Schedule 1 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
(2) The amendments of these Regulations made by the items of Part 1 of Schedule 3
to the Intellectual Property Legislation Amendment (Raising the Bar)
Regulation 2013 (No. 1) apply as set out in the following table.
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
1 item 2 (new regulation 5.3) an opposition proceeding commenced before 15 April
2013
2 item 2 (new subregulations
5.9(1) to (5)) and item 9 (new
item 218 of Schedule 7)
an opposition proceeding commenced before 15 April
2013 in which an extension of time is requested for a
period that commences on or after 15 April 2013
However:
(a) a reference in subregulation 5.9(1) to regulation 5.8 is
taken to be a reference to regulation 5.8 as in force
immediately before 15 April 2013; and
(b) paragraph 5.10(1)(b) and subregulation 5.10(2), as in
force immediately before 15 April 2013, are taken not
to apply
3 item 2 (new regulation 5.20) an opposition proceeding commenced before 15 April
2013 in which the Commissioner has not set a hearing
date, or issued a notice of hearing to the parties, before
15 April 2013
However:
(a) a reference in that regulation to regulation 5.26 is taken
to be a reference to regulation 5.15 as in force
immediately before 15 April 2013; and
(b) a reference in that regulation to Part 5.4 is taken to be a
reference to regulation 5.5 as in force immediately
before 15 April 2013; and
(c) a reference in that regulation to regulation 5.19 is taken
to be a reference to regulation 5.6 as in force
immediately before 15 April 2013; and
(d) regulation 5.12, as in force immediately before
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Regulation 23.36
Patents Regulations 1991 183
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Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
15 April 2013, is taken not to apply
4 items 2, 7 and 9 an opposition proceeding commenced by the filing of a
notice of opposition on or after 15 April 2013
However, if:
(a) an amendment was advertised under regulation 10.5
before 15 April 2013; and
(b) a notice of opposition is filed for subsection 104(4) of
the Act on or after 15 April 2013;
the reference in subregulation 5.10(1) to 2 months is taken
to be a reference to 3 months
Also, if:
(a) an opposition proceeding was commenced by the filing
of a notice of opposition before 15 April 2013; and
(b) a document or evidence was not served in relation to
the opposition proceeding before 15 April 2013; and
(c) the document or evidence is required to be served on or
after 15 April 2013;
then:
(d) a requirement in Chapter 5, or regulation 22.21, as in
force immediately before 15 April 2013, for a party to
serve a document or evidence on a person is taken to
be a requirement to file the document or evidence; and
(e) a reference to a document or evidence having been
served is taken to be a reference to the document or
evidence having been filed; and
(f) the Commissioner must give a copy of the document or
evidence to the person; and
(g) if:
(i) under Chapter 5, as in force immediately before
15 April 2013, a period for the person to do an
action was calculated from the date that a party
served the document or evidence; and
(ii) the Commissioner does not give the document
or evidence to the person on the filing date;
the Commissioner must extend the period for the
person to do the action by a number of days equal to
the number of days between when the document or
evidence was filed and when the Commissioner gave
the document or evidence to the person
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Regulation 23.36
184 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
5 item 3 (new regulation 6A.1) the matters referred to in subitem 32(3) of Schedule 3 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
6 item 3 (new regulation 6A.2) the matters referred to in subitem 32(4) of Schedule 3 to
the Intellectual Property Laws Amendment (Raising the
Bar) Act 2012
(3) The amendment of these Regulations made by item 14 of Schedule 4 to the
Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013
(No. 1) applies in relation to a charge that:
(a) is laid against a registered patent attorney on or after 15 April 2013; and
(b) alleges the commission of a serious offence.
(4) The amendments of these Regulations made by the items of Part 2 of Schedule 6
to the Intellectual Property Legislation Amendment (Raising the Bar)
Regulation 2013 (No. 1) apply as set out in the following table.
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
1 item 5 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
2 item 6 the matters referred to in subitem 133(1) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
3 item 7 the matters referred to in subitem 133(4) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
4 item 8 a complete application for a standard patent
in which a request for examination is made
on or after 15 April 2013
5 items 9 to 12 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
6 item 13 a PCT application that enters the national
phase on or after 15 April 2013
7 items 14 to 18 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
8 item 20 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
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Regulation 23.36
Patents Regulations 1991 185
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
9 item 21 the matters referred to in subitem 55(9) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
10 item 22 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
11 item 23 the matters referred to in subitem 55(9) of
Schedule 1 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
12 item 24, regulation 3.14C the matters referred to in subitem 133(8) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
13 item 25 and 26 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
14 item 27 a direction issued under subsection 44(2) of
the Act, on or after 15 April 2013
15 item 28 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
16 item 30 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
17 item 31 a PCT application that enters the national
phase on or after 15 April 2013
18 items 36 and 37 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
19 item 38 a document that:
(a) is related to a patent application; and
(b) is not a specification;
filed before, on or after 15 April 2013
20 item 39 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
21 items 40 and 41 the matters referred to in subitem 133(9) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
22 item 42 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
23 item 43 a PCT application filed with a receiving
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Regulation 23.36
186 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
Office on or after 15 April 2013
24 item 44 the matters referred to in subitem 133(9) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
25 item 45 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
26 item 47, paragraph 9A.4(f) an application in relation to which a request
for examination is made on or after 15 April
2013
27 item 47, paragraph 9A.4(g) the matters referred to in subitem 133(12) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
28 items 48 to 50 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
29 item 51 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
30 item 53 an application or patent in relation to which
leave to amend the patent request, complete
specification or other filed document is
granted on or after 15 April 2013
31 item 54 the matters referred to in subitem 133(3) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
unless other arrangements are made in this
regulation
32 item 54 a request to rectify the Register to which the
following apply:
(a) the request was published before 15 April
2013;
(b) the period to file an opposition under
subregulation 5.3(5A) had not expired
before 15 April 2013;
(c) no notice of opposition was filed before
15 April 2013;
as if it were a request to rectify the Register
made on 15 April under regulation 10.7
33 item 55 all of the following:
(a) aircraft, land vehicles and vessels that
were foreign aircraft, foreign land
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Regulation 23.36
Patents Regulations 1991 187
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Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
vehicles or foreign vessels, within the
meaning of the Act, immediately before
15 April 2013;
(b) aircraft and vessels that are registered on
or after 15 April 2013;
(c) land vehicles the ownership of which is
acquired on or after 15 April 2013
34 item 56 the matters referred to in subitem 133(9) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
35 item 57 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
36 item 58 the matters referred to in subitem 133(15) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
37 item 61 the matters referred to in subitem 133(6) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
38 item 62, new paragraph 13.4(1)(g) an application in relation to which a request
for examination is made on or after 15 April
2013
39 item 62, new paragraph 13.4(1)(ga) the matters referred to in subitem 133(11) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
40 item 64, reference to new
paragraph 13.4(1)(g)
an application in relation to which a request
for examination is made on or after 15 April
2013
41 item 64, reference to new
paragraph 13.4(1)(ga)
the matters referred to in subitem 133(11) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
42 items 65 and 66 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
43 items 67 and 68 an application in relation to which a request
for examination is made on or after 15 April
2013
44 item 77, other than the insertion of new
subregulation 22.22(1)
a hearing for which the Commissioner has
issued a hearing notice, or an invitation to be
heard, on or after 15 April 2013
45 item 78 an act referred to in subsection 226(1) of the
Act done in relation to a prescribed
document on or after 15 April 2013
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Part 2 Amendments made by particular instruments
Regulation 23.36
188 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
Transitional provisions
Item Column 1
The amendments made by:
Column 2
apply in relation to:
46 item 80 a PCT application that enters the national
phase on or after 15 April 2013
47 item 81 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
48 item 82 the matters referred to in subitem 133(3) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
49 item 83 the matters referred to in subitem 133(2) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
50 items 84 and 85 the matters referred to in subitem 133(9) of
Schedule 6 to the Intellectual Property Laws
Amendment (Raising the Bar) Act 2012
51 item 86 an application in relation to which a request
for examination is made on or after 15 April
2013
(5) The amendments of these Regulations made by the items of Part 2 of Schedule 6
to the Intellectual Property Legislation Amendment (Raising the Bar)
Regulation 2013 (No. 1) do not apply as set out in the following table.
Transitional provisions
Item Column 1
The amendments made by:
Column 2
do not apply:
1 item 29 in relation to the matters referred to in subitem 134(1) of
Schedule 6 to the Intellectual Property Laws Amendment
(Raising the Bar) Act 2012
2 items 32 to 35 in relation to the matters referred to in subitem 134(1) of
Schedule 6 to the Intellectual Property Laws Amendment
(Raising the Bar) Act 2012
3 item 52 in relation to the matters referred to in item 134 of
Schedule 6 to the Intellectual Property Laws Amendment
(Raising the Bar) Act 2012
4 item 54 to the extent that they would prevent the correction of a
patent granted before 15 April 2013 in accordance with
regulation 10.7 as in force immediately before 15 April
2013
5 item 60 in relation to the matters referred to in item 134 of
Schedule 6 to the Intellectual Property Laws Amendment
(Raising the Bar) Act 2012
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Regulation 23.37
Patents Regulations 1991 189
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(6) Regulation 8.3, as continued in force in accordance with this regulation, is
amended by omitting subregulation 8.3(2) and inserting:
(2) At the end of section 141:
Add:
(3) Despite subsection (2), a PCT application is also to be treated as having been
withdrawn if Article 11(3) of the PCT ceases to have effect in Australia in
relation to the application under Article 24(1)(i) of the PCT.
Note: This amendment applies in relation to a PCT application that was made before 15 April
2013 and for which a notice of withdrawal was filed on or after 15 April 2013.
23.37 Amendments made by Intellectual Property Legislation Amendment (TRIPS
Protocol and Other Measures) Regulation 2015
(1) The amendments of these Regulations made by Schedule 1 to the Intellectual
Property Legislation Amendment (TRIPS Protocol and Other Measures)
Regulation 2015 (the amending instrument) apply in relation to patents granted
before or after the commencement of that Schedule.
(2) The amendments of these Regulations made by items 2 to 13 of Schedule 4 to
the amending instrument apply in relation to the following:
(a) patents for which the complete application is made after that Schedule
commences;
(b) standard patents for which the application had been made before that
Schedule commences, if the applicant had not asked for an examination of
the patent request and specification for the application under section 44 of
the Patents Act 1990 before that time;
(c) innovation patents granted after that Schedule commences, if the complete
application to which the patent relates had been made before that time;
(d) complete patent applications made after the time that Schedule
commences;
(e) complete applications for standard patents made before the commencement
of that Schedule, if the applicant had not asked for an examination of the
patent request and specification for the application under section 44 of the
Patents Act 1990 before that time;
(f) complete applications for innovation patents made before that Schedule
commences, if a patent had not been granted in relation to the application
on or before that time;
(g) innovation patents granted before that Schedule commences, if:
(i) the Commissioner had not decided to examine the complete
specification relating to the patent under section 101A of the Patents
Act 1990 before that time; and
(ii) the patentee or any other person had not asked the Commissioner to
examine the complete specification relating to the patent under
section 101A of the Patents Act 1990 before that time.
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Part 2 Amendments made by particular instruments
Regulation 23.37
190 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
(3) Regulation 3.25 as repealed and substituted by Schedule 5 of the amending
instrument applies in relation to requests made after the commencement of that
Schedule, regardless of when the micro-organism was deposited with a
prescribed depository institution.
(4) Regulation 3.25A as inserted by Schedule 5 of the amending instrument applies
in relation to applications for standard patents made:
(a) after the commencement of that Schedule; and
(b) before the commencement of that Schedule, if the complete specification
relating to the application is not open to public inspection at that
commencement.
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Schedule 1 to the Intellectual Property Legislation Amendment (Single Economic Market and Other
Measures) Regulation 2016 Part 3
Regulation 23.38
Patents Regulations 1991 191
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
Part 3—Transitional provisions for Schedule 4 to the
Intellectual Property Laws Amendment Act 2015
and Schedule 1 to the Intellectual Property
Legislation Amendment (Single Economic Market
and Other Measures) Regulation 2016
23.38 Definitions
In this Part:
commencement day means the day on which Schedule 4 to the Intellectual
Property Laws Amendment Act 2015 commences.
old regulations means these Regulations as in force immediately before the
commencement day.
23.39 Removal of name from Register if New Zealand court determines person
should not practise as a patent attorney in New Zealand
(1) This regulation is made for section 199 of the Act and applies if:
(a) an individual is a registered patent attorney; and
(b) immediately before the commencement day the individual was registered
as a patent attorney in New Zealand (whether or not the individual was also
a registered patent attorney in Australia; and
(c) on or after that commencement day, the New Zealand Commissioner of
Patents advises the Designated Manager that:
(i) a New Zealand court has determined that the individual should not
practise as a patent attorney in New Zealand; and
(ii) all rights of appeal in relation to the court’s determination have been
exhausted or have expired; and
(iii) the conduct giving rise to the court’s determination occurred before
the commencement day.
(2) The Designated Manager must remove the name of the individual from the
Register of Patent Attorneys as soon as practicable after receiving the advice.
23.40 Restoring attorney’s name after advice from New Zealand Commissioner
of Patents
For paragraph 198(4)(g) of the Act, if an individual’s name is removed from the
Register of Patent Attorneys under regulation 23.39, the Designated Manager
must not enter the individual’s name in the Register unless the Designated
Manager has received written advice from the New Zealand Commissioner of
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and Schedule 1 to the Intellectual Property Legislation Amendment (Single Economic Market and
Other Measures) Regulation 2016
Regulation 23.41
192 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
Patents that a New Zealand court has determined that the individual’s name may
be entered in the Register.
23.41 Transitional—registration as a patent attorney
(1) This regulation applies in relation to a person if he or she satisfies the following
requirements:
(a) the person has passed each relevant New Zealand examination mentioned
in subregulation (4);
(b) the person passed at least one of those examinations before the
commencement day;
(c) the person passed the remainder of those examinations before the end of
the 4-year period beginning on the commencement day.
(2) For the purposes of subsection 198(4) of the Act (as affected by item 82 of
Schedule 4 to the Intellectual Property Laws Amendment Act 2015), the person
must meet the requirements set out in subregulation (3) instead of the
requirements set out in regulations 20.2, 20.3, 20.5, 20.6, 20.7 and 20.8.
(3) The person’s application for registration as a patent attorney must be:
(a) in writing, in a form approved by the Designated Manager; and
(b) accompanied by the statements and declarations mentioned in paragraphs
20.3(1)(d), (e) and (f); and
(c) accompanied by a written declaration signed by the person that he or she
satisfies the requirements mentioned in subregulation (1); and
(d) accompanied by the fee mentioned in item 104 of Schedule 7.
(4) For paragraph (1)(a), the relevant examinations are the following examinations
jointly arranged and conducted by the New Zealand Commissioner of Patents
and the Council of the New Zealand Institute of Patent Attorneys under Part 30
of the Patents Regulations 1954 of New Zealand:
(a) an examination on the subject of New Zealand law and practice relating to
patents and designs;
(b) an examination on the subject of New Zealand law and practice relating to
trade marks;
(c) an examination on the subject of foreign patent law;
(d) an examination on the subject of preparation of specifications for New
Zealand patents;
(e) an examination on the subject of patent attorney practice in New Zealand,
including the interpretation and criticism of patent specifications.
Note: Under subitem 82(2) of Schedule 4 to the Intellectual Property Laws Amendment Act
2015, an individual who passes these examinations must apply for registration as a
patent attorney under section 198 of the Patents Act 1990 within 6 months after the
completion of the last of the examinations.
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Schedule 1 to the Intellectual Property Legislation Amendment (Single Economic Market and Other
Measures) Regulation 2016 Part 3
Regulation 23.42
Patents Regulations 1991 193
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23.42 Continuation of certain disciplinary proceedings—individuals
(1) This regulation applies if:
(a) before the commencement day disciplinary proceedings had been
commenced against a registered patent attorney by the Professional
Standards Board for Patent and Trade Marks Attorneys under Part 8 of
Chapter 20 of the old regulations; and
(b) the proceedings had not been completed under the old regulations before
the commencement day.
(2) Despite the amendments and repeals made by Schedule 1 to the Intellectual
Property Legislation Amendment (Single Economic Market and Other Measures)
Regulation 2016, on and after the commencement day:
(a) Part 8 of Chapter 20, and Division 2 of Part 10 of Chapter 20, of the old
regulations continue to apply in relation to the proceedings; and
(b) the appointment of the person constituting the Patents and Trade Marks
Attorneys Disciplinary Tribunal conducting the proceedings is continued in
force for the purpose of completing the proceedings; and
(c) the Minister may, if necessary, appoint a person under regulation 20.63 or
20.64 of the old regulations in the circumstances mentioned in those
regulations for the purpose of completing the proceedings; and
(d) for the purposes of the proceedings, references in Part 8 of Chapter 20 of
the old regulations to the Professional Standards Board for Patent and
Trade Marks Attorneys are taken to be references to the Trans-Tasman IP
Attorneys Board.
23.43 Continuation of certain disciplinary proceedings—incorporated patent
attorneys
(1) This regulation applies if:
(a) before the commencement day disciplinary proceedings had been
commenced against an incorporated patent attorney by the Professional
Standards Board for Patent and Trade Marks Attorneys under Part 5 of
Chapter 20A of the old regulations; and
(b) the proceedings had not been completed under the old regulations before
the commencement day.
(2) Despite the amendments and repeals made by Schedule 1 to the Intellectual
Property Legislation Amendment (Single Economic Market and Other Measures)
Regulation 2016, on and after the commencement day:
(a) Division 2 of Part 10 of Chapter 20, and Part 5 of Chapter 20A, of the old
regulations continue to apply in relation to the proceedings; and
(b) the appointment of the person constituting the Patents and Trade Marks
Attorneys Disciplinary Tribunal conducting the proceedings is continued in
force for the purpose of completing the proceedings; and
Authorised Version F2017C00128 registered 24/02/2017
Chapter 23 Transitional and savings provisions
Part 3 Transitional provisions for Schedule 4 to the Intellectual Property Laws Amendment Act 2015
and Schedule 1 to the Intellectual Property Legislation Amendment (Single Economic Market and
Other Measures) Regulation 2016
Regulation 23.44
194 Patents Regulations 1991
Compilation No. 64 Compilation date: 24/2/17 Registered: 24/2/17
(c) the Minister may, if necessary, appoint a person under regulation 20.63 or
20.64 of the old regulations in the circumstances mentioned in those
regulations for the purpose of completing the proceedings; and
(d) for the purposes of the proceedings, references in Part 5 of Chapter 20A of
the old regulations to the Professional Standards Board for Patent and
Trade Marks Attorneys are taken to be references to the Trans-Tasman IP
Attorneys Board.
23.44 Termination of appointment of Patents and Trade Marks Attorneys
Disciplinary Tribunal upon completion of all proceedings
The Minister must, in writing, terminate the appointment of the person
constituting the Patents and Trade Marks Attorneys Disciplinary Tribunal
conducting proceedings mentioned in any of the following provisions as soon as
practicable after the Minister is satisfied that all such proceedings (including all
appeals) have been finalised:
(a) subregulation 23.42(1);
(b) subregulation 23.43(1);
(c) subregulation 22.16(1) of the Trade Marks Regulations 1995;
(d) subregulation 22.17(1) of the Trade Marks Regulations 1995.
23.45 Transitional—exemptions from patents knowledge requirements
(1) This regulation applies in relation to an applicant who, before 1 January 2018:
(a) has passed a course of study that has outcomes that are the same as, or
similar to, those of a knowledge requirement mentioned in Schedule 5 to
the old regulations; and
(b) has passed the course of study at a satisfactory level.
(2) Despite the amendments of Schedule 5 made by Schedule 1 to the Intellectual
Property Legislation Amendment (Single Economic Market and Other Measures)
Regulation 2016, Schedule 5 to the old regulations continues to apply for the
purpose of the Board making a decision to grant an exemption to the applicant
under regulation 20.9.
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