Patents Regulations, 1912 (Cth)

STATUTORY RULES.

1912. No. 76.

 

REGULATIONS UNDER THE PATENTS ACT 1903-1909.

I, THE Governor-General in and over the Commonwealth of Australia, acting with the advice of the Federal Executive Council, do hereby make the following Regulations under the Patents Act 1903–1909, to come into operation on the 10th day of April, 1912.

Dated this fourth day of April, One thousand nine hundred and twelve.

DENMAN,

Governor-General.

By His Excellency’s Command,

ANDREW FISHER,

Acting Attorney-General.

 

SHORT TITLE.

Short title.

1. These Regulations may be cited as the Patents Regulations, 1912.

INTERPRETATION.

Interpretation.

2. In these Regulations—

“The Act” means the Patents Act 1903-1909.

“Justice of the Peace” means a Justice of the Peace of the Commonwealth, or part of the Commonwealth, or of a State or part of a State.

“The Official Journal” means the Australian Official Journal of Patents.

“Foreign application” means an application by a person for the protection of his invention in the United Kingdom, or the Isle of Man, or in any British Possession or Foreign State to which all or any of the provisions of section 121 with or without variations or additions are for the time being applicable.

     

C.4395.—Price 1s. 6d.

FEES.

Fees

3.—(1.) The fees to be paid under the Act and these Regulations shall be those specified in the First Schedule, and shall be paid in cash at the Patent Office. All remittances sent by post shall be by money order, postal note, or bank draft, and shall be made payable to the Commissioner of Patents.

(2.) Where any fee is payable in respect of any act or document, the Commissioner may refuse to permit or perform the act, or to receive or issue the document, as the case requires, until the fee payable is paid.

(3.) The prescribed fee for preparation of the patent for sealing shall be paid within the time allowed for the sealing of the patent, and if such fee be not paid no patent shall be sealed.

FORMS.

References to forms.

4.—(1.) Where in these Regulations any form is referred to the reference is to the form in the Second Schedule.

(2.) The forms contained in the Second Schedule may, as far as they are applicable, be used in any proceeding under the Act or these Regulations to which they are appropriate.

HOURS OF BUSINESS.

Hours of business.

5. Except in the case of holidays observed under the Commonwealth Public Service Act 1902, the Patent Office shall be open to the public on week days (other than Saturdays) from 10 a.m. to 4 p.m., and on Saturdays from 10 a.m. to noon.

APPLICATIONS.

Manner of lodging applications.

6. Every application for a patent must be left at or sent to the Patent Office, and may be sent by prepaid letter through the post, and must in every case be accompanied by the prescribed fee.

Manner of recording applications.

7.—(1.) Every application for a patent left at the Patent Office shall be numbered in the order of its receipt.

(2.) Every application for a patent sent by prepaid letter through the post shall, as far as practicable, be opened and numbered in the order in which the letter containing it was delivered at the Patent Office.

Address for service.

8. Every application for a patent shall be accompanied by a statement of an address for service to which all, notices, requisitions, and communications of every kind may be sent by the Commissioner. The address for service shall be within the Commonwealth, and, if the Commissioner so requires, in or near to the city in which the Patent Office is situate.

Signature of applicant and witness.

9. Every application for a patent must be signed by all the applicants, each of whose signatures must be attested by a witness.

Application by body corporate.

10. An application for a patent by a body corporate shall be signed or executed in such a manner as to bind the corporation, and shall be signed by some person who shall be personally responsible for the truth of the statements therein contained.

One invention.

11.—(1.) When a specification comprises several distinct matters, they shall not be deemed to constitute one invention by reason only that they are all applicable to or may form parts of an existing machine, apparatus, or process.

Applications for separate patents by way of amendment.

(2.) Where a person making application for a patent has included in his specification more than one invention, the Commissioner may require or allow him to amend such application and specification and drawings or any of them so as to apply to one invention only, and the applicant may make application for a separate patent for any invention excluded by such amendment.

(3.) Every such last-mentioned application may, if the Commissioner at any time so directs, bear the date of the original application, or such date between the date of the original application and the date of the application in question, as the Commissioner directs, and shall otherwise be proceeded with as a substantive application in the manner prescribed by the Act and by these Regulations.

(4.) Where the Commissioner is required or allowed any application or specification or drawings or any of them to be amended as aforesaid, such application shall, if the Commissioner at any time so directs, bear such date, subsequent to the original date of the application, and not later than the date when the amendment was made, as the Commissioner considers reasonably necessary to give sufficient time for the subsequent procedure relating to such application.

(5.) Where the same applicant has put in two or more provisional specifications for inventions which he believes to be cognate or modifications one of the other, and the Commissioner is of opinion that such inventions are not cognate or modifications one of the other, the applicant may divide the complete specification left in connexion with his application into such number of complete specifications as is necessary to enable the application to be proceeded with as two or more separate applications for patents for different inventions.

Extension of time for leaving complete specifications.

12. Every application for an extension of time for lodging a complete specification shall be made in accordance with Form C2, and shall state in detail the circumstances in and grounds upon which the extension is applied for, and the Commissioner may require the applicant to substantiate his statements by such proof as the Commissioner thinks necessary.

Claims.

13.—(1.) The statement of the invention claimed, with which a complete specification must end, shall be clear and succinct as well as separate and distinct from the body of the specification.

(2.) Each claim of a specification lodged under section 63a of the Act must refer to the provisional specification to which it relates in such a manner as to identify the claim with the invention described in the provisional specification.

Time limit for acceptance of complete specification

14. Except as provided by Section 3 of the Patents Act 1906, every complete specification must be accepted within twelve months from the date of application, or within such extended period, not exceeding three months, as the Commissioner, on application and on payment of the prescribed fee, allows.

Notice that application is ready for acceptance.

15.—(1.) When a complete specification is ready for acceptance, the Commissioner shall notify the applicant accordingly, and require him to pay the acceptance fee.

(2.) Upon the payment of the acceptance fee the Commissioner shall advertise the acceptance in the Official Journal.

(3.) If the acceptance fee be not paid within the time limited for the acceptance of the specification, the application shall be deemed to have been abandoned.

Inspection of specification.

16. After the advertisement of acceptance, the application and specification, with the drawings (if any), may be inspected at the Patent Office upon payment of the prescribed fee.

Refusal by Commissioner to accept.

17. When the Commissioner refuses to accept an application accompanied by either a provisional or a complete specification, he shall notify the refusal to the applicant, and such notification may be in accordance with Form F.

A 2

Advertisement of otherproceedings.

18. All advertisements, notices, or documents, which by the Act or by these Regulations are required to be published, shall be advertised in the Official Journal.

Extension of time for sealing.

19. Where the Commissioner has allowed an extension of time for the acceptance of a complete specification, he may, without the payment of a fee, allow an extension, for the same period, of the time for the sealing of the patent.

APPLICATIONS UNDER SECTION 7 OF THE ACT.

Application under sec.7.

20. An application made under section 7 of the Act may be in accordance with Form A8 or Form A9.

Production of State patent.

21. The Commissioner may, if he thinks fit, direct that the State patent be produced for his inspection.

Statespecificationsto accompany application.

22. The application must be signed by the applicant and attested by a witness, and, in addition to the specifications left therewith, be accompanied by a certified copy of the complete specification and drawings upon which the State patent was granted.

Amendment subsequent to grant of State patent.

23. The applicant must state whether any amendment has been made in any document subsequent to the grant of the patent in the State, and the reason for, and the nature of, the amendment.

Amendments and objections to State patents.

24. If a patent for the invention has been refused in any State or States, the applicant, when lodging his application, must state in writing the ground of the refusal. If any objection has been raised to the acceptance of his application in any State or States, he shall, when lodging his application, state in writing the nature of the objections, and the grounds upon which they were overcome.

Renewal fee.

25. The time for payment of the prescribed renewal fee on an application under section 7 of the Act shall be reckoned as from the date of the application.

Furtherproceedings.

26. Save as aforesaid, all proceedings in connexion with an application under section 7 shall be taken within the times and in the manner prescribed for ordinary applications.

APPLICATION FOR A PATENT OF ADDITION.

Application for a patent of addition.

27. An application for a patent of addition in respect of an improvement in or a modification of an invention may be in accordance with Form A7.

Application to be signed by applicant.

28. The application must be signed by the applicant and attested by a witness.

Further proceedings.

29. Save as aforesaid, all proceedings in connexion with an application for a patent of addition shall be taken within the times and in the manner prescribed for ordinary applications.

APPLICATIONS UNDER INTERNATIONAL AND INTERCOLONIAL ARRANGEMENTS.

Form and requirements of application.

30. An application for a patent under International or Intercolonial arrangements may be in accordance with Form A6, and must be made within twelve months from the date of the first foreign application, and must be accompanied by a complete specification, and be signed by the person or persons by whom the first foreign application was made and attested by a witness or witnesses. If that person, or any of those persons, be dead, the application must be signed by his or their legal representative, as well as by the other applicants, if any

Foreign specification, &c., to accompany application.

31.—(1.) In addition to the specification left with the application, a copy or copies of the specification or specifications and drawings, or documents corresponding thereto, filed or deposited by the applicant in the Patent Office of the Foreign State or British Possession in respect of the first foreign application, duly certified by the official chief or head of the Patent Office of the Foreign State or British Possession as aforesaid, or otherwise verified to the satisfaction of the Commissioner, must be left at the Patent Office at the same time as the application, or within such further time thereafter, not exceeding three months, as the Commissioner may allow. If any specification or other document is in a foreign language, a translation thereof shall be annexed thereto, and verified by declaration or otherwise to the satisfaction of the Commissioner.

(2.) An application for extension of time for leaving the copy or copies of the foreign specification or specifications, drawings or documents, or translations thereof may be made in accordance with Form C4, and shall be accompanied by the prescribed fee.

Publicinspection.

32. If the complete specification left with the application be not accepted within twelve months from the date of the first foreign application, it shall be open to public inspection at the expiration of that period.

Proceedings.

33. Save as aforesaid and as provided by Regulation 113, all proceedings in connexion with an application under International or Intercolonial arrangements shall be taken within the times and in the manner prescribed by the Act or these Regulations for ordinary applications.

RESTORATION OF LAPSED PATENTS.

Restoration of lapsed patents.

34.—(1.) Where any patent has become void owing to the failure of the patentee to pay any prescribed fee within the prescribed time, the patentee may apply to the Commissioner, in accordance with Form G1, for an order for the restoration of the patent. Every such application shall be accompanied by one or more statutory declarations verifying the statements contained in the application. If the Commissioner entertains the application, he shall advertise it in the Official Journal, and in such other manner as in his opinion is desirable. At any time within three months from the first of such advertisements in the Official Journal any person may give notice of opposition at the Patent Office.

(2.) The notice of opposition may be in accordance with Form G2, and shall state the grounds on which the person giving the notice (hereinafter called the opponent) intends to oppose the restoration. The notice must be signed by him or his patent attorney, solicitor, or agent, and must contain an address for service in the Commonwealth, and, if the Commissioner so requires, in or near to the city in which the Patent Office is situate, and shall be accompanied by a true copy.

(3.) Where the ground or one of the grounds of opposition is that the invention has been patented in the Commonwealth or in a State on an application of a prior date, the number, date, and title of the prior patent shall be specified in the notice.

(4.) Forthwith after the receipt of the notice of opposition, the copy shall be transmitted by the Commissioner to the applicant.

Security for costs.

35. The Commissioner may require any opponent who does not reside in Australia to give security for costs to his satisfaction within such time as he allows, and if the security is not so given the opposition shall be dismissed.

Opponent’sevidence.

36.—(1.) Where such notice is given, the opponent shall, within fourteen days after leaving the notice, or within such further time, not exceeding one month, as the Commissioner allows, leave at the Patent Office one or more statutory declarations verifying any evidence on which he relief in support of the grounds of his opposition.

(2.) The opponent shall also leave at the Patent Office certified copies of his declaration or declarations at the same time as he leaves the originals, and the Commissioner shall forthwith transmit the copies to the applicant.

Furtherprocedure.

37. Upon such declarations being left and transmitted, the provisions of Regulations 69 to 80 (inclusive) shall apply to the case, and the further proceedings thereon shall be regulated in accordance with such provisions as if they were herein repeated.

Order.

38. In every order of the Commissioner restoring a patent, provisions shall be inserted for the protection of persons who may have availed themselves of the subject-matter of the patent after the patent has been announced as void in the Official Journal. Such provisions shall restrain the patentee from commencing or prosecuting any action or other proceeding, and from recovering any damage—

(a) In respect of any infringement of the patent which has taken place after the date on which the patent was announced in the Official Journal to be void, and before the date of the order.

(b) In respect of the use or employment at any time thereafter of any mechanism, machine, machinery, process, or operation actually made or carried on within the Commonwealth or of the use, purchase, or sale of any article manufactured or made in infringement of the patent after the date of the said announcement and before the date of the order:

Provided that such use, purchase, sale, or employment is by the person or corporation by or for whom such machine or machinery or article was bonâ fide manufactured or made, or such mechanism, machine, machinery, process, or operation was bonâ fide made or carried on, his or their executors, administrators, successors, or vendees, or his or their assigns respectively:

(c) In respect of the use, employment, or sale at any time thereafter by any person or corporation entitled for the time being under the preceding paragraph to use or employ any mechanism, machine, machinery, process, or operation, or any improved or additional mechanism, machine, machinery, process, or operation, or of the use or sale of any article manufactured or made by any of the means aforesaid in infringement of the patent:

Provided that the use or employment of any such improved or additional mechanism, machine, machinery, process, or operation shall be limited to the buildings, works, or premises existing at the time being or afterwards erected, of the person or corporation by or for whom such mechanism, machine, machinery, process, or operation was made or carried on within the meaning of the preceding paragraph, his or their executors, administrators, successors, or assigns.

Compensation.

39. The order shall further provide that if any person within one year after the date thereof makes an application to the Commissioner for compensation in respect of money, time, or labour expended by the

applicant upon the subject-matter of the patent in the bonâ fide belief that the patent had become and continued to be void, it shall be lawful for the Commissioner, after hearing the parties concerned or their agents, to assess the amount of such compensation if in his opinion the application ought to be granted, and to specify the party by whom and the day on which such compensation shall be paid, and if default is made in payment of the sum awarded, the patent shall become void, but the sum awarded shall not in that case be recoverable as a debt or damages.

Offer to surrender patents under section 86a.

40. A notice of an offer by a patentee to surrender his patent under section 86a of the Act may be in accordance with Form G3, and must be left at the Patent Office, accompanied by the prescribed fee, and shall be advertised by the Commissioner in the Official Journal and in such other manner, if any, as he deems desirable.

SIZE, ETC., OF DOCUMENTS.

Size of documents

41. Subject to any directions given by the Commissioner, all documents and copies of documents sent to or left at the Patent Office, or furnished to the Commissioner or to the Court or the Law Officer, shall be written or printed in the English language on tough white paper of good quality, not thinner than 300 sheets to the inch. The sheets shall be 13 inches by 8 inches, with a margin of not less than 2 inches at the left side, and one-half inch elsewhere.

Specifications.

42. The top half of the first sheet of specifications shall be left blank, and the writing or printing shall be on one side only. The contents shall be written or printed in carbonaceous or other permanent ink, not liable to be affected by bleaching agents. If written, the writing shall be large and legible, not more than ten letters per inch, and with not more than two line spaces per inch. If printed, the type shall not be less than pica, and there shall not be more than three line spaces per inch. The date and the signature shall be on the last sheet, which shall, in the case of the complete specification, also contain the conclusion of the claims, and, in the case of the provisional specification, the conclusion of the description of the nature of the invention.

Signatures.

43. The signatures to all documents must be written in full in a large and legible hand.

Copies ofprovisionalspecifications.

44.—(1.) A copy of every provisional specification shall be lodged at the Patent Office at the same time as the original.

(2.) One copy of every complete specification shall be lodged at the Patent Office at the same time as the original.

(3.) The Commissioner may require that, before an application is accepted, five additional copies of the complete specification be lodged at the Patent Office.

(4.) Copies of every provisional or complete specification shall be certified to be true copies by the applicant or his agent.

Copies of other documents.

45. Copies of all other documents required by the Commissioner shall be left as directed by him.

SIZE AND METHOD OF PREPARING DRAWINGS.

Drawings.

46.—(1.) Drawings, when furnished, should accompany the provisional or complete specification to which they refer except in the case provided for by Regulation 47.

(2.) The drawings must show every feature of the invention, covered by the specification, but no drawing or sketch should appear in the specification itself.

(3.) When the invention consists of an improvement upon an old machine, the drawing must exhibit the invention disconnected from the old structure, and also, in another view, the specific improvement and such parts of the old structure as necessarily co-operate with it. When the drawings illustrate an invention for which a patent of addition is sought under section 85 of the Act, the improvements or modifications shall be drawn in full black lines, and so much of the original invention as may be necessary to show the connexion or action shall be repeated and shown in dotted outlines in proper relation to the improved or modified part.

(4.) Drawings must be delivered at the Patent Office either flat or on rollers, so as to be free from creases, folds, or breaks.

Provisional drawings used for complete specification.

47. If the applicant desires to adopt the drawings lodged with his provisional specification as the drawings or part of the drawings for his complete specification, he should refer to them in the complete specification as those left with the provisional specification.

Requirements as to paper, &c.

48. Drawings must be made on pure white tough drawing paper, not thinner than 100 sheets to the inch, of smooth surface and good quality and without colour or Indian ink washes.

Size of drawings.

49. Drawings must be on sheets 13 inches at the sides by 8 inches at the top and bottom. The illustrations shall be inside a border rectangle 12 inches by 7 inches, leaving a margin half-an-inch wide. When an exceptionally large drawing is essential, it may be drawn in sections on several detached sheets. There is no limit to the number of sheets. The figures should be numbered consecutively throughout.

Quality of ink, &c.

50.—(1.) To insure their satisfactory reproduction on a reduced scale, all lines shall be in absolutely black Indian ink, and shall be uniform in thickness or gradation.

(2.) Section and shade lines shall not be closer than 30 per inch, and shading lines shall preferably be avoided.

(3.) Sections of plates and small pieces may be in solid black.

(4.) Reference letters and figures must be bold, distinct, not less than one-eighth of an inch in height, and should be placed in an upright position, and the same letters and figures must be used in different views of the same parts. Reference letters or figures shall in case of the larger parts be placed upon the parts, and in the case of smaller parts be placed to one side of the drawing and connected by a fine line to the parts to which they refer.

(5.) Neither the title of the invention nor any descriptive matter should appear on the drawings.

Scale of drawings.

51.—(1.) The scale adopted shall be large enough to show clearly wherein the invention consists, and only so much of the apparatus, machine, &c., need be shown as effects this purpose.

(2.) When the scale is shown on the drawing, it should be denoted, not by words, but by a divided line. Related drawings, such as “plan” and “elevation,” shall be drawn to the same scale, and be arranged in proper relative positions, where practicable.

Drawings to be signed by applicant, &c.

52. Each sheet of the drawings shall be signed by the applicant or his agent, as near the lower right-hand corner inside the border line as is convenient.

Identifyingmarks.

53.—(1.) In the case of drawings left with a complete specification after one or more provisional specifications, the numbers and dates of the applications shall be given in the lower left-hand corner, outside the border line.

(2.) In the case of all drawings, the total number of sheets, and the number of each sheet, shall be stated on each sheet in the top right-hand corner, outside the border line.

Professionaldesignation.

54. No professional designation, or advertisements, or addresses, will be permitted upon the face of the drawings or anywhere upon the tracings.

Duplicates of drawings.

55.—(1.) A fac-simile of the original drawings prepared strictly in accordance with the regulations governing original drawings must be lodged with the original drawings.

(2.) The Commissioner may require that, before an application is accepted, a fac-simile of the original drawings prepared on tracing cloth be also lodged.

Marking of original and copies.

56. The words “Original” or “True Copy,” as the case requires, must, in each case, be placed in the centre at the top of each sheet, outside the border line.

DECLARATIONS AND AFFIDAVITS.

Form, &c., of statutory declaration and affidavit.

57. The declarations and the affidavits required by these Regulations, or used in any proceeding thereunder, shall be headed in the matter or matters to which they relate, and shall be in the first person, and shall be divided into paragraphs consecutively numbered, and each paragraph shall, as nearly as possible, be confined to one subject. Every declaration or affidavit shall state the description and true place of abode of the person making it, and shall be written or printed bookwise, and shall hear the name and address of the person leaving it, and the name of the person on whose behalf it is left.

Declarations.

58.—(1.) Declarations for the purposes of these Regulations may be taken or made before any of the following persons:—

(a) In Australia—A Notary Public, a Justice of the Peace, a Commissioner for Affidavits, or any person authorized by any Act or State Act to administer oaths or take declarations;

(b) In British Dominions other than Australia—Any Judge, Magistrate, Justice of the Peace, Notary Public, or Commissioner for Oaths or Affidavits, or any person authorized by law to administer oaths or take declarations;

(c) In Foreign Countries—Any Judge of a Superior Court, British Consul or Consular Officer, or Notary Public.

(2.) The Commissioner may take notice of the signature to any declaration, and of the signature of the person before whom it purports to have been declared, without proof of those signatures or of the official character of the person before whom the declaration purports to have been made.

Form of declaration

59. Unless any particular form of declaration is prescribed, any declaration for the purposes of these Regulations may be in accordance with the Form E1. A statutory declaration in accordance with the law of the place in which the declaration is made may, however, be accepted as a declaration in lieu of a declaration in accordance with that Form.

Declaration in patent application not affected.

60. Nothing in these Regulations as regards declarations shall necessitate any further signature or attestation to the declaration contained in the form of application for a patent than that directed by section 33 of the Act.

EXERCISE OF DISCRETIONARY POWERS BY THE COMMISSIONER.

Exercise of discretionary-power by Commissioner.

61. The Commissioner, before exercising any discretionary power given to him by the Act adversely to an applicant for a patent or for amendment of a specification, shall give him ten days’ notice at least of the time when he may be heard personally, or by his patent attorney, solicitor, or person authorized on his behalf, before the Commissioner.

Notice to applicant.

62. Within five days from the date when such notice would be delivered in the ordinary course of post, or such longer time as the Commissioner appoints in the notice, the applicant shall notify to the Commissioner whether he desires to be heard in the matter.

Notification of decision.

63. The Commissioner shall, after hearing the applicant (or without hearing him if he does not attend the Patent Office at the time fixed for the hearing, or notifies the Commissioner that he does not desire to be heard, or fails to notify him that he desires to be heard), notify his decision or determination, together with any reasons therefor, to the applicant and any other person known to the Commissioner to be affected thereby.

OPPOSITION TO GRANT OF PATENTS.

Notice of opposition.

64. A notice of opposition to the grant of a patent may be in accordance with the Form G, and shall state the grounds on which the person giving the notice (hereinafter called the opponent) intends to oppose the grant. Such notice must be signed by him or his patent attorney, solicitor, or agent, and must contain an address for service in the Commonwealth, and, if the Commissioner so requires, in or near to the city in which the Patent Office is situate, and shall be accompanied by a true copy.

Copy of notice for applicant.

65. Forthwith after the receipt of the notice of opposition the copy shall be transmitted by the Commissioner to the applicant.

Security for costs.

66. The Commissioner may require any opponent who does not reside in Australia to give security for costs to his satisfaction within such time as he allows, and if the security is not so given the opposition shall be dismissed.

Particulars of prior patent.

67. Where the ground or one of the grounds of opposition is that the invention has been patented in the Commonwealth or in a State on an application of prior date, the number, date, and title of the prior patent shall be specified in the notice.

Opponent’s evidence in support of opposition.

68. Within fourteen days after the lodging of the notice of opposition, or within such further time, not exceeding one month, as the Commissioner allows, the opponent shall leave at the Patent Office declarations and copies thereof in support of his opposition, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the applicant.

Applicant’s evidence in answer.

69. Within fourteen days after the receipt from the Commissioner of such copies, or such further time as the Commissioner allows, the applicant shall leave at the Patent Office declarations and copies thereof in answer, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the opponent.

Opponent’s evidence in reply.

70. Within fourteen days after the receipt from the Commissioner of such copies, or such further time as the Commissioner allows, the opponent shall leave at the Patent Office declarations and copies thereof in reply, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the applicant. Such last-mentioned declarations shall be confined to matters strictly in reply.

Exercise of powers by Commissioner.

71. Any party desiring an extension of time under the provisions of any of the three preceding Regulations must make application therefor before the expiration of the time sought to be extended, and the powers of the Commissioner thereunder may only be exercised at or after a hearing for the purpose, or on proof of the consent of the parties engaged.

Furtherevidence.

72.—(1.) No further evidence shall be left on either side, except by leave of the Commissioner upon the written consent of the parties duly notified to him, or by special leave of the Commissioner on an application made to him for that purpose.

(2.) Either party making such application shall give three days’ notice thereof to the opposite party, who shall be entitled to oppose the application.

(3.) An application for the special leave of the Commissioner under this Regulation shall be accompanied by a declaration setting forth the grounds of the application and the nature of the evidence which it is desired to lodge, and by the prescribed fee.

(4.) A copy of the application and declaration shall be served on the opposite party by the party making the application.

Appointment of time for hearing.

73. On the completion of the evidence, or at such other time as he sees fit, the Commissioner shall appoint a time and place for the hearing of the case, and shall give the parties at least seven days’ notice of such appointment.

Notice that hearing will be attended.

74. If either party desires to be heard, he shall, prior to the day fixed for the hearing, leave at the Patent Office a notice in accordance with Form I, together with the prescribed fee. Any party who has given the required notice shall be entitled to be heard, and any party who has not given that notice shall not be entitled to be heard.

Failure by opponent tolodgedeclarations.

75. If the opponent fails to leave, within the time allowed, declarations and copies thereof in support of his opposition, or declarations and copies thereof in reply to the declarations in answer lodged by the applicant, or, in the latter case, to state, within the time allowed, that he intends to rely upon the declarations already filed, the opposition shall be deemed to have been abandoned.

Failure by applicant to lodge declarations.

76. If the applicant fails to leave, within the time allowed, declarations and copies thereof in answer to the opponent’s declarations in support of the opposition, or to state, within the time allowed, that he intends to rely upon the documents lodged with his application, the application shall be deemed to have been abandoned.

Failure by applicant to appear at hearing.

77. If the opponent fails to appear at the time fixed for the hearing, the opposition shall be deemed to have been abandoned.

Failure by opponent to appear at hearing.

78. If the applicant fails to appear at the time fixed for the hearing, the opposition shall be decided in his absence.

Disallowance of opposition in certain cases.

79. On the hearing of the case, no opposition shall be allowed in respect of any ground not stated in the notice of opposition, and where the ground or one of the grounds is that the invention has been patented in the Commonwealth or a State on an application of a prior date, the opposition shall not be allowed upon such ground, unless the number, title, and date of such prior application have been duly specified in the notice of opposition.

Notification of decision.

80. The decision of the Commissioner in the case shall be notified to the parties in writing.

Extension of time for sealing patent.

81.—(1.) Where the sealing is delayed by opposition and no appeal is instituted from the decision of the Commissioner, the patent may be sealed at any time within two months after the determination of the opposition.

(2.) Where an appeal is instituted, the patent may, in the absence of any order of the Court, be sealed at any time within two months from the date of the determination of the appeal.

ENLARGEMENT OF TIME FOR SEALING.

Enlargement of time for sealing patent.

82.—(1.) The Commissioner may, in accordance with this regulation, enlarge the time for sealing a patent for any period not exceeding three months beyond the period of sixteen months specified in section 67 of the Act.

(2.) An application for the enlargement may be lodged at the Patent Office, and must specify the grounds upon which it is made, and be accompanied by the prescribed fee.

(3.) If on considering the application the Commissioner is satisfied that the circumstances of the case warrant such action, he may enlarge the time for sealing for such period as is required, but not exceeding three months in any event.

(4.) If any extension applied for under this Regulation be not granted, the fee paid on application therefor may be refunded by the Commissioner.

Powers of Courts not affected.

83. Nothing in these Regulations shall affect the power of the High Court or the Supreme Court to allow such extension of time as it thinks; proper for the sealing of any patent.

APPEAL TO THE LAW OFFICER.

Notice of appeal.

84. When any person intends to appeal to the law officer from a direction of the Commissioner under section 43 of the Act, or a decision of the Commissioner under the Patents Act 1906, he shall, within thirty days from the date of the direction or decision appealed against, leave at the Patent Office a notice of appeal (in duplicate), accompanied by the prescribed fee.

Statement of grounds of appeal.

85. Such notice shall state the grounds of appeal, and whether the appeal is from the whole of the direction or decision, or part only, and, if so, what part of the direction or decision, and shall be accompanied by a statement (in duplicate) of the appellant’s case.

Notice to law officer.

86. Upon notice of appeal being filed, the Commissioner shall forthwith, transmit to the law officer all the matters relating to the application in respect of which the appeal is made.

Notice of hearing.

87. Seven clear days’ notice at least of the time and place appointed for the hearing of the appeal shall be given to the appellant and the Commissioner by the law officer.

Evidence.

88. The evidence used on appeal to the law officer shall be the same as that used at the hearing before the Commissioner, and no further evidence shall be given, save as to matters which have occurred or come to the knowledge of the appellant or the Commissioner after the date of the direction or decision appealed against.

Hearing.

89. At the time and place appointed, the law officer shall hear the appellant and the Commissioner, and may adjourn or postpone the hearing, and shall at the hearing, or at some adjournment or postponement thereof, decide whether, and subject to what conditions, if any, the application and specification shall be accepted, and shall notify his decision in writing to the appellant and the Commissioner.

APPEALS TO HIGH COURT OR SUPREME COURT.

Appeals to High Court.

90. Appeals to the High Court from the decision of the Commissioner or law officer may be instituted and conducted in accordance with the Rules of the High Court.

Appeals to Supreme Court.

91.—(1.) Subject to sub-regulation (3.), appeals to the Supreme Court from the decision of the Commissioner or the law officer may be instituted and conducted in accordance with the Rules of the Supreme Court.

(2.) If the Rules of the Supreme Court make no provision in that behalf, appeals may be instituted by notice of motion filed in the Court.

(3.) The appeal may be instituted within twenty-one days after the date of the decision appealed against or such further time as the Court on application made within such twenty-one days allows.

(4.) Notice of intention to apply for further time to appeal shall be given to the Commissioner, who shall be entitled to be heard thereon.

(5.) A notice of motion or other document instituting an appeal shall be served on the Commissioner and on all parties directly affected by the appeal forthwith after the appeal is instituted.

(6.) Subject to the Rules of Court, the Court may give such directions in relation to appeals as it thinks fit.

Transmission of documents.

92. The Commissioner shall forthwith, after the service of the notice of motion or other document instituting an appeal on him, forward to the proper officer of the Court all such documents as may be necessary for the hearing of the appeal or copies thereof.

AMENDMENT OF DOCUMENTS IN ACCORDANCE WITH OFFICIAL REQUIREMENTS.

Application and specification.

93. The deletion of any matter in the application or specification shall be made by a fine-ruled red line. Insertions shall be made in red ink in the margin on the left-hand side, and their places in the body of the documents indicated by a letter or figure. If the amendments are, in the opinion of the Commissioner, of sufficient extent to warrant the lodging of fresh pages or the complete documents, the applicant shall, within a time to be fixed by the Commissioner, supply them. All amendments must be initialed and dated by the person authorized so to do.

Drawings.

94. The deletion of a figure or portion thereof shall be effected by the placing thereon of a red cross embracing the whole or the portion to be so deleted, and the word “cancelled” shall be written across the figure or the portion thereof, at the intersection of the cross lines, and near thereto shall be placed the initials of the applicant or the person authorized to act for him, together with the date.

Application to become abandoned if not amended.

95. If an applicant fails to amend the application or complete specification or the drawings within the time (not being less than one month) fixed by the Commissioner by the notice requiring the amendment, or within such further time as the Commissioner on application made within the time specified in the notice allows, then, save in the case of an appeal being lodged in the prescribed manner from the Commissioner’s direction or decision, the application shall be deemed to have been abandoned.

AMENDMENT OF SPECIFICATION BY REQUEST.

Request for leave to amend.

96.—(I.) The request for leave to amend a complete specification shall be prepared and signed in the manner prescribed by section 71 of the Act, and must be accompanied by the prescribed fee.

(2.) It must also be accompanied by a certified copy of the original specification and drawings (if any), showing in red ink the proposed amendment, in such manner as to indicate clearly the alteration desired, and, if the complete specification has been accepted, shall be advertised, by publication of the request and the nature of the proposed amendment, in the Official Journal.

(3.) When not made in pursuance of an order of a Court, or a Justice or Judge thereof, the request must, where a patent has been sealed, contain a statement that no action for infringement, or proceeding for revocation, of the patent, is pending.

(4.) Where a request for leave to amend is made in pursuance of an order of a Court, or a Justice or Judge thereof, an official copy of the order shall be left, with the request, at the Patent Office.

Notice of opposition.

97.—(1.) A notice of opposition to the amendment may be in accordance with Form K, and shall state the ground or grounds on which the person giving the notice (hereinafter called the opponent) intends to oppose the amendment, and shall be signed by him or his patent attorney, solicitor, or agent, and be accompanied by the prescribed fee and by a true copy of the notice.

(2.) Such notice shall state an address for service in the Commonwealth, and if the Commissioner requires, in or near the city in which the Patent Office is situate.

Copy for applicant.

98. Forthwith after the receipt of such notice, the true copy shall be sent by the Commissioner to the applicant or patentee, as the case may be (hereinafter called the applicant).

Security for costs.

99. The Commissioner may require any opponent who does not reside in Australia to give security for costs to his satisfaction within such time as he allows, and, if the security is not so given, the opposition shall be dismissed.

Opponent’s evidence in support of opposition.

100. Within fourteen days after the expiration of one month from the date of the advertisement of the request for leave to amend, the opponent shall leave at the Patent Office declarations and copies thereof in support of his opposition, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the applicant.

Furtherprocedure.

101. Upon such declarations being left and transmitted the provisions of Regulations 69 to 78 (inclusive) and Regulation 80 shall apply to the case, and the further proceedings thereon shall be regulated in accordance with such provisions as if they were herein repeated.

Ground of opposition.

102. On the hearing of the case, no opposition shall be allowed on any ground other than the ground that the amendment, if allowed, would make the specification as amended claim an invention substantially larger than or substantially different from the invention claimed by the specification before amendment.

Fresh documents required on leave to amend being granted.

103. Where leave to amend is given, the applicant shall, if the Commissioner so requires, and within a time to be limited by him, leave at the Patent Office a new specification and drawings as amended, to be prepared in accordance with the Regulations.

Advertisement of theamendment.

104. Every amendment of an accepted complete specification made under Division 4 of Part IV. of the Act shall be advertised by the Commissioner in the Official Journal.

APPLICATIONS UNDER SECTION 3 OF THE PATENTS ACT 1906.

Requisites of application.

105. An application under section 3 of the Patents Act 1906 must be in writing, and must set out the facts relied on in support of the application, and must state clearly all the relief asked for, and must be accompanied by a declaration verifying the facts set out in the application.

Notice of opposition.

106.—(1.) A notice of opposition to the application may be lodged at the Patent Office within one month from the advertisement of the application in the Official Journal, and shall state the ground or grounds on which the person giving the notice (called the opponent) intends to oppose the application, and shall be signed by him or his patent attorney, solicitor, or agent, and must contain an address for service in the Commonwealth, and, if the Commissioner so requires, in or near to the city in which the Patent Office is situate, and be accompanied by the prescribed fee and by a true copy of the notice.

Grounds of opposition.

(2.) The grounds of opposition shall be confined to the following: —

(а) That it was not owing to any error or omission on the part of an officer of the Patent Office that the application for a patent or proceeding in relation thereto lapsed, or the act or step in relation thereto was not done or taken; or

(b) that the invention referred to in the application for a patent has already been patented in Australia; or

(c) that another application for a patent for the same invention has been lodged in the Patent Office, and will be unfairly prejudiced if the application (the subject of the opposition) is granted.

(3.) Forthwith after the receipt of the notice of opposition the copy shall be transmitted by the Commissioner to the applicant.

Security for costs.

107. The Commissioner may require any opponent who does not reside in Australia to give security for costs to his satisfaction within such time as he allows, and if the security is not so given the opposition shall be dismissed.

Particulars where invention alleged to be already patented.

108. Where the ground or one of the grounds of opposition is that the invention has been patented in the Commonwealth or in a State on an application of a prior date, the number, date, and title of the prior patent shall be specified in the notice.

Opponent’sevidence.

109. Within fourteen days after the lodging of the notice of opposition, or within such further time, not exceeding one month, as the Commissioner allows, the opponent shall leave at the Patent Office declarations and copies thereof in support of his opposition, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the applicant.

Application of regulations relating to opposition.

110. Upon such declarations being left and transmitted the provisions of Regulations 69 to 80 (inclusive) shall apply to the case, and the further proceedings thereon shall be regulated in accordance with such provisions as if they were herein repeated.

REGISTER OF PATENTS.

Entry of grant.

111. Upon the sealing of every patent, or patent of addition, the Commissioner shall cause to be entered in the Register of Patents the name, address, and description of the patentee as the grantee thereof, and the title of the invention.

Patent of addition.

112. There shall also he entered in the Register, in the case of a patent of addition, the number and date of the original patent, and the title of the original invention.

Entry in Register of patents granted on applications under International or Intercolonial arrangements.

113. The patent granted on any application made under International or Intercolonial arrangements shall be entered in the Register as dated of the date on which the first foreign application was made, and the payment of renewal fees, and the expiration of the patent, shall be reckoned as from the date of the first foreign application. The date of the application in Australia shall also be entered in the Register.

Request for entry of subsequent proprietorship.

114. Where a person becomes entitled to a patent, or to any share or interest therein, or licence thereunder, by assignment, transmission, or other operation of law, either throughout the Commonwealth, or a State or States, or for any place or places therein, a request for the entry of his name in the Register, as such complete or partial proprietor or licensee of the patent, or of such share or interest therein, as the case may be, shall be addressed, to the Commissioner, and left at the Patent Office, accompanied by the prescribed fee.

Form and signature of request.

115. Such request may be in accordance with Form Q or Form R, as the case requires, and shall be made and signed by the person requiring to be registered as proprietor or licensee, or by his agent.

Contents of request.

116. Every such request shall state the name, address, and description of the person claiming to be entitled to the patent, or to any share or interest therein or licence thereunder, and the particulars of the assignment, transmission, or other operation of law, by virtue of which he claims to be entered in the Register as proprietor or licensee, so as to show the manner in which, and the person or persons to whom, the patent, or licence thereunder, or the share or interest therein, has been assigned or transmitted.

Transfer by deed.

117. Every assignment of a patent, or of any share or interest therein, or of any licence thereunder, shall be by deed, and shall be under the hand and seal of the transferror and transferee, and be attested; provided that any assignment of a patent may be indorsed on the back of the patent in accordance with Form T, under the hand and seal of the proprietor of the patent and the transferee.

Production of documents of title and other proof.

118.—(1.) Every assignment and every other deed and document containing, giving effect to, or being evidence of, the transmission of a patent, or affecting the proprietorship thereof, including every patent indorsed as provided by section 21 of the Act, but excepting such documents as are matters of record, shall, before any entry is made pursuant to a request, unless the Commissioner in his discretion otherwise directs, be produced to him, together with the request, and such other proof of title as he requires for his satisfaction.

(2.) As to a document which is a matter of record, an official or certified copy thereof shall be produced to the Commissioner.

Copies for Patent Office

119. An attested copy of every deed and document affecting the proprietorship of any patent, or of any share or interest therein, or licence thereunder, shall be left with the request.

Entry ofOrders of the Court.

120. When an order has been made by the High Court, or the Supreme Court, or a Justice or Judge thereof, for the extension of a patent or part of a patent for a further term, or for the grant of a new patent, or for the revocation of a patent, or for the rectification of the Register, or otherwise affecting the validity or proprietorship of a patent, the person in whose favour such order has been made shall forthwith leave at the Patent Office an office copy of the order. The Register shall thereupon be rectified, or the purport of the order shall be entered in the Register, as the case requires.

 

Entry of date of payment of renewal fees.

121. Upon the issue of a certificate of payment of any renewal fee, the Commissioner shall cause to be entered in the Register a record of the amount and date of payment of the fee.

Entry of failure to pay fees.

122. If a patentee fails to make any prescribed payment within the prescribed time, a notification of the fact shall be entered in the Register.

Entry of licences and otherdocuments.

123. A copy of every licence granted under a patent, or of any other document purporting to affect the proprietorship of a patent, shall be left at the Patent Office, with a request in accordance with Form R that a notification thereof may be entered in the Register. The accuracy of such copy shall be certified in such manner as the Commissioner directs, and the original document, accompanied by the prescribed fee, shall, at the same time, be produced and left at the Patent Office, if required, for further verification.

Request by interested person to be informed of dealings.

124. Any person interested in a particular patent may leave at the Patent Office a request to be informed of any application for the entry in the Register of the name of any person by assignment or other document affecting the proprietorship of the patent.

Particulars of request.

125. The request may be in accordance with Form R1 and must be accompanied by the prescribed fee.

Evidence to be produced.

126. The person making the request shall produce evidence of his interest in the patent, and if the Commissioner considers that the evidence is not sufficient to warrant the grant of the request, he may refuse to entertain it.

Stay of proceedings.

127. If the request is granted, the Commissioner shall, upon receipt of any subsequent application for the entry in the Register of the name of any person by assignment or other document, affecting the proprietorship of the patent, furnish to the person leaving the request a notice of the lodgment of the application, and suspend registration for one month from the date of the notice.

Duration of request.

128. Every such request shall remain in force for a period of six months from the date of lodgment.

Hours of inspection of Register.

129. The Register of Patents shall be open to the inspection of the public during office hours on every day during which the Patent Office is open, except on the days and at the times following:—

(a) Days which are from time to time notified by a placard posted in a conspicuous place at the Patent Office.

(b) Times when the Register is required for any purpose of official use.

Certified copies of documents.

130. Certified copies of any entry in the Register, or certified copies of, or extracts from, patents, specifications, disclaimers, affidavits, declarations, and other public documents in the Patent Office, or of or from Registers and other books kept there, may be furnished by the Commissioner, on payment of the prescribed fee.

PAYMENT OF RENEWAL FEE FOR CONTINUANCE OF PATENT.

Payment of fees.

131. If a patentee intends to keep his patent in force after the expiration of the seventh year from the date thereof, he shall, before the expiration of that year, pay the renewal fee.

Enlargement of time for payment of fees.

132. An application for enlargement of the time for making the prescribed payment may be in accordance with Form P, and shall be accompanied by the prescribed fee for such enlargement. The application shall state in detail the circumstances in which the patentee by accident, mistake, or inadvertence, failed to make such payment, and the Commissioner may require the patentee to substantiate, by such proof as he thinks necessary, the statements contained in the application for enlargement.

 

Certificate of payment.

133. The Commissioner shall give to the patentee paying the renewal fee a certificate that it has been paid.

EXTENSION OF PATENT UNDER SECTION 84 OF THE ACT.

Advertisement of application for extension.

134.—(1.) A patentee (hereinafter called the petitioner) intending to apply by petition to the High Court, or the Supreme Court, for an extension of the term of his patent under section 84 of the Act, shall give public notice, by advertising three times in the Official Journal, once in the Commonwealth Gazette, and once, at least, in the capital city of each State, in a daily newspaper published in that city.

(2.) The petitioner shall state in each advertisement—

(а) an address for service within the Commonwealth;

(b) a time, not being more than three months, or less than one month, within which the petition is to be filed; and

(c) whether the petition is to be filed in the High Court or in the Supreme Court, and, if in the former, the name of the registry in which it is to be filed.

Officer to whom caveat may be addressed.

135. The prescribed officer to whom a caveat against the extension of the term of a patent may be addressed, shall be—

(а) in the case of a petition to the High Court, if the petition is or is to be filed in the Principal Registry, the Principal Registrar, and if the petition is, or is to be filed in a District Registry, the District Registrar of the Registry in which the petition is, or is to be filed; and

(b) in the case of a petition to the Supreme Court, the Prothonotary.

Procedure on petition.

136. Subject to the Act, the proceedings in relation to the petition shall be as directed by Rules of Court, or as the Court, or a Justice thereof, in each case directs.

ATTORNEY-GENERAL’S FIAT AUTHORIZING PRESENTATION OF PETITION FOR REVOCATION OF A PATENT.

Procedure to obtain Attorney-General’s fiat.

137.—(1.) Any person who desires to obtain the authority of the Attorney-General to present a petition to the High Court or the Supreme Court for the revocation of a patent under section 86 of the Act may lodge with the Secretary to the Attorney-General’s Department—

(а) a memorial to the Attorney-General asking for his authority and stating all the circumstances;

(b) a declaration verifying the statements in the memorial and stating that there are no pending proceedings in the Commonwealth wherein the issues proposed to be raised in the petition or particulars of objection could be determined;

(c) two copies of the proposed petition and of the particulars proposed to be delivered with it, and copies of specifications and documents referred to in the memorial petition or particulars;

(d) a certificate of a barrister that the petition is proper to be authorized by the Attorney-General; and

(e) a certificate of a solicitor that the proposed petitioner is a proper person to be a petitioner, and that he is competent to answer the costs of all proceedings in connexion with the petition if unsuccessful.

(2.) The Attorney-General will hear the memorial, either ex parte or after such notice to the patentee as he directs, and will decide whether he will grant or refuse his fiat.

(3.) If the Attorney-General’s fiat is granted, one of the copies of the petition, with the fiat thereon, will be returned to the petitioner.

COMPULSORY LICENCES AND REVOCATION OF PATENTS.

Petition for grant of compulsory licence or revocation of patent.

138. A petition to the Commissioner for an order under section 87 of the Act shall be in accordance with Form L, and shall show clearly the nature of the petitioner’s interest and the ground or grounds upon which he claims to be entitled to relief, and shall state in detail the circumstances of the case, the terms upon which he asks that an order may be made, and the purport of such order, and the name and address of the patentee and any other person who is alleged in the petition to have made default.

Petition to be left with evidence at Office.

139. The petition and an examined copy thereof shall be left at the Patent Office, and shall be accompanied by affidavits or statutory declarations in proof of the allegations contained in the petition, together with any other documentary evidence in support, and the petitioner shall simultaneously with, or as soon as may be after, the leaving of such petition deliver to the patentee and any other person who is alleged in the petition to have made default, copies of the petition and of such affidavits or statutory declarations and other documentary evidence in support.

And I make this solemn declaration, conscientiously believing it to be true.

Signature of Declarant—

Declared at in the State of this day of a. d. 19

Before me—

 

(1) Here insert Name in full.

(2) Here insert Address.

(3) Here insert Occupation.

(4) State Name of Educational Establishment and in what Country situated.

(5) State if holding any Academical or Certificated Degree, and describe Academy or College.

(6) If lately employed, state where and at what Profession, Trade, or Business.

 

Form ee.

[Patents.] Commonwealth of Australia.

The Patents Act 1903-1909.

CERTIFICATE TO BE LODGED BY CANDIDATE FOR PATENT ATTORNEY’S EXAMINATION.

To the Secretary of the Board of Examiners

for Patent Attorneys.

We, the undersigned, hereby certify that we have known and have been acquainted

with for the

period of twelve months at least immediately before the date of this certificate, and that we believe him to be a person of good fame and character, and fitted to be admitted to practise as a Patent Attorney in the Commonwealth of Australia.

Dated this day of  a. d. 19

Signed by the said

in my presence—

J.P.

 

N.B.—This certificate is to be signed by three adult persons in the presence of and be attested by a Justice of the Peace. It is not necessary that the same Justice should attest each signature.

Form ff.

[Patents.] Commonwealth of Australia.

The Patents Act 1903-1909.

BOARD OF EXAMINERS’ CERTIFICATE THAT CANDIDATE HAS PASSED THE PATENT ATTORNEY’S EXAMINATION.

The Board of Examiners hereby certifies that

, of , having been

duly examined by it, has passed the Patent Attorney’s examination as prescribed by the Patents Regulations 1911, and is qualified for registration as a Patent Attorney.

Given under hand at this

day of a. d. 19

Signature of Chairman of Board or the Authorized Member or Members thereof.

Form GG

[Patents.] Commonwealth of Australia.

The Patents Act 1903-1909.

CERTIFICATE OF REGISTRATION OF A PATENT ATTORNEY.

Commissioner of Patents, hereby

certify that

of in the

State of , Commonwealth of Australia, was on the day of

a. d. 19 registered as a Patent Attorney, and that he is authorized to practise as a Patent Attorney in any part of the Commonwealth of Australia, so long as his name remains on the Register of Patent Attorneys.

Given under my hand and the seal of the Patent Office at

this day of a. d. 19

(l. s.) Commissioner of Patents.

 

Printed and Published for the Government of the Commonwealth of Australia by J. Kemp, Government Printer for the State of Victoria.