Patents Regulations (Amendment) (Cth)

Statutory Rules 1988 No. 1001

Patents Regulations2(Amendment)

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

Dated 25 May 1988.

N. M. STEPHEN

Governor-General

By His Excellency’s Command,

BARRY O. JONES

Minister of State for Science, Customs

and Small Business

_________

Commencement

 1. (1)Subject to subregulation (2), these Regulations commence on 1 July 1988.

 (2) Regulation 6 commences on 1 August 1988.

 2. After regulation 29 of the Patents Regulations the following regulation is inserted:

Renewal fee included in continuation fee

“30.

Where, in relation to an application or further application for a patent:

• (a)

  a continuation fee for the purposes of section 47D of the Act has been paid in respect of a period of a year in accordance with regulation 16A; and

• (b)

  the patent is sealed on that application or further application after the payment of the fee but before the end of that period;

the continuation fee so paid shall be taken to include any renewal fee that, but for this regulation, would become due and payable during that period in relation to a year of patent.”.

Refund of certain fees

 3. Regulation 81B of the Patents Regulations is amended by omitting “$60” and substituting “$65”.

Request for information under section 30 of the Act

 4. Regulation 87 of the Patents Regulations is amended:

• (a)

  by omitting from subregulation (2) “$430” and substituting “$490”; and

• (b)

  by omitting from paragraph (3) (a) “$35” and substituting “$40”.

Second Schedule—Part I

 5. The Second Schedule to the Patents Regulations is amended by omitting Part I and substituting the following Part:

“PART I—GENERAL FEES

 

Column 1 Item No.	Column 2 Matter		Column 3 Fee
$
1	On lodging an application for a patent accompanied by a provisional specification …………………………………………………………….......		65
2	On lodging an application for a petty patent …………………………….....		65
3	On lodging a complete specification (with or after the lodgment of an application)………………………………….…………………………….		135
together with: (a) if the number of sheets comprising the specification, including any drawings contained in the specification, exceeds 10—for each sheet in excess of 10 ………………………………………………………. (b) if the number of claims exceeds 10—for each claim in excess of 10 …………………………………………………………………		5 5
4	On lodging a request for examination of an application: (a) where the request was not preceded by a direction of the Commissioner under section 47A or 47B of the Act:………………..
(i) in the case of a request for an examination to be made in accordance with section 48 of the Act …………………….…… (ii) in the case of a request for a modified examination……………..		285 240
(b) where the request was preceded by a direction of the Commissioner under section 47A or 47B of the Act (whether or not the applicant had, before the request was made, requested the deferment of the examination under section 52B of the Act):
(i) in the case of a request for an examination to be  made in accordance with section 48 of the Act………………………..…		240
(ii) in the case of a request for a modified examination  ……………		200
5	On lodging a notice under section 47B of the Act requiring the Commissioner to direct an applicant to request……………………………..		75
6	Continuation fee for the purposes of section 47D of the Act and subregulation 16A (1):
(a) second year …………………………………………………………..		70
(b) third year ………………………………………………………….…		90
(c) fourth year …………………………………………………………...		110
(d) fifth year …………………………………………………………......		130
(e) sixth year …………………………………………………………….		155
(f) seventh year …………………………………………………………		180
(g) eighth year ...........................................................................................		210
(h) ninth year ……………………………………………………………		240
(i) tenth year …………………………………………………………….		275
(j) eleventh year ………………………………………………………...		310
(k) twelfth year ………………………………………………………….		345
(l) thirteenth year ……………………………………………………....		380
(m) fourteenth year ………………………………………………………		420
(n) fifteenth year ………………………………………………………...		465
7	On lodging an application to restore an application that has lapsed or a patent that has ceased……………………………………………………….		75
8	For restoring a lapsed application or ceased patent ………………………...		160
9	On lodging a notice of opposition under section 47E, 59, 82, 95, 97 or 160 of the Act or regulation 16F, 43, 51, 77 or 81A ……………………………		75
10	On lodging an application to lodge further evidence in opposition proceedings …………………………………………………………………		65
11	On appearing at a hearing or lodging a request for the exercise of discretionary power under regulation 19D …………………………………		70
12	For sealing a standard patent ………………………………………………		200
13	On lodging an application for the grant of an extension of the term of a petty patent		40
14	For granting an extension of the term of a petty patent ……………………		245
15	Renewal fee for the purposes of subsection 68 (2) of the Act and subregulation 29 (1):
(a) second year …………………………………………………………..		70
(b) third year …………………………………………………………….		90
(c) fourth year …………………………………………………………...		110
(d) fifth year ……………………………………………………………..		130
(e) sixth year …………………………………………………………….		155
(f) seventh year ………………………………………………………….		180
(g) eighth year ...........................................................................................		210
(h) ninth year ……………………………………………………………		240
(i) tenth year …………………………………………………………….		275
(j) eleventh year ………………………………………………………...		310
(k) twelfth year ………………………………………………………….		345
(l) thirteenth year ………………………………………………………		380
(m) fourteenth year ………………………………………………………		420
(n) fifteenth year ………………………………………………………...		465
16	On lodging an application under section 71 of the Act for a duplicate of a patent to be sealed.…………………………………………………………..		40
17	On lodging a request to amend a specification under section 77 of the Act………………………………………………………………………		85
18	On lodging:
(a) a request under regulation 76, not being a request for change of address or a request referred to in paragraph (b) ……………………		40
(b) simultaneously, 2 or more requests under paragraph 76 (2) (b) to change a name entered in the Register to the same name in respect of all the entries in the Register to which the requests relate:
(i) for one of those requests ……………………………………….		40
(ii) for each other such request …………………………………….		20
19	On making an application:
(a) under section 21, 22 or 23 of the Act, where more than one application is made at the same time and where, in respect of each such application, the devolution of title or interest is the same in respect of all of the patents to which the applications relate:
(i) for one of those applications ……………………………………		40
(ii) for each other such application ………………………………….		20
(b) in any other case under section 21, 22 or 23 of the Act ……………..		40
(c) under section 74, subsection 65 (2), section 95 or subsection 154 (1) or (2) of the Act ……………………………………………………...		40
20	On making a request under subsection 34 (4) or 52 (3), section 52B or subsection 54A (1) of the Act ………………………………………………		40
21	On filing an agreement under section 64 of the Act ………………………..		40
22	Subject to subregulation 5A (3), on the lodgment of any document or documents referred to in subsections 143 (3) and (4) of the Act, 3 months after lodgment of the application and:
(a) before or at the time of lodgment of a request for examination ……..		40
(b) after lodgment of a request for examination ………………………...		135
23	On lodging an application under subsection 160 (2) of the Act for an extension of time on the ground specified in paragraph 160 (2) (a) of the Act:
(a) if lodged before the expiration of the time to be extended—for each month or part of a month for which the application is made ………..		40
(b) if lodged after the expiration of the time to be extended—the amount payable under paragraph (a) plus an amount of……………..		65
24	For an extension of time under subsection 160 (2) of the Act on the ground specified in paragraph 160 (2) (a) of the Act, if the extension is granted after the expiration of the period for which the application is made—for each month or part of a month for which the time is extended ……………		$40 less any  amount paid under paragraph  (a) of Item 23
25	On lodging an application under subsection 160 (2) of the Act for an extension of time on the ground specified in paragraph 160 (2) (b) of the Act …………………………………………………………………...		40
26	On lodging an application to which paragraph 82 (b) applies other than an application under subsection 54 (3) or 66 (4) of the Act …………………...		$50 together with $25 for each month or part of a month for which the application is made
27	On lodging any other application for an extension of time other than an application under subsection 54 (3) or 66 (4) of the Act—for each month or part of a month for which the application is made ………………………		40
28	For the supply of photographic copies: (a) of patent specifications ……………………………………………...		$10 per specification $5 per document
(b) of any other document ………………………………………………		$5 per document
29	For a certificate by the Commissioner ……………………………………...		65
30		On lodging a request for the furnishing of information under section 30 of the Act, where the provision of that information does not entail an international-type search or a special search referred to in subregulation 87 (2) or (3) respectively in respect of each application, patent or other document …………………………………………………...	40
31		On lodging a request under section 56 of the Act for the result of a search made under subsection 48 (3) of the Act …………………………………..	20
32		For lodgment of substitute pages in compliance with a direction under regulation 7B: (a) within 3 months after the date on which the direction was given …..	30
(b) after the time specified in paragraph (a) but before the application becomes open to public inspection ………………………………….	75
33		For taxing costs …………………………………………………………….	35
” .

Second Schedule—Part II

 6. The Second Schedule to the Patents Regulations is amended by omitting Part II and substituting the following Part:

“PART II-GENERAL FEES FOR INTERNATIONAL APPLICATIONS

 

Column 1 Item No.	Column 2 Matter	Column 3 Fee
$
1	Transmittal fee under Rule 14 of the Treaty …………………………..	40
2	Search fee under Rule 16 of the Treaty ………………………………..	490
3	Additional fee for search under Article 17 (3) (a) of the Treaty ………	435
4	Preliminary Examination fee under Rule 58 of the Treaty ……………	245
5	Additional fee for international preliminary examination under Article 34 (3) (a) of the Treaty	245
6	For copies of documents in accordance with Rules 44.3 (b) and 71.2 (b) of the Treaty—per document	5
” .

Formal amendments

 7. The Patents Regulations are amended as set out in the Schedule to these Regulations.

Application and transitional

 8. (1)The amendments effected by regulation 5 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 that regulation, if that continuation fee or renewal fee became due and payable, and has been paid, before that commencement.

 (2) Where an application for a standard patent has been accepted under section 52 or 52D of the Act before the commencement of regulation 5, the fee payable for the sealing of the patent is the fee that was applicable to the sealing of such a patent immediately before that commencement.

 (3) In this regulation:

“continuation fee” means a continuation fee for the purposes of section 47D of the Act;

“renewal fee” means a renewal fee for the purposes of subsection 68 (2) of the Act.

SCHEDULERegulation 7

FORMAL AMENDMENTS

1.

The heading to the Second Schedule to the Patents Regulations is amended by omitting “SECOND SCHEDULE” and substituting “SCHEDULE 2”.

2.

The following provisions of the Patents Regulations are amended by omitting “the Second Schedule” and substituting “Schedule 2”:

 Subregulations 5 (1), (5), (5A) and (7), paragraphs 5A (1) (a) and (b), subregulations 5A (2) and (3), paragraphs 5B (1) (a) and (b), subregulations 16A (1), 19G (1), 19H (1), (2), (3) and (5) and subregulation 29 (1).

NOTES

1. Notified in the Commonwealth of Australia Gazette on 1 June 1988.

2. Statutory Rules 1962 No. 2 as amended by 1963 No. 52; 1965 No. 102; 1969 No. 151 (as amended by 1969 No. 212); 1974 Nos. 38 and 262; 1975 No. 201; 1976 No. 236; 1977 No. 177; 1979 No. 93; 1980 Nos. 68 and 320; 1981 Nos. 1, 202, 203, 243 and 372; 1982 Nos. 232 and 350; 1983 Nos. 48, 206 and 325; 1984 Nos. 254 and 435; 1985 No. 316; 1986 No. 259; 1987 Nos. 78, 138 and 331.