Patents Regulations (Amendment) (Cth)

STATUTORY RULES.

1955. No. 70.

REGULATIONS UNDER THE PATENTS ACT 1952-1955.*

I, THE GOVERNOR-GENERAL in and over the Commonwealth of Australia, acting with the advice of the Federal Executive Council, hereby make the following Regulations under the Patents Act 1952-1955.

Dated this fourteenth

day of October , 1955.

 W.J. Slim

 Governor-General.

By His Excellency's Command,

(SGD,) J.A. SPICER

Attorney-General.

Amendments of the Patents Regulations. 

Parts.

1. Regulation 2 of the Patents Regulations is amended by omitting the words—

"Division 1.—Proceedings in Opposition Cases (Regulations 44-55)."

and inserting in their stead the words—

"Division 1.—Proceedings in Opposition Cases Other than Cases under section 95 of the Act (Regulations 44-55).

Division 1a.—Proceedings in Opposition Cases under section 95 of the Act (Regulations 55a-55g).".

Order of Examination.

2. Regulation 18 of the Patents Regulations is amended by omitting sub-regulation (2.).

Request under section 77.

3. Regulation 31 of the Patents Regulations is amended by omitting sub-regulation (2.) and inserting in its stead the following sub-regulation:—

"(2.) The person making the request shall furnish to the Commissioner a copy of the original specification, or a copy of each page of the original specification to be amended, on which the amendments that the person desires to make are shown—

(a) by drawing a line through the matter which it is desired to omit; and

(b) by underlining the matter which it is desired to add.".

* Notified in the Commonwealth Gazette on , 1955.

  Statutory Rules 1954. No. 18, as amended by Statutory Rules 1954, No. 55.

4737/55—Price 5d. 10/5.10.1955.

4. Regulation 32 of the Patents Regulations is repealed and the following regulation inserted in its stead:—

Amendment of request.

"32. An amendment under section 80 of the Act of a request as a result of the Examiner's adverse report shall be made by lodging at the Patent Office a copy of the documents amended as provided by sub-regulation (2.) of the last preceding regulation.".

5. Part VIII. of the Patents Regulations is repealed and the following Part inserted in its stead:—

"Part VIII.—Extension of Patents.

Mode of advertisement.

"34.— (1.) A patentee who intends to present a petition to the High Court under section 90 of the Act or to apply to the High Court or to the Commissioner under section 95 of the Act shall advertise his intention to do so in the Official Journal.

"(2.) The advertisement shall include an address for service in Australia and shall state a time, being not more than three months after the advertisement is published in the Official Journal, within which the petition or application is to be lodged.

Application to Commissioner for extension.

"35.—(1.) An application to the Commissioner under section 95 of the Act shall be in accordance with Form 21 and shall be lodged at the Patent Office.

"(2.) The Commissioner shall cause a notification that the application has been lodged to be published in the Official Journal.

"(3.) Where the address for service specified by a person who makes an application to the Commissioner under section 95 of the Act is a different address to the address for service specified in the advertisement published by the person in the Official Journal, the Commissioner shall, in the notification published under the last preceding sub-regulation, include a statement that the address for service has been varied to the address specified in the application.

"(4.) The person making the application shall lodge the declarations and other evidence on which he relies in support of his application at the Patent Office with the application or within three months after the date on which the application is made.

Notice of opposition.

"36.—(1.) A notice of opposition to an application to the Commissioner under section 95 of the Act shall be in accordance with Form 11.

"(2.) The notice shall be given within three months after the notification referred to in sub-regulation (2.) of the last preceding regulation is published in the Official Journal or within such further period, not exceeding one month, as the Commissioner, on an application in accordance with Form 10, allows.

"(3.) A copy of the notice of opposition—

(a)shall be served on the applicant within fourteen days after the date upon which it is lodged at the Patent Office; and

(b)may be so served at the address for service specified in the advertisement or, if a different address for service is specified in the application, at the address for service specified in the application.".

Heading to Division 1 Part XII.

6. The heading to Division 1 of Part XII. of the Patent Regulations is repealed and the following heading inserted in its stead:—

"Division 1.—Proceedings in Opposition Cases Other than Cases under section 95 of the Act.".

Application of Division.

7. Regulation 45 of the Patents Regulations is amended by omitting the figures "95,".

8.—(1.) After Division 1 of Part XII. of the Patents Regulations the following Division is inserted:—

"Division 1a.—Proceedings in Opposition Cases under Section 95 of the Act.

Definitions.

"55a. In this Division—

'applicant' means a person who has made an application to the Commissioner under section 95 of the Act;

'opponent', in relation to an application under section 95 of the Act, means a person who has lodged a notice of opposition to that application.

Applicant's evidence in support.

"55b. An applicant shall—

(a) serve on the opponent, within fourteen days after the notice of opposition has been served on him or within such further time as the Commissioner on application in accordance with Form 10, allows, a copy of each of the declarations and other evidence which he has lodged in support of his application; and

(b)as soon as practicable after the copies of the declarations and the other evidence have been so served, lodge at the Patent Office a written statement indicating the place at which, and the date on which, the copies of the declarations and other evidence were so served.

Opponent's evidence in answer.

"55c. An opponent shall—

(a) serve on the applicant, within three months after the date on which the declarations of the applicant were served or within such further time as the Commissioner on application in accordance with Form 10 allows, a copy of each of the declarations on which he relies in support of the opposition and in answer to the application; and

(b)as soon as practicable after the copies of the declarations are so served, lodge the declarations at the Patent Office with a written statement indicating—

(i) the place at which, and the date on which, the copies of the declarations of the applicant were served on him; and

(ii) the place at which, and the date on which, the copies of his declarations were served on the applicant.

Applicant's evidence in reply.

"55d. An applicant—

(a) may serve on the opponent, within three months after the date on which the copies of the declarations of the opponent were served on him or within such further time

as the Commissioner on application in accordance with Form 10 allows, a copy of each of the declarations on which he relies in reply to the declarations of the opponents; and

(b)shall, as soon as practicable after the copies of the declarations are so served, lodge the declarations at the Patent Office with a written statement indicating the place at which, and the date on which, the copies of the declarations were so served.

Statement if declarations in reply not to be lodged.

"55e. Where an applicant does not intend to lodge declarations in reply to the opponent's declarations within the time specified in the last preceding regulation or to make an application for an extension of time under that regulation, the applicant may lodge at the Patent Office a written notice to that effect and shall, if a notice is so lodged, serve a copy on the opponent.

Request to fix time and place for hearing.

"55f.—(1.) Where—

(a) an opponent has not, within the time specified in paragraph (a) of regulation 55c of these Regulations, served copies of the declarations referred to in that paragraph on the applicant;

(b)an applicant has served on the opponent copies of the declarations referred to in paragraph (b) of regulation 55d of these Regulations; or

(c) an applicant has lodged the written notice referred to in regulation 55b of these Regulations,

the applicant may lodge at the Patent Office an application in accordance with Form 26 for the time and place for the hearing of the opposition of which notice has been given to be fixed.

" (2.) Where—

(a)an applicant has not, within the time referred to in paragraph (a) of regulation 55b of these Regulations, served on the opponent copies of the declarations referred to in that paragraph;

(b)an applicant has not, within the time referred to in paragraph (a) of regulation 55d of these Regulations, served on the opponent copies of the declarations referred to in that paragraph; or

(c) an applicant has not, within one month after service of—

(i) the copies of the declarations referred to in paragraph (b) of regulation 55d of these Regulations; or

(ii) the copy of the written notice referred to in regulation 55e of these Regulations,

lodged an application under the last preceding sub-regulation,

the opponent may lodge at the Patent Office an application in accordance with Form 26 for the time and place for the hearing of the opposition of which notice has been given to be fixed.

Application of general provisions of Division 1 of this Part.

"55g. The provisions of regulations 50, 51, 53, 54 and 55 of these Regulations apply to, and in relation to, proceedings in opposition cases under section 95 of the Act.".

(2.) The provisions of Division 1a. of Part XII. of the Patents Regulations as inserted by the last preceding sub-regulation apply to, and in relation to, an application made under section 95 of the Act where—

(a)a notice of opposition to the application is given on or after the date of commencement of these Regulations; or

(b)a notice of opposition to the application was given before that date, but the time fixed by or under the Patents Regulations, as in force immediately before that date, for the service of copies of the declarations of an opponent has not expired.

(3.) For the purposes of the application, to a case referred to in paragraph (b)of the last preceding sub-regulation, of the provisions applied by that sub-regulation, the notice of opposition shall be deemed to have been served on the applicant on the date of commencement of these Regulations.

(4.) Where—

(a) a notice of opposition to an application to the Commissioner under section 95 of the Act (other than a notice of opposition referred to in paragraph (b)of sub-regulation (2.) of this regulation) was given before the date of commencement of these Regulations; and

(b) the application has not been heard before that date, the practice and procedure in relation to the application to be followed shall be the practice and procedure which the Commissioner, having regard to the provisions of Division 1a of Part XII. of the Patents Regulations as inserted by sub-regulation (1.) of this regulation, directs in each particular case.

(5.) The Commissioner shall cause notice of his directions under the last preceding sub-regulation to be served on the parties.

(6.) Where a person who has, before the date of commencement of these Regulations, lodged evidence in support of an application to the Commissioner under section 95 of the Act claims that the evidence contains matters of a confidential nature which he does not wish to disclose to a person who has lodged a notice of opposition to the application, the person may, within one month after that date, give notice to the Commissioner that he withdraws the evidence so lodged and that he proposes to lodge other evidence in support of his application.

(7.) The Commissioner shall, as soon as possible after the receipt of a notice under the last preceding sub-regulation, forward the withdrawn evidence to the person giving the notice.

(8.) A person who has given a notice under sub-regulation (6.) of this regulation shall lodge the other evidence in support of his application with the notice or within fourteen days after the date upon which the notice is received by the Commissioner.

Amendments of documents on request.

9. Regulation 60 of the Patents Regulations is amended—

(a) by omitting sub-regulation (1.) and inserting in its stead the following sub-regulations:—

"(1.) The Commissioner may, on a request being made in accordance with Form 27, amend a patent for the purposes of correcting a clerical error or obvious mistake.

"(1a.) The Commissioner may, on a request being made in accordance with Form 27a, amend an entry in the Register—for the purpose of—

(a) correcting a clerical error or an obvious mistake; or

(b) where a name, or an address, entered in the Register has been changed—changing the name or the address, so entered."; and

(b) by omitting paragraph (b) of sub-regulation (3.) and inserting in its stead the following paragraph:—

(b) in any other case—by a certified copy of the document or part of a document previously lodged on which the amendments that the person making the request desires to make are shown—

(i) by drawing a line through the matter which it is desired to omit; and

(ii) by underlining the matter which it is desired to add.".

First Schedule, Form 2.

10. The First Schedule to the Patents Regulations is amended by omitting Form 2 and inserting in its stead the following form:—

Form 2.

Regulation 9 (1.).

Commonwealth of Australia.

Patents Act 1952-19

APPLICATION FOR A PATENT OF ADDITION.

I,			, hereby apply for the grant of a Patent of
Addition for an invention entitled			which is described
in the accompanying			Provisional	specification.
			Complete
I request that the patent may be granted as a patent of addition
to	the Patent applied for on application No.
	Patent No.	in the name of.

I request that the term of the Patent of Addition be the same as that of the patent for the main invention or so much of the term of the patent for the main invention as is unexpired.

My address for service is

Dated this day of , 19 .

 (Signature.)

(To be completed where application is made by a person other than the applicant for the patent for the main invention or the patentee under the patent for the main invention.)

I,	,	the applicant for the Patent	hereby consent to this application.
		patentee of Patent No.

Dated this day of 19 .

 (Signature.)

To:

The Commissioner of Patents.

First Schedule, Form 5.

11. The First Schedule to the Patents Regulations is amended by omitting Form 5 and inserting in its stead the following form:—

Form 5.

Regulation 10.

Commonwealth of Australia.

Patents Act 1952-19 .

CONVENTION APPLICATION FOR A PATENT OF ADDITION.

I,		, of		,hereby apply for the
grant of a Patent of Addition for an invention entitled
which is described in the accompanying complete specification.
I request that the patent may be granted as a patent of addition
to	Patent No.		in the name of
	the Patent applied for on application No.

I request that the term of the Patent of Addition be the same as that of the patent for the main invention or so much of the term of the patent for the main invention as is unexpired.

This application is made under the provisions of Part XVI. of the Patents Act 1952-19 and is based on an application for a patent or similar protection made in on

My address for service is

Dated this day of , 19  .

 (Signature.)

(To be completed where application is made by a person other than the applicant for the patent for the main invention or the patentee under the patent for the main invention.)

I,	the applicant for the patent,	hereby consent to this application.
	patentee of Patent No.

Dated this day of , 19 .

(Signature.)

To:

The Commissioner of Patents.

––––––––––

First Schedule, Form 12.

12. The First Schedule to the Patents Regulations is amended by omitting from Form 12 the words " described in " (wherever occurring) and inserting in their stead the words " defined in the claim or claims of".

First Schedule, Form 20.

13. The First Schedule to the Patents Regulations is amended by omitting from Form 20 the words " in red ink ".

First Schedule, Form 21.

14. The First Schedule to the Patents Regulations is amended by omitting Form 21 and inserting in its stead the following Form:—

Form 21.

 Regulation 35.

Commonwealth of Australia.

Patents Act 1952-19 .

APPLICATION TO COMMISSIONER UNDER SECTION 95 FOR EXTENSION OF TERM OF PATENT.

I,	,of	, hereby apply for an
extension of the term of Patent No.	for a term of

Notice of my intention to make this application was advertised in the issue of the Official Journal published on

My address for service is	the address for service specified in the advertisement
	as follows:—

Dated this day of ,19 .

 (Signature.)

To:

The Commissioner of Patents.

First Schedule, Form 28.

15. The First Schedule to the Patents Regulations is amended by omitting from Form 28 the words "in red ink".

Second Schedule.

16. The Second Schedule to the Patents Regulations is amended by adding at the end thereof the following item:—

45.	On allowance of an amendment under Part VIII. of the Act—for the advertisement in the Official Journal, per line (single column) .............................................................	0  2   0
	and the amount estimated by the Commissioner to be the cost of reprinting the specification if considered by the Commissioner to be necessary.

Third Schedule, Part III.

17. Part III. of the Third Schedule to the Patents Regulations is amended by omitting items 15, 16 and 17 and inserting in their stead the following items:—

"15. Drawings shall be marked—

(a) in the top right-hand corner on the back of each sheet—with the number of sheets of the drawings and the number of the particular sheet; and

(b) in the centre of the top of the back of each sheet:—with the word 'Original' or 'True Copy ', as the case requires, and the name of the applicant.

"16. Where drawings are lodged with a complete specification after one or more provisional specifications have been lodged, the application number and date or the application numbers and dates shall be marked in the bottom left corner on the back of each sheet.".

Printed for the Government of the Commonwealth by A. J. Arthur

at the Government Printing Office, Canberra.