اللائحة التنفيذية للبراءات لعام 1991 (بصيغتها الموحدة في 12 ديسمبر 2009)، أستراليا

1.1 Name of Regulations [see Note 1] 14

1.2 Commencement 14

1.3 Interpretation 14 1.3A Meaning of completed in relation to a search 16

1.4 English text of treaties 17

1.5 Deposit requirements: prescribed period 17

1.6 Disclosure in basic applications — general 18 1.6A Disclosure in basic applications — use of approved digital library 18

1.7 Verification of translations of international applications 19

1.8 Completion of applications 19

2.1 Applications by co-owners for directions 21

2.2 Publication or use: prescribed circumstances 21

2.3 Publication or use: prescribed periods 23

2.4 Prescribed period: patents of addition 24

2.5 Prescribed period: assertion that invention is not a patentable invention 24

2.6 Prescribed period: notification of assertion of invalidity of innovation patent 25

2.7 Documents to accompany notice of assertion of invalidity 25

Chapter 3 From application to acceptance

Part 1 Inventions generally

3.23 Documents in accepted applications and patents involving micro-organisms 50

3.24 Commissioner may request samples and viability statement 50

3.25 Request for Commissioner’s certificate authorising release of sample of a micro-organism 51

3.26 Breach of undertakings given in respect of micro-organisms 54

3.27 Procedure in proceedings for breach of an undertaking 55

3.28 Relief in proceedings for breach of undertakings 55

3.29 Notification that a deposit requirement has ceased to be satisfied 56

3.30 Prescribed period: deposit requirements taken to be satisfied 57

3.31 Application for declaration that deposit requirements are not satisfied 59

Chapter 4 Publication

5.1 Application of this Chapter 63

5.2 Interpretation 63

5.3 Filing of opposition (except under section 101M of the Act) 64 5.3AA Filing of opposition under section 101M of Act 65 5.3A Amendment of notice of opposition: correction of error or mistake 65 5.3B Amendment of notice of opposition: change of opponent 66

5.4 Filing of statement 66

5.5 Dismissal of opposition 66

5.6 Determination of opposition 67

5.7 Opponent to serve copy of substitute statement 68

5.8 Time for giving of evidence 68

5.9 Amendment of statement 70 5.9A Amendment of statement: additional ground as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004 71

5.10 Conduct of proceedings to which this Chapter applies 72

5.11 Commissioner may inform himself or herself 73

5.12 Hearing of opposition 73

5.13 Representations to Commissioner 74

5.14 Commissioner not required to hold hearing 74

5.15 Withdrawal of opposition 74 Page

Chapter 6 Grant and term of patents

Part 1 Patents generally

6.7 Definitions 78

6.8 Information to accompany application 78

6.9 Application without pre-TGA marketing approval 78

6.10 Application with pre-TGA marketing approval 79

6.11 Further information 79

Chapter 6A Divisional applications 6A.1 Divisional applications: standard patents 81 6A.2 Divisional applications: innovation patents 81

Chapter 7 Patents of addition

8.5 Convention countries 95

8.6 Particulars required for Convention application — general 95

8.6A Particulars required for Convention application — use of approved digital library 96

8.7 Form of request in relation to withdrawn, abandoned or refused applications 96

9.1 Notice of Commissioner’s decision to re-examine complete specification 97

9.2 Request for re-examination of complete specification 97

9.3 Copy of report on re-examination 98

9.4 Prescribed period: statement disputing report by Commissioner 98

9.5 Completion of re-examination 99

10.1 Form of amendments 108

10.2 Commissioner to consider and deal with requests for leave to amend 109

10.3 Amendments not allowable 112

10.4 Commissioner to refuse request for leave to amend 114

10.5 Commissioner to grant leave to amend 114

10.6 Time for allowance of amendments 115

10.7 Correction of Register or patent 116

10.8 Prescribed decisions: appeal to Federal Court 119

10.10 Prescribed period: filing of court order 119

10.11 Form of direction by Commissioner: patents 119

10.12 Form of direction by Commissioner: applications 119

10.14 Form of request: claim under assignment or agreement 119

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Chapter 11 11.1	Infringement Infringement exemptions: prescribed foreign countries	120
Chapter 12 12.1 12.2 12.3 12.4	Compulsory licences and revocation of patents Lodgment of applications for compulsory licences Prescribed period: revocation of patent Form of notice: offer to surrender patent Applications to revoke patents	121122122122

13.2 Prescribed period: request for examination of applications 125

13.3 Prescribed period: continuation fees 125

13.4 Prescribed period: acceptance of request and specification 126

13.5 If applications lapse 128

13.6 Time for payment of renewal fee for patent 128

13.7 Prescribed period: ceasing of innovation patents 130

Chapter 15 Special provisions relating to associated technology

17.1 Application for declaration: exploitation of

innovation patent 132 17.1A Prescribed period: order relating to standard patent 132

17.2 Prescribed period, document and fee: filing of international applications 132

Chapter 19 The register and official documents

20.2 Form of application 136

20.3 Evidence that applicant meets registration requirements 136

20.4 Certificate of registration 137

20.5 Evidence of academic qualifications 137

20.6 Academic qualifications 137

20.7 Evidence of knowledge requirements 138

20.8 Knowledge requirements 139

20.9 Exemption from a requirement in Schedule 5 140

20.10 Employment requirements 140

20.11 Statements of skill 141

20.12 Prescribed offences 142

Part 3 Accreditation of courses of study

20.13 Accreditation of courses of study 143

20.14 Provisional accreditation 144

Part 4 Board examinations

20.15 Board examinations 145

20.16 Time for holding Board examinations 145

20.17 Examinable subject matter 145

20.18 Admission to sit for a Board examination 146

20.19 Notification of Board examination results 146

20.20 Reasons for failure of Board examination 146

20.21 Supplementary Board examination 146

Part 5 Maintaining registration

20.22 Requirements for remaining on Register 148

20.23 Payment of annual registration fee 148

20.24 Continuing professional education — number of hours 148

Page
20.25	Method of demonstrating that continuing professional education has been undertaken	149
Part 6	Removal from Register
20.26 20.27 20.28	Voluntary removal of name from Register Failure to pay annual registration fee Failure to comply with continuing professional education requirements	150150150
Part 7	Returning to Register
20.29 20.30 20.31	Restoring attorney’s name to Register Restoring attorney’s name to Register following payment of unpaid fee Returning to Register in other circumstances	152153153
Part 8	Discipline
Division 1	General
20.32	Definitions	155
20.33 20.34 20.35	Role of Board in disciplinary proceedings Board may require attorney to cooperate with investigationCommencing disciplinary proceedings	155 157157
Division 2	Proceedings in Disciplinary Tribunal
20.36 20.37 20.38	Procedure of Disciplinary Tribunal Notification of hearing of disciplinary proceedings Hearings to be public except in special circumstances	157158158
20.39 20.40 20.41	Representation before Disciplinary Tribunal Summoning of witnesses Offences by persons appearing before Disciplinary Tribunal	159159 159
20.42 20.43 20.44 20.45 20.46 20.47	Protection of person constituting Disciplinary Tribunal, witnesses etc Decision of Disciplinary Tribunal Penalties — professional misconduct Penalties — unsatisfactory professional conduct Finding that attorney was unqualified at time of registrationFinding that registration obtained by fraud	161162162163 164164
	Patents Regulations 1991	9

Page
20.48 20.49 20.50 20.51 20.52	Matters that may be considered in determining penaltiesFindings of Disciplinary Tribunal Notification and publication of decisions of Disciplinary Tribunal Completion of outstanding business Former attorney may be required to provide assistance	164164165165 166
Part 9	Rights of registered patent attorneys
20.53	Lien	168
Part 10	Administration
Division 1	Professional Standards Board for Patent and Trade Marks Attorneys
20.54 20.55	Constitution of Board (Act s 227A) Term of office of Board members	169169
20.56 20.57 20.58 20.59 20.60	Resignation and removal of members from Board Meetings of Board Member presiding at meetings of Board Quorum for Board meetings Absence of Chairperson from meeting — leave from Board	169170171171171
Division 2	Patent and Trade Marks Attorneys Disciplinary Tribunal
20.61 20.62 20.63 20.64	Establishment of Disciplinary Tribunal Disciplinary Tribunal — substantive appointments Disciplinary Tribunal — acting appointments Disclosure of interest	171171172173
20.65	Qualifications for appointment to, or acting as, Disciplinary Tribunal	174
Chapter 21 21.1	Administration Patent Office and sub-offices	175
21.2	Employees to whom Commissioner may delegate (Act s 209 (1))	175

Chapter 22 Miscellaneous

Division 1 Fees

22.9 Death of applicant or nominated person 185

22.10 Address for service 185 22.10A Address for correspondence 186 22.10AA Period for doing certain acts — office not open for business 186 22.10AB Days when office not open for business 186 22.10AC Period for doing certain acts — acts to which section 222A does not apply 187

22.11 Extension of time 187

22.12 Evidence 188

22.13 Declarations 189

22.14 Directions not otherwise prescribed 190

22.15 Documents to be in English 190

22.16 Documents other than specifications and abstracts 191

22.17 Incapacity of certain persons 191

22.18 Destruction of documents 192

22.19 Copies of certain documents to be supplied 192

22.20 International applications and the Patent Office 193

22.21 Protection or compensation of certain persons 193

22.22 Exercise by Commissioner of certain powers 194

22.23 Hearings 194

22.24 Practice and procedure other than for opposition proceedings 195

22.25 Requirements cannot be complied with for reasonable cause 195

22.26 Review of decisions 196

23.1 Saving: prohibition orders 198

23.2 Delegation: certain matters referred to in this Chapter 198

23.3 Opposition to grant: practice and procedure 198

23.4 Certain opposition: practice and procedure 199

23.5 Fees payable for certain matters relating to opposition 199

23.6 Certain delegations: opposition 199

23.7 Certain undertakings 200

23.8 Restoration of lapsed applications or ceased patents 200

23.9 Certain continuation and renewal fees 201

23.10 Fee taken to have been paid 201

23.11 Supply of product referred to in section 117 of the Act 201

23.12 Certain withdrawn, abandoned or refused applications 202

23.13 Certain certificates of validity 202

23.14 Certain action under the 1952 Act 203

23.15 Amendment of petty patents 203

23.16 Certain applications under 1952 Act: time for acceptance 203

Page
23.17 23.18 23.25	PCT applications to which subsection 89 (5) of the Act does not apply Certain priority dates: saving Fees	204204205
23.26 23.32 23.33 23.34 23.35	Certain actions and proceedings Transitional: priority date and date of patent for innovation patent application that is a divisional application of a petty patent or petty patent applicationTransitional: examination of innovation patents converted from petty patent applications Transitional: certain PCT applications Transitional: payment of fees for petty patents	205 206206207207
Schedule 1	Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure	210
Schedule 1A	Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure	228
Schedule 2	Patent Cooperation Treaty	253

2.2 (2) (a) or (b):

(i)

if the application claims priority from a basic application made within 6 months of the date of the first showing or use of the invention at a recognised exhibition — 12 months from the making of the basic application; and

(ii)

in any other case — 6 months after the first showing or use of the invention at the exhibition; and

(b)

in the case of the circumstance mentioned in paragraph

2.2 (2) (c):

(i)

if the application claims priority from a basic application made within 6 months of the date of the first reading or publication referred to in that paragraph — 12 months from the making of the basic application; and

(ii)

in any other case — 6 months after the first reading or publication; and

(c)

in the case of the circumstance mentioned in paragraph

2.2 (2) (d) — 12 months from the start of the first public working of the invention referred to in that paragraph.

(2)

For the purposes of subsection 24 (1) of the Act, in the case of information of the kind referred to in paragraph 24 (1) (b) of the Act, the prescribed period is 12 months from the day when the information referred to in that paragraph became publicly available.

(3)

Subregulation (4) applies:

(a)

if an application for a patent is a divisional application:

(i)

under section 79B of the Act for an invention disclosed in the specification filed with a previous application for a standard patent (the originalapplication); or

(ii)

under section 79C of the Act for an invention disclosed in the specification filed in respect of an application for an innovation patent (the original application); and

(b)

only to information disclosed in the divisional application that was disclosed in the original application.

(4)

For determining the prescribed period for subsection 24 (1) of the Act, the filing date of the divisional application is taken to be the filing date of the original application.

3.1 Prescribed documents: patent applications

(1)

For the purposes of subsection 29 (1) of the Act, an abstract is required to be filed with a patent request made in relation to a complete application.

(2)

For the purposes of subsection 29 (1) of the Act, if a complete application for a standard patent is made, the following documents are required to be filed before acceptance:

(a)

a notice by the applicant stating the entitlement of the nominated person to the grant of the patent; and

(b)

if the applicant claims priority from another application — a notice by the applicant stating the entitlement of the nominated person to claim that priority; and

(c)

if a micro-organism is deposited with a prescribed depositary institution:

(i)

if the deposit is an original deposit within the meaning of Rule 7.3 of the Budapest Treaty or a new deposit within the meaning of Rule 7.4 of that Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty; and

(ii)

if samples of the micro-organism were transferred to that institution under Rule 5.1 (a) (i) of the Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty; and

(iii) if a receipt referred to in subparagraph (i) or (ii) is not in English — a translation of the receipt into English and a related certificate of verification; and

Regulation 3.2A

(d)

if the application relies on section 6 of the Act — a notice by the applicant stating the entitlement of the nominated person to rely on the deposit for the purposes of the Act; and

(e)

if the application is an application to which subsection 34 (2) of the Act applies — a copy of the court order declaring the applicant to be an eligible person in relation to the invention so far as claimed in a claim of the specification; and

(f)

if the application is an application to which subsection 36 (4) of the Act applies — a copy of the declaration of the Commissioner that the applicant is an eligible person in relation to the invention as disclosed in the specification; and

(g)

if the request is for a patent of addition and is made by a person authorised by the applicant or patentee — a statement authorising the person that is signed by the applicant or patentee.

3.1A Applicant taken to be nominated person

For an application for a standard patent or an innovation patent, the applicant is taken to be the nominated person.

3.2 Provisional specifications

A provisional specification must be in the approved form.

Regulation 3.2B

(3) If the Commissioner treats an application for a standard patent as having been filed, the Commissioner may, within 1 month from the date of filing of the application, direct the applicant to do anything necessary to ensure that the patent request and complete specification comply with the requirements mentioned in subregulations (1) and (2).

Note See regulation 3.5 for what happens if certain information required for an application is not filed.

(4)

If:

(a)

the Commissioner gives the applicant a direction under subregulation (3) to assist the Commissioner in deciding whether a filed abstract is in accordance with these Regulations; and

(b)

the Commissioner has specified in the direction a period of not less than 1 month within which the applicant must comply with the direction; and

(c)

the applicant does not comply with the direction before the

end of the period; the complete application to which the patent request and complete specification relate lapses at the end of the period.

(5)

Subject to subregulation (4), if an applicant to whom a direction has been given under subregulation (3) does not comply with the direction within 2 months from the date of the direction, the application lapses.

(6)

If an application lapses under subregulation (4) or (5), the Commissioner must:

(a)

advertise that fact in the Official Journal; and

(b)

tell the applicant that the complete application has lapsed.

3.3 Abstracts

(1)

An abstract must consist of:

(a)

a summary of the disclosure as contained in the description, the claims and any drawings, being a summary:

(i)

that indicates the technical field to which the invention pertains; and

(ii)

that is drafted in a way that allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention; and

(b)

if applicable, any chemical formula that, among all the formulas contained in the specification, best characterises the invention.

(2)

An abstract must be as concise as the disclosure permits, preferably 50 to 150 words.

(3)

An abstract must not contain statements on the alleged merits or value of the claimed invention or on its speculative application.

(4)

Each main technical feature mentioned in the abstract and illustrated by a drawing in the specification must be followed by a reference sign placed between parentheses.

(5)

An abstract must be so drafted that it can efficiently serve as a scanning tool for the purposes of searching in the particular art, especially by assisting in the formulation of an opinion on whether there is a need to consult the specification itself for those purposes.

Regulation 3.4

(6)

An abstract is not taken into account in construing the nature of the invention that is the subject of the specification to which the abstract relates.

(7)

Information in an abstract filed with the complete application may be taken into account in determining, for subsection 102 (1) of the Act, whether a matter was in substance disclosed in the specification as filed.

3.4 Substitute abstracts

(1)

If a filed abstract is not in accordance with these Regulations, the Commissioner may prepare a draft of a new abstract in substitution for the filed abstract.

(2)

A copy of the draft of a new abstract must be given to the applicant who may give the Commissioner written comments on the draft within 1 month of the draft being given to him or her.

(3)

The Commissioner must take the comments into account in the final preparation of the new abstract.

(4)

If the Commissioner prepares a new abstract, the new abstract is taken to be the abstract of the specification to which it relates.

(5)

If an applicant who files a complete specification does not file with it an abstract, the Commissioner, within 1 month of the date of filing of the complete specification, may direct the applicant to file an abstract within 1 month of the day on which the direction is given.

(6)

If an abstract is not filed within 1 month from the day on which the direction was given, the application lapses.

(7)

If an application lapses under subregulation (6), the Commissioner must:

(a)

advertise that fact in the Official Journal; and

(b)

advise the applicant of the lapse.

Regulation 3.5

3.5 Filing date

(1)

Subject to this regulation, the filing date of a patent application is the date on which the following information is filed:

(a)

information in English that indicates that what is filed is intended to be an application for a patent;

(b)

information that allows the identity of the applicant to be established or allows the applicant to be contacted by the Patent Office;

(c)

information that appears to be a description.

(2)

For paragraph (1) (c), a description:

(a)

does not have to be in English; and

(b)

may be a drawing; and

(c)

may be a reference, in English, to an earlier patent application filed in Australia or in a Convention country.

(3)

For paragraph (2) (c), the earlier patent application does not have to be in English.

(4)

If all of the information mentioned in subregulation (1) is not filed in respect of an application, the Commissioner must give the applicant notice in writing:

(a)

telling the applicant that all of the information mentioned in subregulation (1) was not filed in respect of the application; and

(b)

asking the applicant to file the additional information required.

(5)

If an applicant to whom a notice under subregulation (4) has been given does not file the additional information within 2 months from the date of the notice, the application is taken not to have been filed.

(6)

Subregulation (7) applies if an applicant to whom a notice under subregulation (4) has been given files the additional information within 2 months from the date of the notice.

(7)

For section 30 of the Act, the filing date of the patent application is the date on which the additional information is filed.

Regulation 3.5A

Regulation 3.5B

(6)

If paragraph (5) (a) applies, the Commissioner must tell the applicant of the new filing date.

(7)

Despite paragraph (5) (a), if within 1 month after being told of the new filing date, the applicant withdraws the missing part from the specification, the filing date of the application, for section 30 of the Act, is the date that would have been the filing date if the missing part had not been incorporated.

3.6 Requests to make determinations between interested parties

For section 32 of the Act, a request must:

(a)

be in the approved form; and

(b)

have with it a notice, by the person making the request, stating the grounds on which the request is made.

3.7 Form of certain applications

For the purposes of paragraphs 35 (1) (b) and 36 (1) (b) of the Act, an application must:

(a)

be in the approved form; and

(b)

have with it a notice by the applicant stating the grounds on which the application is made.

3.8 Time within which applications are to be made following certain decisions and declarations

An application under section 29 of the Act must be made:

(a)

in the case of an application of the kind described in section 33 of the Act — within 3 months of the decision of the Commissioner referred to in paragraph 33 (1) (c),

(2)

(c), (3) (c) or (4) (b) of the Act, as the case requires; or

Regulation 3.12

(b)

in the case of an application of the kind described in section 34 of the Act — within 3 months of the declaration of a court under subsection 34 (1) of the Act; or

(c)

in the case of an application of the kind described in section 35 of the Act — within 3 months of the declaration of the Commissioner under subsection 35 (1) of the Act; or

(d)

in the case of an application of the kind described in section 36 of the Act — within 3 months of the declaration of the Commissioner under subsection 36 (1) of the Act.

3.9 Prescribed period: treatment of complete application as provisional

For subsection 37 (1) of the Act, the prescribed period is:

(a)

for an application for a standard patent — the period from the date of filing of the complete application until the earlier of:

(i)

the end of 12 months from the filing date of the complete application; and

(ii)

the day that is 3 weeks before the due date for publishing a notice under section 54 of the Act; and

(b)

for an application for an innovation patent — 12 months from the filing date of the complete application.

3.10 Prescribed period: making of complete applications

For the purposes of section 38 of the Act, the period of 12 months from the filing date of the provisional application is prescribed.

3.12 Priority dates generally

(1)

Subject to regulations 3.13 and 3.14 and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:

(a)

the date of filing of the specification;

3.13 Priority dates: certain persons and applications

(1)

This regulation applies if, under subsection 36 (1) of the Act:

(a)

the Commissioner declares a person to be an eligible person; and

(b)

the person makes a complete application under section 29 of the Act.

(2)

The priority date of a claim of the specification in respect of that application, being a claim that is fairly based on matter disclosed in the specification referred to in paragraph 36 (1) (c) of the Act and referred to in the declaration, is:

(a)

if that specification is a complete specification — the priority date of the claim or the date that would have been the priority date of the claim if the claim had been a claim of the specification; and

(b)

if that specification is a provisional specification — the date of filing of the provisional specification.

3.14 Priority dates: certain amended claims

If subsection 114 (1) of the Act applies to a claim of a specification, the priority date of the claim is:

(a)

in the case of an amendment to which subsection 89 (4) or

(5)

of the Act applies — the date on which the amendment is taken to have been made under that subsection; and

(b)

in any other case — the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subsection 114 (1) of the Act.

Regulation 3.15

3.15 Prescribed period and form of request for examination

(1)

For the purposes of subsection 44 (1) of the Act, the period of 5 years from the filing date of the complete application is prescribed.

(2)

For the purposes of subsection 44 (1) of the Act, a request for an examination of a patent request and complete specification must be in the approved form.

3.16 Prescribed grounds and period for examination

(1)

For the purposes of subsection 44 (2) of the Act, the following grounds are prescribed:

(a)

that the Commissioner reasonably considers it expedient to give the direction having regard to the progress made in the examination of applications filed before the filing date of the application concerned;

(b)

that the Commissioner reasonably considers it to be in the public interest to give the direction;

(c)

that the Commissioner reasonably considers it expedient to give the direction, having regard to the examination of another application for a standard patent or the examination of an innovation patent.

(2)

For the purposes of subsection 44 (2) of the Act, the prescribed period is 6 months from the day on which the direction was given.

(3)

A direction must be given in writing and state the grounds on which it is given.

3.17 Requirement for Commissioner to direct or expedite examination

(1)

For the purposes of subsection 44 (3) of the Act, a person may, in the approved form, request the Commissioner to direct an applicant for a standard patent to ask for an examination of the patent request and complete specification under subsection 44

(2)

of the Act.

Regulation 3.17A

(2)

If an applicant has asked for an examination of the patent request and complete specification to be expedited, the Commissioner may do so if he or she is reasonably satisfied that:

(a)

it is in the public interest; or

(b)

there are special circumstances that make it desirable.

Regulation 3.17B

(c)

1 February 2004.

(5)

However:

(a)

if an applicant applies for an extension of time:

(i)

after the day applicable to the applicant under subregulation (4); and

(ii)

on or before the day 3 months after the date on which a notice of acceptance is published under paragraph 49 (5) (b) of the Act;

the period within which the applicant must inform the Commissioner of the results of a documentary search is taken to end on the date on which the application is filed in accordance with subregulation (6); and

(b)

the applicant may inform the Commissioner of the results of the documentary search on that date.

(6)

An application under subregulation (5) must be filed:

(a)

in the approved form; and

(b)

with:

(i)

the search results; and

(ii)

the relevant fee in item 239 in Schedule 7.

(7)

If a single application under subregulation (5) relates to more than 1 set of search results:

(a)

the applicant needs to pay only one fee in respect of all the search results; and

(b)

the fee is calculated by reference to the search results that require the longest period of extension.

(8)

For subsection 45 (5) of the Act, completed, in relation to a search, has the meaning given by regulation 1.3A.

Regulation 3.17B

(e)

a search, other than a search by or on behalf of the European Patent Office or the UK Patent Office, the result of which:

(i)

has already been given to the Commissioner under subsection 45 (3) of the Act in relation to the application; or

(ii)

was contained in the International Search Report;

(f)

a search, the result of which was not received by the applicant.

(2)

If:

(a)

under subsection 45 (3) of the Act, an applicant was required to inform the Commissioner of the result of a documentary search by or on behalf of a foreign patent office in relation to a patent request; and

(b)

the applicant did not inform the Commissioner of the result before 22 October 2007; and

(c)

the latest of the following dates had not occurred before 22 October 2007:

(i)

the day 6 months after the documentary search is completed within the meaning of regulation 1.3A;

(ii)

the day 6 months after the applicant asked for the examination in accordance with section 44 of the Act;

(iii) if the patent request and complete specification relating to the application were accepted (whether before or after 22 October 2007) — the day 3 months after the notice of acceptance was published in the Official Journal under paragraph 49 (5) (b) of the Act;

the documentary search is prescribed (so that information need not be given to the Commissioner).

(3)

If:

(a)

an applicant asked, in accordance with section 44 of the Act, for an examination of the patent request and complete specification relating to the application for a standard patent; and

Regulation 3.18

(b) the applicant asked for the examination on or after

22 October 2007; all documentary searches by, or on behalf of, a foreign patent office are prescribed (so that information need not be given to the Commissioner).

11.3 (a) of the Budapest Treaty in respect of the deposit.

(2)

As soon as practicable after receiving a request, the Commissioner must decide whether to:

(a)

comply with the request; or

4.1 Prescribed information: applicants and applications

For the purposes of section 53 of the Act, the following information is prescribed:

(a)

the number allocated to the application by the Commissioner;

(b)

the name of the applicant;

(c)

in the case of a complete application — the name of the nominated person;

(d)

the title, or an abbreviated title, of the invention;

(e)

the date on which the application was filed;

(f)

in the case of a complete application, other than a PCT application — particulars of priority documents.

4.2 Notice that specification is open to public inspection

(1)

A request under subsection 54 (1) of the Act must be in the approved form.

(2)

For the purposes of subsection 54 (1) of the Act, the Commissioner must publish the notice as soon as practicable after:

(a)

being asked by the applicant to publish the notice; and

(b)

the relevant abstract is finally completed; and

(c)

if a direction has been given under subregulation 3.2A (2) — the direction has been complied with.

(3)

For the purposes of paragraph 54 (3) (b) of the Act, the prescribed period is from the day of filing of the specification to the end of 18 months after:

(a)

that day; or

(b)

the date of making the earliest priority document referred

to in regulation 3.12; whichever is earlier.

4.3 Prescribed documents: public inspection

(1)

For subsection 55 (1) of the Act, all documents that are:

(a)

associated with the application, or with any provisional application associated with the application; and

(b)

in the possession of the Patent Office; are prescribed, other than:

(c)

documents that would be privileged from production in legal proceedings on the ground of legal professional privilege; and

(e)

the documents mentioned in subregulation (2).

(2)

For paragraphs 55 (2) (a), (b) and (c) of the Act, the following documents are prescribed:

(a)

a document that is subject to an order of a court or a tribunal that prohibits disclosure of the document or information in the document;

(b)

a document required to be produced under paragraph 210 (c) of the Act, if the Commissioner has reasonable grounds for believing that the document or information in the document should not be open to public inspection;

(c)

a document that contains information from a document to which paragraph (b) applies.

5.4 Filing of statement

An opponent (except an opponent under section 101M of the Act) must:

(a)

within 3 months of filing the notice of opposition, serve on the applicant a copy of a statement that sets out the grounds of opposition, and the particulars relating to each ground; and

(b)

as soon as practicable after the copy of the statement has been served on the applicant, file the statement.

5.5 Dismissal of opposition

(1)

An applicant may:

(a)

within 1 month of being served with a copy of a statement by an opponent under paragraph 5.4 (a); or

(b)

if the complete specification in relation to an opposed application is re-examined under subsection 97 (1) of the Act — within 1 month from the day when the re-examination is completed under regulation 9.5;

request the Commissioner in the approved form to dismiss the opposition.

(2)

As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.

(3)

The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition.

(4)

Without limiting subregulation (3), the Commissioner may dismiss the opposition:

(a)

for an opposition under section 101M of the Act — if the statement of grounds and particulars is not filed with the notice of opposition; or

(b)

for another opposition — if the statement of grounds and particulars is not served within the period prescribed in paragraph 5.4 (a).

5.6 Determination of opposition

(1)

If the complete specification in relation to an opposed application is re-examined under subsection 97 (1) of the Act, the opponent may, within 1 month from the day when the re-examination is completed under regulation 9.5, request the Commissioner in the approved form to determine the opposition.

(2)

As soon as practicable after a request is made, the Commissioner must inform the applicant of the request having been made.

(3)

The Commissioner may determine the opposition whether or not the opponent has requested determination of the opposition.

5.7 Opponent to serve copy of substitute statement

If the specification in relation to the opposed application is re-examined under subsection 97 (1) of the Act:

(a)

the opponent may, within 1 month from the day when the re-examination is completed under regulation 9.5, serve on the applicant a copy of a statement in substitution for the statement to which paragraph 5.4 (a) relates; and

(b)

if a copy of a substituted statement is served on the applicant, the opponent must, as soon as practicable after the copy of the statement has been so served, file that statement.

5.8 Time for giving of evidence

(1)

If an opponent intends to rely on evidence in support of the opposition, the opponent must:

(a)

serve on the applicant a copy of any evidence in support of the opposition:

(i)

for an opposition under section 101M of the Act — at the same time as the opponent serves on the applicant the notice of opposition and the statement of grounds and particulars; or

(ii)

for another opposition — within the period mentioned in subregulation (1A); and

(b)

file the evidence in support of the opposition as soon as practicable after the copy of the evidence has been served on the applicant.

(1A) For subparagraph (1) (a) (ii), the period is within 3 months after the day when the opponent served on the applicant a copy of the statement mentioned in paragraph 5.4 (a).

(2)

Subject to subregulation (3), if an applicant intends to rely on evidence in answer to the evidence in support of the opposition, the applicant must:

(a)

serve on the opponent a copy of any evidence in answer to the evidence in support of the opposition within 3 months after being served with that evidence in support of the opposition; and

(b)

file the evidence in answer as soon as practicable after the copy of the evidence has been served on the opponent.

(3)

If an opponent has not served on an applicant a copy of evidence in support of the opposition and the applicant intends to rely on evidence in answer to the opposition, the applicant must:

(a)

serve on the opponent a copy of any evidence in answer to the opposition within 3 months from:

(i)

for an opposition under section 101M of the Act — the day the notice of opposition was served on the applicant; or

(ii)

for another opposition — the end of the period that applies under subparagraph (1) (a) (ii); and

(b)

file the evidence in answer as soon as practicable after the copy of the evidence has been served on the opponent.

(4)

If an opponent intends to rely on evidence in reply to the evidence referred to in paragraph (2) (a) or (3) (a), the opponent must:

(a)

within 1 month of being served with a copy of the evidence under paragraph (2) (a) or (3) (a), serve on the applicant:

(i)

a copy of the evidence in reply; or

(ii)

if the opponent does not serve on the applicant a copy of the evidence in reply — a copy of a notice of intention to serve evidence in reply; and

(b)

if the opponent serves on the applicant a copy of a notice of intention to serve evidence in reply — serve on the applicant a copy of that evidence within 3 months of being served with a copy of the evidence under paragraph (2) (a) or (3) (a); and

(c)

file the evidence in reply and any notice of intention as soon as practicable after the copy of the evidence in reply or notice has been served on the applicant.

5.9 Amendment of statement

(1)

Subject to subregulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:

(a)

if the Commissioner reasonably believes that an amendment of a statement referred to in regulation 5.4 corrects an error or omission by the opponent or by his or her agent — may amend the grounds of opposition set out in the statement; or

(b)

if the Commissioner reasonably believes that an amendment of the grounds set out in a statement that is served and filed under regulation 5.4 results from an amendment of a patent request or complete specification — must amend those grounds; or

(c)

must amend particulars relating to a ground set out in a statement that is served and filed under regulation 5.4.

(2)

The Commissioner must not allow an amendment requested under subregulation (1), if:

(a)

an application for dismissal of opposition is being considered; or

(b)

an application for determination of opposition is being considered; or

(c)

in the case of opposition under section 59 of the Act — a specification relating to the opposed application is being re-examined; or

(d)

he or she does not reasonably believe that the applicant has been notified of the proposed amendment.

(3)

The Commissioner must give the parties an opportunity to make representations concerning the proposed amendment.

(4)

If the Commissioner allows an amendment, he or she must give the applicant a copy of the statement as amended.

5.9A Amendment of statement: additional ground as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004

(1)

This regulation applies to a statement mentioned in regulation 5.4, a copy of which is served on an applicant before the end of the period ending 3 months after the commencement of Schedule 8 to the US Free Trade Agreement Implementation Act 2004.

(2)

Subject to subregulation (3), the Commissioner on the written request of an opponent must amend a statement to add:

(a)

a ground that the invention is not a patentable invention because it does not comply with paragraph 18 (1) (c) or (d) of the Act; and

(b)

the particulars relating to the ground.

(3)

The Commissioner must not amend a statement under subregulation (2) unless the opponent has:

(a)

filed a written request to amend the statement by the earlier of:

(i)

the end of the period ending 3 months after the commencement of Schedule 8 to the US Free Trade Agreement Implementation Act 2004; and

(ii)

the date on which a patent whose grant is being opposed, and to which the written request relates, is sealed under section 61 of the Act; and

(b)

at the same time as the written request is filed:

(i)

applied to the Commissioner in writing, under subregulation 5.10 (4), for permission to serve a copy of further evidence (if any) on which the opponent intends to rely in support of an additional ground mentioned in subparagraph (2) (a); or

(ii)

given to the Commissioner a statement that the opponent does not intend to rely on any further evidence in relation to the additional ground.

(4)

The Commissioner must give the applicant a copy of the statement as amended under subregulation (2).

5.10 Conduct of proceedings to which this Chapter applies

(1)

The Commissioner may, on his or her own motion or on the application of a party:

(a)

give a direction that is not inconsistent with the Act or these regulations for the conduct of proceedings to which this Chapter applies; or

(b)

determine that a period prescribed in this Chapter (except in regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A) is to be extended by such further period as the Commissioner reasonably allows.

(2)

The Commissioner may extend the time within which the party may take a step prescribed in this Chapter (not being a step that is taken under regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A):

(a)

on the application of a party in the approved form; and

(b)

on such reasonable terms (if any) as the Commissioner specifies; and

(c)

after the party has served a copy of the application on the other party.

(3)

If section 107 of the Act applies to an opposed application, the time within which a party may take a step prescribed in this Chapter is extended by a period that is equal to the period from the day when the applicant is given an opportunity to be heard that is referred to in subsection 107 (2) of the Act to the end of the day when the decision is made under 107 (4) of the Act whether or not the amendment is allowed.

(4)

The Commissioner may:

(a)

on the application of a party; and

(b)

on such reasonable terms (if any) as the Commissioner

specifies; permit the party to serve further evidence on the other party.

(5)

The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation

(2)

or (4) unless the Commissioner:

(a)

if he or she proposes to grant an application by a party — is reasonably satisfied that the other party has been notified of the application; and

(b)

if he or she proposes to act on his or her own motion — ensures that the parties are notified of the proposed action; and

(c)

in either case:

(i)

gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and

(ii)

is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.

5.11 Commissioner may inform himself or herself

(1)

The Commissioner may inform himself or herself of a fact by reference to a document available in the Patent Office.

(2)

If the Commissioner proposes to refer to a document under subregulation (1), he or she must:

(a)

notify the parties accordingly; and

(b)

give the parties a copy of, or access to, the document; and

(c)

give the parties an opportunity to give evidence or make representations with respect to the fact or document.

(3)

In subregulation (2), document does not include a document filed under regulation 5.3AA, 5.4 or 5.8, or further evidence referred to in subregulation 5.10 (4).

5.12 Hearing of opposition

(1)

This regulation applies if the relevant periods prescribed in regulation 5.8 have ended, unless:

(a)

the opposition has been dismissed or determined; or

(b)

the notice has been withdrawn.

(2)

The Commissioner must, if he or she receives a request by a party to hold a hearing:

(a)

give a notice of a hearing into the opposition; and

(b)

hold the hearing.

(3)

The Commissioner may, on his or her own motion:

(a)

give a notice of a hearing into the opposition; and

(b)

hold the hearing.

5.13 Representations to Commissioner

A representation mentioned in any of the following provisions may be made to the Commissioner in writing or by any other means approved by the Commissioner:

(a)

subregulation 5.3A (3);

(b)

subregulation 5.3B (4);

(c)

subregulation 5.9 (3);

(d)

subparagraph 5.10 (5) (c) (i);

(e)

paragraph 5.11 (2) (c).

5.14 Commissioner not required to hold hearing

If the Commissioner believes, on reasonable grounds, that no party wishes to be heard in a matter arising under regulation 5.12 or 5.13, the Commissioner is not required to hold a hearing.

5.15 Withdrawal of opposition

An opponent may at any time withdraw opposition by:

(a)

filing a written notice of withdrawal that is signed by him or her; and

(b)

serving a copy of the notice on the applicant.

Grant and term of patents	Chapter 6
Patents generally	Part 1
	Regulation 6.3

Chapter 6 Grant and term of patents

6.1 Publication of notice of grant of standard patent

If a standard patent is granted under section 61 of the Act, the Commissioner must publish a notice that the patent has been granted in the Official Journal.

6.2 Prescribed period: grant of standard patent

(1)

For the purposes of subsection 61 (2) of the Act, the prescribed period is from 3 months after publication under paragraph 49

(5)

(b) of the Act of the notice of the acceptance of the request and complete specification to:

(a)

6 months after that publication; or

(b)

such later day as:

(i)

in the case of proceedings before a court or the Tribunal — the court or Tribunal directs; or

(ii)

in any other case — the Commissioner reasonably

directs; being satisfied that the grant of the patent should be postponed.

(2) A person may request the Commissioner in the approved form to give a direction referred to in subparagraph (1) (b) (ii).

6.3 Date of patent

(1)

For paragraph 65 (b) of the Act, the date of a patent is as set out in this regulation.

(2)

For a patent granted under subsection 33 (1) or (2) of the Act, the date of the patent is the date that would have been the date of the patent if the patent had been granted on the application for a standard patent the grant of which was opposed under section 59 of the Act.

(3)

For a patent granted under subsection 33 (3) or (4) of the Act, the date of the patent is the date of the innovation patent that was opposed under section 101M of the Act.

(4)

For a patent granted under subsection 34 (2) of the Act, the date of the patent is the date of the patent referred to in subsection 34 (1) of the Act.

(5)

For a patent granted under section 35 of the Act, the date of the patent is the date of the revoked patent.

(6)

For a patent granted as a result of a declaration under section 36 of the Act, the date of the patent is:

(a)

if the declaration is made in respect of a complete application — the date that would have been the date of the patent if the patent had been granted on that application; or

(b)

if the declaration is made in respect of a provisional application — the earlier of:

(i)

the date 12 months from the date of filing of the provisional specification in respect of that application; and

(ii)

the date of filing of the complete application referred to in subsection 36 (4) of the Act.

(7)

For a patent granted on a divisional application made under subsection 79B (1) of the Act, the date of the patent is:

(a)

if the date of the patent was recorded in the Register before 1 January 2000 — the date recorded in the Register; or

(b)

if the Commissioner determined a date of the patent and told the applicant in writing before 1 January 2000 — the date determined by the Commissioner; or

(c)

in any other case — the earliest of:

(i)

the date of the patent of the first-mentioned application referred to in subsection 79B (1) of the Act; and

(ii)

the date that would be the date of the patent if a patent had been granted on that first-mentioned application; and

Chapter 6	Grant and term of patents
Part 1	Patents generally
Regulation 6.3

Grant and term of patents	Chapter 6
Patents generally	Part 1
	Regulation 6.4

(iii) if that first-mentioned application was itself a divisional application or was amended to be a divisional application before filing the later application — the date that would be the date of the patent if a patent had been granted on the divisional application.

(8)

For an innovation patent granted on a divisional application made under subsection 79C (1) of the Act, the date of the patent is the date of the first patent mentioned in subsection 79C (1).

(9)

If, under section 223 of the Act, the Commissioner has extended the time for making, under section 38 of the Act, a complete application associated with a provisional application, the date of the patent is the date 12 months from the date of making the first provisional application with which the complete application is associated.

(10)

If, under section 223 of the Act, the Commissioner has extended the time for making, under section 94 of the Act, a Convention application in relation to a basic application, the date of the patent is the date 12 months from the date of making the first basic application to which the Convention application relates.

6.4 Form of application for sealing of duplicate of patent

An application for the sealing of a duplicate of a patent under section 66 of the Act must be in the approved form.

Chapter 6	Grant and term of patents
Part 2	Extension of pharmaceutical patents
Regulation 6.7

6.7 Definitions

In this Part: pre-TGA marketing approval has the same meaning as in section 70 of the Act.

6.8 Information to accompany application

(1)

This regulation applies to an application under section 70 of the Act for an extension of the term of a standard patent for a pharmaceutical substance.

(2)

For paragraph 71 (1) (c) of the Act, the application must be accompanied by information showing that goods containing, or consisting of, the substance are currently included in the Australian Register of Therapeutic Goods.

(3)

The application must also be accompanied by information identifying the substance, as it occurs in those goods, in the same way (as far as possible) as the substance is identified in the complete specification of the patent.

6.9 Application without pre-TGA marketing approval

(1)

This regulation applies to an application under section 70 of the Act for an extension of the term of a standard patent for a pharmaceutical substance for which pre-TGA marketing approval has not been given.

(2)

For paragraphs 71 (1) (b) and (c) of the Act, the application must be accompanied by:

(a)

a certificate under paragraph 25 (3) (b) or subsection 26 (4) or 26A (9) of the Therapeutic Goods Act 1989 stating the date of commencement of the first inclusion in

Regulation 6.11

the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance; or

(b) if the patentee does not have a certificate mentioned in paragraph (a) — information showing the date of commencement of the first inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance.

Note For providing a copy of a certificate mentioned in paragraph (2) (a),see the definition of document in subsection 71 (1) of the Act.

6.10 Application with pre-TGA marketing approval

(1)

This regulation applies to an application under section 70 of the Act for an extension of the term of a standard patent for a pharmaceutical substance for which pre-TGA marketing approval has been given.

(2)

For paragraphs 71 (1) (b) and (c) of the Act, the application must be accompanied by:

(a)

a written statement by the person who gave the approval showing:

(i)

that approval has been given; and

(ii)

the date of the first approval; or

(b)

if the patentee does not have a written statement mentioned in paragraph (a) — information showing:

(i)

that approval has been given; and

(ii)

the date of the first approval.

Note For providing a copy of a written statement mentioned in paragraph

(2) (a), see the definition of document in subsection 71 (1) of the Act.

6.11 Further information

(1) This regulation applies if the Commissioner needs further information to decide whether he or she is satisfied that the requirements set out in sections 70 and 71 of the Act are satisfied for an application for an extension of the term of a standard patent.

Regulation 6.11

(2)

The Commissioner may give the applicant a notice requesting the further information within the period mentioned in the notice.

(3)

The period must not be shorter than 2 months or longer than 6 months from the day the notice is issued.

Note The period for giving the further information can be extended — see section 223 of the Act.

(4)

If the applicant does not give the further information within that period, the Commissioner must decide whether he or she is satisfied that the requirements set out in sections 70 and 71 of the Act are satisfied.

(5)

For subsection 71 (2) of the Act, further information given within the period mentioned in subregulation (2) is taken to have been filed with the application for extension of the term of the standard patent.

7.1 Form of application for grant of patent of addition etc

(1)

For paragraph 81 (1) (c) of the Act, an application for a further patent must be made under section 29 of the Act.

(2)

The Commissioner must not grant a patent of addition under subsection 81 (1) of the Act unless the date that would be the date of the patent if that patent of addition were granted is the same as, or later than, the date of the patent for the main invention.

7.2 Form of application for revocation of patent and grant of patent of addition instead

An application under section 82 of the Act must be in the approved form.

PCT applications and Convention applications	Chapter 8
PCT applications	Part 1
	Regulation 8.1

Chapter 8 PCT applications and Convention applications

8.1 International applications taken to be applications under the Act

(1)

In this regulation:

priority date, in relation to an international application, has the same meaning as in the PCT.

(2)

Where:

(a)

the receiving Office has declared that an international application that specifies Australia as a designated State under Article 4 (1) (ii) of the PCT is taken to be withdrawn; or

(b)

the International Bureau has made a finding under Article

12 (3) of the PCT; the application is taken to be a PCT application as if a declaration or finding had not been made, if:

(c)

the applicant has made a request referred to in Article 25 (1) (a) of the PCT within the time limit specified in Rule 51.1 of the PCT; and

(d)

the Commissioner has received within the time limit specified in Rule 51.3 of the PCT:

(i)

fees prescribed for the purposes of paragraph 89 (3) (b); and

(ii)

if the application is not in English — a translation of the application into English and a related certificate of verification; and

(e)

the Commissioner reasonably believes that:

(i)

the declaration was the result of an error or omission on the part of the receiving Office; or

8.2 Prescribed documents: PCT application

(1)

In this regulation: PCT application includes:

(a)

an amendment under Article 19 or 34 of the PCT; or

(b)

a rectification under Rule 91 of the regulations annexed to the PCT.

(2)

For the purposes of paragraph 89 (3) (a) of the Act, if:

(a)

a PCT application is not filed in English; and

(b)

the PCT application has been published in English under Article 21 of the PCT; and

(c)

a translation of the application into English has not been filed before the date of publication under Article 21 of the PCT;

the publication under Article 21 of the PCT is taken to be the translation referred to in paragraph 89 (3) (a) of the Act and to have been verified in accordance with these regulations.

PCT applications and Convention applications	Chapter 8
PCT applications	Part 1
	Regulation 8.3

(3)

For the purposes of paragraph 89 (3) (b) of the Act, each of the following documents is prescribed:

(a)

a document setting out an address for service of documents in Australia;

(b)

if a PCT application has not been published under Article 21 of the PCT — a copy of the application;

(c)

if a PCT application is not filed in English and has not been published in English under Article 21 of the PCT — a translation of the application into English together with a related certificate of verification.

(4)

The Commissioner must not, in relation to a PCT application that is treated as an application under the Act for a standard patent, give a direction under section 44 of the Act, unless the applicant has complied with the requirements of subsection 89 (3) of the Act.

(5)

In a PCT application, the applicant is taken to be the nominated person in respect of the application.

8.3 Modification of Act to apply to PCT applications

(1) For paragraph 228 (2) (t) of the Act, the Act is modified under this regulation for PCT applications that are treated as patent applications under the Act.

(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;

Chapter 8	PCT applications and Convention applications
Part 1	PCT applications
Regulation 8.3

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.

PCT applications and Convention applications	Chapter 8
PCT applications	Part 1
	Regulation 8.3

(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), anyamendments 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

Chapter 8	PCT applications and Convention applications
Part 1	PCT applications
Regulation 8.3

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 International Bureau; and				report	from		the
(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;

PCT applications and Convention applications	Chapter 8
PCT applications	Part 1
	Regulation 8.3

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), anyamendments made under Article 34 of the PCT are not taken to be included in the application.

Chapter 8	PCT applications and Convention applications
Part 1	PCT applications
Regulation 8.3

(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.

(1A) Section 53:

omit

Where

insert

(1) Where

(1B) Section 53:

insert

(2) For a PCT application, the prescribed information is taken to have been published under subsection (1) when the application is published by the International Bureau of the World Intellectual Property Organization.

(1BA) Subsection 89 (5):

substitute

(5)

If:

(a)

a PCT application has been amended under Article 19 of the PCT before the applicant meets the requirements of subsection (3); or

(b)

a PCT application has been rectified under Rule 91 of the Regulations mentioned in the definition of PCT in Schedule 1 before the applicant meets the requirements of subsection (3);

then the description, drawings and claims contained in the application are, for the purposes of this Act, to be taken to have been amended:

(c)

on the day the amendment was made; or

(d)

unless the Commissioner disregards the rectification under Rule 91.3 (f) — on the day the rectification was effective.

PCT applications and Convention applications	Chapter 8
PCT applications	Part 1
	Regulation 8.3

(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.

(1C) Paragraph 90 (a):

omit

subsection 92 (1) or (2)

insert

subsection 92 (2) (1D) Paragraph 90 (b):

Chapter 8	PCT applications and Convention applications
Part 1	PCT applications
Regulation 8.3

substitute

(b) where subsection 92 (3) applies — on the day on which the application is published under Article 21 of the PCT.

(1E) Section 92:

substitute

92 Notice of publication

(1)

Subsection (2) applies to a PCT application:

(a)

that has not lapsed, or been withdrawn or refused; and

(b)

that is to be treated as an application for a standard patent under this Act; and

(c)

for which the applicant complies with subsection 89 (3) before the end of 18 months after the priority date of the application.

(2)

The Commissioner must publish a notice in the Official Journal stating that the PCT application is open to public inspection:

(a)

if the applicant asks the Commissioner in writing to publish the notice; or

(b)

in any case — as soon as practicable after the end of 18 months after the priority date of the application.

(3)

If:

(a)

the applicant does not comply with subsection 89 (3) within 18 months after the priority date of a PCT application; and

(b)

the application is published under Article 21 of

the PCT; the application is open to public inspection.

PCT applications and Convention applications	Chapter 8
PCT applications	Part 1
	Regulation 8.3

(4)

If a PCT application is open to public inspection, any other prescribed documents are also open to public inspection.

(5)

In this section:

priority date, for an international application, has the same meaning as in the PCT.

(2) Section 141: omit the section, substitute:

‘141 Withdrawal of applications

(1)

Subject to subsection (3), a patent application may be withdrawn at any time except during a period prescribed for the purposes of this section.

(2)

A patent application is to be treated as having been withdrawn if, and only if, the applicant lodges a written notice of withdrawal signed by the applicant.

(3)

A PCT application is to be treated as having been withdrawn if Article 11 (3) of the PCT ceases to have effect in Australia in relation to the application under Article 24 (1) (i) of the PCT.’.

(3)

Subsection 142 (2): Add at the end: ‘; or (f) Article 11 (3) of the PCT ceases to have effect in

Australia in relation to the application under Article 24 (1) (ii) or (iii) or Article 39 (2) of the PCT’.

(4)

Section 223: After subsection (1) insert: ‘(1A) If, because of an error or omission by the receiving

Office or the International Bureau, a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner must extend the time for doing the act.’.

(5)

Schedule 1, definition of international filing date, including the cross-reference to section 10:

Chapter 8	PCT applications and Convention applications
Part 1	PCT applications
Regulation 8.4

substitute

‘international filing date, in relation to an international application, means:

(a)

the date given to the international application as its international filing date under Article 11 of the PCT; or

(b)

if that date is revised under Article 14 of the PCT — that international filing date as so revised; or

(c)

if the Commissioner has treated another date as the international filing date under Rule 82^ter — that international filing date as so treated.

[See also section 10]’.

8.4 Form of request and prescribed documents: PCT applications

(1)

A request for publication under section 92 of the Act of the Act must be in the approved form.

(2)

For subsection 92 (4) of the Act, all documents that are:

(a)

associated with the application, or with any provisional application from which the application claims priority under article 8 of the PCT; and

(b)

in the possession of the Patent Office; are prescribed, other than:

(c)

documents that would be privileged from production in legal proceedings on the ground of legal professional privilege; and

(d)

the results of documentary searches provided under subsection 45 (3) of the Act; and

(e)

the documents mentioned in subregulation 4.3 (2).

PCT applications and Convention applications	Chapter 8
Convention applications	Part 2
	Regulation 8.6

8.5 Convention countries

(1)

Each of the countries specified in Schedule 4 is declared to be a Convention country for the purposes of the definition of Convention country in the Act.

(2)

For the purposes of section 94 of the Act, the period of 12 months from the day on which a basic application is first made in a Convention country in respect of the invention is prescribed.

8.6 Particulars required for Convention application — general

(1)

For the purposes of paragraph 95 (2) (a) of the Act, the following particulars are prescribed:

(b)

the country in which the application was made;

(c)

the number allocated to the application by the foreign patent office of the Convention country in which the application was made;

(d)

the date on which the application was made;

(e)

if the application is not the first made in a Convention country in respect of the invention — the particulars specified in paragraphs (b) to (d) (inclusive) in respect of that first made application.

(2)

For subsection 95 (3) of the Act, the Commissioner may request a copy of the specification relating to the basic application that has been certified by the competent authority of the Convention country in which the basic application was made.

(3)

The certified copy must be filed within 3 months from the date on which the Commissioner requests it.

Regulation 8.6A

8.6A Particulars required for Convention application — use of approved digital library

(1)

For subregulation 8.6 (3), a certified copy is taken to have been filed if the Commissioner is satisfied that the certified copy:

(a)

has been made available for inspection by the Commissioner in an approved digital library; and

(b)

was made available within the period mentioned in subregulation 8.6 (3).

(2)

However, if the Commissioner is satisfied that the certified copy:

(a)

was made available for inspection by the Commissioner in the approved digital library within the period mentioned in subregulation 8.6 (3); but

(b)

is no longer available for inspection; the certified copy is taken to have been filed in respect of, and at the same time as, the basic application only if the certified copy is again made available for inspection by the Commissioner in the approved digital library, or given to the Commissioner, no later than 2 months after the day on which the Commissioner notifies the applicant or patentee that the

Commissioner has not been able to inspect the certified copy in the approved digital library.

8.7 Form of request in relation to withdrawn, abandoned or refused applications

A request under section 96 of the Act must be in the approved form.