Federal Register of Legislation - Australian Government

Primary content

Patents Amendment Regulations 2004 (No. 4)

Authoritative Version
  • - F2005B00016
  • No longer in force
SR 2004 No. 395 Regulations as made
These Regulations amend the Patents Regulations 1991.
Administered by: DITR
Registered 10 Jan 2005
Tabling HistoryDate
Tabled HR08-Feb-2005
Tabled Senate08-Feb-2005
Gazetted 23 Dec 2004
Date of repeal 09 Aug 2013
Repealed by Industry, Innovation, Climate Change, Science, Research and Tertiary Education (Spent and Redundant Instruments) Repeal Regulation 2013

Patents Amendment Regulations 2004 (No. 4)1

Statutory Rules 2004 No. 3952

I, PHILIP MICHAEL JEFFERY, 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 16 December 2004

P. M. JEFFERY

Governor-General

By His Excellency’s Command

IAN MACFARLANE


1              Name of Regulations

                These Regulations are the Patents Amendment Regulations 2004 (No. 4).

2              Commencement

                These Regulations commence on the date of their notification in the Gazette.

3              Amendment of Patents Regulations 1991

                Schedule 1 amends the Patents Regulations 1991.

4              Transitional

         (1)   The amendments made by items [2] and [4] of Schedule 1 apply to an application in relation to which the applicant had not met the requirements of subsection 89 (3) of the Patents Act 1990 before these Regulations commence.

         (2)   The amendment made by item [3] of Schedule 1 applies to an application in relation to which a patent request and complete specification had not been accepted under section 49 of the Patents Act 1990 before these Regulations commence.

         (3)   The amendments made by items [5] to [8] of Schedule 1 apply to requests for leave to amend in relation to which the Commissioner had not granted leave under regulation 10.5, and in respect of which the corresponding patent request and complete specification had not been accepted under section 49 of the Patents Act 1990, before these Regulations commence.

         (4)   The amendment made by item [10] of Schedule 1 applies to an application for an innovation patent in relation to which a patent request and complete specification had not been accepted under section 52 of the Patents Act 1990 before these Regulations commence.


Schedule 1        Amendments

(regulation 3)

  

[1]           Subregulation 1.3 (1), definition of International Bureau

substitute

International Bureau means the International Bureau of the World Intellectual Property Organization.

[2]           Regulation 8.1B

omit

[3]           After subregulation 8.3 (1)

insert

   (1AA)   Subsection 45 (1):

omit

Where

insert

Subject to subsection (1AC), where

    (1AB)   After subsection 45 (1):

insert

            (1AA)      Where:

                         (a)    an applicant asks for an examination of a patent request and complete specification relating to a PCT application; and

                         (b)    the applicant demanded an international preliminary examination under Article 31 of the PCT before complying with the requirements of subsection 89 (3); and

                         (c)    at least 3 months after the applicant complied with the requirements of subsection 89 (3), the Commissioner asks for a copy of the international preliminary examination report from the International Bureau; and

                         (d)    the International Bureau advises that the international preliminary examination report is not available;

the Commissioner may report on these matters and 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.

            (1AB)      Where:

                         (a)    an applicant asks for an examination of a patent request and complete specification relating to a PCT application; and

                         (b)    subsection (1AA) does not apply; and

                         (c)    the applicant asks for the examination to be expedited under subregulation 3.17 (2) of the Patents Regulations 1991; and

                         (d)    a copy of an international preliminary examination report relating to the application has not been provided to the Commissioner;

the Commissioner may report on these matters and 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.

            (1AC)      If subsection (1AA) or (1AB) applies, the Commissioner is not required to perform his or her functions under subsection (1) unless:

                         (a)    a copy of the international preliminary examination report is provided to the Commissioner; or

                         (b)    the applicant:

                                     (i)     advises that:

                                               (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 89 (3); or

                                    (ii)     elects to abandon any amendments that may have been made under Article 34 of the PCT.

Note   Under subsection 89 (7) of the Act, as modified by the Patents Regulations 1991, if the applicant provides the advice, or makes the election, mentioned in paragraph (1AC) (b), any amendments made under Article 34 of the PCT are not taken to be included in the application.

   (1AC)   After subsection 45 (5):

insert

                  (6)      In this section:

International Bureau means the International Bureau of the World Intellectual Property Organization.

international preliminary examination report has the same meaning as it has in the PCT.

   (1AD)   Subsection 48 (1):

omit

When

insert

Subject to subsection (1AC), when

    (1AE)   After subsection 48 (1):

insert

            (1AA)      Where:

              (a)      an applicant asks for a modified examination of a patent request and complete specification relating to a PCT application; and

              (b)      the applicant demanded an international preliminary examination under Article 31 of the PCT before complying with the requirements of subsection 89 (3); and

              (c)      at least 3 months after the applicant complied with the requirements of subsection 89 (3), the Commissioner asks for a copy of the international preliminary examination report from the International Bureau; and

              (d)      the International Bureau advises that the international preliminary examination report is not available;

the Commissioner may report on these matters and 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.

            (1AB)      Where:

                         (a)    an applicant asks for a modified examination of a patent request and complete specification relating to a PCT application; and

                         (b)    subsection (1AA) does not apply; and

                         (c)    the applicant asks for the examination to be expedited under subregulation 3.17 (2) of the Patents Regulations 1991; and

               (d)    a copy of an international preliminary examination report relating to the application has not been provided to the Commissioner;

the Commissioner may report on these matters and 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.

            (1AC)      If subsection (1AA) or (1AB) applies, the Commissioner is not required to perform his or her functions under subsection (1) unless:

                         (a)    a copy of the international preliminary examination report is provided to the Commissioner; or

                         (b)    the applicant:

                                     (i)     advises the Commissioner that:

                                               (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 89 (3); or

                                    (ii)     elects to abandon any amendments that may have been made under Article 34 of the PCT.

Note   Under subsection 89 (7) of the Act, as modified by the Patents Regulations 1991, if the applicant provides the advice, or makes the election, mentioned in paragraph (1AC) (b), any amendments made under Article 34 of the PCT are not taken to be included in the application.

    (1AF)   After subsection 48 (2):

insert

                  (3)      In this section:

International Bureau means the International Bureau of the World Intellectual Property Organization.

international preliminary examination report has the same meaning as it has in the PCT.

[4]           After subregulation 8.3 (1B)

insert

    (1BA)   Paragraph 89 (5) (a):

omit

PCT;

insert

PCT before the applicant meets the requirements of subsection (3);

    (1BB)   Paragraph 89 (5) (b):

omit

    (1BC)   Paragraph 89 (5) (c):

omit

Schedule 1;

insert

Schedule 1 before the applicant meets the requirements of subsection (3);

    (1BD)   After subsection 89 (5):

insert

                  (6)      Subject to subsection (7), where:

              (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 (3);

the description, drawings and claims contained in the application are, for the purposes of this Act, to be taken to have been amended on the day on which the amendment was made.

                  (7)      Subsection (6) does not apply if:

              (a)      the Commissioner has reported under subsection 45 (1AA) or (1AB), or 48 (1AA) or (1AB), or under regulations made for the purpose of section 104, in relation to an application; and

              (b)      the applicant elects under subparagraph 45 (1AC) (b) (ii) or 48 (1AC) (b) (ii), or under regulations made for the purpose of section 104, to abandon any amendments that may have been made under Article 34 of the PCT, or provides the advice mentioned in subparagraph 45 (1AC) (b) (i) or 48 (1AC) (b) (i) or in regulations made for the purpose of section 104.

[5]           Paragraph 10.2 (1) (c)

omit

Regulations.

insert

Regulations;

[6]           After paragraph 10.2 (1) (c)

insert

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)    report on 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.

[7]           Subregulation 10.2 (3)

substitute

         (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 89 (3);

                                 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   Under subsection 89 (7) of the Act, as modified by these Regulations, 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.

[8]           After subregulation 10.2 (5)

insert

      (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.

[9]           Subregulation 13.1A (1)

omit

for a standard patent

insert

for an application for a standard patent

[10]         After regulation 13.1A

insert

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

         (1)   For subsection 141 (1) 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.

[11]         After subparagraph 22.26 (2) (a) (v)

insert

                      (vaa)    regulation 10.7 (‘correction of register or patent’), except subregulation 10.7 (3);

Notes

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, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 2000 No. 317; 2001 Nos. 98, 184 and 345; 2002 Nos. 59, 100, 173, 263 and 317; 2003 Nos. 71, 213 and 316; 2004 Nos. 23, 193 and 250.

2.       Notified in the Commonwealth of Australia Gazette on 23 December 2004.