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SLI 2012 No. 66 Regulations as made
This regulation amends the Patents Regulations 1991, Trade Marks Regulations 1995, Designs Regulations 2004 and Plant Breeder's Rights Regulations 1994.

IP Australia is proposing to make minor and technical changes to the Designs Regulations 2004, the Patents Regulations 1991, the Plant Breeder's Rights Regulations 1994 and the Trade Marks Regulations 1995 (collectively 'the Regulations') to:
* update the Regulations to implement changes in fees arising from the fee review conducted by IP Australia;
* amend the Designs Regulations, the Patents Regulations and the Trade Marks Regulations to enable customers to provide statutory declarations electronically and simplify the requirements for filing a declaration;
* amend the Trade Marks Regulations to implement provisions of the Trade Marks Act, as amended by the Personal Property Securities (Consequential Amendments) Act 2009;
* update the Designs Regulations, the Patents Regulations and the Trade Marks Regulations to include the Netherlands (including Aruba, Curaçao and Sint Maarten) and Samoa in the list of Convention countries, commencing on 1 July 2012; and
* update the Patents Regulations to reflect changes to the Regulations under the Patent Cooperation Treaty (the PCT Rules) as approved by the International Patent Cooperation Union Assembly (PCT Assembly) at its meeting in September-October 2011.
Administered by: Industry, Innovation, Science, Research and Tertiary Education
Made 10 May 2012
Registered 14 May 2012
Tabled HR 21 May 2012
Tabled Senate 18 Jun 2012
Date of repeal 09 Aug 2013
Repealed by Industry, Innovation, Climate Change, Science, Research and Tertiary Education (Spent and Redundant Instruments) Repeal Regulation 2013
Table of contents.

Commonwealth Coat of Arms

Intellectual Property Legislation Amendment Regulation 2012 (No. 1)1

Select Legislative Instrument 2012 No. 66

I, QUENTIN BRYCE, Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following regulation under the Patents Act 1990, the Trade Marks Act 1995, the Designs Act 2003 and the Plant Breeder’s Rights Act 1994.

Dated 10 May 2012

QUENTIN BRYCE

Governor-General

By Her Excellency’s Command

GREG COMBET


Contents

                        1      Name of regulation                                                          2

                        2      Commencement                                                              2

                        3      Amendment of Patents Regulations 1991                          2

                        4      Amendment of Trade Marks Regulations 1995                   3

                        5      Amendment of Designs Regulations 2004                         4

                        6      Amendment of Plant Breeder’s Rights Regulations 1994    4

Schedule 1                  Amendments of Patents Regulations 1991                     5

Schedule 2                  Amendments of Trade Marks Regulations 1995            29

Schedule 3                  Amendments of Designs Regulations 2004                   43

Schedule 4                  Amendments of Plant Breeder’s Rights Regulations 1994  52

 

 


1              Name of regulation

                This regulation is the Intellectual Property Legislation Amendment Regulation 2012 (No. 1).

2              Commencement

                This regulation commences as follows:

                 (a)     on 1 July 2012:

                          (i)     sections 1 to 6; and

                         (ii)     Parts 1 to 4 of Schedule 1; and

                        (iii)     Parts 1 to 4 of Schedule 2; and

                        (iv)     Parts 1 to 3 of Schedule 3; and

                         (v)     Part 1 of Schedule 4;

                (b)     on 1 October 2012—the remainder.

3              Amendment of Patents Regulations 1991

         (1)   Schedule 1 amends the Patents Regulations 1991.

         (2)   The amendments made by Part 1 of Schedule 1 apply in relation to a declaration required or permitted by the Patents Act 1990 or the Patents Regulations 1991 on or after 1 July 2012.

         (3)   The amendment made by item [9] of Schedule 1 applies to an international application under the Patent Cooperation Treaty, irrespective of its international filing date, in respect of which  the time limit under amended Rule 17.1(b-bis) expires on or after 1 July 2012.

         (4)   The amendment made by item [10] of Schedule 1 applies to an international application under the Patent Cooperation Treaty whose international filing date is on or after 1 July 2012.

         (5)   The amendments made by items [11] and [12] of Schedule 1 apply to an international application under the Patent Cooperation Treaty, irrespective of its international filing date, in respect of which an international search is carried out on or after 1 July 2012.

         (6)   Despite the omission of Rule 82.2 by item [13] of Schedule 1, Rule 82.2 as in force immediately before the commencement of Schedule 1 continues to apply to an international application under the Patent Cooperation Treaty whose international filing date is before 1 July 2012, and in relation to which the six months time limit for the submission of evidence referred to in Rule 82.1(c), as applicable because of Rule 82.2(b) (in force immediately before the commencement of Schedule 1), expires on or after 1 July 2012.

         (7)   The amendment made by item [14] of Schedule 1 applies to an international application under the Patent Cooperation Treaty, irrespective of its international filing date, in relation to which the six months time limit for the submission of evidence referred to in Rule 82quater.1(a) (inserted by item [14]) expires on or after 1 July 2012.

4              Amendment of Trade Marks Regulations 1995

         (1)   Schedule 2 amends the Trade Marks Regulations 1995.

         (2)   The amendments made by Part 1 of Schedule 2 apply in relation to a declaration required or permitted by the Trade Marks Act 1995 or the Trade Marks Regulations 1995 on or after 1 July 2012.

5              Amendment of Designs Regulations 2004

         (1)   Schedule 3 amends the Designs Regulations 2004.

         (2)   The amendment made by Part 1 of Schedule 3 applies in relation to a declaration required or permitted by the Designs Act 2003 or the Designs Regulations 2004 to be given to the Registrar of Designs on or after 1 July 2012.

6              Amendment of Plant Breeder’s Rights Regulations 1994

                Schedule 4 amends the Plant Breeder’s Rights Regulations 1994.


Schedule 1        Amendments of Patents Regulations 1991

(section 3)

 

Part 1          Amendments relating to declarations

[1]           Paragraphs 20.3 (1) (e) and (f)

omit

statutory

[2]           Subregulation 20.3 (2)

omit

statutory

[3]           Paragraphs 20.31 (3) (b) and (c)

omit

statutory

[4]           Subregulation 20.31 (4)

omit

statutory

[5]           Regulation 22.13

substitute

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.

Part 2          Amendments relating to PCT Rules

[6]           Subregulation 1.4 (2)

omit

1 July 2011

insert

1 July 2012

[7]           Schedule 2A, before Table of Provisions

omit

1 July, 2010 and 1 July, 2011.

insert

1 July, 2010, 1 July, 2011 and 1 July, 2012.

[8]           Schedule 2A, Table of Provisions

after

             82ter.1     Errors Concerning the International Filing Date and the Priority Claim

insert

Rule  82quater    Excuse of Delay in Meeting Time Limits

             82quater.1 Excuse of Delay in Meeting Time Limits

[9]           Schedule 2A, Rule 17.1 (b-bis)

substitute

    (bbis)   Where the priority document is, in accordance with the Administrative Instructions, made available to the International Bureau from a digital library prior to the date of international publication of the international application, the applicant may, instead of submitting the priority document, request the International Bureau, prior to the date of international publication, to obtain the priority document from such digital library.

[10]         Schedule 2A, Rule 20.7 (b)

substitute

        (b)   Where neither a correction under Article 11 (2) nor a notice under Rule 20.6 (a) confirming the incorporation by reference of an element referred to in Article 11 (1) (iii) (d) or (e) is received by the receiving Office prior to the expiration of the applicable time limit under paragraph (a), any such correction or notice received by that Office after the expiration of that time limit but before it sends a notification to the applicant under Rule 20.4 (i) shall be considered to have been received within that time limit.

[11]         Schedule 2A, Rule 34.1 (c) (ii)

substitute

         (ii)     the patents issued by the Federal Republic of Germany, the People’s Republic of China, the Republic of Korea and the Russian Federation,

[12]         Schedule 2A, Rule 34.1 (e)

substitute

        (e)   Any International Searching Authority whose official language, or one of whose official languages, is not Chinese, Japanese, Korean, Russian or Spanish is entitled not to include in its documentation those patent documents of the People’s Republic of China, Japan, the Republic of Korea, the Russian Federation and the former Soviet Union as well as those patent documents in the Spanish language, respectively, for which no abstracts in the English language are generally available. English abstracts becoming generally available after the date of entry into force of these Regulations shall require the inclusion of the patent documents to which the abstracts refer no later than six months after such abstracts become generally available. In case of the interruption of abstracting services in English in technical fields in which English abstracts were formerly generally available, the Assembly shall take appropriate measures to provide for the prompt restoration of such services in the said fields.

[13]         Schedule 2A, Rule 82.2

omit

[14]         Schedule 2A, after Rule 82ter

insert

Rule 82quater  
Excuse of Delay in Meeting Time Limits

82quater.1   Excuse of Delay in Meeting Time Limits

        (a)   Any interested party may offer evidence that a time limit fixed in the Regulations for performing an action before the receiving Office, the International Searching Authority, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau was not met due to war, revolution, civil disorder, strike, natural calamity or other like reason in the locality where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible.

        (b)   Any such evidence shall be addressed to the Office, Authority or the International Bureau, as the case may be, not later than six months after the expiration of the time limit applicable in the given case. If such circumstances are proven to the satisfaction of the addressee, delay in meeting the time limit shall be excused.

        (c)   The excuse of a delay need not be taken into account by any designated or elected Office before which the applicant, at the time the decision to excuse the delay is taken, has already performed the acts referred to in Article 22 or Article 39.

Part 3          Amendments relating to Convention countries

[15]         Schedule 4

omit

Netherlands (including the Netherlands Antilles and Aruba)

insert

Netherlands (including Aruba, Curaçao and Sint Maarten)

[16]         Schedule 4

after

Saint Vincent and the Grenadines

insert

Samoa

Part 4          Amendments relating to fees (commencing on 1 July 2012)

[17]         Regulation 1.3

insert

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.

[18]         Paragraph 22.2 (2) (b)

omit

at a hearing

substitute

and being heard at an oral hearing

[19]         After paragraph 22.2 (2) (b)

insert

              (ba)    the fee for a hearing on the basis of written submissions only is payable when the written submissions are filed;

[20]         After subregulation 22.2 (5)

insert

         (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.

         (7)   Paragraph 231 (a) of Schedule 7, as in force on 1 July 2012, does not apply to a person in relation to a hearing held after the commencement of this subregulation if:

                (a)    the person requests the hearing, and pays the fee mentioned in item 230 of Schedule 7, before the commencement of this subregulation; or

               (b)    the person pays the fee mentioned in paragraph 231 (a) of Schedule 7 for the hearing before the commencement of this subregulation; or

                (c)    the hearing relates to a representation or request by the person for which the person paid the fee mentioned in item 219, 220 or 229 of  Schedule 7 before the commencement of this subregulation.

         (8)   Paragraph 231 (b) of Schedule 7, as in force on 1 July 2012, does not apply to a person in relation to a hearing held after the commencement of this subregulation if the person pays the fee mentioned in paragraph 231 (b) of Schedule 7 for the hearing before the commencement of this subregulation.

[21]         After regulation 22.2

insert

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]         Paragraph 22.2G (4)

substitute

         (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.

[23]         Schedule 7

substitute

Schedule 7        Fees

(regulations 22.2, 22.2AA, 22.3 and 22.4)

Part 1          Patent Attorneys

 

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

Part 2          General fees

 

Item

Matter

Fee

201

Filing a request for a patent accompanied by a provisional specification:

 

 

   (a)  by approved means;

$80

 

  (b)  by another means

$110

202

Filing a request for an innovation patent accompanied by a complete specification:

 

 

   (a)  by approved means;

$150

 

  (b)  by another means

$180

203

Filing a request for a standard patent accompanied by a complete specification:

 

 

   (a)  by approved means;

$340

 

  (b)  by another means

$370

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

Filing a request for a modified examination, under section 48 of the Act, of a standard patent request and complete specification

$300

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 examination

$100

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;

$500

 

        (ii)   fee paid by another means;

$550

 

  (h)  the eleventh anniversary:

 

 

         (i)   fee paid by approved means;

$500

 

        (ii)   fee paid by another means;

$550

 

   (i)  the twelfth anniversary:

 

 

         (i)   fee paid by approved means;

$500

 

        (ii)   fee paid by another means;

$550

 

   (j)  the thirteenth anniversary:

 

 

         (i)   fee paid by approved means;

$500

 

        (ii)   fee paid by another means;

$550

 

  (k)  the fourteenth anniversary:

 

 

         (i)   fee paid by approved means;

$500

 

        (ii)   fee paid by another means;

$550

 

   (l)  the fifteenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

(m)  the sixteenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

  (n)  the seventeenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

  (o)  the eighteenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

  (p)  the nineteenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

  (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 by approved means;

$2 300

 

        (ii)   the twentieth anniversary, fee paid by another means;

$2 350

 

       (iii)   each subsequent anniversary during the period of extension, fee paid by approved means;

$2 300

 

       (iv)   each subsequent anniversary during the period of extension, fee paid by another means

$2 350

 

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 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

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 of the Act

$600

214A

National phase entry of a PCT application under paragraph 89 (3) (b) of the Act

$340

215

Filing a request under subregulation 3.25 (1) for the certification referred to in Rule 11.3 (a) of the Budapest Treaty

$550

216

Filing a notice of opposition under regulation 5.3 or 5.3AA

$600

217

Filing a request under subregulation 5.5 (1) for dismissal of opposition

$600

218

Filing an application under subregulation 5.10 (2) for an extension of time

$500 for each month or part of a month for which the extension is sought

219

Making a representation to the Commissioner, under regulation 5.3A or 5.3B or subregulation 5.9 (3), objecting to a proposed amendment

$600

220

Making a representation to the Commissioner under subparagraph 5.10 (5) (c) (i) objecting to an application or proposed action

$600

221

Filing an application under section 66 of the Act for a duplicate of a patent to be sealed

$250

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:

   (a)  more than 20 claims are contained in the complete specification as proposed to be amended; and

$110 for each additional claim that arises as described in paragraph (b)

 

  (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 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 paragraph 223 (2) (a) of the Act

$100 for each month or part of a month for which the 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

229

Filing a request under regulation 22.22 for the exercise of discretionary power

$600

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 219, 220, 229 or 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 219, 220, 229 or 230 in relation to the hearing

232

Filing a response to the Commissioner’s report under section 45 or 48 of the Act, if filed more than 12 months, but within 21 months, after the date of the first report on the examination

$100 for each month or part of a month, after the 12 months (other than a month in respect of which a fee was paid under this item in relation to the examination)

233

Requesting the supply of a copy of a patent specification

$50

234

Requesting the supply of a copy of a document other than a patent specification:

 

 

   (a)  for more than 6 documents from a single source and supplied at the same time;

$200 plus $1 per page for each document in excess of 6 documents

 

  (b)  otherwise

$50 per document

235

Requesting the supply of a certificate by the Commissioner

$50

236

Filing a request under subregulation 19.2 (2) for information that requires an international‑type search

$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

239

Filing an application to the Commissioner, for an extension of time under subregulation 3.17A (5):

 

 

   (a)  if the application is filed on or before the date on which notice of acceptance is published

$100 per month or part of a month

 

  (b)  if the application is filed after the date on which notice of acceptance is published

$150 per month or part of a month

Part 3          General fees for international applications

 

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

307

Late payment fee under Rule 16bis.2 of the PCT

the greater of:

   (a)  50% of the amount of the unpaid fees specified in the invitation; and

 

 

  (b)  the amount of the transmittal fee;

 

 

but not more than 50% of the international filing fee, not taking into account any fee for each sheet of the international application in excess of 30 sheets

308

For processing a request for restoration of priority under Rule 26bis of the PCT.

$200

Part 5          Amendments relating to fees (commencing on 1 October 2012)

[24]         Schedule 7, Part 2

substitute

Part 2          General fees

 

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

Filing a request for a modified examination, under section 48 of the Act, of a standard patent request and complete specification

$300

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 examination

$100

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;

$500

 

        (ii)   fee paid by another means;

$550

 

  (h)  the eleventh anniversary:

 

 

         (i)   fee paid by approved means;

$500

 

        (ii)   fee paid by another means;

$550

 

   (i)  the twelfth anniversary:

 

 

         (i)   fee paid by approved means;

$500

 

        (ii)   fee paid by another means;

$550

 

   (j)  the thirteenth anniversary:

 

 

         (i)   fee paid by approved means;

$500

 

        (ii)   fee paid by another means;

$550

 

  (k)  the fourteenth anniversary:

 

 

         (i)   fee paid by approved means;

$500

 

        (ii)   fee paid by another means;

$550

 

   (l)  the fifteenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

(m)  the sixteenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

  (n)  the seventeenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

  (o)  the eighteenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

  (p)  the nineteenth anniversary:

 

 

         (i)   fee paid by approved means;

$1 120

 

        (ii)   fee paid by another means;

$1 170

 

  (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;

$2 300

 

        (ii)   the twentieth anniversary, fee paid by another means;

$2 350

 

       (iii)   each subsequent anniversary during the period of extension, fee paid by approved means;

$2 300

 

       (iv)   each subsequent anniversary during the period of extension, fee paid by another means

$2 350

 

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 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

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 of the Act

$600

214A

National phase entry of a PCT application under paragraph 89 (3) (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

$550

216

Filing a notice of opposition under regulation 5.3 or 5.3AA

$600

217

Filing a request under subregulation 5.5 (1) for dismissal of opposition

$600

218

Filing an application under subregulation 5.10 (2) for an extension of time

$500 for each month or part of a month for which the extension is sought

219

Making a representation to the Commissioner, under regulation 5.3A or 5.3B or subregulation 5.9 (3), objecting to a proposed amendment

$600

220

Making a representation to the Commissioner under subparagraph 5.10 (5) (c) (i) objecting to an application or proposed action

$600

221

Filing an application under section 66 of the Act for a duplicate of a patent to be sealed

$250

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 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 paragraph 223 (2) (a) of the Act

$100 for each month or part of a month for which the 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

229

Filing a request under regulation 22.22 for the exercise of discretionary power

$600

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 219, 220, 229 or 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 219, 220, 229 or 230 in relation to the hearing

232

Filing a response to the Commissioner’s report under section 45 or 48 of the Act, if filed more than 12 months, but within 21 months, after the date of the first report on the examination

$100 for each month or part of a month, after the 12 months (other than a month in respect of which a fee was paid under this item in relation to the examination)

233

Requesting the supply of a copy of a patent specification

$50

234

Requesting the supply of a copy of a document other than a patent specification:

 

 

   (a)  for more than 6 documents from a single source and supplied at the same time;

$200 plus $1 per page for each document in excess of 6 documents

 

  (b)  otherwise

$50 per document

235

Requesting the supply of a certificate by the Commissioner

$50

236

Filing a request under subregulation 19.2 (2) for information that requires an international‑type search

$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

239

Filing an application to the Commissioner, for an extension of time under subregulation 3.17A (5):

 

 

   (a)  if the application is filed on or before the date on which notice of acceptance is published;

$100 per month or part of a month

 

  (b)  if the application is filed after the date on which notice of acceptance is published

$150 per month or part of a month

Schedule 2        Amendments of Trade Marks Regulations 1995

(section 4)

 

Part 1          Amendments relating to declarations

[1]           Paragraphs 20.3 (1) (c) and (d)

omit

statutory

[2]           Subregulation 20.3 (2)

omit

statutory

[3]           Paragraph 21.1 (a)

omit

or request

substitute

, request or declaration

[4]           Paragraph 21.1 (b)

omit

application or request

insert

application, request or declaration

[5]           Regulation 21.6

substitute

21.6        Declarations

         (1)   A declaration required or permitted by the Act or these Regulations must be in an 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 Registrar.

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 Registrar of Trade Marks;

               (b)    the Designated Manager;

                (c)    the Disciplinary Tribunal;

               (d)    the Professional Standards Board.

[6]           Paragraphs 22.7 (c) and 22.8 (4) (c)

omit

statutory

Part 2          Amendments relating to registration of interests or rights

[7]           Subregulations 11.1 (2) and (3)

substitute

         (2)   A request by a person to amend particulars of a claim to an interest in, or to a right in respect of, a trade mark must be:

                (a)    in writing, in an approved form; and

               (b)    accompanied by material supporting the person’s entitlement to make the request.

         (3)   The Registrar must amend the particulars in accordance with the request if:

                (a)    the request is made in accordance with subregulation (2); and

               (b)    the Registrar is reasonably satisfied that the person making the request is entitled to make the request.

[8]           Subregulation 17A.61 (2)

substitute

         (2)   An application by a person under subregulation (1) must:

                (a)    be made in an approved form; and

               (b)    be accompanied by material supporting the person’s interest in, or a right in respect of, the trade mark; and

               (b)    be filed with the Trade Marks Office.

Part 3          Amendments relating to Convention countries

[9]           Schedule 10

omit

Netherlands (including the Netherlands Antilles and Aruba)

insert

Netherlands (including Aruba, Curaçao and Sint Maarten)

[10]         Schedule 10

after

Saint Vincent and the Grenadines

insert

Samoa

Part 4          Amendments relating to fees (commencing on 1 July 2012)

[11]         Regulation 2.1

insert

approved means, for doing an action, means the means specified for the action by the Registrar in a notice made under regulation 21.21AA and published by the Registrar.

[12]         After subregulation 21.21 (7)

insert

         (8)   Item 16 of Schedule 9, as in force on 1 July 2012, does not apply to a person in relation to a hearing held after the commencement of this subregulation if the person:

                (a)    requests the hearing, and pays the fee mentioned in item 14 of Schedule 9, before the commencement of this subregulation; or

               (b)    pays the fee mentioned in item 16 of Schedule 9 for the hearing before the commencement of this subregulation.

         (9)   Item 17 of Schedule 9, as in force on 1 July 2012, does not apply to a person in relation to a hearing held after the commencement of this subregulation if the person:

                (a)    pays the fee mentioned in item 15 of Schedule 9 for the hearing before the commencement of this subregulation; or

               (b)    pays the fee mentioned in item 17 of Schedule 9 for the hearing before the commencement of this subregulation.

[13]         After regulation 21.21

insert

21.21AA Approved means

         (1)   The Registrar may, by notice published by the Registrar, specify one or more means for doing an action mentioned in Schedule 9.

Example of action

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.

[14]         Schedule 9

substitute

Schedule 9        Fees

(regulations 21.21 and 21.21AA)

  

Item

Matter

Fee

1

Filing an application to register a trade mark under subsection 27 (5) or 45 (1) of the Act in respect of goods or services in 1 or more of the prescribed classes:

 

 

   (a)  by approved means;

$120 for each class

 

  (b)  by another means

$180 for each class

 

and, in addition, if the goods and services are specified in the application otherwise than by using the official Goods and Services pick list

$40 for each class

 

   (c)  by AFS request mentioned in regulation 4.2A

$90 for each class

3

Filing an application to register 2 or more trade marks as a series under section 51 of the Act:

 

 

   (a)  by approved means;

$270 for each class

 

  (b)  by another means

$330 for each class

 

         and, in addition, if the goods and services are specified in the application otherwise than by using the official Goods and Services pick list

$40 for each class

4

Requesting an amendment under section 64, 65 or 65A of the Act to include an additional prescribed class of goods or services in an application:

 

 

   (a)  application under section 51 for a series of trade marks;

$330 for each class

 

  (b)  any other case

$180 for each class

5

Filing an application for an extension of:

   (a)  a period under subregulation 4.12 (3) or regulation 17A.20; or

  (b)  time under regulation 21.25

$100 for each month or part of a month for which the extension is sought

6

Filing an application for an extension of:

   (a)  a period under regulation 5.15 (including regulation 5.15 as applied by regulation 17A.33); or

  (b)  time under regulation 5.2 or 17A.30

$150 for each month or part of a month for which the extension is sought

7

Filing a notice of opposition under:

 

 

   (a)  section 52 of the Act; or

$250

 

  (b)  section 96 of the Act (including section 96 as applied by regulation 17A.48); or

$150

 

   (c)  subsection 224 (6) of the Act; or

$250

 

  (d)  regulation 17A.29; or

$250

 

   (e)  section 65A of the Act

$250

8

Filing an application for permission to serve a copy of further evidence in opposition proceedings under paragraph 5.15 (1) (b) (including paragraph 5.15 (1) (b) as applied by regulation 17A.33)

$100

9

Single registration of a trade mark under section 68 of the Act in respect of goods or services in 1 or more of the prescribed classes

$300 for each class

10

Renewal of a single registration of a trade mark under section 75 of the Act in respect of goods or services in 1 or more of the prescribed classes

 

 

   (a)  fee paid by approved means;

$300 for each class

 

  (b)  fee paid by another means

$350 for each class

 

and, in addition, if the request for renewal is made within 6 months after the expiry date to which section 79 of the Act refers

$100 for each class for each month, or part of a month, after the expiry date

11

Each potential renewal period requested by a person under section 80D of the Act in respect of goods or services in 1 or more of the prescribed classes

$350 for each class

12

Each potential renewal period requested by a person under paragraph 80G (1) (b) of the Act in respect of goods and services in 1 or more of the prescribed classes

$350 for each class

 

and, in addition, if the request for renewal is made within 10 months after the end of the prescribed period, regardless of the number of potential renewal periods requested

$100 for each class for each month, or part of a month, after the end of the prescribed period

13

Filing an application for removal of a trade mark from the Register:

   (a)  for non‑use under section 92 of the Act; or

  (b)  for cessation of protection for non‑use under subregulation 17A.48 (1)

$250

14

Request for an oral hearing under:

   (a)  regulation 5.14 (including regulation 5.14 as applied by regulation 17A.33); or

  (b)  regulation 9.4, (including regulation 9.4 as applied by regulation 17A.48)

$600

15

Request for an oral hearing in relation to any other matter

$400

16

Request to attend an oral hearing under:

   (a)  regulation 5.14 (including regulation 5.14 as applied by regulation 17A.33); or

  (b)  regulation 9.4 (including regulation 9.4 as applied by regulation 17A.48)

$600 for each day, or part of a day, less any amount paid under item 14 in relation to the hearing

17

Request to attend an oral hearing in relation to any other matter

$400 less any amount paid under item 15 in relation to the hearing

17A

Request for 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

$100

18

Handling an application for the international registration of a trade mark under regulation 17A.7

$100

19

Transmitting a renewal fee for the international registration of a trade mark under Article 7 of the Madrid Protocol

$100

20

Requesting a decision under subregulation 21.16 (2)

$300

21

Supply of a certificate signed by the Registrar under section 211 of the Act

$50

21A

Supply of a duplicate of a certificate signed by the Registrar under section 211 of the Act

$250

22

Supply of a copy of an extract from the Register or the Record of International Registrations

$50

23

Supply of a copy of a document for which a search is required

$100

25

Applying for admission to sit for an examination conducted by the Board

$400

26

Applying for a grant of a supplementary examination conducted by the Board

$200

27

A report of reasons for failure of an examination conducted by the Board

$200

28

Applying for registration as a trade marks attorney

$200

29

Annual registration of a trade marks attorney

$350

30

Annual registration fee payable for combined registration as a trade marks attorney and patent attorney

$550

31

Applying to be restored to the Register, as authorised by regulation 20.14

$250

32

AFS request under regulation 3A.3

$90 for each class

33

Inclusion of an additional class of goods or services in an AFS request under paragraph 3A.3 (5) (c) or 3A.5 (2) (f)

$90 for each class

34

Inclusion of an amendment in an AFS request that significantly changes the graphical representation of a trade mark under paragraph 3A.5 (2) (f)

$90 for each class

35

   (a)  request for a copy of a file or part of a file under regulation 21.11A;

$30 for each file that is the subject of a request

 

  (b)  for each request of 20 pages or less;

no additional charge

 

   (c)  for each request involving more than 20 pages from a single file

$1 for each additional page over 20 from the file

Part 5          Amendments relating to fees (commencing on 1 October 2012)

[15]         Schedule 9

substitute

Schedule 9        Fees

(regulations 21.21 and 21.21AA)

  

Item

Matter

Fee

 

1

Filing an application to register a trade mark under subsection 27 (5) or 45 (1) of the Act in respect of goods or services in 1 or more of the prescribed classes:

 

 

 

   (a)  by approved means;

$120 for each class

 

  (b)  by another means

$220 for each class

 

and, in addition, if the goods and services are specified in the application otherwise than by using the official Goods and Services pick list

$80 for each class

 

 

   (c)  by AFS request mentioned in regulation 4.2A

$120 for each class

 

3

Filing an application to register 2 or more trade marks as a series under section 51 of the Act:

 

 

 

   (a)  by approved means;

$270 for each class

 

  (b)  by another means

$370 for each class

 

         and, in addition, if the goods and services are specified in the application otherwise than by using the official Goods and Services pick list

$80 for each class

 

4

Requesting an amendment under section 64, 65 or 65A of the Act to include an additional prescribed class of goods or services in an application:

 

 

 

   (a)  application under section 51 for a series of trade marks;

$370 for each class

 

 

  (b)  any other case

$220 for each class

 

5

Filing an application for an extension of:

   (a)  a period under subregulation 4.12 (3) or regulation 17A.20; or

  (b)  time under regulation 21.25

$100 for each month or part of a month for which the extension is sought

 

6

Filing an application for an extension of:

   (a)  a period under regulation 5.15 (including regulation 5.15 as applied by regulation 17A.33); or

  (b)  time under regulation 5.2 or 17A.30

$150 for each month or part of a month for which the extension is sought

 

7

Filing a notice of opposition under:

 

 

 

   (a)  section 52 of the Act; or

$250

 

 

  (b)  section 96 of the Act (including section 96 as applied by regulation 17A.48); or

$150

 

 

   (c)  subsection 224 (6) of the Act; or

$250

 

 

  (d)  regulation 17A.29; or

   (e)  section 65A of the Act

$250

$250

 

8

Filing an application for permission to serve a copy of further evidence in opposition proceedings under paragraph 5.15 (1) (b) (including paragraph 5.15 (1) (b) as applied by regulation 17A.33)

$100

 

9

Single registration of a trade mark under section 68 of the Act in respect of goods or services in 1 or more of the prescribed classes

$300 for each class

 

10

Renewal of a single registration of a trade mark under section 75 of the Act in respect of goods or services in 1 or more of the prescribed classes:

 

 

 

   (a)  fee paid by approved means;

$300 for each class

 

  (b)  fee paid by another means

$350 for each class

 

and, in addition, if the request for renewal is made within 6 months after the expiry date to which section 79 of the Act refers

$100 for each class for each month, or part of a month, after the expiry date

 

11

Each potential renewal period requested by a person under section 80D of the Act in respect of goods or services in 1 or more of the prescribed classes

$350 for each class

 

12

Each potential renewal period requested by a person under paragraph 80G (1) (b) of the Act in respect of goods and services in 1 or more of the prescribed classes

$350 for each class

 

 

and, in addition, if the request for renewal is made within 10 months after the end of the prescribed period, regardless of the number of potential renewal periods requested

$100 for each class for each month, or part of a month, after the end of the prescribed period

 

13

Filing an application for removal of a trade mark from the Register:

   (a)  for non‑use under section 92 of the Act; or

  (b)  for cessation of protection for non‑use under subregulation 17A.48 (1)

$250

 

14

Request for an oral hearing under:

   (a)  regulation 5.14 (including regulation 5.14 as applied by regulation 17A.33); or

  (b)  regulation 9.4, (including regulation 9.4 as applied by regulation 17A.48)

$600

 

15

Request for an oral hearing in relation to any other matter

$400

 

16

Request to attend an oral hearing under:

   (a)  regulation 5.14 (including regulation 5.14 as applied by regulation 17A.33); or

  (b)  regulation 9.4 (including regulation 9.4 as applied by regulation 17A.48)

$600 for each day, or part of a day, less any amount paid under item 14 in relation to the hearing

 

17

Request to attend an oral hearing in relation to any other matter

$400 less any amount paid under item 15 in relation to the hearing

 

17A

Request for 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

$100

 

18

Handling an application for the international registration of a trade mark under regulation 17A.7

$100

 

19

Transmitting a renewal fee for the international registration of a trade mark under Article 7 of the Madrid Protocol

$100

 

20

Requesting a decision under subregulation 21.16 (2)

$300

 

21

Supply of a certificate signed by the Registrar under section 211 of the Act

$50

 

21A

Supply of a duplicate of a certificate signed by the Registrar under section 211 of the Act

$250

 

22

Supply of a copy of an extract from the Register or the Record of International Registrations

$50

 

23

Supply of a copy of a document for which a search is required

$100

 

25

Applying for admission to sit for an examination conducted by the Board

$400

 

26

Applying for a grant of a supplementary examination conducted by the Board

$200

 

27

A report of reasons for failure of an examination conducted by the Board

$200

 

28

Applying for registration as a trade marks attorney

$200

 

29

Annual registration of a trade marks attorney

$350

 

30

Annual registration fee payable for combined registration as a trade marks attorney and patent attorney

$550

 

31

Applying to be restored to the Register, as authorised by regulation 20.14

$250

 

32

AFS request under regulation 3A.3

$80 for each class

 

33

Inclusion of an additional class of goods or services in an AFS request under paragraph 3A.3 (5) (c) or 3A.5 (2) (f)

$120 for each class

 

34

Inclusion of an amendment in an AFS request that significantly changes the graphical representation of a trade mark under paragraph 3A.5 (2) (f)

$120 for each class

 

35

   (a)  request for a copy of a file or part of a file under regulation 21.11A;

$30 for each file that is the subject of a request

 

 

  (b)  for each request of 20 pages or less;

no additional charge

 

 

   (c)  for each request involving more than 20 pages from a single file

$1 for each additional page over 20 from the file

 

Schedule 3        Amendments of Designs Regulations 2004

(section 5)

 

Part 1          Amendment relating to declarations

[1]           Regulation 11.26

substitute

11.26      Declarations

         (1)   A declaration required or permitted by the Act or these Regulations to be given to the Registrar 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 the Registrar, may be given to the Registrar in an electronic form by a means of electronic communication approved by the Registrar.

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.

Part 2          Amendments relating to Convention countries

[2]           Schedule 1

omit

Netherlands (including the Netherlands Antilles and Aruba)

insert

Netherlands (including Aruba, Curaçao and Sint Maarten)

[3]           Schedule 1

after

Saint Vincent and the Grenadines

insert

Samoa

Part 3          Amendments relating to fees (commencing on 1 July 2012)

[4]           Regulation 1.04

insert

approved means, for doing an action, means the means specified for the action by the Registrar in a notice made under regulation 11.01A and published by the Registrar.

[5]           After subregulation 11.01 (6)

insert

Transitional

         (7)   Paragraph 12 (a) of Schedule 4, as in force on 1 July 2012, does not apply to a person in relation to a hearing held after the commencement of this subregulation if:

                (a)    the person requests the hearing, and pays the fee mentioned in item 11 of Schedule 4, before the commencement of this subregulation; or

               (b)    the person pays the fee mentioned in paragraph 12 (a) of of Schedule 4 for the hearing before the commencement of this subregulation; or

                (c)    the hearing relates to a request or application by the person for which the person paid the fee mentioned in item 10 of Schedule 4 before the commencement of this subregulation.

         (8)   Paragraph 12 (b) of Schedule 4, as in force on 1 July 2012, does not apply to a person in relation to a hearing held after the commencement of this subregulation if the person pays the fee mentioned in paragraph 12 (b) of Schedule 4 for the hearing before the commencement of this subregulation.

[6]           After regulation 11.01

insert

11.01A   Approved means

         (1)   The Registrar may, by notice published by the Registrar, specify one or more means for doing an action mentioned in Schedule 4.

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.

[7]           Schedule 4

substitute

Schedule 4        Fees

(regulations 11.01 and 11.01A)

  

Item

Matter

Fee

1

Filing a design application

$200 for each design identified, by the applicant, as being a separate design disclosed in the application

2

Filing a request for registration covering a further design

$200 for each further design covered by the request

3

Filing a request, by the registered owner of a design, for examination of the design

$420

4

Filing a request, by a person other than the registered owner of a design, for examination of a design

   (a)  payable by the person filing the request—$210; and

  (b)  payable by the registered owner—$210

5

Filing an application for renewal of the registration of a design

 

 

   (a)  by approved means

$320

 

  (b)  by another means

$370

 

and in addition, if the fee is paid after the expiry of 5 years from the day when the term of registration of the design starts

$100 for each month or part of a month after the expiry of the 5 years and before the fee is paid (maximum $600)

6

Lodging a request for an extension of the period of registration:

 

 

   (a)  under subsection 27A (2) of the old Act within the meaning of section 161 of the Act (the first extension);

   (a)  $55

 

  (b)  under subsection 27A (12) of the old Act (the second extension);

  (b)  $90

 

   (c)  under subsection 27A (13) of the old Act (the third extension)

   (c)  $135

7

Filing an application for an extension of time on the ground specified in paragraph 137 (2) (a) of the Act

$100 for each month or part of a month for which the extension is sought

8

Filing an application for an extension of time on the ground specified in paragraph 137 (2) (b) of the Act

$100

9

Filing a notice of opposition

$550

10

Filing any 1 of the following:

$500

 

   (a)  a request for a determination under section 29 of the Act;

 

 

  (b)  a request for a direction under section 30 of the Act;

 

 

   (c)  an application under section 51 of the Act for revocation of the registration of a design;

 

 

  (d)  a request under paragraph 11.22 (3) (c) for the exercise of the Registrar’s discretionary powers;

 

 

   (e)  a request for the exercise of the Registrar’s discretionary powers not mentioned in the above paragraphs

 

11

Filing a request for a hearing

$600

12

Appearing at a hearing

   (a)  for the first day—$600 less any amount paid under item 10 or 11 in relation to the hearing; and

 

 

  (b)  if the hearing runs for more than a day—$600 for each day or part of a day after the first day

13

Filing a request for the supply, by the Registrar, of:

   (a)  a duplicate certificate of registration; or

  (b)  a duplicate certificate of examination

$250

14

Filing a request for the supply, by the Registrar, of a copy of an extract from the Register

   (a)  $50 for the document; or

  (b)  if a search is required for the document—$100 for the document

15

Filing a request for the supply, by the Registrar, of a copy of a document other than an extract from the Register

   (a)  $50 for the document; or

  (b)  if a search is required for the document—$100 for the document

16

Filing a request for certification of a document

$50

Part 4          Amendments relating to fees (commencing on 1 October 2012)

[8]           Schedule 4

substitute

Schedule 4        Fees

(regulations 11.01 and 11.01A)

  

Item

Matter

Fee

1

Filing a design application

   (a)  by approved means;

$250 for each design identified, by the applicant, as being a separate design disclosed in the application

 

  (b)  by another means

$350 for each design identified, by the applicant, as being a separate design disclosed in the application

2

Filing a request for registration covering a further design

 

 

   (a)  by approved means;

$250 for each further design covered by the request

 

  (b)  by another means

$350 for each further design covered by the request

3

Filing a request, by the registered owner of a design, for examination of the design

$420

4

Filing a request, by a person other than the registered owner of a design, for examination of a design

   (a)  payable by the person filing the request—$210; and

  (b)  payable by the registered owner—$210

5

Filing an application for renewal of the registration of a design

 

 

   (a)  by approved means

$320

 

  (b)  by another means

$370

 

and, in addition, if the fee is paid after the expiry of 5 years from the day when the term of registration of the design starts 

$100 for each month or part of a month after the expiry of the 5 years and before the fee is paid (maximum $600)

6

Lodging a request for an extension of the period of registration:

 

 

 

   (a)  under subsection 27A (2) of the old Act within the meaning of section 161 of the Act (the first extension);

   (a)  $55;

 

 

  (b)  under subsection 27A (12) of the old Act (the second extension);

  (b)  $90;

 

 

   (c)  under subsection 27A (13) of the old Act (the third extension)

   (c)  $135

 

7

Filing an application for an extension of time on the ground specified in paragraph 137 (2) (a) of the Act

$100 for each month or part of a month for which the extension is sought

 

8

Filing an application for an extension of time on the ground specified in paragraph 137 (2) (b) of the Act

$100

 

9

Filing a notice of opposition

$550

 

10

Filing any 1 of the following:

$500

 

 

   (a)  a request for a determination under section 29 of the Act;

 

 

 

  (b)  a request for a direction under section 30 of the Act;

 

 

 

   (c)  an application under section 51 of the Act for revocation of the registration of a design;

 

 

 

  (d)  a request under paragraph 11.22 (3) (c) for the exercise of the Registrar’s discretionary powers;

 

 

 

   (e)  a request for the exercise of the Registrar’s discretionary powers not mentioned in the above paragraphs

 

 

11

Filing a request for a hearing

$600

 

12

Appearing at a hearing

   (a)  for the first day—$600 less any amount paid under item 10 or 11 in relation to the hearing; and

 

 

 

  (b)  if the hearing runs for more than a day—$600 for each day or part of a day after the first day

 

13

Filing a request for the supply, by the Registrar, of:

   (a)  a duplicate certificate of registration; or

  (b)  a duplicate certificate of examination

$250

 

14

Filing a request for the supply, by the Registrar, of a copy of an extract from the Register

   (a)  $50 for the document; or

  (b)  if a search is required for the document—$100 for the document

 

15

Filing a request for the supply, by the Registrar, of a copy of a document other than an extract from the Register

   (a)  $50 for the document; or

  (b)  if a search is required for the document—$100 for the document

 

16

Filing a request for certification of a document

$50

 

Schedule 4        Amendments of Plant Breeder’s Rights Regulations 1994

(section 6)

 

Part 1          Amendments relating to fees (commencing on 1 July 2012)

[1]           Subregulation 3 (1)

insert

approved means, for doing an action, means the means specified for the action by the Registrar in a notice made under regulation 4A and published by the Registrar.

[2]           After regulation 4

insert

4A           Approved means

         (1)   The Registrar may, by notice published by the Registrar, specify one or more means for doing an action mentioned in the Schedule.

Examples of actions

1   Making a request.

2   Lodging an application.

         (2)   The means may be an electronic means or any other means.

Note   The means become approved means when they are published.

[3]           Schedule

substitute

Schedule           Fees

(regulations 4 and 4A)

  

Item

Act, service or occasion in respect of which fee is payable

Fee

1A

Designation of an approved person under section 8

$50

1B

Renewal of designation of an approved person

$50

1

On making a request under subsection 19 (4), whether or not the request includes a request under subsection 19 (10)

$500

2

On making a request for a certificate under subsection 19 (11)

$100

3

Amendment of the register on notification of assignment under section 21

$100

4

On lodgment of an application under section 26

$300

5

On making a request for a variation of an application under subsection 31 (1)

$100

6

On lodgment of a detailed description under section 34 for:

   (a)  a variety tested under section 37 to establish that the variety is distinct, uniform and stable:

 

 

         (i)   if the testing is conducted by an authorised establishment;

$920

 

        (ii)   in any other case;

$1 610

 

  (b)  a variety to which subsection 38 (3), (4) or (5) applies;

$1 610

 

   (c)  each of 2 or more varieties of the same plant species tested simultaneously at the same site in Australia under section 37 to establish that the varieties are distinct, uniform and stable, for which a complete application and detailed description are lodged on the same day by the same approved person or applicant or agent of the applicant under section 34

$1 380

7

On lodgment of an objection under section 35

$100

8

On making a request for a copy of an application, an objection or a detailed description under subsection 36 (2)

$50

9

On lodgment of an application for a declaration of essential derivation under subsection 40 (1)

$800

10

Grant of PBR in a plant variety under section 44

$345

11

On lodgment of an application for:

 

 

   (a)  revocation of a PBR under subsection 50 (8); or

$500

 

  (b)  revocation of a declaration of essential derivation under subsection 50 (9)

$500

12

On making a request for a copy of an entry in the register under subsection 62 (2)

$50

15

For annual maintenance of a PBR—on each anniversary of the grant:

 

 

   (a)  fee paid by approved means;

$345

 

  (b)  fee paid by another means

$395

16

For the undertaking, on request of a person, by the Secretary or the Registrar of any work required or authorised under the Act and for which a fee is not prescribed under any other item

$75 per hour or part of an hour

Part 2          Amendments relating to fees (commencing on 1 October 2012)

[4]           Schedule

substitute

Schedule           Fees

(regulations 4 and 4A)

  

Item

Act, service or occasion in respect of which fee is payable

Fee

1A

Designation of an approved person under section 8

$50

1B

Renewal of designation of an approved person

$50

1

On making a request under subsection 19 (4), whether or not the request includes a request under subsection 19 (10)

$500

2

On making a request for a certificate under subsection 19 (11)

$100

3

Amendment of the register on notification of assignment under section 21

$100

4

On lodgment of an application under section 26:

 

 

   (a)  fee paid by approved means;

$345

 

  (b)  fee paid by another means

$445

5

On making a request for a variation of an application under subsection 31 (1)

$100

6

On lodgment of a detailed description under section 34 for:

   (a)  a variety tested under section 37 to establish that the variety is distinct, uniform and stable:

 

 

         (i)   if the testing is conducted by an authorised establishment;

$920

 

        (ii)   in any other case;

$1 610

 

  (b)  a variety to which subsection 38 (3), (4) or (5) applies;

$1 610

 

   (c)  each of 2 or more varieties of the same plant species tested simultaneously at the same site in Australia under section 37 to establish that the varieties are distinct, uniform and stable, for which a complete application and detailed description are lodged on the same day by the same approved person or applicant or agent of the applicant under section 34

$1 380

7

On lodgment of an objection under section 35

$100

8

On making a request for a copy of an application, an objection or a detailed description under subsection 36 (2)

$50

9

On lodgment of an application for a declaration of essential derivation under subsection 40 (1)

$800

10

Grant of PBR in a plant variety under section 44

$345

11

On lodgment of an application for:

 

 

   (a)  revocation of a PBR under subsection 50 (8); or

$500

 

  (b)  revocation of a declaration of essential derivation under subsection 50 (9)

$500

12

On making a request for a copy of an entry in the register under subsection 62 (2)

$50

15

For annual maintenance of a PBR—on each anniversary of the grant:

 

 

   (a)  fee paid by approved means;

$345

 

  (b)  fee paid by another means

$395

16

For the undertaking, on request of a person, by the Secretary or the Registrar of any work required or authorised under the Act and for which a fee is not prescribed under any other item

$75 per hour or part of an hour


Note

1.       All legislative instruments and compilations are registered on the Federal Register of Legislative Instruments kept under the Legislative Instruments Act 2003. See www.comlaw.gov.au.