Statutory Rules 1993
No. 227 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 19 August 1993.
BILL
HAYDEN
Governor-General
By His Excellency’s Command,
C.
SCHACHT
Minister
for Science and Small Business
____________
1. Commencement
1.1 Subregulations
3.1, 4.1 and 4.4 are taken to have commenced on 1 October 1992.
1.2 The remainder of
these Regulations are taken to have commenced on 1 January 1993.
2. Amendment
2.1 The Patents Regulations are amended as set out
in these Regulations.
3. Regulation 1.4 (English text of Treaties)
3.1 Subregulation 1.4 (2):
Omit “1 July 1992”, substitute “1 October 1992”.
3.2 Subregulation 1.4 (2):
Omit “1 October 1992”, substitute “1 January 1993”.
4. Schedule 2 (Patent Cooperation Treaty)
4.1 Table of Provisions (portion relating to the
Regulations):
Omit “Rule 32
[Deleted]”,
substitute:
“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”.
4.2 Table of Provisions (portion relating to the
Regulations):
Omit “Rule 55.1
The Demand”,
substitute :
“Rule 55.1 Language of Demand
55.2 Translation of International
Application
55.3 Translation of Amendments”.
4.3 Regulations (note after heading):
Omit “and on October 2, 1991”, substitute “, October 2, 1991 and on
September 29, 1992”.
4.4 Regulations (new Rule 32):
After Rule 31, insert:
“Rule 32
Extension of Effects of
International Application to
Certain Successor States
“32.1 Request for
Extension of International Application to Successor State
(a) The effects of any international application
whose international filing date falls in the period defined in paragraph (b)
may, subject to the performance by the applicant of the acts specified in
paragraph (c), be extended to a State (“the successor State”) whose
territory was, before the independence of that State, part of the territory of
a Contracting State which subsequently ceased to exist (“the predecessor
State”), provided that the successor State has become a Contracting State
through the deposit, with the Director General, of a declaration of
continuation the effect of which is that the Treaty is applied by the successor
State.
(b) The period referred to in paragraph (a)
starts on the day following the last day of the existence of the predecessor
State and ends two months after the date on which the declaration referred to
in paragraph (a) was notified by the Director General to the Governments
of the States party to the Paris Convention for the Protection of Industrial
Property. However, where the date of independence of the successor State is
earlier than the date of the day following the last day of the existence of the
predecessor State, the successor State may declare that the said period starts
on the date of its independence; such a declaration shall be made together with
the declaration referred to in paragraph (a) and shall specify the date
of independence.
(c) In respect of any international application
whose filing date falls within the applicable period under paragraph (b),
the International Bureau shall send the applicant a notification informing him
that he may make a request for extension by performing, within three months
from the date of that notification, the following acts:
- (i)
filing with the International Bureau the
request for extension;
- (ii)
paying to the International Bureau an
extension fee in Swiss francs, the amount of which shall be the same as the
amount of the designation fee referred to in Rule 15.2 (a).
(d) This Rule shall not apply to the Russian
Federation.
“32.2 Effects
of Extension to Successor State
(a) Where a request for extension is made in
accordance with Rule 32.1,
- (i)
the successor State shall be considered as
having been designated in the international application, and
- (ii)
the applicable time limit under Article 22 or
39 (1) in relation to that State shall be extended until the expiration of
at least three months from the date of the request for extension.
(b) Where, in the case of a successor State
which is bound by Chapter II of the Treaty, the request for extension was made
after, but the demand was made before, the expiration of the 19th month from
the priority date, and a later election is made of the successor State within
three months from the date of the request for extension, the applicable time
limit under paragraph (a) (ii) shall be at least 30 months from the
priority date.
(c) The successor State may fix time limits
which expire later than those provided in paragraphs (a) (ii) and (b).
The International Bureau shall publish information on such time limits in the
Gazette.”.
4.5 Regulations (Rule 37.2):
Add at the end:
“Such title shall be established in the language in which the
international application is published or, if a translation was transmitted
under Rule 12.1 (c) and the International Searching Authority so
wishes, in the language of that translation.”.
4.6 Regulations (Rule 38.2, paragraph (a)):
Omit the paragraph, substitute:
“38.2 Establishment
of Abstract
(a) If the international application does not
contain an abstract and the International Searching Authority has not received
a notification from the receiving Office to the effect that the applicant has
been invited to furnish an abstract, or if the said Authority finds that the
abstract does not comply with Rule 8, it shall itself establish an abstract.
Such abstract shall be established in the language in which the international
application is published or, if a translation was transmitted under Rule 12.1 (c)
and the International Searching Authority so wishes, in the language of that
translation.”.
4.7 Regulation (Rule 43.4):
After “published”, add “or, if a translation was transmitted under
Rule 12.1 (c) and the International Searching Authority so wishes,
in the language of that translation”.
4.8 Regulations (Rule 55.1):
Omit the Rule, substitute:
“55.1 Language of
Demand
The demand shall be
in the language of the international application or, if the international
application has been filed in a language other than the language in which it is
published, in the language of publication. However, if a translation of the
international application is required under Rule 55.2, the demand shall be in
the language of that translation.
“55.2 Translation
of International Application
(a) Where the international application is
neither filed nor published in the language, or one of the languages, specified
in the agreement concluded between the International Bureau and the
International Preliminary Examining Authority competent for the international
preliminary examination of that application, that Authority may require that,
subject to paragraph (b), the applicant furnish with the demand a
translation of the international application into the language, or one of the
languages, specified in the said agreement.
(b) Where a translation of the international
application into a language referred to in paragraph (a) was transmitted
to the International Searching Authority under Rule 12.1 (c) and
the International Preliminary Examining Authority is part of the same national
Office or intergovernmental organization as the International Searching
Authority, the applicant need not furnish a translation under paragraph (a).
In such a case, unless the applicant furnishes a translation under paragraph (a),
the international preliminary examination shall be carried out on the basis of
the translation transmitted under Rule 12.1 (c).
(c) If the requirement of paragraph (a)
is not complied with and paragraph (b) does not apply, the International
Preliminary Examining Authority shall invite the applicant to furnish the
required translation within a time limit which shall be reasonable under the
circumstances. That time limit shall not be less than one month from the date
of the invitation. It may be extended by the International Preliminary
Examining Authority at any time before a decision is taken.
(d) If the applicant complies with the
invitation within the time limit under paragraph (c), the said
requirement shall be considered to have been complied with. If the applicant
fails to do so, the demand shall be considered not to have been submitted.
(e) Paragraphs (a) to (d) shall
apply only where the International Preliminary Examining Authority has
declared, in a notification addressed to the International Bureau, that it
accepts to carry out international preliminary examination on the basis of the
translation referred to in those paragraphs.
“55.3 Translation
of Amendments
(a) Where a translation of the international
application is required under Rule 55.2, any amendments which are referred to
in the statement concerning amendments under Rule 59.3 and which the applicant
wishes to be taken into account for the purposes of the international
preliminary examination, and any amendments under Article 19 which are to be
taken into account under Rule 66.1 (c), shall be in the language of
that translation. Where such amendments have been or are filed in another
language, a translation shall also be furnished.
(b) Where the required translation of an
amendment referred to in paragraph (a) is not furnished, the
International Preliminary Examining Authority shall invite the applicant to
furnish the missing translation within a time limit which shall be reasonable
under the circumstances. That time limit shall not be less than one month from
the date of the invitation. It may be extended by the International Preliminary
Examining Authority at any time before a decision is taken.
(c) If the applicant fails to comply with the
invitation within the time limit under paragraph (b), the amendment
shall not be taken into account for the purposes of the international
preliminary examination.”.
4.9 Regulations (Rule 60.1, paragraph (a)):
Omit “55”, substitute “55.1”.
4.10 Regulations (Rule 61.1, paragraph (b)):
After “54.4 (a),”, insert “55.2 (d),”.
4.11 Regulations (Rule 66.9):
Omit “If”, substitute “(a) Subject to
paragraphs (b) and (c), if”.
4.12 Regulations (Rule
66.9):
Add at the end:
“(b) If the international preliminary examination
is carried out, pursuant to Rule 55.2, on the basis of a translation of the
international application, any amendment, as well as any letter referred to in
paragraph (a), shall be submitted in the language of that translation.
(c) Subject to Rule 55.3, if an amendment or a
letter is not submitted in a language as required under paragraph (a) or
(b), the International Preliminary Examining Authority shall, if
practicable having regard to the time limit for establishing the international
preliminary examination report, invite the applicant to furnish the amendment
or letter in the required language within a time limit which shall be
reasonable under the circumstances.
(d) If the applicant fails to comply, within the
time limit under paragraph (c), with the invitation to furnish an
amendment in the required language, the amendment shall not be taken into
account for the purposes of the international preliminary examination. If the
applicant fails to comply, within the time limit under paragraph (c),
with the invitation to furnish a letter referred to in paragraph (a) in
the required language, the amendment concerned need not be taken into account
for the purposes of the international preliminary examination.”.
4.13 Regulations (Rule 70.17, paragraph (a)):
Add at the end “, or, if the international preliminary examination
is carried out, pursuant to Rule 55.2, on the basis of a translation of the
international application, in the language of that translation”.
4.14 Regulations (Rule 74.1):
Omit the Rule, substitute:
“74.1 Contents of
Translation and Time Limit for Transmittal Thereof
(a) Where the
furnishing of a translation of the international application is required by the
elected Office under Article 39 (1), the applicant shall, within the time limit
applicable under Article 39 (1), transmit a translation of any replacement
sheet referred to in Rule 70.16 which is annexed to the international
preliminary examination report, unless such sheet is in the language of the
required translation
of the international application. The same time limit shall apply
where the furnishing of a translation of the international application to the
elected Office must, because of a declaration made under Article
64 (2) (a) (i), be effected within the time limit
applicable under Article 22.
(b) Where the
furnishing under Article 39 (1) of a translation of the international
application is not required by the elected Office, that Office may require the
applicant to furnish, within the time limit applicable under that Article, a
translation into the language in which the international application was
published of any replacement sheet referred to in Rule 70.16 which is annexed
to the international preliminary examination and is not in that language.”.
4.15 Regulations (Rule 92.2, paragraph (a)):
Omit the second sentence, substitute “However, where a translation
of the international application has been transmitted under Rule 12.1 (c)
or furnished under Rule 55.2 (a) or (c), the language of
such translation shall be used.”.
____________________________________________________________
NOTES
1. Notified in the Commonwealth
of Australia Gazette on 26 August
1993.
2. Statutory Rules 1991
No. 71 as amended by 1991 No. 456; 1992 No. 148; 1993 No. 113.