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Patents Regulations (Amendment)

Authoritative Version
  • - F1996B02703
  • No longer in force
SR 1993 No. 341 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 HR16-Dec-1993
Tabled Senate16-Dec-1993
Gazetted 10 Dec 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Repealed by Industry, Innovation, Climate Change, Science, Research and Tertiary Education (Spent and Redundant Instruments) Repeal Regulation 2013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. 3411

__________________

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 2 December 1993.

 

                                                                                    BILL HAYDEN

                                                                                   Governor-General

By His Excellency’s Command,

 

 

C. SCHACHT

Minister for Science and Small Business

____________

1.   Commencement

1.1   These Regulations commence on 1 January 1994.

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   Omit “1993”, substitute “1994”.

4.   Schedule 2 (Patent Cooperation Treaty), Table of Provisions (portion relating to the Regulations)

4.1   After item relating to Rule 4.14, insert:

“4.14bis     Choice of  International Searching Authority”.

4.2   Item relating to Rule 18.1:

After “Residence”, add “and Nationality”.

4.3   Item relating to Rule 18.2:

Omit the item.

4.4   After item relating to Rule 19.3, insert:

“19.4         Transmittal to the International Bureau as Receiving            Office”.

4.5   After item relating to Rule 35.2, insert:

“35.3         When the International Bureau is Receiving Office under             Rule 19.1 (a) (iii)”.

4.6   Item relating to Rule 54.3:

Omit the item, substitute:

“54.3         International Applications Filed with the International                  Bureau as Receiving Office”.

4.7   After item relating to Rule 83.1, insert:

“83.1bis       Where the International Bureau is the Receiving Office”.

5.   Schedule 2 (Patent Cooperation Treaty), Regulations

5.1   Note after heading:

Omit “October 2, 1991 and on September 29, 1992”, substitute “on October 2, 1991, on September 29, 1992 and on September 29, 1993”.

5.2   Rule 4.1, subparagraph (b) (v):

Omit the subparagraph, substitute:

           “(v)   a reference to a parent application or a parent patent,

            (vi)   an indication of the applicant’s choice of competent International Searching Authority.”.

5.3   New Rule 4.14bis:

After Rule 4.14, insert:

“4.14bis     Choice of  International Searching Authority

          If two or more International Searching Authorities are competent for the searching of the international application, the applicant shall indicate his choice of International Searching Authority in the request.”.

5.4   Rule 10.1, paragraph (f):

Before “English” (twice occurring), insert “Chinese,”.

5.5   Rule 11.9, paragraphs (b) and (e):

Before “Japanese”, insert “Chinese or”.

5.6   Rule 18.1:

Omit the Rule, substitute:

“18.1         Residence and Nationality

          (a)    Subject to the provisions of paragraphs (b) and (c), the question whether an applicant is a resident or national of the Contracting State of which he claims to be a resident or national shall depend on the national law of that State and shall be decided by the receiving Office.

          (b)    In any case,

                          (i)   possession of a real and effective industrial or commercial establishment in a Contracting State shall be considered residence in that State, and

                         (ii)   a legal entity constituted according to the national law of a Contracting State shall be considered as a national of that State.

             (c)   Where the international application is filed with the International Bureau as receiving Office, the International Bureau shall, in the circumstances specified in the Administrative Instructions, request the national Office of, or acting for, the Contracting State concerned to decide the question referred to in paragraph (a). The International Bureau shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the national Office. The national Office shall decide the said question promptly.”.

5.7   Rule 18.2:

Omit the Rule.

5.8   Rule 19.1, paragraph (a):

Omit the paragraph, substitute:

          “(a)  Subject to the provisions of paragraph (b), the international application shall be filed, at the option of the applicant,

              (i)   with the national Office of or acting for the Contracting State of which the applicant is a resident,

             (ii)   with the national Office of or acting for the Contracting State of which the applicant is a national, or

           (iii)   irrespective of the Contracting State of which the applicant is a resident or national, with the International Bureau.”.

5.9   Rule 19.2:

Omit the Rule, substitute:

“19.2         Two or More Applicants

If there are two or more applicants:

              (i)   the requirements of Rule 19.1 shall be considered to be met if the national Office with which the international application is filed is the national Office of or acting for a Contracting State of which at least one of the applicants is a resident or a national;

             (ii)   the international application may be filed with the International Bureau under Rule 19.1 (a) (iii) if at least one of the applicants is a resident or national of a Contracting State.”.

5.10   New Rule 19.4:

After Rule 19.3, insert:

“19.4         Transmittal to the International Bureau as Receiving Office

          (a)    Where an international application is filed with a national Office which acts as a receiving Office under the Treaty by an applicant who is a resident or national of a Contracting State, but that national Office is not competent under Rule 19.1 or 19.2 to receive that international application, that international application  shall, subject to paragraph (b), be considered to have been received by that Office on behalf of the International Bureau as receiving Office under Rule 19.1 (a) (iii).

          (b)    Where, pursuant to paragraph (a), an international application is received by a national Office on behalf of the International Bureau as receiving Office under Rule 19.1 (a) (iii), that national Office shall, unless prescriptions concerning national security prevent the international application from being so transmitted, promptly transmit it to the International Bureau. Such transmittal may be subjected by the national Office to the payment of a fee, for its own benefit, equal to the transmittal fee charged by that Office under Rule 14. The international application so transmitted shall be considered to have been received by the International Bureau as receiving Office under Rule 19 (1) (a) (iii) on the date of receipt of the international application by that national Office.”.

5.11   New Rule 35.3:

After Rule 35.2, insert:

“35.3         When the International Bureau Is Receiving Office Under Rule 19.1 (a) (iii)

          (a)    Where the international application is filed with the International Bureau as receiving Office under Rule 19.1 (a) (iii), an International Searching Authority shall be competent for the searching of that international application if it would have been competent had that international application been filed with a receiving Office competent under Rule 19.1 (a) (i) or (ii), (b) or (c) or Rule 19.2 (i).

          (b)    Where two or more International Searching Authorities are competent under paragraph (a), the choice shall be left to the applicant.

          (c)     Rules 35.1 and 35.2 shall not apply to the International Bureau as receiving Office under Rule 19.1 (a) (iii).”.

5.12   Rule 48.3, paragraph (a):

Before “English”, insert “Chinese,”.

5.13   Rule 48.3, paragraph (b):

Before “English” (first occurring), insert “Chinese,”.

5.14   Rule 54.1:

Omit the Rule, substitute:

“54.1         Residence and Nationality

          (a)    Subject to the provisions of paragraph (b), the residence or nationality of the applicant shall, for the purposes of Article 31 (2), be determined according to Rule 18.1 (a) and (b).

          (b)    The International Preliminary Examining Authority shall, in the circumstances specified in the Administrative Instructions, request the receiving Office or, where the international application was filed with the International Bureau as receiving Office, the national office of, or acting for, the Contracting State concerned to decide the question whether the applicant is a resident or national of the Contracting State of which he claims to be a resident or national. The International Preliminary Examining Authority shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the Office concerned. The Office concerned shall decide the said question promptly.”.

5.15   New Rule 54.3:

After Rule 54.2, insert:

“54.3         International Applications Filed with the International Bureau as Receiving Office

          Where the international application is filed with the International Bureau as receiving Office under Rule 19.1 (a) (iii), the International Bureau shall, for the purposes of Article 31 (2) (a), be considered to be acting for the Contracting State of which the applicant is a resident or national.”.

5.16   Rule 59.1:

Omit “For demands”, substitute “(a)   For demands”.

5.17   Rule 59.1, new paragraph (b):

At the end of Rule 59.1, add:

          “(b)  Where the international application was filed with the International Bureau as receiving Office under Rule 19.1 (a) (iii), Rule 35.3 (a) and (b) shall apply mutatis mutandis. Paragraph (a) of this Rule shall not apply to the International Bureau as receiving Office under Rule 19.1 (a) (iii).”.

5.18   New rule 83.1bis:

After Rule 83.1, insert:

“83.1bis       Where the International Bureau  Is the Receiving Office

          (a)    Any person who has the right to practice before the national Office of, or acting for, a Contracting State of which the applicant or, if there are two or more applicants, any of the applicants is a resident or national shall be entitled to practice in respect of the international application before the International Bureau in its capacity as receiving Office under Rule 19.1 (a) (iii).

          (b)    Any person having the right to practice before the International Bureau in its capacity as receiving Office in respect of an international application shall be entitled to practice in respect of that application before the International Bureau in any other capacity and before the competent International Searching Authority and competent International Preliminary Examining Authority.”.

5.19   Rule 90.1, paragraph (a):

Omit the paragraph, substitute:

          “(a)  A person having the right to practice before the national Office with which the international application is filed or, where the international application is filed with the International Bureau, having the right to practice in respect of the international application before the International Bureau as receiving Office may be appointed by the applicant as his agent to represent him before the receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority.”.

5.20   Rule 90.1, subparagraph (d) (i):

After “filed”, insert:

“or to practice in respect of the international application before the International Bureau as receiving Office, as the case may be”.

5.21   Rule 91.1, subparagraph (e) (iii):

Omit “and”.


NOTES

1.   Notified in the Commonwealth of Australia Gazette on 10 December 1993.

2.   Statutory Rules 1991 No. 71 as amended by 1991 No. 456; 1992 No. 148; 1993 Nos. 113, 227 and 340.