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专利法实施细则1991(2016年11月15日合并版), 澳大利亚

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详情 详情 版本年份 2016 日期 议定: 1991年4月18日 文本类型 实施规则/实施细则 主题 专利(发明), 知识产权及相关法律的执行, 知识产权监管机构 This consolidated version of the Designs Regulations 2004 (SR No. 71, 1991) incorporates all the amendments up to the Intellectual Property Legislation Amendment (Single Economic Market and Other Measures) Regulation 2016.

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主要文本 相关文本
其他文本 卷 (1 文本) 卷 (1 文本) 英语 Patents Regulations 1991 (consolidated as of November 15, 2016) 1       2      
 Patents Regulations 1991 (consolidated as of November 15, 2016)

Prepared by the Office of Parliamentary Counsel, Canberra

Patents Regulations 1991

Statutory Rules No. 71, 1991

made under the

Patents Act 1990

Compilation No. 62

Compilation date: 15 November 2016

Includes amendments up to: F2016L01754

Registered: 15 November 2016

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 F2016C00971 registered 15/11/2016

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 15 November 2016 (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 ............................. 3

1.5 Deposit requirements: prescribed period .......................... 3

1.6 Secret use—prescribed period .......................................... 4

1.7 Verification of translations of international

applications....................................................................... 4

1.8 Completion of applications ............................................... 4

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........... 89

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

20.1 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......................................................... 107

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

20.21 Supplementary Board examination ............................... 112

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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 Procedure of Disciplinary Tribunal............................... 122

20.37 Notification of hearing of disciplinary proceedings ...... 122

20.38 Hearings to be public except in special

circumstances................................................................ 122

20.39 Representation before Disciplinary Tribunal ................ 123

20.40 Summoning of witnesses .............................................. 123

20.41 Offences by persons appearing before Disciplinary

Tribunal ........................................................................ 123

20.42 Protection of person constituting Disciplinary

Tribunal, witnesses etc.................................................. 124

20.43 Decision of Disciplinary Tribunal................................. 125

20.44 Penalties—professional misconduct ............................. 125

20.45 Penalties—unsatisfactory professional conduct............ 126

20.46 Finding that attorney was unqualified at time of

registration .................................................................... 126

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20.47 Finding that registration obtained by fraud ................... 126

20.48 Matters that may be considered in determining

penalties........................................................................ 126

20.49 Findings of Disciplinary Tribunal................................. 127

20.50 Notification and publication of decisions of

Disciplinary Tribunal.................................................... 127

20.51 Completion of outstanding business ............................. 127

20.52 Former attorney may be required to provide

assistance ...................................................................... 128

Part 9—Rights of registered patent attorneys 129 20.53 Lien............................................................................... 129

Part 10—Administration 130

Division 1—Professional Standards Board for Patent and Trade

Marks Attorneys 130

20.54 Constitution of Board (Act s 227A) .............................. 130

20.55 Term of office of Board members................................. 130

20.56 Resignation and removal of members from Board ....... 130

20.57 Meetings of Board ........................................................ 131

20.58 Member presiding at meetings of Board ....................... 131

20.59 Quorum for Board meetings ......................................... 131

20.60 Absence of Chairperson from meeting—leave

from Board.................................................................... 131

Division 2—Patent and Trade Marks Attorneys Disciplinary

Tribunal 132

20.61 Establishment of Disciplinary Tribunal ........................ 132

20.62 Disciplinary Tribunal—substantive appointments........ 132

20.63 Disciplinary Tribunal—acting appointments ................ 132

20.64 Disclosure of interest .................................................... 133

20.65 Qualifications for appointment to, or acting as,

Disciplinary Tribunal.................................................... 133

Chapter 20A—Incorporated Patent Attorney 134

Part 1—Introduction 134 20A.1 Application of Chapter 20A.......................................... 134

20A.2 Definitions .................................................................... 134

Part 2—Obtaining registration for first time 135 20A.3 Form of application....................................................... 135

20A.4 Certificate of registration .............................................. 135

Part 3—Maintaining registration 136 20A.5 Requirements for remaining on Register of Patent

Attorneys ...................................................................... 136

Part 4—Removal from Register of Patent Attorneys 137 20A.6 Voluntary removal of name from Register of

Patent Attorneys............................................................ 137

20A.7 Failure to pay annual registration fee............................ 137

20A.8 Failure to maintain professional indemnity

insurance....................................................................... 137

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Part 5—Discipline 138

Division 1—General 138

20A.9 Definitions .................................................................... 138

20A.10 Board may apply for cancellation or suspension of

incorporated patent attorney’s registration.................... 138

Division 2—Proceedings in Disciplinary Tribunal 139

20A.11 Procedure of Disciplinary Tribunal............................... 139

20A.12 Notification of hearing.................................................. 139

20A.13 Hearings to be public except in special

circumstances................................................................ 139

20A.14 Representation before Disciplinary Tribunal ................ 140

20A.15 Summoning of witnesses .............................................. 140

20A.16 Offences by persons appearing before Disciplinary

Tribunal ........................................................................ 140

20A.17 Protection of person constituting Disciplinary

Tribunal, witnesses etc.................................................. 141

20A.18 Decision of Disciplinary Tribunal................................. 142

20A.19 Notification and publication of decisions of

Disciplinary Tribunal.................................................... 142

20A.20 Completion of outstanding business ............................. 143

20A.21 Former attorney may be required to provide

assistance ...................................................................... 143

Part 6—Restoring attorney’s name to Register of Patent

Attorneys 145 20A.22 Restoring name to Register of Patent Attorneys ........... 145

Chapter 21—Administration 146 21.1 Patent Office and sub-offices........................................ 146

21.2 Employees to whom Commissioner may delegate

(Act s 209(1))................................................................ 146

Chapter 22—Miscellaneous 147

Part 1—Fees and costs 147

Division 1—Fees 147

22.1 Fees generally ............................................................... 147

22.2 General fees .................................................................. 147

22.2AA Approved means ........................................................... 148

22.2A Failure to pay: patent attorneys fees.............................. 148

22.2B Failure to pay: filing fees for patent requests ................ 148

22.2C Failure to pay: certain other filing fees etc.................... 149

22.2D Failure to pay: fees payable by patentee for

requests under s 101A(b) of the Act ............................. 149

22.2EA Failure to pay: fee for grant of leave to amend

specification (person invited to pay) ............................. 149

22.2F Consequence if Commissioner does not invite

payment ........................................................................ 150

22.2G Failure to pay: hearing fees........................................... 150

22.2H Failure to pay: certain fees for actions by

Commissioner ............................................................... 151

22.2I Failure to pay: acceptance fee....................................... 151

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22.3 General fees for international applications.................... 151

22.4 Fees for international applications payable for the

benefit of the International Bureau ............................... 152

22.5 PCT Fund...................................................................... 152

22.6 Exemption from fees..................................................... 152

22.7 Refund of certain fees ................................................... 153

Division 2—Costs 154

22.7A Proceedings to which this Division applies .................. 154

22.8 Costs ............................................................................. 154

Part 2—Other matters 155 22.9 Death of applicant or nominated person ....................... 155

22.10 Address for service ....................................................... 155

22.10A Address for correspondence.......................................... 155

22.10AA Period for doing certain acts—office not open for

business......................................................................... 156

22.10AB Days when office not open for business ....................... 156

22.10AC Prescribed acts .............................................................. 156

22.11 Extension of time.......................................................... 157

22.12 Evidence ....................................................................... 158

22.13 Declarations .................................................................. 158

22.14 Directions not otherwise prescribed.............................. 158

22.15 Documents in English and English translations ............ 158

22.16 Documents other than specifications and abstracts ....... 159

22.17 Incapacity of certain persons ........................................ 159

22.19 Copies of certain documents to be supplied.................. 160

22.20 International applications and the Patent Office ........... 160

22.21 Protection or compensation of certain persons.............. 160

22.22 Exercise of discretionary powers by Commissioner ..... 161

22.23 Written submissions and oral hearings ......................... 161

22.24 Practice and procedure other than for opposition

proceedings................................................................... 162

22.25 Requirements cannot be complied with for

reasonable cause ........................................................... 162

22.26 Review of decisions ...................................................... 162

22.27 Documents not to infringe copyright—prescribed

documents..................................................................... 164

Chapter 23—Transitional and savings provisions 165

Part 1—General 165 23.1 Saving: prohibition orders............................................. 165

23.2 Delegation: certain matters referred to in this

Chapter ......................................................................... 165

23.3 Opposition to grant: practice and procedure ................. 165

23.4 Certain opposition: practice and procedure................... 165

23.5 Fees payable for certain matters relating to

opposition ..................................................................... 166

23.6 Certain delegations: opposition..................................... 166

23.7 Certain undertakings ..................................................... 166

23.8 Restoration of lapsed applications or ceased

patents........................................................................... 166

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23.9 Certain continuation and renewal fees .......................... 167

23.10 Fee taken to have been paid .......................................... 167

23.11 Supply of product referred to in section 117 of the

Act ................................................................................ 167

23.12 Certain withdrawn, abandoned or refused

applications................................................................... 168

23.13 Certain certificates of validity....................................... 168

23.14 Certain action under the 1952 Act ................................ 168

23.15 Amendment of petty patents ......................................... 168

23.16 Certain applications under 1952 Act: time for

acceptance..................................................................... 168

23.17 PCT applications to which subsection 89(5) of the

Act does not apply ........................................................ 169

23.18 Certain priority dates: saving ........................................ 169

23.25 Fees............................................................................... 169

23.26 Certain actions and proceedings ................................... 170

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 .................................................................... 170

23.33 Transitional: examination of innovation patents

converted from petty patent applications ...................... 171

23.34 Transitional: certain PCT applications.......................... 171

23.35 Transitional: payment of fees for petty patents ............. 171

Part 2—Amendments made by particular instruments 173 23.36 Amendments made by Intellectual Property

Legislation Amendment (Raising the Bar)

Regulation 2013 (No. 1)................................................ 173

23.37 Amendments made by Intellectual Property

Legislation Amendment (TRIPS Protocol and

Other Measures) Regulation 2015 ................................ 181

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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 Patent and Trade Marks Attorneys Disciplinary

Tribunal established by regulation 20.61.

eligible importing country: see regulation 1.4A.

former attorneys Regulations means the following Regulations:

(a) the Patent Attorneys Regulations as in force immediately before the

commencing day under the 1952 Act;

(b) the Patents Regulations 1991 as in force immediately before 1 July 2008.

former patents Regulations means the Patents Regulations in force immediately

before the commencing day under the 1952 Act.

International Bureau means the International Bureau of the World Intellectual

Property Organization.

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).

Register of Patent Attorneys means the register mentioned in section 198 of the

Act.

the Act means the Patents Act 1990.

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

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(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:

(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

WTO General Council decision of 30 August 2003, of the member’s

intention to use the system set out in that decision as an importer;

(b) a least developed country.

1.5 Deposit requirements: prescribed period

(1) For paragraph 6(c) of the Act, the prescribed period is:

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(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:

(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

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(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 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; 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

necessary to ensure that the application complies with the requirements

mentioned in subregulations (2) and (3).

(5) The PCT application lapses if:

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(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.

(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

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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

(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.

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(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

(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.

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(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

(ii) the finding was the result of an error or omission by the International

Bureau.

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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:

(a) the Commissioner has notified the applicant under regulation 3.17C or

paragraph 10.2(1)(d); and

(b) the applicant:

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(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

(b) to have been filed within the prescribed period; and

(c) to have been verified in accordance with these Regulations.

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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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Regulation 3.17

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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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Regulation 3.25

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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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Regulation 3.25C

38 Patents Regulations 1991

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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

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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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(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

54 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

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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Amendments to opposition documents Part 5.3

Regulation 5.13

Patents Regulations 1991 55

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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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Chapter 5 Opposition

Part 5.3 Amendments to opposition documents

Regulation 5.16

56 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

(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

Patents Regulations 1991 57

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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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Chapter 5 Opposition

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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Hearing of opposition Part 5.5

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. 62 Compilation date: 15/11/16 Registered: 15/11/16

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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Miscellaneous Part 5.6

Regulation 5.25

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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. 62 Compilation date: 15/11/16 Registered: 15/11/16

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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Regulation 6.3

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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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Part 1 Patents generally

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

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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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Part 2 Extension of pharmaceutical patents

Regulation 6.11

66 Patents Regulations 1991

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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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Regulation 9.1

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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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Chapter 9 Re-examination

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

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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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Regulation 12.2

86 Patents Regulations 1991

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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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Regulation 12.2A

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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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Part 2 Patented pharmaceutical invention compulsory licences (for manufacture and export to eligible

importing countries)

Regulation 12.2C

88 Patents Regulations 1991

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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 WTO General Council decision of

30 August 2003.

(4) Subregulation (5) applies if the eligible importing country is:

(a) a least developed country; and

(b) not a WTO member.

(5) The eligible importing country must have given the Commissioner a written

notice:

(a) stating:

(i) the name of the eligible importing country; and

(ii) the name of the pharmaceutical product; and

(iii) the expected quantity of the pharmaceutical product to be imported

into the eligible importing country; and

(b) confirming that, if the pharmaceutical product is patented in the eligible

importing country, it:

(i) has granted; or

(ii) intends to grant;

a compulsory licence that would accord with Article 31 of the TRIPS

Agreement and the provisions of the WTO General Council decision of

30 August 2003 if the TRIPS Agreement and the decision applied to the

eligible importing country.

12.2C PPI compulsory licences—labelling and marking of product

(1) For paragraph 136F(1)(c) of the Act, the pharmaceutical product must be

labelled or marked in a way that:

(a) clearly identifies the product as being exported from Australia under the

PPI compulsory licence; and

(b) distinguishes the product from:

(i) the same pharmaceutical product as sold in Australia; and

(ii) the same pharmaceutical product as exported other than under the

licence.

(2) For subregulation (1), the labelling or marking must:

(a) be applied to:

(i) the immediate package containing the pharmaceutical product; and

(ii) any other package containing that package (whether or not other

packages are involved); and

(b) remain clear and legible at all times while the product is being exported.

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Regulation 12.2D

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12.2D PPI compulsory licences—shipment information

(1) For paragraph 136F(1)(d) of the Act, the following shipment information is

prescribed in relation to each shipment of a pharmaceutical product:

(a) the name of the pharmaceutical product;

(b) the amount of the product in the shipment;

(c) the name of the licensee;

(d) the licensee’s address for service;

(e) the name of the eligible importing country;

(f) if a person is importing the pharmaceutical product on behalf of, and with

the authorisation of, the eligible importing country—the name and address

of the person;

(g) a description of the packaging (including colour, size and shape) and the

labelling or marking of the pharmaceutical product.

(2) For paragraph 136F(1)(d) of the Act, the shipment information must be made

available for at least the duration of the licence.

12.2E PPI compulsory licences—giving information to the Commissioner

(1) This regulation sets out for paragraph 136F(1)(h) of the Act the information that

a licensee must give to the Commissioner in relation to the licence.

Grant of licence

(2) The licensee must give the Commissioner the following information in relation

to the grant of the PPI compulsory licence:

(a) the date of the PPI order;

(b) the place at which the PPI order was made;

(c) the name and address of the licensee;

(d) the licensee’s address for service;

(e) the name of the pharmaceutical product;

(f) the quantity of the pharmaceutical product that the Federal Court has

determined may be manufactured for export;

(g) the eligible importing country to which the pharmaceutical product is to be

exported;

(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.

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Regulation 12.2F

90 Patents Regulations 1991

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Amendment of licence

(4) If the licence is amended by order under section 136G of the Act, the licensee

must give the Commissioner the following information in relation to the

amendment:

(a) the date of the amending order;

(b) the place at which the amending order was made;

(c) details of the amendment.

(5) The information mentioned in subregulation (4) must be given to the

Commissioner:

(a) in the approved form; and

(b) within 1 month after the Federal Court makes the order amending the

licence.

Revocation of licence

(6) If the licence is revoked by order under section 136H of the Act, the licensee

must give the Commissioner the following information in relation to the

revocation:

(a) the date of the revocation order;

(b) the place at which the revocation order was made.

(7) The information mentioned in subregulation (6) must be given to the

Commissioner:

(a) in the approved form; and

(b) within 1 month after the Federal Court makes the order revoking the

licence.

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

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(b) in any other case—publish the information on the internet.

(2) If the Commissioner receives the information mentioned in

subregulation 12.2E(8) in relation to a licence, the Commissioner must give the

eligible importing country to which the licence relates a notice stating that the

licensee has advised that an amount of remuneration in respect of the licence has

been agreed or determined, as the case may be.

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Part 3 Surrender and revocation of patents

Regulation 12.3

92 Patents Regulations 1991

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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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Regulation 13.1

94 Patents Regulations 1991

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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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Regulation 13.4

96 Patents Regulations 1991

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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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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.

20.1 Interpretation

(1) In this Chapter:

AQF means the Australian Qualifications Framework.

Board means the Professional Standards Board for Patent and Trade Marks

Attorneys.

candidate means a person who proposes or proposed to sit, or has sat, for an

examination.

Chairperson means Chairperson of the Board.

professional misconduct has the meaning given by regulation 20.32.

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.

(2) For regulation 20.6, the higher education sector comprises:

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(a) universities; and

(b) higher education institutions other than universities; and

(c) higher education providers.

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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:

(a) evidence that the applicant is ordinarily resident in Australia;

(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) an AQF qualification from the higher education sector 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 an AQF qualification from the higher education sector.

(2) The Board must not be satisfied that a person has an AQF 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 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 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 Australia;

(iii) preparing, filing and prosecuting patent applications in other countries

and organisations, particularly countries and organisations that are

regarded as major trading partners with Australia;

(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.

Examples of major trading partners for subparagraph (a)(iii):

 European Community

 Japan

 New Zealand

 People’s Republic of China

 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.

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.

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:

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(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 the Act, the Designs Act 2003 or the Trade Marks Act 1995 is

a prescribed offence for paragraph 198(4)(e) of the Act.

(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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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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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

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 Disciplinary Tribunal.

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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

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 Disciplinary Tribunal.

(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 Disciplinary

Tribunal, give a copy of the notice to the registered patent attorney who is the

subject of the notice.

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Division 2 Proceedings in Disciplinary Tribunal

Regulation 20.36

122 Patents Regulations 1991

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Division 2—Proceedings in Disciplinary Tribunal

20.36 Procedure of Disciplinary Tribunal

(1) Subject to this Part, the Disciplinary Tribunal may determine its procedure.

(2) Proceedings before the Disciplinary Tribunal are to be conducted quickly and

informally, while allowing for proper consideration of the matter before that

Tribunal.

(3) The Disciplinary Tribunal is not bound by the rules of evidence but may be

informed on any matter in the manner it chooses.

(4) The Disciplinary Tribunal may take evidence on oath or on affirmation and, for

that purpose, may administer an oath or affirmation.

20.37 Notification of hearing of disciplinary proceedings

(1) The Disciplinary Tribunal must, as soon as practicable after receiving a notice

under regulation 20.35 in relation to a registered patent attorney, fix a time and

place for the hearing of the charges set out in the notice.

(2) The Disciplinary Tribunal must, as soon as practicable after fixing a time and

date for the hearing of charges against a registered patent attorney, notify the

attorney and the Board of that 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 the Disciplinary Tribunal must be

in public.

(2) If 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 Tribunal 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 Tribunal, whether in public or in private; or

(ii) matters contained in documents lodged with the Tribunal 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.

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20.39 Representation before Disciplinary Tribunal

(1) At the hearing of proceedings before the Disciplinary Tribunal, a party to the

proceedings may appear in person or be represented by a legal practitioner.

(2) The Disciplinary Tribunal may allow a person to be represented by a person who

is not a legal practitioner.

(3) A party to proceedings before the Disciplinary Tribunal, or his or her

representative, may request that Tribunal to summon witnesses.

20.40 Summoning of witnesses

(1) For the purpose of the hearing of a charge against a registered patent attorney

before the Disciplinary Tribunal, the Tribunal may, by instrument in writing

signed by the person constituting the Tribunal:

(a) summon any person, other than the attorney, to appear before the Tribunal

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 Tribunal:

(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 Disciplinary Tribunal

(1) A person summoned to appear before 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 Tribunal, 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 Disciplinary Tribunal 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 Tribunal.

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:

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124 Patents Regulations 1991

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(i) is not a registered patent attorney to whom subregulation (5) applies;

and

(ii) appears as a witness before the Disciplinary Tribunal; and

(iii) has been paid expenses and allowances; and

(b) the expenses and allowances have been determined by the Tribunal 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 paragraph (3)(b).

Note: For strict liability, see section 6.1 of the Criminal Code.

(5) A person commits an offence if the person:

(a) is a registered patent attorney against whom proceedings have been

instituted; and

(b) is summoned to appear at a hearing before 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 person constituting Disciplinary Tribunal, witnesses etc

(1) A person:

(a) constituting or acting as the Disciplinary Tribunal; or

(b) appointed under subregulation 20.64(2);

has, in the exercise of the powers and the performance of the functions of that

Tribunal under this Part, 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.

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(3) A legal practitioner or other person appearing before 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 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 Disciplinary Tribunal

(1) If 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 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.

(3) If the Disciplinary Tribunal has heard a charge that a registered patent attorney

was unqualified at the time of his or her registration, that Tribunal may find the

attorney guilty of being unqualified at the time of registration.

(4) If the Disciplinary Tribunal has heard a charge that a registered patent attorney

obtained his or her registration by fraud, that Tribunal may find the attorney

guilty of obtaining his or her registration by fraud.

20.44 Penalties—professional misconduct

(1) Subject to subregulation (2), if 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 Disciplinary Tribunal 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 Disciplinary Tribunal

may impose include either or both of the following:

(a) that the attorney undertake additional continuing professional education, as

specified by the Tribunal;

(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.

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126 Patents Regulations 1991

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(4) If a registered patent attorney is also a registered trade marks attorney, the

Disciplinary Tribunal 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 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 Disciplinary Tribunal 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 Disciplinary Tribunal

may impose include either or both of the following:

(a) that the attorney undertake additional continuing professional education, as

specified by the Tribunal;

(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 the Disciplinary Tribunal has heard a charge against a registered patent

attorney that the attorney was unqualified at the time of his or her registration

and finds the charge proved, that Tribunal may:

(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 the Disciplinary Tribunal finds that a registered patent attorney obtained his or

her registration by fraud, that Tribunal must cancel the registration of the

attorney.

20.48 Matters that may be considered in determining penalties

In deciding what to do about a registered patent attorney under regulation 20.44

or 20.45, the Disciplinary Tribunal may take into account the findings about the

conduct of the attorney in any other proceedings:

(a) brought before that Tribunal; or

(b) brought before the Patent Attorneys Disciplinary Tribunal under the former

attorneys regulations.

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20.49 Findings of Disciplinary Tribunal

(1) If the Disciplinary Tribunal reprimands a registered patent attorney, or suspends

or cancels the attorney’s registration, the Tribunal must give a written notice of

the finding of the Tribunal 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.

(4) If the Disciplinary Tribunal does not find a charge proved, that Tribunal must

notify the registered patent attorney and the Board accordingly.

20.50 Notification and publication of decisions of Disciplinary Tribunal

The Disciplinary Tribunal must, within 14 days after making a decision under

regulation 20.44, 20.45, 20.46 or 20.47:

(a) prepare a written statement that:

(i) sets out the decision of the Tribunal; 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 Tribunal; 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 under

paragraph 20.44(1)(a), the Disciplinary Tribunal may appoint a registered patent

attorney to carry on the practice of the former attorney until all outstanding

matters are disposed of.

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(2) If the registration of the former attorney has been suspended under

paragraph 20.44(1)(b) or 20.45(1)(a), the Disciplinary Tribunal 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 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.

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 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

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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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Chapter 20 Individual Patent Attorneys

Part 10 Administration

Division 1 Professional Standards Board for Patent and Trade Marks Attorneys

Regulation 20.54

130 Patents Regulations 1991

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Part 10—Administration

Division 1—Professional Standards Board for Patent and Trade

Marks Attorneys

20.54 Constitution of Board (Act s 227A)

The Board is constituted by:

(a) the Chairperson, appointed by the Minister; and

(b) either:

(i) the person holding, or carrying out the duties of, the office of the

Director-General of the Division of the Department known as IP

Australia; or

(ii) the nominee of that person; and

(c) at least 2 other suitably qualified members, appointed by the Minister.

20.55 Term of office of Board members

The Minister may appoint a member of the Board for a term of up to 3 years.

20.56 Resignation and removal of members from Board

(1) A member of the Board may resign by giving the Minister his or her resignation

in writing.

(2) The Minister may remove the Chairperson of the Board if the Chairperson:

(a) has been absent from 3 consecutive meetings of the Board without leave

given by the Board under regulation 20.60; or

(b) is convicted in Australia of an offence punishable by imprisonment for at

least 12 months; or

(c) cannot perform his or her duties as Chairperson 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 Chairperson 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.

(3) The Minister may remove a member of the Board if the member:

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(a) has been absent from 3 consecutive meetings of the Board without leave

given by the Chairperson; or

(b) is convicted in Australia 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.

20.57 Meetings of Board

(1) The Board must hold as many meetings as are necessary for the performance of

its functions.

(2) The Chairperson 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 Chairperson must preside at all meetings of the Board at which he or she is

present.

(2) In the absence of the Chairperson from a meeting, the members present must

appoint one of the members present at the meeting to preside.

(3) The Chairperson 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

At a meeting of the Board, a quorum is formed by the majority of the members

of the Board.

20.60 Absence of Chairperson from meeting—leave from Board

If the Chairperson is absent from a meeting of the Board, the members present

must decide whether to give leave to the Chairperson.

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Regulation 20.61

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Division 2—Patent and Trade Marks Attorneys Disciplinary Tribunal

20.61 Establishment of Disciplinary Tribunal

The Patent and Trade Marks Attorneys Disciplinary Tribunal is established.

20.62 Disciplinary Tribunal—substantive appointments

(1) The Minister may, in writing, appoint a person to constitute the Disciplinary

Tribunal.

(2) A copy of the instrument of appointment must be published in the Official

Journal.

(3) A person so appointed holds the office for the period specified in the instrument.

(4) A person so appointed may resign in writing given to the Minister.

(5) The Minister may remove a person so appointed from office for inefficiency,

misbehaviour or incapacity.

(6) If a person so appointed:

(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 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 remove the person from office.

20.63 Disciplinary Tribunal—acting appointments

(1) Subject to subregulation (2), the Minister may, in writing, appoint a person to act

as the Disciplinary Tribunal:

(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 is, or

is expected to be, absent from duty or from Australia or is, for any reason,

unable to perform the functions of the office.

(2) A person appointed to act during a vacancy must not continue to act for more

than 12 months.

(3) A copy of the instrument of appointment must be published in the Official

Journal.

(4) The Minister:

(a) may terminate the appointment at any time; and

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(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.

(5) Anything done by or in relation to a person purporting to act under the

appointment is not invalid only because:

(a) the need for the appointment had not arisen; or

(b) there was a defect or irregularity in connection with the appointment; or

(c) the appointment had ceased to have effect; or

(d) the need to act had not arisen or had ceased.

20.64 Disclosure of interest

(1) If a person constituting, or acting as, the Disciplinary Tribunal has or acquires an

interest that could conflict with the proper performance of his or her functions in

relation to proceedings he or she is to hear, the person:

(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 such a person 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

Disciplinary Tribunal for the purpose of conducting or completing those

proceedings.

(3) A copy of the instrument of appointment must be published in the Official

Journal.

(4) A person so appointed may exercise all the powers and must perform all of the

functions of the Disciplinary Tribunal in relation to those proceedings.

20.65 Qualifications for appointment to, or acting as, Disciplinary Tribunal

A person is not qualified to be appointed under subregulation 20.62(1) or

20.63(1) or 20.64(2) unless he or she is enrolled, and has for not less than 7 years

been enrolled, as a legal practitioner.

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Part 1 Introduction

Regulation 20A.1

134 Patents Regulations 1991

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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.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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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;

(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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Chapter 20A Incorporated Patent Attorney

Part 3 Maintaining registration

Regulation 20A.5

136 Patents Regulations 1991

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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

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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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Chapter 20A Incorporated Patent Attorney

Part 5 Discipline

Division 1 General

Regulation 20A.9

138 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

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 is 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 Disciplinary Tribunal has cancelled or suspended the patent attorney’s

registration under subregulation 20.44(1).

(2) Before applying to the Disciplinary Tribunal, the Board may request an

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.

(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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Regulation 20A.11

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Division 2—Proceedings in Disciplinary Tribunal

20A.11 Procedure of Disciplinary Tribunal

(1) The Disciplinary Tribunal may determine procedure that is not set out in this

Division.

(2) Proceedings before the Tribunal are to be conducted quickly and informally,

while allowing for proper consideration of the matter before the Tribunal.

(3) The Tribunal is not bound by the rules of evidence but may be informed on any

matter in the manner it chooses.

(4) The Tribunal may take evidence on oath or on affirmation and, for that purpose,

may administer an oath or affirmation.

20A.12 Notification of hearing

(1) The Disciplinary Tribunal must, as soon as practicable after receiving an

application under regulation 20A.10, fix a day, time and place to hear the

application.

(2) The Disciplinary Tribunal must, as soon as practicable, 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 the Disciplinary Tribunal must be in public.

(2) However, if 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 Tribunal 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 Tribunal, whether in public or in private; or

(ii) matters contained in documents lodged with the Tribunal or received

in evidence by the Tribunal.

(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.

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Division 2 Proceedings in Disciplinary Tribunal

Regulation 20A.14

140 Patents Regulations 1991

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20A.14 Representation before Disciplinary Tribunal

(1) At the hearing before 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 Disciplinary Tribunal, or a representative of

the party, may request the Tribunal to summon witnesses.

20A.15 Summoning of witnesses

(1) For the purpose of the hearing before the Disciplinary Tribunal, the Tribunal

may, by instrument in writing signed by the person constituting the Tribunal:

(a) summon a person to appear before the Tribunal 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 Tribunal:

(i) to produce any documents or articles mentioned in the summons; and

(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 Disciplinary Tribunal

(1) A person commits an offence if the person:

(a) is summoned to appear before 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 Tribunal, 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 Disciplinary Tribunal 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

Disciplinary Tribunal.

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:

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(i) is not a patent attorney director to whom subregulation (5) applies;

and

(ii) appears as a witness before the Disciplinary Tribunal; and

(iii) has been paid expenses and allowances; and

(b) the expenses and allowances have been determined by the Disciplinary

Tribunal 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 paragraph (3)(b).

Note: For strict liability, see section 6.1 of the Criminal Code.

(5) A person commits an offence if the person:

(a) is a patent attorney director who has been summoned to appear at a hearing

before 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 person constituting Disciplinary Tribunal, witnesses etc.

(1) A person:

(a) constituting the Disciplinary Tribunal; or

(b) appointed under subregulation 20.64(2);

has, in the exercise of the powers and the performance of the functions of the

Tribunal under this Part, 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.

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Division 2 Proceedings in Disciplinary Tribunal

Regulation 20A.18

142 Patents Regulations 1991

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(3) A legal practitioner or other person appearing before 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 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 Disciplinary Tribunal

(1) After hearing an application for the cancellation or suspension of the

incorporated patent attorney’s registration, 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 Disciplinary Tribunal 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 Disciplinary Tribunal may

consider the following:

(a) the professional misconduct engaged in;

(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 about the conduct of the incorporated patent attorney in any

other proceedings brought before the Disciplinary Tribunal;

(e) findings made about the conduct of the incorporated patent attorney’s

employees and officers in any other proceedings brought before the

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.

20A.19 Notification and publication of decisions of Disciplinary Tribunal

(1) The Disciplinary Tribunal must, within 14 days after making a decision under

regulation 20A.18:

(a) prepare a written statement that states:

(i) the decision of the Tribunal; 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

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(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 Tribunal.

(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.

(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 the Disciplinary Tribunal cancels the registration of an incorporated patent

attorney, the Tribunal may appoint a registered patent attorney to complete the

unfinished patents work of the former attorney.

(2) If the Disciplinary Tribunal suspends the registration of an incorporated patent

attorney, the Tribunal 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 Disciplinary Tribunal 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.

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Regulation 20A.21

144 Patents Regulations 1991

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(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

(b) any other circumstance that 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 20A.22

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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; and

(ii) 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

Regulation 21.1

146 Patents Regulations 1991

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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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Fees Division 1

Regulation 22.1

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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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Chapter 22 Miscellaneous

Part 1 Fees and costs

Division 1 Fees

Regulation 22.2AA

148 Patents Regulations 1991

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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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Part 1 Fees and costs

Division 1 Fees

Regulation 22.2F

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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

154 Patents Regulations 1991

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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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Part 2—Other matters

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 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) another 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.

(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) or (b).

(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.

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.

(3) The address for correspondence need not be in Australia.

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Regulation 22.10AA

156 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

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.

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;

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(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;

(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.

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Regulation 22.12

158 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

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) the Disciplinary Tribunal;

(d) the Professional Standards 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.

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:

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(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.

(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:

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160 Patents Regulations 1991

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(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.

(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

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(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

(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.

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162 Patents Regulations 1991

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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.

22.26 Review of decisions

(1) In this regulation:

decision has the same meaning as in the Administrative Appeals Tribunal Act

1975.

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(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) the Disciplinary Tribunal under the following provisions:

(i) regulation 20.43 (‘decision 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 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

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.

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Regulation 22.27

164 Patents Regulations 1991

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(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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(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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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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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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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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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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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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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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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

180 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

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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Amendments made by particular instruments Part 2

Regulation 23.37

Patents Regulations 1991 181

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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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Regulation 23.37

182 Patents Regulations 1991

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(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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 Patents Regulations 1991 (consolidated as of November 15, 2016)

Prepared by the Office of Parliamentary Counsel, Canberra

Patents Regulations 1991

Statutory Rules No. 71, 1991

made under the

Patents Act 1990

Compilation No. 62

Compilation date: 15 November 2016

Includes amendments up to: F2016L01754

Registered: 15 November 2016

This compilation is in 2 volumes

Volume 1: Chapters 1 to 23

Volume 2: Schedules and Endnotes

Each volume has its own contents

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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 15 November 2016 (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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Patents Regulations 1991 i

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Contents

Schedule 3—Formal requirements for documents to

be filed 1 1 Terminology and signs...................................................................... 1

1A Title of specification ......................................................................... 1

2 Fitness for reproduction .................................................................... 1

3 Separate sheets .................................................................................. 1

4 Margins ............................................................................................. 2

5 Numeration ....................................................................................... 2

7 Writing of textual matter................................................................... 3

8 Drawings, formulas and tables in textual matter ............................... 3

9 Words in drawings ............................................................................ 3

10 Alterations......................................................................................... 3

11 Special requirements for drawings.................................................... 4

12 Amino acid sequences and nucleotide sequences ............................. 5

13 Electronic documents........................................................................ 5

14 Scandalous matter ............................................................................. 5

Schedule 5—Knowledge requirements 6

Part 1—Overall requirement 6

Part 2—Legal process and overview of intellectual property 7

Part 3—Professional conduct 8

Part 4—Intellectual property law 9

Part 5—Intellectual property systems 10

Schedule 7—Fees 11

Part 1—Patent Attorneys 11 1 Table of fees—patent attorneys ...................................................... 11

Part 2—General fees 12 2 Table of fees—general fees............................................................. 12

Part 3—General fees for international applications 17 3 Table of fees—general fees for international applications .............. 17

Part 4—Fees payable for benefit of International Bureau 18 4 Table of fees—fees payable for benefit of International

Bureau............................................................................................. 18

Schedule 8—Costs, expenses and allowances 19

Part 1—Costs 19

Part 2—Expenses and allowances 19 Division 1—Expenses.................................................................................... 19

Division 2—Allowances................................................................................ 20

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ii Patents Regulations 1991

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Endnotes 21

Endnote 1—About the endnotes 21

Endnote 2—Abbreviation key 22

Endnote 3—Legislation history 23

Endnote 4—Amendment history 27

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Formal requirements for documents to be filed Schedule 3

Patents Regulations 1991 1

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Schedule 3—Formal requirements for documents to

be filed (paragraph 3.2A(1)(c), paragraph 3.2A(2)(c), subparagraph 3.2B(1)(a)(ii), paragraph 10.2(1)(a) and

subregulation 22.16(2))

1 Terminology and signs

In a document:

(a) units of description must be expressed in terms of the metric system or, if

first expressed in other terms, must be expressed also in terms of that

system; and

(b) temperatures must be expressed in degrees Celsius or, if first expressed in

another manner, must be expressed also in degrees Celsius; and

(c) to indicate units of measurement, the rules of international practice must be

observed; and

(d) in chemical formulas, the symbols, atomic weights and molecular formulas

in general use must be employed; and

(e) other terms, signs and symbols that are generally accepted in the art to

which the document principally relates must be employed; and

(f) if the document is expressed in English—the beginning of any decimal

fraction must be marked by a period; and

(g) units, signs, symbols and other terms must be used consistently.

1A Title of specification

A specification must commence with a short and precise title.

2 Fitness for reproduction

Each sheet comprising a document or part of a document:

(a) must be presented in a manner that allows any number of copies of the

sheet to be reproduced directly by means of photography, an electrostatic

or photo-offset process and microfilming; and

(b) must not be folded, creased or cracked; and

(c) subject to subclause 8(4) (‘drawings, formulas and tables in textual matter’)

and subclause 11(14) (‘special requirements for drawings’), must be

presented in a vertical format; and

(d) must be durable, flexible, smooth, strong, white and have a matt finish; and

(e) must be international sheet size A4; and

(f) must be printed on only one side of the sheet.

3 Separate sheets

(1) The patent request, the description of the invention, the claim or claims, any

drawing, and an abstract, must each commence on a separate sheet.

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(2) The sheets comprising a document must be connected so that they may be

readily:

(a) turned to be read; and

(b) separated for the purposes of reproduction and then rejoined.

4 Margins

(1) Subject to subclause (2), each sheet of a specification, or an abstract, must have a

margin that is not less than:

(a) at the top—2 cm; and

(b) on the left—2.5 cm; and

(c) on the right—2 cm; and

(d) at the bottom—2 cm.

(2) A sheet of drawings:

(a) must have a margin that is not less than:

(i) at the top—2.5 cm; and

(ii) on the left—2.5 cm; and

(iii) on the right—1.5 cm; and

(iv) at the bottom—1 cm; and

(b) must show the drawings entirely within that margin and within an area of

the sheet measuring 26.2 cm  17.0 cm (the useable surface); and

(c) must not contain a frame surrounding the drawings or the useable surface.

5 Numeration

(1) The parts of a patent application must be presented in the following order:

(a) patent request;

(b) description of the invention, other than any sequence listing part of the

description;

(c) claim or claims;

(d) abstract;

(e) drawing or drawings;

(f) sequence listing part of the description, if applicable.

(2) Subject to subclause (3), the sheets of the specification must be numbered

consecutively in arabic numerals beginning with ‘1’ that are placed at the top,

and in the middle, of the sheet, but not within the margins of the sheet.

(3) The sheets of a specification that contain drawings must be numbered by means

of sets of 2 arabic numerals separated by an oblique stroke, the first numeral in

each set being the consecutive number of each sheet, beginning with the arabic

number ‘1’, and the second being the total number of the sheets containing the

drawings.

(4) If there is more than 1 claim referred to in a complete specification, the claims

must be numbered consecutively in arabic numerals beginning with ‘1’.

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(5) In a statement of proposed amendments:

(a) the proposed amendments must be numbered consecutively; and

(b) if the statement is a subsequent one, the numbering must be consecutive

with the numbers in the previous statement.

7 Writing of textual matter

(1) Subject to subclause (2), except with the consent of the Commissioner, a patent

request, specification and any abstract relating to a patent application must be

typewritten or otherwise machine printed.

(2) If necessary, symbols relating to graphic matter, or chemical or mathematical

formulas, may be handwritten or drawn, as the case may be.

(3) The lines of text in a typewritten document must be 1 1 /2 spaced.

(4) The text in a document must be presented in letters the capitals of which are not

less than 0.21 cm high, in a dark colour and be indelible.

8 Drawings, formulas and tables in textual matter

(1) A patent request must not include a drawing.

(2) The description of an invention or an abstract:

(a) must not include a drawing; and

(b) may include chemical or mathematical formulas or tables.

(3) A claim:

(a) must not include a drawing; and

(b) may include chemical or mathematical formulas; and

(c) if, in the reasonable opinion of the Commissioner, the subject matter of the

claim makes the use of a table desirable—may include tables.

(4) A table or a chemical or mathematical formula may be presented in a horizontal

format if it cannot be presented in a vertical format in a satisfactory manner.

(5) If a table or a chemical or mathematical formula is presented in a horizontal

format, the top of the table or formula must be placed on the left side of the

paper.

9 Words in drawings

A drawing must not include text, other than a word or words indispensable to the

understanding of the drawing.

10 Alterations

(1) Subject to subclause (2), a document must be free from erasures, alterations,

overwritings and interlineations.

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(2) If, in the reasonable opinion of the Commissioner, failure to comply with

subclause (1) would not:

(a) compromise the authenticity; or

(b) jeopardise the likelihood of clear reproduction;

of a document, the Commissioner may excuse it from compliance with

subclause (1).

11 Special requirements for drawings

(1) A drawing must be executed in durable, black, dense, dark, uniformly thick and

well-defined, lines and strokes without colouring.

(2) A cross-section must be indicated by oblique hatching that does not impede the

clear reading of reference letters, numbers or signs and leading lines.

(3) The scale of a drawing and the distinctness of its execution must enable all the

details to be distinguished without difficulty on a photographic reproduction of

the drawing with a two-thirds linear reduction in size.

(4) If the scale of a drawing is given on the drawing, it must be represented

graphically.

(5) A letter, number or reference line that is shown on a drawing must be presented

simply and be clear.

(6) Brackets, braces, circles or inverted commas must not be used in association with

letters or numbers.

(7) A line in a drawing must ordinarily be drawn with the aid of drafting

instruments.

(8) A sheet of drawings may include more than 1 drawing.

(9) Each element of a drawing must be shown in proper proportion to each other

element of the drawing, other than where the use of a different proportion is

indispensable for the clarity of the drawing.

(10) The height of a letter or a number in a drawing must not be less than 0.32 cm.

(11) For the lettering of a drawing, the Latin or, if customary, the Greek alphabet

must be used.

(12) If drawings on 2 or more sheets of drawings form in effect a single drawing, the

drawings must be so arranged that the single drawing can be assembled without

concealing any part of the other drawings.

(13) Subject to subclause (14), if there is more than 1 drawing on a sheet of drawings,

the drawings must be presented on the sheet of drawings in a vertical format and

separate from each other.

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(14) If the drawings on a sheet of drawings cannot be presented in a vertical format,

they must be presented in a horizontal format with the tops of the drawings on

the left of the sheet of drawings.

(15) The drawings must be numbered consecutively in arabic numerals beginning

with ‘1’.

(16) A reference sign that is not mentioned in the description of the invention must

not be referred to in a drawing.

(17) A reference sign that is not mentioned in a drawing must not be referred to in the

description.

(18) A feature of a drawing that is denoted by a reference sign must be so denoted

consistently.

12 Amino acid sequences and nucleotide sequences

An amino acid sequence or a nucleotide sequence that is part of a specification

may be filed in a format approved by the Commissioner on a compact disk or by

other electronic means approved by the Commissioner.

13 Electronic documents

A document that is filed in electronic form must be in the approved form.

14 Scandalous matter

A complete application must not contain or consist of scandalous matter.

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Schedule 5 Knowledge requirements

Part 1 Overall requirement

6 Patents Regulations 1991

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Schedule 5—Knowledge requirements (regulation 20.8)

Part 1—Overall requirement

1. A course of study must provide for a student to have an appropriate level of:

(a) knowledge and practical application so that the student can give advice

about applicable categories of protection for particular activities; and

(b) appreciation of the advantages of each form of protection for a client; and

(c) understanding of how to get and maintain appropriate protection for a

client; and

(d) understanding of the required standard of professional conduct.

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Part 2—Legal process and overview of intellectual property

2. A course of study must provide for a student to have an appropriate level of

understanding of the Australian legal system and how intellectual property rights

may be protected, including by reference to:

(a) the Australian legal system; and

(b) intellectual property rights.

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Schedule 5 Knowledge requirements

Part 3 Professional conduct

8 Patents Regulations 1991

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Part 3—Professional conduct

3. A course of study must provide for a student to have an appropriate level of

understanding of the rights, privileges and responsibilities of a patent attorney or

trade marks attorney.

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Part 4—Intellectual property law

4. A course of study must provide for a student to have an appropriate level of

understanding of the principles of trade marks, patents, designs and copyright.

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Schedule 5 Knowledge requirements

Part 5 Intellectual property systems

10 Patents Regulations 1991

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Part 5—Intellectual property systems

5. A course of study must provide for a student to have an appropriate level of

understanding of the system of protecting and exploiting trade marks, patents and

designs, both in Australia and other countries. This includes:

(a) the ability to draft patent specifications; and

(b) an understanding of patent specifications; and

(c) the ability to advise on the interpretation, validity and infringement of patent

specifications.

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Fees Schedule 7

Patent Attorneys Part 1

Patents Regulations 1991 11

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Schedule 7—Fees Note: See regulations 22.2, 22.3 and 22.4.

Part 1—Patent Attorneys

1 Table of fees—patent attorneys

The following table sets out fees that are payable in relation to matters specified

in the table.

Item Matter Fee ($)

101 Applying for admission to sit for an examination conducted by

the Board

400

102 Applying for grant of a supplementary examination conducted

by the Board

200

103 Applying for a report of reasons for failure of an examination

conducted by the Board

200

104 Applying for registration as a patent attorney 300

105 Annual registration of a patent attorney 350

106 Annual registration fee payable for combined registration as a

patent attorney and trade marks attorney

550

107 Applying under regulation 20.29, 20.30 or 20.31 250

108 Applying for registration as an incorporated patent attorney 300

109 Annual registration of an incorporated patent attorney 350

110 Annual registration fee payable for combined registration as an

incorporated patent attorney and incorporated trade marks

attorney

550

111 Applying to be restored to the Register of Patent Attorneys, as

authorised by regulation 20A.22

250

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Part 2 General fees

12 Patents Regulations 1991

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Part 2—General fees

2 Table of fees—general fees

The following table sets out fees that are payable in relation to matters specified

in the table.

Item Matter Fee

201 Filing a request for a patent accompanied by a provisional

specification:

(a) by approved means; $110

(b) by another means $210

202 Filing a request for an innovation patent accompanied by a

complete specification:

(a) by approved means; $180

(b) by another means $280

203 Filing a request for a standard patent accompanied by a

complete specification:

(a) by approved means; $370

(b) by another means $470

204 Filing a request for an examination, under section 45 of the

Act, of a standard patent request and complete specification

for a PCT application if the Patent Office has established an

international preliminary examination report under Article

35 of the PCT, other than a report under Rule 44bis.1 of the

PCT, in respect of the application

$300

205 Filing a request for an examination, under section 45 of the

Act, of a standard patent request and complete specification

if item 204 does not apply

$490

206 Search by the Commissioner in relation to a patent request

and complete specification for a standard patent as part of

an examination, if the complete application was made on or

after 15 April 2013

$950

207 Filing a request under paragraph 101A(b) of the Act, by the

patentee of an innovation patent, for examination of the

complete specification relating to the innovation patent

$500

208 Filing a request under paragraph 101A(b) of the Act, by a

person other than the patentee of an innovation patent, for

examination of the complete specification relating to the

innovation patent:

(a) payable by the person making the request; and $250

(b) payable by the patentee $250

209 Filing a request under subsection 44(3) of the Act requiring

the Commissioner to direct an applicant to request

$100

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Item Matter Fee

examination

210 Filing a request under subsection 97(2) or

paragraph 101G(1)(b) of the Act for re-examination of a

complete specification

$800

211 Continuation fee under paragraph 142(2)(d) of the Act, or

renewal fee under paragraph 143(a) of the Act, for:

(a) the fourth anniversary:

(i) fee paid by approved means; $300

(ii) fee paid by another means; $350

(b) the fifth anniversary:

(i) fee paid by approved means; $300

(ii) fee paid by another means; $350

(c) the sixth anniversary:

(i) fee paid by approved means; $300

(ii) fee paid by another means; $350

(d) the seventh anniversary:

(i) fee paid by approved means; $300

(ii) fee paid by another means; $350

(e) the eighth anniversary:

(i) fee paid by approved means; $300

(ii) fee paid by another means; $350

(f) the ninth anniversary:

(i) fee paid by approved means; $300

(ii) fee paid by another means; $350

(g) the tenth anniversary:

(i) fee paid by approved means; $550

(ii) fee paid by another means; $600

(h) the eleventh anniversary:

(i) fee paid by approved means; $550

(ii) fee paid by another means; $600

(i) the twelfth anniversary:

(i) fee paid by approved means; $550

(ii) fee paid by another means; $600

(j) the thirteenth anniversary:

(i) fee paid by approved means; $550

(ii) fee paid by another means; $600

(k) the fourteenth anniversary:

(i) fee paid by approved means; $550

(ii) fee paid by another means; $600

(l) the fifteenth anniversary:

(i) fee paid by approved means; $1 250

(ii) fee paid by another means; $1 300

(m) the sixteenth anniversary:

(i) fee paid by approved means; $1 250

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Part 2 General fees

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Item Matter Fee

(ii) fee paid by another means; $1 300

(n) the seventeenth anniversary:

(i) fee paid by approved means; $1 250

(ii) fee paid by another means; $1 300

(o) the eighteenth anniversary:

(i) fee paid by approved means; $1 250

(ii) fee paid by another means; $1 300

(p) the nineteenth anniversary:

(i) fee paid by approved means; $1 250

(ii) fee paid by another means; $1 300

(q) if an extension of the term of a standard patent is granted

under section 76 of the Act:

(i) the twentieth anniversary, fee paid using by

approved means;

$2 550

(ii) the twentieth anniversary, fee paid by another

means;

$2 600

(iii) each subsequent anniversary during the period of

extension, fee paid by approved means;

$2 550

(iv) each subsequent anniversary during the period of

extension, fee paid by another means

$2 600

and, in addition, if the fee is not paid on or before the

anniversary but is paid within 6 months after the

anniversary

$100 for each month, or part

of a month, in the period

between the anniversary and

the day when the fee is paid

212 Renewal fee under paragraph 143A(d) of the Act for:

(a) the second anniversary:

(i) fee paid by approved means; $110

(ii) fee paid by another means; $160

(b) the third anniversary:

(i) fee paid by approved means; $110

(ii) fee paid by another means; $160

(c) the fourth anniversary:

(i) fee paid by approved means; $110

(ii) fee paid by another means; $160

(d) the fifth anniversary:

(i) fee paid by approved means; $220

(ii) fee paid by another means; $270

(e) the sixth anniversary:

(i) fee paid by approved means; $220

(ii) fee paid by another means; $270

(f) the seventh anniversary:

(i) fee paid by approved means; $220

(ii) fee paid by another means $270

and, in addition, if the fee is not paid on or before the $100 for each month, or part

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Fees Schedule 7

General fees Part 2

Patents Regulations 1991 15

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Item Matter Fee

anniversary but is paid within 6 months after the

anniversary

of a month, in the period

between the anniversary and

the day when the fee is paid

213 Acceptance of a patent request and complete specification

under section 49 of the Act:

(a) for acceptance; and $250

(b) if more than 20 claims are contained in the specification

at acceptance

$110 for each claim in

excess of 20

214 Filing an application or request under section 17, 32 or 36,

or subsection 191A(2) of the Act

$600

214A National phase entry of a PCT application under

paragraph 29A(5)(b) of the Act:

(a) fee paid by approved means; $370

(b) fee paid by another means $470

215 Filing a request under subregulation 3.25(1) for the

certification referred to in Rule 11.3(a) of the Budapest

Treaty

$600

216 Filing a notice of opposition under regulation 5.4, 5.6 or

5.10

$600

218 Filing an application under subregulation 5.9(1) for an

extension of time

$500 for each month or part

of a month for which the

extension is sought

222 Filing a request for leave to amend:

(a) a complete specification relating to an application for a

standard patent, before a request for examination is filed

or after the complete specification is accepted; or

(b) a complete specification relating to a standard patent

$250

222A Grant of leave to amend a complete specification relating to

a standard patent, or relating to an application for a standard

patent, after the complete specification is accepted, if:

$110 for each additional

claim that arises as

described in paragraph (b)

(a) more than 20 claims are contained in the complete

specification as proposed to be amended; and

(b) the effect of the proposed amendment would be to

increase the number of claims in the complete

specification

223 Filing a request for leave to amend a patent request for an

innovation patent to make it a patent request for a standard

patent

$190

224 Filing a request for leave to amend a complete specification

relating to an innovation patent:

(a) after the patent is granted but before a request for

examination is filed; or

(b) after the patent is certified

$250

226 Filing an application for an extension of time under

subsection 223(2) of the Act on a ground specified in

$100 for each month or part

of a month for which the

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Schedule 7 Fees

Part 2 General fees

16 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Item Matter Fee

paragraph 223(2)(a) of the Act extension is sought

227 Filing an application under subsection 223(2) of the Act for

an extension of time on the ground specified in

paragraph 223(2)(b) of the Act

$100

228 Filing an application for an extension of time under

subsection 223(2A) of the Act

$100 for each month or part

of a month for which the

extension is sought

230 Filing a request for a hearing $600

231 Appearing and being heard at an oral hearing in person or

by other means:

(a) for the first day $1 000 less any amount paid

under item 230 in

relation to the hearing

(b) if the hearing runs for more than a day $1 000 for each day, or part

of a day, after the first

day

231A Hearing on the basis of written submissions only, where the

submissions are filed after the notice of hearing or invitation

to be heard is issued

$600 less any amount paid

under item 230 in relation to

the hearing

233 Requesting the supply of not more than 3 documents

relating to a single patent application or a single patent

$50 for each document

234 Requesting the supply of 4 or more documents relating to a

single patent application or a single patent

$200 for each request

236 Filing a request under regulation 3.14A for an

international-type search

$950

236A Preliminary search and opinion by the Commissioner in

relation to a patent request and complete specification under

subsection 43A(1) of the Act

$2,200

238 Filing an application under subsection 70(1) of the Act for

the grant of an extension of the term of a standard patent

$2 000

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Fees Schedule 7

General fees for international applications Part 3

Patents Regulations 1991 17

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Part 3—General fees for international applications

3 Table of fees—general fees for international applications

The following table sets out fees that are payable in relation to matters specified

in the table.

Item Matter Fee

301 Transmittal fee under Rule 14 of the PCT $200

302 Search fee under Rule 16 of the PCT $2 200

303 Additional fee for search under Article 17(3)(a) of the PCT $2 200

304 Preliminary examination fee under Rule 58 of the PCT

(a) if the international search report was issued by the Patent

Office in respect of the international application;

$590

(b) in other cases $820

305 Additional fee for international preliminary examination

under Article 34(3)(a) of the PCT

$590

306 For a copy of a document in accordance with Rule 44.3(b)

or 71.2(b) of the PCT

$50

308 For processing a request for restoration of priority under

Rule 26 bis

of the PCT.

$200

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Schedule 7 Fees

Part 4 Fees payable for benefit of International Bureau

18 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Part 4—Fees payable for benefit of International Bureau

4 Table of fees—fees payable for benefit of International Bureau

The following table sets out fees that are payable in relation to matters specified

in the table.

Item Matter Fee

401 International filing fee:

(Rule 15.2 of the PCT)

1,330 Swiss francs plus 15

Swiss francs for each

sheet of the international

application in excess of 30

sheets

402 Handling fee:

(Rule 57.2 of the PCT)

200 Swiss francs

Reductions

403 The international filing fee is reduced by the following amount if the international

application is, as provided for in the Administrative Instructions, filed:

(a) in electronic form, the request not being in character coded format—100 Swiss francs;

(b) in electronic form, the request being in character coded format—200 Swiss francs;

(c) in electronic form, the request, description, claims and abstract being in character

coded format—300 Swiss francs.

404 The international filing fee (where applicable, as reduced under item 403) and the handling

fee are reduced by 90% if the international application is filed by:

(a) an applicant who is a natural person and who is a national of and resides in a State

whose per capita national income is below US$3,000 (according to the average per

capita national income figures used by the United Nations for determining its scale of

assessments for the contributions payable for the years 1995, 1996 and 1997) or, until

December 31, 2009, one of the following States: Antigua and Barbuda, Bahrain,

Barbados, Libyan Arab Jamahiriya, Oman, Seychelles, Singapore, Trinidad & Tobago

and United Arab Emirates; or

(b) an applicant, whether a natural person or not, who is a national of and resides in a State

that is classed as a least developed country by the United Nations;

provided that, if there are several applicants, each must satisfy the criteria set out in either

sub-item (a) or (b).

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Costs, expenses and allowances Schedule 8

Costs Part 1

Patents Regulations 1991 19

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Schedule 8—Costs, expenses and allowances (subregulation 20.30(2) and regulation 22.8)

Part 1—Costs

Column 1 Column 2 Column 3

Item Matter Amount

1 Notice of opposition $200

2 Statement of grounds and particulars $750

3 Receiving and perusing statement of grounds and

particulars

$500

4 Evidence in support $1 500

5 Receiving and perusing notice of opposition $200

6 Receiving and perusing evidence in support $750

7 Evidence in answer $1 500

8 Receiving and perusing evidence in answer $750

9 Evidence in reply $750

10 Receiving and perusing evidence in reply $350

11 Preparation of case for hearing $1 000

12 Attendance at hearing by registered patent attorney or

solicitor without counsel

$260 an hour, but not

more than $1 170 a day

13 Attendance at hearing by registered patent attorney or

solicitor instructing counsel

$200 an hour, but not

more than $900 a day

14 Counsel fees for attendance at a hearing $300 an hour, but not

more than $1 350 a day

Part 2—Expenses and allowances

Division 1—Expenses

1 A person who has paid a fee prescribed in these Regulations in relation to

proceedings before the Commissioner or the Disciplinary Tribunal may be paid

the amount of the fee.

2 A person attending proceedings before the Commissioner or the Disciplinary

Tribunal must be paid:

(a) a reasonable amount for allowances for transport between the usual place

of residence of the person and the place that he or she attends for that

purpose; and

(b) if the person is required to be absent overnight from his or her usual place

of residence—a reasonable amount for allowances up to a daily maximum

of $700 for meals and accommodation.

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Schedule 8 Costs, expenses and allowances

Part 2 Expenses and allowances

20 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Division 2—Allowances

3 A person who, because of his or her professional, scientific or other special skill

or knowledge, is summoned to appear before the Commissioner or the

Disciplinary Tribunal as a witness must be paid:

(a) if the person is remunerated in his or her occupation by wages, salary or

fees—an amount equal to the amount of wages, salary or fees not paid to

the person because of his or her attendance for that purpose; or

(b) in any other case—an amount of not less than $140, or more than $700, for

each day on which he or she so attends.

4 A person summoned to appear before the Commissioner or the Disciplinary

Tribunal as a witness, other than a witness referred to in clause 3, must be paid:

(a) if the person is remunerated in his or her occupation by wages, salary or

fees—an amount equal to the amount of wages, salary or fees not paid to

the person because of his or her attendance for that purpose; or

(b) in any other case—an amount of not less than $80, or more than $130, for

each day on which he or she so attends.

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Endnotes

Endnote 1—About the endnotes

Patents Regulations 1991 21

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Endnotes

Endnote 1—About the endnotes

The endnotes provide information about this compilation and the compiled law.

The following endnotes are included in every compilation:

Endnote 1—About the endnotes

Endnote 2—Abbreviation key

Endnote 3—Legislation history

Endnote 4—Amendment history

Abbreviation key—Endnote 2

The abbreviation key sets out abbreviations that may be used in the endnotes.

Legislation history and amendment history—Endnotes 3 and 4

Amending laws are annotated in the legislation history and amendment history.

The legislation history in endnote 3 provides information about each law that has amended (or

will amend) the compiled law. The information includes commencement details for amending

laws and details of any application, saving or transitional provisions that are not included in

this compilation.

The amendment history in endnote 4 provides information about amendments at the provision

(generally section or equivalent) level. It also includes information about any provision of the

compiled law that has been repealed in accordance with a provision of the law.

Editorial changes

The Legislation Act 2003 authorises First Parliamentary Counsel to make editorial and

presentational changes to a compiled law in preparing a compilation of the law for

registration. The changes must not change the effect of the law. Editorial changes take effect

from the compilation registration date.

If the compilation includes editorial changes, the endnotes include a brief outline of the

changes in general terms. Full details of any changes can be obtained from the Office of

Parliamentary Counsel.

Misdescribed amendments

A misdescribed amendment is an amendment that does not accurately describe the

amendment to be made. If, despite the misdescription, the amendment can be given effect as

intended, the amendment is incorporated into the compiled law and the abbreviation “(md)”

added to the details of the amendment included in the amendment history.

If a misdescribed amendment cannot be given effect as intended, the abbreviation “(md not

incorp)” is added to the details of the amendment included in the amendment history.

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Endnotes

Endnote 2—Abbreviation key

22 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Endnote 2—Abbreviation key

ad = added or inserted o = order(s)

am = amended Ord = Ordinance

amdt = amendment orig = original

c = clause(s) par = paragraph(s)/subparagraph(s)

C[x] = Compilation No. x /sub-subparagraph(s)

Ch = Chapter(s) pres = present

def = definition(s) prev = previous

Dict = Dictionary (prev…) = previously

disallowed = disallowed by Parliament Pt = Part(s)

Div = Division(s) r = regulation(s)/rule(s)

ed = editorial change reloc = relocated

exp = expires/expired or ceases/ceased to have renum = renumbered

effect rep = repealed

F = Federal Register of Legislation rs = repealed and substituted

gaz = gazette s = section(s)/subsection(s)

LA = Legislation Act 2003 Sch = Schedule(s)

LIA = Legislative Instruments Act 2003 Sdiv = Subdivision(s)

(md) = misdescribed amendment can be given SLI = Select Legislative Instrument

effect SR = Statutory Rules

(md not incorp) = misdescribed amendment Sub-Ch = Sub-Chapter(s)

cannot be given effect SubPt = Subpart(s)

mod = modified/modification underlining = whole or part not

No. = Number(s) commenced or to be commenced

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Endnotes

Endnote 3—Legislation history

Patents Regulations 1991 23

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Endnote 3—Legislation history

Number and year Registration Commencement Application, saving

and transitional

provisions

1991 No. 71 26 Apr 1991 30 Apr 1991

1991 No. 456 19 Dec 1991 r 3, 5 and 7: 1 Jan 1992

Remainder: 19 Dec 1991

1992 No. 148 9 June 1992 r 5: 9 June 1992

Remainder: 1 July 1992

r 7

1993 No. 113 3 June 1993 1 July 1993 r 9

1993 No. 227 26 Aug 1993 r 3.1, 4.1 and 4.4: 1 Oct 1992

Remainder: 1 Jan 1993

1993 No. 340 10 Dec 1993 10 Dec 1993 r 8

1993 No. 341 10 Dec 1993 1 Jan 1994 —

1994 No. 182 16 June 1994 29 June 1994 —

1994 No. 317 6 Sept 1994 1 Oct 1994 r 10

1994 No. 387 21 Nov 1994 r 9 and 10: 30 May 1995

Remainder: 21 Nov 1994

r 10

1995 No. 16 14 Feb 1995 r 38: 30 Apr 1991

Remainder: 14 Feb 1995

r 45

1995 No. 20 22 Feb 1995 23 Feb 1995 —

1995 No. 82 9 May 1995 r 4–9, 11.2 and 12–14: 1 July

1995

Remainder: 9 May 1995

r 14

1995 No. 427 22 Dec 1995 1 Jan 1996 —

1996 No. 271 11 Dec 1996 11 Dec 1996 —

1997 No. 192 4 July 1997 4 July 1997 —

1997 No. 345 9 Dec 1997 r 3, 4, 8–10, 13 and 14:

1 Jan 1998

Remainder: 9 Dec 1997

r 3

1998 No. 45 25 Mar 1998 25 Mar 1998 —

1998 No. 56 8 Apr 1998 8 Apr 1998 r 13–17

1998 No. 141 25 June 1998 r 3–5: 1 July 1998

Remainder: 25 June 1998

1998 No. 241 31 July 1998 31 July 1998 —

1998 No. 257 12 Aug 1998 12 Aug 1998 —

1998 No. 264 26 Aug 1998 r 7.1, 7.2 and 7.4: 1 Nov 1998

Remainder: 26 Aug 1998

1998 No. 291 7 Sept 1998 7 Sept 1998 —

1998 No. 319 1 Dec 1998 27 Jan 1999 (r 2) —

1998 No. 342 22 Dec 1998 1 Jan 1999 —

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Endnotes

Endnote 3—Legislation history

24 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Number and year Registration Commencement Application, saving

and transitional

provisions

1998 No. 345 22 Dec 1998 27 Jan 1999 —

1999 No. 154 14 July 1999 14 July 1999 —

1999 No. 184 1 Sept 1999 r 1–3 and Sch 1: 1 Sept 1999

Remainder: 6 Sept 1999

1999 No. 261 27 Oct 1999 r 1–4 and Sch 1: 27 Oct 1999

Remainder: 1 Jan 2000

r 4

1999 No. 349 22 Dec 1999 r 1–3 and Sch 1: 22 Dec 1999

Remainder: 1 Jan 2000

2000 No. 317 29 Nov 2000 r 1–3 and Sch 1: 29 Nov 2000

Sch 2: 1 Jan 2001

Remainder: 1 Mar 2001

2001 No. 98 23 May 2001 24 May 2001 (r 2) —

2001 No. 184 5 July 2001 5 July 2001 —

2001 No. 345 21 Dec 2001 Sch 2: 1 Jan 2002

Remainder: 21 Dec 2001

2002 No. 59 28 Mar 2002 1 Apr 2002 r 4

2002 No. 100 23 May 2002 23 May 2002 —

2002 No. 173 11 July 2002 r 1–5 and Sch 1–3: 11 July 2002

Remainder: 1 Sept 2002

2002 No. 263 6 Nov 2002 6 Nov 2002 —

2002 No. 317 19 Dec 2002 r 1–3 and Sch 1: 19 Dec 2002

Remainder: 1 Jan 2003

r 4

2003 No. 71 28 Apr 2003 28 Apr 2003 —

2003 No. 213 21 Aug 2003 Sch 1: 21 Aug 2003

Remainder: 26 Aug 2003 (r 2(b))

2003 No. 316 11 Dec 2003 r 1–4 and Sch 1: 11 Dec 2003 (r

2(a))

Remainder: 1 Jan 2004

r 4

2004 No. 23 26 Feb 2004 11 Mar 2004 (r 2) —

2004 No. 193 1 July 2004 1 July 2004 (r 2) r 4

2004 No. 250 20 Aug 2004 20 Aug 2004 (r 2) —

2004 No. 395 23 Dec 2004 23 Dec 2004 (r 2) r 4

2005 No. 51 29 Mar 2005

(F2005L00753)

r 1–4 and Sch 1: 30 Mar 2005

Sch 2: 1 Apr 2005

Sch 3: 3 Apr 2005

r 4

2006 No. 55 22 Mar 2006

(F2006L00846)

1 Apr 2006 (r 2) r 4

2006 No. 355 15 Dec 2006

(F2006L03971)

1 Mar 2007 (r 2) —

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Endnotes

Endnote 3—Legislation history

Patents Regulations 1991 25

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Number and year Registration Commencement Application, saving

and transitional

provisions

2007 No. 40 23 Mar 2007

(F2007L00650)

r 1–10 and Sch 1, 2, 3, 5 and 6:

27 Mar 2007

Sch 4 and 8: 1 Apr 2007 (r 2(b))

Sch 7: 27 Mar 2007

(r 2(c))

r 8

2007 No. 357 18 Oct 2007 (F2007L04114) 22 Oct 2007 (r 2) —

2008 No. 122 23 June 2008

(F2008L02119)

1 July 2008 (r 2) r 5

2008 No. 178 2 Sept 2008 (F2008L03228) 1 July 2008 (r 2) —

2008 No. 279 19 Dec 2008

(F2008L04588)

1 Jan 2009 (r 2) r 3

2009 No. 150 26 June 2009

(F2009L02472)

1 July 2009 (r 2) r 3

2009 No. 332 27 Nov 2009

(F2009L04297)

12 Dec 2009 (r 2) —

2010 No. 181 30 June 2010

(F2010L01791)

r 1–3 and Sch 1: 1 July 2010 (r

2(a))

r 4 and Sch 2:1 Aug 2010 (r 2(b))

2011 No. 62 16 May 2011

(F2011L00773)

1 July 2011 (s 2) r 3 and 4

2011 No. 217 29 Nov 2011

(F2011L02480)

r 1–3 and Sch 1: 27 Dec 2011

(s 2(a))

r 4 and Sch 2: 1 Jan 2012 (s 2(b)

2012 No. 66 14 May 2012

(F2012L01031)

Sch 1 (Part 1–4): 1 July 2012

(s 2(a)(ii))

Sch 1 (Part 5): 1 Oct 2012

(s 2(b))

s 3

221, 2012 17 Sept 2012

(F2012L01878)

18 Sept 2012 (s 2) —

31, 2013 18 Mar 2013 F2013L00479) Sch 1, Sch 3 (items 1–9), Sch 4

(items 1–29), Sch 6 (items 5–86)

and Sch 7 (items 1, 2): 15 Apr

2013 (s 2)

88, 2015 19 June 2015

(F2015L00852)

Sch 1 and Sch 4: 25 Aug 2015

(s 2(1) items 2, 5)

Sch 2: awaiting commencement

(s 2(1) item 3)

Sch 3 (item 3), Sch 5 (items 3–

14) and Sch 6: 20 June 2015:

20 June 2015 (s 2(1) items 4, 6)

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Endnotes

Endnote 3—Legislation history

26 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Name Registration Commencement Application, saving and

transitional provisions

Intellectual Property

Legislation Amendment

(Fee Review)

Regulation 2016

19 Aug 2016

(F2016L01306)

Sch 1 (items 10–51): 10 Oct

2016 (s 2(1) item 1)

Intellectual Property

Legislation Amendment

(Single Economic Market

and Other Measures)

Regulation 2016

14 Nov 2016

(F2016L01754)

Sch 1: awaiting

commencement (s 2(1) item 2)

Sch 4 (items 1, 2): 15 Nov

2016 (s 2(1) item 3)

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Endnotes

Endnote 4—Amendment history

Patents Regulations 1991 27

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Endnote 4—Amendment history

Provision affected How affected

Chapter 1

r. 1.1 .............................................. rs. 1998 No. 257

r 1.2 ............................................... rep LA s 48D

r. 1.3 .............................................. am. 1998 No. 345; 2001 No. 98; 2004 No. 395; 2008 Nos. 122 and 279; 2009 No. 332;

2011 No. 217; 2012 No. 66; No. 31, 2013; No 88, 2015; F2016L01754

r. 1.3A ........................................... ad. 2003 No. 213

r. 1.4 .............................................. am. 1991 No. 456; 1992 No. 148; 1993 Nos. 227 and 341

rs. 1995 Nos. 16 and 427

am. 1997 No. 345; 1998 Nos. 141 and 342; 1999 No. 349; 2000 No. 317; 2001 No. 345;

2002 Nos. 59 and 317; 2003 No. 316; 2005 No. 51; 2006 No. 55; 2007 No. 40; 2008

No. 279; 2009 No. 150; 2010 No. 181; 2011 No. 62; 2012 No. 66

rs. No. 31, 2013

r 1.4A ............................................ ad No 88, 2015

am No 88, 2015

r. 1.5 .............................................. am. 1995 No. 16

rs. 2001 No. 98

r. 1.6 .............................................. am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2008 No. 279; 2009 No. 332

rs. No. 31, 2013

r. 1.6A ........................................... rep. No. 31, 2013

r. 1.7 .............................................. am. 2001 No. 98

r. 1.8 .............................................. ad. 2009 No. 332

Chapter 2

r. 2.1 .............................................. am. 2001 No. 98; No 88, 2015

r. 2.2 .............................................. am. 1995 No. 16; 2001 No. 98; 2002 No. 59

rs. No. 31, 2013

r. 2.2A ........................................... ad. No. 31, 2013

r. 2.2B............................................ ad. No. 31, 2013

r. 2.2C............................................ ad. No. 31, 2013

r. 2.2D ........................................... ad. No. 31, 2013

r. 2.3 .............................................. am. 1995 No. 16; 2001 No. 98; 2002 No. 59

rs. No. 31, 2013

r. 2.4 .............................................. rs. 1995 No. 16

am. 2001 No. 98

r. 2.5 .............................................. am. 2001 No. 98

rs. 2007 No. 357

r. 2.6 .............................................. rs. 2001 No. 98

r. 2.7 .............................................. am. 1995 No. 16

rs. 2001 No. 98

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Endnotes

Endnote 4—Amendment history

28 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

Chapter 3

Part 1

Division 1

Division 1 heading......................... ad. No. 31, 2013

r. 3.1 .............................................. am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2003 No. 316; No. 31, 2013

r. 3.1A ........................................... ad. 2001 No. 98

am. No. 31, 2013

r. 3.2 .............................................. am. 1995 No. 16; 2000 No. 317

rs. 2001 No. 98; No 88, 2015

r. 3.2A ........................................... ad. 2001 No. 98

rs. 2009 No. 332

am. No. 31, 2013

r. 3.2AB......................................... ad. No. 31, 2013

r. 3.2B............................................ ad. 2001 No. 98

am. 2002 No. 59; No. 31, 2013

r 3.2C............................................. ad No 31, 2013

am No 88, 2015; F2016L01754

r. 3.3 .............................................. am. 1995 No. 16; 2002 No. 59; No. 31, 2013

r. 3.4 .............................................. am. 1995 No. 16; 2002 No. 59

r. 3.5 .............................................. am. 2000 No. 317

rs. 2001 No. 98

am. No. 31, 2013

r .3.5AA......................................... ad. No. 31, 2013

r. 3.5A ........................................... ad. 2001 No. 98

am. 2002 No. 59; 2008 No. 279; No. 31, 2013

r. 3.5AB......................................... ad. No. 31, 2013

r. 3.5AC......................................... ad. No. 31, 2013

r. 3.5AD......................................... ad. No. 31, 2013

r. 3.5AE ......................................... ad. No. 31, 2013

r. 3.5AF ......................................... ad. No. 31, 2013

r. 3.5AG......................................... ad. No. 31, 2013

r. 3.5B............................................ ad. 2001 No. 98

am. No. 31, 2013

r. 3.6 .............................................. rs. 2001 No. 98

r. 3.7 .............................................. am. 2001 No. 98

r. 3.8 .............................................. rs. 1995 No. 16

am. 2001 No. 98

r. 3.9 .............................................. rs. 2001 No. 98

r. 3.10 ............................................ am. 2001 No. 98

r 3.11 ............................................. rep No 98, 2001

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Endnotes

Endnote 4—Amendment history

Patents Regulations 1991 29

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

ad No 31, 2013

am No 88, 2015

Division 2

Division 2 heading......................... ad. No. 31, 2013

r 3.12 ............................................. am No 16, 1995; No 98, 2001; No 40, 2007

rs No. 31, 2013

am No 88, 2015

r. 3.13 ............................................ rs. 2001 No. 98; No. 31, 2013

r 3.13A .......................................... ad No. 31, 2013

am No 88, 2015

r 3.13B........................................... ad No 31, 2013

am No 88, 2015

r 3.13C........................................... ad No 31, 2013

am No 88, 2015

r 3.13D .......................................... ad No 31, 2013

am No 88, 2015

r 3.13E........................................... ad No 31, 2013

am No 88, 2015

r. 3.14 ............................................ am. 2001 No. 98; No. 31, 2013

Division 3

Division 3 heading......................... ad. No. 31, 2013

r. 3.14A.......................................... ad. No. 31, 2013

r. 3.14B.......................................... ad. No. 31, 2013

r. 3.14C.......................................... ad. No. 31, 2013

r. 3.14D.......................................... ad. No. 31, 2013

r 3.15 ............................................. am No 98, 2001; No 31, 2013; No 88, 2015

r. 3.16 ............................................ am. 2001 No. 98; No. 31, 2013

r. 3.17 ............................................ am. 2001 No. 98

r. 3.17A.......................................... ad. 2002 No. 59

am. 2002 No. 263, 2003 No. 71

rs. 2003 No. 213; No. 31, 2013

r. 3.17B.......................................... ad. 2003 No. 213

am. 2007 No. 357

rs. No. 31, 2013

r. 3.17C..........................................

................................................... ad.

ad. No. 31, 2013

r. 3.18 ............................................ am. 1995 No. 16; 2001 No. 98; 2007 No. 357; 2008 No. 279; No. 31, 2013

r. 3.19 ............................................ am. 1995 No. 16; 2001 No. 98; No. 31, 2013

r. 3.20 ............................................ am. 2001 No. 98; 2008 No. 279

rep. No. 31, 2013

Authorised Version F2016C00971 registered 15/11/2016

Endnotes

Endnote 4—Amendment history

30 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

r. 3.21 ............................................ am. 1995 No. 16; 2001 No. 98

rep. No. 31, 2013

r. 3.22 ............................................ am. 1995 No. 16

rep. 2001 No. 98

ad. 2008 No. 279

rs. 2009 No. 332

Part 2

r. 3.23 ............................................ am. 1995 No. 16; 2001 No. 98

r. 3.24 ............................................ am. 1995 No. 16

r. 3.25 ............................................ am. 1995 No. 16; 2001 No. 98

rs No 88, 2015

r 3.25A .......................................... ad No 88, 2015

r 3.25B........................................... ad No 88, 2015

r 3.25C........................................... ad No 88, 2015

r 3.25D .......................................... ad No 88, 2015

r 3.25E........................................... ad No 88, 2015

r 3.25F ........................................... ad No 88, 2015

r 3.25G .......................................... ad No 88, 2015

r 3.25H .......................................... ad No 88, 2015

r. 3.26 ............................................ am. 2001 No. 98

r. 3.27 ............................................ am. 2001 No. 98

r. 3.28 ............................................ am. 2001 No. 98

r. 3.29 ............................................ am. 2001 No. 98

r. 3.30 ............................................ am. 1995 No. 16; 2001 No. 98

r. 3.31 ............................................ am. 2001 No. 98

r 3.32 ............................................. ad No 88, 2015

Chapter 4

r. 4.1 .............................................. am. 2001 No. 98; No. 31, 2013

r. 4.2 .............................................. am. 1995 Nos. 16 and 82; 2001 No. 98

r. 4.3 .............................................. am. 1995 No. 16; 1998 No. 45; 1999 No. 261; 2002 No. 100; 2009 No. 332; No. 31, 2013

r. 4.4 .............................................. ad. No. 31, 2013

am F2016L01754

Chapter 5

Chapter 5 ....................................... rs. No. 31, 2013

Part 5.1

r. 5.1 .............................................. am. 1995 Nos. 16 and 82; 1997 No. 192; 1998 No. 319; 2001 No. 98

rs. No. 31, 2013

r. 5.2 .............................................. am. 2001 No. 98

rs. No. 31, 2013

r. 5.3 .............................................. am. 1995 Nos. 16 and 82; 1998 No. 319; 2001 No. 98

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Endnotes

Endnote 4—Amendment history

Patents Regulations 1991 31

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

rs. No. 31, 2013

Part 5.2

Division 5.2.1

r. 5.3AA......................................... ad. 2001 No. 98

rep. No. 31, 2013

r. 5.3A ........................................... ad. 1995 No. 16

am 2001 No 98

rep. No. 31, 2013

r. 5.3B............................................ ad. 2001 No. 98

rep. No. 31, 2013

r. 5.4 .............................................. am. 1993 No. 113; 1995 No. 82

rs. 2001 No. 98; No. 31, 2013

r. 5.5 .............................................. am. 2001 No. 98

rs. No. 31, 2013

r. 5.6 .............................................. am. 2001 No. 98

rs. No. 31, 2013

r. 5.7 .............................................. am. 2001 No. 98

rs. No. 31, 2013

r. 5.8 .............................................. am. 1995 Nos. 16 and 82; 2001 No. 98; 2002 No. 59

rs. No. 31, 2013

r. 5.9 .............................................. am. 1995 No. 16; 2000 No. 317; 2001 No. 98

rs. No. 31, 2013

r. 5.9A ........................................... ad. 2004 No. 250

rep. No. 31, 2013

Division 5.2.2

r. 5.10 ............................................ am. 1993 Nos. 113 and 340; 2000 No. 317; 2001 No. 98; 2002 No. 59; 2004 No. 250

rs. No. 31, 2013

r. 5.11 ............................................ am. 2001 No. 98

rs. No. 31, 2013

r. 5.12 ............................................ rs. 2001 No. 98

rs. No. 31, 2013

Part 5.3

r. 5.13 ............................................ am. 1995 No. 16

rs. 2001 No. 98; No. 31, 2013

r. 5.14 ............................................ rs. 2001 No. 98; No. 31, 2013

r. 5.15 ............................................ rs. No. 31, 2013

r. 5.16 ............................................ ad. No. 31, 2013

Part 5.4

r. 5.17 ............................................ ad. No. 31, 2013

r. 5.18 ............................................ ad. No. 31, 2013

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Endnotes

Endnote 4—Amendment history

32 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

Part 5.5

r. 5.19 ............................................ ad. No. 31, 2013

r. 5.20 ............................................ ad. No. 31, 2013

Part 5.6

r. 5.21 ............................................ ad. No. 31, 2013

r. 5.22 ............................................ ad. No. 31, 2013

r. 5.23 ............................................ ad. No. 31, 2013

r. 5.24 ............................................ ad. No. 31, 2013

r. 5.25 ............................................ ad. No. 31, 2013

r. 5.26 ............................................ ad. No. 31, 2013

Chapter 6

Part 1

Part 1 heading................................ ad. 1998 No. 319

r. 6.1 .............................................. am. 2001 No. 98

r. 6.1A ........................................... ad. No. 31, 2013

r. 6.2 .............................................. am. 2001 No. 98; No. 31, 2013

r. 6.2A ........................................... ad. No. 31, 2013

r. 6.3 .............................................. am. 1999 No. 261

rs. 2001 No. 98

am. No. 31, 2013

r. 6.4 .............................................. am. 2001 No. 98

rep. No. 31, 2013

r 6.5 ............................................... rep. 2001 No. 98

r 6.6 ............................................... rep. 2001 No. 98

r. 6.7 .............................................. am. 1995 No. 16

rep. 1995 No. 82

Part 2

Part 2 ............................................. ad. 1998 No. 319

r. 6.7 .............................................. ad. 1998 No. 319

r. 6.8 .............................................. ad. 1998 No. 319

r. 6.9 .............................................. ad. 1998 No. 319

r. 6.10 ............................................ ad. 1998 No. 319

r. 6.11 ............................................ ad. 1998 No. 319

am. 2001 No. 98

Chapter 6A

Chapter 6A .................................... ad. 2001 No. 98

rs. No. 31, 2013

r. 6A.1 ........................................... ad. 2001 No. 98

rs. No. 31, 2013

r. 6A.2 ........................................... ad. 2001 No. 98

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Endnotes

Endnote 4—Amendment history

Patents Regulations 1991 33

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

rs. 2007 No. 40; No. 31, 2013

Chapter 7

r. 7.1 .............................................. am. 2001 No. 98

r. 7.2 .............................................. am. 2001 No. 98

Chapter 8 ....................................... rep. No. 31, 2013

r. 8.1 .............................................. am. 1995 No. 16; 2001 No. 98; 2002 No. 59

rep. No. 31, 2013

r. 8.1A ........................................... ad. 1999 No. 184

rep. No. 31, 2013

r. 8.1B............................................ ad. 2003 No. 213

rep. 2004 No. 395

r. 8.2 .............................................. am. 1995 No. 16; 2001 No. 98

rep. No. 31, 2013

r. 8.3 .............................................. am. 1995 No. 16; 1999 No. 261; 2001 No. 98; 2003 No. 316; 2004 Nos. 193 and 395;

2007 No. 40

rep. No. 31, 2013

r. 8.4 .............................................. am. 1995 No. 16; 2001 Nos. 98 and 345; 2002 No. 100; 2004 No. 193; 2010 No. 181

rep. No. 31, 2013

r. 8.5 .............................................. am. 2001 No. 98

rep. No. 31, 2013

r. 8.6 .............................................. am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2008 No. 279; 2009 No. 332

rep. No. 31, 2013

r. 8.6A ........................................... ad. 2009 No. 332

rep. No. 31, 2013

r. 8.7 .............................................. am. 2001 No. 98

rep. No. 31, 2013

Chapter 9

r. 9.1 .............................................. am. 2001 No. 98

rs. 2002 No. 59

r. 9.2 .............................................. am. 2001 No. 98; No. 31, 2013

r. 9.3 .............................................. am. 2001 No. 98

r. 9.4 .............................................. am. 1995 No. 16; 2001 No. 98

r. 9.5 .............................................. am. 2001 No. 98

Chapter 9A

Chapter 9A .................................... ad. 2001 No. 98

r. 9A.1 ........................................... ad. 2001 No. 98

r. 9A.2 ........................................... ad. 2001 No. 98

r. 9A.2A......................................... ad. 2002 No. 59

am. 2002 No. 173; 2003 No. 213

rep. No. 31, 2013

Authorised Version F2016C00971 registered 15/11/2016

Endnotes

Endnote 4—Amendment history

34 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

r. 9A.2B......................................... ad. 2003 No. 213

am. 2007 No. 357

rep. No. 31, 2013

r. 9A.3 ........................................... ad. 2001 No. 98

r. 9A.4 ........................................... ad. 2001 No. 98

am. 2002 No. 59; 2008 No. 279; No. 31, 2013

r. 9A.5 ........................................... ad. 2001 No. 98

Chapter 10

r 10.1 ............................................. am No 16, 1995; No 98, 2001; No 316, 2003; No 31, 2013; No 88, 2015

r. 10.2 ............................................ am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2004 No. 395; No. 31, 2013

r. 10.2A.......................................... ad. No. 31, 2013

r. 10.2B.......................................... ad. No. 31, 2013

r. 10.2C.......................................... ad. No. 31, 2013

r. 10.3 ............................................ am. 1997 No. 345; 2001 No. 98

rs. No. 31, 2013

r. 10.4 ............................................ am. 2001 No. 98; No. 31, 2013

r. 10.5 ............................................ am. 1995 No. 16; 2001 No. 98; No. 31, 2013

r. 10.6 ............................................ rs. 1995 No. 16

am. No. 31, 2013

r. 10.6A.......................................... ad. 2011 No. 217

r. 10.6B.......................................... ad. No. 31, 2013

r. 10.7 ............................................ am. 2005 No. 51; No. 31, 2013

rs. No. 31, 2013

r. 10.8 ............................................ rs. 2001 No. 98

r. 10.9 ............................................ rep. 2001 No. 98

r. 10.10 .......................................... am. 2001 No. 98

r. 10.11 .......................................... am. 2001 No. 98

r. 10.12 .......................................... am. 2001 No. 98

r. 10.13 .......................................... rep. 2001 No. 98

r. 10.14 .......................................... am. 2001 No. 98

Chapter 11

r. 11.1 ............................................ am. 1997 No. 345; No. 31, 2013

Chapter 12

Part 1

Part 1 heading................................ ad No 88, 2015

r 12.1 ............................................. am No 98, 2001; No. 40, 2007;1 No 62, 2011; No 31, 2013; No 88, 2015

r 12.2 ............................................. am. 2001 No. 98; 2011 No. 62

Part 2

Part 2 ............................................. ad No 88, 2015

r 12.2A .......................................... ad No 88, 2015

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Endnote 4—Amendment history

Patents Regulations 1991 35

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

r 12.2B........................................... ad No 88, 2015

am No 88, 2015

r 12.2C........................................... ad No 88, 2015

r 12.2D .......................................... ad No 88, 2015

r 12.2E........................................... ad No 88, 2015

r 12.2F ........................................... ad No 88, 2015

Part 3

Part 3 heading................................ ad No 88, 2015

r. 12.3 ............................................ am. 2001 No. 98

r. 12.4 ............................................ am. 2001 No. 98

Chapter 13

r. 13.1 ............................................ am. 2001 No. 98

r. 13.1A.......................................... ad. 2001 No. 98

am. 2004 No. 395; No. 31, 2013

r. 13.1B.......................................... ad. 2004 No. 395

am. No. 31, 2013

r. 13.1C.......................................... ad. No. 31, 2013

r. 13.2 ............................................ am. 2001 No. 98

rep. No. 31, 2013

r. 13.3 ............................................ am. 1994 No. 317; 1998 No. 264; 2001 No. 98; 2002 Nos. 59, 100 and 173

r. 13.4 ............................................ rs. 1995 No. 16

am. 2000 No. 317; 2001 No. 98; 2002 No. 59; 2008

No. 279; No. 31, 2013

r. 13.5 ............................................ am. 2001 No. 98; 2004 No. 193

r. 13.5A.......................................... ad. No. 31, 2013

r. 13.6 ............................................ am. 1994 No. 317; 1995 No. 82; 1998 Nos. 264 and 319; 2001 No. 98; 2002 Nos. 59 and

173

r. 13.7 ............................................ ad. 2002 No. 59

Chapter 15

r. 15.1 ............................................ rs. 2001 No. 98

r. 15.2 ............................................ am. 2001 No. 98

r. 15.3 ............................................ am. 1995 No. 16

rs. 2001 No. 98

Chapter 17

r. 17.1 ............................................ rs. 2001 No. 98

r. 17.1A.......................................... ad. 2001 No. 98

r. 17.2 ............................................ am. 1995 No. 16; 2001 No. 98

Chapter 19

r. 19.1 ............................................ am. 2001 No. 98

r. 19.2 ............................................ am. 1995 No. 16; 2001 No. 98; 2002 No. 59; No. 31, 2013

Authorised Version F2016C00971 registered 15/11/2016

Endnotes

Endnote 4—Amendment history

36 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

Chapter 20

Chapter 20 heading........................

......................................................

rs. No. 31, 2013

Part 1

r. 20.1A.......................................... ad. No. 31, 2013

r 20.1B........................................... ad F2016L01754

r 20.1C........................................... ad F2016L01754

r. 20.1 ............................................ am. 1994 No. 387; 1998 Nos. 56 and 345; 2001 No. 98

rs. 2008 No. 122

am. No. 31, 2013; F2016L01754

Part 2

r. 20.2 ............................................ rs. 1998 No. 56; 2008 No. 122

r. 20.2A.......................................... ad. 1998 No. 345

rep. 2008 No. 122

r. 20.2B.......................................... ad. 1998 No. 345

rep. 2008 No. 122

r. 20.3 ............................................ rs. 1998 No. 345; 2008 No. 122

am. 2009 No. 150; 2012 No. 66; F2016L01754

r. 20.3A.......................................... ad. 1998 No. 345

rep. 2008 No. 122

r. 20.4 ............................................ am. 1998 No. 345; 2001 No. 98; 2002 No. 173

rs. 2008 No. 122

r. 20.5 ............................................ am. 1998 No. 345

rs. 2008 No. 122

r. 20.6 ............................................ am. 1998 No. 345

rs. 2008 No. 122

am. 2009 No. 150; F2016L01754

r. 20.7 ............................................ rs. 1998 No. 345

am. 2001 No. 98

rs. 2008 No. 122

r. 20.8 ............................................ am. 1998 No. 345

rs. 2008 No. 122

am. 2009 No. 150

r. 20.9 ............................................ am. 1998 No. 345; 1999 No. 154

rs. 2008 No. 122

r. 20.10 .......................................... am. 1998 No. 345

rs. 2008 No. 122

am F2016L01754

r. 20.11 .......................................... rs. 1998 No. 345

rs. 2008 No. 122

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Endnote 4—Amendment history

Patents Regulations 1991 37

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

r. 20.12 .......................................... am. 1998 No. 345

rs. 2008 No. 122

am F2016L01754

Part 3

r. 20.13 .......................................... am. 1998 No. 345

rs. 2008 No. 122

am. 2009 No. 150

r. 20.14 .......................................... am. 1998 No. 345

rs. 2008 No. 122

Part 4

r. 20.15 .......................................... am. 1998 No. 345

rs. 2008 No. 122

r. 20.16 .......................................... am. 1995 No. 16

rs. 1998 No. 345; 2008 No. 122

Division 3 heading......................... rs. 1998 No. 345

rep. 2008 No. 122

r. 20.17 .......................................... am. 1998 No. 345

rs. 2008 No. 122

r. 20.18 .......................................... am. 1998 No. 345

rs. 2008 No. 122

r. 20.19 .......................................... am. 1998 No. 345; 1999 Nos. 184 and 349; 2001 No. 98; 2002 No. 173

rs. 2008 No. 122

r. 20.19A........................................ ad. 1998 No. 345

am. 1999 No. 349; 2002 No. 173

rep. 2008 No. 122

r. 20.20 .......................................... am. 1998 No. 345

rs. 2008 No. 122

r. 20.21 .......................................... am. 1998 No. 345; 2001 No. 98

rs. 2008 No. 122

Part 5

r. 20.22 .......................................... am. 1998 No. 345

rs. 2008 No. 122

am. No. 31, 2013

r. 20.23 .......................................... am. 1998 No. 345

rs. 2008 No. 122

r. 20.24 .......................................... am. 2001 No. 98

rs. 2008 No. 122

r. 20.25 .......................................... am. 1998 No. 345; 2001 Nos. 98 and 345

rs. 2008 No. 122

Part 6

Authorised Version F2016C00971 registered 15/11/2016

Endnotes

Endnote 4—Amendment history

38 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

Part 6 heading................................ rs. No. 31, 2013

r 20. 26 .......................................... rs No 122, 2008

am N. 31, 2013

r. 20.27 .......................................... am. 2001 No. 345

rs. 2008 No. 122

r. 20.28 .......................................... rs. 2008 No. 122

am. No. 31, 2013

Part 6A

Part 6A .......................................... ad. No. 31, 2013

r. 20.28A........................................ ad. No. 31, 2013

r. 20.28B........................................ ad. No. 31, 2013

am F2016L01754

Part 7

Part 7 heading................................ rs. No. 31, 2013

r. 20.29 .......................................... am. 1998 No. 345; 2001 No. 345

rs. 2008 No. 122

am. No. 31, 2013

r. 20.30 .......................................... am. 1998 No. 345; 2001 No. 345

rs. 2008 No. 122

am. No. 31, 2013

r. 20.31 .......................................... am. 2001 No. 98

rs. 2008 No. 122

am. 2012 No. 66; No. 31, 2013

Part 8

Division 1

Division 1 heading......................... rs. 1998 No. 56

rep. 2008 No. 122

Division 1 heading......................... ad. 2008 No. 122

r. 20.32 .......................................... am. 1994 No. 387; 1995 No. 82

rs. 1998 No. 56

am. 1998 No. 345

rs. 2008 No. 122

am. No. 31, 2013

r. 20.33 .......................................... rep. 1998 No. 56

ad. 2008 No. 122

r. 20.34 .......................................... rs. 1998 Nos. 56 and 345; 2008 No. 122

r. 20.35 .......................................... rs. 1998 No. 56; 2008 No. 122

am F2016L01754

Division 2

r. 20.36 .......................................... rep. 1998 No. 56

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Endnotes

Endnote 4—Amendment history

Patents Regulations 1991 39

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

ad. 2008 No. 122

rs F2016L01754

r 20.36A......................................... ad F2016L01754

r 20.36B......................................... ad F2016L01754

r 20.36C......................................... ad F2016L01754

r 20.36D......................................... ad F2016L01754

r 20.36E......................................... ad F2016L01754

r. 20.37 .......................................... am. 1994 No. 387

rs. 2008 No. 122

am F2016L01754

r. 20.38 .......................................... am. 1994 No. 387

rs. 2008 No. 122

am F2016L01754

r. 20.39 .......................................... am. 1994 No. 387

rs. 1998 No. 56; 2008 No. 122

am F2016L01754

r. 20.40 .......................................... am. 1994 No. 387

rs. 1998 No. 56; 2008 No. 122

am F2016L01754

Division 2 heading......................... rs. 1998 No. 345

rep. 2008 No. 122

r. 20.41 .......................................... am. 1998 No. 345

rs. 2008 No. 122

am F2016L01754

r. 20.42 .......................................... am. 2001 No. 98

rs. 2008 No. 122

am F2016L01754

r. 20.43 .......................................... am. 1997 No. 345; 2001 No. 98

rs. 2008 No. 122

am F2016L01754

r. 20.44 .......................................... am. 2001 No. 98

rs. 2008 No. 122

am. No. 31, 2013; F2016L01754

r. 20.45 .......................................... rs. 2008 No. 122

am F2016L01754

r. 20.46 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.47 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.48 .......................................... ad. 2008 No. 122

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Endnotes

Endnote 4—Amendment history

40 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

rs F2016L01754

r. 20.49 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.50 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.51 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.52 .......................................... ad. 2008 No. 122

am 2008 No 279; F2016L01754

Part 9

r. 20.53 .......................................... ad. 2008 No. 122

Part 10

Division 1

Division 1 heading......................... rs F2016L01754

r. 20.54 .......................................... ad. 2008 No. 122

rep F2016L01754

r. 20.55 .......................................... ad. 2008 No. 122

rep F2016L01754

r. 20.56 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.57 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.58 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.59 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.60 .......................................... ad. 2008 No. 122

rep F2016L01754

Division 2

Division 2 heading......................... rs F2016L01754

r. 20.61 .......................................... ad. 2008 No. 122

rs F2016L01754

r 20.61A......................................... ad F2016L01754

r. 20.62 .......................................... ad. 2008 No. 122

am F2016L01754

r. 20.63 .......................................... ad. 2008 No. 122

rs F2016L01754

r 20.63A......................................... ad F2016L01754

r 20.63B......................................... ad F2016L01754

r. 20.64 .......................................... ad. 2008 No. 122

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Endnote 4—Amendment history

Patents Regulations 1991 41

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Provision affected How affected

rs F2016L01754

r. 20.65 .......................................... ad. 2008 No. 122

rep F2016L01754

Chapter 20A

Chapter 20A .................................. ad. No. 31, 2013

Part 1

r. 20A.1.......................................... ad. No. 31, 2013

r 20A.1A........................................ ad F2016L01754

r 20A.1B........................................ ad F2016L01754

r. 20A.2.......................................... ad. No. 31, 2013

Part 2

r. 20A.3.......................................... ad. No. 31, 2013

am F2016L01754

r. 20A.4.......................................... ad. No. 31, 2013

Part 3

r. 20A.5.......................................... ad. No. 31, 2013

Part 4

r. 20A.6.......................................... ad. No. 31, 2013

r. 20A.7.......................................... ad. No. 31, 2013

r. 20A. 8......................................... ad. No. 31, 2013

Part 5

Division 1

r. 20A.9.......................................... ad. No. 31, 2013

r. 20A.10........................................ ad. No. 31, 2013

am F2016L01754

Division 2

r. 20A.11........................................ ad. No. 31, 2013

rs F2016L01754

r 20A.11A...................................... ad F2016L01754

r 20A.11B...................................... ad F2016L01754

r 20A.11C...................................... ad F2016L01754

r 20A.11D...................................... ad F2016L01754

r 10A.11E ...................................... ad F2016L01754

r. 20A.12........................................ ad. No. 31, 2013

am F2016L01754

r. 20A.13........................................ ad. No. 31, 2013

am F2016L01754

r. 20A.14........................................ ad. No. 31, 2013

am F2016L01754

r. 20A.15........................................ ad. No. 31, 2013

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Endnotes

Endnote 4—Amendment history

42 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

am F2016L01754

r. 20A.16........................................ ad. No. 31, 2013

am F2016L01754

r. 20A.17........................................ ad. No. 31, 2013

am F2016L01754

r. 20A.18........................................ ad. No. 31, 2013

am F2016L01754

r. 20A.19........................................ ad. No. 31, 2013

am F2016L01754

r. 20A.20........................................ ad. No. 31, 2013

am F2016L01754

r. 20A.21........................................ ad. No. 31, 2013

am F2016L01754

Part 6

r. 20A.22........................................ ad. No. 31, 2013

am F2016L01754

Chapter 21

r. 21.1 ............................................ am. 1999 No. 184

r. 21.2 ............................................ ad. 1994 No. 182

rs. 1998 No. 257; 1999 No. 184

Chapter 22

Part 1

Division 1

r. 22.1 ............................................ am. 1998 Nos. 241 and 342

r. 22.2 ............................................ am. 1991 No. 456; 1993 No. 113; 1994 No. 317; 1997 No. 345; 2001 No. 98; 2002

No. 173; 2003 No. 316; 2010 No. 181; 2012 No. 66; No. 31, 2013; F2016L01306

r. 22.2AA....................................... ad. 2012 No. 66

r. 22.2A.......................................... ad. 1998 No. 241

rs. 2001 No. 98

r. 22.2B.......................................... ad. 2001 No. 98

am. 2002 No. 173; No. 31, 2013

r. 22.2C.......................................... ad. 2001 No. 98

am. 2002 Nos. 59 and 173; 2003 No. 213; No. 31, 2013; F2016L01306

r. 22.2D.......................................... ad. 2001 No. 98

am. 2002 No. 173

r. 22.2E.......................................... ad. 2001 No. 98

am. 2002 No. 173

rep. No. 31, 2013

r. 22.2EA ....................................... ad. 2010 No. 181

rs. 2011 No. 62

Authorised Version F2016C00971 registered 15/11/2016

Endnotes

Endnote 4—Amendment history

Patents Regulations 1991 43

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

r. 22.2F .......................................... ad. 2001 No. 98

am. 2002 No. 173; 2010 No. 181; No. 31, 2013

r. 22.2G.......................................... ad. 2001 No. 98

am. 2002 No. 173; 2012 No. 66

r. 22.2H.......................................... ad. 2001 No. 98

am. 2002 No. 173; F2016L01306

r. 22.2I ........................................... ad. 2002 No. 173

r. 22.3 ............................................ am. 1995 No. 16; 2001 No. 98; 2002 No. 173

r. 22.4 ............................................ am. 1995 Nos. 16 and 427; 1998 No. 342; 2003 No. 316

r. 22.5 ............................................ am. 1995 No. 16; 2001 No. 98; No 88, 2015

r. 22.6 ............................................ am. 1995 No. 16; 2001 No. 98

r. 22.7 ............................................ am. 1995 No. 16

Division 2

r. 22.7A.......................................... ad. 1993 No. 340

r. 22.8 ............................................ am. 1993 No. 340; 1995 No. 16; 2001 No. 98

Part 2

r. 22.8A.......................................... ad. 2001 No. 98

rep. 2009 No. 332

r. 22.9 ............................................ am. 2001 No. 98

r. 22.10 .......................................... am. 2001 No. 98; 2011 No. 62; No. 31, 2013; F2016L01754

r. 22.10A........................................ ad. 2001 No. 98

r. 22.10AA..................................... ad. 2007 No. 40

am. No. 31, 2013

r. 22.10AB..................................... ad. 2007 No. 40

am 2011 No. 62; 2011 No 217; No. 31, 2013;

r. 22.10AC..................................... ad. 2007 No. 40

rs. No. 31, 2013

r. 22.11 .......................................... am. 1993 No. 113; 1995 No. 82; 1998 Nos. 241, 264 and 319; 2001 No. 98; 2002 No. 59;

2004 No. 250; 2008 No. 122; No. 31, 2013

r. 22.12 .......................................... am. No. 31, 2013

r. 22.13 .......................................... am. 1995 No. 16; 2009 No. 150

rs. 2012 No. 66

am F2016L01754

r. 22.15 .......................................... am. 1995 No. 16

rs. 1998 No. 141

am. 2003 No. 213

rs. No. 31, 2013

am No 88, 2015

r. 22.16 .......................................... am. 2001 No. 98; 2009 No. 332; No. 31, 2013

r 22.18 ........................................... rep No 88, 2015

Authorised Version F2016C00971 registered 15/11/2016

Endnotes

Endnote 4—Amendment history

44 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

r. 22.20 .......................................... am. 1995 No. 16

r. 22.21 .......................................... am. 2001 No. 98; No. 31, 2013

r. 22.22 ..........................................

......................................................

rs. No. 31, 2013

r. 22.23 .......................................... am. 1995 No. 16

rs. No. 31, 2013

r. 22.26 .......................................... am. 1995 No. 16; 1998 Nos. 45, 291 and 345; 2001 No. 98; 2004 No. 395; 2005 No. 51;

2008 No. 122; No. 31, 2013; No 88, 2015; F2016L01754

r. 22.27 .......................................... ad. No. 31, 2013

Chapter 23

Part 1

Part 1 heading................................ ad. No. 31, 2013

r. 23.2 ............................................ am. 2001 No. 98

r. 23.3 ............................................ am. 1995 No. 16; 2001 No. 98

r. 23.4 ............................................ am. 1995 Nos. 16 and 82; 2001 No. 98

r. 23.5 ............................................ am. 2001 No. 98

r. 23.6 ............................................ am. 2001 No. 98

r. 23.7 ............................................ am. 2001 No. 98

r. 23.8 ............................................ am. 1995 No. 16

r. 23.9 ............................................ am. 1994 No. 317

r. 23.10 .......................................... am. 1994 No. 317; 1995 No. 16; 1997 No. 345

r. 23.11 .......................................... am. 1995 No. 16; 2001 No. 98

r. 23.12 .......................................... am. 2001 No. 98

r. 23.13 .......................................... am. 2001 No. 98

r. 23.14 .......................................... am. 1995 No. 16

r. 23.16 .......................................... am. 2001 No. 98

r. 23.17 .......................................... am. 1995 No. 16; 2001 No. 98

r. 23.18 .......................................... am. 1995 No. 16

r. 23.19 .......................................... am. 2001 No. 98

rep. 2008 No. 122

r. 23.20 .......................................... am. 1995 No. 16; 2001 No. 98

rep. 2008 No. 122

r. 23.21 .......................................... am. 2001 No. 98

rep. 2008 No. 122

r. 23.22 .......................................... am. 2001 No. 98

rep. 2008 No. 122

r. 23.23 .......................................... am. 2001 No. 98

rep. 2008 No. 122

r. 23.24 .......................................... rep. 2008 No. 122

r. 23.25 .......................................... am. 1995 No. 16; 2001 No. 98

Authorised Version F2016C00971 registered 15/11/2016

Endnotes

Endnote 4—Amendment history

Patents Regulations 1991 45

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

r. 23.27 .......................................... ad. 1998 No. 345

rep. 2008 No. 122

r. 23.28 .......................................... ad. 1998 No. 345

rep. 2008 No. 122

r. 23.29 .......................................... ad. 1998 No. 345

rep. 2008 No. 122

r. 23.30 .......................................... ad. 1998 No. 345

rep. 2008 No. 122

r. 23.31 .......................................... ad. 1998 No. 345

rep. 2008 No. 122

r. 23.32 .......................................... ad. 2001 No. 98

r. 23.33 .......................................... ad. 2001 No. 98

r. 23.34 .......................................... ad. 2001 No. 98

r. 23.35 .......................................... ad. 2001 No. 98

Part 2

Part 2 ............................................. ad. No. 31, 2013

r 23.36 ........................................... ad No 31, 2013

r 23.37 ........................................... ad No 88, 2015

Part 3

Part 3 ............................................. ad F2016L01754

r 23.38 ........................................... ad F2016L01754

r 23.39 ........................................... ad F2016L01754

r 23.40 ........................................... ad F2016L01754

r 23.41 ........................................... ad F2016L01754

r 23.42 ........................................... ad F2016L01754

r 23.43 ........................................... ad F2016L01754

r 23.44 ........................................... ad F2016L01754

r 23.45 ........................................... ad F2016L01754

Schedule 1 ..................................... am. 1995 No. 16

rep. No. 31, 2013

Schedule 1A heading..................... ad. 1995 No. 16

rep. No. 31, 2013

Schedule 1A .................................. am. 1995 No. 16; 2002 No. 317

rep. No. 31, 2013

Schedule 2 ..................................... am. 1991 No. 456

rs. 1992 No. 148

am. 1993 Nos. 227 and 341; 1995 No. 16; 2002 No. 59

rep. No. 31, 2013

Schedule 2A heading..................... ad. 1995 No. 16

rep. No. 31, 2013

Authorised Version F2016C00971 registered 15/11/2016

Endnotes

Endnote 4—Amendment history

46 Patents Regulations 1991

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

Schedule 2A .................................. am. 1995 Nos. 16 and 427; 1997 No. 345

rs. 1998 No. 141

am. 1998 No. 342; 1999 No. 349; 2000 No. 317; 2001 No. 345; 2002 Nos. 59 and 317;

2003 No. 316; 2005 No. 51; 2006 No. 55; 2007 No. 40; 2008 Nos. 178 and 279; 2009

No. 150; 2010 No. 181; 2011 No. 62; 2012 No. 66

rep. No. 31, 2013

Schedule 3

Schedule 3 heading........................ rs. 2001 No. 98; 2009 No. 332; No. 31, 2013

Schedule 3 ..................................... am. 1995 No. 16; 1998 No. 141; 2000 No. 317; 2001 No. 98; 2003 No. 213; 2011

No. 62; No 88, 2015

Schedule 4 ..................................... rs. 1991 No. 456

am. 1992 No. 148

rs. 1993 No. 340

am. 1994 No. 182; 1995 Nos. 20 and 427

rs. 1996 No. 271; 1997 No. 345

am. 1998 Nos. 257 and 342; 1999 No. 349; 2002 Nos. 173 and 317; 2004 Nos. 23 and

193; 2005 No. 51; 2007 No. 40; 2008 No. 279; 2012 No. 66

rep. No. 31, 2013

Schedule 5

Schedule 5 ..................................... am. 1994 No. 387

rs. 1998 No. 345; 2008 No. 122

am F2016L01754

Schedule 6 ..................................... am. 1998 No. 345; 2001 No. 184

rep. 2008 No. 279

Schedule 6A .................................. ad. 1994 No. 182

rs. 1997 No. 192

am. 1997 No. 345

rs. 1998 No. 257

rep. 1999 No. 184

Schedule 7

Schedule 7 ..................................... am. 1991 No. 456

rs. 1992 No. 148

am. 1993 Nos. 113 and 340; 1994 No. 317; 1995 Nos. 16, 82 and 427; 1997 Nos. 192 and

345; 1998 Nos. 264, 319, 342 and 345; 1999 Nos. 261 and 349; 2000 No. 317; 2001 Nos.

98 and 345; 2002 Nos. 59 and 173; 2003 Nos. 213 and 316; 2006 No. 355; 2007 No. 40;

2008 Nos. 122 and 178; 2010 No. 181

rs. 2012 No. 66

am. 2012 Nos. 66 and 221; No. 31, 2013; No 88, 2015; F2016L01306

Authorised Version F2016C00971 registered 15/11/2016

Endnotes

Endnote 4—Amendment history

Patents Regulations 1991 47

Compilation No. 62 Compilation date: 15/11/16 Registered: 15/11/16

Provision affected How affected

Schedule 8

Schedule 8 ..................................... am. 1992 No. 148

rs. 1993 No. 113

am. 1993 No. 340; 1994 No. 317; 1998 No. 345; 1999 No. 184; 2006 No. 355;

F2016L01754

Authorised Version F2016C00971 registered 15/11/2016


立法 取代 (7 文本) 取代 (7 文本) 被以下文本取代 (4 文本) 被以下文本取代 (4 文本)
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