Patents Regulations (Amendment) (Cth)
__________________
TABLE OF PROVISIONS
Regulation Page
1. Commencement 1
2. Amendment 2
3. Regulation 1.4 (English text of treaties) 2
4. Regulation 1.6 (Disclosure) 2
5. Regulation 2.3 (Prescribed period: publication or use affecting validity).................. 2
6. Regulation 2.4 (Prescribed period: patents of addition) 3
7. Regulation 2.7 (Documents to accompany notice of assertion of invalidity).............. 3
8. Regulation 3.3 (Abstracts) 3
9. Regulation 3.4 (Substitute abstracts) 4
10. Regulation 3.8 (Applications to be made before certain decisions and declarations).. 4
11. Regulation 3.12 (Priority dates generally) 5
12. Regulation 3.18 (Report of Commissioner: examination) 6
13. Regulation 4.2 (Notice that specification is open to public inspection) 6
14. Regulation 4.3 (Prescribed documents: public inspection) 6
15. Regulation 5.1 (Application of this Chapter) 7
16. Regulation 5.3 (Filing of opposition) 7
17. New regulation 5.3A 7
Amendment of notice of opposition 7
Regulation
18. Regulation 5.8 (Time for giving of evidence) 8
19. Regulation 5.9 (Amendment of statement) 9
20. Regulation 5.13 (Representations to Commissioner) 9
21. Regulation 8.2 (Prescribed documents: PCT application) 9
22. Regulation 8.6 (Particulars required for Convention application) 9
23. Regulation 10.1 (Form of amendments) 10
24. Regulation 10.5 (Commissioner to grant leave to amend) 10
25. Regulation 10.6 (Allowance of amendments) 11
26. Regulation 13.4 (Prescribed period: acceptance of request and specification)........... 12
27. Regulation 19.2 (Request for information from Commissioner) 14
28. Regulation 20.16 (Certificate of completion of examinable subjects and of academic qualifications) 14
29. Regulation 22.3 (General fees for international applications) 15
30. Regulation 22.4 (Fees for international applications payable for the benefit of the International Bureau) 15
31. Regulation 22.15 (Documents to be in English) 15
32. Regulation 22.26 (Review of decisions) 15
33. Regulation 23.3 (Opposition to grant: practice and procedure) 15
34. Regulation 23.4 (Certain opposition: practice and procedure) 15
35. Regulation 23.11 (Supply of product referred to in section 117 of the Act)............... 16
36. Regulation 23.14 (Certain action under the 1952 Act) 16
37. Regulation 23.20 (Patent attorneys: continued application of certain provisions)....... 16
38. Schedule 1 (Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure) 17
39. Formal amendments of Schedule 1 (Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure) 17
40. Formal amendments of Schedule 2 (Patent Cooperation Treaty) 18
Regulation
41. Schedule 3 (Formal requirements for documents to be filed) 18
42. Schedule 7 (Fees) 19
43. Formal amendments 19
44. Omission of certain notes 19
45. Transitional 19
SCHEDULE 1 20
NEW SCHEDULE 1A
22
NEW SCHEDULE 2A
34
__________________
I, The Governor-General of the
Commonwealth of Australia, acting with the advice of the Federal Executive
Council, make the following Regulations under the
Dated 7 February 1995.
BILL HAYDEN
Governor-General
By His Excellency’s Command,
C. SCHACHT
Minister for Small Business, Customs
and Construction
____________
1.1 Regulation 38 is taken to have commenced on 30 April 1991.
The remainder of these Regulations commence
on gazettal: see
2.1 The Patents Regulations are amended as set out in these Regulations.
3.1 Omit the regulation, substitute:
(1) The English text of the Budapest Treaty as in force for Australia on 30 April 1991 is the text set out in Schedules 1 (the Treaty) and 1A (the Regulations under the Treaty).
The English text of the PCT as in force for Australia on 1 January 1994 is the text set out in Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty).
This Regulation is made for the purposes of subsection 228 (5) of the Act.]”.
4.1 Subregulation 1.6 (1):
Omit “the end of the day”.
5.1 Subregulation 2.3 (1):
Omit “the prescribed period”, substitute “in the case of information of the kind referred to in paragraph 24 (1) (a) of the Act, the prescribed period”.
5.2 Subregulation 2.3 (2):
Omit “For the purposes of paragraph 24 (1) (b) of the Act,”, substitute “For the purposes of subsection 24 (1) of the Act, in the case of information of the kind referred to in paragraph 24 (1) (b) of the Act,”.
6.1 Omit the regulation, substitute:
(1) For the purposes of section 25 of the Act (“validity: patents of addition”), the prescribed period is the period that commences on the priority date of the claim of the specification of the main invention and ends immediately before the priority date of the relevant claim of the specification of the patent of addition.
In subregulation (1), a reference to the claim of the specification of the main invention is a reference to:
(a) the claim defining that main invention; or
(b) if there are 2 or more claims defining the main invention—the claim that has the earlier or earliest priority date.”.
7.1 Paragraph 2.7 (a):
Omit the paragraph, substitute:
“(a) 2 copies of the document; and”.
7.2 Paragraph 2.7 (b):
Omit the paragraph, substitute:
“(b) if the document is not in English—2 copies of:
(i) a translation of the document into English; and
(ii) a related certificate of verification; and”.
8.1 Paragraph 3.3 (1) (b):
Omit “invention; and”, substitute “invention.”.
8.2 Paragraph 3.3 (1) (c):
Omit the paragraph.
9.1 Subregulation 3.4 (5):
Omit the subregulation, substitute:
If an applicant who files a complete specification does not file with it an abstract, the Commissioner, within 1 month of the date of filing of the complete specification, may direct the applicant to file an abstract within 1 month of the day on which the direction is given.”.
10.1 Omit the regulation, substitute:
An application under section 29 of the Act (‘application for patent’) must be made:
(a) in the case of an application of the kind described in section 33 of the Act (‘applications by opponents etc.’)—within 3 months of the decision of the Commissioner referred to in paragraph 33 (1) (b) or (2) (b) of the Act, as the case requires; or
(b) in the case of an application of the kind described in section 34 of the Act (‘applications by eligible persons arising out of court proceedings’)—within 3 months of the declaration of a court under subsection 34 (1) of the Act; or
(c) in the case of an application of the kind described in section 35 of the Act (‘applications by eligible persons following revocation by Commissioner’)—within 3 months of the declaration of the Commissioner under subsection 35 (1) of the Act; or
(d) in the case of an application of the kind described in section 36 of the Act (‘other applications by eligible persons’)—within 3 months of the declaration of the Commissioner under subsection 36 (1) of the Act.”.
11.1 Paragraph 3.12 (1) (b):
Omit the paragraph, substitute:
“(b) if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed;”.
11.2 Subregulation 3.12 (2):
Omit the subregulation, substitute:
For the purposes of paragraph (1) (b):
(a) if the application that relates to the specification containing the claim is a complete application—a provisional application that is associated with that complete application in accordance with section 38 of the Act (‘time for making complete application’) is a priority document; and
(b) if the application that relates to the specification containing the claim is a Convention application, a document of any of the following kinds is a priority document:
(i) a basic application that is related to the Convention application;
(ii) a specification, or another document filed in respect of, and at the same time as, a basic application that is related to that Convention application; or
(iii) a specification in respect of a basic application that is related to that Convention application, being a specification that was filed after the basic application was made;
(c) if:
(i) the application that relates to the specification containing the claim is a PCT application that, under Article 8 of the PCT, claims the priority of an earlier application; and
(ii) that earlier application is:
(a) an application made in Australia not more than 12 months before the international filing date of the PCT application; or
(b) a basic application, made not more than 12 months before the international filing date of the PCT application, that is the first application made in a Convention country in respect of the invention; or
(c) a basic application made after a basic application referred to in sub-subparagraph (b);
that earlier application, and a specification filed in relation to that earlier application after it was made, are priority documents.
For the purposes of paragraph (1) (b) and subregulation (2), ‘filed’ includes filed with the Patent Office and filed with a corresponding Office of another country.
A reference in subregulation (2) to a basic application does not include a basic application that has been disregarded by the Commissioner under section 96 of the Act (‘withdrawn, abandoned or refused applications’).”.
12.1 Paragraph 3.18 (2) (b):
Omit the paragraph.
13.1 Paragraph 4.2 (2) (c):
Omit “has been” (second occurring).
14.1 Paragraph 4.3 (f):
Omit “subregulation 3.1 (1)”, substitute “regulation 3.1”.
14.2 Add at the end:
“; (g) a notification under subregulation 3.25 (3) (‘request for Commissioner’s certificate authorising release of sample of a micro-organism’).
For the purposes of paragraphs 55 (2) (a), (b) and (c) of the Act, a document is a prescribed document if it is subject to an order of:
(a) a prescribed court or a court; or
(b) the Tribunal or a tribunal;
prohibiting its disclosure or prohibiting the disclosure of information contained in it.”.
15.1 Paragraph 5.1 (b):
Omit “(‘amendment of documents by Commissioner’)”, substitute “(‘correction of Register or patent’)”.
16.1 Subregulation 5.3 (3):
Omit “or 10.7 (3) (‘correction of Register or patent’)”.
16.2 After subregulation 5.3 (5), insert:
“(5a) A
person who intends to oppose a request for amendment of the Register or a
patent under subregulation 10.7 (4) (‘correction of Register or patent’)
must file a notice of opposition in the approved form within 3 months of the
publication in the
17.1 After regulation 5.3, insert:
“5.3a (1) An opponent may request the Commissioner in writing to amend a notice of opposition for the purpose of correcting a clerical error or obvious mistake.
The Commissioner may grant the request on the terms (if any) that the Commissioner specifies by notice to the opponent making the request.
The Commissioner must give the parties an opportunity to make representations concerning the proposed amendment.
If the Commissioner allows an amendment, he or she must give the applicant a copy of the notice as amended.”.
18.1 Sub-subparagraph 5.8 (1) (a) (i) (b):
Add at the end “or”.
18.2 Paragraph 5.8 (2) (a):
Omit the paragraph, substitute:
“(a) serve on the opponent a copy of any evidence in answer to the evidence in support of the opposition referred to in subregulation 5.4 (2) or paragraph (1) (a) within 3 months after being served with that evidence in support of the opposition; and”.
18.3 Subregulation 5.8 (4):
Omit the subregulation, substitute:
Subject to subregulation (5), if an opponent intends to rely on evidence in reply to the evidence referred to in paragraph (2) (a) or (3) (a), the opponent must:
(a) within 1 month of being served with a copy of the evidence under paragraph (2) (a) or (3) (a), serve on the applicant:
(i) a copy of the evidence in reply; or
(ii) if the opponent does not serve on the applicant a copy of the evidence in reply—a copy of a notice of intention to serve evidence in reply; and
(b) if the opponent serves on the applicant a copy of a notice of intention to serve evidence in reply—serve on the applicant a copy of that evidence within 3 months of being served with a copy of the evidence under paragraph (2) (a) or (3) (a); and
(c) file the evidence in reply and any notice of intention as soon as practicable after the copy of the evidence in reply or notice has been served on the applicant.”.
19.1 Subregulation 5.9 (1):
Omit “The Commissioner”, substitute “Subject to subregulation (2), the Commissioner”.
19.2 Paragraph 5.9 (1) (b):
Omit “referred to in”, substitute “that is served and filed under”.
19.3 Paragraph 5.9 (1) (c):
Omit “referred to in”, substitute “set out in a statement that is served and filed under”.
20.1 After “A representation referred to in”, insert “subregulation 5.3a (3) (‘amendment of notice of opposition’),”.
21.1 Subregulation 8.2 (1) (definition of “PCT application”): Omit the definition, substitute:
“
(a) an amendment under Article 19 or 34 of the PCT; or
(b) a rectification under Rule 91 of the Regulations annexed to the PCT.”.
22.1 Paragraph 8.6 (1) (a):
Omit the paragraph.
22.2 Paragraph 8.6 (1) (e):
Omit “paragraphs (a) to (d)”, substitute “paragraphs (b) to (d)”.
22.3 Subregulation 8.6 (2):
Add at the end:
“; (c) if the certification referred to in paragraph (a) is not in English—a translation of that certification into English and a related certificate of verification.”.
23.1 After subregulation 10.1 (1), insert:
“(1a) If an applicant proposes to amend a patent request, complete specification or other filed document:
(a) to remove a lawful ground of objection raised:
(i) in the case of an application for a standard patent—in an examination report; or
(ii) in the case of an application for a petty patent—in a notification under subsection 50 (2) of the Act (‘consideration and acceptance of patent request: petty patent’); or
(b) in anticipation:
(i) in the case of an application for a standard patent—of examination of the patent request and specification; or
(ii) in the case of an application for a petty patent—of consideration of the patent request and complete specification under section 50 of the Act;
the applicant is taken to have complied with subregulation (1) if a written statement of the proposed amendments is filed.”.
24.1 Subregulation 10.5 (1):
Omit the subregulation, substitute:
The Commissioner must grant leave to amend a patent request, complete specification or other filed document:
(a) if the report on the proposed amendments under subregulation 10.2 (1) is not an adverse report; and
(b) in the case of amendments that:
(i) are proposed in anticipation of, or in response to:
(A) a report relating to an examination; or
(B) a notice relating to a consideration of a complete application for a petty patent under section 50 of the Act (‘consideration and acceptance of patent request: petty patent’); and
(ii) do not relate to matters mentioned in paragraph 6 (c) of the Act (‘deposit requirements’);
if the Commissioner reasonably believes that the proposed amendments would remove all lawful grounds of objection to the patent request and complete specification.”.
25.1 Omit the regulation, substitute:
(1) If:
(a) the Commissioner grants leave to amend a patent request, complete specification or other filed document; and
(b) subregulation 10.5 (2) does not apply to the amendment;
the Commissioner must allow the proposed amendment immediately.
If:
(a) subregulation 10.5 (2) applies to a proposed amendment of a patent request, complete specification or other filed document; and
(b) no person opposes the allowance of the proposed amendment; and
(c) the Commissioner is satisfied that no relevant proceedings are pending;
the Commissioner must allow the proposed amendment at the end of the time for bringing opposition proceedings.
If:
(a) subregulation 10.5 (2) applies to a proposed amendment of a patent request, complete specification or other filed document; and
(b) a person opposes the allowance of the proposed amendment; and
(c) the opposition is decided against the opponent; and
(d) the Commissioner is satisfied that no relevant proceedings are pending;
the Commissioner must allow the proposed amendment immediately after the opposition is fully determined.
For the purposes of subregulation (3), an opposition is fully determined when:
(a) a decision has been made in respect of the opposition and the decision is no longer subject to any form of review (including review by way of appeal against a decision of the Tribunal or a prescribed court); or
(b) a decision that has been made in respect of the opposition was subject to review (including review by way of appeal against a decision of the Tribunal or a prescribed court) but the period within which review proceedings could have been instituted has expired without review proceedings having been instituted; or
(c) the opposition is withdrawn.
If the Commissioner requires a patentee to file a statement that, to the best of the knowledge of the patentee, relevant proceedings are not pending, the patentee must file the statement within 1 month of the Commissioner so requiring.”.
26.1 Omit the regulation, substitute:
(1) Subject to this regulation, the period prescribed for the purposes of paragraph 142 (2) (e) of the Act (‘lapsing of applications’) in relation to an application is:
(a) if the applicant has not made a request under subsection 47 (1) of the Act (‘request for modified examination’)—the period of 21 months commencing on the date of the first report (if any) under section 45 of the Act (‘examination’);
(b) the period of 21 months commencing on the date of the first report (if any) under section 48 of the Act (‘modified examination’);
(c) if examination is requested under subsection 47 (2) of the Act (‘request for modified examination’) after the Commissioner first reports under section 48 of the Act—the period of 12 months commencing on the date of the first report on the examination under section 45 of the Act;
(d) if the Commissioner has reported that the patent request or complete specification relates to an invention that, so far as claimed, is not novel in view of information of the kind described in subparagraph (b) (ii) of the definition of ‘prior art base’ in the Act—the period of 3 months commencing on the earlier of:
(i) the date of publication of the specification containing that information; or
(ii) its lapsing, refusal or withdrawal;
(e) if the patent request and complete specification relate to an application in relation to which a request has been made under section 32 of the Act (‘disputes between applicants etc.’)—subject to subregulation (3), the period of 3 months commencing on the date of the determination by the Commissioner under that section;
(f) if:
(i) a person has applied under subsection 36 (1) of the Act (‘other applications by eligible persons’) in relation to the patent request and complete specification; and
(ii) the Commissioner declares under that subsection that the applicant in relation to the request and complete specification is an eligible person;
subject to subregulation (3), the period of 3 months commencing on the date of that declaration;
(g) if:
(i) a person has applied under subsection 36 (1) of the Act (‘other applications by eligible persons’) in relation to the patent request and complete specification; and
(ii) the Commissioner declares under that subsection that that person is an eligible person;
either:
(iii) if the person has already lodged an application—subject to subregulation (3), the period of 3 months commencing on the date of the Commissioner’s declaration; or
(iv) in any other case—the period determined under whichever of paragraphs (a), (b) and (c) applies;
(h) if an appeal has been made to a prescribed court, or an application for review has been made to the Tribunal, in relation to the patent request or complete specification—subject to subregulation (4), the period of 3 months commencing on the day when the appeal or application is withdrawn or finally dealt with or determined;
(j) if:
(i) the application is for a patent of addition; and
(ii) an appeal has been made to a prescribed court or an application for review has been made to the Tribunal in respect of the application for a patent for the main invention;
subject to subregulation (4), the period of 3 months commencing on the day when the appeal or application is withdrawn or finally dealt with or determined.
If more than 1 of paragraphs (1) (a) to (j) applies in a particular case, the lapsing period is the longer or longest period so worked out.
If paragraph (1) (e) or (f) or subparagraph (1) (g) (iii) applies, the Commissioner may substitute a period longer than 3 months, if the Commissioner is satisfied that acceptance of the patent request and complete specification should be postponed.
If paragraph (1) (h) or (j) applies, the court or Tribunal may in its discretion substitute a period longer than 3 months.”.
27.1 Subregulation 19.2 (1):
Omit “paragraph 194 (c)”, substitute “section 194”.
28.1 Paragraph 20.16 (a):
Omit the paragraph, substitute:
“(a) has passed, or is exempt under regulation 20.13 (‘exemption from examination’) from having to pass an examination in, the subjects specified in Schedule 5; and”.
29.1 Paragraph 22.3 (1) (a):
Omit “the Commissioner or”.
30.1 Subregulation 22.4 (1):
Omit “the Commissioner or”.
31.1 Subregulation 22.15 (2):
Omit “the Commissioner or”.
32.1 Paragraph 22.26 (2) (a):
After subparagraph 22.26 (2) (a) (v), insert:
“(va) subregulation 13.4 (3);”.
33.1 Add at the end:
Chapter 5 of these Regulations applies to opposition to an application:
(a) to which subsection 234 (3) of the Act refers; and
(b) of which advertisement of acceptance has taken place under the Act.”.
34.1 Subparagraph 23.4 (1) (c) (i):
Omit “84 and 85”, substitute “84, 85 and 94”.
34.2 Subparagraph 23.4 (1) (c) (ii):
Omit “106 (5)”, substitute “160 (5)”.
34.3 Subparagraph 23.4 (1) (d) (i):
After “52,”, insert “76, 77, 78,”.
35.1 Paragraph 23.11 (2) (d):
Omit “the person who acquires that business.”, substitute “a person who acquires that business, whether from the first-mentioned person or from some other person.”.
36.1 Omit “of this Act referred to in paragraph (a).”, substitute “referred to in paragraph (a) under which the act is required to be done.”.
37.1 Subregulation 23.20 (1):
Omit the subregulation, substitute:
(1) In this regulation:
(a) passed the examination in a subject specified in subregulation 10 (2) of the former attorneys Regulations; or
(b) been issued with a certificate under regulation 20a or 22 of the former attorneys Regulations; or
(c) met the requirements of regulation 21 of the former attorneys Regulations.”.
38.1 Paragraph 6.3 (b) of the Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure:
Omit the paragraph, substitute:
Any international depositary authority shall communicate any such requirements and any amendments thereof to the International Bureau.”.
39.1 Omit the heading:
“
substitute:
“BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE PURPOSES OF PATENT PROCEDURE”.
39.2 Omit the heading:
“
and the Table of Provisions following that heading.
39.3 After article 20 of the Treaty, insert the heading and Table of Provisions set out in Schedule 1.
40.1 Omit the heading:
“REGULATIONS UNDER THE PATENT COOPERATION TREATY”
and the Table of Provisions following that heading.
40.2 After article 69 of the Treaty, omit:
the heading:
“
and the adoption and amendment dates of the Treaty following that heading, substitute the heading, Table of Provisions and further heading set out in Schedule 2.
41.1 After clause 1, insert:
“1a. A specification must commence with a short and precise title.”.
41.2 Clause 2 (Fitness for reproduction):
Add at the end:
“; and
(f) subject to subparagraph 3.2 (2) (c) (ii) of these Regulations, must be printed on only one side of the sheet.”.
41.3 Clause 5 (Numeration):
Add at the end:
In a statement of proposed amendments:
(a) the proposed amendments must be numbered consecutively; and
(b) if the statement is a subsequent one, the numbering must be consecutive with the numbers in the previous statement.”.
41.4 Clause 6 (Numbering of lines):
Omit “on the each”, substitute “on each”.
41.5 Subclause 7 (3) (Writing of textual matter):
Omit “11/2spaced”, substitute “11/2-spaced”.
42.1 Part 2 (General Fees):
Paragraph 13 (a):
Omit the paragraph, substitute:
“(a) under regulation 5.3A or subregulation 5.9 (3) objecting to a proposed amendment; or”.
43.1 Amendments as set out in Schedule 3.
44.1 Notes following regulations 3.1, 3.12, 3.23, 3.24, 3.25, 3.30, 8.1, 8.2, 8.3, 8.4, 17.2, 19.2, 22.3, 22.4, 22.5, 22.7, 22.15, 22.20 and 23.17 and Schedule 7 Part 3 item 7 and Part 4 item 3:
Omit the Notes.
45.1 In this regulation:
45.2 If, on the day on which subregulation 18.2 of these Regulations commences, an opponent has already served on an applicant a copy of the evidence in support of the opposition in accordance with the original paragraph 5.8 (2) (a), then despite the amendment effected by subregulation 18.2 of these Regulations, the original paragraph 5.8 (2) (a) is taken to apply for the purpose of working out the time for service of evidence in answer to that evidence.
Subregulation 39.3
NEW SCHEDULE 1A
REGULATIONS UNDER THE BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE PURPOSES OF PATENT PROCEDURE
TABLE OF PROVISIONS
Rule 1 Abbreviated Expressions and Interpretation of the Word “Signature”
1.1 “Treaty”
1.2 “Article”
1.3 “Signature”
Rule 2 International Depositary Authorities
2.1 Legal Status
2.2 Staff and Facilities
2.3 Furnishing of Samples
Rule 3 Acquisition of the Status of International Depositary Authority
3.1 Communication
3.2 Processing of the Communication
3.3 Extension of the List of Kinds of Microorganisms Accepted
Rule 4 Termination or Limitation of the Status of International Depositary Authority
4.1 Request; Processing of Request
4.2 Communication; Effective Date; Processing of Communication
4.3 Consequences for Deposits
Rule 5 Defaults by the International Depositary Authority
5.1 Discontinuance of Performance of Functions in Respect of Deposited Microorganisms
5.2 Refusal to Accept Certain Kinds of Microorganisms
Rule 6 Making the Original Deposit or New Deposit
6.1 Original Deposit
6.2 New Deposit
6.3 Requirements of the International Depositary Authority
Rule 7 Receipt
7.1 Issuance of Receipt
7.2 Form; Languages; Signature
7.3 Contents in the Case of the Original Deposit
7.4 Contents in the Case of the New Deposit
7.5 Receipt in the Case of Transfer
7.6 Communication in the Case of the Scientific Description and/or Proposed Taxonomic Designation
Rule 8 Later Indication of Amendment of the Scientific Description and/or Proposed Taxonomic Designation
8.1 Communication
8.2 Attestation
Rule 9 Storage of Microorganisms
9.1 Duration of the Storage
9.2 Secrecy
Rule 10 Viability Test and Statement
10.1 Obligation to Test
10.2 Viability Statement
Rule 11 Furnishing of Samples
11.1 Furnishing of Samples to Interested Industrial Property Offices
11.2 Furnishing of Samples to or with the Authorization of the Depositor
11.3 Furnishing of Samples to Parties Legally Entitled
11.4 Common Rules
11.5 Changes in Rules 11.1 and 11.3 when applying to International Applications
Rule 12 Fees
12.1 Kinds and Amounts
12.2 Change in the Amounts
Rule 12 bis Computation of Time Limits 12
bis .1 Periods Expressed in Years12
bis .2 Periods Expressed in Months12
bis .3 Periods Expressed in Days
Rule 13 Publication by the International Bureau
13.1 Form of Publication
13.2 Contents
Rule 14 Expenses of Delegations
14.1 Coverage of Expenses
Rule 15 Absence of Quorum in the Assembly
15.1 Voting by Correspondence
NEW SCHEDULE 2A
REGULATIONS UNDER THE PATENT COOPERATION TREATY
Adopted on June 19, 1970, and amended on April 14, 1978, on October 3, 1978, on May 1, 1979, on June 16, 1980, on September 26, 1980, on July 3, 1981, on September 10, 1982, on October 4, 1983, on February 3, 1984, on September 28, 1984, on October 1, 1985, on July 12, 1991, on October 2, 1991, on September 29, 1992 and on September 29, 1993.
TABLE OF PROVISIONS
Rule 1 Abbreviated Expressions
1.1 Meaning of Abbreviated Expressions
Rule 2 Interpretation of Certain Words
2.1 “Applicant”
2.2 “Agent”
2.2
bis “Common Representative”
2.3 “Signature”
Rule 3 The Request (Form)
3.1 Form of Request
3.2 Availability of Forms
3.3 Check List
3.4 Particulars
Rule 4 The Request (Contents)
4.1 Mandatory and Optional Contents; Signature
4.2 The Petition
4.3 Title of the Invention
4.4 Names and Addresses
4.5 The Applicant
4.6 The Inventor
4.7 The Agent
4.8 Common Representative
4.9 Designation of States
4.10 Priority Claim
4.11 Reference to Earlier Search
4.12 Choice of Certain Kinds of Protection
4.13 Identification of Parent Application or Parent Grant
4.14 Continuation or Continuation in Part
4.14
bis Choice of International Searching Authority
4.15 Signature
4.16 Transliteration or Translation of Certain Words
4.17 Additional Matter
Rule 5 The Description
5.1 Manner of the Description
5.2 Nucleotide and/or Amino Acid Sequence Disclosure
Rule 6 The Claims
6.1 Number and Numbering of Claims
6.2 References to Other Parts of the International Application
6.3 Manner of Claiming
6.4 Dependent Claims
6.5 Utility Models
Rule 7 The Drawings
7.1 Flow Sheets and Diagrams
7.2 Time Limit
Rule 8 The Abstract
8.1 Contents and Form of the Abstract
8.2 Figure
8.3 Guiding Principles in Drafting
Rule 9 Expressions, Etc., Not to Be Used
9.1 Definition
9.2 Noting of Lack of Compliance
9.3 Reference to Article 21 (6)
Rule 10 Terminology and Signs
10.1 Terminology and Signs
10.2 Consistency
Rule 11 Physical Requirements of the International Application
11.1 Number of Copies
11.2 Fitness for Reproduction
11.3 Material to be Used
11.4 Separate Sheets, Etc.
11.5 Size of Sheets
11.6 Margins
11.7 Numbering of Sheets
11.8 Numbering of Lines
11.9 Writing of Text Matter
11.10 Drawings, Formulae, and Tables, in Text Matter
11.11 Words in Drawings
11.12 Alterations, Etc.
11.13 Special Requirements for Drawings
11.14 Later Documents
Rule 12 Language of the International Application
12.1 Admitted Languages
12.2 Language of Changes in the International Application
Rule 13 Unity of Invention
13.1 Requirement
13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled
13.3 Determination of Unity of Invention Not Affected by Manner of Claiming
13.4 Dependent Claims
13.5 Utility Models
Rule 13 bisMicrobiological Inventions 13
bis .1 Definitions13
bis .2 References (General)13
bis .3 References: Contents: Failure to Include Reference or Indication13
bis .4 References: Time of Furnishing Indications13
bis .5 References and Indications for the Purposes of One or More Designated States; Different Deposits for Different Designated States; Deposits with Depositary Institutions other than Those Notified13
bis .6 Furnishing of Samples13
bis .7 National Requirements: Notification and Publication
Rule 13 terNucleotide and/or Amino Acid Sequence Listings 13
ter .1 Sequence Listing for International Authorities13
ter .2 Sequence Listing for Designated Office
Rule 14 The Transmittal Fee
14.1 The Transmittal Fee
Rule 15 The International Fee
15.1 Basic Fee and Designation Fee
15.2 Amounts
15.3 Mode of Payment
15.4 Time of Payment
15.5 Fees under Rule 4.9 (
c )15.6 Refund
Rule 16 The Search Fee
16.1 Right to Ask for a Fee
16.2 Refund
16.3 Partial Refund
Rule 16 bisExtension of Time Limits for Payment of Fees 16
bis .1 Invitation by the Receiving Office16
bis .2 Late Payment Fee
Rule 17 The Priority Document
17.1 Obligation to Submit Copy of Earlier National Application
17.2 Availability of Copies
Rule 18 The Applicant
18.1 Residence and Nationality
18.2 [
Deleted ]18.3 Two or More Applicants
18.4 Information on Requirements Under National Law as to Applicants
Rule 19 The Competent Receiving Office
19.1 Where to File
19.2 Two or More Applicants
19.3 Publication of Fact of Delegation of Duties of Receiving Office
19.4 Transmittal to the International Bureau as Receiving Office
Rule 20 Receipt of the International Application
20.1 Date and Number
20.2 Receipt on Different Days
20.3 Corrected International Application
20.4 Determination under Article 11 (1)
20.5 Positive Determination
20.6 Invitation to Correct
20.7 Negative Determination
20.8 Error by the Receiving Office
20.9 Certified Copy for the Applicant
Rule 21 Preparation of Copies
21.1 Responsibility of the Receiving Office
Rule 22 Transmittal of the Record Copy
22.1 Procedure
22.2 [
Deleted ]22.3 Time Limit under Article 12 (3)
Rule 23 Transmittal of the Search Copy
23.1 Procedure
Rule 24 Receipt of the Record Copy by the International Bureau
24.1 [
Deleted ]24.2 Notification of Receipt of the Record Copy
Rule 25 Receipt of the Search Copy by the International Searching Authority
25.1 Notification of Receipt of the Search Copy
Rule 26 Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application
26.1 Time Limit for Check
26.2 Time Limit for Correction
26.3 Checking of Physical Requirements under Article 14 (1) (
a ) (v)26.3
bis Invitation to Correct Defects under Article 14 (1) (b )26.3
ter Invitation to Correct Defects under Article 3 (4) (i)
26.4 Procedure
26.5 Decision of the Receiving Office
26.6 Missing Drawings
Rule 27 Lack of Payment of Fees
27.1 Fees
Rule 28 Defects Noted by the International Bureau
28.1 Note on Certain Defects
Rule 29 International Applications or Designations Considered Withdrawn under Article 14 (1), (3) or (4)
29.1 Finding by Receiving Office
29.2 [
Deleted ]29.3 Calling Certain Facts to the Attention of the Receiving Office
29.4 Notification of Intent to Make Declaration under Article 14 (4)
Rule 30 Time Limit under Article 14 (4)
30.1 Time Limit
Rule 31 Copies Required under Article 13
31.1 Request for Copies
31.2 Preparation of Copies
Rule 32 Extension of Effects of International Application to Certain Successor States
32.1 Request for Extension of International Application to Successor State
32.2 Effects of Extension to Successor State
Rule 33 Relevant Prior Art for the International Search
33.1 Relevant Prior Art for the International Search
33.2 Fields to be Covered by the International Search
33.3 Orientation of the International Search
Rule 34 Minimum Documentation
34.1 Definition
Rule 35 The Competent International Searching Authority
35.1 When Only One International Searching Authority is Competent
35.2 When Several International Searching Authorities are Competent
35.3 When the International Bureau is Receiving Office under Rule 19.1 (
a ) (iii)
Rule 36 Minimum Requirements for International Searching Authorities
36.1 Definition of Minimum Requirements
Rule 37 Missing or Defective Title
37.1 Lack of Title
37.2 Establishment of Title
Rule 38 Missing or Defective Abstract
38.1 Lack of Abstract
38.2 Establishment of Abstract
Rule 39 Subject Matter under Article 17 (2) ( a) (i)
39.1 Definition
Rule 40 Lack of Unity of Invention (International Search)
40.1 Invitation to Pay
40.2 Additional Fees
40.3 Time Limit
Rule 41 Earlier Search Other Than International Search
41.1 Obligation to Use Results; Refund of Fee
Rule 42 Time Limit for International Search
42.1 Time Limit for International Search
Rule 43 The International Search Report
43.1 Identifications
43.2 Dates
43.3 Classification
43.4 Language
43.5 Citations
43.6 Fields Searched
43.7 Remarks Concerning Unity of Invention
43.8 Authorized Officer
43.9 Additional Matter
43.10 Form
Rule 44 Transmittal of the International Search Report, Etc.
44.1 Copies of Report or Declaration
44.2 Title or Abstract
44.3 Copies of Cited Documents
Rule 45 Translation of the International Search Report
45.1 Languages
Rule 46 Amendment of Claims before the International Bureau
46.1 Time Limit
46.2 Where to File
46.3 Language of Amendments
46.4 Statement
46.5 Form of Amendments
Rule 47 Communication to Designated Offices
47.1 Procedure
47.2 Copies
47.3 Languages
47.4 Express Request under Article 23 (2)
Rule 48 International Publication
48.1 Form
48.2 Contents
48.3 Languages
48.4 Earlier Publication on the Applicant's Request
48.5 Notification of National Publication
48.6 Announcing of Certain Facts
Rule 49 Copy, Translation and Fee under Article 22
49.1 Notification
49.2 Languages
49.3 Statements under Article 19; Indications under Rule 13
bis .449.4 Use of National Form
49.5 Contents of and Physical Requirements for the Translation
Rule 50 Faculty under Article 22 (3)
50.1 Exercise of Faculty
Rule 51 Review by Designated Offices
51.1 Time Limit for Presenting the Request to Send Copies
51.2 Copy of the Notice
51.3 Time Limit for Paying National Fee and Furnishing Translation
Rule 51 bisCertain National Requirements Allowed under Article 27 (1), (2), (6) and (7) 51
bis .1 Certain National Requirements Allowed51
bis .2 Opportunity to Comply with National Requirements
Rule 52 Amendment of the Claims, the Description, and the Drawings, before Designated Offices
52.1 Time Limit
Rule 53 The Demand
53.1 Form
53.2 Contents
53.3 The Petition
53.4 The Applicant
53.5 Agent or Common Representative
53.6 Identification of the International Application
53.7 Election of States
53.8 Signature
53.9 Statement Concerning Amendments
Rule 54 The Applicant Entitled to Make a Demand
54.1 Residence and Nationality
54.2 Two or More Applicants
54.3 International Applications Filed with the International Bureau as Receiving Office
54.4 Applicant Not Entitled to Make a Demand
Rule 55 Languages (International Preliminary Examination)
55.1 Language of Demand
55.2 Translation of International Application
55.3 Translation of Amendments
Rule 56 Later Elections
56.1 Elections Submitted Later Than the Demand
56.2 Identification of the International Application
56.3 Identification of the Demand
56.4 Form of Later Elections
56.5 Language of Later Elections
Rule 57 The Handling Fee
57.1 Requirement to Pay
57.2 Amount
57.3 Time and Mode of Payment
57.4 Failure to Pay
57.5 [
Deleted ]57.6 Refund
Rule 58 The Preliminary Examination Fee
58.1 Right to Ask for a Fee
58.2 Failure to pay
58.3 Refund
Rule 59 The Competent International Preliminary Examining Authority
59.1 Demands under Article 31 (2) (
a )59.2 Demands under Article 31 (2) (
b )
Rule 60 Certain Defects in the Demand or Elections
60.1 Defects in the Demand
60.2 Defects in Later Elections
Rule 61 Notification of the Demand and Elections
61.1 Notification to the International Bureau and the Applicant
61.2 Notification to the Elected Offices
61.3 Information for the Applicant
61.4 Publication in the Gazette
Rule 62 Copy of Amendments Under Article 19 for the International Preliminary Examining Authority
62.1 Amendments Made before the Demand is Filed
62.2 Amendments Made after the Demand is Filed
Rule 63 Minimum Requirements for International Preliminary Examining Authorities
63.1 Definition of Minimum Requirements
Rule 64 Prior Art for International Preliminary Examination
64.1 Prior Art
64.2 Non-Written Disclosures
64.3 Certain Published Documents
Rule 65 Inventive Step or Non-Obviousness
65.1 Approach to Prior Art
65.2 Relevant Date
Rule 66 Procedure before the International Preliminary Examining Authority
66.1 Basis of the International Preliminary Examination
66.2 First Written Opinion of the International Preliminary Examining Authority
66.3 Formal Response to the International Preliminary Examining Authority
66.4 Additional Opportunity for Submitting Amendments or Arguments
66.4
bis Consideration of Amendments and Arguments
66.5 Amendment
66.6 Informal Communications with the Applicant
66.7 Priority Document
66.8 Form of Amendments
66.9 Language of Amendments
Rule 67 Subject Matter under Article 34 (4) ( a) (i)
67.1 Definition
Rule 68 Lack of Unity of Invention (International Preliminary Examination)
68.1 No Invitation to Restrict or Pay
68.2 Invitation to Restrict or Pay
68.3 Additional Fees
68.4 Procedure in the Case of Insufficient Restriction of the Claims
68.5 Main Invention
Rule 69 Start of and Time Limit for International Preliminary Examination
69.1 Start of International Preliminary Examination
69.2 Time Limit for International Preliminary Examination
Rule 70 The International Preliminary Examination Report
70.1 Definition
70.2 Basis of the Report
70.3 Identifications
70.4 Dates
70.5 Classification
70.6 Statement under Article 35 (2)
70.7 Citations under Article 35 (2)
70.8 Explanations under Article 35 (2)
70.9 Non-Written Disclosures
70.10 Certain Published Documents
70.11 Mention of Amendments
70.12 Mention of Certain Defects and Other Matters
70.13 Remarks Concerning Unity of Invention
70.14 Authorized Officer
70.15 Form
70.16 Annexes of the Report
70.17 Languages of the Report and the Annexes
Rule 71 Transmittal of the International Preliminary Examination Report
71.1 Recipients
71.2 Copies of Cited Documents
Rule 72 Translation of the International Preliminary Examination Report
72.1 Languages
72.2 Copy of Translation for the Applicant
72.3 Observations on the Translation
Rule 73 Communication of the International Preliminary Examination Report
73.1 Preparation of Copies
73.2 Time Limit for Communication
Rule 74 Translations of Annexes of the International Preliminary Examination Report and Transmittal Thereof
74.1 Contents of Translation and Time Limit for Transmittal Thereof
Rule 75 [Deleted]
Rule 76 Copy, Translation and Fee under Article 39 (1); Translation of Priority Document
76.1 [
Deleted ]76.2 [
Deleted ]76.3 [
Deleted ]76.4 Time Limit for Translation of Priority Document
76.5 Application of Rules 22.1 (g), 49 and 51
bis 76.6 Transitional Provision
Rule 77 Faculty under Article 39 (1) ( b)
77.1 Exercise of Faculty
Rule 78 Amendment of the Claims, the Description, and the Drawings, before Elected Offices
78.1 Time Limit Where Election Is Effected prior to Expiration of 19 Months from Priority Date
78.2 Time Limit Where Election Is Effected After Expiration of 19 Months from Priority Date
78.3 Utility Models
Rule 79 Calendar
79.1 Expressing Dates
Rule 80 Computation of Time Limits
80.1 Periods Expressed in Years
80.2 Periods Expressed in Months
80.3 Periods Expressed in Days
80.4 Local Dates
80.5 Expiration on a Non-Working Day
80.6 Date of Documents
80.7 End of Working Day
Rule 81 Modification of Time Limits Fixed in the Treaty
81.1 Proposal
81.2 Decision by the Assembly
81.3 Voting by Correspondence
Rule 82 Irregularities in the Mail Service
82.1 Delay or Loss in Mail
82.2 Interruption in the Mail Service
Rule 82 bisExcuse by the Designated or Elected State of Delays in Meeting Certain Time Limits 82
bis .1 Meaning of "Time Limit" in Article 48 (2)82
bis .2 Reinstatement of Rights and Other Provisions to which Article 48 (2) Applies
Rule 82 terRectification of Errors Made by the Receiving Office or by the International Bureau 82
ter .1 Errors Concerning the International Filing Date and the Priority Claim
Rule 83 Right to Practice before International Authorities
83.1 Proof of Right
83.1
bis Where the International Bureau is the Receiving Office
83.2 Information
Rule 84 Expenses of Delegations
84.1 Expenses Borne by Governments
Rule 85 Absence of Quorum in the Assembly
85.1 Voting by Correspondence
Rule 86 The Gazette
86.1 Contents
86.2 Languages
86.3 Frequency
86.4 Sale
86.5 Title
86.6 Further Details
Rule 87 Copies of Publications
87.1 International Searching and Preliminary Examining Authorities
87.2 National Offices
Rule 88 Amendment of the Regulations
88.1 Requirement of Unanimity
88.2 [
Deleted ]88.3 Requirement of Absence of Opposition by Certain States
88.4 Procedure
Rule 89 Administrative Instructions
89.1 Scope
89.2 Source
89.3 Publication and Entry into Force
Rule 90 Agents and Common Representatives
90.1 Appointment as Agent
90.2 Common Representative
90.3 Effects of Acts by or in Relation to Agents and Common Representatives
90.4 Manner of Appointment of Agent or Common Representative
90.5 General Power of Attorney
90.6 Revocation and Renunciation
Rule 90 bisWithdrawals 90
bis .1 Withdrawal of the International Application90
bis .2 Withdrawal of Designations90
bis .3 Withdrawal of Priority Claims90
bis .4 Withdrawal of the Demand, or of Elections90
bis .5 Signature90
bis .6 Effect of Withdrawal90
bis .7 Faculty under Article 37 (4) (b )
Rule 91 Obvious Errors in Documents
91.1 Rectification
Rule 92 Correspondence
92.1 Need for Letter and for Signature
92.2 Languages
92.3 Mailings by National Offices and Intergovernmental Organizations
92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.
Rule 92 bisRecording of Changes in Certain Indications in the Request or the Demand 92
bis .1 Recording of Changes by the International Bureau
Rule 93 Keeping of Records and Files
93.1 The Receiving Office
93.2 The International Bureau
93.3 The International Searching and Preliminary Examining Authorities
93.4 Reproductions
Rule 94 Furnishing of Copies by the International Bureau and the International Preliminary Examining Authority
94.1 Obligation To Furnish
Rule 95 Availability of Translations
95.1 Furnishing of Copies of Translations
Rule 96 The Schedule of Fees
96.1 Schedule of Fees Annexed to Regulations
REGULATIONS UNDER THE PATENT COOPERATION TREATY
MINOR AND FORMAL AMENDMENTS
Provision amended | Omit | Substitute |
Paragraph 1.5 (1) (a) | to the end | the end |
Subregulation 2.2 (2) | section 24 | paragraph 24 (1) (a) |
Subregulation 2.3 (1) | section 24 | subsection 24 (1) |
Paragraph 3.1 (2) (b) | priority; | priority; and |
Subparagraph 3.2 (2) (c) (ii) | true copy; and | true copy. |
Subregulation 3.2 (4) | as are | anything |
Paragraph 3.18 (3) (a) | that section 6 | section 6 |
Subregulation 3.19 (3) | Commisioner | Commissioner |
Subregulation 3.19 (4) | Commisioner | Commissioner |
Paragraph 3.21 (a) | the the treaty | the treaty |
Subregulation 3.22 (2) | Commisioner | Commissioner |
Subregulation 3.22 (3) | Commisioner | Commissioner |
Subparagraph 3.30 (d) (i) | subregulation 3.29 (3); and | subregulation 3.29 (3), and |
Paragraph 5.1 (a) | sections | provisions |
Subregulation 5.3 (2) | Department of Community Services and Health | Department of Human Services and Health |
Subregulation 6.7 (1) | Commisssioner | Commissioner |
Regulation 9.4 | ||
Paragraph 10.2 (8) (b) | Comissioner | Commissioner |
Subregulation 10.5 (2) | ||
Regulation 15.3 | application. | application is prescribed. |
Subregulation 22.6 (1) | ||
Subregulation 22.8 (2) | awards | award |
Paragraph 22.13 (1) (d) | charge d'affaires | chargé d’affaires |
Subregulation 22.23 (1) | the Commissioner | The Commissioner |
Subparagraph 22.26 (2) (a) (vi) | protecton | protection |
Subregulation 23.8 (1) | prescibed | prescribed |
Subregulation 23.8 (1) | appplication | application |
Subregulation 23.8 (3) | ||
Paragraph 23.10 (a) | section 54 (1b) | subsection 54 (1b) |
Paragraph 23.10 (b) | commmencing | commencing |
Paragraph 23.11 (2) (b) | first—mentioned | first-mentioned |
Paragraph 23.18 (b) | subsections 45 (2), (3), (3a) and (4a) of the 1952 Act apply | subsection 45 (2), (3), (3a) or (4a) of the 1952 Act applies |
Subregulation 23.25 (1) (definition of “renewal fee”) | of of | of |
Paragraph 23.25 (4) (b) | subregulation (1) | subregulation 13.3 (1) |
[
____________________________________________________________
1. Notified in the
Commonwealth of Australia Gazette on 14 February 1995.2. Statutory Rules 1991 No. 71 as amended by 1991 No. 456; 1992 No. 148; 1993 Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387.
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