Schedule 1 Amendment of Patents Regulations 1991
Do not delete : Schedule Part placeholder
(regulation 3)
[1] Regulation 1.3, definition of patent attorney
omit
[2] Regulation 1.3
insert
Disciplinary Tribunal means the Patent and Trade Marks Attorneys Disciplinary Tribunal established under regulation 20.41.
[3] Regulation 20.1, definition of Board
omit
established by subregulation 20.32 (1)
[4] After regulation 20.2
insert
20.2A Accreditation of courses of study
(1) The Board may accredit a course of study, provided by an institution, that:
(a) achieves the outcome stated for a topic group mentioned in Schedule 5; and
(b) includes the topics mentioned for the topic group.
(2) In considering whether to accredit a course, the Board must consider information provided by the institution.
(3) If the institution gives the Board sufficient information to decide whether the course achieves the outcome stated for a topic group mentioned in Schedule 5, the Board must decide whether to accredit the course:
(a) within 2 months after receiving the information; or
(b) if the Board asks for more information — within 2 months after receiving that information.
(4) Accreditation is for 5 years.
(5) However, 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 outcome stated for the topic group.
(6) If an institution intends to change an accredited course, it must tell the Board in writing.
20.2B 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 the topics mentioned for a topic group; and
(c) the Board has not fully considered the course in time for the start of an academic semester.
(2) Provisional accreditation is for the duration of the course that starts after the course is provisionally accredited.
(3) The Board may provisionally accredit a changed course if:
(a) the change to the course might remove from its scope some topics mentioned in Schedule 5; and
(b) the Board considers that the changed course achieves the outcome stated for the topic group mentioned in Schedule 5.
[5] Regulation 20.3
substitute
20.3 Requirements for registration
(1) For paragraph 198 (4) (b) of the Act, the qualifications are:
(a) for each topic group mentioned in Schedule 5 — a pass in:
(i) a course of study, that includes the subject matter in the topic group, accredited by the Board; or
(ii) the examination conducted by the Board; and
(b) an award or the entitlement to an award of a qualification mentioned in Schedule 6.
(2) For paragraph (1) (a), an exemption under regulation 20.13 is taken to be a pass in the topic group for which the exemption is granted.
(3) For paragraph 198 (4) (c) of the Act, the person must be employed:
(a) in any of the following capacities:
(i) as a technical assistant in a patent attorney’s practice;
(ii) in employment in a company practising in patent matters on behalf of the company or a related company within the meaning of the Corporations Law;
(iii) in the Patent Office as an examiner of patents under the Act or the 1952 Act; and
(b) for either:
(i) 1 year continuously; or
(ii) at least 1 year within 2 continuous years.
(4) For paragraph 198 (4) (e) of the Act, an offence against the Act, the Designs Act 1906 or the Trade Marks Act 1995 is a prescribed offence.
(5) For paragraph 198 (4) (f) of the Act, an offence of dishonesty for which the maximum penalty is imprisonment for at least 2 years is a prescribed offence.
20.3A Currency of pass or exemption
(1) For paragraph 20.3 (1) (a), a pass in a topic group or an exemption under regulation 20.13 remains current for the purpose of completing topic groups A, B, C and D or topic groups E, F, G, H and I:
(a) if the institution has a policy on time periods to complete courses of study — for the period that accords with that policy; or
(b) for the Board, or if the institution has no policy — for 5 years from the year in which the circumstances under subregulation (2) or (3) happen.
(2) For topic groups A, B, C and D, the candidate must:
(a) have passed the first examination in a subject in 1 of the topic groups; or
(b) have been exempted under regulation 20.13 from having to pass a subject in the topic group.
(3) For topic groups E, F, G, H and I, the candidate must:
(a) have completed topic groups A, B, C and D; and
(b) either:
(i) have passed the first examination in a subject in 1 of the topic groups; or
(ii) have been exempted under regulation 20.13 from having to pass a subject in the topic group.
[6] Paragraph 20.4 (b)
omit
[7] Paragraph 20.4 (c)
substitute
(c) a written statement by the Board that the person has met the requirements of paragraph 198 (4) (b) of the Act; and
[8] Paragraph 20.4 (e)
substitute
(e) a statutory declaration by the person that the person:
(i) has not committed an offence prescribed by subregulation 20.3 (4); and
(ii) is not under sentence of imprisonment for an offence prescribed by subregulation 20.3 (5); and
(f) a statutory declaration, by another person, that the person is of good fame, integrity and character; and
(g) the fee mentioned in item 4 of Part 1 of Schedule 7.
[9] Regulation 20.6, heading
substitute
20.6 Board examinations
[10] Subregulation 20.6 (1)
substitute
(1) The Board may hold examinations for topic groups mentioned in Schedule 5.
[11] Regulation 20.7
substitute
20.7 Time for holding Board examinations
(1) The Board must arrange to publish in the Official Journal adequate notice of:
(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 20.12 (Supplementary Board examination).
[12] Regulation 20.8, heading
substitute
20.8 Examinable subject matter
[13] Paragraph 20.8 (a)
substitute
(a) syllabus for the examinations in the relevant topic groups mentioned in Schedule 5; and
[14] Regulation 20.9, heading
substitute
20.9 Admission to sit for a Board examination
[15] Subregulation 20.9 (2)
substitute
(2) A person is not eligible to sit for an examination conducted by the Board in topic group E, F, G, H or I of Schedule 5 unless the person has completed, or has been exempted from completing, topic groups A, B, C and D of Schedule 5.
[16] Regulation 20.10, heading
substitute
20.10 Notification of Board examination results
[17] Regulation 20.11
substitute
20.11 Reasons for failure of Board examination
(1) A candidate who fails an examination conducted by the Board may apply to the Board in the approved form within 1 month after being told of the failure for a report of the reasons for the failure.
(2) For subregulation (1), a report may be given by:
(a) the Board; or
(b) if the Board approves — the examiner appointed under subregulation 20.6 (2).
[18] Regulation 20.12, heading
substitute
20.12 Supplementary Board examination
[19] After subregulation 20.12 (2)
insert
(3) For an application under paragraph (2) (a), the Board may take account of an examiner’s comments on the candidate’s performance.
(4) An application under paragraph (2) (b) must be accompanied by evidence:
(a) of the reason for failing to sit the examination; and
(b) that was obtained at the time of the illness or the occurrence of the events giving rise to the other reason.
[20] Paragraph 20.13 (2) (b)
substitute
(b) the person gives the Board enough information for the Board to be satisfied under paragraph (c); and
(c) the Board is satisfied that:
(i) the person 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 an accredited course for the topic group for which the exemption is sought.
[21] Subregulation 20.13 (3)
omit
[22] Paragraph 20.14 (2) (b)
omit everything after
postgraduate
insert
award of an Australian tertiary institution in a field of technology that contains potentially patentable subject matter.
[23] Regulation 20.15, heading
substitute
20.15 Approval of academic qualifications
[24] Regulation 20.15
omit
must give to a person a certificate that the person has a qualification specified in Schedule 6
insert
may approve a qualification mentioned in Schedule 6 for a person
[25] Paragraph 20.15 (b)
substitute
(b) the application has with it:
(i) evidence that the person has the qualification; and
(ii) the original or a certified copy of an academic record that shows the units that make up the qualification; and
[26] Regulation 20.16
substitute
20.16 Advice of completion of examinable subjects and of academic qualifications
The Board must give to a person a written statement that the person has the qualifications mentioned in subregulation 20.3 (1) if:
(a) the person applies in the approved form; and
(b) there are reasonable grounds for believing that the person has the qualifications.
[27] Chapter 20, Part 2, Division 3, heading
substitute
Division 3 Rights of registered patent attorneys
[28] Paragraph 20.19 (a)
substitute
(a) the person pays the fees mentioned in:
(i) regulation 20.18 (annual registration fee); and
(ii) item 5 or 6 of Part 1 of Schedule 7; and
[29] Part 3, after regulation 20.19
insert
20.19A Voluntary removal of name from register
(1) On written application by a registered patent attorney, the Designated Manager may:
(a) remove the attorney’s name from the Register of Patent Attorneys; or
(b) within a period determined by the Designated Manager — restore the attorney’s name to the register on payment of:
(i) the annual registration fee payable for the year in which the reinstatement is made; and
(ii) the fee mentioned in item 7 of Part 1 of Schedule 7.
(2) For paragraph (1) (b) the period must not be more than 3 years.
[30] Regulation 20.21, heading
substitute
20.21 Authorisation to bring proceedings against a registered patent attorney
[31] Regulation 20.32, heading
substitute
20.32 Constitution of Board (Act, s 227A)
[32] Subregulation 20.32 (1)
omit
[33] Subregulation 20.32 (2)
renumber as regulation 20.32
[34] Regulation 20.34
substitute
20.34 Term of office of Board members
The Minister may appoint a member of the Board for a term of up to 3 years.
[35] Chapter 20, Part 5, Division 2, heading
substitute
Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal
[36] After regulation 23.26
insert
23.27 Professional Standards Board for Patent and Trade Marks Attorneys
(1) In this regulation and regulation 23.28:
new Board means the Professional Standards Board for Patent and Trade Marks Attorneys.
new Chapter 20 means Chapter 20 of the Patents Regulations as in force on and after 1 April 1998.
old Board means the Patent Attorneys Professional Standards Board:
(a) established under Chapter 20 of the Patents Regulations before 1 April 1998; and
(b) as constituted at any time before that date.
old Chapter 20 means Chapter 20 of the Patents Regulations as in force before 1 April 1998.
unfinished business means anything that could have been done by the old Board under old Chapter 20 about an application.
(2) This regulation applies to an application (including anything accompanying the application) made under old Chapter 20 if:
(a) the application was made before 1 April 1998; and
(b) unfinished business was not done before that date.
(3) The application is taken to have been made under new Chapter 20.
(4) The unfinished business may be finished by the new Board under new Chapter 20.
(5) Any act done, or decision made, by the old Board under old Chapter 20 has effect as if the act had been done, or decision had been made, by the new Board.
(6) Each certificate given by the old Board under old Chapter 20 is as valid as it would be if it had been given by the new Board under new Chapter 20.
23.28 Continuing effect of certain complaints
(1) This regulation applies to a complaint in writing to the old Board made under Part 4 of old Chapter 20 if:
(a) the complaint was made before 1 April 1998; and
(b) unfinished business was not done before that date.
Note The terms old Board, old Chapter 20 and unfinished business are defined in regulation 23.27.
(2) The unfinished business may be finished by the new Board under Part 4 of new Chapter 20.
Note The terms new Board and new Chapter 20 are defined in regulation 23.27.
(3) Any reply or further information sought by the old Board under regulation 20.20, but not given to the old Board before 1 April 1998, must be given to the new Board under regulation 20.20 as if the reply or further information had been sought by the new Board.
23.29 Patent attorney registration
A person who was, on 26 January 1999, registered as a patent attorney under section 198 of the Act as in force on that date is taken to be registered under that section as in force on 27 January 1999.
23.30 Patent attorney qualifications and employment requirements
(1) A person who met the requirements of paragraph 198 (2) (c) of the Act as in force on 26 January 1999 is taken to meet the requirements of paragraph 20.3 (1) (a).
(2) A person who met the requirements of paragraph 198 (2) (d) of the Act as in force on 26 January 1999 is taken to meet the requirements of paragraph 20.3 (1) (b).
(3) A person who met the requirements of paragraph 198 (2) (e) of the Act as in force on 26 January 1999 is taken to meet the requirements of subregulation 20.3 (3).
(4) A period of employment that met the requirements of paragraph 20.3 (d) as in force on 26 January 1999 can be counted as part of a period of employment for paragraph 20.3 (3) (b).
23.31 Patent attorney examination requirements
(1) For a person who passed an examination, or was exempted from having to pass the examination, for a subject mentioned in item 1, 2, 3 or 4 of Schedule 5 as in force on 26 January 1999, the period of 5 years for paragraph 20.3A (1) (b) is taken to commence on 27 January 1999.
(2) For a person who passed an examination, or was exempted from having to pass the examination, for a subject mentioned in item 5, 6, 7 or 8 of Schedule 5 as in force on 26 January 1999, the period of 5 years for paragraph 20.3A (1) (b) is taken to commence on 27 January 1999.
(3) For a person who:
(a) was exempted from having to pass an examination for the subjects mentioned in items 5, 6, 7 and 8 of Schedule 5 as in force on 26 January 1999; and
(b) had not sat for an examination for a subject mentioned in item 1, 2, 3 or 4 of Schedule 5 as in force on 26 January 1999;
the period of 5 years for paragraph 20.3A (1) (b) is taken to commence when the person meets the requirements for registration as a trade marks attorney.
(4) Subregulation (5) applies to a person who has passed an examination, or been exempted from having to pass the examination, for at least 1 subject mentioned in Schedule 5 as in force on 26 January 1999.
(5) A pass in, or an exemption from having to pass, an examination for a subject mentioned in column 1 of the following table is taken to be a pass for paragraph 20.3A (1) (a) in a topic group mentioned in column 2 of the table:
| Column 1
Subject | Column 2
Topic group |
| Legal Process | Group A — Legal process and overview of intellectual property |
| Patent Attorneys’ Practice, Part 2 | Group B — Professional conduct |
| Trade Marks law of Australia and the Practice of the Trade Marks Office | Group C — Trade mark law |
| Patent Attorneys’ Practice, Part 1 and Patent Attorneys’ Practice, Part 2 | Group D — Trade mark practice |
| Patent law of Australia and the Practice of the Patent Office | Group E — Patent law |
| Patent Attorneys’ Practice, Part 1 and Patent Attorneys’ Practice, Part 2 | Group F — Patent system |
| Preparation of Specifications | Group G — Drafting patent specifications |
| Validity and Infringement of Patents | Group H — Interpretation and validity of patent specifications |
| Designs Law and Related Intellectual Property Laws of Australia and the Practice of the Designs Office | Group I — Designs |
[37] Schedule 5
substitute
Schedule 5 Prescribed topics
(regulations 20.2A, 20.2B, 20.3, 20.6, 20.8, 20.9 and 20.16)
General outcome
The overall objective of a course of study is 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.
Group A Legal process and overview of intellectual property
Outcome
An understanding of the Australian legal system and how intellectual property rights may be protected.
Topics
1. The Australian legal system, including:
(a) appeal or review procedure;
(b) Parliament;
(c) the courts;
(d) precedent;
(e) statutory interpretation.
2. Overview of intellectual property rights:
(a) patents;
(b) trade marks;
(c) designs;
(d) copyright;
(e) circuit layouts;
(f) plant breeders’ rights;
(g) confidential information and trade secrets;
(h) trade practices and anti-competitive practices;
(i) international intellectual property treaties.
Group B Professional conduct
Outcome
An understanding of the rights, privileges and responsibilities of a patent or trade mark attorney.
Topics
(a) conflict of interest;
(b) privilege;
(c) confidentiality;
(d) professional liability and negligence;
(e) code of conduct;
(f) maintenance of rights and monitoring systems;
(g) fiduciary obligations to clients.
Group C Trade mark law
Outcome
An understanding of the principles of trade marks and the trade mark system in Australia.
Topics
(a) passing off and unfair competition;
(b) advice on registrability;
(c) comparison of business names and trade marks;
(d) marks excluded from registration;
(e) other provisions for trade indicia protection:
(i) Olympic insignia legislation;
(ii) domain names;
(iii) geographical indications;
(f) criteria that affect registrability:
(i) distinctiveness;
(ii) deception and confusion;
(g) ownership — authorship of trade marks;
(h) use:
(i) intention to use;
(ii) honest concurrent use;
(iii) prior continuous use;
(i) protection:
(i) infringement;
(ii) well known marks.
Group D Trade mark practice
Outcome
Ability to advise and to handle the interests of a client in prosecution and maintenance of trade mark applications, including advice on the desirability of seeking trade mark protection and provision of alternative protection in Australia and other countries.
Topics
(a) classification systems;
(b) searching;
(c) types of application and registration;
(d) trade marks office practice and procedure:
(i) filing;
(ii) examination;
(iii) hearings;
(iv) opposition;
(v) evidence;
(vi) extension of time;
(e) removal for non-use;
(f) rectification;
(g) registration of security interests;
(h) border controls;
(i) exploitation:
(i) assignment;
(ii) licensing;
(iii) parallel imports;
(iv) managing a trade marks portfolio;
(j) misuse and criminal sanctions;
(k) international:
(i) treaties and conventions;
(ii) regional systems (eg CTM);
(iii) differences between systems (including requirements to use, first to file, first to use, post-acceptance, pre-acceptance, registration opposition and renewal requirements);
(iv) other classification systems;
(v) unacceptable trade marks — restrictions on registrability;
(vi) practical differences (eg legalised and notarised documents, powers of attorneys).
Group E Patent law
Outcome
An understanding of the principles of patents and the patent system in Australia.
Topics
(a) subject matter:
(i) manner of manufacture;
(ii) newness;
(iii) novelty;
(iv) inventive step;
(v) secret use;
(vi) exclusions from patentability;
(vii) utility;
(b) section 40 (specifications):
(i) description;
(ii) claims;
(iii) fair basis;
(c) infringement;
(d) inventorship;
(e) ownership;
(f) breach of confidence.
Group F Patent system
Outcome
Ability to advise and to handle the interests of a client in prosecution and maintenance of a patent application, including advice on the desirability of seeking patent protection and provision of alternative protection in Australia and other countries.
Topics
(a) types of application:
(i) provisional;
(ii) complete;
(iii) divisional;
(iv) patent of addition;
(v) Convention;
(vi) priority dates;
(b) Patent Office practice;
(c) amendment;
(d) opposition;
(e) re-examination;
(f) maintenance;
(g) extension of term;
(h) extension of time;
(i) revocation;
(j) treaties and conventions, including:
(i) Patent Cooperation Treaty;
(ii) Budapest Treaty;
(iii) Paris Convention;
(k) searching;
(l) assignment;
(m) licensing;
(n) compulsory licences;
(o) Crown use;
(p) restrictions on exploitation:
(i) Patents Act 1990;
(ii) Trade Practices Act 1974;
(q) circuit layout legislation and practice;
(r) plant protection legislation and practice;
(s) patentability in other countries;
(t) patent procedure in other countries, particularly major trading parties (eg New Zealand, United States of America, European Community, People’s Republic of China, Japan);
(u) petty patents.
Group G Drafting patent specifications
Outcome
Ability to obtain relevant information about an invention and from that, given the prior art, draft a specification to accompany a provisional application, a standard complete application, an international application and a petty patent application.
Group H Interpretation and validity of patent specifications
Outcome
Ability to express an understanding of a patent specification and what it covers for the purpose of advising on infringement, validity over given prior art, section 40 of the Act and other grounds of revocation and amendment.
Group I Designs
Outcome
Ability to advise and to handle the interests of a client in prosecution and maintenance of a design application, including advice on the desirability of seeking design protection and provision of alternative protection in Australia and other countries.
Topics
(a) registrability;
(b) newness;
(c) registration procedure;
(d) maintenance;
(e) office practice;
(f) third party objection;
(g) infringement;
(h) expunction;
(i) copyright;
(j) international aspects of design practice.
[38] Schedule 6, items 1 and 2
substitute
| 1 | A degree, diploma or postgraduate award of an Australian tertiary institution in a field of technology that contains potentially patentable subject matter |
| 2 | An award of an overseas education institution in a field of technology that contains potentially patentable subject matter |
[39] Schedule 7, Part 1
substitute
Part 1 Patent attorneys
| Item | Matter | Fee ($) |
| 1 | Applying for admission to sit for an examination conducted by the Board | 400 |
| 2 | Applying for grant of a supplementary examination conducted by the Board | 200 |
| 3 | A report of reasons for failure of an examination conducted by the Board | 200 |
| 4 | Applying for registration as a patent attorney | 200 |
| 5 | Annual registration fee payable by a patent attorney | 250 |
| 6 | Annual registration fee payable for combined registration as a patent attorney and trade marks attorney | 320 |
| 7 | Applying under regulation 20.19 or 20.19A | 160 |
[40] Additional amendments
| provision | omit | insert |
| regulation 20.1, definition of unprofessional conduct (twice) | patent | registered patent |
| regulation 20.1, definition of unsatisfactory conduct | patent | registered patent |
| paragraph 20.4 (a) | an Australian citizen | ordinarily resident in Australia |
| regulation 20.5 (twice) | Commissioner | Designated Manager |
| paragraph 20.8 (b) | books | reading and study material |
| subregulation 20.13 (1) | pass an examination. | satisfy all or some of the requirements of a topic group mentioned in Schedule 5. |
| regulation 20.17 | patent | registered patent |
| subregulations 20.18 (1) and (2) | patent attorney | registered patent attorney to whom regulation 20.19A does not apply |
| subregulations 20.18 (2) and (3) | Commissioner | Designated Manager |
| subregulation 20.18 (3) | patent | registered patent |
| regulation 20.19 (twice) | Commissioner | Designated Manager |
| subregulation 20.20 (1) | patent | registered patent |
| paragraph 20.20 (3) (a) | patent | registered patent |
| subregulations 20.20 (5), (6) and (7) | patent | registered patent |
| subregulations 20.21 (1), (2), (6) and (7) | patent | registered patent |
| subregulations 20.22 (1), (2) and (3) | patent | registered patent |
| paragraphs 20.23 (1) (a) and (b) | patent | registered patent |
| subregulations 20.23 (2), (3), (4), (5), (6), (7), (8) and (9) | patent | registered patent |
| paragraph 20.23 (6) (d) | Commissioner | Designated Manager |
| subregulations 20.23 (7) and (8) | Commissioner | Designated Manager |
| subregulation 20.25 (1) | a patent | a registered patent |
| subregulations 20.25 (2) (twice) and (3) | patent | registered patent |
| subregulations 20.29 (1) and (2) | patent | registered patent |
| subregulations 20.30 (2) and (3) | patent | registered patent |
| paragraph 22.26 (2) (b) | patent | registered patent |
| Schedule 8, Part 1, items 12 and 13 | patent | registered patent |
| Schedule 8, Part 2, items 1, 2, 3 and 4 | Patent Attorneys Disciplinary Tribunal | Disciplinary Tribunal |
| provision | after | insert |
| regulation 20.1, definition of Institute | Patent | and Trade Mark |
| regulation 20.10 | an examination | conducted by the Board |
| paragraph 20.32 (2) (c) | 2 | suitably qualified |
| regulation 20.41 | Patent | and Trade Marks |
1. These regulations amend Statutory Rules 1991 No. 71, as amended by 1991 No. 456; 1992 No. 148; 1993 Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319 and 342.
2. Made by the Governor-General on 17 December 1998, and notified in the Commonwealth of Australia Gazette on 22 December 1998. Administered by the Minister for Industry, Science and Resources.