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Patents Regulations (Amendment)

Authoritative Version
  • - F1996B02701
  • No longer in force
SR 1993 No. 227 Regulations as made
These Regulations amend the Patents Regulations.
Administered by: DITR
General Comments: This instrument was backcaptured in accordance with Section 36 of the Legislative Instruments Act 2003
Registered 01 Jan 2005
Tabling HistoryDate
Tabled HR02-Sep-1993
Tabled Senate06-Sep-1993
Gazetted 26 Aug 1993
Date of repeal 09 Aug 2013
Repealed by Industry, Innovation, Climate Change, Science, Research and Tertiary Education (Spent and Redundant Instruments) Repeal Regulation 2013

Statutory Rules 1993   No. 2271

__________________

Patents Regulations2 (Amendment)

I, The Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following Regulations under the Patents Act 1990.

         Dated 19 August 1993.

 

                                                                                    BILL HAYDEN

                                                                                   Governor-General

         By His Excellency’s Command,

 

 

C. SCHACHT

Minister for Science and Small Business

____________

1.   Commencement

1.1   Subregulations 3.1, 4.1 and 4.4 are taken to have commenced on 1 October 1992.

1.2   The remainder of these Regulations are taken to have commenced on 1 January 1993.

2.    Amendment

2.1   The Patents Regulations are amended as set out in these Regulations.

3.    Regulation 1.4 (English text of Treaties)

3.1   Subregulation 1.4 (2):

Omit “1 July 1992”, substitute “1 October 1992”.

3.2   Subregulation 1.4 (2):

Omit “1 October 1992”, substitute “1 January 1993”.

4.   Schedule 2 (Patent Cooperation Treaty)

4.1   Table of Provisions (portion relating to the Regulations):

Omit “Rule 32  [Deleted]”, substitute:

“Rule 32             Extension of Effects of International Application to                      Certain Successor States

          32.1           Request for Extension of International Application                        to Successor State

          32.2           Effects of Extension to Successor State”.

4.2   Table of Provisions (portion relating to the Regulations):

Omit “Rule 55.1  The Demand”, substitute :

“Rule 55.1          Language of Demand

          55.2           Translation of International Application

          55.3           Translation of Amendments”.

4.3   Regulations (note after heading):

Omit “and on October 2, 1991”, substitute “, October 2, 1991 and on September 29, 1992”.

4.4   Regulations (new Rule 32):

After Rule 31, insert:

Rule 32

Extension of Effects of International Application to

Certain Successor States

“32.1         Request for Extension of International Application to Successor State

          (a)    The effects of any international application whose international filing date falls in the period defined in paragraph (b) may, subject to the performance by the applicant of the acts specified in paragraph (c), be extended to a State (“the successor State”) whose territory was, before the independence of that State, part of the territory of a Contracting State which subsequently ceased to exist (“the predecessor State”), provided that the successor State has become a Contracting State through the deposit, with the Director General, of a declaration of continuation the effect of which is that the Treaty is applied by the successor State.

          (b)    The period referred to in paragraph (a) starts on the day following the last day of the existence of the predecessor State and ends two months after the date on which the declaration referred to in paragraph (a) was notified by the Director General to the Governments of the States party to the Paris Convention for the Protection of Industrial Property. However, where the date of independence of the successor State is earlier than the date of the day following the last day of the existence of the predecessor State, the successor State may declare that the said period starts on the date of its independence; such a declaration shall be made together with the declaration referred to in paragraph (a) and shall specify the date of independence.

          (c)     In respect of any international application whose filing date falls within the applicable period under paragraph (b), the International Bureau shall send the applicant a notification informing him that he may make a request for extension by performing, within three months from the date of that notification, the following acts:

              (i)   filing with the International Bureau the request for extension;

             (ii)   paying to the International Bureau an extension fee in Swiss francs, the amount of which shall be the same as the amount of the designation fee referred to in Rule 15.2 (a).

          (d)    This Rule shall not apply to the Russian Federation.

“32.2         Effects of Extension to Successor State

          (a)    Where a request for extension is made in accordance with Rule 32.1,

                          (i)   the successor State shall be considered as having been designated in the international application, and

                         (ii)   the applicable time limit under Article 22 or 39 (1) in relation to that State shall be extended until the expiration of at least three months from the date of the request for extension.

          (b)    Where, in the case of a successor State which is bound by Chapter II of the Treaty, the request for extension was made after, but the demand was made before, the expiration of the 19th month from the priority date, and a later election is made of the successor State within three months from the date of the request for extension, the applicable time limit under paragraph (a) (ii) shall be at least 30 months from the priority date.

          (c)     The successor State may fix time limits which expire later than those provided in paragraphs (a) (ii) and (b). The International Bureau shall publish information on such time limits in the Gazette.”.

4.5   Regulations (Rule 37.2):

Add at the end:

“Such title shall be established in the language in which the international application is published or, if a translation was transmitted under Rule 12.1 (c) and the International Searching Authority so wishes, in the language of that translation.”.

4.6   Regulations (Rule 38.2, paragraph (a)):

Omit the paragraph, substitute:

“38.2         Establishment of Abstract

          (a)    If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract. Such abstract shall be established in the language in which the international application is published or, if a translation was transmitted under Rule 12.1 (c) and the International Searching Authority so wishes, in the language of that translation.”.

4.7   Regulation (Rule 43.4):

After “published”, add “or, if a translation was transmitted under Rule 12.1 (c) and the International Searching Authority so wishes, in the language of that translation”.

 

4.8   Regulations (Rule 55.1):

Omit the Rule, substitute:

“55.1         Language of Demand

          The demand shall be in the language of the international application or, if the international application has been filed in a language other than the language in which it is published, in the language of publication. However, if a translation of the international application is required under Rule 55.2, the demand shall be in the language of that translation.

“55.2         Translation of International Application

          (a)    Where the international application is neither filed nor published in the language, or one of the languages, specified in the agreement concluded between the International Bureau and the International Preliminary Examining Authority competent for the international preliminary examination of that application, that Authority may require that, subject to paragraph (b), the applicant furnish with the demand a translation of the international application into the language, or one of the languages, specified in the said agreement.

          (b)    Where a translation of the international application into a language referred to in paragraph (a) was transmitted to the International Searching Authority under Rule 12.1 (c) and the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the applicant need not furnish a translation under paragraph (a). In such a case, unless the applicant furnishes a translation under paragraph (a), the international preliminary examination shall be carried out on the basis of the translation transmitted under Rule 12.1 (c).

          (c)     If the requirement of paragraph (a) is not complied with and paragraph (b) does not apply, the International Preliminary Examining Authority shall invite the applicant to furnish the required translation within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.


          (d)    If the applicant complies with the invitation within the time limit under paragraph (c), the said requirement shall be considered to have been complied with. If the applicant fails to do so, the demand shall be considered not to have been submitted.

          (e)     Paragraphs (a) to (d) shall apply only where the International Preliminary Examining Authority has declared, in a notification addressed to the International Bureau, that it accepts to carry out international preliminary examination on the basis of the translation referred to in those paragraphs.

“55.3         Translation of Amendments

          (a)    Where a translation of the international application is required under Rule 55.2, any amendments which are referred to in the statement concerning amendments under Rule 59.3 and which the applicant wishes to be taken into account for the purposes of the international preliminary examination, and any amendments under Article 19 which are to be taken into account under Rule 66.1 (c), shall be in the language of that translation. Where such amendments have been or are filed in another language, a translation shall also be furnished.

          (b)    Where the required translation of an amendment referred to in paragraph (a) is not furnished, the International Preliminary Examining Authority shall invite the applicant to furnish the missing translation within a time limit which shall be reasonable under the circumstances. That time limit shall not be less than one month from the date of the invitation. It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.

          (c)     If the applicant fails to comply with the invitation within the time limit under paragraph (b), the amendment shall not be taken into account for the purposes of the international preliminary examination.”.

4.9   Regulations (Rule 60.1, paragraph (a)):

Omit “55”, substitute “55.1”.

4.10   Regulations (Rule 61.1, paragraph (b)):

After “54.4 (a),”, insert “55.2 (d),”.

4.11   Regulations (Rule 66.9):

Omit “If”, substitute “(a)   Subject to paragraphs (b) and (c), if”.


4.12   Regulations (Rule 66.9):

Add at the end:

          “(b)  If the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, any amendment, as well as any letter referred to in paragraph (a), shall be submitted in the language of that translation.

          (c)     Subject to Rule 55.3, if an amendment or a letter is not submitted in a language as required under paragraph (a) or (b), the International Preliminary Examining Authority shall, if practicable having regard to the time limit for establishing the international preliminary examination report, invite the applicant to furnish the amendment or letter in the required language within a time limit which shall be reasonable under the circumstances.

          (d)    If the applicant fails to comply, within the time limit under paragraph (c), with the invitation to furnish an amendment in the required language, the amendment shall not be taken into account for the purposes of the international preliminary examination. If the applicant fails to comply, within the time limit under paragraph (c), with the invitation to furnish a letter referred to in paragraph (a) in the required language, the amendment concerned need not be taken into account for the purposes of the international preliminary examination.”.

4.13   Regulations (Rule 70.17, paragraph (a)):

Add at the end “, or, if the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, in the language of that translation”.

4.14   Regulations (Rule 74.1):

Omit the Rule, substitute:

“74.1         Contents of Translation and Time Limit for Transmittal                Thereof

(a)    Where the furnishing of a translation of the international application is required by the elected Office under Article 39 (1), the applicant shall, within the time limit applicable under Article 39 (1), transmit a translation of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination report, unless such sheet is in the language of the required translation


of the international application. The same time limit shall apply where the furnishing of a translation of the international application to the elected Office must, because of a declaration made under Article 64 (2) (a) (i), be effected within the time limit applicable under Article 22.

(b)    Where the furnishing under Article 39 (1) of a translation of the international application is not required by the elected Office, that Office may require the applicant to furnish, within the time limit applicable under that Article, a translation into the language in which the international application was published of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination and is not in that language.”.

4.15   Regulations (Rule 92.2, paragraph (a)):

Omit the second sentence, substitute “However, where a translation of the international application has been transmitted under Rule 12.1 (c) or furnished under Rule 55.2 (a) or (c), the language of such translation shall be used.”.

 

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NOTES

1.   Notified in the Commonwealth of Australia Gazette on  26 August 1993.

2.   Statutory Rules 1991 No. 71 as amended by 1991 No. 456; 1992 No. 148; 1993 No. 113.