Patents Regulations (Amendment) (Cth)

Statutory Rules 1993

No. 113 1

__________________

Patents Regulations 2(Amendment)

I, The Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following Regulations under the Patents Act 1990.

 Dated 27 May 1993.

 BILL HAYDEN

 Governor-General

 By His Excellency’s Command,

 

r. mcmullan

Minister for the Arts and Administrative Services

for the

 Minister for Science and Small Business

________________

1.   Commencement

1.1   These Regulations commence on 1 July 1993.

2.    Amendment

2.1   The Patents Regulations are amended as set out in these Regulations.

3.   Regulation 5.4 (Filing of statement)

3.1   Paragraph 5.4 (1) (a):

Omit “1 month”, substitute “3 months”.

4.   Regulation 5.10 (Conduct of proceedings to which this Chapter applies)

4.1   Paragraph 5.10 (1) (b):

After “Chapter”, insert “(except in regulation 5.3 (‘filing of opposition’) or paragraph 5.4 (1) (a) (‘filing of statement’)),”.

4.2   Subregulation 5.10 (2):

Omit “(‘filing of opposition’)”, substitute “or paragraph 5.4 (1) (a);”.

4.3   Paragraph 5.10 (4) (b):

Omit “may specify”, substitute “specifies”.

5.   Regulation 22.2 (General fees)

5.1   Subregulation 22.2 (2):

Omit “item 29”, substitute “item 28”.

5.2   Subregulation 22.2 (4):

Omit “Item 22”, substitute “Item 21”.

6.   Regulation 22.11 (Extension of time)

6.1   Paragraph 22.11 (3) (a):

Add at the end “or paragraph 5.4 (1) (a) (‘filing of statement’);”.

7.    Schedule 7 (Fees)

7.1   Omit Parts 1, 2 and 3, substitute:

PART 1—PATENT ATTORNEYS

Column 1 Item	Column 2 Matter	Column 3 Fee $
1	On making an application for admission to sit for an examination—per subject	50
2	On making an application for grant of a supplementary examination—per subject	55
3	On making an application for a report of reasons for failure—per subject	45
4	On making an application for a certificate of the Board under regulation 20.16	40
5	On making an application for registration as a patent attorney	200
6	Annual registration fee payable by a patent attorney	320
7	On making an application under regulation 20.19	160

_______________________________________________________

SCHEDULE 7—continued

PART 2—GENERAL FEES

Column 1 Item		Column 2 Matter		Column 3 Fee
1	On filing a request for a patent accompanied by a provisional specification		$80
2	On filing a request for a petty patent accompanied by a complete specification		$165
3	On filing a request for a standard patent accompanied by a complete specification: (a) filing; and (b) if the number of sheets comprising the specification, including any drawings contained in the specification, exceeds 30—for each sheet in excess of 30; and (c) if the number of claims exceeds 10—for each claim in excess of 10		$195 $14 $8
4	On filing a request for an examination of a patent request and complete specification:
(a) if the request was not preceded by a direction of the Commissioner under subsection 44 (2) or (4) of the Act:
(i) in the case of a request for an examination to be made in accordance with section 45 of the Act		$390
(ii) in the case of a request for a modified examination		$325

SCHEDULE 7— continued

Column 1 Item		Column 2 Matter		Column 3 Fee
(b) if the request was preceded by a direction of the Commissioner under subsection 44 (2) or (4) of the Act (whether or not the applicant had, before the request was made, requested deferment of the examination under section 46 of the Act):
(i) in the case of a request for an examination to be made in accordance with section 45 of the Act		$335
(ii) in the case of a request for a modified examination		$280
5	On filing a request under subsection 44 (3) of the Act requiring the Commissioner to direct an applicant to request examination		$90
6	On filing a copy of the specification referred to in subregulation 3.20 (6):
(a) if filed between 1 month and 2 months after filing of the request for modified examination		$50
(b) if filed after 2 months after filing of the request for modified examination		$160
7	On filing a request under subsection 97 (2) of the Act for re-examination of a complete specification		$1050

SCHEDULE 7— continued

Column 1 Item				Column 2 Matter			Column 3 Fee
8		Continuation fee under paragraph 142 (2) (d) of the Act, or renewal fee under paragraph 143 (a) of the Act, for:
(a) the third anniversary			$115
(b) the fourth anniversary			$140
(c) the fifth anniversary			$165
(d) the sixth anniversary			$200
(e) the seventh anniversary			$235
(f) the eighth anniversary			$270
(g) the ninth anniversary			$305
(h) the tenth anniversary			$345
(i) the eleventh anniversary			$385
(j) the twelfth anniversary			$430
(k) the thirteenth anniversary			$475
(l) the fourteenth anniversary			$525
(m) the fifteenth anniversary			$575
plus: if paid within 6 months after the anniversary			$55 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid

SCHEDULE 7— continued

Column 1 Item				Column 2 Matter			Column 3 Fee
9		Renewal fee under paragraph 143 (a) of the Act, if an extension of the term of a standard patent has been granted under subsection 75 (2) or (4) of the Act, for:
(a) the sixteenth anniversary			$630
(b) the seventeenth anniversary			$680
(c) the eighteenth anniversary			$730
(d) the nineteenth anniversary			$790
plus: if paid within 6 months after the anniversary			$55 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid
10		On filing a notice of opposition under regulation 5.3			$100
11		On filing a request under subregulation   5.5 (1) for dismissal of opposition			$50
12		On filing an application under subregulation 5.10 (2) for an extension of time, for each month, or part of a month, for which the extension is sought			$55

SCHEDULE 7— continued

Column 1 Item		Column 2 Matter		Column 3 Fee
13	On filing an application under subregulation 5.10 (4) to lodge further evidence in opposition proceedings		$75
14	On making a representation to the Commissioner under regulation 5.9 or 5.10		$100
15	For sealing a standard patent under section 61 of the Act		$260
16	On filing an application for the grant of an extension of the term of a petty patent under section 69 of the Act		$350
17	On filing an application under section 70 of the Act for the extension of the term of a patent relating to a pharmaceutical substance		$685
18	On filing an application under section 66 of the Act for a duplicate of a patent to be sealed		$50
19	On filing a request for leave to amend: (a) a complete specification under section 104 of the Act, before a request for examination has been filed or after the complete specification has been accepted; or (b) a patent request for a petty patent to make it a patent request for a standard patent		$100 $100

SCHEDULE 7— continued

Column 1 Item		Column 2 Matter		Column 3 Fee
20	On filing a request for leave to amend a patent request or another filed document under section 104 of the Act (other than  a request for change of address or a request to which the fee under paragraph (b) of item 19 applies) before a request for examination has been filed or after the patent request has been accepted		$50
21	On filing:
(a) a request to amend a patent or an entry in the Register under subregulation 10.7 (1), other than: (i) a request for a change of address; or (ii) a request to which the fee under paragraph (b) applies		$55
(b) simultaneously, 2 or more requests under subregulation 10.7 (1), each of which is to make the same amendment to the name entered in the Register		$55, plus $25 for each request after the first
22	On filing: (a) a request under subregulation 19.1 (2) for registration of particulars referred to in paragraph 19.1 (1) (a) or (b) other than a request to which the fee under paragraph (b) applies		$50

SCHEDULE 7— continued

Column 1 Item		Column 2 Matter		Column 3 Fee
(b) simultaneously, 2 or more requests under subregulation 19.1 (2), if the devolution of title or interest is the same in respect of all the patents to which the requests relate		$50, plus $25 for each request after the first
23	On filing a request under subsection 17 (1) or (2), section 46, subsection 49 (3), 54 (1), 82 (1), 92 (1) or 113 (1) or section 215 of the Act		$50
24	On filing a document or documents referred to in subregulation 8.6 (2), more than 3 months after filing the application:
(a) if filed before or at the time of filing a request for examination		$50
(b) if filed after filing a request for examination		$160
25	On filing any translation or translations referred to in paragraph 3.1 (3) (b), more than 3 months after complying with the requirements of subsection 89 (3) of the Act:
(a) if filed before or at the time of filing a request for examination		$50
(b) if filed after filing a request for examination		$160
26	On filing a request under subsection 150 (1) of the Act to restore a lapsed application		$90

SCHEDULE 7— continued

Column 1 Item		Column 2 Matter		Column 3 Fee
27	On filing an application under subsection 223 (2) of the Act for an extension of time on a ground specified in paragraph 223 (2) (a) of the Act:
(a) for each month, or part of a month, for which the application is made; and		$55
(b) if the application is filed after the end of the time to be extended		$85
28	For granting an extension of time greater than that applied for by the applicant—for each month, or part of a month of extension granted		$55 less any amount paid under paragraph (a) of item 27
29	On filing an application under subsection 223 (2) of the Act for an extension of time on the ground specified in paragraph 223 (2) (b) of the Act		$55
30	On filing: (a) a request under regulation 22.22 for the exercise of discretionary power; or (b) a request for a hearing		$100 $100

SCHEDULE 7— continued

Column 1 Item		Column 2 Matter		Column 3 Fee
31	On appearing at a hearing		$100 less any amount paid under item 30 in relation to the hearing
32	On filing a response to the Commissioner’s report under section 45 or 48 of the Act, if filed more than 12 months, but within 21 months, after the date of the first report on the examination—for each month, or part of a month, after the 12 months, other than a month in respect of which a fee has been paid under this item in relation to that examination		$55
33	For supply of an uncertified copy of:
(a) a patent specification; or (b) a document other than a patent specification; or (c) if more than 6 documents of the kind mentioned in paragraph (b) are sought from a single source and supplied at the same time		$15 $10 $60 plus 30 cents per page for each document in excess of 6 documents

SCHEDULE 7— continued

Column 1 Item		Column 2 Matter		Column 3 Fee
34	For supply of: (a) a certificate by the Commissioner; and		$75
(b) for each additional certificate that is the same, and supplied at the same time, as the first certificate		$55
35	On filing a request for information under subregulation 19.2 (1), other than a request referred to in item 36 or 37—for each application, patent or document		$50
36	On filing a request for a computer print- out of information under subregulation 19.2 (1) about a patent or a patent application		$10
37	On filing a request under subregulation 19.2 (2) for information that requires an international-type search		$750
38	On filing a request under section 58 of the Act for the result of a search made under section 45 or 48 of the Act		$50
39	On filing a substitute page or pages in compliance with a direction under subregulation 3.2 (4):
(a) within 3 months after the day when the direction was given		$50
(b) after the time specified in paragraph (a) but before the application becomes open to public inspection		$95

SCHEDULE 7— continued

Column 1 Item		Column 2 Matter		Column 3 Fee
40	For filing an abstract after the day when a direction was given under subregulation 3.4 (5)		$50
41	For taxing costs under subregulation 22.8 (3)		$50

_______________________________________________________

PART 3—GENERAL FEES FOR INTERNATIONAL APPLICATIONS

Column 1 Item	Column 2 Matter	Column 3 Fee
1	Transmittal fee under Rule 14 of the  PCT	$55
2	Search fee under Rule 16 of the PCT	$750
3	Additional fee for search under Article 17 (3) (a) of the PCT	$750
4	Preliminary examination fee under Rule 58 of the PCT	$400
5	Additional fee for international preliminary examination under Article 34 (3) (a) of the PCT	$400
6	For copy of a document in accordance with Rules 44.3 (b) or 71.2 (b) of the PCT	$15

SCHEDULE 7—continued

Column 1 Item	Column 2 Matter	Column 3 Fee
7	Confirmation fee under Rule 15.5 (a) of the PCT	50% of the sum of the designation fees payable under item 2 (b) of Part 4 in this Schedule

[NOTE: The text of the PCT is set out in Schedule 2.]

____________________________________________

8.   Schedule 8 (Costs, expenses and allowances)

8.1   Omit the Schedule, substitute:

SCHEDULE 8

Regulation 22.8

COSTS, EXPENSES AND ALLOWANCES

PART 1—COSTS

Column 1 Item	Column 2 Matter	Column 3 Amount
1	Notice of opposition	$170
2	Evidence in support	$460

SCHEDULE 8—continued

Column 1 Item	Column 2 Matter	Column 3 Amount
3	Receiving and perusing notice of opposition	$85
4	Receiving and perusing evidence in support	$200
5	Evidence in answer	$460
6	Receiving and perusing evidence in answer	$135
7	Evidence in reply	$230
8	Receiving and perusing evidence in reply	$85
9	Preparation of case for hearing	$345
10	Attendance at hearing by patent attorney or solicitor without counsel	$170 per hour or $765 per day
11	Attendance at hearing by patent attorney or solicitor instructing counsel	$135 per hour or $610 per day
12	Counsel fees	$230 per  hour or $1,035 per day

_______________________

SCHEDULE 8—continued

PART 2—EXPENSES AND ALLOWANCES

Division 1—Expenses 

 1. A person who has paid a fee prescribed in these Regulations in relation to proceedings before the Registrar may be paid the amount of the fee.

 2. A person attending proceedings before the Registrar must be paid:

• (a)

  a reasonable amount for allowances for transport between the usual place of residence of the person and the place that he or she attends for that purpose; and

• (b)

  if the person is required to be absent overnight from his or her usual place of residence—a reasonable amount for allowances up to a daily maximum of $390 for meals and accommodation.

Division 2—Allowances

 3. A person who, because of his or her professional, scientific or other special skill or knowledge, is summoned to appear before the Registrar as a witness must be paid:

• (a)

  if the person is remunerated in his or her occupation by wages, salary or fees—an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or

• (b)

  in any other case—an amount of not less than $95, or more than $475, for each day on which he or she so attends.

4. A person summoned to appear before the Registrar as a witness, other than a witness referred to in clause 3, must be paid:

• (a)

  if the person is remunerated in his or her occupation by wages, salary or fees—an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or

• (b)

  in any other case—an amount of not less than $54, or more than $89, for each day on which he or she so attends.

9.   Application and transitional

9.1   Despite the amendments of Schedule 7 to the Patents Regulations made by regulation 7 of these Regulations, if:

• (a)

  an application for:

  • (i)

    the grant of an extension of the term of a petty patent under section 69 of the Act; or

  • (ii)

    the extension of the term of a patent relating to a pharmaceutical substance;

 was filed before 1 July 1993; and

• (b)

  on or after 1 July 1993, the Commissioner grants the extension sought;

the fee payable under item 16 or 18 of Part 2 of that Schedule, as in force on 30 June 1993, is payable in respect of the granting of the extension sought.

9.2   The amendments of Schedule 7 to the Patents Regulations made by regulation 7 of these Regulations do not apply in respect of:

• (a)

  a continuation fee in respect of a year; or

• (b)

  a renewal fee in respect of a year of a patent;

being a year or year of a patent ending on or after the commencement of regulation 7, if that continuation fee or renewal fee became due and payable, and has been paid, before that commencement.

9.3   In this regulation:

“continuation fee” means a continuation fee for the purposes of paragraph 142 (2) (d) of the Act;

“renewal fee” means a renewal fee for the purposes of paragraph 143 (a) of the Act.

____________________________________________________________

NOTES

1. Notified in the Commonwealth of Australia Gazette on 3 June 1993.

2. Statutory Rules 1991 No. 71 as amended by 1991 No. 456; 1992 No. 148.