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Подробности Подробности Год версии 2013 Даты вступление в силу: 30 апреля 1991 г. Принят: 18 апреля 1991 г. Тип текста Имплементационные правила/положения Предмет Патенты (изобретения) Примечания Данная сводная редакция регламента от 15.04.2013 г. содержит все внесённые в него поправки, включая поправки, внесённые Регламентом (№ 1) 2012 года «О внесении изменений в Регламент «О патентах» (SLI 2012, т.н. Инструкция по применению отдельных законодательных актов 2012 года № 221).

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Основной(ые) текст(ы) Основной(ые) текст(ы) Английский Patents Regulations 1991 (consolidated as of April 15, 2013)        
 Patents Regulations 1991 (consolidated as of 15 April 2013)

Prepared by the Office of Parliamentary Counsel, Canberra

Patents Regulations 1991 Statutory Rules No. 71, 1991 as amended

made under the

Patents Act 1990

Compilation start date: 15 April 2013

Includes amendments up to: SLI No. 31, 2013

Volume 1: Chapters 1 to 23

Volume 2: Schedules and Endnotes

Each volume has its own contents

Federal Register of Legislative Instruments F2013C00202

About this compilation

The compiled instrument

This is a compilation of the Patents Regulations 1991 as amended and in force

on 15 April 2013. It includes any amendment affecting the compiled instrument

to that date.

This compilation was prepared on 15 April 2013.

The notes at the end of this compilation (the endnotes) include information

about amending Acts and instruments and the amendment history of each

amended provision.

Uncommenced provisions and amendments

If a provision of the compiled instrument has not commenced or is affected by

an uncommenced amendment, the text of the uncommenced provision or

amendment is set out only in the endnotes.

Application provisions for amendments

If the operation of an amendment is affected by an application provision, this

provision is set out in the endnotes.

Modifications

If a provision of the compiled instrument is affected by a textual modification

that is in force, the text of the modifying provision is set out in the endnotes.

Provision ceasing to have effect

If a provision of the compiled instrument has expired or otherwise ceased to

have effect, or is to expire or otherwise cease to have effect, in accordance with

a provision of the instrument, details of the provision are set out in the endnotes.

Federal Register of Legislative Instruments F2013C00202

Patents Regulations 1991 i

Contents

Chapter 1—Introductory 1 1.1 Name of Regulations .........................................................1

1.2 Commencement.................................................................1

1.3 Interpretation .....................................................................1

1.3A Meaning of completed in relation to a search ....................3

1.4 Meaning of Convention country ........................................4

1.5 Deposit requirements: prescribed period ...........................4

1.6 Secret use—prescribed period...........................................5

1.7 Verification of translations of international

applications .......................................................................5

1.8 Completion of applications................................................5

Chapter 2—Patent rights, ownership and validity 7 2.1 Applications by co-owners for directions..........................7

2.2 Information made publicly available—recognised

exhibitions .........................................................................7

2.2A Information made publicly available—learned

societies .............................................................................8

2.2B Information made publicly available—reasonable

trial of invention ................................................................9

2.2C Information made publicly available—other

circumstances ..................................................................10

2.2D Information made publicly available without

consent—period ..............................................................11

2.3 Divisional applications—period ......................................11

2.4 Prescribed period: patents of addition .............................12

2.5 Prescribed period: assertion that invention is not a

patentable invention ........................................................12

2.6 Prescribed period: notification of assertion of

invalidity of innovation patent.........................................12

2.7 Documents to accompany notice of assertion of

invalidity .........................................................................12

Chapter 3—From application to acceptance 14

Part 1—Inventions generally 14

Division 1—Applications 14

3.1 Prescribed documents: patent applications ......................14

3.1A Applicant taken to be nominated person .........................15

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ii Patents Regulations 1991

3.2 Provisional specifications................................................15

3.2A Specifications—standard patents.....................................15

3.2AB PCT application—title of specification ...........................16

3.2B Specifications: formalities check for innovation

patents .............................................................................17

3.2C Specifications—formalities check for PCT

application .......................................................................18

3.3 Abstracts..........................................................................20

3.4 Substitute abstracts ..........................................................20

3.5 Filing date—patent applications other than PCT

applications .....................................................................21

3.5AA Filing date—PCT applications ........................................22

3.5A Filing date: incomplete specifications .............................23

3.5AB PCT applications—international applications taken

to be applications under the Act ......................................24

3.5AC PCT applications—amendment.......................................25

3.5AD PCT applications—prescribed requirements ...................26

3.5AE PCT applications—prescribed period..............................27

3.5AF PCT applications—translations and prescribed

documents .......................................................................27

3.5AG Convention application—prescribed particulars..............28

3.5B Filing of documents outside business hours ....................28

3.6 Requests to make determinations between

interested parties..............................................................28

3.7 Form of certain applications............................................28

3.8 Time within which applications are to be made

following certain decisions and declarations ...................29

3.9 Prescribed period: treatment of complete

application as provisional ................................................29

3.10 Prescribed period: making of complete

applications .....................................................................29

3.11 Prescribed period—making Convention

application .......................................................................30

Division 2—Priority date of claim 31

3.12 What this Division is about .............................................31

3.13 Priority date for application by person declared

under section 36 of the Act..............................................31

3.13A Priority date for PCT application.....................................32

3.13B Priority date for Convention application .........................35

3.13C Priority date for complete application associated

with provisional application ............................................36

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Patents Regulations 1991 iii

3.13D Priority date for divisional application filed prior

to grant of patent .............................................................37

3.13E Priority date for divisional application after grant

of innovation patent.........................................................38

3.14 Priority dates: certain amended claims ............................39

Division 3—Examination 40

3.14A Request for international-type search relating to

provisional application ....................................................40

3.14B Request for preliminary search and opinion

relating to complete application ......................................40

3.14C Priority dates—Convention applications and PCT

applications: prescribed period for disregarding

earlier applications ..........................................................40

3.14D Prescribed documents: basic application .........................41

3.15 Requirements of request for examination........................42

3.16 Prescribed grounds and period for examination ..............42

3.17 Requirement for Commissioner to direct or

expedite examination.......................................................42

3.17A PCT applications—Commissioner not to give

certain directions .............................................................43

3.17B PCT applications—examination requirements ................43

3.17C PCT applications—notice if examination declined .........44

3.18 Report of Commissioner: examination............................44

3.19 Conduct of examination: standard patents.......................45

3.22 Disclosure of patent documents and information to

International Bureau etc ..................................................46

Part 2—Inventions that are micro-organisms 47 3.23 Documents in accepted applications and patents

involving micro-organisms..............................................47

3.24 Commissioner may request samples and viability

statement .........................................................................47

3.25 Request for Commissioner‟s certificate authorising

release of sample of a micro-organism............................48

3.26 Breach of undertakings given in respect of

micro-organisms..............................................................51

3.27 Procedure in proceedings for breach of an

undertaking......................................................................52

3.28 Relief in proceedings for breach of undertakings ............52

3.29 Notification that a deposit requirement has ceased

to be satisfied...................................................................53

3.30 Prescribed period: deposit requirements taken to

be satisfied.......................................................................54

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iv Patents Regulations 1991

3.31 Application for declaration that deposit

requirements are not satisfied ..........................................55

Chapter 4—Publication 57 4.1 Prescribed information: applicants and

applications .....................................................................57

4.2 Notice that specification is open to public

inspection ........................................................................57

4.3 Prescribed documents: public inspection.........................58

4.4 Publication and inspection of PCT applications ..............58

Chapter 5—Opposition 60

Part 5.1—Preliminary 60 5.1 What this Chapter is about ..............................................60

5.2 Definitions.......................................................................60

5.3 Commissioner may give direction about filing

document or evidence......................................................61

Part 5.2—Filing of opposition documents 63

Division 5.2.1—Substantive opposition 63

5.4 Notice of opposition—standard patent opposition ..........63

5.5 Statement of grounds and particulars—standard

patent opposition .............................................................63

5.6 Notice of opposition and statement of grounds and

particulars—section 101M opposition.............................64

5.7 Filing of evidence............................................................64

5.8 Evidentiary periods..........................................................65

5.9 Extension of time for filing evidence ..............................66

Division 5.2.2—Procedural opposition 68

5.10 Notice of opposition ........................................................68

5.11 Statement of grounds and particulars ..............................69

5.12 Practice and procedure ....................................................69

Part 5.3—Amendments to opposition documents 70 5.13 Application of regulation 22.22.......................................70

5.14 Notice of opposition—correction of errors or

mistake ............................................................................70

5.15 Notice of opposition—change of opponent .....................70

5.16 Statement of grounds and particulars ..............................71

Part 5.4—Dismissal of opposition 73 5.17 Dismissal on request........................................................73

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Patents Regulations 1991 v

5.18 Dismissal on initiative of Commissioner.........................73

Part 5.5—Hearing of opposition 75 5.19 Hearing and decision—re-examination ...........................75

5.20 Hearing and decision—other circumstances....................75

Part 5.6—Miscellaneous 77 5.21 Opposition to amendment—grounds...............................77

5.22 Commissioner may give directions .................................77

5.23 Commissioner may consult documents ...........................77

5.24 Representations to Commissioner—formal

requirements ....................................................................78

5.25 Extension of time for filing—amendment at

Commissioner‟s direction................................................78

5.26 Withdrawal of opposition ................................................78

Chapter 6—Grant and term of patents 80

Part 1—Patents generally 80 6.1 Publication of notice of grant of standard patent .............80

6.1A Prescribed particulars—grant of standard patent .............80

6.2 Prescribed period: grant of standard patent .....................80

6.2A Prescribed particulars—grant of innovation patent .........81

6.3 Date of patent ..................................................................81

Part 2—Extension of pharmaceutical patents 85 6.7 Definitions.......................................................................85

6.8 Information to accompany application ............................85

6.9 Application without pre-TGA marketing approval..........85

6.10 Application with pre-TGA marketing approval...............86

6.11 Further information .........................................................86

Chapter 6A—Divisional applications 88 6A.1 Divisional applications before grant—standard and

innovation patents ...........................................................88

6A.2 Divisional applications after grant—innovation

patents .............................................................................88

Chapter 7—Patents of addition 90 7.1 Form of application for grant of patent of addition

etc ....................................................................................90

7.2 Form of application for revocation of patent and

grant of patent of addition instead ...................................90

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vi Patents Regulations 1991

Chapter 9—Re-examination 91 9.1 Notice of Commissioner‟s decision to re-examine

complete specification .....................................................91

9.2 Request for re-examination of complete

specification ....................................................................91

9.3 Copy of report on re-examination ...................................92

9.4 Prescribed period: statement disputing report by

Commissioner .................................................................93

9.5 Completion of re-examination.........................................93

Chapter 9A—Examination of innovation patents 95 9A.1 Request for examination..................................................95

9A.2 Examination of complete specification ...........................95

9A.3 Conduct of examination ..................................................95

9A.4 Period for examination ....................................................96

9A.5 Validity of innovation patent...........................................97

Chapter 10—Amendments 98 10.1 Form of amendments.......................................................98

10.2 Commissioner to consider and deal with requests

for leave to amend ...........................................................99

10.2A Documents considered for determining whether

amendment allowed.......................................................102

10.2B Amendments not allowable for patent requests .............103

10.2C Amendments not allowable for complete

specifications.................................................................104

10.3 Amendments not allowable for other documents ..........105

10.4 Commissioner to refuse request for leave to amend ......105

10.5 Commissioner to grant leave to amend .........................106

10.6 Time for allowance of amendments ..............................107

10.6A Deferred consideration of request for amendment.........108

10.6B Revocation of grant of leave..........................................109

10.7 Rectification of Register................................................110

10.8 Prescribed decisions: appeal to Federal Court ...............110

10.10 Prescribed period: filing of court order .........................111

10.11 Form of direction by Commissioner: patents ................111

10.12 Form of direction by Commissioner: applications.........111

10.14 Form of request: claim under assignment or

agreement ......................................................................111

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Patents Regulations 1991 vii

Chapter 11—Infringement 112 11.1 Infringement exemptions: prescribed foreign

countries ........................................................................112

Chapter 12—Compulsory licences and revocation of

patents 113 12.1 Lodgment of applications for compulsory licences .......113

12.2 Prescribed period: revocation of patent .........................114

12.3 Form of notice: offer to surrender patent.......................114

12.4 Applications to revoke patents ......................................115

Chapter 13—Withdrawal and lapsing of applications

and ceasing of patents 117 13.1 Publication of notice of withdrawal of application........117

13.1A Period in which standard patent applications may

not be withdrawn...........................................................117

13.1B Period in which innovation patent applications

may not be withdrawn ...................................................117

13.1C PCT applications—prescribed circumstances in

which application may be withdrawn or taken to

be withdrawn .................................................................118

13.3 Prescribed period: continuation fees..............................118

13.4 Prescribed period: acceptance of request and

specification ..................................................................119

13.5 If applications lapse.......................................................121

13.5A PCT application—prescribed circumstances for

lapsing of application ....................................................121

13.6 Time for payment of renewal fee for patent ..................121

13.7 Prescribed period: ceasing of innovation patents...........123

Chapter 15—Special provisions relating to associated

technology 124 15.1 Time for restoration of application for patent................124

15.2 Requirements for reinstatement of international

applications ...................................................................124

15.3 Prescribed period: order relating to standard patent ......124

Chapter 17—The Crown 125 17.1 Application for declaration: exploitation of

innovation patent ...........................................................125

17.1A Prescribed period: order relating to standard patent ......125

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viii Patents Regulations 1991

17.2 Prescribed period, document and fee: filing of

international applications...............................................125

Chapter 19—The register and official documents 126 19.1 Particulars to be registered ............................................126

19.2 Request for information from Commissioner ................126

Chapter 20—Individual Patent Attorneys 127

Part 1—Introduction 127 20.1A Application of this Chapter ...........................................127

20.1 Interpretation .................................................................127

Part 2—Obtaining registration for first time 129 20.2 Form of application .......................................................129

20.3 Evidence that applicant meets registration

requirements ..................................................................129

20.4 Certificate of registration...............................................130

20.5 Evidence of academic qualifications .............................130

20.6 Academic qualifications ................................................130

20.7 Evidence of knowledge requirements............................131

20.8 Knowledge requirements...............................................132

20.9 Exemption from a requirement in Schedule 5 ...............133

20.10 Employment requirements.............................................133

20.11 Statements of skill .........................................................134

20.12 Prescribed offences........................................................135

Part 3—Accreditation of courses of study 136 20.13 Accreditation of courses of study ..................................136

20.14 Provisional accreditation ...............................................137

Part 4—Board examinations 138 20.15 Board examinations.......................................................138

20.16 Time for holding Board examinations...........................138

20.17 Examinable subject matter ............................................138

20.18 Admission to sit for a Board examination .....................139

20.19 Notification of Board examination results.....................139

20.20 Reasons for failure of Board examination .....................139

20.21 Supplementary Board examination ...............................139

Part 5—Maintaining registration 141 20.22 Requirements for remaining on Register of Patent

Attorneys .......................................................................141

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Patents Regulations 1991 ix

20.23 Payment of annual registration fee ................................141

20.24 Continuing professional education—number of

hours..............................................................................141

20.25 Method of demonstrating that continuing

professional education has been undertaken..................142

Part 6—Removal of attorney’s name from Register of Patent

Attorneys 143 20.26 Voluntary removal of name from Register of

Patent Attorneys ............................................................143

20.27 Failure to pay annual registration fee ............................143

20.28 Failure to comply with continuing professional

education requirements..................................................143

Part 6A—Suspension of registration 145 20.28A Requirement to notify of serious offence ......................145

20.28B Suspension of registration—serious offence .................145

Part 7—Restoring attorney’s name to Register of Patent

Attorneys 147 20.29 Restoring attorney‟s name to Register of Patent

Attorneys .......................................................................147

20.30 Restoring attorney‟s name to Register of Patent

Attorneys following payment of unpaid fee ..................148

20.31 Restoring attorney‟s name to Register of Patent

Attorneys in other circumstances ..................................148

Part 8—Discipline 150

Division 1—General 150

20.32 Definitions.....................................................................150

20.33 Role of Board in disciplinary proceedings ....................150

20.34 Board may require attorney to cooperate with

investigation ..................................................................152

20.35 Commencing disciplinary proceedings..........................152

Division 2—Proceedings in Disciplinary Tribunal 153

20.36 Procedure of Disciplinary Tribunal ...............................153

20.37 Notification of hearing of disciplinary proceedings ......153

20.38 Hearings to be public except in special

circumstances ................................................................153

20.39 Representation before Disciplinary Tribunal.................154

20.40 Summoning of witnesses ...............................................154

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x Patents Regulations 1991

20.41 Offences by persons appearing before Disciplinary

Tribunal .........................................................................155

20.42 Protection of person constituting Disciplinary

Tribunal, witnesses etc ..................................................157

20.43 Decision of Disciplinary Tribunal .................................157

20.44 Penalties—professional misconduct..............................158

20.45 Penalties—unsatisfactory professional conduct ............158

20.46 Finding that attorney was unqualified at time of

registration.....................................................................159

20.47 Finding that registration obtained by fraud....................159

20.48 Matters that may be considered in determining

penalties ........................................................................159

20.49 Findings of Disciplinary Tribunal .................................160

20.50 Notification and publication of decisions of

Disciplinary Tribunal ....................................................160

20.51 Completion of outstanding business..............................161

20.52 Former attorney may be required to provide

assistance.......................................................................161

Part 9—Rights of registered patent attorneys 163 20.53 Lien ...............................................................................163

Part 10—Administration 164

Division 1—Professional Standards Board for Patent and Trade

Marks Attorneys 164

20.54 Constitution of Board (Act s 227A)...............................164

20.55 Term of office of Board members .................................164

20.56 Resignation and removal of members from Board ........164

20.57 Meetings of Board .........................................................165

20.58 Member presiding at meetings of Board........................166

20.59 Quorum for Board meetings ..........................................166

20.60 Absence of Chairperson from meeting—leave

from Board ....................................................................166

Division 2—Patent and Trade Marks Attorneys Disciplinary

Tribunal 167

20.61 Establishment of Disciplinary Tribunal.........................167

20.62 Disciplinary Tribunal—substantive appointments ........167

20.63 Disciplinary Tribunal—acting appointments.................167

20.64 Disclosure of interest.....................................................168

20.65 Qualifications for appointment to, or acting as,

Disciplinary Tribunal ....................................................169

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Patents Regulations 1991 xi

Chapter 20A—Incorporated Patent Attorney 170

Part 1—Introduction 170 20A.1 Application of Chapter 20A ..........................................170

20A.2 Definitions.....................................................................170

Part 2—Obtaining registration for first time 171 20A.3 Form of application .......................................................171

20A.4 Certificate of registration...............................................171

Part 3—Maintaining registration 172 20A.5 Requirements for remaining on Register of Patent

Attorneys .......................................................................172

Part 4—Removal from Register of Patent Attorneys 173 20A.6 Voluntary removal of name from Register of

Patent Attorneys ............................................................173

20A.7 Failure to pay annual registration fee ............................173

20A.8 Failure to maintain professional indemnity

insurance .......................................................................173

Part 5—Discipline 174

Division 1—General 174

20A.9 Definitions.....................................................................174

20A.10 Board may apply for cancellation or suspension of

incorporated patent attorney‟s registration ....................174

Division 2—Proceedings in Disciplinary Tribunal 176

20A.11 Procedure of Disciplinary Tribunal ...............................176

20A.12 Notification of hearing ..................................................176

20A.13 Hearings to be public except in special

circumstances ................................................................176

20A.14 Representation before Disciplinary Tribunal.................177

20A.15 Summoning of witnesses ...............................................177

20A.16 Offences by persons appearing before Disciplinary

Tribunal .........................................................................178

20A.17 Protection of person constituting Disciplinary

Tribunal, witnesses etc. .................................................179

20A.18 Decision of Disciplinary Tribunal .................................180

20A.19 Notification and publication of decisions of

Disciplinary Tribunal ....................................................181

20A.20 Completion of outstanding business..............................182

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20A.21 Former attorney may be required to provide

assistance.......................................................................182

Part 6—Restoring attorney’s name to Register of Patent

Attorneys 184 20A.22 Restoring name to Register of Patent Attorneys............184

Chapter 21—Administration 185 21.1 Patent Office and sub-offices ........................................185

21.2 Employees to whom Commissioner may delegate

(Act s 209(1)) ................................................................185

Chapter 22—Miscellaneous 186

Part 1—Fees and costs 186

Division 1—Fees 186

22.1 Fees generally................................................................186

22.2 General fees...................................................................186

22.2AA Approved means............................................................188

22.2A Failure to pay: patent attorneys fees ..............................189

22.2B Failure to pay: filing fees for patent requests ................189

22.2C Failure to pay: certain other filing fees etc ....................189

22.2D Failure to pay: fees payable by patentee for

requests under s 101A(b) of the Act ..............................189

22.2EA Failure to pay: fee for grant of leave to amend

specification (person invited to pay)..............................190

22.2F Consequence if Commissioner does not invite

payment .........................................................................191

22.2G Failure to pay: hearing fees ...........................................191

22.2H Failure to pay: certain fees for actions by

Commissioner ...............................................................192

22.2I Failure to pay: acceptance fee .......................................193

22.3 General fees for international applications ....................193

22.4 Fees for international applications payable for the

benefit of the International Bureau ................................194

22.5 PCT Fund ......................................................................194

22.6 Exemption from fees .....................................................194

22.7 Refund of certain fees....................................................195

Division 2—Costs 196

22.7A Proceedings to which this Division applies ...................196

22.8 Costs..............................................................................196

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Part 2—Other matters 197 22.9 Death of applicant or nominated person ........................197

22.10 Address for service........................................................197

22.10A Address for correspondence ..........................................198

22.10AA Period for doing certain acts—office not open for

business .........................................................................198

22.10AB Days when office not open for business ........................198

22.10AC Prescribed acts...............................................................199

22.11 Extension of time ..........................................................199

22.12 Evidence........................................................................201

22.13 Declarations...................................................................201

22.14 Directions not otherwise prescribed ..............................202

22.15 Documents in English and English translations.............202

22.16 Documents other than specifications and abstracts........202

22.17 Incapacity of certain persons .........................................203

22.18 Destruction of documents..............................................204

22.19 Copies of certain documents to be supplied ..................204

22.20 International applications and the Patent Office............204

22.21 Protection or compensation of certain persons ..............204

22.22 Exercise of discretionary powers by Commissioner......205

22.23 Written submissions and oral hearings ..........................206

22.24 Practice and procedure other than for opposition

proceedings ...................................................................207

22.25 Requirements cannot be complied with for

reasonable cause............................................................208

22.26 Review of decisions.......................................................208

22.27 Documents not to infringe copyright—prescribed

documents .....................................................................210

Chapter 23—Transitional and savings provisions 211

Part 1—General 211 23.1 Saving: prohibition orders .............................................211

23.2 Delegation: certain matters referred to in this

Chapter ..........................................................................211

23.3 Opposition to grant: practice and procedure..................211

23.4 Certain opposition: practice and procedure ...................211

23.5 Fees payable for certain matters relating to

opposition......................................................................212

23.6 Certain delegations: opposition .....................................212

23.7 Certain undertakings......................................................213

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23.8 Restoration of lapsed applications or ceased

patents ...........................................................................213

23.9 Certain continuation and renewal fees...........................213

23.10 Fee taken to have been paid...........................................214

23.11 Supply of product referred to in section 117 of the

Act.................................................................................214

23.12 Certain withdrawn, abandoned or refused

applications ...................................................................215

23.13 Certain certificates of validity .......................................215

23.14 Certain action under the 1952 Act .................................216

23.15 Amendment of petty patents..........................................216

23.16 Certain applications under 1952 Act: time for

acceptance .....................................................................216

23.17 PCT applications to which subsection 89(5) of the

Act does not apply.........................................................217

23.18 Certain priority dates: saving.........................................217

23.25 Fees ...............................................................................217

23.26 Certain actions and proceedings ....................................218

23.32 Transitional: priority date and date of patent for

innovation patent application that is a divisional

application of a petty patent or petty patent

application .....................................................................219

23.33 Transitional: examination of innovation patents

converted from petty patent applications.......................219

23.34 Transitional: certain PCT applications ..........................220

23.35 Transitional: payment of fees for petty patents..............220

Part 2—Amendments made by particular instruments 223 23.36 Amendments made by Intellectual Property

Legislation Amendment (Raising the Bar)

Regulation 2013 (No. 1) ................................................223

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Introductory Chapter 1

Regulation 1.1

Patents Regulations 1991 1

Chapter 1—Introductory

1.1 Name of Regulations

These Regulations are the Patents Regulations 1991.

1.2 Commencement

These Regulations commence on 30 April 1991.

1.3 Interpretation

(1) In these Regulations, unless the contrary intention appears:

AAT means the Administrative Appeals Tribunal.

abstract means abstract of a complete specification.

acceptance means:

(a) in relation to a patent request and complete specification

relating to an application for a standard patent—acceptance

of the patent request and complete specification under

section 49 of the Act; and

(b) in relation to a patent request and complete specification

relating to an application for an innovation patent—

acceptance of the patent request and complete specification

under section 52 of the Act.

approved digital library means a library or other facility that the

Commissioner specifies as a digital library, for this definition, in

the Official Journal.

Example: The library administered by the International Bureau of the World Intellectual Property Organization, known as the “Digital Access Service for Priority Documents” or “DAS”.

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.

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Regulation 1.3

2 Patents Regulations 1991

basic documents means documents filed in a Convention country

in respect of a basic application.

certificate of verification means a statement:

(a) that a document to which the statement relates is a true and

complete translation of the accompanying document to the

best of the knowledge of the person who signs the statement;

and

(b) that is dated and signed.

Code of Conduct means the standard of practice titled “Code of

Conduct for Patent and Trade Marks Attorneys” that is established

by the Board from time to time.

competent authority, in relation to a Convention country, means a

person who, under the laws of the country or the arrangements in

place in the country, is authorised to certify copies of specifications

of patents for the country.

Disciplinary Tribunal means the Patent and Trade Marks

Attorneys Disciplinary Tribunal established by regulation 20.61.

former attorneys Regulations means the following Regulations:

(a) the Patent Attorneys Regulations as in force immediately

before the commencing day under the 1952 Act;

(b) the Patents Regulations 1991 as in force immediately before

1 July 2008.

former patents Regulations means the Patents Regulations in force

immediately before the commencing day under the 1952 Act.

International Bureau means the International Bureau of the World

Intellectual Property Organization.

Register of Patent Attorneys means the register mentioned in

section 198 of the Act.

the Act means the Patents Act 1990.

(2) A reference in these Regulations to:

(a) the giving of a notice or other document; or

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Regulation 1.3A

Patents Regulations 1991 3

(b) the making of a request or an application;

to the Commissioner or the Patent Office includes a reference to

the filing of the document.

(3) A reference in these Regulations to a document that is open to

public inspection is a reference to a document that may be

inspected by the public at the Patent Office.

(4) If the Commissioner gives a document to a person, the document is

taken to have been given to the person on the day the document is

dated by the Commissioner.

(5) The Commissioner may give a document to a person by:

(a) making the document available to the person in an electronic

form; and

(b) notifying the person that the document is available.

(6) A requirement in these Regulations to give information to the

Commissioner or to another person (whether the expression „give‟,

„tell‟, „inform‟ or another expression is used) is a requirement to

give the information in writing, unless the contrary intention

appears.

(7) For these Regulations, a period expressed in months is to be

worked out in the way described in rule 80.2 of the Regulations

under the Patent Cooperation Treaty set out in Schedule 2A.

1.3A Meaning of completed in relation to a search

For these regulations:

A search is completed on the earliest of:

(a) the date, if any, specified in the report as the date that the

report was issued; and

(b) the date, if any, specified in the report as the date that the

search was completed; and

(c) the date that the search results were issued to the applicant or

patentee by the foreign patent office.

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Regulation 1.4

4 Patents Regulations 1991

1.4 Meaning of Convention country

For the definition of Convention country in subsection 29B(5) of

the Act, the following countries are prescribed:

(a) a foreign country that is a signatory to the Paris Convention

for the Protection of Industrial Property of 20 March 1883, as

in force from time to time;

(b) a foreign country that is a full member of the World Trade

Organization.

Note 1: For signatories to the Paris Convention for the Protection of Industrial Property, see www.wipo.int.

Note 2: For full members of the World Trade Organization, see www.wto.org.

1.5 Deposit requirements: prescribed period

(1) For paragraph 6(c) of the Act, the prescribed period is:

(a) if the Commissioner makes a declaration under

subsection 42(1) of the Act in relation to the specification

concerned—the period mentioned in subregulation (2); or

(b) in any other case:

(i) for a complete specification in respect of a standard

patent application—the period mentioned in

subregulation (3); or

(ii) for a complete specification in respect of an innovation

patent application—the period mentioned in

subregulation (4).

(2) For paragraph (1)(a), the period begins on the filing date of the

application to which the specification relates and ends 3 months

from the date taken to be the date of filing of the specification

under paragraph 42(2)(b) of the Act.

(3) For subparagraph (1)(b)(i), the period begins on the filing date of

the application to which the specification relates and ends:

(a) at the end of the day immediately before the day on which

the application becomes open to public inspection; or

(b) if the application is accepted before the end of the day first

mentioned in paragraph (a)—immediately before acceptance.

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Regulation 1.6

Patents Regulations 1991 5

(4) For subparagraph (1)(b)(ii), the period begins on the filing date of

the application to which the specification relates to and ends

immediately before acceptance.

(5) If a matter mentioned in paragraph 6(c) of the Act has been

included in the specification, the applicant or patentee is taken to

consent to a micro-organism being obtained by a person to whom

the Commissioner has granted the certification under

regulation 3.25 in respect of the deposit:

(a) after the period mentioned in subregulation (1) for the

specification to which the application relates; and

(b) from the prescribed depositary institution with which the

micro-organism is deposited.

1.6 Secret use—prescribed period

For paragraph 9(e) of the Act, the period is 12 months after the first

use of the invention that would, but for the application of

paragraph 9(e), have constituted secret use.

1.7 Verification of translations of international applications

For the purposes of subsection 10(2) of the Act, the translation of

an international application that was not filed in the receiving

Office in English must have with it a related certificate of

verification.

1.8 Completion of applications

(1) A person who makes an application or request using an application

form must:

(a) comply with any directions given on the form; and

(b) provide information for each part of the form that describes

the information as being mandatory.

(2) A person who makes an application or request using an application

procedure other than a form must:

(a) comply with any directions given as part of the procedure;

and

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Regulation 1.8

6 Patents Regulations 1991

(b) provide information for each part of the procedure that

describes the information as being mandatory.

Example: An online application facility.

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Patent rights, ownership and validity Chapter 2

Regulation 2.1

Patents Regulations 1991 7

Chapter 2—Patent rights, ownership and

validity

2.1 Applications by co-owners for directions

(1) An application under section 17 of the Act must be in the approved

form.

(2) A person making an application under that section must:

(a) file with the application a notice stating the facts on which

the application is based; and

(b) serve a copy of the application and notice on the other

patentee or patentees.

2.2 Information made publicly available—recognised exhibitions

(1) This regulation sets out:

(a) for paragraph 24(1)(a) of the Act—a circumstance in relation

to information made publicly available by, or with the

consent of, the nominated person, patentee or predecessor in

title of the nominated person or patentee; and

(b) for subsection 24(1) of the Act—a period for making a

complete application for an invention if the circumstance

applies.

Circumstance—invention shown, used or published at recognised

exhibition

(2) The circumstance is that the information has been made publicly

available because the invention was:

(a) shown or used at a recognised exhibition; or

(b) published during a recognised exhibition at which the

invention was shown or used.

Period

(3) The period for making a complete application for the invention is:

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Regulation 2.2A

8 Patents Regulations 1991

(a) if the complete application claims priority from a basic

application made within 6 months of the day of the showing,

use or publication—12 months from the day the basic

application was made; or

(b) if the complete application is associated with a provisional

application made within 6 months of the day of the showing,

use or publication—12 months from the day the provisional

application was made; or

(c) otherwise—12 months from the day of the showing, use or

publication.

(4) In this regulation:

Paris Convention means the Paris Convention for the Protection of

Industrial Property of 20 March 1883, as in force for Australia on

the commencing day.

recognised exhibition means:

(a) an official or officially recognised international exhibition

within the meaning of Article 11 of the Paris Convention or

Article 1 of the Convention relating to International

Exhibitions done at Paris on 22 November 1928, as in force

for Australia on the commencing day; or

(b) an international exhibition recognised by the Commissioner

by a notice published in the Official Journal before the

beginning of the exhibition.

2.2A Information made publicly available—learned societies

(1) This regulation sets out:

(a) for paragraph 24(1)(a) of the Act—a circumstance in relation

to information made publicly available by, or with the

consent of, the nominated person, patentee or predecessor in

title of the nominated person or patentee; and

(b) for subsection 24(1) of the Act—a period for making a

complete application for an invention if the circumstance

applies.

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Patent rights, ownership and validity Chapter 2

Regulation 2.2B

Patents Regulations 1991 9

Circumstance—information read before learned society or

published by or on behalf of learned society

(2) The circumstance is that the information has been made publicly

available in a paper:

(a) read before a learned society; or

(b) published by or on behalf of a learned society.

Period

(3) The period for making a complete application for the invention is:

(a) if the complete application claims priority from a basic

application made within 6 months of the day of the reading

or publication—12 months from the day the basic application

was made; or

(b) if the complete application is associated with a provisional

application made within 6 months of the day of the reading

or publication—12 months from the day the provisional

application was made; or

(c) otherwise—12 months from the day of the reading or

publication.

2.2B Information made publicly available—reasonable trial of

invention

(1) This regulation sets out:

(a) for paragraph 24(1)(a) of the Act—a circumstance in relation

to information made publicly available by, or with the

consent of, the nominated person, patentee or predecessor in

title of the nominated person or patentee; and

(b) for subsection 24(1) of the Act—a period for making a

complete application for an invention if the circumstance

applies.

Circumstance—working of invention for reasonable trial

(2) The circumstance is that:

(a) the information has been made publicly available because the

invention was worked in public; and

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Regulation 2.2C

10 Patents Regulations 1991

(b) the working of the invention was for the purposes of a

reasonable trial of the invention; and

(c) because of the nature of the invention, it was reasonably

necessary for the working to be in public.

Period

(3) The period for making a complete application for the invention is:

(a) if the complete application claims priority from a basic

application made within 12 months of the start of the public

working of the invention—12 months from the day the basic

application was made; or

(b) if the complete application is associated with a provisional

application made within 12 months of the start of the public

working of the invention—12 months from the day the

provisional application was made; or

(c) otherwise—12 months from the start of the public working of

the invention.

2.2C Information made publicly available—other circumstances

(1) This regulation sets out:

(a) for paragraph 24(1)(a) of the Act—a circumstance in relation

to information made publicly available by, or with the

consent of, the nominated person, patentee or predecessor in

title of the nominated person or patentee; and

(b) for subsection 24(1) of the Act—a period for making a

complete application for an invention if the circumstance

applies.

Circumstance

(2) The circumstance is that the information has been made publicly

available in circumstances other than the circumstances described

in regulations 2.2, 2.2A and 2.2B.

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Patent rights, ownership and validity Chapter 2

Regulation 2.2D

Patents Regulations 1991 11

Period

(3) The period for making a complete application for the invention is

12 months from the day the information was made publicly

available.

2.2D Information made publicly available without consent—period

For subsection 24(1) of the Act, for information made publicly

available in the circumstances mentioned in paragraph 24(1)(b) of

the Act, the prescribed period for making a complete application

for an invention is 12 months from the day the information was

made publicly available.

2.3 Divisional applications—period

(1) For subsection 24(1) of the Act, this regulation applies to an

invention if:

(a) the specification containing the claim in which the invention

is defined was filed for a divisional application under

section 79B or 79C of the Act; and

(b) the claim is entitled under regulation 3.13D or 3.13E to the

priority date that it would have if the claim was in the

specification filed with a previous application (the original

application); and

(c) a circumstance mentioned in regulations 2.2 to 2.2D applies;

and

(d) the original application was filed in the period prescribed in

the circumstance under regulations 2.2 to 2.2D.

(2) The prescribed period for making the divisional application is:

(a) if the divisional application was filed in the period mentioned

in paragraph (1)(d)—that period; or

(b) otherwise—the period ending on the day the divisional

application was made.

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Chapter 2 Patent rights, ownership and validity

Regulation 2.4

12 Patents Regulations 1991

2.4 Prescribed period: patents of addition

(1) For the purposes of section 25 of the Act, the prescribed period is

the period that commences on the priority date of the claim of the

specification of the main invention and ends immediately before

the priority date of the relevant claim of the specification of the

patent of addition.

(2) In subregulation (1), a reference to the claim of the specification of

the main invention is a reference to:

(a) the claim defining that main invention; or

(b) if there are 2 or more claims defining the main invention—

the claim that has the earlier or earliest priority date.

2.5 Prescribed period: assertion that invention is not a patentable

invention

For subsection 27(1) of the Act, the prescribed period is the period:

(a) beginning immediately after the complete specification filed

in relation to the application for a standard patent becomes

open to public inspection; and

(b) ending 3 months after the date of publication in the Official

Journal of the notice of acceptance under paragraph 49(5)(b)

of the Act.

2.6 Prescribed period: notification of assertion of invalidity of

innovation patent

For subsection 28(2) of the Act, the prescribed period for an

innovation patent is the period from the date that the complete

specification for the patent becomes open to public inspection to

immediately before the Commissioner decides to certify the patent.

2.7 Documents to accompany notice of assertion of invalidity

Notice of an assertion under subsection 27(1) or 28(1) of the Act

must, if the assertion is based on a document, have with it:

(a) a copy of the document; and

(b) if the document is not in English, a copy of:

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Patent rights, ownership and validity Chapter 2

Regulation 2.7

Patents Regulations 1991 13

(i) a translation of the document into English; and

(ii) a related certificate of verification; and

(c) evidence of the date and place of publication of the

document.

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Chapter 3 From application to acceptance

Part 1 Inventions generally

Division 1 Applications

Regulation 3.1

14 Patents Regulations 1991

Chapter 3—From application to acceptance

Part 1—Inventions generally

Division 1—Applications

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:

(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

(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

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From application to acceptance Chapter 3

Inventions generally Part 1

Applications Division 1

Regulation 3.1A

Patents Regulations 1991 15

(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.

(2) For a PCT application, the applicant is taken to be the nominated

person.

3.2 Provisional specifications

A provisional specification must be in the approved form.

3.2A Specifications—standard patents

(1) A patent request for a standard patent must:

(a) be in the approved form; and

(b) be in English; and

(c) comply substantially with the requirements of Schedule 3.

(2) A complete specification for a standard patent must:

(a) be in the approved form; and

(b) be in English; and

(c) comply substantially with the requirements of Schedule 3.

(3) If the Commissioner treats an application for a standard patent

(other than a PCT application) 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).

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Chapter 3 From application to acceptance

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Division 1 Applications

Regulation 3.2AB

16 Patents Regulations 1991

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.

3.2AB PCT application—title of specification

(1) The title of a specification for a PCT application is taken to be:

(a) the title approved by the ISA for the application under

rule 44.2 of the PCT; or

(b) the title established by the ISA for the application under

rule 37.2 of the PCT.

(2) For subregulation (1), if the title is in a language other than

English, the title is taken to be the English translation of the title.

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From application to acceptance Chapter 3

Inventions generally Part 1

Applications Division 1

Regulation 3.2B

Patents Regulations 1991 17

3.2B Specifications: formalities check for innovation patents

(1) For section 52 of the Act, a complete application for an innovation

patent passes the formalities check only if the application meets all

of the following requirements:

(a) the complete specification for the application must:

(i) be in the approved form; and

(ii) be in English; and

(iii) comply substantially with the requirements of

Schedule 3;

(b) the patent request must be in the approved form;

(c) if the applicant is an eligible person under section 34 of the

Act—a copy of the court order declaring that the applicant is

an eligible person in relation to the invention must be filed

with the complete application;

(d) the complete application must comply with regulation 3.8,

3.10, 3.11, 6A.1 or 6A.2, or subsection 79C(2) of the Act, if

applicable;

(e) if the applicant is relying on section 41 of the Act—the

receipts mentioned in paragraph 3.1(2)(c) must be filed with

the complete application;

(f) the complete specification must not be a cross-reference to an

earlier patent application filed in Australia or in a Convention

country;

(g) the complete specification must not contravene

subsection 18(2) or (3) of the Act;

(h) if the application is a divisional application made under

section 79B of the Act in relation to an original application

that is a PCT application, the complete specification for the

PCT application must be open to public inspection.

(2) If the application does not meet a requirement mentioned in

paragraph (1)(a), (b), (c), (d), (e), (f) or (h), the Commissioner

must direct the applicant to do anything necessary to ensure that

the application meets the requirement.

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Chapter 3 From application to acceptance

Part 1 Inventions generally

Division 1 Applications

Regulation 3.2C

18 Patents Regulations 1991

(3) If an applicant to whom a direction under subregulation (2) has

been given does not comply with the direction within 2 months

from the date of the direction, the application lapses.

(4) If the application does not meet the requirement mentioned in

paragraph (1)(g), the Commissioner must direct the applicant to

ensure that the application meets the requirement.

(5) If an applicant to whom a direction under subregulation (4) has

been given does not respond to the direction within 2 months from

the date of the direction, the application lapses.

(6) If an applicant to whom a direction under subregulation (4) has

been given does not comply with the direction within 4 months

from the date of the direction, the application lapses.

(7) If an application lapses under subregulation (3), (5) or (6), the

Commissioner must:

(a) advertise that fact in the Official Journal; and

(b) tell the applicant of the lapse.

3.2C Specifications—formalities check for PCT application

(1) This regulation applies to a PCT application that complies with

subsection 29A(5) of the Act.

Note: This regulation was added on 15 April 2013. If the PCT application was filed before 15 April 2013, see subregulation (7).

(2) The applicant must:

(a) provide:

(i) an address for service in Australia at which a document

under the Act or these Regulations may be given to the

applicant personally, or to a person nominated as the

applicant‟s representative; or

(ii) another address for service in Australia to which it is

practicable and reasonable for Australia Post, or a

person acting for Australia Post, to deliver mail; and

(b) if a translation of the application is filed for

subsection 29A(5) of the Act—file a certificate of

verification for the translation.

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(3) The PCT application must substantially comply with the

requirements of Schedule 3.

(4) The Commissioner may, within one month from the date the PCT

application complies with subsection 29A(5) of the Act, direct the

applicant to do anything necessary to ensure that the application

complies with the requirements mentioned in subregulations (2)

and (3).

(5) The PCT application lapses if:

(a) the applicant has been given a direction under subregulation

(4); and

(b) the applicant has not complied with the direction within 2

months of the date of the direction.

(6) If the PCT application lapses under subregulation (5), the

Commissioner must:

(a) advertise that fact in the Official Journal; and

(b) tell the applicant that the PCT application has lapsed.

(7) If the PCT application was filed before 15 April 2013:

(a) a reference in this regulation to subsection 29A(5) of the Act:

(i) is taken to be a reference to subsection 89(3) of the Act,

as in force immediately before 15 April 2013; and

(ii) if a translation of a PCT application is required to be

filed—is taken not to include the requirement to file a

related certificate of verification; and

(b) for the purposes of the reference to subsection 89(3) of the

Act, as in force immediately before 15 April 2013,

paragraph 8.2(3)(c) of these Regulations, as in force

immediately before 15 April 2013:

(i) is taken to apply in relation to the PCT application; and

(ii) is taken not to include the requirement to file a related

certificate of verification; and

(iii) is taken not to include the requirement to file a

document setting out an address for service of

documents in Australia.

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Regulation 3.3

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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.

(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.

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.

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(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.

3.5 Filing date—patent applications other than PCT applications

(1) Subject to this regulation, the filing date of a patent application

(other than a PCT 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

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(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.

3.5AA Filing date—PCT applications

For section 30 of the Act, the filing date of a PCT application is:

(a) the international filing date; or

(b) if the Commissioner has treated another date as the

international filing date under Rule 82 ter

of the PCT—that

date; or

(c) if section 10 of the Act applies to the application—the date

taken to have been given as the international filing date under

that section.

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3.5A Filing date: incomplete specifications

(1) This regulation applies if the information mentioned in

subregulation 3.5(1) has been filed in respect of a patent

application (other than a PCT application) but a part of the patent

specification is missing.

(2) If the Commissioner notices that a part of the specification is

missing, the Commissioner must give the applicant notice in

writing:

(a) telling the applicant that a part of the specification is missing;

and

(b) asking the applicant to file the missing part.

(3) The missing part must be incorporated into the specification if,

within the period applying under subregulation (4), the applicant:

(a) files the missing part; or

(b) if the applicant claims priority from an earlier basic

application or associated provisional application—files:

(i) the missing part; and

(ii) a copy of the earlier application that contains, and

indicates the location of, the missing part; and

(iii) if the earlier application is not in English—a translation

of the application into English together with a related

certificate of verification.

(4) For subregulation (3), the period is:

(a) if a notice is given under subregulation (2)—2 months from

the date of the notice; or

(b) in any other case—the period ending on the earlier of:

(i) 2 months after the filing date; and

(ii) the time of acceptance.

(5) For section 30 of the Act, the filing date of the application is:

(a) if paragraph (3)(a) applies—the date on which the missing

part is filed; and

(b) if paragraph (3)(b) applies—the date that would have been

the filing date if the missing part had not been incorporated.

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(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.

3.5AB PCT applications—international applications taken to be

applications under the Act

(1) This regulation applies to an international application that specifies

Australia as a designated State under Article 4(1)(ii) of the PCT if:

(a) the receiving Office has declared that the international

application is taken to be withdrawn; or

(b) the International Bureau has made a finding under Article

12(3) of the PCT.

(2) The international application is taken to be a PCT application, as if

a declaration or finding had not been made, if:

(a) 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

(b) the Commissioner has received, within the time limit

specified in Rule 51.3 of the PCT:

(i) the fees prescribed for paragraph 29A(5)(b) of the Act;

and

(ii) if the application is not in English—a translation of the

application into English; and

(c) the Commissioner believes on reasonable grounds that:

(i) the declaration was the result of an error or omission by

the receiving Office; or

(ii) the finding was the result of an error or omission by the

International Bureau.

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3.5AC PCT applications—amendment

(1) For subsection 29A(3) of the Act, this regulation sets out the

circumstances and manner in which, and the day on which, a

specification of a PCT application is taken to be amended.

Translation of application into English

(2) If paragraph 29A(5)(a) of the Act applies to the PCT application:

(a) the description, drawings and claims contained in the

application are taken to have been amended by substituting

the description, drawings and claims in the translation; and

(b) the amendment is taken to have occurred on the day the

translation was filed.

Application amended under Article 19 of PCT

(3) If:

(a) a PCT application was amended under Article 19 of the PCT;

and

(b) the application was amended before the applicant met the

requirements of subsection 29A(5) of the Act;

the description, drawings and claims contained in the application

are to be taken to have been amended on the day the amendment

was made.

Application rectified under Rule 91 of PCT

(4) If:

(a) a PCT application was rectified under Rule 91 of the PCT;

and

(b) the rectification was made before the applicant met the

requirements of subsection 29A(5) of the Act;

the description, drawings and claims contained in the application

are to be taken to have been amended on the day the rectification

was effective, unless the Commissioner disregards the rectification

under Rule 91.3(f) of the PCT.

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Regulation 3.5AD

26 Patents Regulations 1991

Application amended under Article 34 of PCT

(5) If:

(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 29A(5) of the Act;

the description, drawings and claims contained in the application

are taken to have been amended on the day the amendment was

made.

(6) However, subregulation (5) does not apply if:

(a) the Commissioner has notified the applicant under

regulation 3.17C or paragraph 10.2(1)(d); and

(b) the applicant:

(i) provides the advice mentioned in paragraph 3.17B(2)(b)

or subparagraph 10.2(3)(c)(ii); or

(ii) elects under paragraph 3.17B(2)(c) or

subparagraph 10.2(3)(c)(iii) to abandon any

amendments that may have been made under Article 34

of the PCT.

Indications under Rule 13 bis

.4 of the PCT

(7) If an indication in relation to a deposited micro-organism is

furnished according to Rule 13 bis

.4 of the PCT in relation to a PCT

application:

(a) the description contained in the application is taken to have

been amended to include that indication; and

(b) the amendment is taken to have occurred on the day that

indication is furnished to the International Bureau.

3.5AD PCT applications—prescribed requirements

For subsection 29A(4) of the Act, the following requirements are

prescribed:

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(a) the requirements of subsection 29(4) of the Act;

(b) subregulation 3.1(1);

(c) subregulation 3.2A(1);

(d) paragraphs 3.2A(2)(a) and (b).

3.5AE PCT applications—prescribed period

(1) For subsection 29A(5) of the Act, the prescribed period is 31

months after the priority date of the application.

(2) In this regulation:

priority date has the same meaning as in the PCT.

3.5AF PCT applications—translations and prescribed documents

Translations published under Article 21 of PCT

(1) For paragraph 29A(5)(a) of the Act, subregulation (2) applies 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 was not filed

before the date of publication under Article 21 of the PCT.

(2) The publication under Article 21 of the PCT is taken:

(a) to be the translation mentioned in paragraph 29A(5)(a) of the

Act; and

(b) to have been filed within the prescribed period; and

(c) to have been verified in accordance with these Regulations.

Copy of application

(3) For paragraph 29A(5)(b) of the Act, if a PCT application has not

been published under Article 21 of the PCT, a copy of the

application is a prescribed document.

(4) In this regulation:

PCT application includes:

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(a) an amendment under Article 19 or 34 of the PCT; and

(b) a rectification under Rule 91 of the PCT.

3.5AG Convention application—prescribed particulars

(1) For paragraph 29B(4)(a) of the Act, the following particulars are

prescribed in relation to a relevant basic application:

(a) the country in which the application was made;

(b) the number allocated to the application by the foreign patent

office of the Convention country in which the application

was made;

(c) the date the application was made.

(2) A reference to a country or a Convention country in subregulation

(1) includes an intergovernmental authority to the extent that

Rule 4.10 of the PCT permits for a PCT application.

Note: An example for subregulation (2) is that the PCT allows the European Patent Office to be specified for a regional application instead of a particular Convention country.

3.5B Filing of documents outside business hours

The Patent Office and each sub-office of the Patent Office (if any)

may provide facilities for the filing of documents when the Office

or sub-office is not open to the public for business.

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

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(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

(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.

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Regulation 3.11

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3.11 Prescribed period—making Convention application

For subsections 29B(2) and 38(1A) of the Act, the prescribed

period is 12 months from the day a basic application is first made

in a Convention country for the invention.

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Regulation 3.12

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Division 2—Priority date of claim

3.12 What this Division is about

(1) This Division determines the priority date of a claim:

(a) for subsection 36(4) of the Act (see regulation 3.13); and

(b) for paragraph 43(2)(a) of the Act (see regulations 3.13A to

3.13E); and

(c) for section 114 of the Act (see regulation 3.14).

(2) However, if more than one of regulations 3.13A to 3.13E applies to

a single claim, the priority date of the claim, for paragraph 43(2)(a)

of the Act, is the earliest of the dates that is determined by those

regulations.

(3) Despite regulations 3.13A to 3.13E, the priority date of a claim, for

paragraph 43(2)(a) of the Act, is no later than the date of the filing

of the specification.

(4) In this Division, a document clearly discloses an invention if the

document discloses the invention in a manner that is clear enough,

and complete enough, for the invention to be performed by a

person skilled in the relevant art.

3.13 Priority date for application by person declared under

section 36 of the Act

(1) This regulation determines the priority date of a claim under

subsection 36(4) of the Act.

(2) If the claimed invention is clearly disclosed in the specification

mentioned in paragraph 36(1)(c) of the Act:

(a) if the specification was filed in relation to a complete

application, the priority date of the claim is the priority date

that the claim would have had if the claim was included in

the specification; and

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(b) if the specification was filed in relation to a provisional

application, the priority date of the claim is the date the

specification was filed.

(3) If the claimed invention is not clearly disclosed in the specification

mentioned in paragraph 36(1)(c) of the Act, the priority date of the

claim is the date the specification for the complete application

referred to in subsection 36(4) of the Act was filed.

3.13A Priority date for PCT application

(1) This regulation applies to a claim if:

(a) the circumstance mentioned in subregulation (2) applies to

the invention defined in the claim; and

(b) either:

(i) a document mentioned in subregulation (4) clearly

discloses the invention in the claim; or

(ii) more than one of the documents mentioned in

paragraph (4)(a), considered together, clearly disclose

the invention in the claim.

Circumstance

(2) For paragraph (1)(a), the circumstance is that the specification

containing the claim that defines the invention was filed for a PCT

application, and:

(a) either:

(i) the PCT application claims the priority of an earlier

application under Article 8 of the PCT; or

(ii) the PCT application has been amended to include a

claim to priority from an earlier application that, at the

time of filing the PCT application, was a claim to

priority that could have been made under Article 8 of

the PCT; and

(b) either:

(i) the earlier application was made in Australia no more

than 12 months before the filing date of the PCT

application; or

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(ii) the earlier application was made in Australia more than

12 months before the filing date of the PCT application,

and:

(A) a receiving Office has restored the priority

under Rule 26 bis

.3, and the restored priority has

not been found to be ineffective by the

Commissioner or a prescribed court under

Rule 49 ter

.1; or

(B) the Commissioner has restored the priority

under Rule 49 ter

.2; or

(C) the Commissioner has granted an extension of

time under section 223 of the Act that has the

effect of restoring a right of priority; or

(iii) the earlier application is a basic application that was the

first application made in a Convention country in

relation to the invention, and:

(A) the earlier application was made no more than

12 months before the filing date of the PCT

application; or

(B) the earlier application was made more than 12

months before the filing date of the PCT

application, and a receiving Office has restored

the priority under Rule 26 bis

.3, and the restored

priority has not been found to be ineffective by

the Commissioner or a prescribed court under

Rule 49 ter

.1; or

(C) the earlier application was made more than 12

months before the filing date of the PCT

application, and the Commissioner has restored

the priority under Rule 49 ter

.2; or

(D) the earlier application was made more than 12

months before the filing date of the PCT

application, and the Commissioner has granted

an extension of time under section 223 of the

Act that has the effect of restoring a right of

priority; or

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(iv) the earlier application is a basic application that was

made after a basic application mentioned in

subparagraph (iii).

(3) For the purposes of this regulation, if a provisional specification

was filed for a basic application when the application was made, a

complete specification later filed for the basic application is taken

to be another basic application from which the PCT application

claims priority, made on the day when the complete specification

was filed.

Documents

(4) For paragraph (1)(b), the documents are:

(a) the documents filed for the earlier application at the time the

application was made; and

(b) the complete specification for the PCT application, if:

(i) the invention in the claim relates to a micro-organism;

and

(ii) the documents filed for the earlier application, at the

time the application was made, included the relevant

information on the characteristics of the micro-organism

that was known to the applicant; and

(iii) the documents filed for the earlier application, at the

time the application was made, clearly disclosed the

invention, other than in relation to the description of the

micro-organism; and

(iv) the requirements of paragraph 6(c) of the Act are

satisfied by the complete specification; and

(v) the micro-organism was deposited with a prescribed

depository institution, in accordance with the rules of

the Budapest Treaty, on or before the date the earlier

application was made.

Priority date

(5) Subject to regulation 3.12, the priority date is:

(a) the date when the earlier application was made; or

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Regulation 3.13B

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(b) if there is more than one earlier application—the date the

earliest of those applications was made for which

paragraph (1)(b) is satisfied.

3.13B Priority date for Convention application

(1) This regulation applies to a claim if:

(a) the specification containing the claim that defines the

invention was filed for:

(i) a Convention application; or

(ii) a complete application that has been amended to

become a Convention application; and

(b) a document mentioned in subregulation (2), or more than one

of the documents mentioned in paragraph (2)(a) considered

together, clearly discloses the invention in the claim.

(2) For subregulation (1)(b), the documents are:

(a) the documents filed for a related basic application at the time

when the application was made; and

(b) the complete specification for the Convention application, if:

(i) the invention in the claim relates to a micro-organism;

and

(ii) the documents filed for a related basic application, at the

time when the application was made, included the

relevant information on the characteristics of the

micro-organism that was known to the applicant; and

(iii) the documents filed for a related basic application, at the

time when the application was made, clearly disclosed

the invention, other than in relation to the description of

the micro-organism; and

(iv) the requirements of paragraph 6(c) of the Act are

satisfied by the complete specification; and

(v) the micro-organism was deposited with a prescribed

depository institution, in accordance with the rules of

the Budapest Treaty, on or before the date when the

related basic application was made.

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Regulation 3.13C

36 Patents Regulations 1991

(3) For this regulation, if a provisional specification was filed for a

related basic application when the application was made, a

complete specification later filed for the basic application is taken

to be another related basic application made on the day the

complete specification was filed.

(4) Subject to regulation 3.12, the priority date is:

(a) the date the related basic application was made; or

(b) if there is more than one related basic application—the date

the earliest of those applications was made for which

paragraph (1)(b) is satisfied.

3.13C Priority date for complete application associated with

provisional application

(1) This regulation applies to a claim if:

(a) the specification containing the claim that defines the

invention was filed for a complete application that is

associated with a provisional application under section 38 of

the Act; and

(b) a document mentioned in subregulation (2), or more than one

of the documents mentioned in paragraph (2)(a) considered

together, clearly discloses the invention in the claim.

(2) For paragraph (1)(b), the documents are:

(a) the documents filed for the provisional application at the time

when the application was made; and

(b) the complete specification for the complete application, if:

(i) the invention in the claim relates to a micro-organism;

and

(ii) the documents filed for the provisional application, at

the time the application was made, included the relevant

information on the characteristics of the micro-organism

that was known to the applicant; and

(iii) the documents filed for the provisional application, at

the time the application was made, clearly disclosed the

invention, other than in relation to the description of the

micro-organism; and

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Regulation 3.13D

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(iv) the requirements of paragraph 6(c) of the Act are

satisfied by the complete specification; and

(v) the micro-organism was deposited with a prescribed

depository institution, in accordance with the rules of

the Budapest Treaty, on or before the date the

provisional application was made.

(3) Subject to regulation 3.12, the priority date is:

(a) the date the provisional application was made; or

(b) if there is more than one provisional application—the date

the earliest of those applications was made for which

paragraph (1)(b) is satisfied.

3.13D Priority date for divisional application filed prior to grant of

patent

(1) This regulation applies to a claim if:

(a) the specification containing the claim that defines the

invention was filed for:

(i) a divisional application under section 79B of the Act; or

(ii) a complete application that has been amended to

become a divisional application under section 79B of

the Act; and

(b) a document mentioned in subregulation (2) clearly discloses

the invention in the claim.

(2) For paragraph (1)(b), the documents are:

(a) the specification mentioned in subsection 79B(1) of the Act

(the earlier specification), unless:

(i) the deposit requirements must be satisfied in relation to

the invention to comply with paragraph 40(2)(a) of the

Act; and

(ii) when the divisional application under section 79B of the

Act is made, the period prescribed in subregulation

1.5(1) has ended in relation to the earlier specification;

and

(iii) the requirements of paragraph 6(c) of the Act are not

satisfied in relation to the earlier specification; and

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Regulation 3.13E

38 Patents Regulations 1991

(b) the complete specification for the divisional application, if:

(i) the invention in the claim relates to a micro-organism;

and

(ii) the earlier specification is a prescribed document; and

(iii) on the date when the first application was made, the

earlier specification included the relevant information

on the characteristics of the micro-organism that was

known to the applicant; and

(iv) on the date when the first application was made, the

earlier specification clearly disclosed the invention,

other than in relation to the description of the

micro-organism; and

(v) the requirements of paragraph 6(c) of the Act are

satisfied by the complete specification for the divisional

application; and

(vi) the micro-organism was deposited with a prescribed

depository institution, in accordance with the rules of

the Budapest Treaty, on or before the date when the first

application was made.

(3) Subject to regulation 3.12, the priority date is the priority date that

the claim would have had if the claim was in the earlier

specification.

3.13E Priority date for divisional application after grant of

innovation patent

(1) This regulation applies to a claim if:

(a) both of the following apply:

(i) the specification containing the claim that defines the

invention was filed for a divisional application under

section 79C of the Act;

(ii) examination of the divisional application is requested

within 2 months from the date of the grant of the

divisional application; and

(b) the specification referred to in subsection 79C(1) of the Act

clearly discloses the invention in the claim.

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Regulation 3.14

Patents Regulations 1991 39

(2) Subject to regulation 3.12, the priority date is the priority date that

the claim would have had if the claim had been in the specification

mentioned in subsection 79C(1) of the Act.

3.14 Priority dates: certain amended claims

If section 114 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 29A(3) 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 subparagraph 114(1)(c)(ii) of the Act.

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Regulation 3.14A

40 Patents Regulations 1991

Division 3—Examination

3.14A Request for international-type search relating to provisional

application

(1) An applicant for a provisional application may make a request

under Article 15(5) of the PCT for an international-type search in

relation to the application.

(2) The applicant must make the request within 10 months from the

date the provisional application was filed.

(3) If more than one International Searching Authority is competent

under Article 15(5) of the PCT to carry out the search, the

Commissioner may choose the Authority that will carry out the

search.

3.14B Request for preliminary search and opinion relating to

complete application

(1) This regulation applies to a complete application for a standard

patent made on or after 15 April 2013.

(2) If the applicant has not asked for an examination under section 44

of the Act, the applicant may request a preliminary search and

opinion relating to the application under section 43A of the Act.

(3) The request must be in the approved form.

Note: Section 43A of the Act does not require a request to be made before the Commissioner conducts a preliminary search and opinion.

3.14C Priority dates—Convention applications and PCT

applications: prescribed period for disregarding earlier

applications

For paragraph 43(5)(b) of the Act, the period of more than 12

months before the filing of the Convention application or PCT

application is prescribed.

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Regulation 3.14D

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3.14D Prescribed documents: basic application

(1) For subsection 43AA(1) of the Act, the following documents that

relate to a basic application are prescribed:

(a) a copy of the specification filed for, and at the same time as,

the basic application;

(b) a copy of any other document filed for the basic application,

whether filed at the same time as, or after, the basic

application is filed;

(c) a document mentioned in paragraph (a) or (b) that has been

certified by the competent authority of the Convention

country in which the basic application was made;

(d) if the application relates to a micro-organism—a copy of a

receipt for the deposit of the micro-organism issued by a

prescribed depository institution;

(e) if a document mentioned in paragraphs (a) to (d) is not in

English—a translation of the document into English and a

certificate of verification of the translation.

(2) For subsection 43AA(4) of the Act, if the Commissioner requires

that a prescribed document relating to a basic application be made

available to the Commissioner:

(a) the prescribed means for making the document available are:

(i) filing the document with the Australian Patent Office; or

(ii) making the document available through an approved

digital library; and

(b) the prescribed period for making the document available is 3

months from the day the Commissioner requires the

document be made available.

(3) However, if the Commissioner is satisfied that:

(a) a document was made available for inspection by the

Commissioner in an approved digital library within the

period mentioned in paragraph (2)(b); and

(b) the document is no longer available for inspection;

the prescribed period is 2 months after the day the Commissioner

notifies the applicant or patentee that the Commissioner has not

been able to inspect the document in the approved digital library.

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Regulation 3.15

42 Patents Regulations 1991

3.15 Requirements 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) An applicant of a PCT application may not make a request for the

examination of the patent request and complete specification until

the applicant has complied with the requirements of

subsection 29A(5) of the Act.

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 2 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

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Regulation 3.17A

Patents Regulations 1991 43

for a standard patent to ask for an examination of the patent request

and complete specification under subsection 44(2) of the Act.

(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.

3.17A PCT applications—Commissioner not to give certain

directions

(1) This regulation applies to a PCT application that is treated as an

application for a standard patent under the Act.

(2) The Commissioner must not give a direction under section 44 of

the Act unless the applicant has complied with the requirements of

subsection 29A(5) of the Act.

3.17B PCT applications—examination requirements

(1) For subsection 45(1A) of the Act, this regulation prescribes

requirements for a PCT application.

(2) The requirements are that the applicant must:

(a) give a copy of the international preliminary examination

report to the Commissioner; or

(b) advise that:

(i) no demand was made under Article 31 of the PCT; or

(ii) no amendments were made under Article 34 of the PCT;

or

(iii) 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 29A(5) of the Act; or

(c) elect to abandon any amendments that may have been made

under Article 34 of the PCT.

(3) However, subregulation (2) applies only if:

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44 Patents Regulations 1991

(a) each of the following applies:

(i) the applicant demanded an international preliminary

examination under Article 31 of the PCT before

complying with the requirements of subsection 29A(5)

of the Act;

(ii) at least 3 months after the applicant complied with the

requirements of subsection 29A(5) of the Act, the

Commissioner asks for a copy of the international

preliminary examination report from the International

Bureau;

(iii) the International Bureau advises that the international

preliminary examination report is not available; or

(b) both of the following apply:

(i) the applicant asks for the examination to be expedited

under subregulation 3.17(2);

(ii) a copy of an international preliminary examination

report relating to the application has not been provided

to the Commissioner.

Note: Under subparagraph 3.5AC(9)(b)(ii), if the applicant provides the advice, or makes the election, mentioned in paragraph (2)(b) or (c), any amendments made under Article 34 of the PCT are not taken to be included in the application.

(4) In this regulation:

international preliminary examination report has the same

meaning as it has in the PCT.

3.17C PCT applications—notice if examination declined

If the Commissioner declines to examine a request and

specification under subsection 45(1A) of the Act, the

Commissioner must notify the applicant and ask the applicant to

meet the requirements in subregulation 3.17B(2).

3.18 Report of Commissioner: examination

(2) For paragraph 45(1)(d) of the Act, the following matters are

prescribed:

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Regulation 3.19

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(a) whether, to the best of the Commissioner‟s knowledge, the

request and specification comply with the following

provisions of the Act:

(i) section 15 (Who may be granted a patent?);

(ii) section 29 (Application for patent—general rules);

(iii) section 29B (Applications for patents—special rules for

Convention applications);

(iv) section 38 (Time for making complete application);

(v) section 79B (Divisional applications prior to grant of

patent);

(vi) section 81 (Grant of patent of addition);

(c) whether acceptance of the request and specification should be

refused under section 50 of the Act („application or grant

may be refused in certain cases‟);

(e) whether a patent cannot be granted on the application

because of subsection 64(2) of the Act („grant: multiple

applications‟);

(f) for a PCT application—whether, to the best of the

Commissioner‟s knowledge, the application complies with

subregulations 3.2C(2) and (3).

(4) If a notice is filed under subsection 27(1) of the Act before the

patent request and complete specification to which the notice

relates have been accepted under subsection 49(1) of the Act, in

examining the patent request and complete specification under

section 45 of the Act, the Commissioner must consider a matter

stated in the notice that addresses a claim that the invention

concerned does not comply with paragraph 18(1)(b) of the Act.

3.19 Conduct of examination: standard patents

(1) If the Commissioner reasonably believes that there are lawful

grounds of objection to the patent request or complete

specification, he or she must state the grounds of objection in

reporting on an examination.

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Regulation 3.22

46 Patents Regulations 1991

(2) The applicant may contest the objection in writing or ask for leave

to amend the patent request or complete specification in

accordance with Chapter 10.

(3) If the applicant asks for leave to amend a patent request or

complete specification in response to, or in anticipation of, a report

under section 45 of the Act, the Commissioner must examine the

request and specification and report as if each proposed

amendment had been made.

(4) If the applicant contests the objection, the Commissioner must

examine the request and specification and take note of the matters

raised by the applicant.

3.22 Disclosure of patent documents and information to

International Bureau etc

(1) The Commissioner may disclose any or all of the following to the

International Bureau or a foreign patent office:

(a) the patent application or patent;

(b) a document given by the applicant, or another person, to the

Commissioner in connection with the patent application or

patent;

(c) a document in the Commissioner‟s possession that relates to

the patent application or the application of the patent;

(d) any information in the Commissioner‟s possession that

relates to a document mentioned in paragraph (a), (b) or (c);

whether or not the application is open for public inspection.

(2) However, if the patent application, document or information is not

open for public inspection, the Commissioner must not disclose the

application, document or information without the consent of the

applicant.

Note: Section 194 of the Act also authorises the Commissioner to give a person certain information about patents, patent applications and other documents in certain circumstances.

(3) The Commissioner may disclose the patent application, document

or information by depositing it in an approved digital library or by

any other means.

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Regulation 3.23

Patents Regulations 1991 47

Part 2—Inventions that are micro-organisms

3.23 Documents in accepted applications and patents involving

micro-organisms

(1) Where a micro-organism is deposited with a prescribed depositary

institution for the purposes of section 41 of the Act, the following

documents must be filed in relation to an application that has been

accepted under section 49 or 52 of the Act or a patent in respect of

the micro-organism:

(a) 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;

(b) 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;

(c) if a receipt referred to in paragraph (a) or (b) is not in

English—a translation of the receipt into English and a

related certificate of verification.

(2) The documents referred to in subregulation (1) must be filed within

3 months from the date of receipt of the micro-organism by the

prescribed depositary institution.

3.24 Commissioner may request samples and viability statement

(1) If, in relation to a patent application or patent in respect of a

micro-organism, the micro-organism is deposited with a prescribed

depositary institution, the Commissioner:

(a) on the order of a court in Australia, must; or

(b) on his or her own motion or on application in writing by

another person, may;

for the purposes of proceedings before the Commissioner or any

other legal proceedings in Australia:

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48 Patents Regulations 1991

(c) make to that institution a request referred to in Rule 11.1 of

the Budapest Treaty for a sample of that micro-organism; and

(d) in relation to that micro-organism, make the declaration

referred to in that Rule.

(2) Before making a request, the Commissioner must give the

applicant or patentee concerned, and any other person who

apparently has an interest in the request, an opportunity to be

heard, unless the request is made on the order of a court.

(3) If the Commissioner decides to make, or to refuse to make, a

request, he or she must inform the applicant or patentee concerned,

and any other person who apparently has an interest in the request,

of the decision, and of the reasons for the decision, by notice in

writing as soon as practicable after the decision.

(4) The Commissioner may make a request referred to in Rule

10.2(a)(iii) of the Budapest Treaty for a statement concerning the

viability of a micro-organism if a sample of the micro-organism

has been given to the Commissioner in accordance with a request

under subregulation (1).

3.25 Request for Commissioner’s certificate authorising release of

sample of a micro-organism

(1) If a micro-organism is deposited with a prescribed depositary

institution, a person may, in the approved form, request the

Commissioner to grant the certification referred to in Rule 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

(b) impose such conditions as are reasonable, including a

condition that the person give security for damages for any

breach of the undertaking referred to in paragraph (4)(c)

given by:

(i) the person; or

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Patents Regulations 1991 49

(ii) another person who has been nominated as a skilled

addressee; or

(c) refuse that request.

(3) If the application is for a standard patent, the applicant may, at any

time before the specification relating to the application is open for

public inspection, notify the Commissioner that a sample of the

deposited micro-organism is only to be provided in a period

mentioned in subregulation (3A) to a person who is:

(a) a skilled addressee without an interest in the invention; and

(b) nominated by the person who made the request.

(3A) For subregulation (3), the period is:

(a) before the patent is granted on that application; or

(b) before the application has lapsed or been withdrawn or

refused.

(4) The Commissioner must comply with a request in respect of a

patent application or patent:

(a) if the specification relating to that application or patent is

open to public inspection; and

(b) unless the Commissioner is reasonably satisfied that the

nominated person is not entitled to rely on the deposit for the

purposes of the Act; and

(c) if the person making the request or the person nominated as a

skilled addressee has undertaken to use that micro-organism

only for experimental purposes or in relation to:

(i) opposition proceedings under Chapter 5 of the Act in

relation to the grant of a standard patent on that

application; or

(ii) opposition proceedings under section 101M of the Act

in relation to an innovation patent; or

(iii) relevant proceedings in relation to the patent;

and not to make that micro-organism, or a culture derived

from that micro-organism, available to another person; and

(d) unless the Commissioner is reasonably satisfied that the

undertaking given by the person making the request or the

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50 Patents Regulations 1991

person nominated as a skilled addressee was not given in

good faith; and

(e) if:

(i) the Commissioner has been notified under subregulation

(3); and

(ii) the patent referred to in that subregulation has not been

granted; and

(iii) the application referred to in that subregulation has not

lapsed or been withdrawn or refused; and

(iv) the Commissioner is reasonably satisfied that the person

nominated as a skilled addressee is a skilled addressee

without an interest in the invention; and

(f) if:

(i) the request is in respect of a patent; and

(ii) the person making that request is a person to whom the

patentee has granted a licence under section 133 of the

Act; and

(iii) the Commissioner is reasonably satisfied that the

licence provides that the person making the request has

a right to obtain a sample of that micro-organism; and

(g) if:

(i) the request is in respect of a patent; and

(ii) the person making that request is a person who may

exploit the invention under section 163 of the Act; and

(iii) the Commissioner is reasonably satisfied that the terms

for the exploitation of the invention provide that the

person making the request has a right to obtain a sample

of that micro-organism.

(5) Before making a decision under subregulation (2), the

Commissioner must give the person making the request, the

applicant or patentee concerned and any other person who

apparently has an interest in the request, an opportunity to be

heard.

(6) If the Commissioner makes a decision under subregulation (2), he

or she must inform the person who made the request, the applicant

or patentee concerned and any other person who apparently has an

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Regulation 3.26

Patents Regulations 1991 51

interest in the request, of the decision, and the reasons for the

decision, by notice in writing given as soon as practicable after the

date of the decision.

3.26 Breach of undertakings given in respect of micro-organisms

(1) Where the micro-organism is deposited with a prescribed

depositary institution, proceedings for breach of an undertaking

referred to in paragraph 3.25(4)(c) may be instituted in a prescribed

court by a person who is:

(a) if a patent has not been granted on that patent application—

the applicant; or

(b) if:

(i) a patent has been granted on that patent application; or

(ii) the deposit is effected in relation to a patent;

the patentee of, or an exclusive licensee under, that patent.

(2) In proceedings by an exclusive licensee, the patentee must be a

party to the proceedings.

(3) A patentee joined as a defendant in the proceedings by an

exclusive licensee is not liable for costs unless the patentee enters

an appearance and takes part in the proceedings.

(4) It is a defence in proceedings for breach of the undertaking given

in respect of a micro-organism to which a specification filed in

respect of a patent application or patent relates, that when the

matters complained of took place the specification did not comply

with the requirements referred to in paragraph 6(c) or (d) of the

Act.

(5) A defendant may not plead a defence referred to in subregulation

(4) unless:

(a) the defendant, before becoming a defendant in the

proceedings, notified the Commissioner under paragraph

3.29(1) of the deposit requirement that has ceased to be

satisfied; and

(b) the applicant for the patent or the patentee fails to take the

steps referred to in paragraph 41(4)(b) of the Act within the

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52 Patents Regulations 1991

appropriate period prescribed by subregulation 3.30(1) for

the purposes of that paragraph.

3.27 Procedure in proceedings for breach of an undertaking

In proceedings referred to in subregulation 3.26(1) for breach of an

undertaking:

(a) the plaintiff must deliver particulars of the breaches

complained of:

(i) with the statement of claim or declaration; or

(ii) by order of the court, at a later time; and

(b) the defendant must deliver particulars of any objections on

which the defendant relies:

(i) with the statement of defence or plea; or

(ii) by order of the court, at a later time.

3.28 Relief in proceedings for breach of undertakings

(1) In proceedings referred to in subregulation 3.26(1), the court may:

(a) make an order for inspection; and

(b) impose terms and give directions with respect to the

inspection.

(2) In proceedings referred to in subregulation 3.26(1), the court may

grant such relief as it thinks fit, including:

(a) an injunction on such terms as it thinks fit; or

(b) an order for damages; or

(c) an order for an account of profits; or

(d) an order with respect to any security given under

paragraph 3.25(2)(b); or

(e) an order on such terms as it thinks fit to deliver to such

person as it thinks fit the micro-organism or any substance or

thing derived directly or indirectly from that micro-organism

as a result of the breach of the undertaking, including:

(i) any products made by using that micro-organism; and

(ii) any other micro-organisms derived from that

micro-organism; and

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Patents Regulations 1991 53

(iii) any products made by using those other

micro-organisms.

3.29 Notification that a deposit requirement has ceased to be

satisfied

(1) If a deposit requirement ceases to be satisfied in relation to a

micro-organism to which a specification filed in respect of a patent

application or patent relates, a person other than the applicant or

patentee may, after the specification has become open to public

inspection, notify the Commissioner in the approved form of the

requirement referred to in paragraph 6(c) or (d) of the Act that has

ceased to be satisfied.

(2) As soon as practicable after receiving a notice under subregulation

(1), the Commissioner must give a copy of the notice to the

applicant or patentee.

(3) If the Commissioner learns, otherwise than by a notice referred to

in subregulation (1), of facts that may establish that a requirement

referred to in that subregulation has ceased to be satisfied, the

Commissioner must cause a notice setting out those facts to be

given to the applicant or patentee.

(4) As soon as practicable after the Commissioner receives a notice

under subregulation (1) or gives a notice under subregulation (3), a

notice of the receipt or giving of that notification must be

published in the Official Journal.

(5) The terms of a notice under subregulation (1) or (3) need not be

published, but the notice must be open to public inspection.

(6) The applicant or patentee may file a written reply setting out the

facts relied upon to establish that the requirement referred to in

subregulation (1) is satisfied.

(7) If a reply filed under subregulation (6) is in answer to a notification

under subregulation (1) by a person, the Commissioner must, as

soon as practicable after receiving the reply, give a copy of the

reply to that person.

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54 Patents Regulations 1991

(8) As soon as practicable after a reply is filed under subregulation (6),

a notice of the filing must be published in the Official Journal.

(9) The terms of a reply filed under subregulation (6) need not be

published, but the reply must be open to public inspection.

3.30 Prescribed period: deposit requirements taken to be satisfied

For the purposes of paragraph 41(4)(b) of the Act, if, in relation to

a patent application or patent relating to a micro-organism:

(a) that micro-organism is deposited with a prescribed depositary

institution; and

(b) a requirement referred to in paragraph 6(c) or (d) of the Act

ceases to be satisfied in relation to the micro-organism;

the prescribed period is from the day when the requirement ceases

to be so satisfied to the end of:

(c) where the step referred to in paragraph 41(4)(b) of the Act is

the making of a new deposit of a sample of the

micro-organism:

(i) if the Commissioner has given under subregulation

3.29(2) the applicant or patentee a copy of a notice of

that requirement—the period of 3 months after the copy

was given; or

(ii) if the Commissioner has given under subregulation

3.29(3) to the applicant or patentee a notice of the

requirement—the period of 3 months after the notice

was given; or

(iii) if under Article 4(1) of the Budapest Treaty the

authority has notified the depositor of its inability to

furnish samples of the micro-organism and the

Commissioner has not, before the notification, given to

the applicant or patentee under subregulation 3.29(2) or

(3) a copy of the notice, or the notice, as the case may

be, of the requirement—the period of 3 months after the

depositor received that notification under Article 4(1)(d)

of the Treaty; or

(iv) in any other case—the day when that new deposit is so

made; or

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From application to acceptance Chapter 3

Inventions that are micro-organisms Part 2

Regulation 3.31

Patents Regulations 1991 55

(d) where the step referred to in paragraph 41(4)(b) of the Act is

an amendment of the specification in respect of that patent

application or patent—the date of the allowance of the

amendment, unless:

(i) the Commissioner has given the applicant or patentee a

copy of a notice under subregulation 3.29(2) or a notice

under subregulation 3.29(3), and the applicant or

patentee has not asked for leave to amend the

specification within the period of 3 months after the

copy or the notice was given; or

(ii) the authority has notified the depositor under Article

4(1) of the Budapest Treaty of its inability to furnish

samples of the micro-organism and:

(A) the Commissioner has not, before the

notification, given to the applicant or patentee

under subregulation 3.29(2) or (3) the notice, or

a copy of the notice, as the case may be, of the

requirement; and

(B) the applicant or patentee has not asked for leave

to amend the specification within the period of

3 months after the depositor received the

notification under Article 4(1)(d) of the Treaty.

3.31 Application for declaration that deposit requirements are not

satisfied

(1) An application under section 42 of the Act for a declaration that a

specification does not comply with section 40 of the Act unless the

deposit requirements are satisfied in relation to a micro-organism,

must:

(a) be made in the approved form to a prescribed court or the

Commissioner; and

(b) be lodged at the court or filed.

(2) A person who applies for a declaration under section 42 of the Act

must give a copy of the application:

(a) to the applicant or patentee; and

(b) to such other person as the court or Commissioner directs.

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Chapter 3 From application to acceptance

Part 2 Inventions that are micro-organisms

Regulation 3.31

56 Patents Regulations 1991

(3) If the Commissioner on his or her own motion proposes to declare

under section 42 of the Act that the specification in respect of a

patent application or patent does not comply with the requirements

of section 40 of the Act unless the deposit requirements are

satisfied in relation to a micro-organism, he or she must give to the

applicant or patentee a statement of the facts relied upon to justify

the making of that declaration.

(4) A person to whom:

(a) a copy of an application under subregulation (2); or

(b) a statement under subregulation (3);

has been given:

(c) may, within 3 months, give to the court to which the

application is made or to the Commissioner a reply to that

application or statement; and

(d) must give a copy of the reply to the applicant or patentee and

to such other persons as the court or the Commissioner

directs.

(5) As soon as practicable after:

(a) a copy of a declaration by a court under subsection 42(1) of

the Act is given to the Commissioner under subsection 42(6)

of the Act; or

(b) the making of a decision of the Commissioner under

subsection 42(1) of the Act;

notice of the making of the declaration or decision must be

published in the Official Journal.

(6) The terms of a declaration or decision referred to in subregulation

(5) need not be published, but the declaration or decision must be

open to public inspection.

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Publication Chapter 4

Regulation 4.1

Patents Regulations 1991 57

Chapter 4—Publication

4.1 Prescribed information: applicants and applications

For subsection 53(1) 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) 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.

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Chapter 4 Publication

Regulation 4.3

58 Patents Regulations 1991

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 that the Commissioner has reasonable grounds

for believing should not be open to public inspection.

4.4 Publication and inspection of PCT applications

(1) For subsection 56A(1) of the Act, a PCT application is taken to

have become open to public inspection, and to have been published

in Australia:

(a) if a notice in relation to the application is published under

subregulation (3)—on the day the notice is published; or

(b) if subregulation (5) applies—on the day the application is

published under Article 21 of the PCT.

(2) Subregulation (3) applies to a PCT application:

(a) that has not lapsed, or been withdrawn or refused; and

(b) for which the applicant has complied with subsection 29A(5)

of the Act before the end of 18 months after the priority date

of the application.

(3) The Commissioner must publish a notice in the Official Journal

stating that the PCT application is open to public inspection:

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Publication Chapter 4

Regulation 4.4

Patents Regulations 1991 59

(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.

(4) A request for publication under subregulation (3) must be in the

approved form.

(5) The PCT application is open to public inspection if:

(a) the applicant does not comply with subsection 29A(5) of the

Act within 18 months after the priority date of the

application; and

(b) the application is published under Article 21 of the PCT.

(6) The following documents are open for inspection if a notice is

published under subregulation (3) or if subregulation (5) applies:

(a) a copy of the relevant application;

(b) all documents in the possession of the Patent Office, other

than those mentioned in subregulation (7), that are associated

with:

(i) the application; or

(ii) any provisional application from which the application

claims priority under Article 8 of the PCT.

(7) Subregulation (6) does not apply to the following documents:

(a) a document that would be privileged from production in legal

proceedings on the ground of legal professional privilege;

(b) a document mentioned in subregulation 4.3(2).

(8) In this regulation:

priority date has the same meaning as in the PCT.

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Chapter 5 Opposition

Part 5.1 Preliminary

Regulation 5.1

60 Patents Regulations 1991

Chapter 5—Opposition

Part 5.1—Preliminary

5.1 What this Chapter is about

This Chapter sets out requirements for the following:

(a) the filing of notices of opposition and associated documents;

(b) the amending of filed documents;

(c) the dismissal of an opposition;

(d) the hearing of an opposition;

(e) associated matters.

5.2 Definitions

General

In this Chapter:

applicant means:

(a) for a section 101M opposition—the patentee of an innovation

patent; or

(b) for any other opposition—a person whose application or

request under the Act or these Regulations is opposed by an

opponent.

notice of opposition means a notice filed under regulation 5.4, 5.6

or 5.10.

opponent means:

(a) for a section 101M opposition—a person who files a notice

of opposition under regulation 5.6; or

(b) for any other opposition—a person who files a notice of

opposition under regulation 5.4 or 5.10.

party means an applicant or an opponent.

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Opposition Chapter 5

Preliminary Part 5.1

Regulation 5.3

Patents Regulations 1991 61

procedural opposition means an opposition begun by filing a

notice of opposition under regulation 5.10.

section 101M opposition means an opposition under section 101M

of the Act.

statement of grounds and particulars means a statement by an

opponent that sets out:

(a) the grounds on which the opponent intends to rely; and

(b) the facts and circumstances forming the basis for the

grounds.

substantive opposition means:

(a) an opposition begun by filing a notice of opposition under

regulation 5.4; or

(b) a section 101M opposition.

Note: The following terms are defined in Schedule 1 to the Act:

(a) approved form;

(b) complete specification;

(c) file;

(d) patent request;

(e) patentee;

(f) re-examination.

5.3 Commissioner may give direction about filing document or

evidence

(1) If a document or evidence may or must be filed under this Chapter,

the Commissioner may give a direction specifying:

(a) the number of copies of the document or evidence to be filed;

and

(b) the form in which the document or evidence is to be filed;

and

(c) the means by which the document or evidence is to be filed.

(2) The Commissioner may make or revoke the direction as the

Commissioner sees fit.

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Chapter 5 Opposition

Part 5.1 Preliminary

Regulation 5.3

62 Patents Regulations 1991

(3) If a party does not comply with the direction, the Commissioner

may:

(a) treat the document or evidence as not having been filed; or

(b) tell the party to comply with the direction.

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Opposition Chapter 5

Filing of opposition documents Part 5.2

Substantive opposition Division 5.2.1

Regulation 5.4

Patents Regulations 1991 63

Part 5.2—Filing of opposition documents

Division 5.2.1—Substantive opposition

5.4 Notice of opposition—standard patent opposition

(1) For section 59 of the Act, a person opposes the grant of a standard

patent by filing a notice of opposition, in the approved form, within

3 months from the day the notice of acceptance is published under

paragraph 49(5)(b) of the Act.

(2) For subsection 75(1) of the Act, a person opposes the grant of an

extension of the term of a standard patent by filing a notice of

opposition, in the approved form, within 3 months from the day the

notice of acceptance is published under paragraph 74(2)(b) of the

Act.

(3) The Commissioner must give an applicant in relation to a notice of

opposition filed under subregulation (1) or (2) a copy of the notice

of opposition as soon as practicable.

5.5 Statement of grounds and particulars—standard patent

opposition

(1) An opponent in a substantive opposition, other than a

section 101M opposition, must file a statement of grounds and

particulars within 3 months from the day the notice of opposition is

filed.

(2) The statement of grounds and particulars must be:

(a) in the approved form; and

(b) accompanied by a copy of each document mentioned in the

statement, unless the document:

(i) is open to public inspection; and

(ii) relates to a provisional or complete application for a

patent.

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Chapter 5 Opposition

Part 5.2 Filing of opposition documents

Division 5.2.1 Substantive opposition

Regulation 5.6

64 Patents Regulations 1991

(3) The Commissioner must give the applicant a copy of the statement

and accompanying documents as soon as practicable.

5.6 Notice of opposition and statement of grounds and particulars—

section 101M opposition

(1) For section 101M of the Act, a person opposes an innovation

patent that has been certified by filing the following documents:

(a) a notice of opposition in the approved form;

(b) a statement of grounds and particulars;

(c) a copy of each document mentioned in the statement, unless

the document:

(i) is open to public inspection; and

(ii) relates to a provisional or complete application for a

patent.

(2) The documents:

(a) may be filed at any time after the certification of the patent;

and

(b) must be filed at the same time.

(3) The Commissioner must give copies of the documents to the

applicant as soon as practicable.

5.7 Filing of evidence

(1) A party who intends to file evidence in a substantive opposition

must:

(a) file the evidence within the relevant evidentiary period

mentioned in regulation 5.8; and

(b) if the party files all the evidence before the end of the

period—notify the Commissioner of that fact.

(2) The Commissioner must give a copy of any evidence filed by a

party under regulation 5.8 to the other party:

(a) before the end of the period, if the Commissioner considers it

appropriate to do so; or

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Opposition Chapter 5

Filing of opposition documents Part 5.2

Substantive opposition Division 5.2.1

Regulation 5.8

Patents Regulations 1991 65

(b) as soon as practicable after the relevant evidentiary period

ends.

(3) The Commissioner must, as soon as practicable, notify:

(a) the other party of a notification under paragraph (1)(b); or

(b) if no notification is given under paragraph (1)(b)—the parties

that:

(i) all the evidence for the period has been filed; or

(ii) no evidence was filed.

5.8 Evidentiary periods

Evidence in support

(1) An opponent in a substantive opposition must file any evidence in

support of the opposition:

(a) for a section 101M opposition—at the same time as the

documents mentioned in subregulation 5.6(1); or

(b) for any other substantive opposition—within 3 months from

the day the opponent files the statement of grounds and

particulars under regulation 5.5.

Evidence in answer

(2) If the opponent files evidence in support of the opposition, the

applicant must file any evidence in answer to the evidence in

support within 3 months from the day the Commissioner:

(a) gives the applicant:

(i) all the evidence in support; or

(ii) if the opponent files the evidence in support in

instalments—the final instalment of the evidence in

support; and

(b) notifies the applicant that all the evidence in support has been

filed.

(3) If the opponent does not file any evidence in support of the

opposition, the applicant must file any evidence in answer to the

statement of grounds and particulars within 3 months from the day

Federal Register of Legislative Instruments F2013C00202

Chapter 5 Opposition

Part 5.2 Filing of opposition documents

Division 5.2.1 Substantive opposition

Regulation 5.9

66 Patents Regulations 1991

the Commissioner notifies the applicant that no evidence in support

was filed.

Evidence in reply

(4) If the applicant files evidence in answer under subregulation (2) or

(3), the opponent must file any evidence in reply to the evidence in

answer within 2 months from the day the Commissioner:

(a) gives the opponent:

(i) all the evidence in answer; or

(ii) if the applicant files the evidence in answer in

instalments—the final instalment of the evidence in

answer; and

(b) notifies the opponent that all the evidence in answer has been

filed.

5.9 Extension of time for filing evidence

(1) The Commissioner may extend an evidentiary period mentioned in

regulation 5.8:

(a) if requested in writing by a party; or

(b) on the Commissioner‟s own initiative.

(2) The Commissioner may extend the period only if the

Commissioner is satisfied that:

(a) the party who intended to file evidence in the period:

(i) has made all reasonable efforts to comply with all

relevant filing requirements under this Chapter; and

(ii) despite acting promptly and diligently at all times to

ensure the appropriate evidence is filed within the

period, is unable to do so; or

(b) there are exceptional circumstances that warrant the

extension.

(3) The Commissioner must determine the length of the extended

period having regard to what is reasonable in the circumstances.

(4) The Commissioner must notify the parties of the extension as soon

as practicable.

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Opposition Chapter 5

Filing of opposition documents Part 5.2

Substantive opposition Division 5.2.1

Regulation 5.9

Patents Regulations 1991 67

(5) In this regulation:

exceptional circumstances includes the following:

(a) a circumstance beyond the control of a party that prevents the

party from complying with a filing requirement under this

Chapter;

(b) an error or omission by the Commissioner that prevents a

party from complying with a filing requirement under this

Chapter;

(c) an order of a court, or a direction by the Commissioner, that

the opposition be stayed pending the completion of a related

proceeding or action under the Act.

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Chapter 5 Opposition

Part 5.2 Filing of opposition documents

Division 5.2.2 Procedural opposition

Regulation 5.10

68 Patents Regulations 1991

Division 5.2.2—Procedural opposition

5.10 Notice of opposition

Leave to amend filed document

(1) For subsection 104(4) of the Act, a person opposes a request for

leave to amend a filed document by filing a notice of opposition, in

the approved form, within 2 months from the day the notice of the

granting of leave to amend is published under subregulation

10.5(2).

Note: For the grounds on which an amendment may be opposed, see regulation 5.21.

Extension of time to do relevant act

(2) For subsection 223(6) of the Act, a person opposes the grant of an

application for an extension of time to do a relevant act by filing a

notice of opposition, in the approved form, within 2 months from

the day the advertisement of the extension application is advertised

under subsection 223(4) of the Act.

Application for grant of licence

(3) For subregulation 22.21(4), a person opposes the grant of a licence

by filing a notice of opposition, in the approved form, within 2

months from the day the Commissioner gives the person a copy of

the application under subregulation 22.21(3).

Commissioner to give copy of notice to applicant

(4) The Commissioner must give an applicant in relation to

subregulation (1), (2) or (3) a copy of the notice of opposition as

soon as practicable.

Federal Register of Legislative Instruments F2013C00202

Opposition Chapter 5

Filing of opposition documents Part 5.2

Procedural opposition Division 5.2.2

Regulation 5.11

Patents Regulations 1991 69

5.11 Statement of grounds and particulars

(1) An opponent in a procedural opposition must file a statement of

grounds and particulars within one month from the day the notice

of opposition is filed under regulation 5.10.

(2) The statement of grounds and particulars must be:

(a) in the approved form; and

(b) accompanied by a copy of each document mentioned in the

statement of grounds and particulars, unless the document:

(i) is open to public inspection; and

(ii) relates to a provisional or complete application for a

patent.

(3) The Commissioner must give the applicant a copy of the statement

of grounds and particulars and accompanying documents as soon

as practicable.

5.12 Practice and procedure

The Commissioner may:

(a) decide the practice and procedure to be followed in a

procedural opposition; and

(b) direct the parties accordingly.

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Chapter 5 Opposition

Part 5.3 Amendments to opposition documents

Regulation 5.13

70 Patents Regulations 1991

Part 5.3—Amendments to opposition documents

5.13 Application of regulation 22.22

Regulation 22.22 does not apply to an amendment made under this

Part.

5.14 Notice of opposition—correction of errors or mistake

(1) An opponent may request the Commissioner in writing to amend

the opponent‟s notice of opposition to correct a clerical error or

obvious mistake.

(2) The Commissioner must give the parties an opportunity to make

representations about the proposed amendment.

(3) The Commissioner must, as soon as practicable:

(a) notify the parties of the Commissioner‟s decision; and

(b) if the Commissioner decides to make the amendment—give

the applicant a copy of the amended notice of opposition.

5.15 Notice of opposition—change of opponent

(1) This regulation applies if an opponent‟s right or interest in an

opposition is transferred to another person (the new opponent)

during an opposition.

(2) The new opponent may:

(a) tell the Commissioner that the right or interest in the

opposition has been transferred to the new opponent; and

(b) request the Commissioner in writing to amend the notice of

opposition to record the new opponent‟s name.

(3) The Commissioner must give the applicant, the opponent and the

new opponent an opportunity to make representations about the

amendment.

(4) The Commissioner must:

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Opposition Chapter 5

Amendments to opposition documents Part 5.3

Regulation 5.16

Patents Regulations 1991 71

(a) as soon as practicable:

(i) notify the parties of the Commissioner‟s decision; and

(ii) if the Commissioner decides to make the amendment—

give the applicant a copy of the amended notice of

opposition; and

(b) ensure that the opposition proceeds in the name of the new

opponent.

5.16 Statement of grounds and particulars

(1) An opponent may request the Commissioner in writing to amend

the opponent‟s statement of grounds and particulars:

(a) to correct an error or omission in the grounds of opposition;

or

(b) to update the grounds of opposition to reflect an amendment

to the patent request or complete specification to which the

statement relates; or

(c) to amend the facts and circumstances forming the basis for

the grounds.

(2) The Commissioner must:

(a) notify the applicant of the opponent‟s request; and

(b) give the parties an opportunity to make representations about

the amendment.

(3) The Commissioner must not make the amendment if:

(a) the Commissioner is considering an application for dismissal

of the opposition under Part 5.4; or

(b) for an opposition begun under subregulation 5.4(1):

(i) the applicant‟s complete specification is being

re-examined; and

(ii) the re-examination is not completed as required by

regulation 9.5.

(4) The Commissioner must make the amendment if:

(a) subregulation (3) does not apply; and

(b) the Commissioner is satisfied that the amendment should be

made.

Federal Register of Legislative Instruments F2013C00202

Chapter 5 Opposition

Part 5.3 Amendments to opposition documents

Regulation 5.16

72 Patents Regulations 1991

(5) The Commissioner must, as soon as practicable:

(a) notify the parties of the Commissioner‟s decision; and

(b) if the Commissioner decides to make the amendment—give

the applicant a copy of the amended statement.

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Opposition Chapter 5

Dismissal of opposition Part 5.4

Regulation 5.17

Patents Regulations 1991 73

Part 5.4—Dismissal of opposition

5.17 Dismissal on request

(1) An applicant may request the Commissioner to dismiss an

opposition:

(a) within one month from the day the Commissioner gives the

applicant a copy of the statement of grounds and particulars

under subregulation 5.5(3), 5.6(3) or 5.11(3); or

(b) if the applicant‟s complete specification is re-examined under

subsection 97(1) of the Act—within one month from the day

the re-examination is completed as required by

regulation 9.5.

(2) The request must be in the approved form.

(3) The Commissioner must give the opponent a copy of the request as

soon as practicable.

(4) If the Commissioner decides to dismiss the opposition, the

Commissioner must, as soon as practicable, notify the parties of the

decision.

Note: For the requirements the Commissioner must satisfy when exercising a discretionary power adversely to a person, see regulation 22.22.

5.18 Dismissal on initiative of Commissioner

(1) The Commissioner may dismiss an opposition if the Commissioner

considers it appropriate to do so.

(2) The grounds on which the Commissioner may dismiss the

opposition include an opponent‟s failure to file a statement of

grounds and particulars or document mentioned in the statement in

accordance with regulation 5.5, 5.6 or 5.11.

(3) If the Commissioner decides to dismiss the opposition, the

Commissioner must notify the parties of the decision as soon as

practicable.

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Chapter 5 Opposition

Part 5.4 Dismissal of opposition

Regulation 5.18

74 Patents Regulations 1991

Note: For the requirements the Commissioner must satisfy when exercising a discretionary power adversely to a person, see regulation 22.22.

Federal Register of Legislative Instruments F2013C00202

Opposition Chapter 5

Hearing of opposition Part 5.5

Regulation 5.19

Patents Regulations 1991 75

Part 5.5—Hearing of opposition

5.19 Hearing and decision—re-examination

(1) This regulation applies to an opposition if:

(a) the applicant‟s complete specification is re-examined under

subsection 97(1) of the Act; and

(b) the re-examination is completed as required by

regulation 9.5.

(2) The Commissioner may hear and decide the opposition:

(a) on the Commissioner‟s own initiative, if the Commissioner

considers it appropriate to do so; or

(b) at the opponent‟s request, if the request is made:

(i) less than one month after the re-examination is

completed as required by regulation 9.5; and

(ii) in the approved form.

(3) The Commissioner must give the applicant a copy of a request

under paragraph (2)(b) as soon as practicable.

(4) The Commissioner must notify the parties of the decision as soon

as practicable.

5.20 Hearing and decision—other circumstances

(1) This regulation applies to an opposition if:

(a) the periods for filing evidence have ended; and

(b) the notice of opposition has not been withdrawn under

regulation 5.26; and

(c) the opposition has not been dismissed under Part 5.4 or heard

and decided under regulation 5.19.

(2) The Commissioner:

(a) must hold a hearing of the opposition if requested by a party

in writing; or

Federal Register of Legislative Instruments F2013C00202

Chapter 5 Opposition

Part 5.5 Hearing of opposition

Regulation 5.20

76 Patents Regulations 1991

(b) may decide, on the Commissioner‟s own initiative, to hold a

hearing of the opposition.

(3) The hearing may, at the Commissioner‟s discretion, be:

(a) an oral hearing; or

(b) by written submissions.

(4) If the Commissioner decides on an oral hearing:

(a) the Commissioner must notify the parties of the date, time

and place of the hearing; and

(b) the opponent must file a summary of submissions at least 10

business days before the hearing; and

(c) the applicant must file a summary of submissions at least 5

business days before the hearing; and

(d) the Commissioner must give a copy of each party‟s summary

of submissions to the other party as soon as practicable.

(5) The Commissioner must:

(a) decide the opposition; and

(b) notify the parties of the Commissioner‟s decision.

(6) The Commissioner, in making an award of costs in relation to an

opposition under subregulation 22.8(2), may consider a failure by a

party to file a summary of submissions under subregulation (4).

Federal Register of Legislative Instruments F2013C00202

Opposition Chapter 5

Miscellaneous Part 5.6

Regulation 5.21

Patents Regulations 1991 77

Part 5.6—Miscellaneous

5.21 Opposition to amendment—grounds

For subsection 104(4) of the Act, an opposition to an amendment

may be made only on the ground that the amendment is not

allowable under:

(a) section 102 of the Act; or

(b) regulation 10.3.

Note: For the period for filing a notice of opposition to the allowance of an amendment, see subregulation 5.10(1).

5.22 Commissioner may give directions

(1) The Commissioner may give a direction in relation to an

opposition to which this Chapter applies:

(a) if requested by a party in writing; or

(b) on the Commissioner‟s own initiative.

(2) If the Commissioner proposes to give a direction, the

Commissioner must give the parties an opportunity to make

representations about the direction.

(3) A direction must not be inconsistent with the Act or these

Regulations.

(4) The Commissioner must notify the parties of the direction as soon

as practicable.

5.23 Commissioner may consult documents

(1) For the purposes of deciding an opposition, the Commissioner may

consult a document that:

(a) is relevant to the opposition; and

(b) has not been filed under this Chapter; and

(c) is available in the Patent Office.

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Chapter 5 Opposition

Part 5.6 Miscellaneous

Regulation 5.24

78 Patents Regulations 1991

(2) If the Commissioner proposes to rely on the document, the

Commissioner must give the parties:

(a) notice of the Commissioner‟s intention to do so; and

(b) a copy of, or access to, the document; and

(c) an opportunity to give evidence or make representations

about the document.

5.24 Representations to Commissioner—formal requirements

A representation mentioned in a provision of this Chapter may be

made to the Commissioner by any means approved by the

Commissioner.

5.25 Extension of time for filing—amendment at Commissioner’s

direction

(1) This regulation applies if:

(a) the Commissioner directs an applicant to file a statement of

proposed amendments under subsection 107(1) of the Act;

and

(b) a period for filing a document under this Chapter begins or

ends during the amendment period.

(2) The period for filing the document is extended by the equivalent of

the amendment period.

(3) In this regulation:

amendment period means the period that:

(a) begins on the day the applicant is given an opportunity to be

heard under subsection 107(2) of the Act; and

(b) ends on the day the Commissioner decides whether to allow

the amendment.

5.26 Withdrawal of opposition

(1) An opponent may withdraw an opposition at any time by filing a

signed notice of withdrawal in the approved form.

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Opposition Chapter 5

Miscellaneous Part 5.6

Regulation 5.26

Patents Regulations 1991 79

(2) The Commissioner must give the applicant a copy of the notice of

withdrawal as soon as practicable.

Federal Register of Legislative Instruments F2013C00202

Chapter 6 Grant and term of patents

Part 1 Patents generally

Regulation 6.1

80 Patents Regulations 1991

Chapter 6—Grant and term of patents

Part 1—Patents generally

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.

6.1A Prescribed particulars—grant of standard patent

For subsection 61(1) of the Act, the following particulars are

prescribed:

(a) the date the patent is granted by the Commissioner;

(b) any other particulars of the grant that the Commissioner

considers appropriate.

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 AAT—

the court or AAT 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).

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Grant and term of patents Chapter 6

Patents generally Part 1

Regulation 6.2A

Patents Regulations 1991 81

6.2A Prescribed particulars—grant of innovation patent

For subsection 62(1) of the Act, the following particulars are

prescribed:

(a) the date the innovation patent is granted by the

Commissioner;

(b) any other particulars of the grant that the Commissioner

considers appropriate.

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:

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Chapter 6 Grant and term of patents

Part 1 Patents generally

Regulation 6.3

82 Patents Regulations 1991

(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

(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 subsections 29B(1) and (2) of the Act, a

Convention application in relation to a basic application, the date

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Grant and term of patents Chapter 6

Patents generally Part 1

Regulation 6.3

Patents Regulations 1991 83

of the patent is the date 12 months from the date of making the first

basic application to which the Convention application relates.

(11) If a PCT application claims the priority of an earlier application

under Article 8 of the PCT, and a circumstance mentioned in an

item of the following table applies, the date of the patent is the date

12 months from the date of making the first application mentioned

in the item.

Circumstances

Item Column 1

The earlier application was…

Column 2

and:

1 an application made in Australia

more than 12 months before the

international filing date of the PCT

application

both of the following apply:

(a) a receiving Office has restored

priority under Rule 26 bis

.3 of the

PCT;

(b) the restored priority has not been

found to be ineffective by the

Commissioner or a prescribed

court under Rule 49 ter

.1 of the

PCT

2 an application made in Australia

more than 12 months before the

international filing date of the PCT

application

the Commissioner has restored

priority under Rule 49 ter

.2 of the

PCT

3 an application made in Australia

more than 12 months before the

international filing date of the PCT

application

the Commissioner has granted an

extension of time under section 223

of the Act that has the effect of

restoring a right of priority

4 a basic application made more than

12 months before the international

filing date of the PCT application,

being the first application made in a

Convention country for the

invention

both of the following apply:

(a) a receiving Office has restored

priority under Rule 26 bis

.3 of the

PCT;

(b) the restored priority has not been

found to be ineffective by the

Commissioner or a prescribed

court under Rule 49 ter

.1 of the

PCT

5 a basic application made more than the Commissioner has restored

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Chapter 6 Grant and term of patents

Part 1 Patents generally

Regulation 6.3

84 Patents Regulations 1991

Circumstances

Item Column 1

The earlier application was…

Column 2

and:

12 months before the international

filing date of the PCT application,

being the first application made in a

Convention country for the

invention

priority under Rule 49 ter

.2 of the

PCT

6 a basic application made more than

12 months before the international

filing date of the PCT application,

being the first application made in a

Convention country for the

invention

the Commissioner has granted an

extension of time under section 223

of the Act that has the effect of

restoring a right of priority

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Grant and term of patents Chapter 6

Extension of pharmaceutical patents Part 2

Regulation 6.7

Patents Regulations 1991 85

Part 2—Extension of pharmaceutical patents

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 the Australian

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Chapter 6 Grant and term of patents

Part 2 Extension of pharmaceutical patents

Regulation 6.10

86 Patents Regulations 1991

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.

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Grant and term of patents Chapter 6

Extension of pharmaceutical patents Part 2

Regulation 6.11

Patents Regulations 1991 87

(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.

Federal Register of Legislative Instruments F2013C00202

Chapter 6A Divisional applications

Regulation 6A.1

88 Patents Regulations 1991

Chapter 6A—Divisional applications

6A.1 Divisional applications before grant—standard and innovation

patents

(1) For paragraph 79B(2)(a) and subparagraph 79B(3)(b)(iv) of the

Act, a further complete application must:

(a) be made in accordance with section 29 of the Act; and

(b) be filed:

(i) if the first application is for a standard patent—no later

than 3 months from the day the notice of acceptance of

the first application is published under

paragraph 49(5)(b) of the Act; or

(ii) if the first application is for an innovation patent—

before the grant of the patent under subsection 62(1) of

the Act.

Note: For the definition of first application, see section 79B of the Act.

(2) For paragraph 79B(2)(b) of the Act, the particulars are:

(a) a statement that the application is a further complete

application for section 79B of the Act; and

(b) the number of the first application.

6A.2 Divisional applications after grant—innovation patents

(1) For paragraph 79C(1A)(a) and subparagraph 79C(2)(b)(iv) of the

Act, a further complete application must be:

(a) made in accordance with section 29 of the Act; and

(b) filed no later than one month from the day the notice of the

occurrence of the examination of the first patent is published

under paragraph 101E(2)(b) of the Act.

Note: For the definition of first patent, see section 79C of the Act.

(2) For paragraph 79C(1A)(b) of the Act, the particulars are:

(a) a statement that the application is a further complete

application for section 79C of the Act; and

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Divisional applications Chapter 6A

Regulation 6A.2

Patents Regulations 1991 89

(b) the number of the first patent.

Federal Register of Legislative Instruments F2013C00202

Chapter 7 Patents of addition

Regulation 7.1

90 Patents Regulations 1991

Chapter 7—Patents of addition

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.

Federal Register of Legislative Instruments F2013C00202

Re-examination Chapter 9

Regulation 9.1

Patents Regulations 1991 91

Chapter 9—Re-examination

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

specification

If the Commissioner decides, under subsection 97(1) of the Act, to

re-examine a complete specification relating to an application for a

patent, the Commissioner must tell:

(a) the applicant; and

(b) if the application is opposed under section 59 of the Act—

each opponent.

9.2 Request for re-examination of complete specification

(1) For subsections 97(2) and 101G(1) of the Act, a request for

re-examination of a complete specification must be in the approved

form.

(1A) A request must state:

(a) the grounds of the request; and

(b) the reasons why the grounds are relevant to the complete

specification.

(2) Subregulations (2A) and (3) apply if the request includes an

assertion that the invention, so far as claimed in any claim and

when compared with the prior art base that existed before the

priority date of that claim:

(a) is not novel; or

(b) for a standard patent—does not involve an inventive step; or

(c) for an innovation patent—does not involve an innovative

step.

(2A) For subregulation (2), the request must:

(a) identify the documents on which the assertion is based; and

(b) state the relevance of each document.

(3) The request must have with it:

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Chapter 9 Re-examination

Regulation 9.3

92 Patents Regulations 1991

(a) if the document is not available in the Patent Office—a copy

of the document; and

(b) if the document is not in English—a translation of the

document into English and a related certificate of

verification; and

(c) evidence of the date and place of publication of the

document.

(4) If the request does not comply with subregulation (1A), or

subregulations (2), (2A) and (3) if applicable, the Commissioner

may decide not to re-examine the complete specification.

(5) A person who has made a request may, by filing a notice in

writing, amend or withdraw the request before the Commissioner

reports under section 98 or subsection 101G(2) of the Act.

(6) If the person who made the request is not the patentee, the

Commissioner must notify the patentee of his or her decision to

re-examine the complete specification.

(7) A patentee or another person who has requested re-examination of

the complete specification under subsection 97(2) or 101G(1) of

the Act must give notice to the Commissioner of any relevant

proceedings in relation to the patent of which he or she is aware.

9.3 Copy of report on re-examination

(1) If a person who asked for the re-examination is not the patentee, a

copy of the report under section 98 or subsection 101G(2) of the

Act must be given to the person by the Commissioner.

(2) The Commissioner must give an opponent under Chapter 5 of the

Act a copy of the report in respect of a complete specification in

relation to the application in respect of which the grant of a patent

is opposed.

Federal Register of Legislative Instruments F2013C00202

Re-examination Chapter 9

Regulation 9.4

Patents Regulations 1991 93

9.4 Prescribed period: statement disputing report by Commissioner

(1) For subsection 99(1) or 101H(1) of the Act, the prescribed period

is the period of 2 months from the day when the Commissioner

reports under section 98 or subsection 101G(2) of the Act.

(2) The Commissioner must give a copy of a statement filed under

subsection 99(1) or subsection 101H(1) of the Act to:

(a) an opponent under Chapter 5 of the Act in respect of the

re-examined complete specification in relation to the

application in respect of which the grant of a patent is

opposed; and

(b) if the person who asked for the re-examination is not the

patentee—that person.

9.5 Completion of re-examination

If the Commissioner makes an adverse report on a re-examination

under subsection 97(1) of the Act and:

(a) a statement is filed under section 99 of the Act and:

(i) the Commissioner gives the applicant an opportunity to

be heard that is referred to in subsection 107(2) of the

Act within 3 months from the day when the

Commissioner reports under section 98 of the Act; or

(ii) the applicant or patentee asks for leave to amend the

complete specification to remove any lawful grounds of

objection specified in a report on re-examination within

3 months from the day referred to in subparagraph (i);

the re-examination is completed when the decision is made

whether or not the amendment is allowed; or

(b) a statement is filed under section 99 of the Act and

subparagraphs (a)(i) and (ii) do not apply—the

re-examination is completed 2 months from the day when the

Commissioner reports under section 98 of the Act; or

(c) a statement is not filed under section 99 of the Act and:

(i) the Commissioner gives the applicant an opportunity to

be heard that is referred to in subsection 107(2) of the

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Chapter 9 Re-examination

Regulation 9.5

94 Patents Regulations 1991

Act within 2 months from the day when the

Commissioner reports under section 98 of the Act; or

(ii) the applicant or patentee asks for leave to amend the

complete specification to remove any lawful grounds of

objection specified in a report on re-examination within

2 months from the day when the Commissioner reports

under section 98 of the Act;

the re-examination is completed when the decision is made

whether or not the amendment is allowed; or

(d) a statement is not filed under section 99 of the Act and

subparagraphs (c)(i) and (ii) do not apply—the

re-examination is completed 2 months from the day when the

commissioner reports under section 98 of the Act.

Federal Register of Legislative Instruments F2013C00202

Examination of innovation patents Chapter 9A

Regulation 9A.1

Patents Regulations 1991 95

Chapter 9A—Examination of innovation

patents

9A.1 Request for examination

(1) A request for examination of a complete specification relating to an

innovation patent must be in the approved form.

(2) If the Commissioner decides, under paragraph 101A(a) of the Act,

to examine a complete specification, the Commissioner must tell

the patentee about the decision.

(3) If a request is made under paragraph 101A(b) of the Act by a

person other than the patentee, the Commissioner must tell the

patentee about the request.

(4) A request for examination of a complete specification can be

withdrawn only:

(a) by the person who made the request; and

(b) before examination of the complete specification has begun;

and

(c) if the Commissioner is satisfied, on reasonable grounds, that

the request was made in error.

(5) If examination of a complete specification has begun, no further

requests for examination of the specification can be made.

9A.2 Examination of complete specification

For section 101B of the Act, the Commissioner may examine a

complete specification relating to an innovation patent only if the

patent has been granted.

9A.3 Conduct of examination

(1) If the Commissioner believes, on reasonable grounds, that there are

lawful grounds for revocation of the innovation patent, the

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Chapter 9A Examination of innovation patents

Regulation 9A.4

96 Patents Regulations 1991

Commissioner must state the grounds for revocation in reporting

on an examination.

(2) The patentee may contest a ground for revocation in writing or ask

for leave to amend the complete specification in accordance with

Chapter 10.

(3) If the patentee asks for leave to amend a complete specification in

response to, or in anticipation of, a report under section 101B of

the Act, the Commissioner must examine the specification and

report as if each proposed amendment had been made.

(4) If the patentee contests a ground for revocation, the Commissioner

must examine the specification and take note of the matters raised

by the applicant.

(5) If the request for examination was made by a person other than the

patentee, the Commissioner must send a copy of the report to the

person who requested the examination.

9A.4 Period for examination

For paragraph 101C(b) of the Act, the examination of a complete

specification for an innovation patent must be completed before the

end of whichever of the following periods ends latest:

(a) the period of 6 months from the date on which the first report

is issued under section 101B of the Act;

(b) the period mentioned in paragraph 13.4(1)(d);

(c) if an appeal has been made to a prescribed court in relation to

the patent—the period of 3 months from the date on which

the appeal is withdrawn, finally dealt with or determined, or

such longer period as the court allows;

(d) if the Commissioner requires a document to be made

available under subsection 43AA(4) of the Act—5 months

from the date the requirement is made;

(e) if:

(i) the Commissioner has informed the patentee of a notice

under subsection 28(1) of the Act; and

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Examination of innovation patents Chapter 9A

Regulation 9A.5

Patents Regulations 1991 97

(ii) a ground for revocation is raised based on information

in the notice;

3 months from the date of the report that first mentions the

ground for revocation;

(f) if:

(i) the Commissioner gives the applicant an opportunity to

be heard in relation to a report under section 101B of

the Act or regulation 10.2 by:

(A) notifying the applicant in writing of the date by

which written submissions must be filed; or

(B) notifying the applicant in writing of the date,

time and place of an oral hearing; and

(ii) the Commissioner makes a decision in writing in

relation to the report;

3 months from the date the decision is made;

(g) if the Commissioner revokes a certificate of examination

under section 101EA of the Act—3 months from the date the

decision to revoke is made.

9A.5 Validity of innovation patent

For the purposes of examination, if a notice has been filed under

subsection 28(1) of the Act, the Commissioner must consider a

matter stated in the notice that addresses a claim that an invention

does not comply with paragraph 18(1A)(b) of the Act.

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Chapter 10 Amendments

Regulation 10.1

98 Patents Regulations 1991

Chapter 10—Amendments

10.1 Form of amendments

(1) For the purposes of subsection 104(1) of the Act, an applicant or a

patentee may ask the Commissioner for leave to amend a patent

request or complete specification or another filed document by

filing a request for leave to amend in the approved form together

with a statement of proposed amendments.

(1AA) However, an applicant of a PCT application may not ask the

Commissioner for leave to amend until the applicant has complied

with the requirements of subsection 29A(5) of the Act.

(1A) If an applicant proposes to amend a patent request, complete

specification or other filed document for a reason mentioned in

subregulation (1B), the applicant is taken to have complied with

subregulation (1) if a written statement of the proposed

amendments is filed.

(1B) For subregulation (1A), the reasons are:

(a) to remove a lawful ground of objection or revocation raised

in an examination report; or

(b) for an application for a standard patent—in anticipation of

examination of the patent request and complete specification;

or

(c) for an innovation patent—in anticipation of examination of

the complete specification.

(2) If:

(a) a proposed amendment is to be made by means of

substituting a document or part of a document; or

(b) the Commissioner requires the applicant or patentee to make

a proposed amendment by that means;

the applicant or patentee must file:

(c) 2 copies of each document or part that is to be substituted for

a document or part; and

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Amendments Chapter 10

Regulation 10.2

Patents Regulations 1991 99

(d) on 1 of the copies, an indication, in a manner approved by the

Commissioner, of the nature and location of the proposed

amendment.

(3) The Commissioner may require an applicant or a patentee to file,

within 3 months of being asked to do so, a statement of the reasons

for the request being made and any evidence in support of the

request.

(4) The Commissioner may, before granting leave to amend, require a

patentee to file within 1 month of being asked to do so, a statement

that, to the best of his or her knowledge, relevant proceedings are

not pending in relation to the patent.

(5) For the purposes of this Chapter, a statement of proposed

amendments may be amended by filing a statement of proposed

amendments of the first-mentioned statement before leave is

granted under regulation 10.5 to amend the patent request or

complete specification or another filed document.

10.2 Commissioner to consider and deal with requests for leave to

amend

(1) For the purposes of subsection 104(2) of the Act, the

Commissioner must report on whether:

(a) the request for leave to amend and the statement of proposed

amendments do not comply with regulation 10.1 and

Schedule 3; and

(b) any proposed amendment of a complete specification is not

allowable under section 102 or 103 of the Act; and

(c) the proposed amendments are not allowable under

regulation 10.3 or, if made, would not otherwise be allowable

under the Act or these Regulations;

and may, if the request for leave to amend relates to a PCT

application, and a copy of an international preliminary examination

report relating to the application has not been provided to the

Commissioner:

(d) notify the applicant of that fact; and

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Chapter 10 Amendments

Regulation 10.2

100 Patents Regulations 1991

(e) ask the applicant to provide a copy of the international

preliminary examination report, or to advise that no

amendments were made under Article 34 of the PCT, or to

abandon any amendments that may have been made under

Article 34 of the PCT.

(2) The Commissioner must give a copy of each report made under

subregulation (1) to the applicant or patentee.

(3) The applicant or patentee may:

(a) contest the report in writing; or

(b) file a statement of proposed amendments of the statement

referred to in paragraph (1)(a); or

(c) if the report relates to a request for leave to amend a PCT

application, and the Commissioner has reported under

subregulation (1) that the international preliminary

examination report has not been provided to the

Commissioner:

(i) provide a copy of the international preliminary

examination report to the Commissioner; or

(ii) if:

(A) no demand was made under Article 31 of the

PCT; or

(B) no amendments were made under Article 34 of

the PCT; or

(C) the demand was made under Article 31 of the

PCT, or the international preliminary

examination report was established, after the

applicant complied with the requirements of

subsection 29A(5);

advise the Commissioner of that fact; or

(iii) elect to abandon any amendments that may have been

made under Article 34 of the PCT.

Note: If the applicant provides the advice mentioned in subparagraph (c)(ii), or makes the election mentioned in subparagraph (c)(iii), any amendments made under Article 34 of the PCT are not taken to be included in the application.

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Amendments Chapter 10

Regulation 10.2

Patents Regulations 1991 101

(4) If a statement of proposed amendments referred to in subregulation

(3) is filed, the Commissioner must report under subregulation (1)

as if the proposed amendments had been made.

(5) If, under subregulation (3), the applicant or patentee contests the

report, the Commissioner must report under subregulation (1) and

take notice of the matters raised by the applicant or patentee.

(5A) If, under subregulation (3), the applicant:

(a) provides a copy of the international preliminary examination

report to the Commissioner; or

(b) provides the advice mentioned in subparagraph (3)(c)(ii) to

the Commissioner; or

(c) elects to abandon any amendments that may have been made

under Article 34 of the PCT;

the Commissioner must report under subregulation (1) taking

notice of that fact.

(6) Subregulation (6A) applies if:

(a) either:

(i) the grant of a standard patent is opposed under

section 59 of the Act; or

(ii) an innovation patent is opposed under section 101M of

the Act; and

(b) the applicant or patentee has requested leave to amend the

patent request or complete specification concerned.

(6A) The Commissioner must:

(a) give a copy of the request for leave to amend and the

statement of proposed amendments to the opponent as soon

as practicable after the request for leave to amend has been

filed; and

(b) invite the opponent to comment on the request and statement.

(7) The opponent may file comments within 21 days, or any longer

period (up to 2 months) allowed by the Commissioner, after being

given the copy of the request for leave to amend and the statement

under paragraph (6A)(a).

Federal Register of Legislative Instruments F2013C00202

Chapter 10 Amendments

Regulation 10.2A

102 Patents Regulations 1991

(8) If:

(a) a person has, under subregulation 3.25(1), requested the

Commissioner to grant the certification referred to in that

subregulation; and

(b) the Commissioner has not made a decision under

subregulation 3.25(2); and

(c) the applicant or patentee has filed a request for leave to

amend the complete specification in respect of a matter

mentioned in paragraph 6(c) of the Act;

the Commissioner must, as soon as practicable after the request for

leave to amend has been filed, give a copy of that request and the

statement of proposed amendments to the person referred to in

paragraph (a).

(9) If a request for leave to amend a complete specification in respect

of a micro-organism is made for the purpose of including in the

specification a matter in respect of which a notice has been filed by

a person under subregulation 3.29(1), the Commissioner must, as

soon as practicable after the request for leave to amend has been

filed, give the person a copy of the request and the statement of

proposed amendments.

10.2A Documents considered for determining whether amendment

allowed

For paragraph 102(1)(b) of the Act, the following documents are

prescribed:

(a) an abstract that was filed with the complete specification;

(b) a missing part or element of a complete specification that was

incorporated into the specification, in accordance with

regulation 3.5A or Rule 20.5 or 20.6 of the PCT;

(c) an amendment that has been made to the complete

specification after filing, for the purpose of:

(i) correcting a clerical error or obvious mistake; or

(ii) complying with paragraph 6(c) of the Act.

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Amendments Chapter 10

Regulation 10.2B

Patents Regulations 1991 103

10.2B Amendments not allowable for patent requests

(1) This regulation is made for subsection 102(2D) of the Act.

(2) An amendment of a patent request is not allowable if:

(a) the patent request has been accepted under section 49 or 52

of the Act; and

(b) the amendment would convert the patent application from:

(i) an application for a standard patent to an application for

an innovation patent; or

(ii) an application for an innovation patent to an application

for a standard patent.

(3) If:

(a) a request for leave to amend a patent request for a standard

patent is filed within 3 weeks before the date a notice is due

to be published in the Official Journal under section 54 of the

Act in relation to the specification; and

(b) the amendment would:

(i) convert the patent application from an application for a

standard patent to an application for an innovation

patent; or

(ii) change the priority date of the application to a date that

is later than the priority date that is currently recorded

for the application;

the amendment is not allowable until after the date the notice is

published.

(4) An amendment of a patent request is not allowable if:

(a) the patent request has been accepted under section 49 or 52

of the Act; and

(b) the amendment would convert the patent application into a

further complete application within the meaning of

section 79B or 79C of the Act.

(5) An amendment of a patent request is not allowable if:

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Chapter 10 Amendments

Regulation 10.2C

104 Patents Regulations 1991

(a) the amendment would convert the patent application into a

further complete application within the meaning of

section 79B of the Act; and

(b) the period allowed under subsection 79B(3) of the Act for

making a further complete application has ended.

(6) An amendment of a patent request is not allowable if:

(a) the amendment would convert the patent application into a

further complete application within the meaning of

section 79C of the Act; and

(b) the period allowed under subsection 79C(2) of the Act for

making a further complete application has ended.

(7) An amendment of a patent request is not allowable after the patent

has been granted.

10.2C Amendments not allowable for complete specifications

(1) This regulation is made for subsection 102(2D) of the Act.

(2) An amendment of a complete specification is not allowable if:

(a) the amendment relates to a matter mentioned in

paragraph 6(c) of the Act; and

(b) after the amendment was made, the specification would not

include each of the matters specified in that paragraph.

(3) An amendment of a complete specification is not allowable if the

Commissioner:

(a) has given a copy of a request for leave to amend under

subregulation 10.2(8) or (9) to a person; and

(b) has not given the person a reasonable opportunity to be

heard.

(4) An amendment of a complete specification for an innovation

patent, other than an amendment proposed in response to a

direction under regulation 3.2B, is not allowable until after the

patent has been granted.

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Amendments Chapter 10

Regulation 10.3

Patents Regulations 1991 105

(5) An amendment of a complete specification for an innovation patent

is not allowable if the amendment would result in the specification

claiming:

(a) a thing mentioned in subsection 18(2) of the Act; or

(b) a thing mentioned in subsection 18(3) of the Act (other than a

thing also mentioned in subsection 18(4) of the Act).

(6) An amendment of a complete specification is not allowable if

making an amendment would be contrary to section 112 or 112A

of the Act.

10.3 Amendments not allowable for other documents

(1) For a provisional specification, an amendment of the provisional

specification is not allowable if, as a result of the amendment, the

specification would disclose matter that extends beyond that

disclosed in the following documents taken together:

(a) the provisional specification as filed;

(b) an abstract that was filed with the provisional specification;

(c) a missing part of a provisional specification that was

incorporated into the specification in accordance with

regulation 3.5A.

(2) An amendment of an abstract is not allowable.

Note: An abstract may be substituted under regulation 3.4.

10.4 Commissioner to refuse request for leave to amend

The Commissioner must refuse the request for leave to amend, if:

(a) he or she reasonably believes that a proposed amendment is

not allowable, other than for the reasons mentioned in

subregulation 10.2C(3); or

(b) the applicant or patentee has not complied with a request of

the Commissioner under subregulation 10.1(3); or

(c) in the case of a proposed amendment of a complete

specification relating to a patent—the patentee has not

complied with a request of the Commissioner under

subregulation 10.1(4).

Federal Register of Legislative Instruments F2013C00202

Chapter 10 Amendments

Regulation 10.5

106 Patents Regulations 1991

10.5 Commissioner to grant leave to amend

(1) The Commissioner must grant leave to amend a patent request,

complete specification or other filed document:

(a) if the report on the proposed amendments under

subregulation 10.2(1) is not an adverse report; and

(b) in the case of amendments that are proposed in anticipation

of, or in response to, a report relating to an examination

under section 45 of the Act and that do not relate to matters

mentioned in paragraph 6(c) of the Act—if the

Commissioner is satisfied, on the balance of probabilities,

that the proposed amendments would remove all lawful

grounds of objection to the patent request and complete

specification; and

(c) in the case of amendments that are proposed in anticipation

of, or in response to, a report relating to an examination

under section 101B of the Act—if the Commissioner is

satisfied, on the balance of probabilities, that the proposed

amendments would remove all lawful grounds for revocation

of the innovation patent.

(2) If the Commissioner grants leave to amend, he or she must publish

a notice of that fact in the Official Journal, where:

(a) the patent request and complete specification to which the

leave to amend relates have been accepted under section 49

of the Act, or a decision to certify has been made under

section 101E of the Act; and

(b) the proposed amendments are in respect of:

(i) the complete specification; or

(ii) the patent request or another filed document and the

proposed amendments would materially alter the

meaning or scope of the request or document.

(3) The Minister or another person may oppose allowance of an

amendment if a notice is published under subregulation (2).

(4) For the purposes of paragraph (2)(b), if:

(a) a request for leave to amend is filed before a patent is granted

on an application under section 61 of the Act; and

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Amendments Chapter 10

Regulation 10.6

Patents Regulations 1991 107

(b) the proposed amendments relate to the name or address of an

applicant for the patent;

the proposed amendments are not taken to materially alter the

meaning or scope of the patent request or other filed document.

10.6 Time for allowance of amendments

(1) If:

(a) the Commissioner grants leave to amend a patent request,

complete specification or other filed document; and

(b) subregulation 10.5(2) does not apply to the amendment;

the Commissioner must allow the proposed amendment

immediately.

(2) If:

(a) subregulation 10.5(2) applies to a proposed amendment of a

patent request, complete specification or other filed

document; and

(b) no person opposes the allowance of the proposed

amendment; and

(c) the Commissioner is satisfied that no relevant proceedings

are pending;

the Commissioner must allow the proposed amendment at the end

of the time for bringing opposition proceedings.

(3) If:

(a) subregulation 10.5(2) applies to a proposed amendment of a

patent request, complete specification or other filed

document; and

(b) a person opposes the allowance of the proposed amendment;

and

(c) the opposition is decided against the opponent; and

(d) the Commissioner is satisfied that no relevant proceedings

are pending;

the Commissioner must allow the proposed amendment

immediately after the opposition is fully determined.

Federal Register of Legislative Instruments F2013C00202

Chapter 10 Amendments

Regulation 10.6A

108 Patents Regulations 1991

(4) For the purposes of subregulation (3), an opposition is fully

determined when:

(a) a decision has been made in respect of the opposition and the

decision is no longer subject to any form of review (including

review by way of appeal against a decision of the AAT or a

prescribed court); or

(b) a decision that has been made in respect of the opposition

was subject to review (including review by way of appeal

against a decision of the AAT or a prescribed court) but the

period within which review proceedings could have been

instituted has expired without review proceedings having

been instituted; or

(c) the opposition is withdrawn.

(5) If the Commissioner requires a patentee to file a statement that, to

the best of the knowledge of the patentee, relevant proceedings are

not pending, the patentee must file the statement within 1 month of

the Commissioner so requiring.

10.6A Deferred consideration of request for amendment

(1) This regulation applies if:

(a) on or after 1 January 2012—an applicant asks the

Commissioner for leave to amend a complete specification;

and

(b) the complete specification relates to an application for a

standard patent; and

(c) the applicant has not filed a request for examination of the

patent request and complete specification relating to the

application; and

(d) the applicant asks the Commissioner to defer considering the

request for leave to amend until the Commissioner examines

the patent request and complete specification.

(2) The request for leave to amend the complete specification is taken

to be filed immediately after the applicant files the request for

examination of the patent request and complete specification.

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Amendments Chapter 10

Regulation 10.6B

Patents Regulations 1991 109

10.6B Revocation of grant of leave

(1) A grant of leave to amend a patent request, complete specification

or other filed document under regulation 10.5 is revoked if:

(a) leave to amend was granted at the same time as the

acceptance of the patent request and complete specification

under subsection 49(1) of the Act; and

(b) acceptance of the patent request and complete specification is

later revoked under section 50A of the Act.

(2) A grant of leave to amend a patent request, complete specification

or other filed document under regulation 10.5 is revoked if:

(a) leave to amend was granted at the same time as the decision

mentioned in paragraph 101E(a) of the Act was made; and

(b) the certificate of examination issued in relation to the patent

is later revoked under subsection 101EA(1) of the Act.

(3) The Commissioner may revoke a grant of leave to amend a patent

request, complete specification or other filed document under

regulation 10.5 if the Commissioner is satisfied that:

(a) leave to amend should not have been granted, taking into

account all of the circumstances that existed when leave was

granted (whether or not the Commissioner knew the

circumstances existed); and

(b) it is reasonable to revoke the grant and allowance of the

amendment(if applicable), taking into account all of the

circumstances; and

(c) there are no relevant proceedings pending.

(4) If leave to amend a patent request, complete specification or other

filed document under regulation 10.5 is revoked (whether

automatically or by the Commissioner):

(a) leave to amend is taken to never have been granted; and

(b) if allowed under regulation 10.6, the amendment is taken not

to have been allowed; and

(c) the Commissioner must continue to examine and report on

the amendment in accordance with subregulation 10.2(1);

and

Federal Register of Legislative Instruments F2013C00202

Chapter 10 Amendments

Regulation 10.7

110 Patents Regulations 1991

(d) regulations 10.5 and 10.6 continue to apply in relation to the

amendment.

10.7 Rectification of Register

(1) A person applying for rectification of the Register under

section 191A of the Act must do so in the approved form.

(2) The Commissioner:

(a) may seek further information from any person for the

purpose of considering the application; and

(b) is not required to consider the application while seeking the

further information.

(3) The Commissioner must publish a notice of the rectification

request in the Official Journal unless the rectification:

(a) relates to an address included in the Register; or

(b) relates to a name included in the Register and does not relate

to a change of identity; or

(c) relates to the title of an invention included in the Register; or

(d) is to correct an obvious mistake made in the Register; or

(e) does not materially alter the meaning or scope of an entry in

the Register.

(4) However, the Commissioner is not required to publish a notice

under subregulation (3) if the Commissioner is satisfied that the

rectification should not be made.

(5) If the Commissioner publishes a notice under subregulation (3), the

Commissioner must not rectify the Register until the later of:

(a) 2 months after publishing the notice; and

(b) if a person requests to be heard in relation to the rectification

request—after the person has been heard.

10.8 Prescribed decisions: appeal to Federal Court

For subsection 104(7) of the Act, a prescribed decision is a

decision to grant leave to amend a patent request or complete

specification to which paragraph 10.5(1)(b) or (c) applies.

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Amendments Chapter 10

Regulation 10.10

Patents Regulations 1991 111

10.10 Prescribed period: filing of court order

For the purposes of subsection 105(5) of the Act, the period of 14

days from the date of the order of the court is prescribed.

10.11 Form of direction by Commissioner: patents

A direction of the Commissioner under subsection 106(1) of the

Act:

(a) must be in writing; and

(b) must state the grounds on which he or she is satisfied that the

patent relating to the direction is invalid; and

(c) must specify the time within which the patentee must file a

relevant statement of proposed amendments.

10.12 Form of direction by Commissioner: applications

A direction of the Commissioner under subsection 107(1) of the

Act:

(a) must be in writing; and

(b) must state the grounds on which he or she is satisfied that

there are lawful grounds of objection to the patent request or

complete specification; and

(c) must specify the time within which the applicant must file a

relevant statement of proposed amendments.

10.14 Form of request: claim under assignment or agreement

A request under subsection 113(1) of the Act for a direction of the

Commissioner must be in the approved form.

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Chapter 11 Infringement

Regulation 11.1

112 Patents Regulations 1991

Chapter 11—Infringement

11.1 Infringement exemptions: prescribed foreign countries

For the purposes of the definitions of foreign aircraft, foreign land

vehicle and foreign vessel in the Act, each of the foreign countries

mentioned in regulation 1.4 is prescribed.

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Compulsory licences and revocation of patents Chapter 12

Regulation 12.1

Patents Regulations 1991 113

Chapter 12—Compulsory licences and

revocation of patents

12.1 Lodgment of applications for compulsory licences

(1) For the purposes of subsection 133(1) of the Act, the period of 3

years after the date of granting of the patent to which the

application relates is prescribed.

(2) An applicant must lodge with the Registrar of the Federal Court:

(a) a copy of the application that includes:

(i) the name and address of the applicant; and

(ii) the address for service in relation to the application; and

(iii) the identity of the patent; and

(iv) if the applicant relies on the ground mentioned in

paragraph 133(2)(a) of the Act—facts supporting the

assertion that the reasonable requirements of the public

with respect to the patented invention have not been

satisfied; and

(iva) if the applicant relies on the ground mentioned in

paragraph 133(2)(b) of the Act—facts supporting the

assertion that the patentee has contravened, or is

contravening, Part IV of the Trade Practices Act 1974

or an application law (as defined in section 150A of that

Act) in connection with the patent; and

(v) for an innovation patent—the date that the patent was

certified; and

(b) a declaration by the applicant to the effect that the facts in the

statement are true to the best of the knowledge of the

applicant.

(2A) For subparagraph (2)(a)(ii), the address for service must be an

address that is mentioned in Rules made by the Federal Court for

the service of the application, as in force from time to time.

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Chapter 12 Compulsory licences and revocation of patents

Regulation 12.2

114 Patents Regulations 1991

Note: In a transitional period after this subregulation commences, there may be different Rules made by the Federal Court to deal with suitable addresses for service in particular circumstances.

(3) The applicant must:

(a) serve a copy of the application and declaration on the

patentee and any other person who claims an interest in the

patent as soon as practicable after lodgment; and

(b) lodge with the Registrar notice of the date when, and the

place where, he or she complied with paragraph (a).

(4) For subregulation (3), the applicant must serve the copy in

accordance with Rules made by the Federal Court for the service of

the application and declaration, as in force from time to time.

Note: In a transitional period after this subregulation commences, there may be different Rules made by the Federal Court to deal with service in particular circumstances.

12.2 Prescribed period: revocation of patent

(1) For subsection 134(1) of the Act, the prescribed period is 2 years

from the date of the grant of the first compulsory licence in respect

of a patent.

(2) The Federal Court may, as a preliminary issue, hear and determine

the question of the right of the person concerned to apply for

revocation of a patent in respect of which a compulsory licence has

been ordered.

12.3 Form of notice: offer to surrender patent

(1) A notice under subsection 137(1) of the Act must be in the

approved form.

(2) Notice of an offer to surrender under subsection 137(2) of the Act

must be published in the Official Journal.

(3) An interested person must, not later than 1 month after the

publication, give the Commissioner notice of his or her wish to be

heard under subsection 137(3) of the Act.

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Compulsory licences and revocation of patents Chapter 12

Regulation 12.4

Patents Regulations 1991 115

(4) The Commissioner may, as a preliminary issue, hear and determine

the question of the right of the person concerned to be heard.

12.4 Applications to revoke patents

(1) An applicant to a prescribed court for an order to revoke a patent

under subsection 138(1) of the Act must include, in the pleading or

another document disputing the validity of the patent:

(a) particulars of the grounds on which the applicant relies; and

(b) for an innovation patent—the date on which the patent was

certified.

(2) If 1 of those grounds is that the invention is not a patentable

invention because of information about the invention in a

document or through the doing of an act, the particulars must

specify:

(a) in the case of a document—the time when, and the place

where, the document is alleged to have become publicly

available; and

(b) in the case of an act:

(i) the name of the person alleged to have done the act; and

(ii) the period in which, and the place where, the act is

alleged to have been done publicly; and

(iii) a description that is sufficient to identify the act; and

(iv) if the act relates to apparatus or machinery—whether

the apparatus or machinery exists and, if so, where it

can be inspected.

(3) Except by leave of the court:

(a) evidence is not admissible to prove a ground of invalidity

that has not been disclosed in the particulars in relation to

that ground; and

(b) evidence as to apparatus or machinery that exists at the date

of lodgment of the particulars is not admissible unless it is

proved that the party relying on the evidence:

(i) if the apparatus or machinery is in his or her

possession—has offered the opportunity to inspect it; or

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Chapter 12 Compulsory licences and revocation of patents

Regulation 12.4

116 Patents Regulations 1991

(ii) in any other case—has used reasonable endeavours to

obtain its inspection;

to, or by, each other party to the hearing of the application.

(4) The court may:

(a) extend the time for giving particulars; and

(b) allow the amendment of particulars.

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Withdrawal and lapsing of applications and ceasing of patents Chapter 13

Regulation 13.1

Patents Regulations 1991 117

Chapter 13—Withdrawal and lapsing of

applications and ceasing of patents

13.1 Publication of notice of withdrawal of application

The Commissioner must publish notice in the Official Journal of

the withdrawal of a patent application under section 141 of the Act.

13.1A Period in which standard patent applications may not be

withdrawn

(1) For paragraph 141(1)(c) of the Act, the prescribed period for an

application for a standard patent is:

(a) 3 weeks before the date on which a notice is due to be

published in the Official Journal under section 54 of the Act

in respect of the specification; or

(b) 3 weeks before the date on which a notice of acceptance is

due to be published in the Official Journal under

paragraph 49(5)(b) of the Act.

(2) Subregulation (1) does not apply if an order made under

subsection 152(3) or 173(1) of the Act is in force.

13.1B Period in which innovation patent applications may not be

withdrawn

(1) For paragraph 141(1)(c) of the Act, the prescribed period for an

application for an innovation patent is the period:

(a) beginning when the Commissioner accepts the patent request

and complete specification under subsection 52(2) of the Act;

and

(b) ending when the Commissioner grants the patent under

subsection 62(1) of the Act.

(2) Subregulation (1) does not apply if an order made under

subsection 152(3) or 173(1) of the Act is in force.

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Chapter 13 Withdrawal and lapsing of applications and ceasing of patents

Regulation 13.1C

118 Patents Regulations 1991

13.1C PCT applications—prescribed circumstances in which

application may be withdrawn or taken to be withdrawn

(1) For subsection 141(2) of the Act, a PCT application may be

withdrawn if the conditions mentioned in subsection 141(1) of the

Act are met.

(2) For subsection 141(2) of the Act, a PCT application is taken to be

withdrawn if Article 11(3) of the PCT ceases to have effect in

Australia in relation to the PCT application under Article 24(1)(i)

of the PCT.

13.3 Prescribed period: continuation fees

(1) For paragraph 142(2)(d) of the Act:

(a) a continuation fee for an application for a standard patent is

payable for a relevant anniversary at the last moment of the

anniversary; and

(b) the period in which the fee must be paid is the period ending

at the last moment of the anniversary.

(1A) However, if the continuation fee is paid within 6 months after the

end of the relevant anniversary (6 month period):

(a) the period mentioned in paragraph (1)(b) is taken to be

extended until the fee is paid; and

(b) the continuation fee includes the additional fee stated in

item 211 of Schedule 7; and

(c) the additional fee is payable from the first day of the 6 month

period.

(2) In the case of an application, filed before 1 April 2002, to which

section 33, 34, 35, 36 or 79B of the Act applies, a continuation fee

that is payable before 12 months after the date of filing the

application is taken to have been paid.

(3) In this regulation, relevant anniversary, for an application for a

standard patent, means an anniversary:

(a) of the date that would be the date of the patent if a patent had

been granted on the application; and

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Withdrawal and lapsing of applications and ceasing of patents Chapter 13

Regulation 13.4

Patents Regulations 1991 119

(b) that is mentioned in item 211 of Schedule 7.

Note 1: For the date of a patent, see section 65 of the Act and regulation 6.3.

Note 2: For the fees payable, see regulation 22.2.

13.4 Prescribed period: acceptance of request and specification

(1) Subject to this regulation, the period prescribed for the purposes of

paragraph 142(2)(e) of the Act in relation to an application is:

(a) if examination of the patent request and complete

specification is requested before 15 April 2013—21 months

from the date of the first report (if any) under section 45 of

the Act;

(b) if examination is requested on or after 15 April 2013—12

months from the date of the first report (if any) under

section 45 of the Act;

(d) if the Commissioner has reported that the patent request or

complete specification relates to an invention that, so far as

claimed, is not novel in view of information of the kind

described in subparagraph (b)(ii) of the definition of prior art

base in the Act—the period of 3 months from the earlier of:

(i) the date of publication of the specification containing

that information; or

(ii) its lapsing, refusal or withdrawal;

(e) if the patent request and complete specification relate to an

application in relation to which a request has been made

under section 32 of the Act—subject to subregulation (3), the

period of 3 months from the date of the determination by the

Commissioner under that section;

(f) if:

(i) a person has applied under subsection 36(1) of the Act

in relation to the patent request and complete

specification; and

(ii) the Commissioner has made a declaration under

paragraph 36(1)(c) of the Act;

subject to subregulation (3), the period of 3 months from the

date of that declaration;

(g) subject to subregulation (3), if:

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Chapter 13 Withdrawal and lapsing of applications and ceasing of patents

Regulation 13.4

120 Patents Regulations 1991

(i) the Commissioner gives the applicant an opportunity to

be heard in relation to a report under section 45 of the

Act or regulation 10.2 by:

(A) notifying the applicant in writing of the date by

which written submissions must be filed; or

(B) notifying the applicant in writing of the date,

time and place of an oral hearing; and

(ii) the Commissioner makes a decision in writing in

relation to the report;

3 months from the date the decision is made;

(ga) subject to subregulation (3), if the Commissioner revokes an

acceptance under subsection 50A(1) of the Act—3 months

from the date the decision to revoke is made;

(h) if an appeal has been made to a prescribed court, or an

application for review has been made to the AAT, in relation

to the patent request or complete specification—subject to

subregulation (4), the period of 3 months from the day when

the appeal or application is withdrawn or finally dealt with or

determined;

(j) if:

(i) the application is for a patent of addition; and

(ii) an appeal has been made to a prescribed court or an

application for review has been made to the AAT in

respect of the application for a patent for the main

invention;

subject to subregulation (4), the period of 3 months from the

day when the appeal or application is withdrawn or finally

dealt with or determined;

(k) if the Commissioner requires a document to be made

available under subsection 43AA(4) of the Act—the period

of 5 months from the date the requirement is made;

(l) if:

(i) the Commissioner has informed the applicant of a notice

under subsection 27(1) of the Act; or

(ii) the applicant has informed the Commissioner, under

subsection 45(3) of the Act, of the results of any

documentary searches;

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Withdrawal and lapsing of applications and ceasing of patents Chapter 13

Regulation 13.5

Patents Regulations 1991 121

and an objection is raised based on information in the notice

or the search results—the period of 3 months from the date of

the report that first mentions the objection.

(2) If more than 1 of paragraphs (1)(a) to (l) applies in a particular

case, the lapsing period is whichever period ends latest.

(3) If paragraph (1)(e), (f), (g) or (ga) applies, the Commissioner may

substitute a period longer than 3 months, if the Commissioner is

satisfied that acceptance of the patent request and complete

specification should be postponed.

(4) If paragraph (1)(h) or (j) applies, the court or Tribunal may in its

discretion substitute a period longer than 3 months.

13.5 If applications lapse

(1) If a complete application lapses under section 142, the

Commissioner must advertise that fact in the Official Journal.

(2) Subregulation (1) does not apply in relation to a PCT application

that is treated as a patent application under the Act, if the PCT

application lapses under paragraph 142(2)(f) of the Act.

13.5A PCT application—prescribed circumstances for lapsing of

application

(1) For paragraph 142(2)(f) of the Act, a circumstance in which a PCT

application lapses is that the applicant has not met the requirements

of subsection 29A(5) of the Act within the prescribed period for

that subsection.

(2) For paragraph 142(2)(f) of the Act, a circumstance in which a PCT

application lapses is that the effect of the international application

under Article 11(3) of the PCT ceases in Australia under Article

24(1)(ii) of the PCT before the requirements of subsection 29A(5)

of the Act have been met.

13.6 Time for payment of renewal fee for patent

(1) For paragraphs 143(a) and 143A(d) of the Act:

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Chapter 13 Withdrawal and lapsing of applications and ceasing of patents

Regulation 13.6

122 Patents Regulations 1991

(a) a renewal fee for a patent is payable for a relevant

anniversary at the last moment of the anniversary; and

(b) the period in which the renewal fee must be paid is the period

ending at the last moment of the anniversary.

(1A) However, if an extension of the term of a standard patent is granted

under section 76 of the Act, the period in paragraph (1)(b) is taken

to be extended until 6 months after the extension is granted for

each relevant anniversary happening:

(a) on or after the twentieth anniversary of the date of the patent;

and

(b) on or before the day the extension is granted.

(2) However, if the period mentioned in paragraph (1)(b) is not taken

to be extended under subregulation (1A), and the renewal fee is

paid within 6 months after the end of the relevant anniversary (6

month period):

(a) the period mentioned in paragraph (1)(b) is taken to be

extended until the fee is paid; and

(b) the renewal fee includes the additional fee mentioned in

subregulation (2A); and

(c) the additional fee is payable from the first day of the 6 month

period.

(2A) For paragraph (2)(b), the additional fee is:

(a) for a standard patent—the fee stated in item 211 of

Schedule 7; and

(b) for an innovation patent—the fee stated in item 212 of

Schedule 7.

(3) If a continuation fee is paid for a relevant anniversary in

accordance with regulation 13.3, the renewal fee for that

anniversary is taken to have been paid.

(4) If an application for an innovation patent is made under

section 79B or 79C of the Act, a renewal fee that is payable within

1 month after the grant of the patent is taken to have been paid.

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Withdrawal and lapsing of applications and ceasing of patents Chapter 13

Regulation 13.7

Patents Regulations 1991 123

(5) The Commissioner must publish notice in the Official Journal of a

patent that ceases under section 143 or 143A of the Act.

(6) In this regulation, relevant anniversary, for a patent, means an

anniversary of the date of the patent that is mentioned:

(a) for a standard patent—in item 211 of Schedule 7; or

(b) for an innovation patent—in item 212 of Schedule 7.

Note: For the date of a patent, see section 65 of the Act and regulation 6.3.

13.7 Prescribed period: ceasing of innovation patents

For paragraph 143A(c) of the Act, the prescribed period is the

period mentioned in regulation 9A.4 that applies to the patent.

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Chapter 15 Special provisions relating to associated technology

Regulation 15.1

124 Patents Regulations 1991

Chapter 15—Special provisions relating to

associated technology

15.1 Time for restoration of application for patent

A request under subsection 150(1) of the Act must be filed within 3

months after the revocation, under section 149 of the Act, of a

direction in respect of the application to which the request relates.

15.2 Requirements for reinstatement of international applications

(1) For paragraph 151(4)(c) of the Act, the prescribed period is 3

months from the revocation of a direction under section 149 of the

Act.

(2) For the purposes of paragraph 151(4)(d) of the Act, the patent

request, the specification to which the request relates and such

other documents as are prescribed for the purposes of

subsection 29(1) of the Act are prescribed.

(3) For the purposes of paragraph 151(4)(d) of the Act, the fee that

would have been payable if the application had been filed under

section 29 of the Act is prescribed.

15.3 Prescribed period: order relating to standard patent

For subsection 153(3) of the Act, the prescribed period is 1 month

from the revocation of the order under subsection 152(3) of the Act

that relates to the application.

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The Crown Chapter 17

Regulation 17.1

Patents Regulations 1991 125

Chapter 17—The Crown

17.1 Application for declaration: exploitation of innovation patent

An application under subsection 169(1) of the Act for a declaration

that an innovation patent has been exploited by the Crown under

section 163 of the Act must include the date on which the

innovation patent was certified.

17.1A Prescribed period: order relating to standard patent

For subsection 174(2) of the Act, the prescribed period is 1 month

from the revocation of an order under subsection 173(1) of the Act

that relates to the application.

17.2 Prescribed period, document and fee: filing of international

applications

(1) For the purposes of paragraph 176(c) of the Act, the period of 3

months from the date on which an international application is

considered to be withdrawn under Article 12 of the PCT is

prescribed.

(2) For the purposes of paragraph 176(d) of the Act, the patent request,

the specification relating to the request and such other documents

as are prescribed for the purposes of subsection 29(1) of the Act

are prescribed.

(3) For the purposes of paragraph 176(d) of the Act, the fee that would

have been payable if the application had been filed under

section 29 of the Act is prescribed.

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Chapter 19 The register and official documents

Regulation 19.1

126 Patents Regulations 1991

Chapter 19—The register and official

documents

19.1 Particulars to be registered

(1) For subsections 187(1) and (2) of the Act, the following particulars

are prescribed, that is, particulars of:

(a) an entitlement as mortgagee, licensee or otherwise to an

interest in a patent;

(b) a transfer of an entitlement to a patent or licence, or to a

share in a patent or licence;

(c) an extension of the term of a patent;

(d) a restoration of a patent;

(e) an order of a court a copy of which is filed under

subsection 105(5) of the Act;

(f) an order of a prescribed court that has been served on the

Commissioner under section 140 of the Act;

(g) an order of a prescribed court made on appeal in relation to a

patent, being an order of which an office copy has been

served on the Commissioner;

(h) a decision of the Commissioner to revoke a patent under

Chapter 9 of the Act;

(i) the acquisition of a patent by the Commonwealth under

Part 3 of Chapter 17 of the Act;

(j) the cessation of a patent.

(2) A request for registration of particulars referred to in

paragraph (1)(a) or (b) must be in the approved form and have with

it proof to the reasonable satisfaction of the Commissioner of the

entitlement of the person making the request.

19.2 Request for information from Commissioner

(1) A request made to the Commissioner under section 194 of the Act

must be in the approved form.

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Individual Patent Attorneys Chapter 20

Introduction Part 1

Regulation 20.1A

Patents Regulations 1991 127

Chapter 20—Individual Patent Attorneys

Part 1—Introduction

20.1A Application of this Chapter

This Chapter applies to:

(a) a patent attorney who is not an incorporated patent attorney;

and

(b) an individual applying for registration as a patent attorney.

20.1 Interpretation

(1) In this Chapter:

AQF means the Australian Qualifications Framework.

Board means the Professional Standards Board for Patent and

Trade Marks Attorneys.

candidate means a person who proposes or proposed to sit, or has

sat, for an examination.

Chairperson means Chairperson of the Board.

professional misconduct has the meaning given by

regulation 20.32.

serious offence means an offence that:

(a) involves obtaining property or a financial advantage by

deception or fraudulent conduct; and

(b) is either:

(i) an indictable offence against a law of the

Commonwealth, a State or a Territory (whether or not

the offence may be dealt with summarily); or

(ii) an offence against a law of a foreign country that would

be an indictable offence against a law of the

Commonwealth, a State or a Territory if committed in

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Chapter 20 Individual Patent Attorneys

Part 1 Introduction

Regulation 20.1

128 Patents Regulations 1991

Australia (whether or not the offence could be dealt

with summarily if committed in Australia).

statement of skill has the meaning given by regulation 20.11.

unqualified, in relation to a particular time, means:

(a) not holding one or more of the academic qualifications or

knowledge requirements required for registration at that time

by these Regulations; or

(b) not holding a qualification required for registration at that

time by the former attorneys Regulations.

unsatisfactory professional conduct has the meaning given by

regulation 20.32.

(2) For regulation 20.6, the higher education sector comprises:

(a) universities; and

(b) higher education institutions other than universities; and

(c) higher education providers.

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Individual Patent Attorneys Chapter 20

Obtaining registration for first time Part 2

Regulation 20.2

Patents Regulations 1991 129

Part 2—Obtaining registration for first time

20.2 Form of application

An application for registration as a patent attorney must:

(a) be in writing, in a form approved by the Designated

Manager; and

(b) be accompanied by evidence and material mentioned in

regulation 20.3; and

(c) be accompanied by the fee mentioned in item 104 of

Schedule 7.

20.3 Evidence that applicant meets registration requirements

(1) An application for registration as a patent attorney must be

accompanied by the following:

(a) evidence that the applicant is ordinarily resident in Australia;

(b) evidence that the Board is satisfied that the applicant has, or

is entitled to the award of, an academic qualification of a

kind mentioned in regulation 20.6;

(c) evidence that the Board is satisfied that the applicant has the

knowledge of intellectual property law and practice that is

required for a person to practise as a patent attorney;

(d) one or more statements of skill, for the purposes of

regulation 20.11;

(e) a declaration, by the applicant, that he or she:

(i) has not, in the 5 years preceding the application,

committed an offence prescribed by subregulation

20.12(1); and

(ii) is not under sentence of imprisonment for an offence

prescribed by subregulation 20.12(2);

(f) a declaration, by another person, that the applicant is of good

fame, integrity and character.

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Chapter 20 Individual Patent Attorneys

Part 2 Obtaining registration for first time

Regulation 20.4

130 Patents Regulations 1991

(2) A declaration under paragraph (1)(f) must contain details of the

basis of the opinion that the applicant is of good fame, integrity

and character.

20.4 Certificate of registration

If the Designated Manager registers a person as a patent attorney,

the Designated Manager must give the person a certificate of

registration.

20.5 Evidence of academic qualifications

(1) The Board must be satisfied that a person has a qualification

mentioned in regulation 20.6 if:

(a) the person makes an application in the form approved by the

Board; and

(b) the application is accompanied by:

(i) evidence that the person has the qualification; and

(ii) the original or a certified copy of an academic record

that shows the units that make up the qualification.

(2) The Board must, within 42 days of deciding whether or not it is

satisfied that the person has the qualification, notify the person, in

writing, of its decision.

Note: A decision that a person does not have a qualification is reviewable under regulation 22.26.

20.6 Academic qualifications

(1) The Designated Manager must not approve an applicant for

registration as a patent attorney unless the applicant has, or is

entitled to:

(a) an AQF qualification from the higher education sector that

the Board is satisfied is an appropriate qualification for a

patent attorney; or

(b) a qualification awarded by an overseas institution that the

Board is satisfied is equivalent to an AQF qualification from

the higher education sector.

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Individual Patent Attorneys Chapter 20

Obtaining registration for first time Part 2

Regulation 20.7

Patents Regulations 1991 131

(2) The Board must not be satisfied that a person has an AQF

qualification unless the qualification, or a course taken for the

purpose of the qualification:

(a) is in a field of science or technology that contains potentially

patentable subject matter; and

(b) involves a depth of study that the Board considers is

sufficient to provide an appropriate foundation for practise as

a patent attorney.

(3) The Board must not be satisfied that a qualification from a foreign

institution is equivalent to an AQF qualification unless the

qualification, or a course taken for the purpose of the qualification:

(a) is in a field of science or technology that contains potentially

patentable subject matter; and

(b) involves a depth of study that the Board considers is

sufficient to provide an appropriate foundation for practise as

a patent attorney.

20.7 Evidence of knowledge requirements

(1) The Board must be satisfied that a person has a knowledge

requirement mentioned in regulation 20.8 if:

(a) the person makes an application in the form approved by the

Board; and

(b) the application is accompanied by:

(i) evidence that the applicant has the relevant knowledge;

and

(ii) the original or a certified copy of any academic record

that shows the study that contributes to the knowledge.

(2) The Board must, within 42 days of deciding whether or not it is

satisfied that the person has the knowledge requirement, notify the

person, in writing, of its decision.

Note: A decision that a person does not have a knowledge requirement is reviewable under regulation 22.26.

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Chapter 20 Individual Patent Attorneys

Part 2 Obtaining registration for first time

Regulation 20.8

132 Patents Regulations 1991

20.8 Knowledge requirements

(1) The Designated Manager must not approve an applicant for

registration as a patent attorney unless the Board is satisfied that

the applicant has the knowledge of intellectual property law and

practice that is required for a person to practise as a patent

attorney.

(2) Subject to subregulations (3), (4) and (5), the Board must, in

satisfying itself whether or not an applicant has the knowledge of

intellectual property law and practice that is required for a person

to practise as a patent attorney, take into account whether the

applicant has the knowledge requirements that meet the minimum

requirements set out in Schedule 5.

(3) The Board may publish guidelines setting out criteria for deciding

whether or not areas of study are likely:

(a) to meet the minimum requirements set out in Schedule 5;

(b) to provide a person with the appropriate level of

understanding to practise as a patent attorney.

(4) The Board may be satisfied that an applicant has the knowledge of

intellectual property law and practice that is required for a person

to practise as a patent attorney, despite the fact that the applicant

does not meet every requirement set out in Schedule 5.

(5) The Board is not able to be satisfied that the applicant has the

knowledge of intellectual property law and practice that is required

for a person to practise as a patent attorney if the knowledge

requirements on which the applicant relies were obtained more

than 10 years prior to the application.

(6) If an applicant has been granted an exemption under

regulation 20.9, the applicant is taken to meet the requirement in

Schedule 5 for which the exemption is granted.

Note: Subsection 198(4) of the Act provides that the Designated Manager must register as a patent attorney a person who satisfies certain conditions. Paragraph 198(4)(b) requires that a person hold such qualifications as are specified in, or ascertained in accordance with, the Regulations.

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Individual Patent Attorneys Chapter 20

Obtaining registration for first time Part 2

Regulation 20.9

Patents Regulations 1991 133

20.9 Exemption from a requirement in Schedule 5

(1) The Board may exempt an applicant from having to satisfy all or

some of the requirements mentioned in Schedule 5.

(2) The Board must not give an exemption to an applicant unless:

(a) the applicant makes an application in the form approved by

the Board; and

(b) the applicant gives the Board enough information for the

Board to be satisfied under paragraph (c); and

(c) the Board is satisfied that:

(i) the applicant has passed a course of study at a

satisfactory level; and

(ii) the course of study has outcomes that are the same as, or

similar to, those of a knowledge requirement for which

the exemption is sought.

(3) The Board may give an exemption under subregulation (1) if it is

satisfied that the applicant has successfully completed a relevant

course of study within the 7 years preceding the application or

within a longer period specified in writing by the Board.

(4) An exemption under subregulation (1) is valid for 5 years from the

date that the exemption was granted or for a longer period

specified in writing by the Board.

20.10 Employment requirements

(1) The applicant:

(a) must have been employed in a position, or positions, that

provided the applicant experience in the following skills:

(i) searching patent records;

(ii) preparing, filing and prosecuting patent applications in

Australia;

(iii) preparing, filing and prosecuting patent applications in

other countries and organisations, particularly countries

and organisations that are regarded as major trading

partners with Australia;

(iv) drafting patent specifications;

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Chapter 20 Individual Patent Attorneys

Part 2 Obtaining registration for first time

Regulation 20.11

134 Patents Regulations 1991

(v) providing advice on the interpretation, validity and

infringement of patents; and

(b) must have been employed in a position, or positions, of that

kind for at least:

(i) 2 continuous years; or

(ii) a total of 2 years within 5 continuous years.

Examples of major trading partners for subparagraph (a)(iii):

 European Community

 Japan

 New Zealand

 People‟s Republic of China

 United States of America.

(2) The requirements set out in subregulation (1) must be evidenced by

means of one or more statements of skill, as defined in

regulation 20.11.

Note: Subsection 198(4) of the Act provides that the Designated Manager must register as a patent attorney a person who satisfies certain conditions. Paragraph 198(4)(c) requires that a person be employed as prescribed for not less than the prescribed period.

20.11 Statements of skill

(1) For paragraph 20.3(1)(d) and subregulation 20.10(2), a statement

of skill is a statement by a registered patent attorney who has been

registered for at least 5 years that, in the opinion of the registered

patent attorney, the applicant has the experience mentioned in one

or more of subparagraphs 20.10(1)(a)(i) to (v).

(2) Without limiting subregulation (1), a statement of skill must:

(a) contain details of the basis of the opinion that the applicant

has the required experience; and

(b) include details of the evidence on which the opinion is based;

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Individual Patent Attorneys Chapter 20

Obtaining registration for first time Part 2

Regulation 20.12

Patents Regulations 1991 135

described by reference to:

(c) the skills mentioned in paragraph 20.10(1)(a); and

(d) the employment requirements mentioned in paragraph

20.10(1)(b).

(3) If an applicant is unable to obtain a statement of skill from a

registered patent attorney who has been registered for at least 5

years, the Board may, at the request of the applicant, prepare a

statement of skill in relation to the applicant.

20.12 Prescribed offences

(1) An offence against the Act, the Designs Act 2003 or the Trade

Marks Act 1995 is a prescribed offence for paragraph 198(4)(e) of

the Act.

(2) An offence of dishonesty for which the maximum penalty is

imprisonment for at least 2 years is a prescribed offence for

paragraph 198(4)(f) of the Act.

Note: Subsection 198(4) of the Act provides that the Designated Manager must register as a patent attorney a person who satisfies certain conditions. Paragraph 198(4)(e) requires that a person not have been convicted of a prescribed offence during the previous 5 years. Paragraph 198(4)(f) requires that a person not be under sentence of imprisonment for a prescribed offence.

Federal Register of Legislative Instruments F2013C00202

Chapter 20 Individual Patent Attorneys

Part 3 Accreditation of courses of study

Regulation 20.13

136 Patents Regulations 1991

Part 3—Accreditation of courses of study

20.13 Accreditation of courses of study

(1) The Board may accredit a course of study that is provided by an

institution if the Board is satisfied that the learning outcomes of the

course would result in a person who passes the course acquiring

some or all of the knowledge of intellectual property law and

practice that the Board considers necessary for a person to practise

as a registered patent attorney.

(2) In deciding whether or not to accredit the course, the Board must

consider whether the learning outcomes of the course meet some or

all of the requirements set out in Schedule 5.

(3) In considering whether the learning outcomes of the course meets

some or all of the requirements set out in Schedule 5, the Board

must consider any information provided by the institution.

(4) If the institution gives the Board sufficient information for the

Board to decide whether the learning outcomes of the course meet

a requirement mentioned in Schedule 5, the Board must, within 4

months after receiving the information, decide whether to accredit

the course.

(5) Subject to subregulation (7), if the Board accredits a course,

accreditation is for 5 years.

(6) If an institution intends to change an accredited course, it must

advise the Board in writing.

(7) The Board may revoke an accreditation if:

(a) changes are made to the course; and

(b) the Board decides that the course no longer achieves the

learning outcomes stated for the knowledge requirements to

which it relates.

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Individual Patent Attorneys Chapter 20

Accreditation of courses of study Part 3

Regulation 20.14

Patents Regulations 1991 137

20.14 Provisional accreditation

(1) The Board may provisionally accredit a course if:

(a) the institution has sought accreditation for the course; and

(b) the information provided by the institution shows that the

course includes a requirement mentioned in Schedule 5; and

(c) either:

(i) the Board does not expect to complete its consideration

of the course under regulation 20.13 before the start of

the academic semester; or

(ii) the Board has not completed its consideration of the

course under regulation 20.13 when the academic

semester starts.

(2) The Board may provisionally accredit a changed course if:

(a) a consequence of the change to the course is that the learning

outcomes of the course may meet fewer of the requirements

set out in Schedule 5; and

(b) the Board considers that the changed course still achieves the

learning outcomes stated for the knowledge requirements

mentioned in Schedule 5.

(3) Provisional accreditation:

(a) starts when the course is provisionally accredited; and

(b) ends at the earlier of:

(i) when the course has concluded; and

(ii) when a decision in relation to the course is made under

regulation 20.13.

Federal Register of Legislative Instruments F2013C00202

Chapter 20 Individual Patent Attorneys

Part 4 Board examinations

Regulation 20.15

138 Patents Regulations 1991

Part 4—Board examinations

20.15 Board examinations

(1) The Board may hold examinations for a requirement mentioned in

Schedule 5.

(2) The Board may appoint examiners for the purposes of the

examinations, and give them instructions about the setting and

marking of papers.

(3) An examiner is entitled to be paid the fees that the Minister

determines in writing.

20.16 Time for holding Board examinations

(1) The Board must arrange to publish in the Official Journal, with

adequate notice:

(a) the time of each examination it holds and the place where it

is to be held; and

(b) the deadline for applications for admission to sit for each

examination it holds.

(2) Subregulation (1) does not apply to a supplementary examination

under regulation 20.21.

20.17 Examinable subject matter

From time to time, the Board must arrange to publish in the

Official Journal particulars of:

(a) the subject matter covered by the courses for which

examinations are to be held in relation to the relevant

requirements mentioned in Schedule 5; and

(b) the reading and study material it recommends to candidates.

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Individual Patent Attorneys Chapter 20

Board examinations Part 4

Regulation 20.18

Patents Regulations 1991 139

20.18 Admission to sit for a Board examination

An application by a person to sit for an examination must be in the

form approved by the Board.

20.19 Notification of Board examination results

As soon as practicable after an examination conducted by the

Board, the Board must give to each candidate who sat for the

examination his or her results in the examination.

20.20 Reasons for failure of Board examination

(1) A candidate who fails an examination conducted by the Board may

apply to the Board in the form approved by the Board within 1

month after being told of the failure for a report of the reasons for

the failure.

(2) For subregulation (1), a report may be given by:

(a) the Board; or

(b) if the Board approves—the examiner appointed under

subregulation 20.15(2).

20.21 Supplementary Board examination

(1) An application by a person to sit for a supplementary examination

must be in the form approved by the Board.

(2) The Board may let a candidate sit for a supplementary examination

if:

(a) the candidate:

(i) failed an examination; and

(ii) applies to the Board to sit for the supplementary

examination within 1 month of being told of the failure;

or

(b) the candidate:

(i) did not sit for the examination because of illness or

another reason that the Board reasonably considers

sufficient; and

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Chapter 20 Individual Patent Attorneys

Part 4 Board examinations

Regulation 20.21

140 Patents Regulations 1991

(ii) applies to the Board to sit for the supplementary

examination within 1 month of the examination.

(3) For an application under paragraph (2)(a), the Board may take

account of an examiner‟s comments on the candidate‟s

performance.

(4) A supplementary application under paragraph (2)(b) must be

accompanied by evidence of the reason for failing to sit the

examination that was obtained at the time of the illness or of the

occurrence of the other event giving rise to the reason.

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Individual Patent Attorneys Chapter 20

Maintaining registration Part 5

Regulation 20.22

Patents Regulations 1991 141

Part 5—Maintaining registration

20.22 Requirements for remaining on Register of Patent Attorneys

(1) To remain on the Register of Patent Attorneys, a registered patent

attorney must, for every year of registration:

(a) pay the annual registration fee set out in item 105 or 106 of

Schedule 7; and

(b) provide evidence that he or she has undertaken continuing

professional education, as required by regulation 20.24.

(2) Paragraph (1)(b) applies to a registered patent attorney who seeks

to remain on the Register of Patent Attorneys for the 12 months

commencing on 1 July 2009 and for each subsequent period of 12

months.

20.23 Payment of annual registration fee

(1) The annual registration fee is payable by a registered patent

attorney to whom regulation 20.26 does not apply on 1 July in a

year.

(2) The Designated Manager must, not later than 1 June in each year,

give to each registered patent attorney to whom regulation 20.26

does not apply, notice of the fee that is payable.

20.24 Continuing professional education—number of hours

(1) Subject to subregulation (3), a registered patent attorney must, in

the 12 months immediately before the date on which the attorney

applies for renewed registration, have completed 10 hours of

activities that the Designated Manager is satisfied are appropriate

for an attorney to undertake as a means of maintaining the currency

of his or her professional qualifications.

(2) The Board may publish guidelines setting out criteria for deciding

whether or not activities are likely to be appropriate for an attorney

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Chapter 20 Individual Patent Attorneys

Part 5 Maintaining registration

Regulation 20.25

142 Patents Regulations 1991

to undertake as a means of maintaining the currency of his or her

professional qualifications.

(3) A person who is both a registered patent attorney and a registered

trade marks attorney must, in the 12 months immediately before

the date on which the attorney applies for renewed registration,

have completed 15 hours of activities that the Designated Manager

is satisfied are appropriate for an attorney to undertake as a means

of maintaining the currency of his or her professional

qualifications.

(4) In this regulation:

renewed registration means an application by a registered patent

attorney to renew his or her registration, other than the first

application to renew his or her registration.

20.25 Method of demonstrating that continuing professional

education has been undertaken

(1) In making an application for a renewed registration, a registered

patent attorney must:

(a) give the Designated Manager a written statement made by

the attorney that states that the attorney has met the

requirements of this Part; and

(b) have kept written records in relation to each continuing

professional education activity on which the attorney relies.

(2) For paragraph (1)(b), the records must:

(a) enable an assessment of the activity to confirm that the

activity meets the requirements of this Part; and

(b) be produced to the Designated Manager on request; and

(c) be kept until 3 years after the end of the registration period

during which the activity was completed.

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Individual Patent Attorneys Chapter 20

Removal of attorney‟s name from Register of Patent Attorneys Part 6

Regulation 20.26

Patents Regulations 1991 143

Part 6—Removal of attorney’s name from Register

of Patent Attorneys

20.26 Voluntary removal of name from Register of Patent Attorneys

The Designated Manager must, on the written request of a

registered patent attorney, remove the attorney‟s name from the

Register of Patent Attorneys.

20.27 Failure to pay annual registration fee

If a registered patent attorney does not pay the annual registration

fee by 31 July in the year in which the fee is payable, the

Designated Manager must:

(a) remove the name of the attorney from the Register of Patent

Attorneys; and

(b) notify the attorney of that removal.

20.28 Failure to comply with continuing professional education

requirements

(1) If a registered patent attorney fails to comply with the requirements

applicable to the attorney under subregulation 20.25(1) or (2), the

Designated Manager may remove the attorney‟s name from the

Register of Patent Attorneys for a period not exceeding 6 months.

(2) If a registered patent attorney, without reasonable excuse:

(a) provides a written statement under paragraph 20.25(1)(a) that

is false in a material particular; or

(b) fails to produce written records of his or her continuing

professional education activities in accordance with a request

under paragraph 20.25(2)(b);

the Designated Manager must remove the attorney‟s name from the

Register of Patent Attorneys.

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Chapter 20 Individual Patent Attorneys

Part 6 Removal of attorney‟s name from Register of Patent Attorneys

Regulation 20.28

144 Patents Regulations 1991

(3) If the Designated Manager removes the name of a registered patent

attorney from the Register of Patent Attorneys under subregulation

(2), the name of the attorney must not be returned to the Register of

Patent Attorneys in accordance with regulation 20.29 for a period

of 6 months from the day on which the attorney‟s name was

removed from the Register of Patent Attorneys.

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Individual Patent Attorneys Chapter 20

Suspension of registration Part 6A

Regulation 20.28A

Patents Regulations 1991 145

Part 6A—Suspension of registration

20.28A Requirement to notify of serious offence

(1) A registered patent attorney who has been charged with a serious

offence must, within 14 days after being charged, notify the

Designated Manager, in writing, of the charge.

(2) If the registered patent attorney:

(a) fails to comply with subregulation (1); and

(b) does not have a reasonable excuse for failing to comply;

the failure to comply constitutes unsatisfactory professional

conduct.

20.28B Suspension of registration—serious offence

(1) The Designated Manager may, by written notice to a registered

patent attorney, suspend the registered patent attorney‟s

registration if the Designated Manager:

(a) is notified under subregulation 20.28A(1); or

(b) becomes aware that the registered patent attorney has been

charged with a serious offence.

(2) If the Designated Manager suspends the registered patent

attorney‟s registration:

(a) the suspension takes effect when the notice is given to the

registered patent attorney; and

(b) the Designated Manager must:

(i) give written notice to the Board of the suspension; and

(ii) by written notice, give the registered patent attorney 28

days after the date of the notice (a show cause notice)

within which to show cause why the suspension should

be lifted.

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Chapter 20 Individual Patent Attorneys

Part 6A Suspension of registration

Regulation 20.28B

146 Patents Regulations 1991

(3) The Designated Manager must consider any information provided

by the registered patent attorney in response to the show cause

notice.

(4) The Designated Manager must immediately end the suspension if:

(a) the Designated Manager becomes aware that the charge is not

proceeded with or the prosecution of the charge is

abandoned; or

(b) the Designated Manager becomes aware that the proceedings

have been completed without a conviction being recorded; or

(c) the proceedings have been completed with a conviction being

recorded and the Disciplinary Tribunal decides not to

continue the suspension or cancel the registered patent

attorney‟s registration; or

(d) the Designated Manager considers that the suspension is no

longer necessary.

(5) If the Designated Manager ends the suspension, the Designated

Manager must notify, in writing, each of the following that the

suspension has ended:

(a) the registered patent attorney;

(b) the Board;

(c) the Disciplinary Tribunal.

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Individual Patent Attorneys Chapter 20

Restoring attorney‟s name to Register of Patent Attorneys Part 7

Regulation 20.29

Patents Regulations 1991 147

Part 7—Restoring attorney’s name to Register of

Patent Attorneys

20.29 Restoring attorney’s name to Register of Patent Attorneys

(1) Subject to subregulation (2), if:

(a) a patent attorney‟s name was removed from the Register of

Patent Attorneys under regulation 20.26; and

(b) the attorney requests the Designated Manager, in writing, to

restore the attorney‟s name to the Register of Patent

Attorneys; and

(c) the attorney pays:

(i) the annual registration fee payable for the year in which

the reinstatement is made; and

(ii) the fee mentioned in item 107 of Schedule 7;

the Designated Manager must restore the attorney‟s name to the

Register of Patent Attorneys.

(2) A request under paragraph (1)(b) must be made no more than 3

years after the removal of the attorney‟s name from the Register of

Patent Attorneys.

(3) The Designated Manager may, in restoring the name of a registered

patent attorney to the Register of Patent Attorneys, impose a

condition that, before 1 July of the following registration year, the

registered patent attorney must undertake such continuing

professional education activities as the Designated Manager

considers reasonable in the circumstances.

(4) If:

(a) the Designated Manager imposes a condition; and

(b) the registered patent attorney fails to comply with the

condition;

the Designated Manager may remove the name of the attorney

from the Register of Patent Attorneys.

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Chapter 20 Individual Patent Attorneys

Part 7 Restoring attorney‟s name to Register of Patent Attorneys

Regulation 20.30

148 Patents Regulations 1991

20.30 Restoring attorney’s name to Register of Patent Attorneys

following payment of unpaid fee

The Designated Manager must restore a patent attorney‟s name to

the Register of Patent Attorneys if:

(a) the attorney‟s name was removed from the Register of Patent

Attorneys under regulation 20.27; and

(b) on or before 1 September of the year in which the attorney‟s

name was removed from the Register of Patent Attorneys, or

within such further period as the Designated Manager

reasonably allows, the attorney:

(i) pays the fee mentioned in regulation 20.27 and item 107

of Schedule 7;

(ii) makes an application in the form approved by the

Designated Manager.

20.31 Restoring attorney’s name to Register of Patent Attorneys in

other circumstances

(1) A person who has been a registered patent attorney, and to whom

regulation 20.29 or 20.30 does not apply, may apply to the

Designated Manager to have his or her name restored to the

Register of Patent Attorneys.

(2) An application under subsection (1) must be in a form approved by

the Designated Manager.

(3) An application under subsection (1) must be accompanied by the

following:

(a) evidence that the Board is satisfied with the currency of the

person‟s knowledge of intellectual property law and practice;

(b) a declaration, by the applicant, that he or she:

(i) has not, in the 5 years preceding the application,

committed an offence prescribed by subregulation

20.12(1); and

(ii) is not under sentence of imprisonment for an offence

prescribed by subregulation 20.12(2);

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Individual Patent Attorneys Chapter 20

Restoring attorney‟s name to Register of Patent Attorneys Part 7

Regulation 20.31

Patents Regulations 1991 149

(c) a declaration, by another person, that the person is of good

fame, integrity and character;

(d) a fee that is the sum of the fee mentioned in item 105 or 106

of Schedule 7, whichever is applicable, and the fee

mentioned in item 107 of Schedule 7.

(4) A declaration under paragraph (3)(c) must contain details of the

basis of the opinion that the applicant is of good fame, integrity

and character

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Chapter 20 Individual Patent Attorneys

Part 8 Discipline

Division 1 General

Regulation 20.32

150 Patents Regulations 1991

Part 8—Discipline

Division 1—General

20.32 Definitions

In this Part:

conduct includes an act and an omission.

former attorney means a person whose registration as a patent

attorney has been suspended or cancelled under this Part.

professional misconduct means:

(a) unsatisfactory professional conduct that involves a

substantial or consistent failure to reach reasonable standards

of competence and diligence; or

(b) any other conduct, whether occurring in connection with

practice as an attorney or otherwise, that shows that the

attorney is not of good fame, integrity and character; or

(c) any contravention of a law that is declared by these

Regulations to be professional misconduct.

unsatisfactory professional conduct includes conduct, in

connection with practice as a registered patent attorney, that falls

short of the standard of competence, diligence and behaviour that a

member of the public is entitled to expect of an attorney.

20.33 Role of Board in disciplinary proceedings

(1) The Board has the sole responsibility for commencing and

conducting disciplinary proceedings against a registered patent

attorney.

(2) The role of the Board in commencing disciplinary proceedings

includes investigating, either as a result of information received or

of its own motion, whether:

(a) a registered patent attorney has been engaged in:

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Individual Patent Attorneys Chapter 20

Discipline Part 8

General Division 1

Regulation 20.33

Patents Regulations 1991 151

(i) professional misconduct; or

(ii) unsatisfactory professional conduct; or

(b) at the time of his or her registration, a registered patent

attorney did not hold either or both of the following:

(i) the academic qualifications mentioned in

regulation 20.6;

(ii) the knowledge requirements mentioned in

regulation 20.8; or

(c) a registered patent attorney obtained his or her registration by

fraud.

(3) The Board may commence proceedings before the Disciplinary

Tribunal against a registered patent attorney if the Board is

satisfied that there is a reasonable likelihood of the attorney being

found guilty of unsatisfactory professional conduct.

(4) The Board must commence proceedings against a registered patent

attorney before the Disciplinary Tribunal if the Board is satisfied

that there is a reasonable likelihood of the attorney being found

guilty of an offence under subregulation (2), other than of

unsatisfactory professional conduct.

(5) In deciding whether or not to commence disciplinary proceedings

against a registered patent attorney, the Board may take into

account patterns of behaviour of the attorney when deciding

whether or not it is satisfied that there is a reasonable likelihood of

the attorney being found guilty of an offence under subregulation

(2).

(6) In deciding whether or not a registered patent attorney has been

engaged in:

(a) professional misconduct; or

(b) unsatisfactory professional conduct;

the Board must consider whether or not the attorney has complied

with the Code of Conduct.

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Chapter 20 Individual Patent Attorneys

Part 8 Discipline

Division 1 General

Regulation 20.34

152 Patents Regulations 1991

20.34 Board may require attorney to cooperate with investigation

(1) In investigating whether or not to commence proceedings against a

registered patent attorney, the Board may request the attorney who

is the subject of the investigation to provide information.

(2) The failure, without reasonable excuse, of a registered patent

attorney to provide information requested by the Board under

subregulation (1) is unsatisfactory professional conduct.

20.35 Commencing disciplinary proceedings

(1) The Board must commence disciplinary proceedings by way of a

notice given to the Disciplinary Tribunal.

(2) A notice must be in writing and must set out the charges that are

made against the registered patent attorney.

(3) The Board must, as soon as practicable after giving a notice to the

Disciplinary Tribunal, give a copy of the notice to the registered

patent attorney who is the subject of the notice.

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Individual Patent Attorneys Chapter 20

Discipline Part 8

Proceedings in Disciplinary Tribunal Division 2

Regulation 20.36

Patents Regulations 1991 153

Division 2—Proceedings in Disciplinary Tribunal

20.36 Procedure of Disciplinary Tribunal

(1) Subject to this Part, the Disciplinary Tribunal may determine its

procedure.

(2) Proceedings before the Disciplinary Tribunal are to be conducted

quickly and informally, while allowing for proper consideration of

the matter before that Tribunal.

(3) The Disciplinary Tribunal is not bound by the rules of evidence but

may be informed on any matter in the manner it chooses.

(4) The Disciplinary Tribunal may take evidence on oath or on

affirmation and, for that purpose, may administer an oath or

affirmation.

20.37 Notification of hearing of disciplinary proceedings

(1) The Disciplinary Tribunal must, as soon as practicable after

receiving a notice under regulation 20.35 in relation to a registered

patent attorney, fix a time and place for the hearing of the charges

set out in the notice.

(2) The Disciplinary Tribunal must, as soon as practicable after fixing

a time and date for the hearing of charges against a registered

patent attorney, notify the attorney and the Board of that time and

place.

(3) The time of hearing must not be less than 21 days after the day on

which the registered patent attorney is notified of the time and

place for the hearing.

20.38 Hearings to be public except in special circumstances

(1) Subject to subregulation (2), a hearing before the Disciplinary

Tribunal must be in public.

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Chapter 20 Individual Patent Attorneys

Part 8 Discipline

Division 2 Proceedings in Disciplinary Tribunal

Regulation 20.39

154 Patents Regulations 1991

(2) If the Disciplinary Tribunal is reasonably satisfied that it is

desirable to do so, in the public interest or because of the

confidential nature of any evidence or matter, the Tribunal may:

(a) direct that a hearing, or a part of a hearing, is to take place in

private and give directions as to the persons who may be

present; and

(b) give directions restricting or prohibiting the publication or

disclosure of:

(i) evidence given before the Tribunal, whether in public or

in private; or

(ii) matters contained in documents lodged with the

Tribunal or received in evidence by it.

(3) A person must comply with a direction given to him or her under

this regulation.

Penalty: 5 penalty units.

20.39 Representation before Disciplinary Tribunal

(1) At the hearing of proceedings before the Disciplinary Tribunal, a

party to the proceedings may appear in person or be represented by

a legal practitioner.

(2) The Disciplinary Tribunal may allow a person to be represented by

a person who is not a legal practitioner.

(3) A party to proceedings before the Disciplinary Tribunal, or his or

her representative, may request that Tribunal to summon witnesses.

20.40 Summoning of witnesses

(1) For the purpose of the hearing of a charge against a registered

patent attorney before the Disciplinary Tribunal, the Tribunal may,

by instrument in writing signed by the person constituting the

Tribunal:

(a) summon any person, other than the attorney, to appear before

the Tribunal to give evidence about the charge and to

produce any documents or articles mentioned in the

summons; or

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Individual Patent Attorneys Chapter 20

Discipline Part 8

Proceedings in Disciplinary Tribunal Division 2

Regulation 20.41

Patents Regulations 1991 155

(b) summon the attorney to appear before the Tribunal:

(i) to produce any documents or articles mentioned in the

summons; and

(ii) to give evidence to identify the documents or articles.

(2) A registered patent attorney summoned under this regulation must

appear in person.

20.41 Offences by persons appearing before Disciplinary Tribunal

(1) A person summoned to appear before the Disciplinary Tribunal

must comply with the summons by:

(a) appearing as required by the summons; and

(b) producing documents or articles as required by the summons;

and

(c) appearing and reporting to the Tribunal, as required.

Penalty: 10 penalty units.

(2) It is a defence to a prosecution for an offence against subregulation

(1) if:

(a) the defendant is prevented or hindered from complying with

the summons by:

(i) a circumstance mentioned in Part 2.3 of the Criminal

Code; or

(ii) any other circumstance that the Disciplinary Tribunal

reasonably considers is an impediment to the defendant

complying with the summons; or

(b) in relation to paragraph (1)(c)—the defendant is excused by

the Tribunal.

Note: A defendant bears an evidential burden in relation to the matters mentioned in subparagraph (2)(a)(i) (see section 13.3 of the Criminal Code).

(3) A person commits an offence if:

(a) the person:

(i) is not a registered patent attorney to whom

subregulation (5) applies; and

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Chapter 20 Individual Patent Attorneys

Part 8 Discipline

Division 2 Proceedings in Disciplinary Tribunal

Regulation 20.41

156 Patents Regulations 1991

(ii) appears as a witness before the Disciplinary Tribunal;

and

(iii) has been paid expenses and allowances; and

(b) the expenses and allowances have been determined by the

Tribunal in accordance with Part 2 of Schedule 8; and

(c) the person refuses:

(i) to be sworn or make an affirmation; or

(ii) to answer a question relevant to the evidence that he or

she was summoned to give.

Penalty: 10 penalty units.

(4) Strict liability applies to the physical element of an offence against

subregulation (3) that is constituted by:

(a) the circumstance mentioned in subparagraph (3)(a)(i); and

(b) the circumstance mentioned in paragraph (3)(b).

Note: For strict liability, see section 6.1 of the Criminal Code.

(5) A person commits an offence if the person:

(a) is a registered patent attorney against whom proceedings

have been instituted; and

(b) is summoned to appear at a hearing before the Disciplinary

Tribunal in respect of those proceedings; and

(c) refuses:

(i) to be sworn or to make an affirmation; or

(ii) to answer a question relevant to the evidence that he or

she was summoned to give.

Penalty: 10 penalty units.

(6) It is a defence for a person referred to in subregulation (3) or (5) to

refuse to answer a question or to produce a document or article, if

the answer to the question, or the document or article, may tend to

prove that he or she has committed an offence against a law of the

Commonwealth or of a State or Territory.

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Individual Patent Attorneys Chapter 20

Discipline Part 8

Proceedings in Disciplinary Tribunal Division 2

Regulation 20.42

Patents Regulations 1991 157

20.42 Protection of person constituting Disciplinary Tribunal,

witnesses etc

(1) A person:

(a) constituting or acting as the Disciplinary Tribunal; or

(b) appointed under subregulation 20.64(2);

has, in the exercise of the powers and the performance of the

functions of that Tribunal under this Part, the same protection and

immunity as a Justice of the High Court.

(2) A member of the Board has, in exercising a power under this Part,

the same protection and immunity as a Justice of the High Court.

(3) A legal practitioner or other person appearing before the

Disciplinary Tribunal has the same protection and immunity as a

barrister has in appearing for a party in proceedings in the High

Court.

(4) Subject to this Part, a person summoned to attend or appearing

before the Disciplinary Tribunal as a witness:

(a) has the same protection; and

(b) is, in addition to the penalties provided by this Part, subject

to the same liabilities;

as a witness in proceedings in the High Court.

20.43 Decision of Disciplinary Tribunal

(1) If the Disciplinary Tribunal has heard a charge of professional

misconduct against a registered patent attorney, it may find the

attorney guilty of professional misconduct.

(2) If the Disciplinary Tribunal has heard a charge of unsatisfactory

professional conduct against a registered patent attorney, it may

find the attorney guilty of unsatisfactory professional conduct.

(3) If the Disciplinary Tribunal has heard a charge that a registered

patent attorney was unqualified at the time of his or her

registration, that Tribunal may find the attorney guilty of being

unqualified at the time of registration.

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Chapter 20 Individual Patent Attorneys

Part 8 Discipline

Division 2 Proceedings in Disciplinary Tribunal

Regulation 20.44

158 Patents Regulations 1991

(4) If the Disciplinary Tribunal has heard a charge that a registered

patent attorney obtained his or her registration by fraud, that

Tribunal may find the attorney guilty of obtaining his or her

registration by fraud.

20.44 Penalties—professional misconduct

(1) Subject to subregulation (2), if the Disciplinary Tribunal finds a

registered patent attorney guilty of professional misconduct, it

may:

(a) cancel the attorney‟s registration as a patent attorney; or

(b) suspend the attorney‟s registration as a patent attorney for a

period of between 6 and 12 months.

(2) The Disciplinary Tribunal may, in addition to cancelling or

suspending a registered patent attorney‟s registration under

subregulation (1), impose conditions on the attorney‟s return to the

Register of Patent Attorneys after the cancellation has been lifted

or the period of suspension has elapsed.

(3) Without limiting subregulation (2), the conditions that the

Disciplinary Tribunal may impose include either or both of the

following:

(a) that the attorney undertake additional continuing professional

education, as specified by the Tribunal;

(b) that the attorney work for a period of time, not exceeding 2

years, under the supervision of a person who has been a

registered patent attorney for a period not less than 5 years.

(4) If a registered patent attorney is also a registered trade marks

attorney, the Disciplinary Tribunal may also cancel or suspend the

attorney‟s registration as a trade marks attorney.

20.45 Penalties—unsatisfactory professional conduct

(1) Subject to subregulation (2), if the Disciplinary Tribunal finds a

registered patent attorney guilty of unsatisfactory professional

conduct, it may:

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Individual Patent Attorneys Chapter 20

Discipline Part 8

Proceedings in Disciplinary Tribunal Division 2

Regulation 20.46

Patents Regulations 1991 159

(a) suspend the attorney‟s registration as a patent attorney for a

period of not more than 12 months; or

(b) administer a public reprimand to the attorney.

(2) The Disciplinary Tribunal may, in addition to suspending a

registered patent attorney‟s registration under subregulation (1),

also impose conditions on the attorney‟s return to the register after

the period of suspension has elapsed.

(3) Without limiting subregulation (2), the conditions that the

Disciplinary Tribunal may impose include either or both of the

following:

(a) that the attorney undertake additional continuing professional

education, as specified by the Tribunal;

(b) that the attorney work for a period of time, not exceeding 2

years, under the supervision of a person who has been a

registered patent attorney for a period of not less than 5

years.

20.46 Finding that attorney was unqualified at time of registration

If the Disciplinary Tribunal has heard a charge against a registered

patent attorney that the attorney was unqualified at the time of his

or her registration and finds the charge proved, that Tribunal may:

(a) if the attorney has, since that time, obtained that qualification

or the qualification is no longer required for registration—

reprimand the attorney; or

(b) in any other case—cancel his or her registration.

20.47 Finding that registration obtained by fraud

If the Disciplinary Tribunal finds that a registered patent attorney

obtained his or her registration by fraud, that Tribunal must cancel

the registration of the attorney.

20.48 Matters that may be considered in determining penalties

In deciding what to do about a registered patent attorney under

regulation 20.44 or 20.45, the Disciplinary Tribunal may take into

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Chapter 20 Individual Patent Attorneys

Part 8 Discipline

Division 2 Proceedings in Disciplinary Tribunal

Regulation 20.49

160 Patents Regulations 1991

account the findings about the conduct of the attorney in any other

proceedings:

(a) brought before that Tribunal; or

(b) brought before the Patent Attorneys Disciplinary Tribunal

under the former attorneys regulations.

20.49 Findings of Disciplinary Tribunal

(1) If the Disciplinary Tribunal reprimands a registered patent

attorney, or suspends or cancels the attorney‟s registration, the

Tribunal must give a written notice of the finding of the Tribunal

against the attorney that sets out particulars of the reprimand,

suspension or cancellation to:

(a) the attorney; and

(b) the Board; and

(c) the Designated Manager.

(2) If the registration of a registered patent attorney is suspended, the

Designated Manager must note the suspension and its duration in

the Register of Patent Attorneys.

(3) If the registration of a registered patent attorney is cancelled, the

Designated Manager must remove the name of the attorney from

the Register of Patent Attorneys.

(4) If the Disciplinary Tribunal does not find a charge proved, that

Tribunal must notify the registered patent attorney and the Board

accordingly.

20.50 Notification and publication of decisions of Disciplinary

Tribunal

The Disciplinary Tribunal must, within 14 days after making a

decision under regulation 20.44, 20.45, 20.46 or 20.47:

(a) prepare a written statement that:

(i) sets out the decision of the Tribunal; and

(ii) sets out the reasons for the decision; and

(iii) sets out the findings on any material questions of fact;

and

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Individual Patent Attorneys Chapter 20

Discipline Part 8

Proceedings in Disciplinary Tribunal Division 2

Regulation 20.51

Patents Regulations 1991 161

(iv) refers to evidence or other material on which the

findings of fact are based; and

(b) give:

(i) the registered patent attorney who is the subject of the

notice; and

(ii) the Board;

a copy of the statement referred to in paragraph (a); and

(c) publish, in the Official Journal, a written statement that sets

out the decision of the Tribunal; and

(d) arrange for the publication of a copy of the statement referred

to in paragraph (a).

20.51 Completion of outstanding business

(1) If the registration of a former attorney has been cancelled under

paragraph 20.44(1)(a), the Disciplinary Tribunal may appoint a

registered patent attorney to carry on the practice of the former

attorney until all outstanding matters are disposed of.

(2) If the registration of the former attorney has been suspended under

paragraph 20.44(1)(b) or 20.45(1)(a), the Disciplinary Tribunal

may appoint a registered patent attorney to carry on the practice of

the former attorney for the period of the suspension or for a

specified period, not longer than the period of suspension.

(3) The Disciplinary Tribunal must not appoint a registered patent

attorney under subregulation (1) or (2) unless the registered patent

attorney consents to the appointment.

(4) This regulation does not allow a registered patent attorney to act as

a registered patent attorney on behalf of a person without the

consent of the person.

20.52 Former attorney may be required to provide assistance

(1) A registered patent attorney appointed to carry on the practice of a

former attorney may give a written notice requiring the former

attorney to make available to the attorney so appointed:

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Chapter 20 Individual Patent Attorneys

Part 8 Discipline

Division 2 Proceedings in Disciplinary Tribunal

Regulation 20.52

162 Patents Regulations 1991

(a) any information about the practice that he or she may

reasonably require; or

(b) any books, accounts or other documents concerning the

practice that he or she may reasonably require; or

(c) any moneys held by the former attorney:

(i) on behalf of a client; or

(ii) that have been paid by a client in respect of services not

yet performed for the client.

(2) A former attorney who has been given a notice under subregulation

(1) must not refuse to comply with a requirement in the notice.

Penalty: 5 penalty units.

(3) It is a defence to a prosecution for an offence against subregulation

(2) if the former attorney is prevented or hindered from complying

with a requirement in the notice by:

(a) a circumstance mentioned in Part 2.3 of the Criminal Code;

or

(b) any other circumstance that the Disciplinary Tribunal

reasonably considers is an impediment to the defendant

complying with the summons.

Note: A defendant bears an evidential burden in relation to the question of whether he or she has a reasonable excuse (see section 13.3 of the Criminal Code).

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Individual Patent Attorneys Chapter 20

Rights of registered patent attorneys Part 9

Regulation 20.53

Patents Regulations 1991 163

Part 9—Rights of registered patent attorneys

20.53 Lien

A registered patent attorney has the same right of lien over

documents and property of a client as a solicitor.

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Chapter 20 Individual Patent Attorneys

Part 10 Administration

Division 1 Professional Standards Board for Patent and Trade Marks Attorneys

Regulation 20.54

164 Patents Regulations 1991

Part 10—Administration

Division 1—Professional Standards Board for Patent and

Trade Marks Attorneys

20.54 Constitution of Board (Act s 227A)

The Board is constituted by:

(a) the Chairperson, appointed by the Minister; and

(b) either:

(i) the person holding, or carrying out the duties of, the

office of the Director-General of the Division of the

Department known as IP Australia; or

(ii) the nominee of that person; and

(c) at least 2 other suitably qualified members, appointed by the

Minister.

20.55 Term of office of Board members

The Minister may appoint a member of the Board for a term of up

to 3 years.

20.56 Resignation and removal of members from Board

(1) A member of the Board may resign by giving the Minister his or

her resignation in writing.

(2) The Minister may remove the Chairperson of the Board if the

Chairperson:

(a) has been absent from 3 consecutive meetings of the Board

without leave given by the Board under regulation 20.60; or

(b) is convicted in Australia of an offence punishable by

imprisonment for at least 12 months; or

(c) cannot perform his or her duties as Chairperson of the Board;

or

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Individual Patent Attorneys Chapter 20

Administration Part 10

Professional Standards Board for Patent and Trade Marks Attorneys Division 1

Regulation 20.57

Patents Regulations 1991 165

(d) has behaved in an offensive or disorderly way, or in a way

that is likely to adversely affect the Board‟s reputation; or

(e) has carried out his or her duties as Chairperson of the Board

inefficiently; or

(f) becomes bankrupt; or

(g) applies to take the benefit of a law for the relief of bankrupt

or insolvent debtors; or

(h) has entered into a debt agreement under Part IX of the

Bankruptcy Act 1966; or

(i) compounds with his or her creditors or assigns his or her

salary and allowances for their benefit.

(3) The Minister may remove a member of the Board if the member:

(a) has been absent from 3 consecutive meetings of the Board

without leave given by the Chairperson; or

(b) is convicted in Australia of an offence punishable by

imprisonment for at least 12 months; or

(c) cannot perform his or her duties as a member of the Board; or

(d) has behaved in an offensive or disorderly way, or in a way

that is likely to adversely affect the Board‟s reputation; or

(e) has carried out his or her duties as a member of the Board

inefficiently; or

(f) becomes bankrupt; or

(g) applies to take the benefit of a law for the relief of bankrupt

or insolvent debtors; or

(h) has entered into a debt agreement under Part IX of the

Bankruptcy Act 1966; or

(i) compounds with his or her creditors or assigns his or her

salary and allowances for their benefit.

20.57 Meetings of Board

(1) The Board must hold as many meetings as are necessary for the

performance of its functions.

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Chapter 20 Individual Patent Attorneys

Part 10 Administration

Division 1 Professional Standards Board for Patent and Trade Marks Attorneys

Regulation 20.58

166 Patents Regulations 1991

(2) The Chairperson may, at any time, by notice in writing to the

members, call a meeting of the Board at the time and place

specified in the notice.

20.58 Member presiding at meetings of Board

(1) The Chairperson must preside at all meetings of the Board at which

he or she is present.

(2) In the absence of the Chairperson from a meeting, the members

present must appoint one of the members present at the meeting to

preside.

(3) The Chairperson or a member who presides at a meeting has a

deliberative vote and, in the event of an equality of votes, also has

a casting vote.

20.59 Quorum for Board meetings

At a meeting of the Board, a quorum is formed by the majority of

the members of the Board.

20.60 Absence of Chairperson from meeting—leave from Board

If the Chairperson is absent from a meeting of the Board, the

members present must decide whether to give leave to the

Chairperson.

Federal Register of Legislative Instruments F2013C00202

Individual Patent Attorneys Chapter 20

Administration Part 10

Patent and Trade Marks Attorneys Disciplinary Tribunal Division 2

Regulation 20.61

Patents Regulations 1991 167

Division 2—Patent and Trade Marks Attorneys

Disciplinary Tribunal

20.61 Establishment of Disciplinary Tribunal

The Patent and Trade Marks Attorneys Disciplinary Tribunal is

established.

20.62 Disciplinary Tribunal—substantive appointments

(1) The Minister may, in writing, appoint a person to constitute the

Disciplinary Tribunal.

(2) A copy of the instrument of appointment must be published in the

Official Journal.

(3) A person so appointed holds the office for the period specified in

the instrument.

(4) A person so appointed may resign in writing given to the Minister.

(5) The Minister may remove a person so appointed from office for

inefficiency, misbehaviour or incapacity.

(6) If a person so appointed:

(a) becomes bankrupt, applies to take the benefit of a law for the

relief of bankrupt or insolvent debtors, compounds with his

or her creditors or makes an assignment of his or her

remuneration for their benefit; or

(b) is convicted in Australia of an offence punishable by

imprisonment for 12 months or longer; or

(c) fails, without reasonable excuse, to disclose a conflict of

interest in accordance with regulation 20.64;

the Minister must remove the person from office.

20.63 Disciplinary Tribunal—acting appointments

(1) Subject to subregulation (2), the Minister may, in writing, appoint

a person to act as the Disciplinary Tribunal:

Federal Register of Legislative Instruments F2013C00202

Chapter 20 Individual Patent Attorneys

Part 10 Administration

Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal

Regulation 20.64

168 Patents Regulations 1991

(a) during a vacancy in the office, whether or not an appointment

has been previously made to the office; or

(b) during any period, or during all periods, when the holder of

the office is, or is expected to be, absent from duty or from

Australia or is, for any reason, unable to perform the

functions of the office.

(2) A person appointed to act during a vacancy must not continue to

act for more than 12 months.

(3) A copy of the instrument of appointment must be published in the

Official Journal.

(4) The Minister:

(a) may terminate the appointment at any time; and

(b) must terminate the appointment if the person appointed fails,

without reasonable excuse, to disclose a conflict of interest in

accordance with regulation 20.64.

(5) Anything done by or in relation to a person purporting to act under

the appointment is not invalid only because:

(a) the need for the appointment had not arisen; or

(b) there was a defect or irregularity in connection with the

appointment; or

(c) the appointment had ceased to have effect; or

(d) the need to act had not arisen or had ceased.

20.64 Disclosure of interest

(1) If a person constituting, or acting as, the Disciplinary Tribunal has

or acquires an interest that could conflict with the proper

performance of his or her functions in relation to proceedings he or

she is to hear, the person:

(a) must tell the parties to the proceedings about the interest; and

(b) must not perform those functions without the consent of the

parties.

(2) If such a person is unable to perform his or her functions because

of a conflict of interest, the Minister may in writing appoint

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Individual Patent Attorneys Chapter 20

Administration Part 10

Patent and Trade Marks Attorneys Disciplinary Tribunal Division 2

Regulation 20.65

Patents Regulations 1991 169

another person to be the Disciplinary Tribunal for the purpose of

conducting or completing those proceedings.

(3) A copy of the instrument of appointment must be published in the

Official Journal.

(4) A person so appointed may exercise all the powers and must

perform all of the functions of the Disciplinary Tribunal in relation

to those proceedings.

20.65 Qualifications for appointment to, or acting as, Disciplinary

Tribunal

A person is not qualified to be appointed under subregulation

20.62(1) or 20.63(1) or 20.64(2) unless he or she is enrolled, and

has for not less than 7 years been enrolled, as a legal practitioner.

Federal Register of Legislative Instruments F2013C00202

Chapter 20A Incorporated Patent Attorney

Part 1 Introduction

Regulation 20A.1

170 Patents Regulations 1991

Chapter 20A—Incorporated Patent Attorney

Part 1—Introduction

20A.1 Application of Chapter 20A

This Chapter applies to:

(a) an incorporated patent attorney; and

(b) a company applying for registration as an incorporated patent

attorney.

20A.2 Definitions

In this Chapter:

annual registration fee means the fee set out in item 109 or 110 of

Schedule 7.

professional indemnity insurance means insurance for claims that

may be made against the company in relation to its business,

practices or acts as an incorporated patent attorney.

Federal Register of Legislative Instruments F2013C00202

Incorporated Patent Attorney Chapter 20A

Obtaining registration for first time Part 2

Regulation 20A.3

Patents Regulations 1991 171

Part 2—Obtaining registration for first time

20A.3 Form of application

An application for registration as an incorporated patent attorney

must:

(a) be in writing, in a form approved by the Designated

Manager; and

(b) be accompanied by the following evidence and material:

(i) the name of each patent attorney director of the

company;

(ii) evidence that the company is a registered company

under the Corporations Act 2001;

(iii) evidence that the company has adequate and appropriate

professional indemnity insurance; and

(c) be accompanied by the fee set out in item 108 of Schedule 7.

20A.4 Certificate of registration

If the Designated Manager registers a company as an incorporated

patent attorney, the Designated Manager must give the company a

certificate of registration as soon as practicable.

Federal Register of Legislative Instruments F2013C00202

Chapter 20A Incorporated Patent Attorney

Part 3 Maintaining registration

Regulation 20A.5

172 Patents Regulations 1991

Part 3—Maintaining registration

20A.5 Requirements for remaining on Register of Patent Attorneys

(1) To remain on the Register of Patent Attorneys, a registered

incorporated patent attorney must, for every year of registration,

pay the annual registration fee.

(2) The Designated Manager must, not later than 1 June in each year,

give to each registered incorporated patent attorney notice of the

fee that is payable.

(3) The annual registration fee is payable on 1 July each year by a

registered incorporated patent attorney:

(a) whose name is on the Register of Patent Attorneys on that

day; and

(b) that has not asked the Designated Manager, under

regulation 20A.6, to remove its name from the Register of

Patent Attorneys.

Federal Register of Legislative Instruments F2013C00202

Incorporated Patent Attorney Chapter 20A

Removal from Register of Patent Attorneys Part 4

Regulation 20A.6

Patents Regulations 1991 173

Part 4—Removal from Register of Patent Attorneys

20A.6 Voluntary removal of name from Register of Patent Attorneys

If a patent attorney director of a registered incorporated patent

attorney asks the Designated Manager, in writing, to remove the

name of the registered incorporated patent attorney from the

Register of Patent Attorneys, the Designated Manager must

comply with the request.

20A.7 Failure to pay annual registration fee

If a registered incorporated patent attorney does not pay the annual

registration fee by 31 July in the year the fee is payable, the

Designated Manager must:

(a) remove the name of the incorporated patent attorney from the

Register of Patent Attorneys; and

(b) notify, in writing, the attorney of the removal.

20A.8 Failure to maintain professional indemnity insurance

(1) If an incorporated patent attorney does not maintain adequate and

appropriate professional indemnity insurance, the Designated

Manager may remove the name of the attorney from the Register

of Patent Attorneys.

(2) If the Designated Manager removes the name of the incorporated

patent attorney from the Register of Patent Attorneys, the

Designated Manager must notify, in writing, the attorney of the

removal.

Federal Register of Legislative Instruments F2013C00202

Chapter 20A Incorporated Patent Attorney

Part 5 Discipline

Division 1 General

Regulation 20A.9

174 Patents Regulations 1991

Part 5—Discipline

Division 1—General

20A.9 Definitions

In this Part:

former attorney means a person whose registration as an

incorporated patent attorney has been suspended or cancelled under

this Part.

20A.10 Board may apply for cancellation or suspension of

incorporated patent attorney’s registration

(1) The Board may apply to the Disciplinary Tribunal to cancel or

suspend an incorporated patent attorney‟s registration if:

(a) a registered patent attorney who is, or was, an employee or

officer of the incorporated patent attorney is found guilty of

professional misconduct under subregulation 20.43(1); and

(b) the professional misconduct occurred when the registered

patent attorney was an employee or officer of the

incorporated patent attorney; and

(c) The Disciplinary Tribunal has cancelled or suspended the

patent attorney‟s registration under subregulation 20.44(1).

(2) Before applying to the Disciplinary Tribunal, the Board may

request an incorporated patent attorney to provide the Board with

information relating to the professional misconduct.

(3) In deciding whether to apply to the Disciplinary Tribunal, the

Board may consider the following:

(a) the professional misconduct engaged in by the registered

patent attorney;

(b) the behaviour of the incorporated patent attorney‟s officers

and employees;

Federal Register of Legislative Instruments F2013C00202

Incorporated Patent Attorney Chapter 20A

Discipline Part 5

General Division 1

Regulation 20A.10

Patents Regulations 1991 175

(c) whether officers and employees of the incorporated patent

attorney have complied with the Code of Conduct;

(d) any information provided under subregulation (2).

(4) An application by the Board to the Disciplinary Tribunal must:

(a) be in writing; and

(b) set out the reasons why the Board considers the incorporated

patent attorney‟s registration should be cancelled or

suspended.

(5) The Board must give the incorporated patent attorney, as soon as

practicable after the application is made to the Disciplinary

Tribunal, a copy of the application.

Federal Register of Legislative Instruments F2013C00202

Chapter 20A Incorporated Patent Attorney

Part 5 Discipline

Division 2 Proceedings in Disciplinary Tribunal

Regulation 20A.11

176 Patents Regulations 1991

Division 2—Proceedings in Disciplinary Tribunal

20A.11 Procedure of Disciplinary Tribunal

(1) The Disciplinary Tribunal may determine procedure that is not set

out in this Division.

(2) Proceedings before the Tribunal are to be conducted quickly and

informally, while allowing for proper consideration of the matter

before the Tribunal.

(3) The Tribunal is not bound by the rules of evidence but may be

informed on any matter in the manner it chooses.

(4) The Tribunal may take evidence on oath or on affirmation and, for

that purpose, may administer an oath or affirmation.

20A.12 Notification of hearing

(1) The Disciplinary Tribunal must, as soon as practicable after

receiving an application under regulation 20A.10, fix a day, time

and place to hear the application.

(2) The Disciplinary Tribunal must, as soon as practicable, notify the

incorporated patent attorney and the Board of that day, time and

place.

(3) The day of hearing must not be less than 21 days after the day the

incorporated patent attorney is notified of the day, time and place

for the hearing.

20A.13 Hearings to be public except in special circumstances

(1) A hearing before the Disciplinary Tribunal must be in public.

(2) However, if the Disciplinary Tribunal is reasonably satisfied that it

is desirable to do so, in the public interest or because of the

confidential nature of any evidence or matter, the Tribunal may:

Federal Register of Legislative Instruments F2013C00202

Incorporated Patent Attorney Chapter 20A

Discipline Part 5

Proceedings in Disciplinary Tribunal Division 2

Regulation 20A.14

Patents Regulations 1991 177

(a) direct that a hearing, or a part of a hearing, is to take place in

private and give directions as to the persons who may be

present; and

(b) give directions restricting or prohibiting the publication or

disclosure of:

(i) evidence given before the Tribunal, whether in public or

in private; or

(ii) matters contained in documents lodged with the

Tribunal or received in evidence by the Tribunal.

(3) A person commits an offence if the person:

(a) is given a direction under paragraph (2)(a) or (b); and

(b) does not comply with the direction.

Penalty: 5 penalty units.

20A.14 Representation before Disciplinary Tribunal

(1) At the hearing before the Disciplinary Tribunal, the incorporated

patent attorney must be represented by a patent attorney director of

the incorporated patent attorney or a legal practitioner.

(2) A party to proceedings before the Disciplinary Tribunal, or a

representative of the party, may request the Tribunal to summon

witnesses.

20A.15 Summoning of witnesses

(1) For the purpose of the hearing before the Disciplinary Tribunal, the

Tribunal may, by instrument in writing signed by the person

constituting the Tribunal:

(a) summon a person to appear before the Tribunal to give

evidence and to produce any documents or articles mentioned

in the summons; or

(b) summon a patent attorney director of the incorporated patent

attorney to appear before the Tribunal:

(i) to produce any documents or articles mentioned in the

summons; and

(ii) to give evidence to identify the documents or articles.

Federal Register of Legislative Instruments F2013C00202

Chapter 20A Incorporated Patent Attorney

Part 5 Discipline

Division 2 Proceedings in Disciplinary Tribunal

Regulation 20A.16

178 Patents Regulations 1991

(2) A patent attorney director who is summoned must appear in

person.

20A.16 Offences by persons appearing before Disciplinary Tribunal

(1) A person commits an offence if the person:

(a) is summoned to appear before the Disciplinary Tribunal; and

(b) does not comply with the summons by:

(i) appearing as required by the summons; and

(ii) producing documents or articles as required by the

summons; and

(iii) appearing and reporting to the Tribunal, as required.

Penalty: 10 penalty units.

(2) It is a defence to a prosecution for an offence against subregulation

(1) if:

(a) the defendant is prevented or hindered from complying with

the summons by:

(i) a circumstance mentioned in Part 2.3 of the Criminal

Code; or

(ii) any other circumstance that the Disciplinary Tribunal

reasonably considers is an impediment to the defendant

complying with the summons; or

(b) in relation to paragraph (1)(c)—the defendant is excused by

the Disciplinary Tribunal.

Note: A defendant bears an evidential burden in relation to the matters mentioned in subparagraph (2)(a)(i)(see section 13.3 of the Criminal Code).

(3) A person commits an offence if:

(a) the person:

(i) is not a patent attorney director to whom subregulation

(5) applies; and

(ii) appears as a witness before the Disciplinary Tribunal;

and

(iii) has been paid expenses and allowances; and

Federal Register of Legislative Instruments F2013C00202

Incorporated Patent Attorney Chapter 20A

Discipline Part 5

Proceedings in Disciplinary Tribunal Division 2

Regulation 20A.17

Patents Regulations 1991 179

(b) the expenses and allowances have been determined by the

Disciplinary Tribunal in accordance with Part 2 of

Schedule 8; and

(c) the person refuses:

(i) to be sworn or make an affirmation; or

(ii) to answer a question relevant to the evidence that the

person was summoned to give.

Penalty: 10 penalty units.

(4) Strict liability applies to the physical element of an offence against

subregulation (3) that is constituted by:

(a) the circumstance mentioned in subparagraph (3)(a)(i); and

(b) the circumstance mentioned in paragraph (3)(b).

Note: For strict liability, see section 6.1 of the Criminal Code.

(5) A person commits an offence if the person:

(a) is a patent attorney director who has been summoned to

appear at a hearing before the Disciplinary Tribunal; and

(b) refuses:

(i) to be sworn or to make an affirmation; or

(ii) to answer a question relevant to the evidence that the

person was summoned to give.

Penalty: 10 penalty units.

(6) It is a defence to a prosecution for an offence against subregulation

(3) or (5) if a person mentioned in the subregulation refused to

answer a question or to produce a document or article because the

answer to the question, or the document or article, may tend to

prove that the person has committed an offence against a law of the

Commonwealth or of a State or Territory.

20A.17 Protection of person constituting Disciplinary Tribunal,

witnesses etc.

(1) A person:

(a) constituting the Disciplinary Tribunal; or

Federal Register of Legislative Instruments F2013C00202

Chapter 20A Incorporated Patent Attorney

Part 5 Discipline

Division 2 Proceedings in Disciplinary Tribunal

Regulation 20A.18

180 Patents Regulations 1991

(b) appointed under subregulation 20.64(2);

has, in the exercise of the powers and the performance of the

functions of the Tribunal under this Part, the same protection and

immunity as a Justice of the High Court.

(2) A member of the Board has, in exercising a power under this Part,

the same protection and immunity as a Justice of the High Court.

(3) A legal practitioner or other person appearing before the

Disciplinary Tribunal has the same protection and immunity as a

barrister has in appearing for a party in proceedings in the High

Court.

(4) A person summoned to attend or appearing before the Disciplinary

Tribunal as a witness:

(a) has the same protection; and

(b) is, in addition to the penalties provided by this Part, subject

to the same liabilities;

as a witness in proceedings in the High Court.

20A.18 Decision of Disciplinary Tribunal

(1) After hearing an application for the cancellation or suspension of

the incorporated patent attorney‟s registration, the Disciplinary

Tribunal may:

(a) cancel the attorney‟s registration as an incorporated patent

attorney; or

(b) suspend the attorney‟s registration as an incorporated patent

attorney.

(2) The Disciplinary Tribunal may also impose conditions on the

attorney‟s return to the Register of Patent Attorneys after the

cancellation has been lifted or the period of suspension has

elapsed.

(3) In making a decision under this regulation, the Disciplinary

Tribunal may consider the following:

(a) the professional misconduct engaged in;

Federal Register of Legislative Instruments F2013C00202

Incorporated Patent Attorney Chapter 20A

Discipline Part 5

Proceedings in Disciplinary Tribunal Division 2

Regulation 20A.19

Patents Regulations 1991 181

(b) the behaviour of the incorporated patent attorney‟s officers

and employees;

(c) whether officers and employees of the incorporated patent

attorney had complied with the Code of Conduct;

(d) findings made about the conduct of the incorporated patent

attorney in any other proceedings brought before the

Disciplinary Tribunal;

(e) findings made about the conduct of the incorporated patent

attorney‟s employees and officers in any other proceedings

brought before the Disciplinary Tribunal;

(f) if the incorporated patent attorney failed, without reasonable

excuse, to provide information requested by the Board under

subregulation 20A.10(2)—the incorporate patent attorney‟s

failure to provide requested information.

20A.19 Notification and publication of decisions of Disciplinary

Tribunal

(1) The Disciplinary Tribunal must, within 14 days after making a

decision under regulation 20A.18:

(a) prepare a written statement that states:

(i) the decision of the Tribunal; and

(ii) the reasons for the decision; and

(iii) the findings on any material questions of fact; and

(iv) evidence or other material on which the findings of fact

are based; and

(b) give a copy of the statement to:

(i) the incorporated patent attorney who is the subject of

the decision; and

(ii) the Board; and

(iii) the Designated Manager; and

(c) publish, in the Official Journal, a written statement that sets

out the decision of the Tribunal.

(2) If the registration of an incorporated patent attorney is suspended,

the Designated Manager must note the suspension and its duration

in the Register of Patent Attorneys.

Federal Register of Legislative Instruments F2013C00202

Chapter 20A Incorporated Patent Attorney

Part 5 Discipline

Division 2 Proceedings in Disciplinary Tribunal

Regulation 20A.20

182 Patents Regulations 1991

(3) If the registration of an incorporated patent attorney is cancelled,

the Designated Manager must remove the name of the incorporated

patent attorney from the Register of Patent Attorneys.

20A.20 Completion of outstanding business

(1) If the Disciplinary Tribunal cancels the registration of an

incorporated patent attorney, the Tribunal may appoint a registered

patent attorney to complete the unfinished patents work of the

former attorney.

(2) If the Disciplinary Tribunal suspends the registration of an

incorporated patent attorney, the Tribunal may appoint a registered

patent attorney to carry on the former attorney‟s patents work for:

(a) the period of the suspension; or

(b) a specified period, not longer than the period of suspension.

(3) The Disciplinary Tribunal must not appoint a registered patent

attorney under subregulation (1) or (2) unless the registered patent

attorney consents to the appointment.

(4) A registered patent attorney appointed under subregulation (1) or

(2) may only act as a registered patent attorney for a client of the

former attorney if the client has given consent for the appointed

attorney to act.

20A.21 Former attorney may be required to provide assistance

(1) A registered patent attorney appointed under subregulation

20A.20(1) or (2) may, by written notice, request the former

attorney to make available the following:

(a) information about the patents work that the appointed

attorney may reasonably require;

(b) books, accounts or other documents about the patents work

that the appointed attorney may reasonably require;

(c) money held by the former attorney:

(i) on behalf of a client; or

(ii) that has been paid by a client in relation to services not

yet performed for the client.

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Incorporated Patent Attorney Chapter 20A

Discipline Part 5

Proceedings in Disciplinary Tribunal Division 2

Regulation 20A.21

Patents Regulations 1991 183

(2) A person commits an offence if the person:

(a) is a former attorney; and

(b) is given a notice under subregulation (1); and

(c) fails to comply with the notice.

Penalty: 5 penalty units.

(3) It is a defence to a prosecution for an offence against subregulation

(2) if the former attorney is prevented or hindered from complying

with a request in the notice by:

(a) a circumstance mentioned in Part 2.3 of the Criminal Code;

or

(b) any other circumstance that the Disciplinary Tribunal

reasonably considers is an impediment to the defendant

complying with the summons.

Note: A defendant bears an evidential burden in relation to the question of whether he or she has a reasonable excuse (see section 13.3 of the Criminal Code).

Federal Register of Legislative Instruments F2013C00202

Chapter 20A Incorporated Patent Attorney

Part 6 Restoring attorney‟s name to Register of Patent Attorneys

Regulation 20A.22

184 Patents Regulations 1991

Part 6—Restoring attorney’s name to Register of

Patent Attorneys

20A.22 Restoring name to Register of Patent Attorneys

(1) This regulation sets out circumstances in which the Designated

Manager must restore to the Register of Patent Attorneys the name

of an incorporated patent attorney that has been removed under:

(a) regulation 20A.6, 20A.7 or 20A.8; or

(b) subsection 201B(7) of the Act.

(2) The Designated Manager must restore the name if:

(a) the attorney requests the Designated Manager, in the form

approved by the Designated Manager, to restore the name;

and

(b) the request includes:

(i) the name of each patent attorney director of the

company; and

(ii) evidence that the company is a registered company

under the Corporations Act 2001; and

(ii) evidence that the company has adequate and appropriate

professional indemnity insurance; and

(c) the request is made:

(i) if the name was removed under regulation 20A.7—on

or before 1 September of the year that the name was

removed from the Register of Patent Attorneys, or

within a further period that the Designated Manager

allows; or

(ii) in any other case—within 3 years after the name was

removed from the Register of Patent Attorneys; and

(d) the attorney pays:

(i) the annual registration fee for the year the reinstatement

is made; and

(ii) the fee mentioned in item 111 of Schedule 7.

Federal Register of Legislative Instruments F2013C00202

Administration Chapter 21

Regulation 21.1

Patents Regulations 1991 185

Chapter 21—Administration

21.1 Patent Office and sub-offices

The hours of business of the Patent Office and each sub-office of

the Patent Office are from 9 am to 5 pm on each day other than:

(a) a Saturday or a Sunday; or

(b) a public holiday:

(i) where the Office or sub-office is located; or

(ii) for the purposes of the Australian Public Service in that

place.

21.2 Employees to whom Commissioner may delegate (Act s 209(1))

For subsection 209(1) of the Act, the Commissioner may delegate

all or any of the Commissioner‟s powers or functions under the

Act, except the powers and functions under paragraphs 210(a) and

(c) of the Act, to an employee of the Patent Office:

(a) holding, or performing the duties of, the position of

Examiner of Patents; or

(b) employed at any of the following levels:

(i) Executive level 1 or 2;

(ii) APS level 2, 3, 4, 5 or 6.

Federal Register of Legislative Instruments F2013C00202

Chapter 22 Miscellaneous

Part 1 Fees and costs

Division 1 Fees

Regulation 22.1

186 Patents Regulations 1991

Chapter 22—Miscellaneous

Part 1—Fees and costs

Division 1—Fees

22.1 Fees generally

(1) A fee must be paid in such a manner as the Commissioner

reasonably directs.

(2) If the Commissioner has directed that a complete application is to

be treated as a provisional application, the amount by which the fee

payable on the filing of a complete application exceeds the fee

payable on the filing of a provisional application must be credited

towards the payment of the fee payable on the next filing of a

complete application associated with the provisional application by

the applicant concerned.

22.2 General fees

(1) For the purposes of subsection 227(1) of the Act, there is payable

to the Commissioner in respect of a matter specified in an item of

Part 1 or 2 in Schedule 7 a fee of the amount specified in that item.

(2) The fees are payable as follows:

(a) the fee for filing an application, request or other document is

payable when the application, request or other document is

filed;

(b) the fee for appearing and being heard at an oral hearing is

payable:

(i) for the first day—immediately before the hearing; and

(ii) for each day or part of a day after the first day—

immediately after the hearing;

(ba) the fee for a hearing on the basis of written submissions only

is payable when the written submissions are filed;

Federal Register of Legislative Instruments F2013C00202

Miscellaneous Chapter 22

Fees and costs Part 1

Fees Division 1

Regulation 22.2

Patents Regulations 1991 187

(c) the fee for making a representation mentioned in item 219 or

220 of Schedule 7 is payable when the representation is

made;

(d) the fee for acceptance of a patent request and complete

specification, under section 49 of the Act, is payable when

the application is accepted;

(e) if the Commissioner decides to conduct a search as part of

the examination of a patent request and complete

specification for a standard patent, the fee is payable when

the Commissioner notifies the applicant that the fee is

payable.

(3) If an item specifies the person by whom a fee is payable, the fee is

payable by that person.

(4) For paragraph 29A(5)(b) of the Act:

(a) if a PCT application is to be treated as an application for a

standard patent:

(i) the fee specified in item 214A of Schedule 7 is payable

in respect of the application for a standard patent; and

(ii) if the PCT application was filed in the Patent Office as a

receiving office for the purposes of the PCT—the fees

specified in item 301, and items 401 to 404, of

Schedule 7 are payable in respect of the PCT

application; and

(b) the fee specified in item 203 of Schedule 7 is not payable in

respect of a PCT application.

(5) The fees specified in item 213 of Schedule 7 do not apply to:

(a) an application for a standard patent filed before the

commencement of this subregulation; or

(b) a PCT application that meets the requirements of

subsection 89(3) of the Act before the commencement of this

subregulation.

(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

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Regulation 22.2AA

188 Patents Regulations 1991

(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.

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.

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Regulation 22.2A

Patents Regulations 1991 189

22.2A Failure to pay: patent attorneys fees

The Designated Manager or the Board must not process an

application mentioned in Part 1 of Schedule 7 if the fee payable for

the application has not been paid.

22.2B Failure to pay: filing fees for patent requests

(1) This regulation applies if:

(a) a fee mentioned in item 201, 202, 203 or 206 of Schedule 7 is

not paid when it is payable; and

(b) within 1 month after the fee is payable, the Commissioner

invites the person by whom the fee is payable to pay the fee

within 2 months after the date of the invitation; and

(c) the fee is not paid within the 2 month period.

(2) The application lapses, or the patent ceases, at the end of the 2

month period.

22.2C Failure to pay: certain other filing fees etc

(1) This regulation applies if:

(a) a fee mentioned in item 204 or 205, paragraph (a) of

item 208, or item 209, 210, 214, 215, 216, 217, 218, 219,

220, 222, 224, 225, 226, 227, 228, 236, 237, 238 or 239 of

Schedule 7 is not paid when it is payable; and

(b) within 1 month after the fee is payable, the Commissioner

invites the person by whom the fee is payable to pay the fee

within 1 month after the date of the invitation; and

(c) the fee is not paid within the 1 month period.

(2) The application, representation, request or other relevant document

is taken not to have been filed or made.

22.2D Failure to pay: fees payable by patentee for requests under s

101A(b) of the Act

(1) Subregulation (2) applies if:

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Division 1 Fees

Regulation 22.2EA

190 Patents Regulations 1991

(a) a fee mentioned in item 207 of Schedule 7 is not paid when it

is payable; and

(b) within 1 month after the fee is payable, the Commissioner

invites the patentee to pay the fee within 1 month after the

date of the invitation; and

(c) the fee is not paid within the 1 month period.

(2) The innovation patent ceases at the end of the 1 month period.

(3) Subregulation (4) applies if:

(a) a fee mentioned in paragraph (b) of item 208 of Schedule 7

(the paragraph (b) fee) is not paid when it is payable; and

(b) within 1 month after the fee mentioned in paragraph (a) of

that item is paid for the request to which the paragraph (b)

fee relates, the Commissioner invites the patentee to pay the

paragraph (b) fee within 2 months after the date of the

invitation; and

(c) the fee is not paid within the 2 month period.

(4) The innovation patent ceases at the end of the 2 month period.

22.2EA Failure to pay: fee for grant of leave to amend specification

(person invited to pay)

(1) This regulation applies if:

(a) a fee mentioned in item 222A of Schedule 7 relating to a

grant of leave to amend a complete specification is not paid

when it is payable; and

(b) within 1 month after the fee first becomes payable, the

Commissioner invites the person by whom the fee is payable

to pay the fee within 2 months after the date on which notice

of the grant of leave is published under

subregulation 10.5(2); and

(c) the fee is not paid within that period of 2 months.

(2) The request for leave to amend the complete specification is taken

not to have been filed.

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Fees Division 1

Regulation 22.2F

Patents Regulations 1991 191

22.2F Consequence if Commissioner does not invite payment

(1) Subregulation (2) applies if:

(a) a fee mentioned in regulation 22.2B, 22.2C or 22.2D is not

paid when it is payable; and

(b) the Commissioner does not give the invitation mentioned in

the relevant regulation within the time allowed.

(2) The application, representation, request or other relevant document

is to be treated as if the fee had been paid when the application,

representation, request or other document was filed or made.

(3) Subregulation (4) applies if:

(a) a fee mentioned in regulation 22.2I is not paid when it is

payable; and

(b) the Commissioner does not give the invitation mentioned in

regulation 22.2I within the time allowed.

(4) The accepted application is to be treated as if the fee for acceptance

mentioned in item 213 of Schedule 7 had been paid immediately

after its acceptance.

(5) Subregulation (6) applies if:

(a) a fee mentioned in paragraph 22.2EA(1)(a) relating to a grant

of leave to amend a complete specification is not paid when

it is payable; and

(b) the Commissioner does not give the invitation mentioned in

paragraph 22.2EA(1)(b) within the time mentioned in that

paragraph.

(6) The request for leave to amend the complete specification is to be

treated as if the fee had been paid when leave was granted to

amend the complete specification.

(7) Despite subregulations (2), (4) and (6), the fee remains payable and

can be recovered as a debt due to the Commonwealth.

22.2G Failure to pay: hearing fees

(1) Subregulation (2) applies if:

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Chapter 22 Miscellaneous

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Division 1 Fees

Regulation 22.2H

192 Patents Regulations 1991

(a) the fee mentioned in item 230 of Schedule 7 is not paid when

it is payable; and

(b) within 1 month after the fee is payable, the Commissioner

invites the person making the request to pay the fee within 1

month after the date of the invitation or before the date of the

hearing, whichever is earlier; and

(c) the fee is not paid within the earlier of the periods mentioned

in paragraph (b).

(2) The request is taken not to have been made.

(3) A hearing cannot be held if the fee mentioned in item 230 of

Schedule 7 has not been paid for the hearing.

(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.

22.2H Failure to pay: certain fees for actions by Commissioner

(1) This regulation applies to a fee mentioned in item 221, 223, 229,

233, 234 or 235 of Schedule 7.

(2) The Commissioner must not process a request or application for

which such a fee is payable if the fee has not been paid.

(3) If the fee mentioned in item 223 of Schedule 7 is paid for a request,

the request is taken to have been made on the date on which the fee

was paid.

(4) If:

(a) the fee is not paid when it is payable; and

(b) the Commissioner invites the person by whom the fee is

payable to pay the fee within 1 month after the date of the

invitation; and

(c) the fee is not paid within the 1 month period;

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Fees Division 1

Regulation 22.2I

Patents Regulations 1991 193

the request or application is taken not to have been made.

22.2I Failure to pay: acceptance fee

(1) This regulation applies if:

(a) a fee for acceptance mentioned in item 213 of Schedule 7 is

not paid when it is payable; and

(b) within 1 month after the fee is payable, the Commissioner

invites the person by whom the fee is payable to pay the fee

within 3 months after the date that the notice of the

acceptance is published under paragraph 49(5)(b) of the Act;

and

(c) the fee is not paid within the 3 month period.

(2) The application lapses.

22.3 General fees for international applications

(1) If:

(a) for the purposes of the PCT, the Patent Office is:

(i) a receiving Office; or

(ii) an International Searching Authority; or

(iii) an International Preliminary Examining Authority; and

(b) the Commissioner or the Patent Office is empowered by the

PCT to charge a fee, other than a fee for the benefit of the

International Bureau;

for the purposes of subsection 227(1) of the Act, the amount of the

fee payable to the Commissioner in respect of a matter specified in

an item of Part 3 in Schedule 7 is the amount specified in that item.

(2) The fees specified in items 301 and 302 in Schedule 7 are payable

to the Commissioner within 1 month of filing an international

application.

(3) The fee specified in item 304 in Schedule 7 is payable to the

Commissioner on filing a demand for a preliminary examination

under Article 31 of the PCT.

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Chapter 22 Miscellaneous

Part 1 Fees and costs

Division 1 Fees

Regulation 22.4

194 Patents Regulations 1991

22.4 Fees for international applications payable for the benefit of the

International Bureau

(1) If, for the purposes of the PCT, the Patent Office is:

(a) a receiving Office; or

(b) an International Searching Authority; or

(c) an International Preliminary Examining Authority;

for an international application, the amounts of the international

filing fee and handling fee (payable, under the PCT, to the

Commissioner for the benefit of the International Bureau) for the

application are as set out in Part 4 of Schedule 7.

(2) The Commissioner must, in accordance with the PCT, determine

the currency in which a fee payable under this regulation is payable

and the exchange rate between Swiss currency and the currency so

determined.

(3) The Commissioner must give notice of a determination in the

Official Journal.

(4) A determination has effect on the date specified in the

determination for that purpose or on the date of notification of the

determination in the Official Journal, whichever is later.

22.5 PCT Fund

Money paid as a fee to the Commissioner under subregulation

22.4(1):

(a) must be paid into a Special Account established under

section 20 of the Financial Management and Accountability

Act 1997; and

(b) may be expended from the Special Account for the purposes

of the PCT, including the making of refunds and the

remission of fees to the International Bureau.

22.6 Exemption from fees

(1) The Commissioner may exempt a person from the payment of the

whole or any part of a fee if the Commissioner is reasonably

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Fees Division 1

Regulation 22.7

Patents Regulations 1991 195

satisfied that the action is justified, having regard to all the

circumstances.

(2) If acceptance of a patent request and complete specification for a

standard patent has been delayed because of an error or omission

on the part of an employee, the period mentioned in subregulation

(3) is not, for the purposes of ascertaining the amount of a fee, to

be taken into account.

(3) For subregulation (2), the period is the period that the

Commissioner believes, on reasonable grounds, is equal to the

period of delay that resulted from the error or omission.

22.7 Refund of certain fees

(1) Subject to subregulation (2), if:

(a) a complete application for a standard patent has been filed;

and

(b) the application is withdrawn before the specification

becomes open to public inspection;

so much of the fee paid on the filing of the application as the

Commissioner reasonably thinks fit may, on written application

made to him or her, be refunded.

(2) If the PCT requires a fee paid to the Commissioner to be refunded

in whole or in part, that fee or that part of the fee must be refunded.

(3) If:

(a) a search fee or a preliminary examination fee is payable to an

International Searching Authority or an International

Preliminary Examining Authority; and

(b) the PCT provides for the refund of the fee in whole or in part;

and

(c) that fee has been paid to the Commissioner;

he or she must determine in accordance with the PCT to what

extent that fee is to be refunded to the applicant and the fee must be

refunded accordingly.

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Chapter 22 Miscellaneous

Part 1 Fees and costs

Division 2 Costs

Regulation 22.7A

196 Patents Regulations 1991

Division 2—Costs

22.7A Proceedings to which this Division applies

This Division applies to proceedings before the Commissioner.

22.8 Costs

(1) The Commissioner must not award costs in proceedings to which

this Division applies, other than costs specified in Schedule 8,

unless each party to the proceedings has had the reasonable

opportunity to make a submission on the matter of the award of

those costs.

(2) The Commissioner may award an amount:

(a) for costs in respect of a matter specified in column 2 of an

item of Part 1 in Schedule 8; or

(b) in respect of the expenses or allowances of a person in

relation to proceedings to which this Division applies.

(2A) A party to proceedings may request taxation of an amount awarded

under subregulation (2).

(3) If a request for taxation is made, the amount must be taxed,

allowed and certified, by an employee appointed by the

Commissioner for that purpose, in accordance with:

(a) the amount specified in column 3 of that item; or

(b) Part 2 in Schedule 8;

as the case may be.

(4) A taxation is subject to review by the Commissioner.

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Other matters Part 2

Regulation 22.9

Patents Regulations 1991 197

Part 2—Other matters

22.9 Death of applicant or nominated person

The legal representative of a deceased applicant, nominated person

or patentee who wishes:

(a) in accordance with subsection 215(1) of the Act to proceed

with the application; or

(b) in accordance with subsection 215(2) of the Act to have the

patent granted to him or her; or

(c) in accordance with subsection 215(3) of the Act to have the

patent amended by substituting for the name of the patentee

the name of the person to whom the patent should have been

granted;

must file the approved form and such other documents as the

Commissioner reasonably considers necessary to support the

request.

22.10 Address for service

(1) If provision is made in an approved form to state an address for

service, the person completing the form must state:

(a) an address in Australia at which a document under the Act or

these Regulations may be given to him or her personally or to

the person specified in the form as his or her representative;

or

(b) another address in Australia to which it is practicable and

reasonable for Australia Post, or a person acting on behalf of

Australia Post, to deliver mail.

(2) A person may file notice of a change of his or her address for

service to another address that complies with paragraph (1)(a) or

(b).

(4) If a person serves a document on a person other than the

Commissioner, the first-mentioned person must, as soon as

practicable after serving the document on the other person, file a

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Regulation 22.10A

198 Patents Regulations 1991

notice of the service in the approved form together with a copy of

the document served.

22.10A Address for correspondence

(1) If provision is made in an approved form to state an address for

correspondence, the person completing the form may state an

address to which all correspondence from the Commissioner can

be sent.

(2) A person may file notice of a change of his or her address for

correspondence.

(3) The address for correspondence need not be in Australia.

22.10AA Period for doing certain acts—office not open for business

For subsection 222A(1) of the Act, the circumstance is that the act

is done at:

(a) the Patent Office; or

(b) a sub-office of the Patent Office (if any);

that was not open for business.

Note: Subsection 222A(1) provides as follows:

„(1) If the last day of a period provided by this Act (except this section) for doing an act is a day when the Patent Office, or a sub-office of the Patent Office (if any), is not open for business, the act may be done in prescribed circumstances on the next day when the office or sub-office is open for business.‟.

22.10AB Days when office not open for business

(1) For paragraph 222A(2)(a) of the Act, the days on which the Patent

Office, or a sub-office of the Patent Office (if any), is not open for

business are:

(a) Saturday; and

(b) Sunday; and

(c) Australia Day; and

(d) Anzac Day.

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Regulation 22.10AC

Patents Regulations 1991 199

(2) For paragraph 222A(2)(b) of the Act, the table sets out prescribed

persons.

Item Person

1 The Director General of IP Australia

2 The Deputy Director General of IP Australia

3 Another person who:

(a) is an SES employee of IP Australia; and

(b) acts with the agreement of the Director General of IP Australia

4 Another person who:

(a) is an SES employee of IP Australia; and

(b) acts with the agreement of the Deputy Director General of IP Australia

5 Another person who:

(a) is an SES employee of IP Australia; and

(b) acts with the agreement of another SES employee of IP Australia

Note: SES employee is explained in section 34 of the Public Service Act 1999. That meaning is applied generally to Commonwealth legislation by section 2B of the Acts Interpretation Act 1901.

(3) For paragraph 222A(2)(b) of the Act, the prescribed way of

publishing a declaration is in the Official Journal.

22.10AC Prescribed acts

For subsection 222A(7) of the Act, the following are prescribed:

(a) lodging a return under section 76A of the Act;

(b) an act done in relation to proceedings in a court or a tribunal;

(c) an act done under Chapter 20.

22.11 Extension of time

(1) For the purposes of subsection 223(2) or (2A) of the Act, an

application for an extension of time must be in the approved form

and have with it a declaration setting out the grounds on which the

application is made.

(1A) Subregulation (1B) applies if:

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Regulation 22.11

200 Patents Regulations 1991

(a) an application for an extension of time for doing a relevant

act is made under subsection 223(2) of the Act; and

(b) the relevant act has not been done; and

(c) a notice of opposition to the grant of the application is filed.

(1B) If the Commissioner grants the application, the Commissioner

must extend the time to include the period from the day on which

the notice of opposition is filed to the end of:

(a) if an application is made to the AAT for a review of a

decision of the Commissioner—the day when the application

is withdrawn or finally dealt with or determined; or

(b) in any other case—21 days after the end of the day on which

the Commissioner decides the application.

(1C) For paragraph 223(2A)(b) of the Act the prescribed period is 2

months after the circumstance that prevented the person from

doing the relevant act within the time required ceases to exist.

(1D) For subsection 223(2B) of the Act the prescribed period is 12

months after the end of the time within which the act is required to

be done.

(2) Notice of the grant of an extension of time must be published in the

Official Journal.

(3) For subsection 223(4) and paragraph 223(9)(b) of the Act:

(a) the payment of a continuation fee or a renewal fee within the

6 month period mentioned in subregulation 13.3(1A) or

13.6(2) is a prescribed relevant act; and

(b) the prescribed circumstances are that the fee is not paid

within that 6 month period mentioned in subregulation

13.3(1A) or 13.6(2).

(4) For the definition of relevant act in subsection 223(11) of the Act,

the following are prescribed:

(a) an action mentioned in Chapter 5, other than an action or step

taken under regulation 5.4, 5.5, 5.10 or 5.11;

(b) filing, during the term of a standard patent under

subsection 71(2) of the Act, an application under

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Regulation 22.12

Patents Regulations 1991 201

subsection 70(1) of the Act for an extension of the term of

the patent;

(c) an action mentioned in Chapter 20.

22.12 Evidence

(1) If evidence is given in writing to the Commissioner or to the

Disciplinary Tribunal for the purposes of the Act or these

regulations, the evidence must be in the form of a declaration.

(2) The Commissioner may:

(a) require a person who has made a declaration to appear before

him or her to give evidence orally on oath in substitution for,

or addition to, the evidence contained in the declaration; and

(b) allow the person to be cross-examined on the declaration.

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.

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Chapter 22 Miscellaneous

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Regulation 22.14

202 Patents Regulations 1991

22.14 Directions not otherwise prescribed

If the Commissioner reasonably believes that it is necessary for the

proper prosecution or completion of proceedings for a person to

perform an act, file a document or produce evidence that is not

provided for by the Act or these Regulations, the Commissioner

may give notice to the person requiring him or her to perform the

act, file the document or produce the evidence, specified in the

notice.

22.15 Documents in English and English translations

(1) An abstract that is filed must be in English.

(2) A document required to be in an approved form that is filed must

be in English.

(3) If any other document is filed:

(a) the document must be in English; or

(b) the document must be filed with:

(i) a translation of the document into English; and

(ii) a related certificate of verification.

(4) However, this regulation does not apply to documents relating to a

basic application that are prescribed under subsection 43AA(1) of

the Act.

Note: For a list of these documents, see subregulation 3.14B(1).

22.16 Documents other than specifications and abstracts

(1) In this regulation:

document does not include:

(a) a patent request for a standard patent; or

(b) a patent request for an innovation patent; or

(c) a specification; or

(d) an abstract.

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Regulation 22.17

Patents Regulations 1991 203

(2) If a document received at the Patent Office does not substantially

comply with regulation 22.15 or Schedule 3, or is not in

accordance with whichever approved form is applicable, the

Commissioner may treat the document:

(a) as not having been filed and notify the person from whom it

was received, including in the notification a statement

indicating how the document or form does not so comply or

accord; or

(b) as having been filed, but direct the person from whom it was

received to do such things as are necessary to ensure that the

document will so comply or accord.

(4) If the Commissioner gives a direction under paragraph (2)(b) and

the person to whom the direction was given does not comply with

that direction within 2 months from the day when it was given, the

Commissioner must treat the document as not having been filed.

(5) Chapter 10 does not apply to a document to which this regulation

applies.

22.17 Incapacity of certain persons

(1) In this regulation:

mental dysfunction means a disturbance or defect, to a severely

disabling degree, of perceptual interpretation, comprehension,

reasoning, learning, judgment, memory, motivation, or emotion.

(2) If a person is incapable of doing anything required or permitted by

the Act or these Regulations to be done because of infancy or of

mental dysfunction or physical disability or disease, a court may,

on the application of a person acting on behalf of the incapable

person or of another person interested in the doing of the thing:

(a) do that thing; or

(b) appoint a person to do the thing;

in the name, and on behalf, of the incapable person.

(3) A thing done in the name of, and on behalf of, an incapable person

is taken to have been done by that person as if the person had not

been incapable when the thing was done.

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Chapter 22 Miscellaneous

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Regulation 22.18

204 Patents Regulations 1991

22.18 Destruction of documents

(1) The Commissioner may order the destruction of documents

relating to applications filed not less than 25 years before the date

of the order.

(2) Subregulation (1) does not authorise the destruction of:

(a) the Register; or

(b) documents relating to patents in force; or

(c) documents considered by the Commissioner, or the

Director-General of the Australian Archives, to be of legal or

historical interest.

22.19 Copies of certain documents to be supplied

A copy of a document that:

(a) affects the ownership of a patent or licence; and

(b) has been witnessed;

must be filed by a person who seeks to have the Commissioner

consider the document for the purposes of the Act or these

regulations.

22.20 International applications and the Patent Office

If, for the purposes of the PCT, the Patent Office is:

(a) a receiving Office; or

(b) an International Searching Authority; or

(c) an International Preliminary Examining Authority;

the Commissioner and the Patent Office may perform the functions

under the PCT of a receiving Office, an International Searching

Authority or an International Preliminary Examining Authority, as

the case requires, in relation to an international application.

22.21 Protection or compensation of certain persons

(1) The following provisions of this regulation are prescribed for

subsections 41(4), 150(4) and 223(9) of the Act.

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Regulation 22.22

Patents Regulations 1991 205

(2) Persons who availed themselves of or exploited, or took definite

steps by contract or otherwise to avail themselves of or exploit,

inventions:

(a) in the case of inventions to which subsection 41(4) of the Act

applies—in the period mentioned in paragraph 41(4)(c) of the

Act; and

(b) in the case of inventions to which subsection 150(4) of the

Act applies—after the lapse of the applications and before the

day on which their restoration was notified in the Official

Journal; and

(c) in the case of inventions to which subsection 223(9) of the

Act applies—within the period of time extended under that

subsection;

may apply, in the approved form, to the Commissioner for the

grant of licences to exploit the inventions.

(3) The Commissioner must give a copy of the application to:

(a) a person whose application was restored under section 150 of

the Act; or

(b) a patent applicant or patentee of the application or patent for

which an extension of time was granted under section 223 of

the Act; or

(c) the patent applicant or patentee of the application or patent to

which subsection 41(4) of the Act applies;

and to any other person the Commissioner believes to have an

interest in the application.

(4) A person mentioned in subregulation (3) may oppose the grant of

the licence to which the application relates.

(5) The Commissioner, if reasonably satisfied that the application

should be granted, must grant a licence to the applicant on such

terms as the Commissioner thinks reasonable.

22.22 Exercise of discretionary powers by Commissioner

(1) The Commissioner must give a person an opportunity to be heard

before exercising a discretionary power under the Act or these

Regulations adversely to the person.

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Chapter 22 Miscellaneous

Part 2 Other matters

Regulation 22.23

206 Patents Regulations 1991

Note: See section 216 of the Act for a similar provision.

(2) The Commissioner must give the person an opportunity to be heard

by:

(a) asking the person for written submissions; or

(b) notifying the person that, on request to the Commissioner,

the person may be heard by way of an oral hearing on a date,

and at a time and place, determined by the Commissioner; or

(c) notifying the person of the date, time and place of an oral

hearing.

(3) The Commissioner may exercise the discretionary power if the

person:

(a) notifies the Commissioner that the person does not want to be

heard; or

(b) does not file written submissions if requested under

subregulation 22.23(1); or

(c) does not attend an oral hearing if notified under

subregulation 22.23(2).

(4) If the Commissioner exercises discretionary power in any of the

circumstances mentioned in subregulation (3), the Commissioner

must notify the person of the Commissioner‟s decision.

22.23 Written submissions and oral hearings

Written submissions

(1) If the Commissioner decides that a person may be heard by way of

written submissions, the Commissioner must:

(a) notify the person of the period in which the submissions must

be filed (being at least 10 business days); and

(b) determine the matter after considering the written

submissions; and

(c) notify the person of the Commissioner‟s decision in relation

to the exercise of the discretionary power.

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Miscellaneous Chapter 22

Other matters Part 2

Regulation 22.24

Patents Regulations 1991 207

Oral hearings

(2) If the Commissioner decides that a person may be heard by way of

an oral hearing, the Commissioner must give notice of the date,

time and place of the hearing, to the person, at least 10 business

days before the day the hearing is to begin.

(3) The Commissioner may adjourn an oral hearing from time to time

or from place to place by notifying the person.

(4) The Commissioner may hold an oral hearing in which:

(a) a person appears in person; or

(b) a person participates by telephone or other means of

telecommunications that the Commissioner reasonably

allows.

(5) In addition to the Commissioner‟s other powers, the Commissioner

may direct a person to provide a written summary of submissions.

(6) The Commissioner must notify a person who appears at the hearing

of the Commissioner‟s decision in relation to the exercise of the

discretionary power.

22.24 Practice and procedure other than for opposition proceedings

(1) Subject to these Regulations:

(a) if the Act or these Regulations authorise the Commissioner to

hear and decide an application or matter that is not an

opposition; or

(b) in a matter being decided on the motion of the

Commissioner;

the practice and procedure to be followed for the purposes of

enabling the application or matter to be decided is to be determined

by him or her.

(2) A person to be heard at a hearing may apply to the Commissioner

in respect of the practice and procedure in relation to the hearing to

be determined by the Commissioner.

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Chapter 22 Miscellaneous

Part 2 Other matters

Regulation 22.25

208 Patents Regulations 1991

22.25 Requirements cannot be complied with for reasonable cause

If, under these Regulations, a person is required to:

(a) sign a document, make a declaration or file or give the

Commissioner a document or evidence; and

(b) the Commissioner is reasonably satisfied that the person

cannot comply with the requirement;

the Commissioner may, subject to such conditions as he or she

reasonably directs, dispense with the requirement.

22.26 Review of decisions

(1) In this regulation:

decision has the same meaning as in the Administrative Appeals

Tribunal Act 1975.

(2) Application may be made to the AAT for review of a decision of:

(a) the Commissioner under the following provisions:

(i) paragraph 3.24(1)(b) („Commissioner may request

samples and viability statement‟);

(ii) subregulation 3.25(2) („request for Commissioner‟s

certificate authorising release of sample of a

micro-organism‟);

(iia) paragraph 4.3(2)(b) („prescribed documents: public

inspection‟);

(iii) subregulation 5.5(3) („dismissal of opposition‟);

(iv) subregulation 5.6(3) („determination of opposition‟);

(v) subparagraph 6.2(1)(b)(ii) („prescribed period: grant of

standard patent‟);

(vaa) regulation 10.7 („correction of register or patent‟),

except subregulations 10.7(3), (7) or (8);

(va) subregulation 13.4(3);

(vi) subregulation 22.21(5) („protection or compensation of

certain persons‟); or

(b) the Board under the following provisions:

(i) regulation 20.5 („evidence of academic qualifications‟);

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Miscellaneous Chapter 22

Other matters Part 2

Regulation 22.26

Patents Regulations 1991 209

(ii) regulation 20.7 („evidence of knowledge requirements‟);

or

(c) the Designated Manager under the following provisions:

(i) regulation 20.28 („failure to comply with continuing

professional education requirements‟);

(ii) regulation 20.28B (suspension of registration—serious

offence);

(iii) subregulation 20.29(3) (imposing a condition when

restoring attorney‟s name to Register of Patent

Attorneys);

(iv) regulation 20.31 („returning to Register of Patent

Attorneys in other circumstances);

(v) regulation 20A.8 (failing to maintain professional

indemnity insurance); or

(d) the Disciplinary AAT under the following provisions:

(i) regulation 20.43 („decision of Disciplinary AAT‟);

(ii) regulation 20.44 („penalties—professional

misconduct‟);

(iii) regulation 20.45 („penalties—unsatisfactory

professional conduct‟);

(iv) regulation 20.46 („finding that attorney was unqualified

at time of registration‟);

(v) regulation 20.47 („finding that registration obtained by

fraud‟);

(vi) regulation 20A.18 (decision of Disciplinary Tribunal).

(3) If the Commissioner gives a person affected by a decision referred

to in subregulation (2) written notice of the making of the decision,

the notice must include a statement to the effect that, subject to the

Administrative Appeals Tribunal Act 1975, application may be

made to the AAT for review of that decision by or on behalf of the

person whose interests are affected by it.

(4) Failure to comply with subregulation (3) in relation to a decision

does not affect the validity of the decision.

(5) If the AAT reviews a decision of the Commissioner under

subsection 224(1) of the Act and the decision is not affirmed, the

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Chapter 22 Miscellaneous

Part 2 Other matters

Regulation 22.27

210 Patents Regulations 1991

Commissioner must publish a notice of the decision of the AAT in

the Official Journal.

22.27 Documents not to infringe copyright—prescribed documents

(1) For paragraph 226(2)(c) of the Act, the following documents are

prescribed:

(a) a document open to public inspection under Chapter 4 of the

Act;

(b) a document open to public inspection under these

Regulations.

(2) However, a journal, book or catalogue is not prescribed if:

(a) it is provided for prosecution, examination or proceedings in

relation to a patent application, or subsequent patent; and

(b) a right subsisting in the journal, book or catalogue under the

Copyright Act 1968 is held by a party other than the patent

applicant, patentee or another person who has filed a

document for the application or patent.

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Transitional and savings provisions Chapter 23

General Part 1

Regulation 23.1

Patents Regulations 1991 211

Chapter 23—Transitional and savings

provisions

Part 1—General

23.1 Saving: prohibition orders

Subsection 4(2) of the 1952 Act continues in force.

23.2 Delegation: certain matters referred to in this Chapter

Section 11 of the 1952 Act continues on and after the commencing

day in respect of the exercise by the Commissioner of his or her

powers and functions in relation to the operation of:

(a) subsection 234(3) of the Act; or

(b) a following provision of this Chapter.

23.3 Opposition to grant: practice and procedure

(1) Division 1 of Part XIV and regulations 82 and 83A of the former

patents Regulations continue to apply in relation to opposition to

the grant of a standard patent on an application:

(a) to which subsection 234(3) of the Act refers; and

(b) acceptance of which has been advertised under the 1952 Act.

(2) Chapter 5 of these Regulations does not apply to opposition to an

application to which subregulation (1) applies.

(3) Chapter 5 of these Regulations applies to opposition to an

application:

(a) to which subsection 234(3) of the Act refers; and

(b) of which advertisement of acceptance has taken place under

the Act.

23.4 Certain opposition: practice and procedure

(1) If, before the commencing day:

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Regulation 23.5

212 Patents Regulations 1991

(a) a matter is advertised in the Official Journal; or

(b) a document is served on a person;

to enable opposition proceedings to be taken, other than in relation

to the grant of a standard patent:

(c) the following provisions of the 1952 Act continue to apply:

(i) sections 82, 83, 84, 85 and 94;

(ii) subsections 160(5) and (6); and

(d) the following provisions of the former patents Regulations

continue to apply:

(i) regulations 36, 39B, 39C, 39D, 48, 49, 50, 51, 52, 76,

77, 78, 82, 83A and 92;

(ii) Divisions 1 and 2 of Part XIV.

(2) If provisions specified in subregulation (1) continue to apply, the

following provisions do not apply to the opposition referred to in

that subregulation:

(a) sections 104 and 223 of the Act;

(b) Chapter 5 and regulations 22.21, 22.22 and 22.23 of these

Regulations.

23.5 Fees payable for certain matters relating to opposition

The fee payable in respect of opposition proceedings of the kind

mentioned in regulation 23.3 or 23.4 is the fee that would have

been payable if these Regulations applied to those proceedings.

23.6 Certain delegations: opposition

The delegation of a person who, before the commencing day, was:

(a) the delegate of the Commissioner under the 1952 Act; and

(b) exercising the powers of the Commissioner in relation to a

matter to which regulation 23.3 or 23.4 applies;

continues in relation to the matter.

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Transitional and savings provisions Chapter 23

General Part 1

Regulation 23.7

Patents Regulations 1991 213

23.7 Certain undertakings

If an undertaking referred to in paragraph 3.25(4)(c) is given in

respect of an application lodged under the 1952 Act, the reference

to Chapter 5 of the Act in subparagraph 3.25(4)(c)(i) includes a

reference to Part V of the 1952 Act.

23.8 Restoration of lapsed applications or ceased patents

(1) If, before the commencing day:

(a) an application lapses under:

(i) section 47C or 47D of the 1952 Act; or

(ii) subregulation 7B(4) or (5) of the former patents

Regulations; or

(b) a patent ceases because of failure to pay a prescribed fee

within the prescribed time;

and an application is made for the restoration of the lapsed

application or ceased patent, as the case may be, under:

(c) subsection 47E(2) or 97(1) of the 1952 Act; or

(d) subregulation 7B(6) of the former patents Regulations;

section 47E, subsection 97(2) or (3) or section 98 of the 1952 Act

or the prescribed provisions of the former patents Regulations, as

the case requires, continues to apply in relation to that lapsed

application or ceased patent and the corresponding provisions of

the Act and these Regulations do not so apply.

(2) There is payable to the Commissioner in respect of a lapsed

application or ceased patent to which subregulation (1) applies a

fee of the amount specified in column 3 of item 8 of Part 1 in

Schedule 2 to the former patents Regulations.

(3) In subregulation (1), prescribed provisions means:

(a) regulations 16D, 16E, 16F, 41, 42, 43, 44, 82, 83A, 92; or

(b) Division 1 of Part XIV.

23.9 Certain continuation and renewal fees

(1) If, before the commencing day:

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Regulation 23.10

214 Patents Regulations 1991

(a) the second year after lodgment of a complete specification

ends; and

(b) the continuation fee prescribed in respect of that year in

relation to the specification is payable but has not been paid;

item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in

respect of the second anniversary.

(2) If, before the commencing day:

(a) the second year of a patent ends; and

(b) the renewal fee prescribed in respect of that year in relation

to the patent is payable but has not been paid;

item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in

respect of the second anniversary.

23.10 Fee taken to have been paid

If:

(a) in respect of the lodging of an application for an extension of

time, a fee specified in item 27 of Part 1 in Schedule 2 to the

former patents Regulations is paid in respect of a period

referred to in subsection 54(1B) of the 1952 Act; and

(b) the application has not been accepted before the commencing

day; and

(c) the applicant is required to pay the fee specified in item 22 of

Part 2 in Schedule 7 to these Regulations in relation to the

application;

the fee under item 22 is taken to have been paid in respect of the

period referred to in paragraph (a).

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

(1) If:

(a) a product to which section 117 of the Act applies is supplied

by a person to another person before the commencing day;

and

(b) the supply would not have infringed a patent under the 1952

Act before the commencing day; and

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Regulation 23.12

Patents Regulations 1991 215

(c) the first-mentioned person supplies the product to another

person after the commencing day;

section 117 of the Act does not apply to the supply referred to in

paragraph (c).

(2) In subregulation (1), a reference to the first-mentioned person

includes:

(a) on the death of the person—the legal personal representative

of the estate of the person who has died; or

(b) if the person becomes bankrupt—the person who becomes,

under the Bankruptcy Act 1966, the trustee in bankruptcy of

the estate of the first-mentioned person; or

(c) if a body corporate is being wound up—the person appointed

to be the liquidator of the body corporate; or

(d) if the person agrees to dispose of a business relating to the

supply of the product—a person who acquires that business,

whether from the first-mentioned person or from some other

person.

23.12 Certain withdrawn, abandoned or refused applications

(1) On and after the commencing day, section 142AA of the 1952 Act

continues to apply to an application referred to in

subsection 234(2) of the Act.

(2) Section 96 of the Act does not apply to an application to which

subregulation (1) applies.

23.13 Certain certificates of validity

If:

(a) a court certifies under section 169 of the 1952 Act in relation

to the validity of a patent or of a claim; and

(b) the validity of the patent or claim is disputed on or after the

commencing day;

the certificate referred to in paragraph (a) is taken to have been

issued under subsection 19(1) of the Act.

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Regulation 23.14

216 Patents Regulations 1991

23.14 Certain action under the 1952 Act

If:

(a) a provision of the Act requires an act to be done under that or

another particular provision of the Act; and

(b) the act was done under a corresponding provision of the 1952

Act;

that act is taken to have been done under the provision referred to

in paragraph (a) under which the act is required to be done.

23.15 Amendment of petty patents

The complete specification of a petty patent granted under

section 62A of the 1952 Act cannot be amended under the Act so

as to include more than 1 claim.

23.16 Certain applications under 1952 Act: time for acceptance

(1) This regulation applies to an invention referred to in paragraph

45(1)(b) or 48(1)(a) of the Act that is, so far as claimed in any

claim, the subject of:

(a) a claim of the complete specification in relation to an

application for a standard patent referred to in

subparagraph 48(3)(a)(i) of the 1952 Act; or

(b) the claim of the complete specification in relation to an

application for a petty patent referred to in subparagraph

48(3)(a)(ii) of the 1952 Act;

the priority date of which is earlier than the priority date of the

first-mentioned claim.

(2) If, under paragraph 45(1)(b) or 48(1)(a) of the Act, the

Commissioner reports that the first-mentioned claim in

subregulation (1) is a claim the priority date of which is later than

the priority date of the claim referred to in paragraph (1)(a) or (b),

he or she may defer acceptance of the application and complete

specification until the end of 3 months after:

(a) the date on which a patent was sealed on the application

referred to in paragraph (1)(a) or (b); or

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Regulation 23.17

Patents Regulations 1991 217

(b) the date on which that application lapsed or was withdrawn

or refused.

23.17 PCT applications to which subsection 89(5) of the Act does not

apply

Subsection 89(5) of the Act does not apply to an application:

(a) to which subsection 234(2) of the Act applies; and

(b) that is a PCT application in respect of which Australia has

been elected under Chapter II of the PCT within the period

specified in Article 39 of the PCT; and

(c) in respect of which a filed Preliminary Examination Report

made under the PCT reports that an amendment to the

application goes beyond the disclosure in the relevant

international application that has been filed.

23.18 Certain priority dates: saving

In the case of a claim of a specification:

(a) relating to a further application for a standard patent or for a

petty patent under section 51 of the 1952 Act in respect of an

invention disclosed in a provisional specification under that

Act; or

(b) to which subsection 45(2), (3), (3A) or (4A) of the 1952 Act

applies; or

(c) to which subsection 191(8) of the Statute Law

(Miscellaneous Amendments) Act (No. 1) 1982 applies;

the priority date is determined under section 45 of the 1952 Act or

subsection 191(8) of the Statute Law (Miscellaneous Amendments)

Act (No. 1) 1982, as the case requires.

23.25 Fees

(1) In this regulation:

continuation fee means a continuation fee for the purposes of

section 47D of the 1952 Act.

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Chapter 23 Transitional and savings provisions

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Regulation 23.26

218 Patents Regulations 1991

renewal fee means a renewal fee for the purposes of

subsection 68(2) of that Act.

(2) Subregulation 22.2(1) does not apply in respect of:

(a) a continuation fee in respect of a year; or

(b) a renewal fee in respect of a year of a patent;

that ends on or after the commencing day, if the fee became

payable, and was paid, before that day.

(3) If an application for a standard patent was accepted under

section 52 or 52D of the 1952 Act before the commencing day, the

fee payable for the sealing of that patent is the fee that was

applicable to the sealing of the patent immediately before that day.

(4) In the case of a PCT application, if:

(a) a continuation fee in respect of an anniversary that occurs

within the period of 9 months immediately preceding the

commencing day; and

(b) the continuation fee is not paid in the period referred to in

subregulation 13.3(1) but is paid within 9 months after the

anniversary concerned;

the prescribed period referred to in subregulation 13.3(1) is

extended to the day on which the fee is paid.

23.26 Certain actions and proceedings

(1) The 1952 Act applies to an action or proceeding made or started

under that Act and not finally dealt with or determined before the

commencing day:

(a) in which the validity of a patent is disputed; or

(b) concerning infringement of a patent.

(2) The 1952 Act applies to an action or proceeding in which the

validity of a patent granted under the Patents Act 1990 on an

application made under the 1952 Act is disputed.

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Transitional and savings provisions Chapter 23

General Part 1

Regulation 23.32

Patents Regulations 1991 219

23.32 Transitional: priority date and date of patent for innovation

patent application that is a divisional application of a

petty patent or petty patent application

(1) For an innovation patent that is a divisional application of a petty

patent or a petty patent application under section 39 of the old Act:

(a) the priority date of the innovation patent is the date that

would have been the priority date of the application under

paragraph 3.12(1)(c) of the old Regulations if the innovation

patent application had been filed as a divisional application

under section 39 of the old Act; and

(b) the date of the innovation patent is the date that would have

been the date of the patent under paragraph 6.3(1)(f) or (g) of

the old Regulations if the innovation patent application had

been filed as a divisional application under section 39 of the

old Act.

(2) In this regulation:

old Act means the Patents Act 1990 as in force immediately before

the commencement of the Patents Amendment (Innovation

Patents) Act 2000.

old Regulations means the Patents Regulations 1991 as in force

immediately before the commencement of the Patents Amendment

(Innovation Patents) Act 2000.

23.33 Transitional: examination of innovation patents converted

from petty patent applications

(1) This regulation applies if:

(a) an innovation patent has been granted; and

(b) the application for the innovation patent was converted from

an application for a petty patent; and

(c) the Commissioner had begun to consider the petty patent

application, or had begun to make any investigations in

relation to the petty patent application, under section 50 of

the old Act; and

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Chapter 23 Transitional and savings provisions

Part 1 General

Regulation 23.34

220 Patents Regulations 1991

(d) the innovation patent is to be examined under Part 1 of

Chapter 9A of the Act.

(2) In examining the innovation patent, the Commissioner is not

required to consider the results of:

(a) the consideration of the petty patent application; or

(b) any investigations made in relation to the petty patent

application.

(3) In this regulation:

old Act means the Patents Act 1990 as in force immediately before

the commencement of the Patents Amendment (Innovation

Patents) Act 2000.

23.34 Transitional: certain PCT applications

(1) This regulation applies to a PCT application that:

(a) is made on or after the commencement day; and

(b) would, if the old Act applied to the application, be an

application to which paragraph 88(2)(a) of the old Act

applied.

(2) The application is to be treated as an application for a standard

patent.

(3) In this regulation:

commencement day means the day the Patents Amendment

(Innovation Patents) Act 2000 commences.

old Act means the Patents Act 1990 as in force immediately before

the commencement of the Patents Amendment (Innovation

Patents) Act 2000.

23.35 Transitional: payment of fees for petty patents

(1) This regulation makes provision in respect of the payment of fees

payable for petty patents to which the old Act applies under Part 1

of Schedule 2 to the Patents Amendment (Innovation Patents) Act

2000.

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General Part 1

Regulation 23.35

Patents Regulations 1991 221

(2) Subregulations (3) and (4) apply to an application for which the fee

mentioned in item 13 of Part 2 of Schedule 7 to the old Regulations

is payable.

(3) If:

(a) the fee is not paid when the application is made; and

(b) within 1 month after the application is made, the

Commissioner invites the person by whom the fee is payable

to pay the fee within 1 month after the date of the invitation;

and

(c) the fee is not paid within the 1 month period;

the application is taken not to have been made.

(4) If the fee is paid, the application is taken to have been made on the

date on which the fee was paid.

(5) Subregulations (6), (7) and (8) apply to a request for which the fee

mentioned in paragraph (b) of item 15 of Part 2 of Schedule 7 to

the old Regulations is payable.

(6) The Commissioner must not process the request if the fee has not

been paid.

(7) If:

(a) the fee is not paid when the request is made; and

(b) within 1 month after the request is made, the Commissioner

invites the person by whom the fee is payable to pay the fee

within 1 month after the date of the invitation; and

(c) the fee is not paid within the 1 month period;

the request is taken not to have been made.

(8) If the fee is paid, the request is taken to have been made on the date

on which the fee was paid.

(9) In this regulation:

old Act means the Patents Act 1990 as in force immediately before

the commencement of the Patents Amendment (Innovation

Patents) Act 2000.

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Chapter 23 Transitional and savings provisions

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Regulation 23.35

222 Patents Regulations 1991

old Regulations means the Patents Regulations 1991 as in force

immediately before the commencement of the Patents Amendment

(Innovation Patents) Act 2000.

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Transitional and savings provisions Chapter 23

Amendments made by particular instruments Part 2

Regulation 23.36

Patents Regulations 1991 223

Part 2—Amendments made by particular

instruments

23.36 Amendments made by Intellectual Property Legislation

Amendment (Raising the Bar) Regulation 2013 (No. 1)

(1) The amendments of these Regulations made by the items of

Schedule 1 to the Intellectual Property Legislation Amendment

(Raising the Bar) Regulation 2013 (No. 1) apply as set out in the

following table.

Transitional provisions

Item Column 1

The amendments made

by:

Column 2

apply in relation to:

1 item 1 the matters referred to in subitem 55(1) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

2 item 2 the matters referred to in subitem 55(9) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

3 item 3 the matters referred to in subitem 55(1) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

4 item 5 the matters referred to in subitem 55(4) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

5 items 6, 7 and 8, in their

application to the

re-examination of a

standard patent

the matters referred to in subitem 55(5) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

6 items 6, 7 and 8, in their

application to the

re-examination of an

innovation patent

the matters referred to in subitem 55(7) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

7 item 9 the matters referred to in subitem 55(9) of

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Chapter 23 Transitional and savings provisions

Part 2 Amendments made by particular instruments

Regulation 23.36

224 Patents Regulations 1991

Transitional provisions

Item Column 1

The amendments made

by:

Column 2

apply in relation to:

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

8 item 10, new

subregulation 10.3(1)

a provisional specification filed on or after

15 April 2013

9 item 10, new

subregulation 10.3(2)

the matters referred to in subitem 55(9) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012, but

treating the first reference to a complete

specification in that subitem as a reference to an

abstract

10 item 11 the matters referred to in subitem 55(9) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

11 item 12 the matters referred to in subitem 55(4) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

12 item 13 the matters referred to in subitem 55(8) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

13 items 15, 16, 17, 18 and

20

the matters referred to in subitem 55(3) of

Schedule 1 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

(2) The amendments of these Regulations made by the items of Part 1

of Schedule 3 to the Intellectual Property Legislation Amendment

(Raising the Bar) Regulation 2013 (No. 1) apply as set out in the

following table.

Transitional provisions

Item Column 1

The amendments made

by:

Column 2

apply in relation to:

1 item 2 (new

regulation 5.3)

an opposition proceeding commenced before

15 April 2013

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Amendments made by particular instruments Part 2

Regulation 23.36

Patents Regulations 1991 225

Transitional provisions

Item Column 1

The amendments made

by:

Column 2

apply in relation to:

2 item 2 (new

subregulations 5.9(1) to

(5)) and item 9 (new

item 218 of Schedule 7)

an opposition proceeding commenced before

15 April 2013 in which an extension of time is

requested for a period that commences on or

after 15 April 2013

However:

(a) a reference in subregulation 5.9(1) to

regulation 5.8 is taken to be a reference to

regulation 5.8 as in force immediately before

15 April 2013; and

(b) paragraph 5.10(1)(b) and subregulation

5.10(2), as in force immediately before

15 April 2013, are taken not to apply

3 item 2 (new

regulation 5.20)

an opposition proceeding commenced before

15 April 2013 in which the Commissioner has

not set a hearing date, or issued a notice of

hearing to the parties, before 15 April 2013

However:

(a) a reference in that regulation to

regulation 5.26 is taken to be a reference to

regulation 5.15 as in force immediately

before 15 April 2013; and

(b) a reference in that regulation to Part 5.4 is

taken to be a reference to regulation 5.5 as in

force immediately before 15 April 2013; and

(c) a reference in that regulation to

regulation 5.19 is taken to be a reference to

regulation 5.6 as in force immediately before

15 April 2013; and

(d) regulation 5.12, as in force immediately

before 15 April 2013, is taken not to apply

4 items 2, 7 and 9 an opposition proceeding commenced by the

filing of a notice of opposition on or after

15 April 2013

However, if:

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Chapter 23 Transitional and savings provisions

Part 2 Amendments made by particular instruments

Regulation 23.36

226 Patents Regulations 1991

Transitional provisions

Item Column 1

The amendments made

by:

Column 2

apply in relation to:

(a) an amendment was advertised under

regulation 10.5 before 15 April 2013; and

(b) a notice of opposition is filed for

subsection 104(4) of the Act on or after

15 April 2013;

the reference in subregulation 5.10(1) to 2

months is taken to be a reference to 3 months

Also, if:

(a) an opposition proceeding was commenced

by the filing of a notice of opposition before

15 April 2013; and

(b) a document or evidence was not served in

relation to the opposition proceeding before

15 April 2013; and

(c) the document or evidence is required to be

served on or after 15 April 2013;

then:

(d) a requirement in Chapter 5, or

regulation 22.21, as in force immediately

before 15 April 2013, for a party to serve a

document or evidence on a person is taken to

be a requirement to file the document or

evidence; and

(e) a reference to a document or evidence

having been served is taken to be a reference

to the document or evidence having been

filed; and

(f) the Commissioner must give a copy of the

document or evidence to the person; and

(g) if:

(i) under Chapter 5, as in force

immediately before 15 April 2013, a

period for the person to do an action

was calculated from the date that a

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Transitional and savings provisions Chapter 23

Amendments made by particular instruments Part 2

Regulation 23.36

Patents Regulations 1991 227

Transitional provisions

Item Column 1

The amendments made

by:

Column 2

apply in relation to:

party served the document or

evidence; and

(ii) the Commissioner does not give the

document or evidence to the person

on the filing date;

the Commissioner must extend the period

for the person to do the action by a number

of days equal to the number of days between

when the document or evidence was filed

and when the Commissioner gave the

document or evidence to the person

5 item 3 (new

regulation 6A.1)

the matters referred to in subitem 32(3) of

Schedule 3 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

6 item 3 (new

regulation 6A.2)

the matters referred to in subitem 32(4) of

Schedule 3 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

(3) The amendment of these Regulations made by item 14 of

Schedule 4 to the Intellectual Property Legislation Amendment

(Raising the Bar) Regulation 2013 (No. 1) applies in relation to a

charge that:

(a) is laid against a registered patent attorney on or after 15 April

2013; and

(b) alleges the commission of a serious offence.

(4) The amendments of these Regulations made by the items of Part 2

of Schedule 6 to the Intellectual Property Legislation Amendment

(Raising the Bar) Regulation 2013 (No. 1) apply as set out in the

following table.

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Chapter 23 Transitional and savings provisions

Part 2 Amendments made by particular instruments

Regulation 23.36

228 Patents Regulations 1991

Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

1 item 5 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

2 item 6 the matters referred to in

subitem 133(1) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

3 item 7 the matters referred to in

subitem 133(4) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

4 item 8 a complete application for a standard

patent in which a request for

examination is made on or after

15 April 2013

5 items 9 to 12 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

6 item 13 a PCT application that enters the

national phase on or after 15 April

2013

7 items 14 to 18 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

8 item 20 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

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Transitional and savings provisions Chapter 23

Amendments made by particular instruments Part 2

Regulation 23.36

Patents Regulations 1991 229

Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

Amendment (Raising the Bar) Act

2012

9 item 21 the matters referred to in

subitem 55(9) of Schedule 1 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

10 item 22 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

11 item 23 the matters referred to in

subitem 55(9) of Schedule 1 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

12 item 24, regulation 3.14C the matters referred to in

subitem 133(8) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

13 item 25 and 26 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

14 item 27 a direction issued under

subsection 44(2) of the Act, on or

after 15 April 2013

15 item 28 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

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Chapter 23 Transitional and savings provisions

Part 2 Amendments made by particular instruments

Regulation 23.36

230 Patents Regulations 1991

Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

16 item 30 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

17 item 31 a PCT application that enters the

national phase on or after 15 April

2013

18 items 36 and 37 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

19 item 38 a document that:

(a) is related to a patent application;

and

(b) is not a specification;

filed before, on or after 15 April

2013

20 item 39 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

21 items 40 and 41 the matters referred to in

subitem 133(9) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

22 item 42 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

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Transitional and savings provisions Chapter 23

Amendments made by particular instruments Part 2

Regulation 23.36

Patents Regulations 1991 231

Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

23 item 43 a PCT application filed with a

receiving Office on or after 15 April

2013

24 item 44 the matters referred to in

subitem 133(9) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

25 item 45 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

26 item 47, paragraph 9A.4(f) an application in relation to which a

request for examination is made on

or after 15 April 2013

27 item 47, paragraph 9A.4(g) the matters referred to in

subitem 133(12) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

28 items 48 to 50 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

29 item 51 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

30 item 53 an application or patent in relation to

which leave to amend the patent

request, complete specification or

other filed document is granted on or

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Chapter 23 Transitional and savings provisions

Part 2 Amendments made by particular instruments

Regulation 23.36

232 Patents Regulations 1991

Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

after 15 April 2013

31 item 54 the matters referred to in

subitem 133(3) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012 unless other arrangements are

made in this regulation

32 item 54 a request to rectify the Register to

which the following apply:

(a) the request was published before

15 April 2013;

(b) the period to file an opposition

under subregulation 5.3(5A) had

not expired before 15 April

2013;

(c) no notice of opposition was filed

before 15 April 2013;

as if it were a request to rectify the

Register made on 15 April under

regulation 10.7

33 item 55 all of the following:

(a) aircraft, land vehicles and vessels

that were foreign aircraft, foreign

land vehicles or foreign vessels,

within the meaning of the Act,

immediately before 15 April

2013;

(b) aircraft and vessels that are

registered on or after 15 April

2013;

(c) land vehicles the ownership of

which is acquired on or after

15 April 2013

34 item 56 the matters referred to in

subitem 133(9) of Schedule 6 to the

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Transitional and savings provisions Chapter 23

Amendments made by particular instruments Part 2

Regulation 23.36

Patents Regulations 1991 233

Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

35 item 57 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

36 item 58 the matters referred to in

subitem 133(15) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

37 item 61 the matters referred to in

subitem 133(6) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

38 item 62, new paragraph 13.4(1)(g) an application in relation to which a

request for examination is made on

or after 15 April 2013

39 item 62, new paragraph 13.4(1)(ga) the matters referred to in

subitem 133(11) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

40 item 64, reference to new

paragraph 13.4(1)(g)

an application in relation to which a

request for examination is made on

or after 15 April 2013

41 item 64, reference to new

paragraph 13.4(1)(ga)

the matters referred to in

subitem 133(11) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

42 items 65 and 66 the matters referred to in

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Chapter 23 Transitional and savings provisions

Part 2 Amendments made by particular instruments

Regulation 23.36

234 Patents Regulations 1991

Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

43 items 67 and 68 an application in relation to which a

request for examination is made on

or after 15 April 2013

44 item 77, other than the insertion of

new subregulation 22.22(1)

a hearing for which the

Commissioner has issued a hearing

notice, or an invitation to be heard,

on or after 15 April 2013

45 item 78 an act referred to in

subsection 226(1) of the Act done in

relation to a prescribed document on

or after 15 April 2013

46 item 80 a PCT application that enters the

national phase on or after 15 April

2013

47 item 81 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

48 item 82 the matters referred to in

subitem 133(3) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

49 item 83 the matters referred to in

subitem 133(2) of Schedule 6 to the

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

50 items 84 and 85 the matters referred to in

subitem 133(9) of Schedule 6 to the

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Transitional and savings provisions Chapter 23

Amendments made by particular instruments Part 2

Regulation 23.36

Patents Regulations 1991 235

Transitional provisions

Item Column 1

The amendments made by:

Column 2

apply in relation to:

Intellectual Property Laws

Amendment (Raising the Bar) Act

2012

51 item 86 an application in relation to which a

request for examination is made on

or after 15 April 2013

(5) The amendments of these Regulations made by the items of Part 2

of Schedule 6 to the Intellectual Property Legislation Amendment

(Raising the Bar) Regulation 2013 (No. 1) do not apply as set out

in the following table.

Transitional provisions

Item Column 1

The amendments made

by:

Column 2

do not apply:

1 item 29 in relation to the matters referred to in

subitem 134(1) of Schedule 6 to the Intellectual

Property Laws Amendment (Raising the Bar)

Act 2012

2 items 32 to 35 in relation to the matters referred to in

subitem 134(1) of Schedule 6 to the Intellectual

Property Laws Amendment (Raising the Bar)

Act 2012

3 item 52 in relation to the matters referred to in item 134

of Schedule 6 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

4 item 54 to the extent that they would prevent the

correction of a patent granted before 15 April

2013 in accordance with regulation 10.7 as in

force immediately before 15 April 2013

5 item 60 in relation to the matters referred to in item 134

of Schedule 6 to the Intellectual Property Laws

Amendment (Raising the Bar) Act 2012

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Chapter 23 Transitional and savings provisions

Part 2 Amendments made by particular instruments

Regulation 23.36

236 Patents Regulations 1991

(6) Regulation 8.3, as continued in force in accordance with this

regulation, is amended by omitting subregulation 8.3(2) and

inserting:

(2) At the end of section 141:

Add:

(3) Despite subsection (2), a PCT application is also 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.

Note: This amendment applies in relation to a PCT application that was made before 15 April 2013 and for which a notice of withdrawal was filed on or after 15 April 2013.

Federal Register of Legislative Instruments F2013C00202

Prepared by the Office of Parliamentary Counsel, Canberra

Patents Regulations 1991 Statutory Rules No. 71, 1991 as amended

made under the

Patents Act 1990

Compilation start date: 15 April 2013

Includes amendments up to: SLI No. 13, 2013

Volume 1: Chapters 1 to 23

Volume 2: Schedules and Endnotes

Each volume has its own contents

Federal Register of Legislative Instruments F2013C00202

About this compilation

The compiled instrument

This is a compilation of the Patents Regulations 1991 as amended and in force

on 15 April 2013. It includes any amendment affecting the compiled instrument

to that date.

This compilation was prepared on 15 April 2013.

The notes at the end of this compilation (the endnotes) include information

about amending Acts and instruments and the amendment history of each

amended provision.

Uncommenced provisions and amendments

If a provision of the compiled instrument has not commenced or is affected by

an uncommenced amendment, the text of the uncommenced provision or

amendment is set out only in the endnotes.

Application provisions for amendments

If the operation of an amendment is affected by an application provision, this

provision is set out in the endnotes.

Modifications

If a provision of the compiled instrument is affected by a textual modification

that is in force, the text of the modifying provision is set out in the endnotes.

Provision ceasing to have effect

If a provision of the compiled instrument has expired or otherwise ceased to

have effect, or is to expire or otherwise cease to have effect, in accordance with

a provision of the instrument, details of the provision are set out in the endnotes.

Federal Register of Legislative Instruments F2013C00202

Patents Regulations 1991 i

Contents

Schedule 3—Formal requirements for documents to

be filed 1 1 Terminology and signs ......................................................................1

1A Title of specification..........................................................................1

2 Fitness for reproduction.....................................................................1

3 Separate sheets ..................................................................................2

4 Margins..............................................................................................2

5 Numeration........................................................................................3

7 Writing of textual matter ...................................................................3

8 Drawings, formulas and tables in textual matter................................4

9 Words in drawings.............................................................................4

10 Alterations .........................................................................................4

11 Special requirements for drawings ....................................................5

12 Amino acid sequences and nucleotide sequences ..............................6

13 Electronic documents ........................................................................6

14 Scandalous matter..............................................................................6

Federal Register of Legislative Instruments F2013C00202

ii Patents Regulations 1991

Schedule 5—Knowledge requirements 7

Part 1—Overall requirement 7

Part 2—Legal process and overview of intellectual property 8

Part 3—Professional conduct 9

Part 4—Intellectual property law 9

Part 5—Intellectual property systems 10

Schedule 7—Fees 11

Part 1—Patent Attorneys 11

Part 2—General fees 12

Part 3—General fees for international applications 19

Part 4—Fees payable for benefit of International Bureau 20

Schedule 8—Costs, expenses and allowances 22

Part 1—Costs 22

Part 2—Expenses and allowances 22 Division 1—Expenses ....................................................................................22

Division 2 Allowances................................................................................23

Endnotes 24

Endnote 1—Legislation history 24

Endnote 2—Amendment history 29

Endnote 3—Application, saving and transitional provisions 54

Patents Regulations (Amendment) (1997 No. 345) ........................................54

Patents Regulations (Amendment) (1998 No. 56)..........................................54

Patents Amendment Regulations 1999 (No. 3) (1999 No. 261) .....................56

Patents Amendment Regulations 2002 (No. 1) (2002 No. 59) .......................56

Patents Amendment Regulations 2002 (No. 4) (2002 No. 317) .....................56

Patents Amendment Regulations 2003 (No. 3) (2003 No. 316) .....................57

Patents Amendment Regulations 2004 (No. 2) (2004 No. 193) .....................58

Patents Amendment Regulations 2004 (No. 4) (2004 No. 395) .....................58

Patents Amendment Regulations 2005 (No. 1) (2005 No. 51) .......................59

Patents Amendment Regulations 2006 (No. 1) (2006 No. 55) .......................59

Federal Register of Legislative Instruments F2013C00202

Patents Regulations 1991 iii

Intellectual Property Legislation Amendment Regulations 2007 (No.

1) (2007 No. 40) ..............................................................................60

Patents and Trade Marks Legislation Amendment Regulations 2008

(2008 No. 122) ................................................................................63

Patents Amendment Regulations 2008 (No. 1) (2008 No. 178) .....................64

Intellectual Property Legislation Amendment Regulations 2008 (No.

1) (2008 No. 279) ............................................................................65

Intellectual Property Law Amendment Regulations 2009 (No. 1)

(2009 No. 150) ................................................................................65

Intellectual Property Legislation Amendment Regulations 2011 (No.

1) (2011 No. 62) ..............................................................................65

Intellectual Property Legislation Amendment Regulations 2012 (No.

1) (2012 No. 66) ..............................................................................67

Endnote 4—Uncommenced amendments 69

Endnote 5—Misdescribed amendments 70

Federal Register of Legislative Instruments F2013C00202

Federal Register of Legislative Instruments F2013C00202

Formal requirements for documents to be filed Schedule 3

Patents Regulations 1991 1

Schedule 3—Formal requirements for

documents to be filed (paragraph 3.2A(1)(c), paragraph 3.2A(2)(c), subparagraph 3.2B(1)(a)(ii), paragraph 10.2(1)(a)

and subregulation 22.16(2))

1 Terminology and signs

In a document:

(a) units of description must be expressed in terms of the metric

system or, if first expressed in other terms, must be expressed

also in terms of that system; and

(b) temperatures must be expressed in degrees Celsius or, if first

expressed in another manner, must be expressed also in

degrees Celsius; and

(c) to indicate units of measurement, the rules of international

practice must be observed; and

(d) in chemical formulas, the symbols, atomic weights and

molecular formulas in general use must be employed; and

(e) other terms, signs and symbols that are generally accepted in

the art to which the document principally relates must be

employed; and

(f) if the document is expressed in English—the beginning of

any decimal fraction must be marked by a period; and

(g) units, signs, symbols and other terms must be used

consistently.

1A Title of specification

A specification must commence with a short and precise title.

2 Fitness for reproduction

Each sheet comprising a document or part of a document:

(a) must be presented in a manner that allows any number of

copies of the sheet to be reproduced directly by means of

photography, an electrostatic or photo-offset process and

microfilming; and

(b) must not be folded, creased or cracked; and

Federal Register of Legislative Instruments F2013C00202

Schedule 3 Formal requirements for documents to be filed

2 Patents Regulations 1991

(c) subject to subclause 8(4) (‘drawings, formulas and tables in

textual matter’) and subclause 11(14) (‘special requirements

for drawings’), must be presented in a vertical format; and

(d) must be durable, flexible, smooth, strong, white and have a

matt finish; and

(e) must be international sheet size A4; and

(f) must be printed on only one side of the sheet.

3 Separate sheets

(1) The patent request, the description of the invention, the claim or

claims, any drawing, and an abstract, must each commence on a

separate sheet.

(2) The sheets comprising a document must be connected so that they

may be readily:

(a) turned to be read; and

(b) separated for the purposes of reproduction and then rejoined.

4 Margins

(1) Subject to subclause (2), each sheet of a specification, or an

abstract, must have a margin that is not less than:

(a) at the top—2 cm; and

(b) on the left—2.5 cm; and

(c) on the right—2 cm; and

(d) at the bottom—2 cm.

(2) A sheet of drawings:

(a) must have a margin that is not less than:

(i) at the top—2.5 cm; and

(ii) on the left—2.5 cm; and

(iii) on the right—1.5 cm; and

(iv) at the bottom—1 cm; and

(b) must show the drawings entirely within that margin and

within an area of the sheet measuring 26.2 cm  17.0 cm (the

useable surface); and

(c) must not contain a frame surrounding the drawings or the

useable surface.

Federal Register of Legislative Instruments F2013C00202

Formal requirements for documents to be filed Schedule 3

Patents Regulations 1991 3

5 Numeration

(1) The parts of a patent application must be presented in the following

order:

(a) patent request;

(b) description of the invention, other than any sequence listing

part of the description;

(c) claim or claims;

(d) abstract;

(e) drawing or drawings;

(f) sequence listing part of the description, if applicable.

(2) Subject to subclause (3), if a specification is numbered in

accordance with subclause 6(2), the sheets of the specification

must be numbered consecutively in arabic numerals beginning with

‘1’ that are placed at the top, and in the middle, of the sheet, but

not within the margins of the sheet.

(3) The sheets of a specification that contain drawings must be

numbered by means of sets of 2 arabic numerals separated by an

oblique stroke, the first numeral in each set being the consecutive

number of each sheet, beginning with the arabic number ‘1’, and

the second being the total number of the sheets containing the

drawings.

(4) If there is more than 1 claim referred to in a complete specification,

the claims must be numbered consecutively in arabic numerals

beginning with ‘1’.

(5) In a statement of proposed amendments:

(a) the proposed amendments must be numbered consecutively;

and

(b) if the statement is a subsequent one, the numbering must be

consecutive with the numbers in the previous statement.

7 Writing of textual matter

(1) Subject to subclause (2), except with the consent of the

Commissioner, a patent request, specification and any abstract

relating to a patent application must be typewritten or otherwise

machine printed.

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Schedule 3 Formal requirements for documents to be filed

4 Patents Regulations 1991

(2) If necessary, symbols relating to graphic matter, or chemical or

mathematical formulas, may be handwritten or drawn, as the case

may be.

(3) The lines of text in a typewritten document must be 1 1 /2 spaced.

(4) The text in a document must be presented in letters the capitals of

which are not less than 0.21 cm high, in a dark colour and be

indelible.

8 Drawings, formulas and tables in textual matter

(1) A patent request must not include a drawing.

(2) The description of an invention or an abstract:

(a) must not include a drawing; and

(b) may include chemical or mathematical formulas or tables.

(3) A claim:

(a) must not include a drawing; and

(b) may include chemical or mathematical formulas; and

(c) if, in the reasonable opinion of the Commissioner, the subject

matter of the claim makes the use of a table desirable—may

include tables.

(4) A table or a chemical or mathematical formula may be presented in

a horizontal format if it cannot be presented in a vertical format in

a satisfactory manner.

(5) If a table or a chemical or mathematical formula is presented in a

horizontal format, the top of the table or formula must be placed on

the left side of the paper.

9 Words in drawings

A drawing must not include text, other than a word or words

indispensable to the understanding of the drawing.

10 Alterations

(1) Subject to subclause (2), a document must be free from erasures,

alterations, overwritings and interlineations.

Federal Register of Legislative Instruments F2013C00202

Formal requirements for documents to be filed Schedule 3

Patents Regulations 1991 5

(2) If, in the reasonable opinion of the Commissioner, failure to

comply with subclause (1) would not:

(a) compromise the authenticity; or

(b) jeopardise the likelihood of clear reproduction;

of a document, the Commissioner may excuse it from compliance

with subclause (1).

11 Special requirements for drawings

(1) A drawing must be executed in durable, black, dense, dark,

uniformly thick and well-defined, lines and strokes without

colouring.

(2) A cross-section must be indicated by oblique hatching that does not

impede the clear reading of reference letters, numbers or signs and

leading lines.

(3) The scale of a drawing and the distinctness of its execution must

enable all the details to be distinguished without difficulty on a

photographic reproduction of the drawing with a two-thirds linear

reduction in size.

(4) If the scale of a drawing is given on the drawing, it must be

represented graphically.

(5) A letter, number or reference line that is shown on a drawing must

be presented simply and be clear.

(6) Brackets, braces, circles or inverted commas must not be used in

association with letters or numbers.

(7) A line in a drawing must ordinarily be drawn with the aid of

drafting instruments.

(8) A sheet of drawings may include more than 1 drawing.

(9) Each element of a drawing must be shown in proper proportion to

each other element of the drawing, other than where the use of a

different proportion is indispensable for the clarity of the drawing.

(10) The height of a letter or a number in a drawing must not be less

than 0.32 cm.

Federal Register of Legislative Instruments F2013C00202

Schedule 3 Formal requirements for documents to be filed

6 Patents Regulations 1991

(11) For the lettering of a drawing, the Latin or, if customary, the Greek

alphabet must be used.

(12) If drawings on 2 or more sheets of drawings form in effect a single

drawing, the drawings must be so arranged that the single drawing

can be assembled without concealing any part of the other

drawings.

(13) Subject to subclause (14), if there is more than 1 drawing on a

sheet of drawings, the drawings must be presented on the sheet of

drawings in a vertical format and separate from each other.

(14) If the drawings on a sheet of drawings cannot be presented in a

vertical format, they must be presented in a horizontal format with

the tops of the drawings on the left of the sheet of drawings.

(15) The drawings must be numbered consecutively in arabic numerals

beginning with ‘1’.

(16) A reference sign that is not mentioned in the description of the

invention must not be referred to in a drawing.

(17) A reference sign that is not mentioned in a drawing must not be

referred to in the description.

(18) A feature of a drawing that is denoted by a reference sign must be

so denoted consistently.

12 Amino acid sequences and nucleotide sequences

An amino acid sequence or a nucleotide sequence that is part of a

specification may be filed in a format approved by the

Commissioner on a compact disk or by other electronic means

approved by the Commissioner.

13 Electronic documents

A document that is filed in electronic form must be in the approved

form.

14 Scandalous matter

A complete application must not contain or consist of scandalous

matter.

Federal Register of Legislative Instruments F2013C00202

Knowledge requirements Schedule 5

Overall requirement Part 1

Patents Regulations 1991 7

Schedule 5—Knowledge requirements (regulation 20.8)

Part 1—Overall requirement

1. A course of study must provide for a student to have an appropriate

level of:

(a) knowledge and practical application so that the student can

give advice about applicable categories of protection for

particular activities; and

(b) appreciation of the advantages of each form of protection for

a client; and

(c) understanding of how to get and maintain appropriate

protection for a client; and

(d) understanding of the required standard of professional

conduct.

Federal Register of Legislative Instruments F2013C00202

Schedule 5 Knowledge requirements

Part 2 Legal process and overview of intellectual property

8 Patents Regulations 1991

Part 2—Legal process and overview of intellectual

property

2. A course of study must provide for a student to have an appropriate

level of understanding of the Australian legal system and how

intellectual property rights may be protected, including by

reference to:

(a) the Australian legal system; and

(b) intellectual property rights.

Federal Register of Legislative Instruments F2013C00202

Knowledge requirements Schedule 5

Professional conduct Part 3

Patents Regulations 1991 9

Part 3—Professional conduct

3. A course of study must provide for a student to have an appropriate

level of understanding of the rights, privileges and responsibilities

of a patent attorney or trade marks attorney.

Part 4—Intellectual property law

4. A course of study must provide for a student to have an appropriate

level of understanding of the principles of trade marks, patents,

designs and copyright.

Federal Register of Legislative Instruments F2013C00202

Schedule 5 Knowledge requirements

Part 5 Intellectual property systems

10 Patents Regulations 1991

Part 5—Intellectual property systems

5. A course of study must provide for a student to have an appropriate

level of understanding of the system of protecting and exploiting

trade marks, patents and designs, both in Australia and other

countries. This includes:

(a) the ability to draft patent specifications; and

(b) an understanding of patent specifications; and

(c) the ability to advise on the interpretation, validity and

infringement of patent specifications.

Federal Register of Legislative Instruments F2013C00202

Fees Schedule 7

Patent Attorneys Part 1

Patents Regulations 1991 11

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

108 Applying for registration as an incorporated patent

attorney

300

109 Annual registration of an incorporated patent attorney 350

110 Annual registration fee payable for combined

registration as an incorporated patent attorney and

incorporated trade marks attorney

550

111 Applying to be restored to the Register of Patent

Attorneys, as authorised by regulation 20A.22

250

Federal Register of Legislative Instruments F2013C00202

Schedule 7 Fees

Part 2 General fees

12 Patents Regulations 1991

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 Search by the Commissioner in relation to a patent

request and complete specification for a standard

patent as part of an examination, if the complete

application was made on or after 15 April 2013

$1,400

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:

Federal Register of Legislative Instruments F2013C00202

Fees Schedule 7

General fees Part 2

Patents Regulations 1991 13

Item Matter Fee

(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

Federal Register of Legislative Instruments F2013C00202

Schedule 7 Fees

Part 2 General fees

14 Patents Regulations 1991

Item Matter Fee

(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

Federal Register of Legislative Instruments F2013C00202

Fees Schedule 7

General fees Part 2

Patents Regulations 1991 15

Item Matter Fee

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, or subsection 191A(2) of the Act

$600

214A National phase entry of a PCT application under

paragraph 29A(5)(b) of the Act:

(a) fee paid by approved means; $370

(b) fee paid by another means $470

Federal Register of Legislative Instruments F2013C00202

Schedule 7 Fees

Part 2 General fees

16 Patents Regulations 1991

Item Matter Fee

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 5.4,

5.6 or 5.10

$600

217 Filing a request under subregulation 5.17(1) for

dismissal of opposition

$600

218 Filing an application under subregulation 5.9(1) 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 subregulation 5.14(2) or 5.15(3) or

paragraph 5.16(2)(b), objecting to a proposed

amendment

$600

220 Making a representation to the Commissioner under

subregulation 5.22(2) objecting to a proposed

direction

$600

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

Federal Register of Legislative Instruments F2013C00202

Fees Schedule 7

General fees Part 2

Patents Regulations 1991 17

Item Matter Fee

224 Filing a request for leave to amend a complete

specification relating to 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

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

Federal Register of Legislative Instruments F2013C00202

Schedule 7 Fees

Part 2 General fees

18 Patents Regulations 1991

Item Matter Fee

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 regulation 3.14A for an

international-type search

$2 200

236A Preliminary search and opinion by the

Commissioner in relation to a patent request and

complete specification under subsection 43A(1) of

the Act

$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

Federal Register of Legislative Instruments F2013C00202

Fees Schedule 7

General fees for international applications Part 3

Patents Regulations 1991 19

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 16 bis

.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 26 bis

of the PCT.

$200

Federal Register of Legislative Instruments F2013C00202

Schedule 7 Fees

Part 4 Fees payable for benefit of International Bureau

20 Patents Regulations 1991

Part 4—Fees payable for benefit of International

Bureau

Ite

m

Matter Fee

401 International filing fee:

(Rule 15.2 of the PCT)

1,330 Swiss francs

plus 15 Swiss francs

for each sheet of the

international

application in excess

of 30 sheets

402 Handling fee:

(Rule 57.2 of the PCT)

200 Swiss francs

Reductions

403 The international filing fee is reduced by the following amount if the

international application is, as provided for in the Administrative Instructions,

filed:

(a) on paper together with a copy in electronic form,

in character coded format, of the request and the

abstract:

100 Swiss francs

(b) in electronic form, the request not being in

character coded format: 100 Swiss francs

(c) in electronic form, the request being in character

coded format: 200 Swiss francs

(d) in electronic form, the request, description,

claims and abstract being in character coded

format:

300 Swiss francs

404 The international filing fee (where applicable, as reduced under item 403) and

the handling fee are reduced by 90% if the international application is filed

by:

(a) an applicant who is a natural person and who is a national of and resides in

a State whose per capita national income is below US$3,000 (according to

the average per capita national income figures used by the United Nations

for determining its scale of assessments for the contributions payable for

the years 1995, 1996 and 1997) or, until December 31, 2009, one of the

following States: Antigua and Barbuda, Bahrain, Barbados, Libyan Arab

Jamahiriya, Oman, Seychelles, Singapore, Trinidad & Tobago and United

Arab Emirates; or

Federal Register of Legislative Instruments F2013C00202

Fees Schedule 7

Fees payable for benefit of International Bureau Part 4

Patents Regulations 1991 21

Ite

m

Matter Fee

(b) an applicant, whether a natural person or not, who is a national of and

resides in a State that is classed as a least developed country by the United

Nations;

provided that, if there are several applicants, each must satisfy the criteria set

out in either sub-item (a) or (b).

Federal Register of Legislative Instruments F2013C00202

Schedule 8 Costs, expenses and allowances

Part 1 Costs

22 Patents Regulations 1991

Schedule 8—Costs, expenses and allowances (subregulation 20.30(2) and regulation 22.8)

Part 1—Costs

Column 1 Column 2 Column 3

Item Matter Amount

1 Notice of opposition $200

2 Statement of grounds and particulars $750

3 Receiving and perusing statement of grounds

and particulars

$500

4 Evidence in support $1 500

5 Receiving and perusing notice of opposition $200

6 Receiving and perusing evidence in support $750

7 Evidence in answer $1 500

8 Receiving and perusing evidence in answer $750

9 Evidence in reply $750

10 Receiving and perusing evidence in reply $350

11 Preparation of case for hearing $1 000

12 Attendance at hearing by registered patent

attorney or solicitor without counsel

$260 an hour, but

not more than

$1 170 a day

13 Attendance at hearing by registered patent

attorney or solicitor instructing counsel

$200 an hour, but

not more than $900

a day

14 Counsel fees for attendance at a hearing $300 an hour, but

not more than

$1 350 a day

Part 2—Expenses and allowances

Division 1—Expenses

1 A person who has paid a fee prescribed in these Regulations in

relation to proceedings before the Commissioner or the

Disciplinary Tribunal may be paid the amount of the fee.

Federal Register of Legislative Instruments F2013C00202

Costs, expenses and allowances Schedule 8

Expenses and allowances Part 2

Patents Regulations 1991 23

2 A person attending proceedings before the Commissioner or the

Disciplinary Tribunal must be paid:

(a) a reasonable amount for allowances for transport between the

usual place of residence of the person and the place that he or

she attends for that purpose; and

(b) if the person is required to be absent overnight from his or

her usual place of residence—a reasonable amount for

allowances up to a daily maximum of $700 for meals and

accommodation.

Division 2 Allowances

3 A person who, because of his or her professional, scientific or

other special skill or knowledge, is summoned to appear before the

Commissioner or the Disciplinary Tribunal as a witness must be

paid:

(a) if the person is remunerated in his or her occupation by

wages, salary or fees—an amount equal to the amount of

wages, salary or fees not paid to the person because of his or

her attendance for that purpose; or

(b) in any other case—an amount of not less than $140, or more

than $700, for each day on which he or she so attends.

4 A person summoned to appear before the Commissioner or the

Disciplinary Tribunal as a witness, other than a witness referred to

in clause 3, must be paid:

(a) if the person is remunerated in his or her occupation by

wages, salary or fees—an amount equal to the amount of

wages, salary or fees not paid to the person because of his or

her attendance for that purpose; or

(b) in any other case—an amount of not less than $80, or more

than $130, for each day on which he or she so attends.

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 1—Legislation history

24 Patents Regulations 1991

Endnotes

Endnote 1—Legislation history

This endnote sets out details of the legislation history of the Patents

Regulations 1991.

Number and year Gazettal or FRLI

registration date

Commencement

date

Application, saving

and transitional

provisions

1991 No. 71 26 Apr 1991 30 Apr 1991

1991 No. 456 19 Dec 1991 rr. 3, 5 and 7: 1 Jan

1992

Remainder: 19 Dec

1991

1992 No. 148 9 June 1992 r. 5: 9 June 1992

Remainder: 1 July 1992

r. 7

1993 No. 113 3 June 1993 1 July 1993 r. 9

1993 No. 227 26 Aug 1993 rr. 3.1, 4.1 and 4.4: 1

Oct 1992

Remainder: 1 Jan 1993

1993 No. 340 10 Dec 1993 10 Dec 1993 r. 8

1993 No. 341 10 Dec 1993 1 Jan 1994 —

1994 No. 182 16 June 1994 29 June 1994 —

1994 No. 317 6 Sept 1994 1 Oct 1994 r. 10

1994 No. 387 21 Nov 1994 rr. 9 and 10: 30 May

1995

Remainder: 21 Nov

1994

r. 10

1995 No. 16 14 Feb 1995 r. 38: 30 Apr 1991

Remainder: 14 Feb 1995

r. 45

1995 No. 20 22 Feb 1995 23 Feb 1995 —

1995 No. 82 9 May 1995 rr. 4–9, 11.2 and 12–14:

1 July 1995

Remainder: 9 May 1995

r. 14

1995 No. 427 22 Dec 1995 1 Jan 1996 —

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 1—Legislation history

Patents Regulations 1991 25

Number and year Gazettal or FRLI

registration date

Commencement

date

Application, saving

and transitional

provisions

1996 No. 271 11 Dec 1996 11 Dec 1996 —

1997 No. 192 4 July 1997 4 July 1997 —

1997 No. 345 9 Dec 1997 rr. 3, 4, 8–10, 13 and 14:

1 Jan 1998

Remainder: 9 Dec 1997

r. 3

1998 No. 45 25 Mar 1998 25 Mar 1998 —

1998 No. 56 8 Apr 1998 8 Apr 1998 rr. 13–17

1998 No. 141 25 June 1998 rr. 3–5: 1 July 1998

Remainder: 25 June

1998

1998 No. 241 31 July 1998 31 July 1998 —

1998 No. 257 12 Aug 1998 12 Aug 1998 —

1998 No. 264 26 Aug 1998 rr. 7.1, 7.2 and 7.4: 1

Nov 1998

Remainder: 26 Aug

1998

1998 No. 291 7 Sept 1998 7 Sept 1998 —

1998 No. 319 1 Dec 1998 27 Jan 1999 (see r. 2) —

1998 No. 342 22 Dec 1998 1 Jan 1999 —

1998 No. 345 22 Dec 1998 27 Jan 1999 —

1999 No. 154 14 July 1999 14 July 1999 —

1999 No. 184 1 Sept 1999 rr. 1–3 and Schedule 1:

1 Sept 1999

Remainder: 6 Sept 1999

1999 No. 261 27 Oct 1999 rr. 1–4 and Schedule 1:

27 Oct 1999

Remainder: 1 Jan 2000

r. 4

1999 No. 349 22 Dec 1999 rr. 1–3 and Schedule 1:

22 Dec 1999

Remainder: 1 Jan 2000

2000 No. 317 29 Nov 2000 rr. 1–3 and Schedule 1:

29 Nov 2000

Schedule 2: 1 Jan 2001

Remainder: 1 Mar 2001

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 1—Legislation history

26 Patents Regulations 1991

Number and year Gazettal or FRLI

registration date

Commencement

date

Application, saving

and transitional

provisions

2001 No. 98 23 May 2001 24 May 2001 (see r. 2) —

2001 No. 184 5 July 2001 5 July 2001 —

2001 No. 345 21 Dec 2001 Schedule 2: 1 Jan 2002

Remainder: 21 Dec

2001

2002 No. 59 28 Mar 2002 1 Apr 2002 r. 4

2002 No. 100 23 May 2002 23 May 2002 —

2002 No. 173 11 July 2002 rr. 1–5 and Schedules 1–

3: 11 July 2002

Remainder: 1 Sept 2002

2002 No. 263 6 Nov 2002 6 Nov 2002 —

2002 No. 317 19 Dec 2002 rr. 1–3 and Schedule 1:

19 Dec 2002

Remainder: 1 Jan 2003

r. 4

2003 No. 71 28 Apr 2003 28 Apr 2003 —

2003 No. 213 21 Aug 2003 rr. 1–3 and Schedule 1:

21 Aug 2003

Remainder: 26 Aug

2003 (see r. 2(b))

2003 No. 316 11 Dec 2003 rr. 1–4 and Schedule 1:

11 Dec 2003

Remainder: 1 Jan 2004

r. 4

2004 No. 23 26 Feb 2004 11 Mar 2004 —

2004 No. 193 1 July 2004 1 July 2004 r. 4

2004 No. 250 20 Aug 2004 20 Aug 2004 —

2004 No. 395 23 Dec 2004 23 Dec 2004 r. 4

2005 No. 51 29 Mar 2005 (see

F2005L00753)

rr. 1–4 and Schedule 1:

30 Mar 2005

Schedule 2: 1 Apr 2005

Schedule 3: 3 Apr 2005

r. 4

2006 No. 55 22 Mar 2006 (see

F2006L00846)

1 Apr 2006 r. 4

2006 No. 355 15 Dec 2006 (see

F2006L03971)

1 Mar 2007 —

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 1—Legislation history

Patents Regulations 1991 27

Number and year Gazettal or FRLI

registration date

Commencement

date

Application, saving

and transitional

provisions

2007 No. 40 23 Mar 2007 (see

F2007L00650)

rr. 1–10 and

Schedules 1, 2, 3, 5 and

6: 27 Mar 2007

Schedules 4 and 8: 1

Apr 2007 (see r. 2(b))

Schedule 7: 27 Mar

2007 (see r. 2(c))

r. 8

2007 No. 357 18 Oct 2007 (see

F2007L04114)

22 Oct 2007 —

2008 No. 122 23 June 2008 (see

F2008L02119)

1 July 2008 r. 5

2008 No. 178 2 Sept 2008 (see

F2008L03228)

1 July 2008 —

2008 No. 279 19 Dec 2008 (see

F2008L04588)

1 Jan 2009 r. 3

2009 No. 150 26 June 2009 (see

F2009L02472)

1 July 2009 r. 3

2009 No. 332 27 Nov 2009 (see

F2009L04297)

12 Dec 2009 —

2010 No. 181 30 June 2010 (see

F2010L01791)

rr. 1–3 and Schedule 1:

1 July 2010

r. 4 and Schedule 2:

1 Aug 2010

2011 No. 62 16 May 2011 (see

F2011L00773)

1 July 2011 rr. 3 and 4

2011 No. 217 29 Nov 2011 (see

F2011L02480)

rr. 1–3 and Schedule 1:

27 Dec 2011

r. 4 and Schedule 2:

1 Jan 2012

2012 No. 66 14 May 2012 (see

F2012L01031)

Schedule 1 (Parts 1–4):

1 July 2012

Schedule 1 (Part 5): 1

Oct 2012

s. 3

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 1—Legislation history

28 Patents Regulations 1991

Number and year Gazettal or FRLI

registration date

Commencement

date

Application, saving

and transitional

provisions

2012 No. 221 17 Sept 2012 (see

F2012L01878)

18 Sept 2012 —

31, 2013 18 Mar 2013 (see

F2013L00479)

Schedule 1, Schedule 3

(items 1–9), Schedule 4

(items 1–29), Schedule

6 (items 5–86) and

Schedule 7 (items 1, 2):

15 Apr 2013

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 29

Endnote 2—Amendment history

This endnote sets out the amendment history of the Patents Regulations 1991.

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

Chapter 1

r. 1.1 ..............................................rs. 1998 No. 257

r. 1.3 ..............................................am. 1998 No. 345; 2001 No. 98; 2004 No. 395; 2008

Nos. 122 and 279; 2009 No. 332; 2011 No. 217; 2012 No. 66; No. 31,

2013

r. 1.3A ...........................................ad. 2003 No. 213

r. 1.4 ..............................................am. 1991 No. 456; 1992 No. 148; 1993 Nos. 227 and 341

rs. 1995 Nos. 16 and 427

am. 1997 No. 345; 1998 Nos. 141 and 342; 1999 No. 349; 2000 No. 317;

2001 No. 345; 2002 Nos. 59 and 317; 2003 No. 316; 2005 No. 51; 2006

No. 55; 2007 No. 40; 2008 No. 279; 2009 No. 150; 2010 No. 181; 2011

No. 62; 2012 No. 66

rs. No. 31, 2013

r. 1.5 ..............................................am. 1995 No. 16

rs. 2001 No. 98

Heading to r. 1.6 ............................rs. 2009 No. 332; No. 31, 2013

r. 1.6 ..............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2008 No. 279

rs. No. 31, 2013

r. 1.6A ...........................................rep. No. 31, 2013

r. 1.7 ..............................................am. 2001 No. 98

r. 1.8 ..............................................ad. 2009 No. 332

Chapter 2

r. 2.1 ..............................................am. 2001 No. 98

Heading to r. 2.2 ............................rs. 2002 No. 59; No. 31, 2013

r. 2.2 ..............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 59

rs. No. 31, 2013

r. 2.2A ...........................................ad. No. 31, 2013

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

30 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 2.2B............................................ad. No. 31, 2013

r. 2.2C............................................ad. No. 31, 2013

r. 2.2D ...........................................ad. No. 31, 2013

Heading to r. 2.3 ............................rs. 2002 No. 59; No. 31, 2013

r. 2.3 ..............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 59

rs. No. 31, 2013

r. 2.4 ..............................................rs. 1995 No. 16

am. 2001 No. 98

r. 2.5 ..............................................am. 2001 No. 98

rs. 2007 No. 357

r. 2.6 ..............................................rs. 2001 No. 98

r. 2.7 ..............................................am. 1995 No. 16

rs. 2001 No. 98

Chapter 3

Part 1

Division 1

Heading to Div. 1 .........................

of Part 1

ad. No. 31, 2013

r. 3.1 ..............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2003 No. 316; No. 31,

2013

r. 3.1A ...........................................ad. 2001 No. 98

am. No. 31, 2013

r. 3.2 ..............................................am. 1995 No. 16; 2000 No. 317

rs. 2001 No. 98

r. 3.2A ...........................................ad. 2001 No. 98

rs. 2009 No. 332

am. No. 31, 2013

r. 3.2AB.........................................ad. No. 31, 2013

r. 3.2B............................................ad. 2001 No. 98

am. 2002 No. 59; No. 31, 2013

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 31

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 3.2C............................................ad. No. 31, 2013

r. 3.3 ..............................................am. 1995 No. 16; 2002 No. 59; No. 31, 2013

r. 3.4 ..............................................am. 1995 No. 16; 2002 No. 59

Heading to r. 3.5 ............................rs. No. 31, 2013

r. 3.5 ..............................................am. 2000 No. 317

rs. 2001 No. 98

am. No. 31, 2013

r .3.5AA.........................................ad. No. 31, 2013

r. 3.5A ...........................................ad. 2001 No. 98

am. 2002 No. 59; 2008 No. 279; No. 31, 2013

r. 3.5AB.........................................ad. No. 31, 2013

r. 3.5AC.........................................ad. No. 31, 2013

r. 3.5AD.........................................ad. No. 31, 2013

r. 3.5AE .........................................ad. No. 31, 2013

r. 3.5AF .........................................ad. No. 31, 2013

r. 3.5AG.........................................ad. No. 31, 2013

r. 3.5B............................................ad. 2001 No. 98

am. No. 31, 2013

r. 3.6 ..............................................rs. 2001 No. 98

r. 3.7 ..............................................am. 2001 No. 98

r. 3.8 ..............................................rs. 1995 No. 16

am. 2001 No. 98

r. 3.9 ..............................................rs. 2001 No. 98

r. 3.10 ............................................am. 2001 No. 98

r. 3.11 ............................................rep. 2001 No. 98

ad. No. 31, 2013

Division 2

Heading to Div. 2 ..........................

of Part 1

ad. No. 31, 2013

r. 3.12 ............................................am. 1995 No. 16; 2001 No. 98; 2007 No. 40

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

32 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

rs. No. 31, 2013

r. 3.13 ............................................rs. 2001 No. 98; No. 31, 2013

r. 3.13A..........................................ad. No. 31, 2013

r. 3.13B..........................................ad. No. 31, 2013

r. 3.13C..........................................ad. No. 31, 2013

r. 3.13D..........................................ad. No. 31, 2013

r. 3.13E..........................................ad. No. 31, 2013

r. 3.14 ............................................am. 2001 No. 98; No. 31, 2013

Division 3

Heading to Div. 3 ..........................

of Part 1

ad. No. 31, 2013

r. 3.14A..........................................ad. No. 31, 2013

r. 3.14B..........................................ad. No. 31, 2013

r. 3.14C..........................................ad. No. 31, 2013

r. 3.14D..........................................ad. No. 31, 2013

Heading to r. 3.15 ..........................rs. No. 31, 2013

r. 3.15 ............................................am. 2001 No. 98; No. 31, 2013

r. 3.16 ............................................am. 2001 No. 98; No. 31, 2013

r. 3.17 ............................................am. 2001 No. 98

r. 3.17A..........................................ad. 2002 No. 59

am. 2002 No. 263, 2003 No. 71

rs. 2003 No. 213; No. 31, 2013

r. 3.17B..........................................ad. 2003 No. 213

am. 2007 No. 357

rs. No. 31, 2013

r. 3.17C.......................................... ad.ad. No. 31, 2013

r. 3.18 ............................................am. 1995 No. 16; 2001 No. 98; 2007 No. 357; 2008 No. 279; No. 31,

2013

Heading to r. 3.19 ..........................rs. 2001 No. 98

r. 3.19 ............................................am. 1995 No. 16; 2001 No. 98; No. 31, 2013

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 33

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 3.20 ............................................am. 2001 No. 98; 2008 No. 279

rep. No. 31, 2013

r. 3.21 ............................................am. 1995 No. 16; 2001 No. 98

rep. No. 31, 2013

r. 3.22 ............................................am. 1995 No. 16

rep. 2001 No. 98

ad. 2008 No. 279

rs. 2009 No. 332

Part 2

r. 3.23 ............................................am. 1995 No. 16; 2001 No. 98

r. 3.24 ............................................am. 1995 No. 16

r. 3.25 ............................................am. 1995 No. 16; 2001 No. 98

r. 3.26 ............................................am. 2001 No. 98

r. 3.27 ............................................am. 2001 No. 98

r. 3.28 ............................................am. 2001 No. 98

r. 3.29 ............................................am. 2001 No. 98

r. 3.30 ............................................am. 1995 No. 16; 2001 No. 98

r. 3.31 ............................................am. 2001 No. 98

Chapter 4

r. 4.1 ..............................................am. 2001 No. 98; No. 31, 2013

r. 4.2 ..............................................am. 1995 Nos. 16 and 82; 2001 No. 98

r. 4.3 ..............................................am. 1995 No. 16; 1998 No. 45; 1999 No. 261; 2002 No. 100; 2009

No. 332; No. 31, 2013

r. 4.4 ..............................................ad. No. 31, 2013

Chapter 5

Chapter 5 .......................................rs. No. 31, 2013

Part 5.1

r. 5.1 ..............................................am. 1995 Nos. 16 and 82; 1997 No. 192; 1998 No. 319; 2001 No. 98

rs. No. 31, 2013

r. 5.2 ..............................................am. 2001 No. 98

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

34 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

rs. No. 31, 2013

Heading to r. 5.3 ............................rs. 2001 No. 98

rs. No. 31, 2013

r. 5.3 ..............................................am. 1995 Nos. 16 and 82; 1998 No. 319; 2001 No. 98

rs. No. 31, 2013

Part 5.2

Division 5.2.1

r. 5.3AA.........................................ad. 2001 No. 98

rep. No. 31, 2013

Heading to r. 5.3A .........................rs. 2001 No. 98

rep. No. 31, 2013

r. 5.3A ...........................................ad. 1995 No. 16

rep. No. 31, 2013

r. 5.3B............................................ad. 2001 No. 98

rep. No. 31, 2013

r. 5.4 ..............................................am. 1993 No. 113; 1995 No. 82

rs. 2001 No. 98; No. 31, 2013

r. 5.5 ..............................................am. 2001 No. 98

rs. No. 31, 2013

r. 5.6 ..............................................am. 2001 No. 98

rs. No. 31, 2013

r. 5.7 ..............................................am. 2001 No. 98

rs. No. 31, 2013

r. 5.8 ..............................................am. 1995 Nos. 16 and 82; 2001 No. 98; 2002 No. 59

rs. No. 31, 2013

r. 5.9 ..............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98

rs. No. 31, 2013

r. 5.9A ...........................................ad. 2004 No. 250

rep. No. 31, 2013

Division 5.2.2

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 35

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 5.10 ............................................am. 1993 Nos. 113 and 340; 2000 No. 317; 2001 No. 98; 2002 No. 59;

2004 No. 250

rs. No. 31, 2013

r. 5.11 ............................................am. 2001 No. 98

rs. No. 31, 2013

r. 5.12 ............................................rs. 2001 No. 98

rs. No. 31, 2013

Part 5.3

r. 5.13 ............................................am. 1995 No. 16

rs. 2001 No. 98; No. 31, 2013

r. 5.14 ............................................rs. 2001 No. 98; No. 31, 2013

r. 5.15 ............................................rs. No. 31, 2013

r. 5.16 ............................................ad. No. 31, 2013

Part 5.4

r. 5.17 ............................................ad. No. 31, 2013

r. 5.18 ............................................ad. No. 31, 2013

Part 5.5

r. 5.19 ............................................ad. No. 31, 2013

r. 5.20 ............................................ad. No. 31, 2013

Part 5.6

r. 5.21 ............................................ad. No. 31, 2013

r. 5.22 ............................................ad. No. 31, 2013

r. 5.23 ............................................ad. No. 31, 2013

r. 5.24 ............................................ad. No. 31, 2013

r. 5.25 ............................................ad. No. 31, 2013

r. 5.26 ............................................ad. No. 31, 2013

Chapter 6

Part 1

Heading to Part 1 of.......................

Chapt. 6

ad. 1998 No. 319

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

36 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 6.1 ..............................................am. 2001 No. 98

r. 6.1A ...........................................ad. No. 31, 2013

r. 6.2 ..............................................am. 2001 No. 98; No. 31, 2013

r. 6.2A ...........................................ad. No. 31, 2013

r. 6.3 ..............................................am. 1999 No. 261

rs. 2001 No. 98

am. No. 31, 2013

r. 6.4 ..............................................am. 2001 No. 98

rep. No. 31, 2013

rr. 6.5, 6.6 ......................................rep. 2001 No. 98

Part 2

r. 6.7 ..............................................am. 1995 No. 16

rep. 1995 No. 82

Part 2 of Chapt. 6...........................ad. 1998 No. 319

r. 6.7 ..............................................ad. 1998 No. 319

r. 6.8 ..............................................ad. 1998 No. 319

r. 6.9 ..............................................ad. 1998 No. 319

r. 6.10 ............................................ad. 1998 No. 319

r. 6.11 ............................................ad. 1998 No. 319

am. 2001 No. 98

Chapter 6A

Chapter 6A ....................................ad. 2001 No. 98

rs. No. 31, 2013

r. 6A.1 ...........................................ad. 2001 No. 98

rs. No. 31, 2013

r. 6A.2 ...........................................ad. 2001 No. 98

rs. 2007 No. 40; No. 31, 2013

Chapter 7

r. 7.1 ..............................................am. 2001 No. 98

r. 7.2 ..............................................am. 2001 No. 98

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 37

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

Chapter 8 .......................................rep. No. 31, 2013

r. 8.1 ..............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 59

rep. No. 31, 2013

r. 8.1A ...........................................ad. 1999 No. 184

rep. No. 31, 2013

r. 8.1B............................................ad. 2003 No. 213

rep. 2004 No. 395

r. 8.2 ..............................................am. 1995 No. 16; 2001 No. 98

rep. No. 31, 2013

r. 8.3 ..............................................am. 1995 No. 16; 1999 No. 261; 2001 No. 98; 2003 No. 316; 2004 Nos.

193 and 395; 2007 No. 40

rep. No. 31, 2013

r. 8.4 ..............................................am. 1995 No. 16; 2001 Nos. 98 and 345; 2002 No. 100; 2004 No. 193;

2010 No. 181

rep. No. 31, 2013

r. 8.5 ..............................................am. 2001 No. 98

rep. No. 31, 2013

Heading to r. 8.6 ............................rs. 2009 No. 332

rep. No. 31, 2013

r. 8.6 ..............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2008

No. 279

rep. No. 31, 2013

r. 8.6A ...........................................ad. 2009 No. 332

rep. No. 31, 2013

r. 8.7 ..............................................am. 2001 No. 98

rep. No. 31, 2013

Chapter 9

r. 9.1 ..............................................am. 2001 No. 98

rs. 2002 No. 59

r. 9.2 ..............................................am. 2001 No. 98; No. 31, 2013

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

38 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 9.3 ..............................................am. 2001 No. 98

r. 9.4 ..............................................am. 1995 No. 16; 2001 No. 98

r. 9.5 ..............................................am. 2001 No. 98

Chapter 9A

Chapter 9A ....................................ad. 2001 No. 98

r. 9A.1 ...........................................ad. 2001 No. 98

r. 9A.2 ...........................................ad. 2001 No. 98

r. 9A.2A.........................................ad. 2002 No. 59

am. 2002 No. 173; 2003 No. 213

rep. No. 31, 2013

r. 9A.2B.........................................ad. 2003 No. 213

am. 2007 No. 357

rep. No. 31, 2013

r. 9A.3 ...........................................ad. 2001 No. 98

r. 9A.4 ...........................................ad. 2001 No. 98

am. 2002 No. 59; 2008 No. 279; No. 31, 2013

r. 9A.5 ...........................................ad. 2001 No. 98

Chapter 10

r. 10.1 ............................................am. 1995 No. 16; 2001 No. 98; 2003 No. 316; No. 31, 2013

r. 10.2 ............................................am. 1995 No. 16; 2000 No. 317; 2001 No. 98; 2004 No. 395; No. 31,

2013

Note to r. 10.2(3)(c)(iii) .................rs. No. 31, 2013

r. 10.2A..........................................ad. No. 31, 2013

r. 10.2B..........................................ad. No. 31, 2013

r. 10.2C..........................................ad. No. 31, 2013

r. 10.3 ............................................am. 1997 No. 345; 2001 No. 98

rs. No. 31, 2013

r. 10.4 ............................................am. 2001 No. 98; No. 31, 2013

r. 10.5 ............................................am. 1995 No. 16; 2001 No. 98; No. 31, 2013

r. 10.6 ............................................rs. 1995 No. 16

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 39

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

am. No. 31, 2013

r. 10.6A..........................................ad. 2011 No. 217

r. 10.6B..........................................ad. No. 31, 2013

r. 10.7 ............................................am. 2005 No. 51; No. 31, 2013

rs. No. 31, 2013

r. 10.8 ............................................rs. 2001 No. 98

r. 10.9 ............................................rep. 2001 No. 98

r. 10.10 ..........................................am. 2001 No. 98

r. 10.11 ..........................................am. 2001 No. 98

r. 10.12 ..........................................am. 2001 No. 98

r. 10.13 ..........................................rep. 2001 No. 98

r. 10.14 ..........................................am. 2001 No. 98

Chapter 11

r. 11.1 ............................................am. 1997 No. 345; No. 31, 2013

Chapter 12

r. 12.1 ............................................am. 2001 No. 98; 2007 No. 40; 2011 No. 62; No. 31, 2013

Heading to r. 12.2 ..........................rs. 2001 No. 98

r. 12.2 ............................................am. 2001 No. 98; 2011 No. 62

r. 12.3 ............................................am. 2001 No. 98

r. 12.4 ............................................am. 2001 No. 98

Chapter 13

r. 13.1 ............................................am. 2001 No. 98

r. 13.1A..........................................ad. 2001 No. 98

am. 2004 No. 395; No. 31, 2013

r. 13.1B..........................................ad. 2004 No. 395

am. No. 31, 2013

r. 13.1C..........................................ad. No. 31, 2013

r. 13.2 ............................................am. 2001 No. 98

rep. No. 31, 2013

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

40 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 13.3 ............................................am. 1994 No. 317; 1998 No. 264; 2001 No. 98; 2002 Nos. 59, 100 and

173

Notes 1, 2 to r. 13.3 .......................ad. 1998 No. 264

r. 13.4 ............................................rs. 1995 No. 16

am. 2000 No. 317; 2001 No. 98; 2002 No. 59; 2008

No. 279; No. 31, 2013

r. 13.5 ............................................am. 2001 No. 98; 2004 No. 193

r. 13.5A..........................................ad. No. 31, 2013

Heading to r. 13.6 ..........................rs. 2001 No. 98

r. 13.6 ............................................am. 1994 No. 317; 1995 No. 82; 1998 Nos. 264 and 319; 2001 No. 98;

2002 Nos. 59 and 173

Notes 1, 2 to r. 13.6 .......................ad. 1998 No. 264

r. 13.7 ............................................ad. 2002 No. 59

Chapter 15

r. 15.1 ............................................rs. 2001 No. 98

r. 15.2 ............................................am. 2001 No. 98

r. 15.3 ............................................am. 1995 No. 16

rs. 2001 No. 98

Chapter 17

r. 17.1 ............................................rs. 2001 No. 98

r. 17.1A..........................................ad. 2001 No. 98

r. 17.2 ............................................am. 1995 No. 16; 2001 No. 98

Chapter 19

r. 19.1 ............................................am. 2001 No. 98

r. 19.2 ............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 59; No. 31, 2013

Chapter 20

Heading to Chapt. 20.....................rs. No. 31, 2013

Part 1

r. 20.1A..........................................ad. No. 31, 2013

r. 20.1 ............................................am. 1994 No. 387; 1998 Nos. 56 and 345; 2001 No. 98

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 41

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

rs. 2008 No. 122

am. No. 31, 2013

Part 2

r. 20.2 ............................................rs. 1998 No. 56; 2008 No. 122

r. 20.2A..........................................ad. 1998 No. 345

rep. 2008 No. 122

r. 20.2B..........................................ad. 1998 No. 345

rep. 2008 No. 122

r. 20.3 ............................................rs. 1998 No. 345; 2008 No. 122

am. 2009 No. 150; 2012 No. 66

r. 20.3A..........................................ad. 1998 No. 345

rep. 2008 No. 122

r. 20.4 ............................................am. 1998 No. 345; 2001 No. 98; 2002 No. 173

rs. 2008 No. 122

r. 20.5 ............................................am. 1998 No. 345

rs. 2008 No. 122

Heading to r. 20.6 ..........................rs. 1998 No. 345

r. 20.6 ............................................am. 1998 No. 345

rs. 2008 No. 122

am. 2009 No. 150

r. 20.7 ............................................rs. 1998 No. 345

am. 2001 No. 98

rs. 2008 No. 122

Heading to r. 20.8 ..........................rs. 1998 No. 345

r. 20.8 ............................................am. 1998 No. 345

rs. 2008 No. 122

am. 2009 No. 150

Heading to r. 20.9 ..........................rs. 1998 No. 345

r. 20.9 ............................................am. 1998 No. 345; 1999 No. 154

rs. 2008 No. 122

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

42 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

Heading to r. 20.10 ........................rs. 1998 No. 345

r. 20.10 ..........................................am. 1998 No. 345

rs. 2008 No. 122

r. 20.11 ..........................................rs. 1998 No. 345

rs. 2008 No. 122

Heading to r. 20.12 ........................rs. 1998 No. 345

r. 20.12 ..........................................am. 1998 No. 345

rs. 2008 No. 122

Part 3

r. 20.13 ..........................................am. 1998 No. 345

rs. 2008 No. 122

am. 2009 No. 150

r. 20.14 ..........................................am. 1998 No. 345

rs. 2008 No. 122

Part 4

Heading to r. 20.15 ........................rs. 1998 No. 345

r. 20.15 ..........................................am. 1998 No. 345

rs. 2008 No. 122

r. 20.16 ..........................................am. 1995 No. 16

rs. 1998 No. 345; 2008 No. 122

Heading to Div. 3 of ......................

Part 2 of Chapt. 20

rs. 1998 No. 345

rep. 2008 No. 122

r. 20.17 ..........................................am. 1998 No. 345

rs. 2008 No. 122

r. 20.18 ..........................................am. 1998 No. 345

rs. 2008 No. 122

r. 20.19 ..........................................am. 1998 No. 345; 1999 Nos. 184 and 349; 2001 No. 98; 2002 No. 173

rs. 2008 No. 122

r. 20.19A........................................ad. 1998 No. 345

am. 1999 No. 349; 2002 No. 173

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 43

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

rep. 2008 No. 122

r. 20.20 ..........................................am. 1998 No. 345

rs. 2008 No. 122

Heading to r. 20.21 ........................rs. 1998 No. 345

r. 20.21 ..........................................am. 1998 No. 345; 2001 No. 98

rs. 2008 No. 122

Part 5

Heading to r. 20.22 ........................rs. No. 31, 2013

r. 20.22 ..........................................am. 1998 No. 345

rs. 2008 No. 122

am. No. 31, 2013

r. 20.23 ..........................................am. 1998 No. 345

rs. 2008 No. 122

r. 20.24 ..........................................am. 2001 No. 98

rs. 2008 No. 122

r. 20.25 ..........................................am. 1998 No. 345; 2001 Nos. 98 and 345

rs. 2008 No. 122

Part 6

Heading to Part 6 ...........................

of Chapt. 20

rs. No. 31, 2013

Heading to r. 20.26 ........................rs. No. 31, 2013

r. 20. 26 .........................................rs. 2008 No. 122

r. 20.27 ..........................................am. 2001 No. 345

rs. 2008 No. 122

r. 20.28 ..........................................rs. 2008 No. 122

am. No. 31, 2013

Part 6A

Part 6A of Chapt. 20......................ad. No. 31, 2013

r. 20.28A........................................ad. No. 31, 2013

r. 20.28B........................................ad. No. 31, 2013

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

44 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

Part 7

Heading to Part 7 ...........................

of Chapt. 20

rs. No. 31, 2013

Heading to r. 20.29 ........................rs. No. 31, 2013

r. 20.29 ..........................................am. 1998 No. 345; 2001 No. 345

rs. 2008 No. 122

am. No. 31, 2013

Heading to r. 20.30 ........................rs. No. 31, 2013

r. 20.30 ..........................................am. 1998 No. 345; 2001 No. 345

rs. 2008 No. 122

am. No. 31, 2013

Heading to r. 20.31 ........................rs. No. 31, 2013

r. 20.31 ..........................................am. 2001 No. 98

rs. 2008 No. 122

am. 2012 No. 66; No. 31, 2013

Part 8

Division 1

Heading to Div. 1 of ......................

Part 5 of Chapt. 20

rs. 1998 No. 56

rep. 2008 No. 122

Heading to Div. 1 of ......................

Part 8 of Chapt. 20

ad. 2008 No. 122

Heading to r. 20.32 ........................rs. 1998 No. 345

r. 20.32 ..........................................am. 1994 No. 387; 1995 No. 82

rs. 1998 No. 56

am. 1998 No. 345

rs. 2008 No. 122

am. No. 31, 2013

r. 20.33 ..........................................rep. 1998 No. 56

ad. 2008 No. 122

r. 20.34 ..........................................rs. 1998 Nos. 56 and 345; 2008 No. 122

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 45

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 20.35 ..........................................rs. 1998 No. 56; 2008 No. 122

Division 2

r. 20.36 ..........................................rep. 1998 No. 56

ad. 2008 No. 122

r. 20.37 ..........................................am. 1994 No. 387

rs. 2008 No. 122

r. 20.38 ..........................................am. 1994 No. 387

rs. 2008 No. 122

r. 20.39 ..........................................am. 1994 No. 387

rs. 1998 No. 56; 2008 No. 122

r. 20.40 ..........................................am. 1994 No. 387

rs. 1998 No. 56; 2008 No. 122

Heading to Div. 2 of ......................

Part 5 of Chapt. 20

rs. 1998 No. 345

rep. 2008 No. 122

r. 20.41 ..........................................am. 1998 No. 345

rs. 2008 No. 122

r. 20.42 ..........................................am. 2001 No. 98

rs. 2008 No. 122

r. 20.43 ..........................................am. 1997 No. 345; 2001 No. 98

rs. 2008 No. 122

r. 20.44 ..........................................am. 2001 No. 98

rs. 2008 No. 122

am. No. 31, 2013

r. 20.45 ..........................................rs. 2008 No. 122

r. 20.46 ..........................................ad. 2008 No. 122

r. 20.47 ..........................................ad. 2008 No. 122

r. 20.48 ..........................................ad. 2008 No. 122

r. 20.49 ..........................................ad. 2008 No. 122

r. 20.50 ..........................................ad. 2008 No. 122

r. 20.51 ..........................................ad. 2008 No. 122

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

46 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 20.52 ..........................................ad. 2008 No. 122

Note to r. 20.52(3) ........................am. 2008 No. 279

Part 9

r. 20.53 ..........................................ad. 2008 No. 122

Part 10

Division 1

r. 20.54 ..........................................ad. 2008 No. 122

r. 20.55 ..........................................ad. 2008 No. 122

r. 20.56 ..........................................ad. 2008 No. 122

r. 20.57 ..........................................ad. 2008 No. 122

r. 20.58 ..........................................ad. 2008 No. 122

r. 20.59 ..........................................ad. 2008 No. 122

r. 20.60 ..........................................ad. 2008 No. 122

Division 2

r. 20.61 ..........................................ad. 2008 No. 122

r. 20.62 ..........................................ad. 2008 No. 122

r. 20.63 ..........................................ad. 2008 No. 122

r. 20.64 ..........................................ad. 2008 No. 122

r. 20.65 ..........................................ad. 2008 No. 122

Chapter 20A

Chapter 20A ..................................ad. No. 31, 2013

Part 1

r. 20A.1..........................................ad. No. 31, 2013

r. 20A.2..........................................ad. No. 31, 2013

Part 2

r. 20A.3..........................................ad. No. 31, 2013

r. 20A.4..........................................ad. No. 31, 2013

Part 3

r. 20A.5..........................................ad. No. 31, 2013

Part 4

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 47

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 20A.6..........................................ad. No. 31, 2013

r. 20A.7..........................................ad. No. 31, 2013

r. 20A. 8.........................................ad. No. 31, 2013

Part 5

Division 1

r. 20A.9..........................................ad. No. 31, 2013

r. 20A.10........................................ad. No. 31, 2013

Division 2

r. 20A.11........................................ad. No. 31, 2013

r. 20A.12........................................ad. No. 31, 2013

r. 20A.13........................................ad. No. 31, 2013

r. 20A.14........................................ad. No. 31, 2013

r. 20A.15........................................ad. No. 31, 2013

r. 20A.16........................................ad. No. 31, 2013

r. 20A.17........................................ad. No. 31, 2013

r. 20A.18........................................ad. No. 31, 2013

r. 20A.19........................................ad. No. 31, 2013

r. 20A.20........................................ad. No. 31, 2013

r. 20A.21........................................ad. No. 31, 2013

Part 6

r. 20A.22........................................ad. No. 31, 2013

Chapter 21

r. 21.1 ............................................am. 1999 No. 184

r. 21.2 ............................................ad. 1994 No. 182

rs. 1998 No. 257; 1999 No. 184

Chapter 22

Part 1

Division 1

r. 22.1 ............................................am. 1998 Nos. 241 and 342

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

48 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 22.2 ............................................am. 1991 No. 456; 1993 No. 113; 1994 No. 317; 1997 No. 345; 2001

No. 98; 2002 No. 173; 2003 No. 316; 2010 No. 181; 2012 No. 66; No.

31, 2013

r. 22.2AA.......................................ad. 2012 No. 66

r. 22.2A..........................................ad. 1998 No. 241

rs. 2001 No. 98

r. 22.2B..........................................ad. 2001 No. 98

am. 2002 No. 173; No. 31, 2013

r. 22.2C..........................................ad. 2001 No. 98

am. 2002 Nos. 59 and 173; 2003 No. 213; No. 31, 2013

r. 22.2D..........................................ad. 2001 No. 98

am. 2002 No. 173

r. 22.2E..........................................ad. 2001 No. 98

am. 2002 No. 173

rep. No. 31, 2013

r. 22.2EA .......................................ad. 2010 No. 181

rs. 2011 No. 62

r. 22.2F ..........................................ad. 2001 No. 98

am. 2002 No. 173; 2010 No. 181; No. 31, 2013

r. 22.2G..........................................ad. 2001 No. 98

am. 2002 No. 173; 2012 No. 66

r. 22.2H..........................................ad. 2001 No. 98

am. 2002 No. 173

r. 22.2I ...........................................ad. 2002 No. 173

r. 22.3 ............................................am. 1995 No. 16; 2001 No. 98; 2002 No. 173

r. 22.4 ............................................am. 1995 Nos. 16 and 427; 1998 No. 342; 2003 No. 316

Note to r. 22.4(1C) ........................rep. 2003 No. 316

r. 22.5 ............................................am. 1995 No. 16; 2001 No. 98

r. 22.6 ............................................am. 1995 No. 16; 2001 No. 98

r. 22.7 ............................................am. 1995 No. 16

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 49

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

Division 2

r. 22.7A..........................................ad. 1993 No. 340

r. 22.8 ............................................am. 1993 No. 340; 1995 No. 16; 2001 No. 98

Part 2

r. 22.8A..........................................ad. 2001 No. 98

rep. 2009 No. 332

r. 22.9 ............................................am. 2001 No. 98

r. 22.10 ..........................................am. 2001 No. 98; 2011 No. 62; No. 31, 2013

r. 22.10A........................................ad. 2001 No. 98

r. 22.10AA.....................................ad. 2007 No. 40

am. No. 31, 2013

Note to r. 22.10AA ........................am. No. 31, 2013

r. 22.10AB.....................................ad. 2007 No. 40

am. 2011 No. 62; No. 31, 2013

Note to r. 22.10AB (2) ..................am. 2011 No. 217

r. 22.10AC.....................................ad. 2007 No. 40

rs. No. 31, 2013

r. 22.11 ..........................................am. 1993 No. 113; 1995 No. 82; 1998 Nos. 241, 264 and 319; 2001

No. 98; 2002 No. 59; 2004 No. 250; 2008 No. 122; No. 31, 2013

r. 22.12 ..........................................am. No. 31, 2013

r. 22.13 ..........................................am. 1995 No. 16; 2009 No. 150

rs. 2012 No. 66

r. 22.15 ..........................................am. 1995 No. 16

rs. 1998 No. 141

am. 2003 No. 213

rs. No. 31, 2013

r. 22.16 ..........................................am. 2001 No. 98; 2009 No. 332; No. 31, 2013

r. 22.20 ..........................................am. 1995 No. 16

r. 22.21 ..........................................am. 2001 No. 98; No. 31, 2013

r. 22.22 ..........................................rs. No. 31, 2013

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

50 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

r. 22.23 ..........................................am. 1995 No. 16

rs. No. 31, 2013

r. 22.26 ..........................................am. 1995 No. 16; 1998 Nos. 45, 291 and 345; 2001 No. 98; 2004

No. 395; 2005 No. 51; 2008 No. 122; No. 31, 2013

r. 22.27 ..........................................ad. No. 31, 2013

Chapter 23

Part 1

Heading to Part 1 ...........................

of Chapt. 23

ad. No. 31, 2013

r. 23.2 ............................................am. 2001 No. 98

r. 23.3 ............................................am. 1995 No. 16; 2001 No. 98

r. 23.4 ............................................am. 1995 Nos. 16 and 82; 2001 No. 98

r. 23.5 ............................................am. 2001 No. 98

r. 23.6 ............................................am. 2001 No. 98

r. 23.7 ............................................am. 2001 No. 98

r. 23.8 ............................................am. 1995 No. 16

r. 23.9 ............................................am. 1994 No. 317

r. 23.10 ..........................................am. 1994 No. 317; 1995 No. 16; 1997 No. 345

r. 23.11 ..........................................am. 1995 No. 16; 2001 No. 98

r. 23.12 ..........................................am. 2001 No. 98

r. 23.13 ..........................................am. 2001 No. 98

r. 23.14 ..........................................am. 1995 No. 16

r. 23.16 ..........................................am. 2001 No. 98

r. 23.17 ..........................................am. 1995 No. 16; 2001 No. 98

r. 23.18 ..........................................am. 1995 No. 16

r. 23.19 ..........................................am. 2001 No. 98

rep. 2008 No. 122

r. 23.20 ..........................................am. 1995 No. 16; 2001 No. 98

rep. 2008 No. 122

r. 23.21 ..........................................am. 2001 No. 98

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 51

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

rep. 2008 No. 122

r. 23.22 ..........................................am. 2001 No. 98

rep. 2008 No. 122

r. 23.23 ..........................................am. 2001 No. 98

rep. 2008 No. 122

r. 23.24 ..........................................rep. 2008 No. 122

r. 23.25 ..........................................am. 1995 No. 16; 2001 No. 98

r. 23.27 ..........................................ad. 1998 No. 345

rep. 2008 No. 122

r. 23.28 ..........................................ad. 1998 No. 345

rep. 2008 No. 122

r. 23.29 ..........................................ad. 1998 No. 345

rep. 2008 No. 122

r. 23.30 ..........................................ad. 1998 No. 345

rep. 2008 No. 122

r. 23.31 ..........................................ad. 1998 No. 345

rep. 2008 No. 122

r. 23.32 ..........................................ad. 2001 No. 98

r. 23.33 ..........................................ad. 2001 No. 98

r. 23.34 ..........................................ad. 2001 No. 98

r. 23.35 ..........................................ad. 2001 No. 98

Part 2

Part 2 of Chapt. 23.........................ad. No. 31, 2013

r. 23.36 ..........................................ad. No. 31, 2013

Schedule 1 .....................................am. 1995 No. 16

rep. No. 31, 2013

Heading to Schedule 1A................ad. 1995 No. 16

rep. No. 31, 2013

Schedule 1A ..................................am. 1995 No. 16; 2002 No. 317

rep. No. 31, 2013

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

52 Patents Regulations 1991

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

Schedule 2 .....................................am. 1991 No. 456

rs. 1992 No. 148

am. 1993 Nos. 227 and 341; 1995 No. 16; 2002 No. 59

rep. No. 31, 2013

Heading to Schedule 2A................ad. 1995 No. 16

rep. No. 31, 2013

Schedule 2A ..................................am. 1995 Nos. 16 and 427; 1997 No. 345

rs. 1998 No. 141

am. 1998 No. 342; 1999 No. 349; 2000 No. 317; 2001 No. 345; 2002

Nos. 59 and 317; 2003 No. 316; 2005 No. 51; 2006 No. 55; 2007 No. 40;

2008 Nos. 178 and 279; 2009 No. 150; 2010 No. 181; 2011 No. 62; 2012

No. 66

rep. No. 31, 2013

Schedule 3

Heading to Schedule 3...................rs. 2001 No. 98; 2009 No. 332; No. 31, 2013

Schedule 3 .....................................am. 1995 No. 16; 1998 No. 141; 2000 No. 317; 2001 No. 98; 2003

No. 213; 2011 No. 62

Schedule 4 .....................................rs. 1991 No. 456

am. 1992 No. 148

rs. 1993 No. 340

am. 1994 No. 182; 1995 Nos. 20 and 427

rs. 1996 No. 271; 1997 No. 345

am. 1998 Nos. 257 and 342; 1999 No. 349; 2002 Nos. 173 and 317; 2004

Nos. 23 and 193; 2005 No. 51; 2007 No. 40; 2008 No. 279; 2012 No. 66

rep. No. 31, 2013

Schedule 5

Schedule 5 .....................................am. 1994 No. 387

rs. 1998 No. 345; 2008 No. 122

Schedule 6 .....................................am. 1998 No. 345; 2001 No. 184

rep. 2008 No. 279

Schedule 6A ..................................ad. 1994 No. 182

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 2—Amendment history

Patents Regulations 1991 53

ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted

exp. = expired or ceased to have effect

Provision affected How affected

rs. 1997 No. 192

am. 1997 No. 345

rs. 1998 No. 257

rep. 1999 No. 184

Schedule 7

Schedule 7 .....................................am. 1991 No. 456

rs. 1992 No. 148

am. 1993 Nos. 113 and 340; 1994 No. 317; 1995 Nos. 16, 82 and 427;

1997 Nos. 192 and 345; 1998 Nos. 264, 319, 342 and 345; 1999 Nos. 261

and 349; 2000 No. 317; 2001 Nos. 98 and 345; 2002 Nos. 59 and 173;

2003 Nos. 213 and 316; 2006 No. 355; 2007 No. 40; 2008 Nos. 122 and

178; 2010 No. 181

rs. 2012 No. 66

am. 2012 Nos. 66 and 221; No. 31, 2013

Schedule 8

Schedule 8 .....................................am. 1992 No. 148

rs. 1993 No. 113

am. 1993 No. 340; 1994 No. 317; 1998 No. 345; 1999 No. 184; 2006

No. 355

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

54 Patents Regulations 1991

Endnote 3—Application, saving and transitional provisions

This endnote sets out application, saving and transitional provisions for

amendments of the Patents Regulations 1991.

Patents Regulations (Amendment) (1997 No. 345)

3 Application to certain applications

3.1 The amendment of Part 4 of Schedule 7 of the Patents Regulations

by regulation 14 of these Regulations applies only to an

international application filed on or after 1 January 1998.

Patents Regulations (Amendment) (1998 No. 56)

13 Definitions

13.1 In this Part:

new Board means the Professional Standards Board for Patent and

Trade Marks Attorneys established under Chapter 20 of the Patents

Regulations as amended by these Regulations.

old Board means the Patent Attorneys Professional Standards

Board:

(a) established under Chapter 20 of the Patents Regulations

before the commencement of these Regulations; and

(b) as constituted at any time before the commencement of these

Regulations.

14 Continuing effect of certain applications

14.1 This regulation applies to an application (including anything

accompanying the application) made in accordance with

regulation 20.2 of the Patents Regulations if:

(a) the application was made before the commencement of these

Regulations; and

(b) anything that could have been done by the old Board under

Chapter 20 of the Patents Regulations in relation to the

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

Patents Regulations 1991 55

application (unfinished business) was not done before the

commencement of these Regulations.

14.2 The application is taken to have been made in accordance with

regulation 20.2 of the Patents Regulations as amended by these

Regulations.

14.3 The unfinished business may be finished by the new Board in

accordance with Chapter 20 of the Patents Regulations as amended

by these Regulations.

15 Continuing effect of decisions of old Board

15.1 This regulation applies to any act done, or decision made, by the

old Board under Chapter 20 of the Patents Regulations as amended

and in force at any time before the commencement of these

Regulations.

15.2 The act or decision has effect as if the act had been done, or

decision had been made, by the new Board.

16 Continuing effect of certificates

16.1 This regulation applies to each certificate given by the old Board

under Chapter 20 of the Patent Regulations as amended and in

force at any time before the commencement of these Regulations.

16.2 The certificate is as valid as it would be if it had been given by the

new Board.

17 Continuing effect of certain complaints

17.1 This regulation applies to a complaint in writing to the old Board

made under Part 4 of Chapter 20 of the Patents Regulations as

amended and in force at any time, if:

(a) the complaint was made before the commencement of these

Regulations; and

(b) anything that could have been done by the old Board in

relation to the complaint under the Part (unfinished

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

56 Patents Regulations 1991

business) was not done before the commencement of these

Regulations.

17.2 The unfinished business may be finished by the new Board in

accordance with Part 4 of Chapter 20 of the Patents Regulations.

17.3 Any reply or further information sought by the old Board under

regulation 20.20 of the Patents Regulations, but not given to the

old Board before the commencement of these Regulations must be

given to the new Board in accordance with regulation 20.20 as if

the reply or further information had been sought by the new Board.

Patents Amendment Regulations 1999 (No. 3) (1999 No. 261)

4 Transitional

Paragraphs 6.3(ea) and (eb) as substituted by these Regulations do

not apply to a patent or patent application for which, before the

commencement of these Regulations, the Commissioner extended

the time for making an application under section 38 or 94 of the

Act.

Patents Amendment Regulations 2002 (No. 1) (2002 No. 59)

4 Transitional

(1) The amendment made by item [3] of Schedule 1 applies to

information made publicly available on or after 1 April 2002.

(2) The amendment made by item [19] of Schedule 1 does not apply to

an application that has lapsed because of paragraph 142(2)(f) of the

Act.

(3) The amendment made by item [28] of Schedule 1 applies to an

application made on or after 1 April 2002.

Patents Amendment Regulations 2002 (No. 4) (2002 No. 317)

4 Transitional

(1) The amendments made by items [1] to [4] and [6] to [15] of

Schedule 2 apply in relation to an international application if the

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

Patents Regulations 1991 57

international filing date of the application is a date on or after

1 January 2003.

(2) The amendments made by items [5] and [16] of Schedule 2 apply

in relation to an international application if the applicable time

limit under Article 22 or 39(1) of the PCT expires on or after

1 January 2003.

Note: international application, international filing date and PCT have the meanings given in the dictionary in Schedule 1 to the Act.

Patents Amendment Regulations 2003 (No. 3) (2003 No. 316)

4 Transitional

(1) The amendments made by items [7] to [171] of Schedule 2 apply to

an international application if the international filing date of the

application is a date on or after 1 January 2004.

(2) However:

(a) the amendments made by items [50] and [171] of Schedule 2

do not apply to an international application that is filed

before 1 January 2004 but is given an international filing date

that is on or after 1 January 2004; and

(b) the amendments made by items [44], [104], [105], [106],

[108], [114] to [125] and [166] of Schedule 2 also apply to an

international application that was filed before 1 January 2004

if a demand for international preliminary examination of the

application is filed on or after 1 January 2004; and

(c) the amendments made by items [143] to [145] of Schedule 2

also apply to an international application that was filed

before 1 January 2004, for which an international preliminary

examination report is established on or after 1 January 2004;

and

(d) the amendment made by item [170] of Schedule 2 also

applies to the giving, on or after 1 January 2004, of copies of

an international preliminary examination report for an

application that was filed before 1 January 2004.

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

58 Patents Regulations 1991

Patents Amendment Regulations 2004 (No. 2) (2004 No. 193)

4 Transitional—amendments made by Schedule 2

(1) This regulation applies to a PCT application that, before 1 July

2004 was not open to public inspection.

(2) If the PCT application was filed before 1 January 2004,

regulations 8.3, 8.4 and 13.5 of the Patents Regulations 1991, as in

force immediately before 1 July 2004, continue to apply in relation

to the application.

(3) If the PCT application was filed after 31 December 2003 and

published under Article 21 of the PCT before 1 July 2004, it is

taken, for paragraph 90(b) of the Act as modified under

regulation 8.3 of the Patents Regulations 1991, to have been

published on 1 July 2004.

Patents Amendment Regulations 2004 (No. 4) (2004 No. 395)

4 Transitional

(1) The amendments made by items [2] and [4] of Schedule 1 apply to

an application in relation to which the applicant had not met the

requirements of subsection 89(3) of the Patents Act 1990 before

these Regulations commence.

(2) The amendment made by item [3] of Schedule 1 applies to an

application in relation to which a patent request and complete

specification had not been accepted under section 49 of the Patents

Act 1990 before these Regulations commence.

(3) The amendments made by items [5] to [8] of Schedule 1 apply to

requests for leave to amend in relation to which the Commissioner

had not granted leave under regulation 10.5, and in respect of

which the corresponding patent request and complete specification

had not been accepted under section 49 of the Patents Act 1990,

before these Regulations commence.

(4) The amendment made by item [10] of Schedule 1 applies to an

application for an innovation patent in relation to which a patent

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

Patents Regulations 1991 59

request and complete specification had not been accepted under

section 52 of the Patents Act 1990 before these Regulations

commence.

Patents Amendment Regulations 2005 (No. 1) (2005 No. 51)

4 Transitional

(1) The amendments made by Schedule 1 apply to an entry in the

Register made:

(a) on or after the commencement of these Regulations; and

(b) before the commencement of these Regulations.

(2) The amendments made by items [2] to [23] of Schedule 2 apply to

an international application if the international filing date of the

application is a date on or after 1 April 2005.

(3) However, the amendments made by items [10] and [18] to [21] of

Schedule 2 also apply to an international application that was filed

before 1 April 2005 if a demand for international preliminary

examination of the application is filed on or after 1 April 2005.

Patents Amendment Regulations 2006 (No. 1) (2006 No. 55)

4 Transitional

(1) The amendments made by Part 2 of Schedule 1 apply in relation to:

(a) an international application:

(i) the filing date of which occurred before 1 April 2006;

and

(ii) that is published under Article 21 of the Patent

Cooperation Treaty on or after 1 April 2006; and

(b) an international application the filing date of which occurs on

or after 1 April 2006.

(2) The amendments made by Part 3 of Schedule 1 apply in relation to:

(a) an international application:

(i) the filing date of which occurred before 1 April 2006;

and

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

60 Patents Regulations 1991

(ii) that is communicated under Article 20 of the Patent

Cooperation Treaty on or after 1 April 2006; and

(b) an international application the filing date of which occurs on

or after 1 April 2006.

(3) The amendments made by Part 4 of Schedule 1 apply in relation to

the issue, on or after 1 April 2006, of a Gazette in relation to an

international application the filing date of which occurred at any

time.

(4) The amendments made by Part 5 of Schedule 1 apply in relation to:

(a) the communication, on or after 1 April 2006, of an

international application the filing date of which occurred at

any time; and

(b) the communication, on or after 1 April 2006, of a Gazette in

relation to an international application the filing date of

which occurred at any time; and

(c) the communication, on or after 1 April 2006, of another

publication in relation to an international application the

filing date of which occurred at any time.

Intellectual Property Legislation Amendment Regulations 2007 (No. 1)

(2007 No. 40)

8 Transitional provisions for Schedule 4—amendments of Patents

Regulations 1991 commencing on 1 April 2007

(1) Subject to subregulation (2), the amendments made by Schedule 4

apply to an international application whose filing date is on or after

1 April 2007.

(2) An amendment made by an item of Schedule 4 mentioned in an

item in table 1, to a provision of the Rules mentioned in that table,

does not apply to an international application in respect of which 1

or more elements referred to in Article 11(1)(iii) were first received

by the receiving Office before 1 April 2007.

Table 1

Item Item of Schedule 4 Provision of the Rules

1 29 Rule 4.1(c)(iv)

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

Patents Regulations 1991 61

Item Item of Schedule 4 Provision of the Rules

2 31 Rule 4.18

Rule 4.19

3 35 Rule 12.1 bis

4 38 Rule 12.3

5 39 Rule 20.1

Rule 20.2

Rule 20.3

Rule 20.4

Rule 20.5

Rule 20.6

Rule 20.7

Rule 20.8

6 40 Rule 21.2

7 41 Rule 22.1

8 42 Rule 26.1

Rule 26.2

9 43 and 44 Rule 26.3 ter

10 45 Rule 26.4

Rule 26.5

11 55 Rule 48.2(b)(v)

12 58 Rule 51.1

Rule 51.2

13 59 Rule 51 bis

.1(e)

14 61 Rule 55.2

15 69 and 70 Rule 76.5

16 71 Rule 82 ter

.1

(3) The amendments made by Schedule 4 do not apply to an

international application whose filing date is before 1 April 2007,

except as mentioned in subregulation (4).

(4) For subregulation (3), an amendment made by an item of

Schedule 4 mentioned in an item in table 2, to a provision of the

Rules mentioned in that table, applies to an international

application whose filing date is before 1 April 2007, in the

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Endnotes

Endnote 3—Application, saving and transitional provisions

62 Patents Regulations 1991

circumstance or subject to the condition mentioned in the item in

table 2.

Table 2

Item Item of

Schedule 4

Provision of the

Rules

Circumstance or condition

1 48 and 49 Rule 34.1 Applies in relation to any

international search carried out on

or after 1 April 2007

2 52 Rule 43.4 Applies in relation to an

international application in respect

of which an international search

report is established on or after

1 April 2007

3 53

54

65

66

67

Rule 43.6 bis

Rule 43 bis

.1(b)

Rule 66.1(d)

Rule 66.4 bis

Rule 70.2(e)

Apply in relation to international

search reports, written opinions

and international preliminary

examination reports established on

or after 1 April 2007, as if

references to rectifications of

obvious mistakes authorised under

Rule 91.1 were references to

rectifications of obvious errors

authorised under that Rule before

1 April 2007

4 56 Rule 48.3(c) Applies in relation to an

international application that is

published under Article 21 on or

after 1 April 2007

5 57 Rule 49 ter

.2 Applies in respect of acts

mentioned in Article 22 (1) that

are performed on or after 1 April

2007

6 60

61

62

62

Rule 54 bis

.1(a)

Rule 55.2 (a ter

)

Rule 55.2(c)

Rule 55.2(d)

Apply in relation to an

international application in respect

of which a demand for

international preliminary

examination is made on or after

1 April 2007

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Endnotes

Endnote 3—Application, saving and transitional provisions

Patents Regulations 1991 63

Item Item of

Schedule 4

Provision of the

Rules

Circumstance or condition

7 70 Rule 76.5 Applies, to the extent that it has

the effect of making Rule 49 ter

.2

applicable, in respect of acts

mentioned in Article 39 (1)(a) that

are performed on or after 1 April

2007

(5) In relation to the amendment made by item 39 of Schedule 4,

information as to incompatibility given to the International Bureau

under Rule 20.4(d) before 1 April 2007 is taken to remain effective

under Rule 20.1(d) on or after 1 April 2007.

(6) In relation to the amendment made by item 60 of Schedule 4,

information as to incompatibility given to the International Bureau

under Rule 51 bis

.1(f) in relation to Rule 51 bis

.1(e) before 1 April

2007 is taken to remain effective under Rule 51 bis

.1(f) in relation to

Rule 51 bis

.1(e) on or after 1 April 2007.

Patents and Trade Marks Legislation Amendment Regulations 2008 (2008

No. 122)

5 Transitional

(1) The amendments made by Schedules 1 and 2 apply to:

(a) an application for registration received on or after 1 July

2008; and

(b) a disciplinary proceeding commenced on or after 1 July

2008.

(2) For paragraph (1)(b), disciplinary proceedings are taken to have

commenced on or before 30 June 2008 if, on or before that date,

the Board has given written authority to a complainant to bring

proceedings against a registered patent attorney.

(3) If, on or before 30 June 2008:

(a) a person has been granted an exemption from a requirement

in Schedule 5 to the Patents Regulations 1991; or

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

64 Patents Regulations 1991

(b) the Board has decided that it is satisfied that a person has an

academic qualification; or

(c) the Board has accredited a course of study;

the exemption, decision or accreditation applies to that person or

course, as if it had been exempted, decided or accredited under the

relevant provision of the Patents Regulations 1991, as amended by

these Regulations.

(4) If, in the period starting on 1 July 2008 and ending at the end of

30 June 2009:

(a) a person would have satisfied the employment requirements

set out in regulation 20.3 of the Patents Regulations 1991

immediately before the commencement of Schedule 1; and

(b) the person applies for registration as a patent attorney;

the person is taken to meet the employment requirements.

Patents Amendment Regulations 2008 (No. 1) (2008 No. 178)

4 Transitional provision for international applications received or

filed before commencement

(1) Despite the amendment of Schedule 2A to the Patents

Regulations 1991 by Schedule 1 to these Regulations, Schedule 2A

to the Patents Regulations 1991, as in force immediately before

1 July 2008, continues to apply in relation to an international

application whose international filing date is earlier than 1 July

2008.

(2) Despite the amendment of:

(a) the Schedule of Fees in Schedule 2A to the Patent

Regulations 1991 by Schedule 1 to these Regulations; and

(b) Part 4 of Schedule 7 to the Patents Regulations 1991 by

Schedule 1 to these Regulations;

the Schedule of Fees in Schedule 2A, and Part 4 of Schedule 7, to

the Patents Regulations 1991, as in force immediately before

1 July 2008, continue to apply in relation to an international

application:

(c) whose international filing date is earlier than 1 July 2008; or

(d) that was received by the Patent Office before 1 July 2008.

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

Patents Regulations 1991 65

Intellectual Property Legislation Amendment Regulations 2008 (No. 1)

(2008 No. 279)

3 Amendment of Patents Regulations 1991—Schedule 1

(1) Schedule 1 amends the Patents Regulations 1991.

(2) The amendments made by Schedule 1 apply in relation to an

international application whose international filing date is on or

after 1 January 2009.

(3) The amendments made by items [1] to [5] and [7] to [17] of

Schedule 1 also apply in relation to an international application if:

(a) the international filing date of the application is earlier than

1 January 2009; and

(b) the time limit for making a supplementary search request in

relation to the application under Rule 45bis.1(a) of

Schedule 2A to the Patents Regulations 1991, as amended by

Schedule 1 to these Regulations, expires on or after 1 January

2009.

Intellectual Property Law Amendment Regulations 2009 (No. 1) (2009

No. 150)

3 Amendment of Patents Regulations 1991—Schedule 1

(1) Schedule 1 amends the Patents Regulations 1991.

(2) The amendment made by item [3] of Schedule 1 applies in relation

to an international application whose international filing date is on

or after 1 July 2009.

(3) The amendments made by items [4] to [7] of Schedule 1 apply in

relation to an international application for which an amendment

under Article 19 or 34 of the PCT is made on or after 1 July 2009.

Intellectual Property Legislation Amendment Regulations 2011 (No. 1)

(2011 No. 62)

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

66 Patents Regulations 1991

3 Amendment of Patents Regulations 1991

(1) Schedule 1 amends the Patents Regulations 1991.

(2) The amendment of regulation 22.2EA of the Patents

Regulations 1991 made by item [7] of Schedule 1 applies in

relation to request for leave to amend a complete specification:

(a) if:

(i) the request was made before the commencement of

Schedule 1; and

(ii) on or after the commencement of Schedule 1, the

Commissioner invites the person by whom the fee

relating to the grant of leave is payable to pay the fee in

accordance with regulation 22.2EA; or

(b) if the request is made on or after the commencement of

Schedule 1.

(3) The amendments made by items [8] to [10] of Schedule 1 apply in

relation to a document filed on or after the commencement of

Schedule 1.

4 Amendment of Patents Regulations 1991

(1) Schedule 2 amends the Patents Regulations 1991.

(2) The amendments made by items [5], [6], [8] to [12] and [14] of

Schedule 2 apply in relation to an international application under

the Patent Cooperation Treaty whose international filing date is on

or after 1 July 2011.

(3) The amendment made by item [7] of Schedule 2 applies in relation

to an international application under the Patent Cooperation Treaty

in respect of which:

(a) the applicant has performed the acts referred to in Article 22

or Article 39 of the Treaty on or after 1 July 2011; and

(b) an amendment under Article 19 or Article 34 of the Treaty

was filed on or after 1 July 2009.

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

Patents Regulations 1991 67

(4) The amendment made by item [13] of Schedule 2 applies in

relation to an international preliminary examination report under

the Patent Cooperation Treaty which is completed in accordance

with Rule 70.4 of the Treaty on or after 1 July 2011, irrespective of

the international filing date of the relevant international

application.

Intellectual Property Legislation Amendment Regulations 2012 (No. 1)

(2012 No. 66)

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.

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 3—Application, saving and transitional provisions

68 Patents Regulations 1991

(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.

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 4—Uncommenced amendments

Patents Regulations 1991 69

Endnote 4—Uncommenced amendments

This endnote sets out amendments of the Patents Regulations 1991 that have

not yet commenced.

There are no uncommenced amendments.

Federal Register of Legislative Instruments F2013C00202

Endnotes

Endnote 5—Misdescribed amendments

70 Patents Regulations 1991

Endnote 5—Misdescribed amendments

This endnote sets out amendments of the Patents Regulations 1991 that have

been misdescribed.

There are no misdescribed amendments.

Federal Register of Legislative Instruments F2013C00202


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