Australie

Statutory Rules 1991 No. 71 as amended

made under the

Patents Act 1990

This compilation was prepared on 1 August 2010 taking into account amendments up to SLI 2010 No. 181

This document has been split into two volumes Volume 1 contains Chapters 1 to 23 and Schedules 1, 1A and 2, and Volume 2 contains Schedules 2A to 8 and the Notes Each volume has its own Table of Contents

Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra

Contents

Chapter 1 Introductory

Chapter 2 Patent rights, ownership and validity

Part 2 Inventions that are micro-organisms

Chapter 5 Opposition

Part 2 Extension of pharmaceutical patents

Part 2 Convention applications

Chapter 9 Re-examination

Chapter 9A Examination of innovation patents

9A.1 Request for examination 101 9A.2 Examination of complete specification 101 9A.2A Results of documentary searches — innovation patent 102 9A.2B Prescribed documentary searches by or on behalf of a foreign patent office 103 9A.3 Conduct of examination 105 9A.4 Period for examination 106 9A.5 Validity of innovation patent 107

Chapter 10 Amendments

Chapter 13 Withdrawal and lapsing of applications and ceasing of patents

13.1 Publication of notice of withdrawal of application 124 13.1A Period in which standard patent applications may not be withdrawn 124

13.1B Period in which innovation patent applications may not be withdrawn 124

Chapter 17 The Crown

Part 2 Obtaining registration for first time

Part 1 Fees and costs

Part 2 Other matters

Chapter 23 Transitional and savings provisions

1.1 Name of Regulations [see Note 1]

These Regulations are the Patents Regulations 1991.

1.2 Commencement

These Regulations commence on 30 April 1991.

1.3 Interpretation

(1)

In these Regulations, unless the contrary intention appears: abstract means abstract of a complete specification. acceptance means:

(a)

in relation to a patent r equest and com plete specification relating to an applic ation for a standard patent — acceptance of the paten t request an d com plete specification under section 49 of the Act; and

(b)

in relation to a patent r equest and com plete specification relating to an application for an innovation patent — acceptance of the paten t request an d com plete specification under section 52 of the Act.

approved digital library means a library or oth er facility that the Comm issioner specifies as a digital library, for this definition, in the Official Journal.

Example

The library ad ministered by th e In ternational Bureau of th e World Intellectual Pro perty Org anization, kno wn as th e “Dig ital Access Serv ice for Priority Documents” or “DAS”.

basic documents m eans docum ents filed in a Convention country in respect of a basic application. certificate of verification means a statement:

(a) that a docu ment to which the sta tement relate s is a true and com plete trans lation of the acco mpanying docum ent to the best of the knowledge of the person who signs the

statement; and

(b) that is dated and signed. competent authority, in relation to a Convention country, means a person who, under the la ws of the country or the

arrangements in place in the c ountry, is authoris ed to certify copies of specifications of patents for the country. Disciplinary Tribunal m eans the Patent and Trade Marks

Attorneys Disciplinary Tribuna l established under regulation

20.41.

former attorneys Regulations means the follow ing Regulations:

(a)

the Patent Attorneys Regul ations as in force immediately before the commencing day under the 1952 Act;

(b)

the Patents Regulations 1991 as in force imm ediately

before 1 July 2008.

former patents Regulations means the Patents Regulation s in

force immediately before the comm encing day under the 1952

Act.

International Bureau m eans the I nternational Bureau of the World Intellectual Property Organization. the Act means the Patents Act 1990. the Tribunal means the Administrative Appeals Tribunal.

(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 Comm issioner or the Pate nt Office inclu des a reference to the filing of the document.

(3)

A reference in thes e Regulations to a docum ent that is op en to public inspection is a reference to a docum ent that m ay be inspected by the public at the Patent Office.

(4)

Subject to subregulation (5), if the Commissioner or the Patent Office gives a docum ent to a pe rson, the document is taken to have been given to the pe rson on the day on which the document is dated by the Comm issioner or the Office, unless the contrary intention appears.

(5)

If:

(a)

the Commissioner or the Patent Office m akes a document available electronically for a person; and

(b)

sends a notice to the person telling them that the document

is available for them to collect electronically; the document is taken to have been given to the person on the day on which the notice is dated by Commi ssioner or the Office, unless the contrary intention appears.

(6)

A requirement in th ese Regulations to g ive information to the Commissioner or to another pers on (whether the expression ‘give’, ‘tell’, ‘inform ’ or another expression is used) is a requirement to give the info rmation 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 English text of treaties

(1)

The English text of the Budapest Treaty as in force for Australia on 1 October 2002 is th e text set out in Schedules 1 (the Treaty) and 1A (the Regulations under the Treaty).

(2)

The Englis h text of the PCT as in f orce for Australia on 1 July 201 0 is the tex t se t out in Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty).

Note This regulation is made for the purposes of subsection 228 (5) of the Act.

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 rela tion to the s pecification 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 m entioned in subregulation (3); or

(ii)

for a complete specif ication 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 spe cification relates and e nds 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 imm ediately 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) — i mmediately 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 m atter m entioned in paragraph 6 (c) of the Act has been included in the specif ication, the applicant or patentee is taken to consent to a m icro-organism being obtained by a person to whom the Comm issioner has gr anted the certification und er regulation 3.25 in respect of the deposit:

(a)

after the period m entioned in subregulation (1) for the specification to which the application relates; and

(b)

from the prescrib ed depositary institution with which the micro-organism is deposited.

1.6 Disclosure in basic applications — general

(1)

For section 8 of the Act:

(a)

the prescribed period for docum ents to which paragraph 8 (a) of the Act applies is 3 m onths from the date on which the Comm issioner requests the docum ent; and

(b)

the prescribed period for docum ents to which paragraph 8 (b) of the Act a pplies is 3 m onths from the date on which the Comm issioner requests the translation of a document.

Note A translation of a document into English that is filed must have with it a related certificate of verification (see regulation 22.15).

(2) A m atter th at was c laimed or disclosed in a disclaim er or acknowledgement of prior art in a basic application or in a specification or other docum ent filed in respect of, and at the same tim e as, the basic applic ation is not taken to have been disclosed.

1.6A Disclosure in basic applications — use of approved digital library

(1)

For section 8 of the Ac t, a specification or other docum ent is taken to have been filed in respect of, and at the same time as, a basic application if:

(a)

the Comm issioner is satisf ied that a cop y of th e specification or docum ent has been m ade available for inspection by the Comm issioner in an approved digital library; and

(b)

the specification or do cument was m ade available within the period mentioned in subregulation 1.6 (1).

(2)

However, if the Commissioner is satisfied that the specification or other document:

(a)

was made available for inspection by the Commissioner in the approved digital library within the period mentioned in subregulation 1.6 (1); but

(b)

is no longer available for inspection; the specification or other docum ent is taken to have been filed in respect of, and at the same time as, the basic application only if the specif ication or other doc ument is again m ade available for inspec tion by the Comm issioner in the approved digital library, or given to the Comm issioner, no later than 2 m onths after the day on which the Commissioner notifies the applicant or patentee that the Comm issioner has not been able to inspect

the specification or other doc ument in the approved digital library.

1.7 Verification of translations of international applications

For the purposes of subsection 10 (2) of the Act, the translation of an inter national ap plication th at was not f iled in the receiving O ffice in English m ust have with it a rela ted certificate of verification.

1.8 Completion of applications

(1)

A person who m akes an app lication or request using an application form must:

(a)

comply with any directions given on the form; and

(b)

provide inform ation for each p art of the for m that describes the information as being mandatory.

(2)

A person who m akes an app lication 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 inform ation for each part of the procedure that describes the information as being mandatory.

Example

An online application facility.

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:

(a)

file with the application a notice stating the facts on which the application is based; and

(b)

serve a copy of the application and notice on the other patentee or patentees.

2.2 Publication or use: prescribed circumstances

(1) In this Regulation: Paris Convention m eans the P aris Convention for the

Protection of Industrial Property of 20 March 1883, as in force for Australia on the commencing day. recognised exhibition means:

(a)

an official or officially recognised international exhibition within the m eaning of Article 11 of the Paris Convention or Artic le 1 of the Conventi on relating to International Exhibitions done at Paris on 22 N ovember 1928, as in force for Australia on the commencing day; or

(b)

an international ex hibition recognised by the Commissioner by a notic e published in the Official Journal before the beginning of the exhibition.

(1A) For paragraph 24 (1) (a) of the Act, the circum stance that there was a publication or use of the invention within 12 m onths before the filing date of th e com plete application, is a prescribed circumstance.

(2)

For paragra ph 24 (1) (a) of the Act the follo wing are also prescribed circumstances:

(a)

the showing or use of the invention at a recognised exhibition;

(b)

the publication of the invention during a recognised exhibition at which the invention was shown or used;

(c)

the publication of the invention in a paper written by the inventor and:

(i)

read before a learned society; or

(ii)

published with th e in ventor’s consent by or on behalf of a learned society; or

(d)

the working in public of th e invention within the period of 12 m onths before the priority date of a claim for the invention:

(i)

for the purposes of reasonable trial; and

(ii)

if, because of the nat ure of the invention, it is reasonably necessary for the working to be in public.

(3)

Paragraphs (2) (a) and (b) are prescribed circumstances only if:

(a)

at the tim e the application is m ade for a patent for the invention, the applicant has fi led a notice stating that the invention has been exhibited; and

(b)

the applicant has filed a statement issued by the authority responsible for the exhibition in which:

(i)

the invention and the exhibition are identified; and

(ii)

the date of the opening of the exhibition is given; and

(iii) if the f irst disclosu re o f the invention during the exhibition did not take place on that date — the date of that disclosure.

(4)

For paragraph (3) (b), the statement must be filed:

(a)

for an application for a standard patent — before the complete specification in respect of the application is open to public inspection; or

(b)

for an application for an innovation patent — within 6 months from the filing date of the complete specification in respect of the application.

2.3 Publication or use: prescribed periods

(1A) For information of the kind referred to in paragraph 24 (1) (a) of the Act, if the app licant relies on th e c ircumstance in subregulation 2.2 (1A), the prescr ibed period is the period of 12 m onths after the inform ation was first m ade publicly available.

(1)

For information of the kind referred to in paragraph 24 (1) (a) of the Act, if the applican t re lies on a circum stance in subregulation 2.2 (2), the prescribed period is:

(a)

in the case of a circu mstance mentioned in paragraph

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 m ain invention and ends immediately before the priority date of the relevant claim of the specification of the patent of addition.

(2)

In subregu lation (1 ), a referenc e to the c laim 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 claim s defining the m ain invention — the claim that ha s the earlier or ea rliest priority date.

2.5 Prescribed period: assertion that invention is not a patentable invention

For subsection 27 (1) of the Ac t, th e presc ribed period is the period:

(a)

beginning immediately after the complete specification filed in r elation to the applic ation f or a s tandard pa tent becomes open to public inspection; and

(b)

ending 3 months after th e date of publication in the Official Journal of the notice of acceptan ce 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 com plete specification for the patent beco mes open to public inspection to immediately before the Comm issioner decides to certify the patent.

2.7 Documents to accompany notice of assertion of invalidity

Notice of an assertion under s ubsection 27 (1) or 28 (1) of the Act must, if the assertion is based on a document, have with it:

(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 a nd place of publication of the document.

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.

3.2B Specifications: formalities check for innovation patents

(1)

For section 52 of the Act, a complete app lication for an innovation patent pass es th e form alities ch eck 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

Regulation 3.2B

(2)

If the app lication does not meet a requirem ent m entioned in paragraph (1) (a), (b), (c), (d), (e), (f) or (h), the Commissioner must direct the app licant to do any thing necess ary to ensu re that the application meets the requirement.

(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 m eet the requirement mentioned in paragraph (1) (g), the Commissioner m ust 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 m onths from the date of the direction, the application lapses.

3.3 Abstracts

(1)

An abstract must consist of:

(a)

a summ ary of the d isclosure a s conta ined in the description, the claims and any drawings, being a summary:

(i)

that indicates the t echnical f ield to which the invention pertains; and

(ii)

that is dra fted in a way that a llows the clea r 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 chem ical formula that, among all the formulas contained in the sp ecification, best characterises the invention.

(2)

An abstract m ust be as concise as the disclosure perm its, preferably 50 to 150 words.

(3)

An abstract must not co ntain statements on the alleg ed merits or value of the claim ed inve ntion or on its speculative application.

(4)

Each m ain technical featur e m entioned in th e abstract and illustrated by a drawing in the spe cification must be f ollowed 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 a n opinion on whether there is a need to con sult the spe cification itself f or those purposes.

Regulation 3.4

(6)

An abstract is not taken into account in construing the nature of the inven tion that is the subject of the specif ication to whic h the abstract relates.

(7)

Information in an abstract f iled with the com plete application may be taken into account in determ ining, for subsection 102 (1) of the Act, whether a matter was in substance disclosed in the specification as filed.

3.4 Substitute abstracts

(1)

If a filed abstract is not in accordance with these Regulations, the Comm issioner m ay prepare a draft of a new abstract in substitution for the filed abstract.

(2)

A copy of the draft of a new abstract m ust be given to the applicant who may give the Comm issioner written comments on the draft within 1 m onth of th e 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 Comm issioner prepares a new abstract, the new abstract is taken to be the abstrac t of the specif ication to which it relates.

(5)

If an applicant who files a complete specification does not file with it an a bstract, th e Comm issioner, within 1 m onth of the date of filing of the com plete specification, m ay 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.

Regulation 3.5

3.5 Filing date

(1)

Subject to this regulation, the filing date of a patent application is the date on which the following information is filed:

(a)

information in English that indicates tha t what is f iled is intended to be an application for a patent;

(b)

information that a llows the identity of the applicant to be established or allows th e 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

(b)

may be a drawing; and

(c)

may be a reference, in E nglish, to an ear lier pa tent application filed in Australia or in a Convention country.

(3)

For paragra ph (2) (c), the ear lier 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 applica tion, the Comm issioner 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 applic ant to f ile the addition al in formation required.

(5)

If an applicant to whom a notice under subregulation (4) has been given does not file the a dditional inf ormation within 2 months from the date of the noti ce, the application is taken not to have been filed.

(6)

Subregulation (7) app lies if an app licant 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 f iling da te of the pa tent application is the da te o n which the additional inf ormation is filed.

Regulation 3.5A

3.5A Filing date: incomplete specifications

(1)

This regula tion applie s if the inf ormation m entioned in subregulation 3.5 (1) has been fi led in respect of a patent application but a part of the patent specification is missing.

(2)

If the Comm issioner notices that a part of the specification is missing, the Comm issioner m ust gi ve the applicant notice in writing:

(a)

telling the applic ant th at a p art o f 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 und er subregu lation (4 ), the applicant:

(a)

files the missing part; or

(b)

if the applicant claim s priority from an earlier basic application or associated provisional application — files:

(i)

the missing part; and

(ii)

a copy of t he earlier application that contains, and indicates the location of, the missing part; and

(iii) if the e arlier app lication is no t in English — a translation of the application in to English tog ether with a related certificate of verification.

(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 paragrap h (3) (a) a pplies — the date on which the missing part is filed; and

(b)

if paragraph (3) (b) app lies — the date that would have been the filing date if the m issing part had not been incorporated.

3.5B Filing of documents outside business hours

The Patent Office and each sub-office of the Patent Office may provide facilities for the filing of documents when the Office or sub-office is not open to the public for business.

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 m aking 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 3 6 (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.

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 appli cation of the kind described in section 33 of the Act — within 3 months of the decision of the Comm issioner referred to in paragraph 33 (1) (c),

(2)

(c), (3) (c) or (4) (b) of the Act, as the case requires; or

Regulation 3.12

(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 appli cation of the kind described in section 35 of the Act — within 3 months of the declaration of the Comm issioner 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 st andard patent — the period from the date of f iling of the com plete applica tion until th e earlier of:

(i)

the end of 12 months from the f iling date of the complete application; and

(ii)

the day th at is 3 w eeks 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.

3.12 Priority dates generally

(1)

Subject to regulations 3.13 a nd 3.14 and subregulation (2), the priority date of a claim of a sp ecification is the earliest of the following dates:

(a)

the date of filing of the specification;

3.13 Priority dates: certain persons and applications

(1)

This regulation applies if, under subsection 36 (1) of the Act:

(a)

the Comm issioner declares a p erson to be an elig ible person; and

(b)

the person m akes a complete application under section 29 of the Act.

(2)

The prior ity date of a claim of the specif ication in respec t of that application, being a claim that is fairly based on m atter disclosed in the specification referred to in paragraph 36 (1) (c) of the Act and referred to in the declaration, is:

(a)

if that spec ification is a com plete specification — th e priority date of the claim or the date that would have been the priority date of the claim if the claim had been a c laim of the specification; and

(b)

if that spec ification is a provisional specification — the date of filing of the provisional specification.

3.14 Priority dates: certain amended claims

If subsection 114 (1) 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 89 (4) or

(5)

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 statem ent of proposed am endments that re sulted in the disclosure referred to in subsection 114 (1) of the Act.

Regulation 3.15

3.15 Prescribed period and form of request for examination

(1)

For the purposes of subsectio n 44 (1) of the Ac t, the period of 5 years f rom the f iling date of the com plete applic ation is prescribed.

(2)

For the purposes of subsection 44 (1) of the Act, a request for an examination of a patent requ est and com plete 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 Co mmissioner reas onably 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 reasonabl y considers it to be in the public interest to give the direction;

(c)

that the Co mmissioner reas onably considers it expedient to give the direction, having regard to the examination of another application f or 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 6 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.

3.17 Requirement for Commissioner to direct or expedite examination

(1)

For the purposes of subsection 44 (3) of the Act, a person m ay, in the approved for m, r equest the Comm issioner to direct an applicant for a standard patent to ask for an examination of the patent request and com plete specification under subsection 44

(2)

of the Act.

Regulation 3.17A

(2)

If an app licant has ask ed fo r an exam ination of the patent request and com plete specifi cation to be expedited, the Commissioner m ay do so if he or s he is reasonably satisfied that:

(a)

it is in the public interest; or

(b)

there are special circumstances that make it desirable.

3.17A Results of documentary searches — foreign patent office

(1)

For subsec tion 45 (3) of the Act, an app licant inf orms the Commissioner of the results of documentary searches by o r on behalf of a foreign patent o ffice, other than the Europ ean Patent Office or the UK Patent Office, by providing:

(a)

a list of documents, cited by the foreign patent office; or

(b)

a copy of the search repor t issued by the foreign patent office.

(2)

For paragraph (1) (a), it is not nece ssary to refer in a lis t to a document that has been included in a list or report in relation to the application, previously pr ovided to the Commissioner for the Act or these Regulations.

(3)

For subsection 45 (3) of the Act, an app licant inf orms the Commissioner of the results of documentary searches by o r on behalf of the European Patent Office or the UK Patent Office:

(a)

by providing:

(i)

a list of the documents cited by the patent office; and

(ii)

for a list provided on or after 26 August 2003 — the symbols us ed by the patent office to indicate the relevance of the documents; or

(b)

by providing a copy of th e sear ch r eport i ssued by t he patent office.

(4)

The applicant must inform the Commissioner of the results of a documentary search by the latest of:

(a)

the day 6 months after the search is completed; and

(b)

the day 6 m onths after the ap plicant ask s for an examination under section 44 of the Act; and

3.17B Prescribed documentary searches by or on behalf of a foreign patent office

(1)

For paragraph 45 (3) (a) of the Act, the following docum entary searches by or on behalf of a foreign patent office are prescribed (so that inform ation need not be given to the Commissioner):

(a)

for any application — a search that produces a nil result;

Regulation 3.17B

(b)

if the application is a PC T application — a s earch tha t results in an Inte rnational Sea rch Report and any additional search conducte d during the international preliminary examination;

(c)

if the applic ation (application A) is an app lication which the applicant is perm itted to make under subsection 79B (1) of the Act (a divisional application):

(i)

a search, the result of which was disclosed under subsection 45 (3) of the Act in relation to the first-mentioned applicati on for application A under subsection 79B (1) of the Act (application B); and

(ii)

if application B is also a divisional application — a search, the result of which was disclosed under subsection 45 (3) of the Act in relation to the first-mentioned application under subsection 79B (1) of the Act for application B.

Note Under subsection 79B (1) of the Act, if a complete patent application for a patent is made, the applicant may make a further complete application for a patent for an invention:

(a)

disclosed in t he sp ecification filed i n resp ect of th e first-mentioned application; and

(b)

where t he fi rst-mentioned a pplication i s f or a st andard patent a nd at least 3 months have el apsed si nce t he p ublication of a not ice of acceptance of the relevant patent request and specifi cation in the Official Journal — falling within t he sco pe of th e cl aims o f th e accepted specification.

In paragraph (c), app lication A is th e ‘further co mplete ap plication’mentioned in subsection 79B (1) of the Act. It is described in paragraph (c)as a ‘d ivisional ap plication’. App lication B is th e ‘first-m entioned application’ i n rel ation t o a pplication A. If res ults of sea rches ha ve been disclosed in th e co urse of application B, th e results do not need to b edisclosed again in the course of application A.

However, it is possible under subsection 79B (1) of the Act that applicationB may also be a di visional application in relation to another application. In that case, there will also be a first-mentioned application for applicationB.If results of searc hes ha ve been disclosed i n t he co urse of t hat first-mentioned application, the results do not need to be disclosed again inthe course of application A.

(d) if the application is an application for a patent of addition under Chapter 7 of the Act — a search, the result of which was disclosed under subsecti on 45 (3) of the Act in relation to the application for the main invention;

3.18 Report of Commissioner: examination

(2)

For the purposes of paragraph 45 (1) (d) or 48 (1) (c) of the Act, the following matters are prescribed:

(a)

whether, to the best of the knowledge of the Commissioner, the requ est and sp ecification comply with the following provisions of the Act:

(i)

section 15 (‘who may be granted a patent?’);

(ii)

section 29 (‘application for patent’);

(iii) section 38 (‘time for making complete application’);

(iv)

section 79B (divisional applications prior to grant of patent);

(v)

section 81 (‘grant of patent of addition’);

(vi)

section 94 (‘Convention applicants m ay m ake Convention applications’);

(vii) section 95 (‘m anner of m aking Conve ntion applications’);

(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’);

(d)

whether the invention is not a patentable invention because of subsection 18 (2) of the Act (‘paten table inventions’);

(e)

whether a patent cann ot be granted on the application because of subsection 6 4 (2) of the Act (‘gran t: multiple applications’);

(f)

whether the applicant is entitled to ask that any action be taken, or that he or she be allowed to take any action, because of subsection 89 (3 ) of the Act (‘m odified application of Act’).

Regulation 3.19

(3)

For the purposes of paragra ph 48 (1) (c ) of the Act, the following matters are prescribed:

(a)

in the case of an inven tion to which section 6 of the Act applies — whether, to the be st of the knowledge of the Commissioner, th e requ irements of section 6 of the Act are satisfied;

(b)

whether the specification under m odified exam ination is the sam e as the sp ecification (th e foreign specification) relating to the pa tent granted in the presc ribed f oreign country, apart from:

(i)

matters of form; or

(ii)

the omission of a claim that is m ade in the foreign specification; or

(iii) an amendment of a claim that is consequential on an omission referred to in subparagraph (ii); or

(iv)

an obvious mistake in the foreign specification; or

(v)

if the m icro-organism deposited in respec t of the foreign specification is th e same micro-organism as that depos ited in respe ct of the specif ication, a difference relating to matter referred to in paragraph 6 (c) of the Act that is n ecessary for the application to comply with the deposit requirements.

(4)

If a notice is filed under subsection 27 (1) of the Act before the patent request and com plete sp ecification to which the no tice relates have been accepted under subsection 49 (1) of the A ct, in exam ining the patent request and com plete specification under section 45 or 48 of the Act, the Comm issioner must consider a matter stated in the notice that addresses a claim that the invention concerned does not com ply with paragraph 18 (1) (b) of the Act.

3.19 Conduct of examination: standard patents

(1) If the Comm issioner reasonably believes that there a re lawful grounds of objection to the pa tent request or complete specification, he or she must state the grounds of objection in reporting on an examination.

Regulation 3.20

(2)

The applicant may contest th e objection in writing or ask for leave to amend the patent reques t or complete specification in accordance with Chapter 10.

(3)

If the applicant asks for leave to am end a patent reques t or complete specification in response to, or in anticipation of, a report under section 45 or 48 of the Act, the Comm issioner must exam ine the request and specification and report as if each proposed amendment had been made.

(4)

If the app licant contests the objection, the Comm issioner must examine the reques t an d specifi cation and take note of the matters raised by the applicant.

3.20 Requests for deferment of examination or modified examination

(1) In this regulation:

prescribed foreign country m eans a country prescribed in regulation 3.21.

(2)

For the purposes of paragra ph 46 (1) (b ) of the Act, the following applications are prescribed:

(a)

a basic application in relation to the complete application;

(b)

an application for a patent that claim s the priority of the complete applic ation or a p rovisional applic ation associated with th e complete application under section 38 of the Act;

(c)

an application for a patent m ade in a prescribed foreign country that claims the priority of the application that is a basic application in relation to that complete application.

(3)

For the purposes of paragr aph 47 (1) (b) of the Act, an application prescribed for the purposes of paragraph 46 (1) (b) of the Act in relation to which a patent in English has been granted in a prescribed foreign country is prescribed.

(4)

For the purposes of paragra ph 46 (1) (d ) of the Act, the prescribed ground is that the Comm issioner reasonably considers it expedient to give the direction, having regard to the progres s m ade in the exam ination of applications filed before the filing date of the application concerned.

Regulation 3.21

(5)

For the purposes of subsecti on 46 (2) and subs ection 47 (1) of the Act, a request for each action must be in the approved form.

(6)

The applicant m ust, on request by the Commissioner, file a copy of the specification relating to the patent referred to in paragraph 47 (1) (b) of the Act that is:

(a)

certified by the com petent autho rity of the prescribe d foreign country by which the patent was granted; or

(b)

otherwise v erified to the reasonable satisfaction of the

Commissioner; before acceptance, unless the applicant m akes a request un der subsection 47 (2) of the Act.

3.21 Prescribed foreign countries: requests for deferment of examination and modified examination

For the purposes of paragraphs 46 (1) (b) and 47 (1) (b) of the Act, the following countries are prescribed:

(a)

a country that is a signato ry to the treaty done at Munich on 5 October 1973 entitled the Convention on the Grant of European Patents, as in force from time to time;

(b)

Canada;

(c)

New Zealand (excluding the Cook Islands, Niue and Tokelau);

(d)

United States of America (in cluding all territories and possessions and the Commonwealth of Puerto Rico).

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 connec tion with the patent application or patent;

(c)

a document in the Comm issioner’s possession that relates to the patent application or the application of the patent;

Regulation 3.22

(d) any inf ormation in the Commissioner’s possession that relates to a docum ent m entioned in paragraph (a), (b) or (c);

whether or not the application is open for public inspection.

(2) However, if the patent application, document or information is not open for public inspection, the Comm issioner m ust not disclose the application, docum ent or inform ation without the consent of the applicant.

Note Section 194 of th e Act also au thorises th e Co mmissioner to g ive a person cert ain i nformation abo ut pat ents, pat ent ap plications an d ot her documents in certain circumstances.

(3) The Commissioner m ay disclo se the pa tent applica tion, document or information by depositing it in an approved digital library or by any other means.

Regulation 3.23

Part 2 Inventions that are micro-organisms

3.23 Documents in accepted applications and patents involving micro-organisms

(1)

Where a m icro-organism is dep osited with a prescribed depositary institution for the purposes of section 41 of the Act, the f ollowing docum ents m ust be f iled in rela tion 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 depos it is an o riginal deposit within the m eaning of Rule 7.3 of the Budapest Tr eaty or a new deposit within the m eaning 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 m icro-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 trans lation of the rece ipt into English and a related certificate of verification.

(2)

The docum ents referred to in subregulation (1) m ust 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 re lation to a pa tent application or patent in respec t of a micro-organism, the m icro-organism is deposited with a prescribed depositary institution, the Commissioner:

(a)

on the order of a court in Australia, must; or

Regulation 3.25

(b)

on his or her own m otion or on application in w riting by

another person, may; for the pu rposes of pro ceedings 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 sam ple of that micro-organism; and

(d)

in re lation to that m icro-organism, m ake the declaration referred to in that Rule.

(2)

Before m aking a request, the Commissioner m ust give the applicant o r patentee concer ned, and any other person who apparently has an intere st in th e request, an opp ortunity to be heard, unless the request is made on the order of a court.

(3)

If the Comm issioner decides to make, or to refuse to m ake, a request, he or she must info rm the applic ant or pate ntee concerned, and any other person who apparently has an interest in the request, of the decision, and of the re asons for the decision, by notice in w riting as soon as practicable after the decision.

(4)

The Comm issioner m ay m ake a request referred to in Rule

10.2 (a) (iii) of the Budapest T reaty for a statement concerning the viability of a micro-o rganism if a sample of the micro-organism has been gi ven to the Commissioner in accordance with a request under subregulation (1).

3.25 Request for Commissioner’s certificate authorising release of sample of a micro-organism

(1) If a m icro-organism is depos ited with a prescribed depositary institution, a person may, in the approved form, request the Commissioner to gran t the cer tification ref erred to in R ule

3.26 Breach of undertakings given in respect of micro-organisms

(1)

Where the m icro-organism is de posited with a prescribed depositary institution, proceedings for breach of an undertaking referred to in paragraph 3.25 (4 ) (c) m ay be instituted in a prescribed court by a person who is:

(a)

if a patent has not b een granted on that patent application — the applicant; or

(b)

if:

(i)

a patent has been grante d 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.

(3)

A patentee joined as a defendant in the proceedings by an exclusive licensee is n ot liable for costs un less the pa tentee enters an appearance and takes part in the proceedings.

(4)

It is a defence in proceedings for breach of the undertak ing given in respect of a m icro-organism to which a specification filed in res pect of a patent app lication or patent relates, that when the m atters com plained of to ok place th e specification did not comply with the requirem ents referred to in paragraph 6 (c) or (d) of the Act.

Regulation 3.28

(5)

A defendant m ay not plea d a defence referred to in subregulation (4) unless:

(a)

the defendant, before becom ing a defendant in the proceedings, notified th e Comm issioner under paragraph

3.29 (1) of the deposit requirem ent that has ceased to be satisfied; and

(b) the applicant for the patent or the patentee fails to take the steps referred to in paragraph 41 (4) (b) of the Act within the appropriate period prescribed by subregulation 3.30 (1) for the purposes of that paragraph.

3.27 Procedure in proceedings for breach of an undertaking

In proceedings referred to in subregu lation 3.26 (1) for breach of an undertaking:

(a)

the plaintiff m ust deliver particulars of the breach es 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 3.2 6 (1), the court may:

(a)

make an order for inspection; and

(b)

impose term s and give dire ctions with re spect to the inspection.

(2)

In proceedings referred to in subregulation 3.2 6 (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

Regulation 3.29

(d)

an order with respect to any security given under paragraph 3.25 (2) (b); or

(e)

an order on such term s as it th inks f it to deliv er to such person as it thinks fit the m icro-organism or any substance or thing derived directly or indirectly f rom that micro-organism as a result of the breach of the undertaking, including:

(i)

any products m ade by us ing that m icro-organism; and

(ii)

any other m icro-organisms derived from that micro-organism; and

(iii) any products m ade by using those other micro-organisms.

3.29 Notification that a deposit requirement has ceased to be satisfied

(1)

If a deposit requirem ent ceases to be satisfied in relation to a micro-organism to which a specif ication f iled in respe ct of a patent application or patent relates, a person other than the applicant o r paten tee m ay, after the specificatio n has become open to public inspection, notify the Commi ssioner 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 a s practicable after receiving a notice under subregulation (1), the Comm issioner m ust 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 f acts that m ay es tablish that a requirement referred to in that subregulation has ceased to be satisfied, th e Comm issioner m ust cause a notice setting out those facts to be given to the applicant or patentee.

(4)

As soon as practicable af ter the Comm issioner 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.

Regulation 3.30

(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 m ay file a written reply setting out the facts relied upon to establis h that the requirem ent referred to in subregulation (1) is satisfied.

(7)

If a reply filed under subregulation (6) is in answer to a notification under subregula tion (1) by a person, the Commissioner must, as soon as pr acticable 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 m ust be published in the Official Journal.

(9)

The terms of a reply filed unde r 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 applic ation or patent relating to a micro-organism:

(a)

that m icro-organism is deposited with a prescribed depositary institution; and

(b)

a requirement referred to in parag raph 6 (c) or (d) of the Act ceases to be satisfied in relation to the micro-organism;

the prescrib ed period is from the day when th e requ irement 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 m aking of a new deposit of a sample of the micro-organism:

(i)

if the Comm issioner has given under subregulation

3.29 (2) the applicant or pa tentee a copy of a notice of that requirem ent — the period of 3 m onths a fter the copy was given; or

Regulation 3.30

(ii) if the Comm issioner has given under subregulation

3.29 (3) to the applicant or patentee a notice of the requirement — the period of 3 months after the notice was given; or

(iii) if under Article 4 (1) of the Budapest Treaty the authority has notified the depositor of its inability to furnish samples of the m icro-organism and the Commissioner has not, before the notification, given to the applicant or pate ntee under subregulation

3.29 (2) or (3) a copy of the notice, or the notice, as the case may be, of the requirement — the period of 3 months after the depositor received that notification under Article 4 (1) (d) of the Treaty; or

(iv)

in any other case — the day when t hat 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 Comm issioner has given the applicant or patentee a copy of a noti ce under subregulation 3.29

(2) or a notice under subre gulation 3.29 (3), and the applicant or patentee has not asked for leave to amend the specification within the perio d 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 Tr eaty of its inab ility 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 app licant or pa tentee has not asked for leave to am end the specification within the period of 3 m onths after th e deposito r received the notification under Article 4 (1) (d) of the Treaty.

Regulation 3.31

3.31 Application for declaration that deposit requirements are not satisfied

(1)

An application under section 42 of the Act fo r a declaration that a specification does not comply with section 40 of the Act unless the deposit requirem ents are sa tisfied in r elation to a micro-organism, must:

(a)

be made in the approved for m 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.

(3)

If the Comm issioner on his or her own m otion proposes to declare und er sec tion 4 2 of the Act that the s pecification in respect of a patent application or patent does not com ply with the requ irements of section 40 of the Act un less the dep osit requirements are satisfied in relation to a micro-organism, he or she m ust give to the ap plicant or p atentee a statem ent 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 m onths, give to th e cour t 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 re ply 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 i s given to the Comm issioner under subsection 42 (6) of the Act; or

Regulation 3.31

(b) the m aking of a decisi on of the Comm issioner under

subsection 42 (1) of the Act; notice of the m aking of the decl aration or decision m ust be published in the Official Journal.

(6) The term s of a declarati on or decision referred to in subregulation (5) need not be published, but the declaration or decision must be open to public inspection.

Chapter 4 Publication

5.1 Application of this Chapter

This Chapter applies if a notice of opposition has been filed for the purposes of:

(a)

the following provisions of the Act:

(i)

section 59 (‘opposition to grant of standard patent’);

(ii)

section 75 (opposition to grant of extension);

(iii) section 101M (opposition to innovation patent);

(iv)

subsection 104 (4) (amendm ents by applicants and patentees), unless the request for leave to am end is in response to a direction of the Comm issioner under section 106 (am endments directed by Commissioner: patents) or section 107 (amendments directed by Commissioner: applications for standard patents);

(v)

subsection 223 (6) (extensions of time); or

(b)

subregulation 22.21 (4) (‘pro tection or com pensation of certain pe rsons’) o r 10. 7 (4) (‘c orrection of Re gister or patent’).

5.2 Interpretation

In this Chapter: applicant means:

(a)

in relation to an opposition under section 101M of the Act — the patentee of the innovation patent; and

(b)

in relation to another opposition — a person who has filed an application or request in respect of which another person has filed a notice of opposition.

opponent means a person who has filed a notice of opposition. party means applicant or opponent.

5.3 Filing of opposition (except under section 101M of the Act)

(1)

The Minister or other person who intends to oppose the grant of a patent under sec tion 59 of the Act m ust file a notice of opposition in the approved form within 3 months of publication in the Official Journal of the notice of acceptance under section 49 of the Act.

(2)

The Minister or other person who intends to oppose the grant of an extension of the term of a standard patent under section 75 of the Act m ust file a notic e of oppositio n in the app roved form within 3 m onths of publication in the Official Journal of the notice of acceptance under section 74 of the Act.

(3)

The Minister or other person who intends to oppose allow ing an amendment under subs ection 104 (4) of th e Act m ust file a notice of opposition in the approve d form within 3 m onths of publication in the Official Journal of a notice referred to in subregulation 10.5 (2).

(4)

A person must not oppose the allowance of a proposed amendment of a com plete specification, except on the grounds that the am endment is not a llowable under section 102 of the Act.

(5)

A person who intends to oppose the grant of an application for an extension of tim e under subs ection 223 (6) of the Act m ust file a notice of opposition in the approved form within 1 month of the advertisement of the application in the Official Journal.

(5A) A person who intends to oppose a request for am endment of the Register or a patent under subregulation 10.7 (4) must file a notice of opposition in the approve d form within 3 m onths of the publication in the Official Journal of the no tice referred to in subregulation 10.7 (3).

(6)

A person:

(a)

on whom a copy of an application for a licence in accordance with subregulation 22.21 (3) has b een served; and

(b)

who intends to oppose the grant of the licence; must file a notice of opposition to the grant of the licence in the

approved form within 1 month from the day on which the copy was served on him or her.

(7) As soon as practicable after a notice of opposition is filed, the opponent must serve a copy of the notice on the applicant.

5.3AA Filing of opposition under section 101M of Act

(1)

The Minister or other person who intends to oppose an innovation patent under section 10 1M of the Act m ust file a notice of opposition in the approved form.

(2)

The notice may be filed at a ny time after the innovation patent is certified.

(3)

The opponent m ust file with the notice of opposition a statement that sets ou t the groun ds of opposition and the particulars relating to each ground.

(4)

Within 7 days of f iling the notic e and the statem ent, the opponent must serve a copy of th e notice and statem ent on the applicant.

5.3A Amendment of notice of opposition: correction of error or mistake

(1)

An oppone nt m ay request the Commissioner in writing to amend a notice of opposition for th e purpose of correcting a clerical error or obvious mistake.

(2)

The Commissioner may grant the request on the term s (if any) that the Commissioner specifies by notice to the opponent making the request.

(3)

The Commi ssioner m ust give the parties an opportunity to make representations concerning the proposed amendment.

(4)

If the Commissioner allows an amendment, he or she must give the applicant a copy of the notice as amended.

5.3B Amendment of notice of opposition: change of opponent

(1)

This regulation applies if a person files a notice of opposition and the right or interest on whic h he or she relied to file the notice is subsequently vest ed in another person (the new opponent).

(2)

The new opponent m ay give to the Comm issioner notice, in writing, that the right or interest is vested in him or her a nd request the Comm issioner, in wr iting, to am end the notice of opposition to record his or her name.

(3)

The Commissioner may grant the request on the term s (if any) that th e Commissioner specif ies by written no tice to th e n ew opponent.

(4)

The Comm issioner m ust give to the parties to the opposition the opportunity to m ake representations concerning the proposed amendment.

(5)

If the Commissioner allows the amendment:

(a)

he or she m ust give the applicant a copy of the notice of opposition as amended; and

(b)

the opposition is to p roceed in th e nam e of the n ew opponent.

Part 1 Patents generally

Part 2 Extension of pharmaceutical patents

6A.1 Divisional applications: standard patents

For section 79B of the Act, a divisional application m ust be made:

(a)

under section 29 of the Act; and

(b)

before the date of th e grant of a patent on the first-mentioned application in section 79B of the Act.

6A.2 Divisional applications: innovation patents

(1)

For subsection 79C (1) of the Act, a divisional application must be made in accordance with section 29 of the Act.

(2)

For subparagraph 79C (2) (b) (iv) of the Act, the prescribed period is 1 month from the day on which the Comm issioner publishes, under paragraph 101E (d) of the Act, a notice of the occurrence of the exam ination of the first patent m entioned in subsection 79C (1) of the Act.

Chapter 7 Patents of addition

Part 1 PCT applications

8.1A Title of an invention

(1)

A title established by the ISA under rule 37.2 of the PCT for an international applica tion is taken to be the title of the specification.

(2)

For subregulation (1), if the established title is in a language other than English, the title is taken to be the English translation of the established title.

Part 2 Convention applications

9.1 Notice of Commissioner’s decision to re-examine complete specification

If the Comm issioner decides, under subsectio n 97 (1) of the Act, to re-examine a com plete specif ication relating to an application for a patent, the Commissioner must tell:

(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.

(2)

A request must identify the documents on which an assertion is based that the invention, so fa r as claim ed in any claim and when compared with the prior art base as it existed before the priority date of that claim, is not novel, and:

(a)

for a standard patent — does not involve an inventive step; or

(b)

for an innovation patent — does not involve an innovative step.

(2A) A request must state the relevan ce of each of the documents mentioned in subregulation (2).

(3)

The request must have with it:

(a)

if the docu ment is not avai lable in the Paten t Office — a copy of the document; and

(b)

if the docu ment is not in English — a tran slation of th e document into English and a rela ted c ertificate of verification; and

(c)

evidence of the date a nd place of publication of the document.

(4)

If the request does not com ply with subregulations (2), (2A) and (3), the Comm issioner must not re-examine the com plete specification.

(5)

A person who has made a request m ay, by filing a notice in writing, am end or withdr aw the request before the Commissioner reports under sec tion 98 or subsection 101G (2) of the Act.

(6)

If the person who m ade 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 spe cification under subsection 97 (2) or 101G (1) of the Act m ust 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 fo r the re-exam ination is not the patentee, a copy of the report und er 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 com plete specification in relation to the app lication in res pect 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 sec tion 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 com plete specif ication in re lation to the application in r espect o f which the gran t of a paten t is opposed; and

(b)

if the person who asked for the re-exam ination is not the patentee — that person.

9.5 Completion of re-examination

If the Commissioner m akes 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 referr ed to in subsection 107 (2) of the Act within 3 m onths 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 specif ication to rem ove any lawf ul grounds of objection specified in a report on re-examination within 3 m onths from the day referred to in subparagraph (i);

the re-exam ination is com pleted when the de cision is made whether or not the amendment is allowed; or

(b)

a sta tement is f iled u nder sec tion 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 referr ed to in subsection 107 (2) of the Act within 2 m onths 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 specif ication to rem ove any lawf ul 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-exam ination is com pleted when the de cision is made whether or not the amendment is allowed; or

(d) a statem ent is not filed under section 99 of the Act and subparagraphs (c) (i) and (ii) do not apply — the re-examination is completed 2 months from the day when the commissioner reports under section 98 of the Act.

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 Comm issioner decides, under paragraph 101A (a) of the Act, to exam ine a complete specification, the Comm issioner must tell the patentee about the decision.

(3)

If a request is m ade 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 f or examination of a co mplete specification can be withdrawn only:

(a)

by the person who made the request; and

(b)

before exa mination of the com plete spec ification has begun; and

(c)

if the Com missioner is satisfied, on reasonable grounds, that the request was made in error.

(5)

If exam ination of a com plete specificati on has begun, no further requ ests for exa mination of the sp ecification 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.

101

9A.2A Results of documentary searches — innovation patent

(1)

For subsection 101D (1) of the Act, a patentee inform s the Commissioner of the results of documentary searches by o r on behalf of a foreign patent o ffice, other than the Europ ean Patent Office or the UK Patent Office, by providing:

(a)

a list of documents, cited by the foreign patent office; or

(b)

a copy of the search repor t issued by the foreign patent office.

(1A) For paragraph (1) (a), it is not nece ssary to refer in a lis t to a document that has been included in a list or report in relation to the patent, previously provide d to the Commissione r f or the Act or these Regulations.

(1B) For subsection 101D (1) of the Act, a patentee inform s the Commissioner of the results of documentary searches by o r on behalf of the European Patent Office or the UK Patent Office:

(a)

by providing:

(i)

a list of the documents cited by the patent office; and

(ii)

for a list provided on or after 26 August 2003 — the symbols us ed by the patent office to indicate the relevance of the documents; or

(b)

by providing a copy of th e sear ch r eport i ssued by t he patent office.

(2)

The patentee must inform the Comm issioner of the resu lts of any documentary searches by the latest of:

(a)

if the Commissioner decides, under paragraph 101A (a) of the Act, to exam ine the complete specification relating to an innovation patent — 3 m onths after the Comm issioner tells the patentee under subregulation 9A.1 (2); and

(b)

if the patentee asks, under paragraph 101A (b) of the Act, for an exam ination of the com plete specificatio n relating to an innovation patent — that time; and

(c)

if another person asks for an exam ination under paragraph 101A (b) of the Act — when the patentee pays the fee mentioned in paragraph (b) of item 208 of Schedule 7; and

(d)

3 months after the search is completed.

(3)

For subsection 101D (3) of the Act, completed, in relation to a search, has the meaning given by regulation 1.3A.

9A.2B Prescribed documentary searches by or on behalf of a foreign patent office

(1)

For paragraph 101D (1) (a) of the Act, the following documentary searches by or on behalf of a foreign patent office are prescrib ed (so that inform ation need not be given to the Commissioner):

(a)

a search that produces a nil result;

(b)

if the application for th e patent was converted to an innovation patent application from a standard patent application by an am endment under section 104 of the Act:

(i)

a search, the result of which was disclosed under subsection 45 (3) of the Act in relation to the standard patent application; and

(ii)

a search prescribed in regulation 3.17B in relation to the standard patent application;

(c)

if the applic ation for the patent was an application which the patentee was perm itted to make under subsection 79B (1) or 79C (1) of the Act ( a divisional application) — a search, the result of which was disclosed under subsection 45 (3) or 101D (1) of the Act in relation to the first-mentioned application in subsection 79B (1) of the Act or the first patent in subsection 79C (1) of the Act for the divisional application;

(d)

a search, other than a search by or on behalf of the European Patent Office or the UK Patent Office, the result of which has already been given to the Commissioner under subsection 101D (1) of the Act in relation to the patent;

(e)

a search, the result of which was not received by the patentee.

103

Commissioner’s decision to examine complete specification

(2)

If:

(a)

the Comm issioner dec ided to ex amine the com plete specification relating to an innovation patent; and

(b)

under subsection 101D (1) of the Act, the patentee was required to inf orm the Comm issioner of the r esult of a documentary search in relation to the patent request; and

(c)

the patentee did not inform the Commissioner of the result before 22 October 2007; and

(d)

the late r of the f ollowing dates had not occurred before 22 October 2007:

(i)

the day 3 months after the docum entary search is completed within the meaning of regulation 1.3A;

(ii)

the day 3 months afte r the Comm issioner to ld the patentee about the decision in accordance with subregulation 9A.1 (2);

the documentary search is prescribed (so th at information need not be given to the Commissioner).

(3) If the Comm issioner decides, on or after 22 O ctober 2007, to examine the com plete specifica tion relating to an innovation patent, all docum entary searches by, or on behalf of, a foreign patent office are prescribed (so that inform ation need not be given to the Commissioner).

Request for examination of complete specification

(4)

If:

(a)

a patentee, or another pe rson, asked, in accordance with section 101 A of the Act, for an exam ination of the complete specification relating to an innovation patent; and

(b)

under subsection 101D (1) of the Act, the patentee was required to inf orm the Comm issioner of the r esult of a documentary search in relation to the patent request; and

(c)

the patentee did not inform the Commissioner of the result before 22 October 2007; and

(d)

if the patentee asked for the exam ination — the day 3 months after the docum entary search is com pleted, within the m eaning of regulation 1.3A, had not occurred before 22 October 2007; and

(e)

if a person other than the patentee asked for the examination — the late r of the following dates had not occurred before 22 October 2007:

(i)

the day 3 months after the docum entary search is completed within the meaning of regulation 1.3A;

(ii)

the day on which the patentee paid the fee mentioned in paragraph (b) of item 208 of Schedule 7;

the documentary search is prescribed (so th at information need not be given to the Commissioner).

(5)

If:

(a)

a patentee, or another pe rson, asks, in accordance with section 101 A of the Act, for an exam ination of the complete specification relating to an innovation patent; and

(b)

that person asked for the examination on or after