Patents Amendment Regulations 2000 (No. 1) (Cth)
Patents Amendment Regulations 2000 (No. 1) 1
Statutory Rules 2000 No. 317 2
I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following Regulations under the
Patents Act 1990. Dated 22 November 2000
WILLIAM DEANE
Governor-General
By His Excellency’s Command
WARREN ENTSCH
Parliamentary Secretary to the Minister for Industry,
Science and Resources
• •
These Regulations are the
Patents Amendment Regulations 2000 (No. 1) .
These Regulations commence as follows:
(a) on gazettal — regulations 1 to 3, and Schedule 1;
(b) on 1 January 2001 — Schedule 2;
(c) on 1 March 2001 — Schedule 3.
Schedules 1, 2 and 3 amend the
Patents Regulations 1991 .
(regulation 3)
substitute
(1) For section 8 of the Act, the prescribed period for a Convention application is:
(a) for documents to which paragraph 8 (a) of the Act applies — from the date of making the application based on the basic application to immediately before acceptance; and
(b) for documents to which paragraph 8 (b) of the Act applies:
(i) if the application based on the basic application has been accepted — 3 months from the date on which the Commissioner requests the translation; or
(ii) if the application based on the basic application has not yet been accepted — from the date on which the Commissioner requests the translation to immediately before acceptance.
(1A) For section 8 of the Act, the prescribed period for a PCT application is:
(a) if the application based on the basic application has been accepted — 3 months from the date on which the Commissioner requests the document; or
(b) if the application based on the basic application has not yet been accepted — from the date on which the Commissioner requests the document to immediately before acceptance.
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before have
insert unless it is in electronic form,
omit
omit amendment; or
insert amendment.
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after specifies;
insert and
insert
(c) after the party has served the application on the other party;
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(2) For subsection 95 (3) of the Act, a copy of the specification relating to the basic application that is certified by the official chief or head of the Patent Office of the Convention Country in which the basic application is made must be filed within the period from the day on which the application is made to immediately before acceptance.
omit 2 months
insert 21 days, or any longer period up to 2 months allowed by the Commissioner,
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(k) if the Commissioner requests a document under subparagraph 1.6 (1) (b) (ii) or paragraph 1.6 (1A) (b) — 5 months commencing on the date of the request.
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after ("priority claim")
insert may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention. Any priority claim
after Property
insert or the Member of the World Trade Organization that is not party to that
Convention
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(ii) where the earlier application is a regional application and at least one of the countries party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim shall indicate at least one country party to that Convention or one Member of that Organization for which that earlier application was filed.
insert (
d ) If, on September 29, 1999, paragraphs (a ) and (b ) as amended with effect from January 1, 2000, are not compatible with the national law applied by a designated Office, those paragraphs as in force until December 31, 1999, shall continue to apply after that date in respect of that designated Office for as long as the said paragraphs as amended continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by October 31, 1999. The information received shall be promptly published by the International Bureau in the Gazette.
insert
12. Amino acid sequences and nucleotide sequences An amino acid sequence or a nucleotide sequence that is part of a specification may be filed in a format approved by the Commissioner on a compact disk or by other electronic means approved by the Commissioner.
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insert of 30; and
[ 20 ] Schedule 7, Part 2, item 3, after paragraph (b)
insert
| $1 000 |
(regulation 3)
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insert 1 January 2001
[ 2 ] Schedule 2A, adoption and amendment dates following the heading
omit and on September 29, 1999.
insert , on September 29, 1999, on March 17, 2000 and on October 3, 2000.
[ 3 ] Schedule 2A, Schedule of fees, item 2, paragraph (a)
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(regulation 3)
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(ii) a request to the receiving Office to prepare and transmit the priority document to the International Bureau where the application whose priority is claimed was filed with the national Office or intergovernmental authority which is the receiving Office,
(iii) declarations as provided in Rule 4.17.
insert (
e ) Where the applicant is registered with the national Office that is acting as receiving Office, the request may indicate the number or other indication under which the applicant is so registered.
after Rule 4.1 (
a ) (v)
insert or (
c ) (i)
substitute (
a ) If an agent is appointed, the request shall so indicate, and shall state the agent’s name and address.(
b ) Where the agent is registered with the national Office that is acting as receiving Office, the request may indicate the number or other indication under which the agent is so registered.
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substitute 4.17
Declarations Relating to National Requirements Referred to in Rule 51 bis .1 (a) (i) to (v) The request may, for the purposes of the national law applicable in one or more designated States, contain one or more of the following declarations, worded as prescribed by the Administrative Instructions:
(i) a declaration as to the identity of the inventor, as referred to in Rule 51
bis .1 (a ) (i);(ii) a declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent, as referred to in Rule 51
bis .1 (a ) (ii);(iii) a declaration as to the applicant’s entitlement, as at the international filing date, to claim priority of the earlier application, as referred to in Rule 51
bis .1 (a ) (iii);(iv) a declaration of inventorship, as referred to in Rule 51
bis .1 (a ) (iv), which shall be signed as prescribed by the Administrative Instructions;(v) a declaration as to non-prejudicial disclosures or exceptions to lack of novelty, as referred to in Rule 51
bis .1 (a ) (v).4.18
Additional Matter (
a ) The request shall contain no matter other than that specified in Rules 4.1 to 4.17, provided that the Administrative Instructions may permit, but cannot make mandatory, the inclusion in the request of any additional matter specified in the Administrative Instructions.(
b ) If the request contains matter other than that specified in Rules 4.1 to 4.17 or permitted under paragraph (a ) by the Administrative Instructions, the receiving Office shallex officio delete the additional matter.
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Rule 26 ter
Correction or Addition of Declarations Under Rule 4.17 26
ter .1Correction or Addition of Declarations The applicant may correct or add to the request any declaration referred to in Rule 4.17 by a notice submitted to the International Bureau within a time limit of 16 months from the priority date, provided that any notice which is received by the International Bureau after the expiration of that time limit shall be considered to have been received on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.
26
ter .2Processing ofDeclarations (
a ) Where the receiving Office or the International Bureau finds that any declaration referred to in Rule 4.17 is not worded as required or, in the case of the declaration of inventorship referred to in Rule 4.17 (iv), is not signed as required, the receiving Office or the International Bureau, as the case may be, may invite the applicant to correct the declaration within a time limit of 16 months from the priority date.(
b ) Where the International Bureau receives any declaration or correction under Rule 26ter .1 after the expiration of the time limit under Rule 26ter .1, the International Bureau shall notify the applicant accordingly and shall proceed as provided for in the Administrative Instructions.
insert (
a ter ) The notification under paragraph (a bis ) shall include any declaration referred to in Rule 4.17 (i) to (iv), and any correction thereof under Rule 26ter .1, which was received by the International Bureau before the expiration of the time limit under Rule 26ter .1, provided that the designated Office has informed the International Bureau that the applicable national law requires the furnishing of documents or evidence relating to the matter to which the declaration relates.
substitute
(ix) any information concerning a priority claim considered not to have been made under Rule 26
bis .2 (b ), the publication of which is requested under Rule 26bis .2 (c ),(x) any declaration referred to in Rule 4.17 (v), and any correction thereof under Rule 26
ter .1, which was received by the International Bureau before the expiration of the time limit under Rule 26ter .1.
substitute
(iii) the abstract; if the abstract is both in English and in another language, the English text shall appear first,
(iv) an indication that the request contains any declaration referred to in Rule 4.17 which was received by the International Bureau before the expiration of the time limit under Rule 26
ter .1.
substitute (
a ) Subject to Rule 51bis .2, the national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish, in particular:
(i) any document relating to the identity of the inventor,
(ii) any document relating to the applicant’s entitlement to apply for or be granted a patent,
(iii) any document containing any proof of the applicant’s entitlement to claim priority of an earlier application where the applicant is not the applicant who filed the earlier application or where the applicant’s name has changed since the date on which the earlier application was filed,
(iv) where the international application designates a State whose national law requires that national applications be filed by the inventor, any document containing an oath or declaration of inventorship,
(v) any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures resulting from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time.
substitute (
d ) The national law applicable by the designated Office may, in accordance with Article 27 (2) (ii), require that the translation of the international application furnished by the applicant under Article 22 be:(i) verified by the applicant or the person having translated the international application in a statement to the effect that, to the best of his knowledge, the translation is complete and faithful;
(ii) certified by a public authority or sworn translator, but only where the designated Office may reasonably doubt the accuracy of the translation.
(
e ) The national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish a translation of the priority document, provided that such a translation may only be required where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable.(
f ) If, on March 17, 2000, the proviso in paragraph (e ) is not compatible with the national law applied by the designated Office, that proviso shall not apply in respect of that Office for as long as that proviso continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.
substitute 51
bis .2Certain Circumstances in Which Documents or Evidence May Not Be Required (
a ) Where the applicable national law does not require that national applications be filed by the inventor, the designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
(i) relating to the identity of the inventor (Rule 51
bis .1 (a ) (i)), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request or if a declaration as to the identity of the inventor, in accordance with Rule 4.17 (i), is contained in the request or is submitted directly to the designated Office;(ii) relating to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (Rule 51
bis .1 (a ) (ii)), if a declaration as to that matter, in accordance with Rule 4.17 (ii), is contained in the request or is submitted directly to the designated Office;(iii) relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application (Rule 51
bis .1 (a ) (iii)), if a declaration as to that matter, in accordance with Rule 4.17 (iii), is contained in the request or is submitted directly to the designated Office.(
b ) Where the applicable national law requires that national applications be filed by the inventor, the designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:
(i) relating to the identity of the inventor (Rule 51
bis .1 (a ) (i)) (other than a document containing an oath or declaration of inventorship (Rule 51bis .1 (a ) (iv)), if indications concerning the inventor, in accordance with Rule 4.6, are contained in the request;(ii) relating to the applicant’s entitlement, as at the international filing date, to claim priority of an earlier application (Rule 51
bis .1 (a ) (iii)), if a declaration as to that matter, in accordance with Rule 4.17 (iii), is contained in the request or is submitted directly to the designated Office;(iii) containing an oath or declaration of inventorship (Rule 51
bis .1 (a ) (iv)), if a declaration of inventorship, in accordance with Rule 4.17 (iv), is contained in the request or is submitted directly to the designated Office.(
c ) If, on March 17, 2000, paragraph (a ) is not compatible, in relation to any item of that paragraph, with the national law applied by the designated Office, paragraph (a ) shall not apply in respect of that Office in relation to that item for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.51
bis .3Opportunity to Comply with National Requirements (
a ) Where any of the requirements referred to in Rule 51bis .1 (a ) (i) to (iv) and (c ) to (e ), or any other requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27 (1) or (2), is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the designated Office shall invite the applicant to comply with the requirement within a time limit which shall not be less than two months from the date of the invitation. Each designated Office may require that the applicant pay a fee for complying with national requirements in response to the invitation.(
b ) Where any requirement of the national law applicable by the designated Office which that Office may apply in accordance with Article 27 (6) or (7) is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the applicant shall have an opportunity to comply with the requirement after the expiration of that period.(c) If, on March 17, 2000, paragraph (
a ) is not compatible with the national law applied by the designated Office in relation to the time limit referred to in that paragraph, the said paragraph shall not apply in respect of that Office in relation to that time limit for as long as the said paragraph continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by November 30, 2000. The information received shall be promptly published by the International Bureau in the Gazette.
omit designated
insert appointed
after Authority may
insert , where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33 (1),
1. These Regulations amend Statutory Rules 1991 No. 71, as amended by 1991 No. 456; 1992 No. 148; 1993 Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349.
2. Notified in the
Commonwealth of Australia Gazette on 29 November 2000.
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