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Statutory Rules 1995 No. 161
Patents Regulations2 (Amendment)
TABLE OF PROVISIONS
Regulation page 1. Commencement 1 2. Amendment 2 3. Regulation 1.4 (English text of treaties) .................................................................................................2 4. Regulation 1.6 (Disclosure) .....................................................................................................................2 5. Regulation 2.3 (Prescribed period: publication or use affecting
validity)..............................................................................................................2 6. Regulation 2.4 (Prescribed period: patents of addition) ........................................................................3 7. Regulation 2.7 (Documents to accompany notice of assertion of
invalidity)...........................................................................................................3 8. Regulation 3.3 (Abstracts) .......................................................................................................................3 9. Regulation 3.4 (Substitute abstracts).......................................................................................................4 10. Regulation 3.8 (Applications to be made before certain decisions and
declarations) ......................................................................................................4 11. Regulation 3.12 (Priority dates generally) ..............................................................................................5 12. Regulation 3.18 (Report of Commissioner: examination).....................................................................6 13. Regulation 4.2 (Notice that specification is open to public inspection) ...............................................6 14. Regulation 4.3 (Prescribed documents: public inspection) ...................................................................6 15. Regulation 5.1 (Application of this Chapter) .........................................................................................7 16. Regulation 5.3 (Filing of opposition)......................................................................................................7 17. New regulation 5.3A 7 Amendment of notice of opposition.....................................................................................................................7 18. Regulation 5.8 (Time for giving of evidence) ........................................................................................8 19. Regulation 5.9 (Amendment of statement).............................................................................................9 20. Regulation 5.13 (Representations to Commissioner).............................................................................9 21. Regulation 8.2 (Prescribed documents: PCT application).....................................................................9 22. Regulation 8.6 (Particulars required for Convention application) ........................................................9 23. Regulation 10.1 (Form of amendments) .................................................................................................10 24. Regulation 10.5 (Commissioner to grant leave to amend) ....................................................................10 25. Regulation 10.6 (Allowance of amendments) ........................................................................................11 26. Regulation 13.4 (Prescribed period: acceptance of request and
specification) .....................................................................................................12 27. Regulation 19.2 (Request for information from Commissioner) ..........................................................14 28. Regulation 20.16 (Certificate of completion of examinable subjects
and of academic qualifications)........................................................................14 29. Regulation 22.3 (General fees for international applications)...............................................................15 30. Regulation 22.4 (Fees for international applications payable for the
benefit of the International Bureau) .................................................................15
1 Notified in the Commonwealth of Australia Gazette on 14 February 1995. 2 Statutory Rules 1991 No. 71 as amended by 1991 No. 456; 1992 No. 148; 1993 Nos. 113, 227, 340 and 341; 1994 Nos. 182,
317 and 387.
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31. Regulation 22.15 (Documents to be in English) ....................................................................................15 32. Regulation 22.26 (Review of decisions).................................................................................................15 33. Regulation 23.3 (Opposition to grant: practice and procedure) ............................................................15 34. Regulation 23.4 (Certain opposition: practice and procedure)..............................................................15 35. Regulation 23.11 (Supply of product referred to in section 117 of the
Act).....................................................................................................................16 36. Regulation 23.14 (Certain action under the 1952 Act) ..........................................................................16 37. Regulation 23.20 (Patent attorneys: continued application of certain
provisions) .........................................................................................................16 38. Schedule 1 (Budapest Treaty on the International Recognition of the
Deposit of Microorganisms for the Purposes of Patent Procedure)...............17 39. Formal amendments of Schedule 1 (Budapest Treaty on the
International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure)..........................................................................17
40. Formal amendments of Schedule 2 (Patent Cooperation Treaty) .........................................................18 41. Schedule 3 (Formal requirements for documents to be filed) ...............................................................18 42. Schedule 7 (Fees) 19 43. Formal amendments 19 44. Omission of certain notes.........................................................................................................................19 45. Transitional 19 SCHEDULE 1 ............................................................................................................................20
NEW SCHEDULE 1A SCHEDULE 2 ............................................................................................................................22
NEW SCHEDULE 2A SCHEDULE 3 ............................................................................................................................34
Statutory Rules 1995 No. 161
Patents Regulations2 (Amendment)
I, THE GOVERNOR-GENERAL of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following Regulations under the Patents Act 1990.
Dated 7 February 1995.
BILL HAYDEN Governor-General
By His Excellency’s Command,
C. SCHACHT Minister for Small Business, Customs
and Construction
1. Commencement 1.1 Regulation 38 is taken to have commenced on 30 April 1991.
1 Notified in the Commonwealth of Australia Gazette on 14 February 1995. 2 Statutory Rules 1991 No. 71 as amended by 1991 No. 456; 1992 No. 148; 1993 Nos. 113, 227, 340 and 341; 1994 Nos. 182,
317 and 387.
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[NOTE: The remainder of these Regulations commence on gazettal: see Acts Interpretation Act 1901, s. 48.]
2. Amendment 2.1 The Patents Regulations are amended as set out in these Regulations.
3. Regulation 1.4 (English text of treaties) 3.1 Omit the regulation, substitute:
English text of treaties
“1.4 (1) The English text of the Budapest Treaty as in force for Australia on 30 April 1991 is the text set
out in Schedules 1 (the Treaty) and 1A (the Regulations under the Treaty). “(2) The English text of the PCT as in force for Australia on 1 January 1994 is the text set out in
Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty).
[NOTE: This Regulation is made for the purposes of subsection 228 (5) of the Act.]”.
4. Regulation 1.6 (Disclosure) 4.1 Subregulation 1.6 (1):
Omit “the end of the day”.
5. Regulation 2.3 (Prescribed period: publication or use affecting validity) 5.1 Subregulation 2.3 (1):
Omit “the prescribed period”, substitute “in the case of information of the kind referred to in paragraph 24 (1) (a) of the Act, the prescribed period”.
5.2 Subregulation 2.3 (2): Omit “For the purposes of paragraph 24 (1) (b) of the Act,”, substitute “For the purposes of subsection 24 (1) of the Act, in the case of information of the kind referred to in paragraph 24 (1) (b) of the Act,”.
6. Regulation 2.4 (Prescribed period: patents of addition) 6.1 Omit the regulation, substitute:
Prescribed period: patents of addition
“2.4 (1) For the purposes of section 25 of the Act (“validity: patents of addition”), 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.”.
7. Regulation 2.7 (Documents to accompany notice of assertion of invalidity) 7.1 Paragraph 2.7 (a):
Omit the paragraph, substitute: “(a) 2 copies of the document; and”. 7.2 Paragraph 2.7 (b):
Omit the paragraph, substitute: “(b) if the document is not in English—2 copies of:
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(i) a translation of the document into English; and (ii) a related certificate of verification; and”.
8. Regulation 3.3 (Abstracts) 8.1 Paragraph 3.3 (1) (b):
Omit “invention; and”, substitute “invention.”. 8.2 Paragraph 3.3 (1) (c):
Omit the paragraph.
9. Regulation 3.4 (Substitute abstracts) 9.1 Subregulation 3.4 (5):
Omit the subregulation, substitute: “(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.”.
10. Regulation 3.8 (Applications to be made before certain decisions and declarations) 10.1 Omit the regulation, substitute:
Time within which applications are to be made following certain decisions and declarations
“3.8 An application under section 29 of the Act (‘application for patent’) must be made: (a) in the case of an application of the kind described in section 33 of the Act (‘applications by
opponents etc.’)–within 3 months of the decision of the Commissioner referred to in paragraph 33 (1) (b) or (2) (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 (‘applications by eligible persons arising out of court proceedings’)–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 (‘applications by eligible persons following revocation by Commissioner’)–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 (‘other applications by eligible persons’)–within 3 months of the declaration of the Commissioner under subsection 36 (1) of the Act.”.
11. Regulation 3.12 (Priority dates generally) 11.1 Paragraph 3.12 (1) (b):
Omit the paragraph, substitute: “(b) if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing
the priority document in which the matter was first disclosed;”. 11.2 Subregulation 3.12 (2):
Omit the subregulation, substitute: “(2) For the purposes of paragraph (1) (b): (a) if the application that relates to the specification containing the claim is a complete application–
a provisional application that is associated with that complete application in accordance with section 38 of the Act (‘time for making complete application’) is a priority document; and
(b) if the application that relates to the specification containing the claim is a Convention application, a document of any of the following kinds is a priority document:
(i) a basic application that is related to the Convention application; (ii) a specification, or another document filed in respect of, and at the same time as, a basic
application that is related to that Convention application; or
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(iii) a specification in respect of a basic application that is related to that Convention application, being a specification that was filed after the basic application was made;
(c) if: (i) the application that relates to the specification containing the claim is a PCT application
that, under Article 8 of the PCT, claims the priority of an earlier application; and (ii) that earlier application is:
(A) an application made in Australia not more than 12 months before the international filing date of the PCT application; or
(B) a basic application, made not more than 12 months before the international filing date of the PCT application, that is the first application made in a Convention country in respect of the invention; or
(C) a basic application made after a basic application referred to in subparagraph (B); that earlier application, and a specification filed in relation to that earlier application after it was made, are priority documents.
“(2A) For the purposes of paragraph (1) (b) and subregulation (2), ‘filed’ includes filed with the Patent Office and filed with a corresponding Office of another country.
“(2B) A reference in subregulation (2) to a basic application does not include a basic application that has been disregarded by the Commissioner under section 96 of the Act (‘withdrawn, abandoned or refused applications’).”.
12. Regulation 3.18 (Report of Commissioner: examination) 12.1 Paragraph 3.18 (2) (b):
Omit the paragraph.
13. Regulation 4.2 (Notice that specification is open to public inspection) 13.1 Paragraph 4.2 (2) (c):
Omit “has been” (second occurring).
14. Regulation 4.3 (Prescribed documents: public inspection) 14.1 Paragraph 4.3 (f):
Omit “subregulation 3.1 (1)”, substitute “regulation 3.1”. 14.2 Add at the end: “; (g) a notification under subregulation 3.25 (3) (‘request for Commissioner’s certificate authorising
release of sample of a micro-organism’). “(2) For the purposes of paragraphs 55 (2) (a), (b) and (c) of the Act, a document is a prescribed
document if it is subject to an order of: (a) a prescribed court or a court; or
(b) the Tribunal or a tribunal; prohibiting its disclosure or prohibiting the disclosure of information contained in it.”.
15. Regulation 5.1 (Application of this Chapter) 15.1 Paragraph 5.1 (b):
Omit “(‘amendment of documents by Commissioner’)”, substitute “(‘correction of Register or patent’)”.
16. Regulation 5.3 (Filing of opposition) 16.1 Subregulation 5.3 (3):
Omit “or 10.7 (3) (‘correction of Register or patent’)”. 16.2 After subregulation 5.3 (5), insert: “(5A) A person who intends to oppose a request for amendment of the Register or a patent under
subregulation 10.7 (4) (‘correction of Register or patent’) must file a notice of opposition in the approved
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form within 3 months of the publication in the Official Journal of the notice referred to in subregulation 10.7 (3).”.
17. New regulation 5.3A 17.1 After regulation 5.3, insert:
Amendment of notice of opposition
“5.3A (1) An opponent may request the Commissioner in writing to amend a notice of opposition for the
purpose of correcting a clerical error or obvious mistake. “(2) The Commissioner may grant the request on the terms (if any) that the Commissioner specifies
by notice to the opponent making the request. “(3) The Commissioner must give the parties an opportunity to make representations concerning the
proposed amendment. “(4) If the Commissioner allows an amendment, he or she must give the applicant a copy of the
notice as amended.”.
18. Regulation 5.8 (Time for giving of evidence) 18.1 Sub-subparagraph 5.8 (1) (a) (i) (B):
Add at the end “or”. 18.2 Paragraph 5.8 (2) (a):
Omit the paragraph, substitute: “(a) serve on the opponent a copy of any evidence in answer to the evidence in support of the
opposition referred to in subregulation 5.4 (2) or paragraph (1) (a) within 3 months after being served with that evidence in support of the opposition; and”.
18.3 Subregulation 5.8 (4): Omit the subregulation, substitute:
“(4) Subject to subregulation (5), if an opponent intends to rely on evidence in reply to the evidence referred to in paragraph (2) (a) or (3) (a), the opponent must:
(a) within 1 month of being served with a copy of the evidence under paragraph (2) (a) or (3) (a), serve on the applicant:
(i) a copy of the evidence in reply; or (ii) if the opponent does not serve on the applicant a copy of the evidence in reply–a copy of
a notice of intention to serve evidence in reply; and (b) if the opponent serves on the applicant a copy of a notice of intention to serve evidence in
reply–serve on the applicant a copy of that evidence within 3 months of being served with a copy of the evidence under paragraph (2) (a) or (3) (a); and
(c) file the evidence in reply and any notice of intention as soon as practicable after the copy of the evidence in reply or notice has been served on the applicant.”.
19. Regulation 5.9 (Amendment of statement) 19.1 Subregulation 5.9 (1):
Omit “The Commissioner”, substitute “Subject to subregulation (2), the Commissioner”. 19.2 Paragraph 5.9 (1) (b):
Omit “referred to in”, substitute “that is served and filed under”. 19.3 Paragraph 5.9 (1) (c):
Omit “referred to in”, substitute “set out in a statement that is served and filed under”.
20. Regulation 5.13 (Representations to Commissioner) 20.1 After “A representation referred to in”, insert “subregulation 5.3A (3) (‘amendment of notice of opposition’),”.
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21. Regulation 8.2 (Prescribed documents: PCT application) 21.1 Subregulation 8.2 (1) (definition of “PCT application”): Omit the definition, substitute:
“‘PCT application’ includes: (a) an amendment under Article 19 or 34 of the PCT; or (b) a rectification under Rule 91 of the Regulations annexed to the PCT.”.
22. Regulation 8.6 (Particulars required for Convention application) 22.1 Paragraph 8.6 (1) (a):
Omit the paragraph. 22.2 Paragraph 8.6 (1) (e):
Omit “paragraphs (a) to (d)”, substitute “paragraphs (b) to (d)”. 22.3 Subregulation 8.6 (2):
Add at the end: “; (c) if the certification referred to in paragraph (a) is not in English–a translation of that certification
into English and a related certificate of verification.”.
23. Regulation 10.1 (Form of amendments) 23.1 After subregulation 10.1 (1), insert: “(1A) If an applicant proposes to amend a patent request, complete specification or other filed
document: (a) to remove a lawful ground of objection raised:
(i) in the case of an application for a standard patent–in an examination report; or (ii) in the case of an application for a petty patent–in a notification under subsection 50 (2) of
the Act (‘consideration and acceptance of patent request: petty patent’); or (b) in anticipation:
(i) in the case of an application for a standard patent–of examination of the patent request and specification; or
(ii) in the case of an application for a petty patent–of consideration of the patent request and complete specification under section 50 of the Act;
the applicant is taken to have complied with subregulation (1) if a written statement of the proposed amendments is filed.”.
24. Regulation 10.5 (Commissioner to grant leave to amend) 24.1 Subregulation 10.5 (1):
Omit the subregulation, substitute: “(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:
(i) are proposed in anticipation of, or in response to: (A) a report relating to an examination; or (B) a notice relating to a consideration of a complete application for a petty patent
under section 50 of the Act (‘consideration and acceptance of patent request: petty patent’); and
(ii) do not relate to matters mentioned in paragraph 6 (c) of the Act (‘deposit requirements’); if the Commissioner reasonably believes that the proposed amendments would remove all lawful grounds of objection to the patent request and complete specification.”.
25. Regulation 10.6 (Allowance of amendments) 25.1 Omit the regulation, substitute:
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Time for allowance of amendments
“10.6 (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. “(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 Tribunal 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 Tribunal 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.”.
26. Regulation 13.4 (Prescribed period: acceptance of request and specification) 26.1 Omit the regulation, substitute:
Prescribed period: acceptance of request and specification
“13.4 (1) Subject to this regulation, the period prescribed for the purposes of paragraph 142 (2) (e) of the
Act (‘lapsing of applications’) in relation to an application is: (a) if the applicant has not made a request under subsection 47 (1) of the Act (‘request for modified
examination’)–the period of 21 months commencing on the date of the first report (if any) under section 45 of the Act (‘examination’);
(b) the period of 21 months commencing on the date of the first report (if any) under section 48 of the Act (‘modified examination’);
(c) if examination is requested under subsection 47 (2) of the Act (‘request for modified examination’) after the Commissioner first reports under section 48 of the Act–the period of 12
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months commencing on the date of the first report on the examination 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 commencing on 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 (‘disputes between applicants etc.’)–subject to subregulation (3), the period of 3 months commencing on 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 (‘other applications by eligible
persons’) in relation to the patent request and complete specification; and (ii) the Commissioner declares under that subsection that the applicant in relation to the
request and complete specification is an eligible person; subject to subregulation (3), the period of 3 months commencing on the date of that declaration;
(g) if: (i) a person has applied under subsection 36 (1) of the Act (‘other applications by eligible
persons’) in relation to the patent request and complete specification; and (ii) the Commissioner declares under that subsection that that person is an eligible person;
either: (iii) if the person has already lodged an application–subject to subregulation (3), the period of
3 months commencing on the date of the Commissioner’s declaration; or (iv) in any other case–the period determined under whichever of paragraphs (a), (b) and (c)
applies; (h) if an appeal has been made to a prescribed court, or an application for review has been made to
the Tribunal, in relation to the patent request or complete specification–subject to subregulation (4), the period of 3 months commencing on 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 Tribunal in respect of the application for a patent for the main invention;
subject to subregulation (4), the period of 3 months commencing on the day when the appeal or application is withdrawn or finally dealt with or determined.
“(2) If more than 1 of paragraphs (1) (a) to (j) applies in a particular case, the lapsing period is the longer or longest period so worked out.
“(3) If paragraph (1) (e) or (f) or subparagraph (1) (g) (iii) 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.”.
27. Regulation 19.2 (Request for information from Commissioner) 27.1 Subregulation 19.2 (1):
Omit “paragraph 194 (c)”, substitute “section 194”.
28. Regulation 20.16 (Certificate of completion of examinable subjects and of academic qualifications) 28.1 Paragraph 20.16 (a):
Omit the paragraph, substitute:
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“(a) has passed, or is exempt under regulation 20.13 (‘exemption from examination’) from having to pass an examination in, the subjects specified in Schedule 5; and”.
29. Regulation 22.3 (General fees for international applications) 29.1 Paragraph 22.3 (1) (a):
Omit “the Commissioner or”.
30. Regulation 22.4 (Fees for international applications payable for the benefit of the International Bureau)
30.1 Subregulation 22.4 (1): Omit “the Commissioner or”.
31. Regulation 22.15 (Documents to be in English) 31.1 Subregulation 22.15 (2):
Omit “the Commissioner or”.
32. Regulation 22.26 (Review of decisions) 32.1 Paragraph 22.26 (2) (a):
After subparagraph 22.26 (2) (a) (v), insert: “(va) subregulation 13.4 (3);”.
33. Regulation 23.3 (Opposition to grant: practice and procedure) 33.1 Add at the end: “(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.”.
34. Regulation 23.4 (Certain opposition: practice and procedure) 34.1 Subparagraph 23.4 (1) (c) (i):
Omit “84 and 85”, substitute “84, 85 and 94”. 34.2 Subparagraph 23.4 (1) (c) (ii):
Omit “106 (5)”, substitute “160 (5)”. 34.3 Subparagraph 23.4 (1) (d) (i):
After “52,”, insert “76, 77, 78,”.
35. Regulation 23.11 (Supply of product referred to in section 117 of the Act) 35.1 Paragraph 23.11 (2) (d):
Omit “the person who acquires that business.”, substitute “a person who acquires that business, whether from the first-mentioned person or from some other person.”.
36. Regulation 23.14 (Certain action under the 1952 Act) 36.1 Omit “of this Act referred to in paragraph (a).”, substitute “referred to in paragraph (a) under which the act is required to be done.”.
37. Regulation 23.20 (Patent attorneys: continued application of certain provisions) 37.1 Subregulation 23.20 (1):
Omit the subregulation, substitute:
“23.20 (1) In this regulation: ‘prescribed person’ means a person who has, before the commencing day:
(a) passed the examination in a subject specified in subregulation 10 (2) of the former attorneys Regulations; or
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(b) been issued with a certificate under regulation 20A or 22 of the former attorneys Regulations; or
(c) met the requirements of regulation 21 of the former attorneys Regulations.”.
38. Schedule 1 (Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure)
38.1 Paragraph 6.3 (b) of the Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure: Omit the paragraph, substitute:
“(b) Any international depositary authority shall communicate any such requirements and any amendments thereof to the International Bureau.”.
39. Formal amendments of Schedule 1 (Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure)
39.1 Omit the heading:
“Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes
of Patent Procedure”, substitute:
“BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE
PURPOSES OF PATENT PROCEDURE”. 39.2 Omit the heading:
“Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes
of Patent Procedure” and the Table of Provisions following that heading.
39.3 After article 20 of the Treaty, insert the heading and Table of Provisions set out in Schedule 1.
40. Formal amendments of Schedule 2 (Patent Cooperation Treaty) 40.1 Omit the heading:
“REGULATIONS UNDER THE PATENT COOPERATION TREATY” and the Table of Provisions following that heading.
40.2 After article 69 of the Treaty, omit: the heading:
“Regulations under the Patent Cooperation Treaty” and the adoption and amendment dates of the Treaty following that heading, substitute the heading, Table of Provisions and further heading set out in Schedule 2.
41. Schedule 3 (Formal requirements for documents to be filed) 41.1 After clause 1, insert:
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Title of specification
“1A. A specification must commence with a short and precise title.”. 41.2 Clause 2 (Fitness for reproduction):
Add at the end: “; and
(f) subject to subparagraph 3.2 (2) (c) (ii) of these Regulations, must be printed on only one side of the sheet.”.
41.3 Clause 5 (Numeration): Add at the end:
“(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.”.
41.4 Clause 6 (Numbering of lines): Omit “on the each”, substitute “on each”.
41.5 Subclause 7 (3) (Writing of textual matter): Omit “1½spaced”, substitute “1 ½-spaced”.
42. Schedule 7 (Fees) 42.1 Part 2 (General Fees):
Paragraph 13 (a): Omit the paragraph, substitute:
“(a) under regulation 5.3A or subregulation 5.9 (3) objecting to a proposed amendment; or”.
43. Formal amendments 43.1 Amendments as set out in Schedule 3.
44. Omission of certain notes 44.1 Notes following regulations 3.1, 3.12, 3.23, 3.24, 3.25, 3.30, 8.1, 8.2, 8.3, 8.4, 17.2, 19.2, 22.3, 22.4, 22.5, 22.7, 22.15, 22.20 and 23.17 and Schedule 7 Part 3 item 7 and Part 4 item 3:
Omit the Notes.
45. Transitional 45.1 In this regulation:
“original paragraph 5.8 (2) (a)” means paragraph 5.8 (2) (a) of the Patents Regulations as that paragraph was in force immediately before the commencement of these Regulations.
45.2 If, on the day on which subregulation 18.2 of these Regulations commences, an opponent has already served on an applicant a copy of the evidence in support of the opposition in accordance with the original paragraph 5.8 (2) (a), then despite the amendment effected by subregulation 18.2 of these Regulations, the original paragraph 5.8 (2) (a) is taken to apply for the purpose of working out the time for service of evidence in answer to that evidence.
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Subregulation 39.3
SCHEDULE 1 NEW SCHEDULE 1A
Subregulation 1.4 (1)
SCHEDULE 1A REGULATIONS UNDER THE BUDAPEST TREATY ON THE
INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE PURPOSES
OF PATENT PROCEDURE
Subregulation 40.2
SCHEDULE 2 NEW SCHEDULE 2A
Subregulation 1.4 (2)
SCHEDULE 2A REGULATIONS UNDER THE PATENT
COOPERATION TREATY
Regulation 43
SCHEDULE 3 MINOR AND FORMAL AMENDMENTS
Provision amended Omit Substitute
Paragraph 1.5 (1) (a) to the end the end
Subregulation 2.2 (2) section 24 paragraph 24 (1) (a)
Subregulation 2.3 (1) section 24 subsection 24 (1)
Paragraph 3.1 (2) (b) priority; priority; and
Subparagraph 3.2 (2) (c) (ii) true copy; and true copy.
Subregulation 3.2 (4) such as are anything
Paragraph 3.18 (3) (a) that section 6 section 6
Subregulation 3.19 (3) Commisioner Commissioner
Subregulation 3.19 (4) Commisioner Commissioner
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Provision amended Omit Substitute
Paragraph 3.21 (a) the the treaty the treaty
Subregulation 3.22 (2) Commisioner Commissioner
Subregulation 3.22 (3) Commisioner Commissioner
Subparagraph 3.30 (d) (i) subregulation 3.29 (3); and subregulation 3.29 (3), and
Paragraph 5.1 (a) sections provisions
Subregulation 5.3 (2) Department of Community Services and Health
Department of Human Services and Health
Subregulation 6.7 (1) Commissioner Commissioner
Regulation 9.4 9.4. 9.4
Paragraph 10.2 (8) (b) Comissioner Commissioner
Subregulation 10.5 (2) Official Journal, where Official Journal, where
Regulation 15.3 application. application is prescribed.
Subregulation 22.6(1) (1). (1)
Subregulation 22.8(2) awards award
Paragraph 22.13 (1) (d) charge d’affaires chargé d’affaires
Subregulation 22.23 (1) the Commissioner The Commissioner
Subparagraph 22.26 (2) (a) (vi) protection protection
Subregulation 23.8 (1) prescribed prescribed
Subregulation 23.8 (1) application application
Subregulation 23.8 (3) “prescribed regulations” “prescribed provisions”
Paragraph 23.10 (a) section 54 (1B) subsection 54 (1B)
Paragraph 23.10 (b) commencing commencing
Paragraph 23.11 (2) (b) first-mentioned first-mentioned
Paragraph 23.18 (b) subsections 45 (2), (3), (3A) and (4A) of the 1952 Act apply
subsection 45 (2), (3), (3A) or (4A) of the 1952 Act applies
Subregulation 23.25 (1) (definition of “renewal fee”)
of of of
Paragraph 23.25 (4) (b) subregulation (1) subregulation 13.3 (1)
[NOTE: Some of the amendments set out in this Schedule have already been incorporated in the reprinted Regulations.]