Patents Regulations 1991
Statutory Rules No. 71, 1991
made under the
Patents Act 1990
Compilation No. 75
Compilation date: 14 October 2024
Includes amendments: F2024L01299
This compilation is in 2 volumes
Volume 1: regulations 1.1–23.55
Volume 2: Schedules and Endnotes
Each volume has its own contents
About this compilation
This compilation
This is a compilation of the Patents Regulations 1991 that shows the text of the law as amended and in force on 14 October 2024 (the compilation date).
The notes at the end of this compilation (the endnotes) include information about amending laws and the amendment history of provisions of the compiled law.
Uncommenced amendments
The effect of uncommenced amendments is not shown in the text of the compiled law. Any uncommenced amendments affecting the law are accessible on the Register (www.legislation.gov.au). The details of amendments made up to, but not commenced at, the compilation date are underlined in the endnotes. For more information on any uncommenced amendments, see the Register for the compiled law.
Application, saving and transitional provisions for provisions and amendments
If the operation of a provision or amendment of the compiled law is affected by an application, saving or transitional provision that is not included in this compilation, details are included in the endnotes.
Editorial changes
For more information about any editorial changes made in this compilation, see the endnotes.
Modifications
If the compiled law is modified by another law, the compiled law operates as modified but the modification does not amend the text of the law. Accordingly, this compilation does not show the text of the compiled law as modified. For more information on any modifications, see the Register for the compiled law.
Self‑repealing provisions
If a provision of the compiled law has been repealed in accordance with a provision of the law, details are included in the endnotes.
Contents
Chapter 1—Introductory
1.1 Name of Regulations
1.3 Interpretation
1.3A Meaning of completed in relation to a search
1.4 Meaning of Convention country
1.4A Meaning of eligible importing country
1.5 Deposit requirements: prescribed period
1.6 Secret use—prescribed period
1.8 Completion of applications
Chapter 2—Patent rights, ownership and validity
2.1 Applications by co‑owners for directions
2.2 Information made publicly available—recognised exhibitions
2.2A Information made publicly available—learned societies
2.2B Information made publicly available—reasonable trial of invention
2.2C Information made publicly available—other circumstances
2.2D Information made publicly available without consent—period
2.3 Divisional applications—period
2.4 Prescribed period: patents of addition
2.5 Prescribed period: assertion that invention is not a patentable invention
2.6 Prescribed period: notification of assertion of invalidity of innovation patent
2.7 Documents to accompany notice of assertion of invalidity
Chapter 3—From application to acceptance
Part 1—Inventions generally
Division 1—Applications
3.1 Prescribed documents: patent applications
3.1A Applicant taken to be nominated person
3.2 Provisional application—direction to meet formalities requirements
3.2A Complete application for standard patent—direction to meet formalities requirements
3.2AB PCT application—title of specification
3.2B Specifications: formalities check for innovation patents
3.2C Specifications—formalities check for PCT application
3.3 Abstracts
3.4 Substitute abstracts
Overview
The Patents Regulations 1991, enacted under the Patents Act 1990, address the need for a comprehensive and detailed set of procedural rules to govern the patent application and maintenance process in Australia. These regulations were introduced by the Australian Parliament to provide the necessary administrative framework and detailed guidelines to complement the overarching legislative provisions of the Patents Act 1990. They were designed to ensure that the patent system operates efficiently, consistently, and in a manner that promotes innovation while protecting patent rights. The regulations cover a wide range of topics, from the specifics of patent application procedures and formalities to the detailed processes for examination, opposition, and the grant of patents. Additionally, they include provisions for the administration of patent fees, the handling of international patent applications, and the management of patent rights, including extensions and compulsory licenses. By detailing these processes, the Patents Regulations 1991 aim to streamline the patent application process, reduce ambiguity, and provide clear guidelines for both patent applicants and the Australian Patent Office.
Scope and Application
The Patents Regulations 1991, which are made under the Patents Act 1990, apply to the application, examination, and registration of patents in Australia. The Regulations cover various aspects of patent law, including the processes for filing applications, conducting examinations, handling oppositions, and granting patents. They detail requirements for patent specifications, the conduct of formalities checks, and the administration of patent rights. The Regulations apply to individuals, entities, and companies that seek to file patent applications and obtain patent registrations in Australia, as well as to the Commissioner of Patents who oversees the administration of the patent system. Certain provisions of the Regulations also apply to international patent applications, particularly those filed under the Patent Cooperation Treaty (PCT). The Regulations provide detailed guidance on the types of documents and information required for patent applications, the timing of various actions within the patent process, and the fees associated with filing, examining, and maintaining patents. They also address specific circumstances, such as the treatment of divisional applications, the handling of applications involving microorganisms, and the procedures for re-examination and amendment of patent specifications. The scope of the Regulations is broad, covering all stages of the patent process from application to grant, and they are supplemented by various schedules that set out fees and other particulars. Certain amendments and transitional provisions apply to ensure consistency and fairness in the application of the Regulations, particularly in relation to changes in the law and updates to fees.
Key Provisions
- The Patents Regulations 1991 outline a comprehensive framework for the application, examination, and enforcement of patents in Australia. These regulations cover the procedural aspects of patent law, including the filing and examination of patent applications, the rights and obligations of patent applicants and patentees, and the administration of the patent system by the Commissioner of Patents. Key sections of the regulations include those that define the types of documents required to be filed with a patent application (regulations 3.1 and 3.1A), establish the periods within which certain actions must be taken (regulations 3.5, 3.10, and 13.3), and specify the circumstances under which a patent application may be withdrawn or deemed to be lapsed (regulations 13.1, 13.1A, and 13.1B). The regulations also detail the procedures for opposition and re-examination of patent applications (regulations 5.5 and 9.1), the process for the grant and term of patents (regulations 6.1 and 6.2), and the mechanisms for compulsory licensing and revocation of patents (regulations 12.1 and 12.3). Furthermore, the regulations impose obligations on patent applicants and patentees, such as the requirement to provide complete and accurate information in patent applications (regulations 3.2 and 3.5), the necessity to pay prescribed fees for the filing, examination, and maintenance of patent applications and patents (regulations 22.1 and 22.2), and the need to comply with the timelines for filing requests and making payments (regulations 3.10 and 13.3).
- Breach of these regulations can lead to various consequences, including the lapse of patent applications (regulations 22.2B and 22.2C) and the cessation of patent rights (regulations 13.5 and 13.5A). For instance, failure to pay prescribed fees within the specified periods can result in the withdrawal of applications or the cessation of patents (regulations 22.2B and 22.2C). Additionally, the regulations establish penalties for non-compliance with certain requirements, such as the refusal to grant a patent if the necessary documents are not filed correctly (regulation 22.15). Certain actions, such as the failure to pay a continuation fee for a patent application or a renewal fee for a patent, can lead to the application or patent being deemed to have lapsed (regulations 13.3 and 13.6). The regulations also provide for disciplinary actions against patent attorneys, including fines and suspension or revocation of registration, for professional misconduct or failure to meet continuing professional education requirements (regulations 20.43 and 20.49). In the case of incorporated patent attorneys, failure to maintain professional indemnity insurance can result in the removal of the attorney's name from the Register of Patent Attorneys (regulation 20A.7).
- The regulations also include provisions for the enforcement of patent rights, such as the ability to seek injunctions or damages for infringement (regulation 11.1). Infringement exemptions for certain prescribed foreign countries are specified (regulation 11.1). Additionally, the regulations detail the process for the appeal of decisions made by the Commissioner of Patents to the Federal Court (regulation 10.8). The Commissioner is empowered to direct or expedite the examination of patent applications (regulation 3.17), and to require the rectification of the Register in cases of errors or omissions (regulation 10.7). The regulations further establish the procedures for the publication of patent applications and patents (regulations 4.1 and 4.2), and the conditions under which a patent may be surrendered or revoked (regulations 12.3 and 12.4). Finally, the regulations include transitional provisions to ensure the smooth implementation of legislative amendments and to address the impact of those amendments on existing patent applications and patents (regulations 23.36 to 23.55).
- Area of Law
- Intellectual Property Law
- Instrument
- Regulation
- Concepts
- Definitions & Interpretation
- Filing Requirements
- Examination Procedures
- Opposition and Re-examination
- Patent Attorneys Regulation
