Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) (Cth)

Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

Select Legislative Instrument No. 31, 2013

I, Quentin Bryce, Governor‑General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following regulation under the Patents Act 1990, the Trade Marks Act 1995, the Designs Act 2003 and the Copyright Act 1968.

Dated              14 March 2013

Quentin Bryce

Governor‑General

By Her Excellency’s Command

Greg Combet

Minister for Industry and Innovation

Contents

1............ Name of regulation........................................................................... 13

2............ Commencement................................................................................ 13

3............ Authority.......................................................................................... 13

4............ Schedule(s)....................................................................................... 13

Schedule 1—Amendments relating to the quality of granted patents 14

Patents Regulations 1991                                                                      14

Schedule 3—Amendments relating to reducing delays in resolution of patent and trade mark applications                                                                            29

Patents Regulations 1991                                                                      29

Trade Marks Regulations 1995                                                              46

Designs Regulations 2004                                                                    107

Schedule 4—Amendments relating to IP professionals                      108

Patents Regulations 1991                                                                     108

Trade Marks Regulations 1995                                                             126

Schedule 5—Amendments relating to improving mechanisms for trade mark and copyright enforcement                                                                          144

Copyright Regulations 1969                                                                 144

Trade Marks Regulations 1995                                                             145

Schedule 6—Amendments relating to simplifying the IP system      154

Designs Regulations 2004                                                                    154

Patents Regulations 1991                                                                     156

Trade Marks Regulations 1995                                                             187

Schedule 7—Amendments relating to transitional provisions          192

Patents Regulations 1991                                                                     192

Trade Marks Regulations 1995                                                             205

Designs Regulations 2004                                                                    210

1Name of regulation

This regulation is the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1).

2Commencement

This regulation commences on 15 April 2013.

3Authority

This regulation is made under:

(a)the Patents Act 1990; and

(b)the Trade Marks Act 1995; and

(c)the Designs Act 2003; and

(d)the Copyright Act 1968.

4Schedule(s)

Each instrument that is specified in a Schedule to this instrument is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this instrument has effect according to its terms.

Schedule 1—Amendments relating to the quality of granted patents

Patents Regulations 1991

1  Before regulation 3.1

Insert:

Division 1—Applications

2  Subregulation 3.3(7)

Repeal the subregulation.

3  Regulations 3.12 and 3.13

Repeal the regulations, substitute:

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

                    (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

                            (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

                           (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

                    (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.

            (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

(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

                    (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.

(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.

4  After regulation 3.14

Insert:

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.

5  Paragraph 3.18(2)(d)

Repeal the paragraph.

6  After subregulation 9.2(1)

Insert:

         (1A)  A request must state:

                    (a)  the grounds of the request; and

                    (b)  the reasons why the grounds are relevant to the complete specification.

7  Subregulations 9.2(2) and (2A)

Repeal the subregulations, substitute:

            (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.

8  Subregulation 9.2(4)

Repeal the subregulation, substitute:

            (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.

9  After regulation 10.2

Insert:

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.

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:

(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.

            (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  Regulation 10.3

Repeal the regulation, substitute:

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.

11  Paragraph 10.4(a)

Omit “10.3(4)”, substitute “10.2C(3)”.

12  Paragraph 10.5(1)(b)

Omit “the Commissioner believes on reasonable grounds”, substitute “the Commissioner is satisfied, on the balance of probabilities,”.

13  Paragraph 10.5(1)(c)

Omit “the Commissioner believes on reasonable grounds”, substitute “the Commissioner is satisfied, on the balance of probabilities,”.

14  Subregulation 19.2(2)

Repeal the subregulation.

15  At the end of subregulation 22.2(2)

Add:

                  ; (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.

16  Paragraph 22.2B(1)(a)

Omit “202 or 203”, substitute “202, 203 or 206”.

17  Paragraph 22.2C(1)(a)

Omit “204, 205 or 206”, substitute “204 or 205”.

18  Part 2 of Schedule 7 (table item 206)

Repeal the item, substitute:

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

19  Part 2 of Schedule 7 (table item 236)

Omit “subregulation 19.2(2) for information that requires”, substitute “regulation 3.14A for”.

20  Part 7 of Schedule 7 (after table item 236)

Insert:

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

Schedule 3—Amendments relating to reducing delays in resolution of patent and trade mark applications

Patents Regulations 1991

1  Subregulations 1.3(4) and (5)

Repeal the subregulations, substitute:

            (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.

2  Chapter 5

Repeal the Chapter, substitute:

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.

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.

            (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.

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.

            (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

                    (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 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.

            (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.

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.

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.

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:

                    (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.

            (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.

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.

Note:       For the requirements the Commissioner must satisfy when exercising a discretionary power adversely to a person, see regulation 22.22.

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

                    (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).

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.

            (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.

            (2)  The Commissioner must give the applicant a copy of the notice of withdrawal as soon as practicable.

3  Chapter 6A

Repeal the Chapter, substitute:

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

                    (b)  the number of the first patent.

4  Subregulations 13.1A(1) and 13.1B(1)

Omit “subsection 141(1)”, substitute “paragraph 141(1)(c)”.

5  Subregulation 22.10(3)

Repeal the subregulation.

6  Regulation 22.10AC

Repeal the regulation, substitute:

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.

7  Subregulation 22.11(4)

Repeal the subregulation, substitute:

            (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 subsection 70(1) of the Act for an extension of the term of the patent;

                    (c)  an action mentioned in Chapter 20.

8  Subregulations 22.21(3) and (4)

Repeal the subregulations, substitute:

            (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.

9  Part 2 of Schedule 7 (table items 216 to 220)

Repeal the items, substitute:

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

Trade Marks Regulations 1995

10  After regulation 2.2

Insert:

2.3  Giving of documents by Registrar

            (1)  In these Regulations, the Registrar 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.

            (2)  If the Registrar 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 Registrar.

11  Part 5

Repeal the Part, substitute:

Part 5—Opposition to registration

Division 1—Preliminary

5.1  What Part 5 is about

                  This Part 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)  a cooling‑off period for an opposition;

                    (e)  the hearing of an opposition;

                     (f)  associated matters.

5.2  Definitions

                  In this Part:

notice of intention to defend means a notice filed under regulation 5.13.

notice of intention to oppose means a notice filed under regulation 5.6.

notice of opposition means:

                    (a)  a notice of intention to oppose; and

                    (b)  a statement of grounds and particulars.

party means an applicant or opponent.

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.

trade mark application means an application for registration of a trade mark under section 27 of the Act.

Note:       The following terms are defined in section 6 of the Act:

(a)    applicant;

(b)    approved form;

(c)    employee;

(d)    file;

(e)    month;

(f)    opponent;

(g)    person.

5.3  Registrar may give direction about filing document or evidence

            (1)  If a document or evidence may or must be filed under this Part, the Registrar may give a direction specifying:

                    (a)  how many copies of the document or evidence must 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)  If a party does not comply with the direction, the Registrar may:

                    (a)  treat the document or evidence as not having been filed; or

                    (b)  tell the party to comply with the direction.

            (3)  The Registrar may make or revoke the direction as the Registrar sees fit.

            (4)  Regulation 5.4 does not apply to the Registrar’s decision to make or revoke the direction.

5.4  Notification and opportunity to make representations

            (1)  This regulation applies if:

                    (a)  a party makes a request to the Registrar under this Part; or

                    (b)  the Registrar proposes to make a decision on the Registrar’s own initiative under this Part.

            (2)  The Registrar must:

                    (a)  for paragraph (1)(a)—notify the other party of the request, including by giving the other party a copy of the request; or

                    (b)  for paragraph (1)(b)—notify the parties of the proposed decision.

            (3)  If the Registrar proposes to grant the request, the Registrar must give the parties an opportunity to make representations:

                    (a)  in writing; or

                    (b)  at a hearing; or

                    (c)  by other means that the Registrar states in the notification.

            (4)  The Registrar must notify the parties of the decision.

Division 2—Filing of opposition documents

Subdivision A—Notice of opposition

5.5  Filing of notice of opposition

                  A notice of opposition is taken to be filed when the notice of intention to oppose and the statement of grounds and particulars have been filed under regulations 5.6 and 5.7.

5.6  Filing of notice of intention to oppose

(1) For subsection 52(2) of the Act, the period for filing a notice of intention to oppose is 2 months from the day the acceptance of the trade mark application is advertised in the Official Journal under paragraph 34(b) of the Act.

            (2)  The notice must be in an approved form.

            (3)  The Registrar must give a copy of the notice to the applicant.

5.7  Filing of statement of grounds and particulars

            (1)  A statement of grounds and particulars must be filed within one month from the day the notice of intention to oppose is filed.

            (2)  The statement must be in an approved form.

5.8  Statement of grounds and particulars must be adequate

            (1)  The Registrar must assess the adequacy of a statement of grounds and particulars.

            (2)  If the Registrar decides that the statement is adequate, the Registrar must give a copy of the statement to the applicant.

            (3)  If the Registrar decides that the statement is inadequate:

                    (a)  the Registrar may direct the opponent to rectify the inadequacy by filing more information on the basis for one or more of the grounds; or

                    (b)  if all the grounds are inadequately particularised, the Registrar may dismiss the opposition; or

                    (c)  if only some of the grounds are inadequately particularised, the Registrar may:

                             (i)  delete from the statement some or all of the material that is inadequate; and

                            (ii)  treat the result as the statement for the purposes of these Regulations; and

                           (iii)  give a copy of the amended statement to the opponent.

            (4)  If the Registrar decides that the statement is still inadequate after the information is filed under paragraph (3)(a):

                    (a)  the Registrar may dismiss the opposition; or

                    (b)  the Registrar may:

                             (i)  delete from the statement some or all of the material that is inadequate; and

                            (ii)  treat the result as the statement for the purposes of these Regulations; and

                           (iii)  give a copy of the amended statement to the opponent.

            (5)  If the Registrar decides that the information filed under paragraph (3)(a) rectifies the inadequacy of the statement, the Registrar must give a copy of the statement and the information filed in relation to paragraph (3)(a) to the applicant.

            (6)  The opponent may apply to the Administrative Appeals Tribunal for review of a decision under this regulation to dismiss the opposition or delete material from the statement of grounds and particulars.

            (7)  Regulation 5.4 does not apply to this regulation.

5.9  Extension of time for filing—application

(1) A person who intends to oppose an application under subsection 52(1) of the Act may request the Registrar to extend:

                    (a)  the period for filing a notice of intention to oppose under subregulation 5.6(1); or

                    (b)  the period for filing a statement of grounds and particulars under subregulation 5.7(1).

            (2)  A request under paragraph (1)(a) or (b) may be made:

                    (a)  within the period for filing the document in question; or

(b) before the trade mark is entered on the Register under section 69 of the Act.

Note:       See subparagraph (3)(b)(ii) and subregulation 5.10(2) in relation to the consequences of making the request after the filing period has ended.

            (3)  The request must:

                    (a)  be in an approved form; and

                    (b)  be accompanied by a declaration stating:

                             (i)  the facts and circumstances forming the basis for the grounds; and

                            (ii)  if the period for filing the notice or the statement of grounds and particulars has ended—the reason why the request was not made within the period.

Note:       Regulations 21.6 and 21.7 deal with making and filing declarations.

            (4)  The request may be made only on either or both of the following grounds:

                    (a)  an error or omission by the person, the person’s agent, the Registrar or an employee;

                    (b)  circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.

5.10  Extension of time for filing—grant

            (1)  The Registrar may grant a request under subregulation 5.9(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension.

            (2)  However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request.

            (3)  The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.

5.11  Amendment of notice of intention to oppose

            (1)  An opponent may request the Registrar to amend a notice of intention to oppose to correct a clerical error or obvious mistake.

            (2)  If an opposition is proceeding in the name of another person (the new opponent) under section 53 of the Act, the new opponent may request the Registrar to amend the notice of intention to oppose to record the new opponent’s name.

            (3)  The Registrar may grant the request on terms that the Registrar considers appropriate.

            (4)  If the Registrar grants the request, the Registrar must give a copy of the amended notice of intention to oppose to the applicant.

            (5)  Regulation 5.4 does not apply to a request under subregulation (1) or (2).

5.12  Amendment of statement of grounds and particulars

            (1)  An opponent may request the Registrar to amend the statement of grounds and particulars to:

                    (a)  correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or

                    (b)  amend a ground of opposition; or

                    (c)  add a new ground of opposition; or

                    (d)  to amend the facts and circumstances forming the basis for the grounds.

            (2)  The Registrar may grant the request on terms that the Registrar considers appropriate.

            (3)  However, the Registrar may grant a request to:

                    (a)  amend a ground of opposition; or

                    (b)  add a new ground of opposition;

only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.

            (4)  If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.

Subdivision B—Notice of intention to defend

5.13  Filing of notice of intention to defend

(1) For subsection 52A(2) of the Act, a notice of intention to defend must be filed within one month from the day the applicant is given a copy of the statement of grounds and particulars.

            (2)  The Registrar must give a copy of the notice to the opponent.

Subdivision C—Evidence

5.14  Filing of evidence

            (1)  The Registrar must notify the parties that:

                    (a)  all the evidence for an evidentiary period mentioned in this regulation has been filed; or

                    (b)  no evidence was filed for the period.

            (2)  The Registrar must give a copy of any evidence filed by a party under this regulation to the other party:

                    (a)  before the end of the relevant evidentiary period, if the Registrar considers it appropriate to do so; or

                    (b)  after the evidentiary period ends.

Evidence in support

            (3)  An opponent must file any evidence in support of the opposition within 3 months from the day the opponent is given a copy of the notice of intention to defend.

Evidence in answer

            (4)  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 Registrar:

                    (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.

            (5)  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 the Registrar notifies the applicant that no evidence in support was filed.

Evidence in reply

            (6)  If the applicant files evidence in answer under subregulation (4) or (5), the opponent must file any evidence in reply to the evidence in answer within 2 months from the day the Registrar:

                    (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.

5.15  Extension of time for filing

            (1)  A party may request the Registrar to extend a period for filing evidence mentioned in regulation 5.14.

            (2)  The Registrar may extend the period only if the Registrar is satisfied that:

                    (a)  the party:

                             (i)  has made all reasonable efforts to comply with all relevant filing requirements of this Part; and

                            (ii)  despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or

                    (b)  there are exceptional circumstances that justify the extension.

            (3)  The Registrar:

                    (a)  must decide the length of the extended period having regard to what is reasonable in the circumstances; and

                    (b)  may do so on terms that the Registrar considers appropriate.

            (4)  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 Part;

                    (b)  an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;

                    (c)  an order of a court or a direction by the Registrar that the opposition be stayed.

Division 3—Cooling‑off period for opposition

5.16  Registrar may allow cooling‑off period

            (1)  This regulation applies to an opposition if:

                    (a)  the notice of opposition has been filed; and

(b) the Registrar has not made a decision on the opposition under subsection 55(1) of the Act; and

(c) the opposition has not been dismissed under section 222 of the Act or regulation 5.8.

            (2)  If the Registrar is satisfied that the parties agree to a cooling‑off period, the Registrar must allow a cooling‑off period of 6 months.

            (3)  The Registrar must extend the cooling‑off period for 6 months if, before the end of the period, the Registrar is satisfied that the parties agree to the extension.

            (4)  The Registrar must not:

                    (a)  further extend the cooling‑off period; or

                    (b)  allow more than one cooling‑off period for an opposition.

            (5)  If a party files a notice, in an approved form, requesting the Registrar to discontinue the cooling‑off period, the Registrar must do so.

            (6)  The Registrar may direct the parties on steps the parties must take:

                    (a)  if the cooling‑off period is discontinued; or

                    (b)  otherwise—when the cooling‑off period ends.

            (7)  The opposition resumes:

                    (a)  if the cooling‑off period is discontinued; or

                    (b)  otherwise—when the cooling‑off period ends.

            (8)  If:

                    (a)  the cooling‑off period begins during the period mentioned in regulation 5.13 or an evidentiary period mentioned in regulation 5.14; and

                    (b)  the opposition resumes;

the period mentioned in regulation 5.13 or 5.14 restarts when the opposition resumes.

Division 4—Hearing of opposition

5.17  Hearing

            (1)  This regulation applies to an opposition if:

                    (a)  the opposition has not:

(i) been dismissed under section 222 of the Act or paragraph 5.8(3)(b) or 5.8(4)(a); or

                            (ii)  been decided under subsection 55(1) of the Act; and

(b) the trade mark application to which the opposition relates has not lapsed under section 54A of the Act.

            (2)  An applicant may request the Registrar to hold a hearing if:

                    (a)  the evidentiary period mentioned in subregulation 5.14(3) has ended; and

                    (b)  either:

                             (i)  all evidence for the opposition proceeding has been filed; or

                            (ii)  no evidence has been filed in that period.

            (3)  A party may request the Registrar to hold a hearing if:

                    (a)  an evidentiary period mentioned in any of subregulations 5.14(4) to (6) has ended; and

                    (b)  either:

                             (i)  all evidence for the opposition proceeding has been filed; or

                            (ii)  no evidence has been filed in that period.

            (4)  The Registrar:

                    (a)  must hold a hearing of the opposition if requested by a party; or

                    (b)  may decide, on the Registrar’s own initiative, to hold a hearing of the opposition.

            (5)  The hearing may, at the Registrar’s discretion, be:

                    (a)  an oral hearing; or

                    (b)  by written submissions.

            (6)  If the Registrar decides on an oral hearing:

                    (a)  the Registrar 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.

            (7)  The Registrar may take into account a party’s failure to file a summary of submissions under subregulation (6) in making an award of costs.

Note:       Regulations 21.15 and 21.16 deal with hearings.

Division 5—Miscellaneous

5.18  Copy of earlier Convention application to be available to opponent

            (1)  In opposition proceedings relating to an application in respect of which the applicant claims a right of priority, an opponent may request the Registrar for a copy of an earlier application to be made available.

            (2)  On receiving the request, the Registrar must require the applicant to file:

                    (a)  a copy of the earlier application certified in the trade marks office (or its equivalent) of the Convention country in which it was filed; and

                    (b)  if the earlier application is not in English:

                             (i)  a translation of the earlier application into English; and

                            (ii)  a certificate of verification relating to the translation.

            (3)  Subregulation (2) does not apply if the applicant has already filed the relevant documents.

(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
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: (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 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.

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 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
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
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 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 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 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 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

            (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.

Trade Marks Regulations 1995

3  Before regulation 22.1

Insert:

Division 1—General

4  At the end of Part 22

Add:

Division 2—Amendments made by particular instruments

22.9  Amendments made by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

(1) The amendments of these Regulations made by the items of Part 2 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	all items of Part 2	the matters referred to in subitem 32(7) of Schedule 3 to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
2	items 10 to 30	an opposition proceeding commenced by the filing of a notice of intention to oppose on or after 15 April 2013 However, if: (a) an application was advertised before 15 April 2013; and (b) a notice of intention to oppose is filed on or after 15 April 2013; the reference in subregulations 5.6(1), 9.8(1), 17A.33(1) and 17A.48G(1) to 2 months is taken to be a reference to 3 months Also, if: (a) an opposition proceeding was commenced 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 Part 5, 6 or 9, Subdivision 3 of Division 3 of Part 17A, Subdivision 3 or Subdivision 4 of Division 5 of Part 17A, 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 Registrar must give a copy of the document or evidence to the person; and (g)  if: (i)   under Part 5, 6 or 9, Subdivision 3 of Division 3 of Part 17A, Subdivision 3 or Subdivision 4 of Division 5 of Part 17A, as in force immediately before 15 April 2013, a period for the person to do an action was calculated from the date that a party served the document or evidence; and (ii)  the Registrar does not give the document or evidence to the person on the filing date;     the Registrar 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 Registrar gave the document or evidence to the person
3	item 11 (new regulation 5.3), item 14 (new regulation 9.3), item 16 (new regulation 17A.30) and item 17 (new regulation 17A.48A)	an opposition proceeding commenced before 15 April 2013
4	item 11 (new regulation 5.17), item 13 (new regulation 6.9), item 14 (new regulation 9.20), item 16 (new regulation 17A.34M), item 17 (new regulation 17A.48V) and item 18 (new regulation 21.20E)	an opposition proceeding commenced before 15 April 2013 in which the Registrar has not set a hearing date, or issued a notice of hearing to the parties, before 15 April 2013 However: (a) a reference in regulation 5.17 to paragraph 5.8(3)(b) or subregulation 5.8(4) is taken not to apply; and (b) a reference in regulation 5.17 to regulation 5.14 is taken to be a reference to regulations 5.7 to 5.13 as in force immediately before 15 April 2013; and (c)  a reference in paragraph 6.9(1)(a) to a party requesting a hearing is taken to include the conditions set out in subregulations 5.14(1) and (2) as in force immediately before 15 April 2013; and (d) a reference in regulation 9.20 to regulation 9.10 is taken not to apply; and (e)  a reference in regulation 9.20 to regulation 9.16 is taken to be a reference to regulation 9.4 as in force immediately before 15 April 2013; and (f)  a reference in regulation 17A.34M to regulation 17A.34B or 17A.34H is taken not to apply; and (g)  a reference in regulation 17A.34M to regulation 17A.34J is taken to be a reference to regulation 17A.33 as in force immediately before 15 April 2013; and (h) a reference in regulation 17A.34M to regulation 17A.34N is taken to be a reference to regulation 17A.34 as in force immediately before 15 April 2013; and (i)   a reference in regulation 17A.48V to regulation 17A.48K is taken not to apply; and (j)  a reference in regulation 17A.48V to regulation 17A.48R is taken to be a reference to subregulation 17A.48(5) as in force immediately before 15 April 2013; and (k) a reference in paragraph 21.20E(1)(a) to a party requesting a hearing is to include the conditions set out in subregulations 5.14(1) and (2) as in force immediately before 15 April 2013; and (l)   regulation 5.14, as in force immediately before 15 April 2013, is taken not to apply
5	item 11 (new regulation 5.15), item 14 (new regulation 9.18), item 16 (new regulation 17A.34K), item 17 (new regulation 17A.48T) and item 24 (Schedule 9, new item 6)	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 5.15(1) to regulation 5.14 is taken to be a reference to regulations 5.7 to 5.13 as in force immediately before 15 April 2013; and (b) a reference in subregulation 9.18(1) to regulation 9.16 is taken to be a reference to regulation 9.4 as in force immediately before 15 April 2013; and (c)  a reference in subregulation 17A.34K(1) to regulation 17A.34J is taken to be a reference to regulation 17A.33 as in force immediately before 15 April 2013; and (d) a reference in subregulation 17A.48T(1) to regulation 17A.48R is taken to be a reference to subregulation 17A.48(5) as in force immediately before 15 April 2013; and (e)  paragraph 5.15(1)(a) and subparagraph 5.15(3)(c)(i), as in force immediately before 15 April 2013, are taken not to apply

(2) The amendment of these Regulations made by item 41 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 trade mark attorney on or after 15 April 2013; and

                    (b)  alleges the commission of a serious offence.

(3) The amendments of these Regulations made by item 95 of Schedule 6 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) apply in relation to a hearing for which the Registrar issues a hearing notice, or an invitation to be heard, on or after 15 April 2013.

Designs Regulations 2004

5  Before regulation 12.01

Insert:

Part 1—General

6  At the end of Chapter 12

Add:

Part 2—Amendments made by particular instruments

12.05  Amendments made by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)

The amendments of these Regulations made by item 3 of Schedule 6 to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), other than the insertion of new subregulation 11.22(1), apply in relation to a hearing for which the Registrar issues a hearing notice, or an invitation to be heard, on or after 15 April 2013.