Patents Regulations (Amendment) (Cth)

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STATUTORY RULES

1969 No.

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REGULATIONS UNDER THE PATENTS ACT 1952-1969.*

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 1952-1969.

Dated this twenty-fifth day of September, 1969.

Paul Hasluck

Governor-General.

By His Excellency’ Command,

Sgd. NIGEL BOWEN

Attorney-General.

________

Amendments of the Patents Regulations

Commencement.

1. These Regulations shall come into operation on the date fixed under subsection (2.) of section 2 of the Patents Act 1969.

Parts.

2.Regulation 2 of the Patents Regulations is amended—

(a) by omitting the words—

“Part IV.—Applications for Patents (Regulations 9-19).”

and inserting in their stead the words—

“Part IV.—Applications for Patents (Regulations 9-19d).”; and

(b) by omitting the words—

“Part VI.—Postponement of Acceptance (Regulation 22).”

and inserting in their stead the words—

“Part VI.—Acceptance (Regulations 22-22aa).”.

Fees.

3. Regulation 5 of the Patents Regulations is amended—

(a)by inserting in sub-regulation (1.) after the word “specified” (wherever occurring) the words “or referred to”;

(b) by omitting sub-regulation (4.);

(c) by omitting from sub-regulation (5.) the word and figures “Item 31” and inserting in their stead the words and figures “Paragraph (a) of item 34”;
(d)by omitting from sub-regulation (5a.) the words “but not beyond the time prescribed by sub-section (1.) of section 54 of the Act,”;
(e) by omitting from sub-regulation (5a.) the figures and word “6 or 7” and inserting in their stead the figures “15”;
(f) by omitting from sub-regulation (6.) the figures and word “6 or 7” and inserting in their stead the figures “15”;

* Notified in the Commonwealth Gazette on 1969.

Statutory Rules 1962, No. 2, as amended by Statutory Rules 1963, No. 52; and 1965, No. 102.

16966/69-Price 25c 10/12.9.1969

(g)by omitting from sub-regulation (7.) the figures and word “36 or 37” and inserting in their stead the figures and word “37 or 38”;

and

(h)by omitting from sub-regulation (8.) the words “Item 19 of the Second Schedule to these Regulations does not apply to” and inserting in their stead the words “A fee is not payable for lodging”.

Documents other than specifications.

4. Regulations 6 and 7 of the Patents Regulations are repealed and the following regulations inserted in their stead:—

“6.—(1.) In this regulation, ‘document’ does not include a provisional specification or a complete specification,

“(2.) Documents to be lodged at the Patent Office shall comply with the requirements specified in Part I. of the Third Schedule to these Regulations.

“(3.) Where a document received at the Patent Office does not comply with the requirements so specified or is not in accordance with whichever of the forms specified in the First Schedule to these Regulations is applicable, the Commissioner may—

(a)treat the document as not having been lodged at the Patent Office and return it to the person from whom it was received, with a statement indicating the matters in respect of which the document does not comply with those requirements or is not in accordance with that form; or
(b)treat the document as having been so lodged but direct the person from whom it was received to do such things as are necessary to ensure that the document will comply with those requirements or be in accordance with that form.

“(4.) Where under paragraph (a)of the last preceding sub-regulation the Commissioner returns an application, he shall return with the application any specification and other document lodged in respect of the application.

Specifications generally.

“7. A specification, including any drawings contained in a specification, shall comply with the requirements specified in Part II. and Part III. of the Third Schedule to these Regulations in so far as they are applicable.

Provisional specifications.

“7a.—(1.) Where a provisional specification received at the Patent Office does not comply with the requirements referred to in the last preceding regulation or the requirements of sub-regulation (1.) of regulation 13 of these Regulations, the Commissioner may treat the specification as not having been lodged at the Patent Office and return it to the person from whom it was received, with a statement indicating the matters in respect of which the specification does not comply with those requirements.

“(2.) Where under the last preceding sub-regulation the Commissioner returns a provisional specification, he shall return with the specification the application to which the specification relates and any document lodged in respect of the application.

Complete specifications.

“7b.—(1.) Where a complete specification received at the Patent Office does not comply with the requirements referred to in regulation 7, or the requirements of sub-regulation (2.) of regulation 13, of these Regulations, the Commissioner may treat the complete specification as not having been lodged at the Patent Office or treat it as having been so lodged.

“(2.) If under the last preceding sub-regulation the Commissioner treats a complete specification as not having been lodged at the Patent Office, he shall return it, together with any document received in relation to it, to the person

from whom it was received, with a statement indicating the matters in respect of which the specification does not comply with the requirements referred to in that sub-regulation.

“(3.) If under sub-regulation (1.) of this regulation the Commissioner treats a complete specification as having been lodged at the Patent Office, he may, within three months after the date on which it was lodged, direct the applicant to do such things as are necessary to ensure that the complete specification complies with the requirements referred to in that sub-regulation.

“(4.) If an applicant to whom a direction is given under the last preceding sub-regulation in relation to a complete specification fails to comply with the direction within six months after the date on which it was given, the application to which the complete specification relates shall lapse.

“(5.) Where an application has lapsed under the last preceding sub-regulation, the Commissioner shall advertise that fact in the Official Journal.

“(6.) The applicant may, within three months after the date of the advertisement under the last preceding sub-regulation, make an application (in this regulation referred to as ‘the application for restoration’) to the Commissioner for the restoration of the lapsed application.

“(7.) The application for restoration shall be in accordance with Form 8a and shall contain a statement of the circumstances that led to the failure to comply with the direction within the prescribed time.

“(8.) If the Commissioner is satisfied that—

(a)the failure to comply with the direction within the prescribed time was unintentional and resulted from an error or omission on the part of the applicant or of his agent or attorney or from circumstances beyond the control of the applicant;
(b) the applicant has complied with the direction; and
(c) there has been no undue delay in the making of the application for restoration,

the Commissioner shall restore the lapsed application, but, if he is not so satisfied, he shall refuse the application for restoration.

“(9.) An appeal lies to the Appeal Tribunal from a refusal by the Commissioner under the last preceding sub-regulation of an application for restoration.

“(10.) Where a lapsed application has been restored under this regulation, the Commissioner shall advertise that fact in the Official Journal.

Coples of documents.

“7c. Where a copy of a document is required to be lodged under these Regulations, the person who lodges the copy of the document shall, unless the Commissioner in a particular case otherwise directs, furnish the copy on paper of good quality and in black and distinct type.”.

5. After regulation 9 of the Patents Regulations the following regulation is inserted:—

Form of request under section 34 (4.).

“9a. A request for a direction under paragraph (a)of sub-section (4.) of section 34 of the Act shall be in accordance with Form 1a.”.

6. After regulation 10 of the Patents Regulations the following regulation is inserted:—

Convention countries prescribed for purposes of sections 52a and 52b.

“10a. For the purposes of sections 52a and 52b of the Act, the United Kingdom of Great Britain and Northern Ireland and the United States of America are prescribed Convention countries.”.

7. Regulation. 16 of the Patents Regulations is repealed and the following regulations are inserted in its stead:—

Form of request for examination.

“16.—(1.) A request under section 47 of the Act for an examination of an application and complete specification shall be in accordance with Form 5a.

“(2.) A request under sub-section (1.) of section 52a of the Act for a modified examination of an application and complete specification shall be in accordance with Form 5a.

Continuation fees.

“16a.—(1.) The fees specified or referred to in item 8 in the Second Schedule to these Regulations are prescribed for the purposes of section 47d of the Act and the times within which those fees are payable are the times specified in that item.

“(2.) Where a complete specification was lodged on a date (in this sub-regulation referred to as ‘the lodgment date’) before the date fixed under subsection (2.) of section 2 of the Patents Act 1969 (in this sub-regulation called ‘the fixed date’), the last preceding sub-regulation and item 8 in the Second Schedule to these Regulations have effect in relation to the application in respect of which that complete specification was lodged as if that complete specification had been lodged on the anniversary of the lodgment date first occurring after the fixed date.

Extension of time for paying continuation fee.

“16b. An application under sub-section (2.) of section 47d of the Act for an extension of time for paying a continuation fee shall be in accordance with Form 11.

Application for restoration of lapsed application.

“16c. An application under sub-section (2.) of section 47e of the Act for the restoration of a lapsed application shallbe in accordance with Form 8a.

Opposition to restoration of lapsed application.

“16d.—(1.) A notice under sub-section (5.) of section 47e of the Act of opposition to the restoration of a lapsed application shall be in accordance with Form 12.

“(2.) The time within which a notice referred to in the last preceding sub-regulation may be given is the period of three months from the date of the first advertisement under sub-section (4.) of section 47e of the Act of the application for restoration.

Advertisement of restoration in Official Journal.

“16e. Where the Commissioner restores a lapsed application under subsection (6.) or sub-section (7.) of section 47e of the Act, he shall advertise that fact in the Official Journal.

Protection or compensation where lapsed application restored.

“16f.—(1.) The succeeding provisions of this regulation are prescribed for the purposes of sub-section (8.) of section 47e of the Act.

“(2.) A person who availed himself, or took definite steps by contract or otherwise to avail himself, of the subject-matter of the lapsed application after the lapse of the application was advertised in the Official Journal and before the date of the first advertisement of the application for restoration may apply in accordance with Form 27 to the Commissioner for the grant of a licence to make, use, exercise and vend the subject-matter of the application that was restored to the extent that he so availed himself, or took definite steps by contract or otherwise to avail himself, of that subject-matter.

“(3.) The applicant for a licence shall serve a copy of the application on the person whose application was so restored and on such other persons as the Commissioner directs.

“(4.) A person on whom a copy of an application has been served under the last preceding sub-regulation may, within one month after the day on which the copy of the application was served on him or within such further time as the Commissioner, on an application made in accordance with Form 11 within that period of one month, allows, give notice of opposition to the application in accordance with Form 12.

“(5.) As soon as practicable after a notice of opposition is given under the last preceding sub-regulation, the person giving it shall serve a copy of the notice on the person who has made the application for the licence.

“(6.) The Commissioner shall hear the application for the licence, and, if satisfied that the application should be granted, may grant to the applicant a licence on such terms as the Commissioner thinks reasonable, but, if not so satisfied, the Commissioner shall dismiss the application.”.

Statement of proposed amendments.

8. Regulation 17 of the Patents Regulations is amended by omitting from sub-regulation (1.) the words “section 49 of the Act” and inserting in their stead the words “section 49, sub-section (3.) of section 52a or section 52d of the Act”.

Order of examination.

9. Regulation 19 of the Patents Regulations is amended by omitting sub-regulations (1.), (1a.) and (2.) and inserting in their stead the following sub-regulations:—

“(1.) In this regulation, ‘examination’ includes a modified examination.

“(1a.) Subject to this regulation and regulation 7b of these Regulations, all applications and complete specifications shall, so far as practicable, be examined in the order in which requests for their examination are lodged at the Patent Office.

“(1b.) The last preceding sub-regulation does not apply in relation to an application and complete specification that are the subject of a direction given on the ground referred to in paragraph (c) of sub-section (2.) of section 47a of the Act.

“(2.) Where an examination of an application and complete specification has been requested by the applicant, the Commissioner may cause the examination to be expedited—

(a)if he is satisfied that it is in the public interest, or that there are special circumstances that make it desirable, to do so; or
(b)if, after the publication of a notification that the complete specification is open to public inspection, the Commissioner is satisfied that a prima facie case of infringement exists in respect of the claim or claims contained in the specification.”.

10. After regulation 19 of the Patents Regulations the following regulations are inserted in Part IV.:—

Request for deferment of examination.

“19a. A request under section 52b of the Act for deferment of an examination of an application and complete specification shall be in accordance with Form 11a.

Operation of section 48 (3.) in relation to examinations under section 52c.

“19b.—(1.) For the purposes of the examination of an application and complete specification in accordance with section 52c of the Act, sub-section (3.) of section 48 of the Act has effect subject to this regulation.

“(2.) In complying with the provisions of paragraphs (a), (b) and (c) of that sub-section, the Examiner is not required to have regard to specifications

lodged in respect of such applications as were lodged more than three years before the lodgment of the application that is the subject of the examination.

Notice under section 57 (1.).

“19c.—(1.) Subject to the next succeeding sub-regulation, a notice under sub-section (1.) of section 57 of the Act shall be accompanied by—

(a)a declaration, made by the person lodging the notice or by any other person, stating that to his own knowledge the document containing the matter to which the notice relates (in this regulation referred to as ‘the published document’) was published in Australia and specifying the date on which it was published and at least one place in Australia where it was published;
(b)a copy of the published document; and
(c)if the published document is in a foreign language—an English translation of that document verified by declaration or otherwise to the satisfaction of the Commissioner.

“(2.) Paragraph (b) of the last preceding sub-regulation does not apply where the published document is available in the Patent Office or in the library of the Patent Office.

Request to Commissioner to exercise certain discretionary powers.

“19d.—(1.) Where, before, on or after the date fixed under sub-section (2.) of section 2 of the Patents Act 1969, the Examiner has given or gives an adverse report in relation to an application, a complete specification or a request to amend a complete specification, as the case may be, the applicant or patentee, if not desirous of being heard in connexion with the exercise of the Commissioner’s discretionary powers in relation to the application, complete specification or request, may request the Commissioner so to exercise those powers.

“(2.) A request under this regulation—

(a) shall be in accordance with Form 11b; and
(b)may be accompanied by submissions in writing in connexion with the requested exercise of the Commissioner’s discretionary powers.

“(3.) For the purposes of this regulation, the Commissioner’s discretionary powers shall be taken to be such of the following powers as are relevant:—

(a) in a case where the applicant has not lodged a statement of proposed amendments of the application or complete specification—
(i) the power to decide whether there is a lawful ground of objection to the application or specification;
(ii) the power to direct the applicant to lodge such a statement;

and

(iii) the power to decide whether to accept or refuse to accept the application and complete specification;
(b)in a case where the applicant has lodged a statement of proposed amendments of the application or complete specification—
(i) the power to decide whether a proposed amendment is an allowable amendment or whether proposed amendments are allowable amendments;
(ii) the power to decide whether, if the amendment or amendments were made, all lawful grounds of objection to the application or specification, as the case may be, would be removed;
(iii) the power to decide whether to allow or not to allow the amendment or amendments;
(iv) the power to direct the applicant to lodge such a statement;
(v) the power to direct the applicant to amend the statement; and

(vi) the power to decide whether to accept or refuse to accept the application and complete specification;
(c)is a case where one complete specification has been lodged under sub-section (1.) of section 50 of the Act in respect of two or more applications—the power to decide whether the inventions described in the provisional specifications lodged in respect of the applications, in so far as those inventions are included in the claims of the complete specification, are so related as to constitute one invention; and
(d)in a case where the applicant has lodged a request under Part VIII, of the Act for leave to amend the complete specification—
(i) the power to decide whether to allow or refuse the request; and
(ii) the power to decide whether, and subject to what conditions, if any, the amendment ought to be allowed.”.

Heading.

11. The heading to Part VI. of the Patents Regulations is amended by omitting the words “Postponement of”.

12. After regulation 22 of the Patents Regulations the following regulation is inserted in Part VI.:—

Extension of the period of acceptance.

“22aa. An application for an extension of the period within which an application and complete specification may be accepted shall be in accordance with Form 11”.

13. Regulations 29 and 30 of the Patents Regulations are repealed and the following regulations inserted in their stead:—

Renewal feet.

“29.—(1.) In this regulation—

‘the effective date’ means the first anniversary of the fixed date;

‘the fixed date’ means the date fixed under sub-section (2.) of section 2 of the Patents Act 1969.

“(2.) Subject to sub-regulation (5.) of this regulation, the renewal fee payable on the expiration of a year of a patent, being a year that expired or expires before the effective date, is the fee that was, on the day next preceding the fixed date, specified in respect of that year in item 18 in the Second Schedule to these Regulations as in force on that day.

“(3.) Subject to sub-regulation (5.) of this regulation, the renewal fee payable on the expiration of a year of a patent, being a year that expires on or after the effective date, is the fee specified in respect of that year in item 23 in the Second Schedule to these Regulations.

“(4.) A fee payable in respect of a year of a patent referred to in the last preceding sub-regulation is reduced by the amount of any renewal fee paid in respect of that year before the fixed date.

“(5.) Where the complete specification in respect of an application for a patent was lodged before the fixed date and the patent is not sealed until a date that is—

(a)on or after the fixed date; and
(b)after the expiration of the fourth year of the patent or a succeeding year of the patent.

the renewal fee payable in respect of the year of the patent that first expires after the sealing of the patent is increased by an amount equal to the sum of the renewal fees that would have been payable in respect of the year or years of the patent

preceding that year if the patent had been sealed before the expiration of the fourth year of the patent, less—

(c) where the complete specification was lodged within the year immediately preceding the fixed date—the sum of the continuation fees, if any, paid under regulation 16a of these Regulations in respect of the application less the first continuation fee so paid; or
(d)in any other case—the sum of the continuation fees, if any, so paid.

“(6.) A renewal fee shall be paid before the expiration of the year of the patent in respect of which that renewal fee is specified.

“(7.) An application under sub-section (3.) of section 68 of the Act shall be in accordance with Form 11.

Appropriation of certain renewal fees paid in advance.

“30.—(1.) In this regulation—

‘current renewal fee’, in relation to a patent, means a renewal fee payable in respect of a year of the patent, being a year that expires on or after the first anniversary of the date fixed under sub-section (2.) of section 2 of the Patents Act 1969;
‘former renewal fee’, in relation to a patent, means a renewal fee that was, under these Regulations as in force before the date so fixed, payable in respect of a year of the patent, being a year that expires on or after the first anniversary of the date 50 fixed.

“(2.) Where a patentee—

(a)has, before the date fixed under sub-section (2.) of section 2 of the Patents Act 1969, paid an amount in respect of former renewal fees for the renewal of the patent; and
(b)does not, before the expiration of a year of the patent, pay an amount equal to the difference between—

(i) the amount of the former renewal fee paid in respect of that year of the patent; and

(ii) the amount of the current renewal fee payable in respect of that year of the patent,

the Commissioner shall, unless the patentee, on or before the expiration of that year, requests the Commissioner in writing to repay to the patentee the amount paid by the patentee in respect of former renewal fees for the renewal of the patent, appropriate the whole or a part of the last-mentioned amount in or towards payment of the amount of that current renewal fee, and the amount so appropriated shall be deemed to have been paid in respect of that current renewal fee.

“(3.) If the patentee so requests the Commissioner to repay to the patentee the amount paid by the patentee in respect of former renewal fees for the renewal of the patent, the Commissioner shall repay to the patentee so much of that amount as remains after deducting any part of the amount that has been appropriated under the last preceding sub-regulation in or towards payment of the amount of a current renewal fee for the renewal of the patent.”.

Application of Division.

14. Regulation 54 of the Patents Regulations is amended by omitting the figures and word “43, 48, 51 or 77” and inserting in their stead the figures and word “16d, 16f, 43, 48, 51, 77 or 81a”.

Opponent’s evidence is support.

15.—(1.) Regulation 55 of the Patents Regulations is amended—

(a) by omitting the word “shall”;

(b) by inserting in paragraph (a) before the word “serve” the word “may”;

(c)by omitting from paragraph (a) the words “three months” and inserting in their stead the words “one month”; and
(d)by inserting in paragraph (b)before the words “as soon as” the word “shall.”.

(2.) The amendment made fey paragraph (c) of the last preceding sub-regulation does not apply where the notice of opposition was lodged at the Patent Office before the date fixed under sub-section (2.) of section 2 of the Patents Act 1969.

16.—(1.) Regulation 56 of the Patents Regulations is repealed and the following regulation inserted in its stead:—

Applicant’s evidence in answer.

“56.—.(1.) Subject to sub-regulation (3.) of this regulation, if copies of declarations of the opponent are served on the applicant under the last preceding regulation, the applicant may, within one month after they were so served, serve on the opponent a copy of each of the declarations on which he relies in answer to the opposition.

“(2.) Subject to the next succeeding sub-regulation, if copies of declarations of the opponent are not served on the applicant within the time specified in paragraph (a) of the last preceding regulation, the applicant may—

(a)within one month after the expiration of that time; or

(b)within one month after a notice was served on the applicant under regulation 57a of these Regulations,

whichever is the earlier, serve on the opponent a copy of each of the declarations on which he relies in answer to the opposition.

“(3.) The Commissioner may, on application in accordance with Form 11, extend the time within which the applicant may serve on the opponent copies of declarations under either of the last two preceding sub-regulations.

“(4.) Where an applicant serves copies of declarations under this regulation, he shall, as soon as practicable after they are so served, lodge the declarations at the Patent Office with a written statement indicating—

(a)the place at which, and the date on which, the copies of the declarations of the opponent were served on him; and
(b) the place at which, and the date on which, the copies of his declarations were served on the opponent.”.

(2.) The amendment of the Patents Regulations made by the last preceding sub-regulation does not apply where copies of the declarations of the opponent were served before the date fixed under sub-section (2.) of section 2 of the Patents Act 1969.

Opponent’s evidence in reply.

17.—(1.) Regulation 57 of the Patents Regulations is amended—

(a)by omitting the words “An opponent” and inserting in their stead the words “Where copies of declarations are served by an applicant under the last preceding regulation, the opponent”; and
(b) by omitting from paragraph (a) the words “three months” and inserting in their stead the words “one month”.

(2.) The amendment made by paragraph (b)of the last preceding sub-regulation does not apply where copies of the declarations of the applicant were served before the date fixed under sub-section (2.) of section 2 of the Patents Act 1969.

18. After regulation 57 of the Patents Regulations the following regulation is inserted:—

Notice if supporting or answering declarations not to be lodged.

“57a. Where an opponent or an applicant does not intend—

(a)to serve copies of, or to lodge, declarations under regulation 55 or regulation 56, as the case may be, of these Regulations within the time specified in that regulation; or
(b) to make an application for an extension of time under that regulation, he may, within the time so specified, serve on the applicant or the opponent, as the case may be, a written notice to that effect and shall, if a notice is so served, as soon as practicable after serving it, lodge a copy of the notice at the Patent Office with a written statement indicating the place at which, and the date on which, the notice was so served.”.

19. Regulation 58 of the Patents Regulations is repealed and the following regulation inserted in its stead:—

Notice if declarations in reply not to be lodged.

“58. Where an opponent does not intend—

(a)to serve copies of, or to lodge, declarations in reply to the applicant’s declarations within the time specified in regulation 57 of these Regulations; or
(b) tomake an application for an extension of time under that regulation, he may, within the time so specified, serve on the applicant a written notice to that effect and shall, if a notice is so served, as soon as practicable after serving it, lodge a copy of the notice at the Patent Office with a written statement indicating the place at which, and the date on which, the notice was so served.”.

Further evidence to be by leave or special leave.

20. Regulation 59 of the Patents Regulations is amended by adding at the end thereof the following sub-regulation:—

“(8.) Where a person has served a notice under regulation 57a or regulation 58 of these Regulations, leave or special leave shall not be granted under this regulation to adduce evidence that, but for the service of that notice, could have been contained in a declaration lodged by that person under regulation 55, regulation 56 or regulation 57 of these Regulations.”,

Fixing of time and place for hearing.

21. Regulation 61 of the Patents Regulations is amended—

(a) by omitting from paragraph (b) of sub-regulation (1.) the word “or”;
(b)by inserting in sub-regulation (1.), after paragraph (b), the following paragraph:—
“(ba)an applicant has served the written notice referred to in regulation 57a of these Regulations; or”;
(c) by omitting from paragraph (b) of sub-regulation (2.) the word “or”;
(d)by inserting in sub-regulation (2.), after paragraph (b), the following paragraph:—
“(ba)an opponent has served the written notice referred to in regulation 57a of these Regulations; or”;
(e) by omitting from sub-paragraph (i) of paragraph (c)of sub-regulation (2.) the word “or”;
(f) by inserting in sub-regulation (2.), after sub-paragraph (i) of paragraph (c), the following sub-paragraph:—
“(1a) the copy of the written notice served by the applicant under regulation 57a of these Regulations; or”; and

(g) by adding at the end thereof the following sub-regulations:—
“(4.) Notwithstanding the last preceding sub-regulation, if neither the opponent nor the applicant has, within three months after becoming entitled to do so, lodged an application under this regulation, the Commissioner shall of his own motion fix a time and place for the hearing of the opposition and shall notify the applicant and opponent accordingly.
“(5.) For the purposes of the last preceding sub-regulation—
(a)a written statement lodged under regulation 55, 56, 57, 57a or 58 of these Regulations is evidence of the facts stated; and
(b)failure to lodge declarations or a copy of a notice in accordance with one of those regulations is evidence of failure to serve copies of the declarations or the notice on the opponent or the applicant, as the case may be, under that regulation.”.

22. After regulation 61 of the Patents Regulations the following regulation is inserted:—

Withdrawal of opposition.

“61a.—(1.) An opponent may withdraw has opposition at any time before the hearing of the case by lodging with the Patent Office a notice in writing to that effect.

“(2.) This regulation does not prevent an opponent from withdrawing his opposition at the hearing of the case.”.

Copies of documents.

23. Regulation 74 of the Patents Regulations is amended by omitting from sub-regulation (2.) the words “verified in such manner as the Commissioner directs” and inserting in their stead the words “, verified by declaration or otherwise to the satisfaction of the Commissioner,”.

24. After regulation 81 of the Patents Regulations the following regulations are inserted:—

Application for licence under section 159c.

“81a.—(1.) An application for a licence under section 159c of the Act shall be in accordance with Form 27.

“(2.) As soon as practicable after the application for the licence has been made, the applicant shall serve a copy of the application for the licence on the person applying for the patent (in this regulation referred to as ‘the inventor’) and on such other persons as the Commissioner directs,

“(3.) The inventor may, within three months after the date on which the copy of the application was so served on him or within such further time as the Commissioner, on an application made in accordance with Form 11 within that period of three months, allows, give notice of opposition to the application in accordance with Form 12.

“(4.) The inventor shall serve on the applicant a copy of the notice of opposition.

“(5.) The Commissioner shall hear the applicant and the inventor, if they are desirous of being heard, and, if the Commissioner is satisfied that the application should be granted, he may grant to the applicant a licence on such terms as he thinks reasonable, but, if the Commissioner is not so satisfied, he shall dismiss the application.

Refund of certain fees.

“81b. Where a complete specification has, whether before or after the commencement of this regulation, been lodged in respect of an application, and that application is withdrawn before becoming open to public inspection, so much of the fee paid on the lodgment of the application accompanied by the complete specification or on the lodgment of the complete specification after the

lodgment of the application, as the case may be, as exceeds Five dollars shall, on written application made to the Commissioner, be refunded.”.

Directions not otherwise prescribed.

25. Regulation 83 of the Patents Regulations is amended by omitting the words “may require the person” and inserting in their stead the words “may give notice to the person requiring him”.

26. After regulation 83 of the Patents Regulations the following regulation is inserted:—

Criteria for granting attentions of time.

“83a. Where—

(a) the Commissioner is authorized by these Regulations to grant an extension of time for the doing of any act or the taking of any step in relation to, or in relation to an application for, a patent; and
(b) provision is not made by these Regulations (apart from this regulation) as to the matters to be taken into account by the Commissioner in deciding whether or not togrant the extension of time.

the Commissioner shall not grant the extension of time unless he is satisfied that the extension is justified having regard to all the circumstances of the case.”.

First Schedule.

27.—(1.) The First Schedule to the Patents Regulations is amended by inserting after Form 1 the following form:—

Form 1a

Regulation 9a.

Commonwealth of Australia.

Patents Act 1952-19

REQUEST FOR DIRECTION UNDER SECTION 34(4.).

I,

,of ,hereby

request the Commissioner to direct that Application No. in the

name of

is to proceed

my name

in my name and in the name of

I am entitled to make this request on the following grounds: —

I furnish with this application the following documents:—

My address for service is

Dated this

day of , 19 .

To:

(Signature.)

The Commissioner of Patents.

(2.) The First Schedule to the Patents Regulations is amended by inserting after Form 5 the following form:—

Form 5 a.

Regulation 16.

Commonwealth of Australia,

Patents Act 1952-19

REQUEST FOR EXAMINATION

I,

,of

a modified examination

hereby request the making of an examination

of Application No.

and of the complete specification lodged in respect

of that application.

(The following paragraph is to be completed only it a MODIFIED EXAMINATION is requested.)

I furnish herewith a copy of the specification of Patent No. granted in

on

19

(prescribed Convention country)

My address for service is

Dated this

day of , 19

(Signature)

To:

The Commissioner of Patents.

(3.) The First Schedule to the Patents Regulations is amended by inserting after Form 8 the following form:—

Form 8a.

Regulations 7b (7.) and 16c.

Commonwealth of Australia.

Patents Act 1952-19.

APPLICATION FOR RESTORATION OF LAPSED APPLICATION.

I,

of ,

hereby apply for the restoration of Application No.

, which has lapsed.

The circumstances that led to the failure

make a request for examination

to pay the continuation fee

within the

comply with a direction of the Commissioner

prescribed time are as follows:—

My address for service it

Dated this

day of , 19 .

(Signature.)

To:

The Commissioner of Patents.

(4.) The First Schedule to the Patents Regulations is amended by omitting Forms 11 and 12 and inserting in their stead the following forms:—

Form 11.

Regulations 16b, 16f, 18, 21,

22aa, 26, 27, 29, 36, 38, 39,

41, 43, 47, 48, 50, 51, 55, 56,

57, 66, 67, 68, 77 and 81a.

Commonwealth of Australia.

Patents Act 1952-19 .

APPLICATION FOR EXTENSION OF TIME OR OF PERIOD OF ACCEPTANCE.

I,

, of , hereby apply

under

section of the Patents Act 1952-19

rregulation

of the Patents Regulations

an extension of

time

the period of acceptance of

months from to

No.

in respect of

ApApplication

Patent

The circumstances in which, and the grounds upon which, this application is made are as follows:—

My address for service is

Dated this

day of , 19 .

(Signature.)

To:

The Commissioner of Patents.

Form 11a.

Regulation 19a.

Commonwealth of Australia.

Patents Act 1952-19 .

REQUEST FOR DEFERMENT OF EXAMINATION OF APPLICATION AND COMPLETE SPECIFICATION.

Patent Application No.

Date Application Lodged

Date Notice to Request Examination

issued by Commissioner

I,

, of , hereby request, under section 52b

of the Patents Act 1952-19 , the deferment of the examination of Application No. and the complete specification relating to that application.

Form 11a—continued

Particulars of the related application that was made in a prescribed Convention country are as follows:—

Name of Country

Application No.

Date Application lodged

I certify that a patent has not been granted in in respect

(prescribed Convention country)

of the last-mentioned application.

(The following paragraph to be completed when applicable.)

The above-mentioned application made in a prescribed Convention country claims a priority in that country based on an application made in another country. Particulars of the application made in that other country are as follows:—

Name of Country

Application No.

Priority date

My address for service is

Dated this day of , 19

(Signature)

To:

The Commissioner of Patents.

Form 11b

Regulation 19d.

Commonwealth of Australia.

Patents Act 1952-19 .

REQUEST FOR EXERCISE OF COMMISSIONER’S DISCRETIONARY POWERS.

I, of,

hereby request that the Commissioner’s discretionary powers referred to in regulation 19d of the Patents Regulations be exercised in relation to Application No and

Patent No.

the complete specification relating to that application

request for amendment patent

I am not desirous of being heard by the Commissioner in connexion with the exercise of those powers.

My address for service is

Dated this day of , 19

(Signature.)

To:

The Commissioner of Patents.

Form 12.

Regulations 16d, 16f, 20, 36,

39, 41, 43, 48, 51, 77 and

81a.

Commonwealth of Australia.

Patents Act 1952-19 .

NOTICE OF OPPOSITION.

I, of , hereby give notice of opposition under the provisions of

section of the Patents Act 1952-19

regulation of the Patents Regulations to the in respect of

Patent/Application No.

The grounds of my opposition are as follows:—

My interest in this matter is based on the following facts:—

A copy of this notice was served on the

patentee/applicant on

My address for service is

Dated this day of, 19

(Signature.)

To:

The Commissioner of Patents.

(5,) The First Schedule to the Patents Regulations is amended by omitting Form 24 and inserting in its stead the following form:

Form 24.

Regulation 40.

Commonwealth of Australia.

Patents Act 195249

APPLICATION UNDER SECTION 97 FOR THE RESTORATION OF A PATENT.

I, of

the patentee

being the legal representative of the deceased patentee

the person who would, if the patent had not ceased, have been, entitled to the patent

hereby make application for the restoration of Patent No.

The circumstances that led to the failure to pay the prescribed renewal fee of $ on or before are as follows:—

My address for service is

Dated this day of, 19

(Signature.)

To:

The Commissioner of Patents.

(6.) The First Schedule to the Patents Regulations is amended by omitting Form 27 and inserting in its stead the following form:—

Form 27.

Regulations 16f, 50 (2.) and 81a.

COMMONWEALTH OF AUSTRALIA.

Patents Act 1952-19

APPLICATION FOR LICENCE.

I, of , hereby apply

for the grant under regulation of the Patents Regulations section 159c of the Patents Act 1952-19

of a licence to make, use, exercise and vend the invention the subject of Application No.

The grounds upon which this application is made are as follows:—

My address for service is

Dated this day of, 19

(Signature.)

To:

The Commissioner of Patents.

Second and Third Schedules.

28. The Second and Third Schedules to the Patents Regulations are repealed and the following Schedules inserted in their stead:—

“SECOND SCHEDULE

Regulations 5, 16a and 29.

FEES

Item No.	Matter	Fee
$
1	On lodging application for a patent accompanied by a provisional specification.......	4.00
2	On lodging application for a patent accompanied by a complete specification...........	20.00
and, if the number of sheets containing the description of the invention exceeds ten, for each sheet of description in excess of ten.....................................................	1.00
and, if the number of claims exceeds ten, for each claim in excess of ten	2.00
3	On lodging complete specification after the lodgment of an application and provisional specification...........................................................................................	16.00
and, if the number of sheets containing the description of the invention exceeds ten, for each sheet of description in excess of ten....................................................	1.00
and, if the number of claims exceeds ten, for each claim in excess of ten................	2.00

Second Schedule—continued

Item No.	Matter	Fee
$
4	On lodging request under sub-section (4.) of section 34—for each application to which the request relates.............................................................................................................	10.00
5	On lodging request for examination of an application, being an application lodged on or after the date fixed under sub-section (2.) of section 2 of the Patents Act 1969—
(a) where the request was not preceded by a direction of the Commissioner under section 47a or section 473—
(i) if the request is lodged before the expiration of four years and nine months after the date of lodgment of the complete specification—
(a) in the case, of a request for an examination to be made in accordance with section 48...............................................................................	80.00
(b) in the case of a request for a modified examination	60.00
(ii) if the request is lodged after the expiration of four years and nine months after the date of lodgment of the complete specification—
(a) in the case of a request for an examination to be made in accordance with section 48......................................................................................	60.00
(b) in the case of a request for a modified examination............................	40.00
(b) where the request was preceded by a direction of the Commissioner under section 47a (whether or not the applicant had, before the request was made, requested the deferment of the examination under section 52b)—
(i) in the case of a request for an examination to be made in accordance with section 48............................................................................................................	60.00
(ii) in the case of a request for a modified examination.....................................	40.00
(c) where the request was preceded by a direction of the Commissioner under section 47b........................................................................................................................	40.00
6	On lodging request for examination of an application, being an application lodged before the date fixed under sub-section (2.) of section 2 of the Patents Act 1969—
(a) where the request was not preceded by a direction of the Commissioner under section 47a or section 47b—
(i) if the request is lodged before the expiration of four years and nine months after the date of lodgment of the complete specification—
(a) in the case of a request for an examination to be made in accordance with section 48......................................................................................	68.00
(b) in the case for a request for a modified examination...........................	48.00
(ii) if the request is lodged after the expiration of four years and nine months after the date of lodgment of the complete specification—
(a) in the case of a request for an examination to be made in accordance with section 48......................................................................................	48.00
(b) in the case of a request for a modified examination............................	28.00
(b) where the request was preceded by a direction of the Commissioner under section 47a (whether or not the applicant had, before the request was made, requested the deferment of the examination under section 52b)—
(i) in the case of a request for an examination to be made in accordance with section 48............................................................................................................	48.00
(ii) in the case of a request for a modified examination.....................................	28.00
(c) where the request was preceded by a direction of the Commissioner under section 47b........................................................................................................................	28.00
7	On lodging notice under section 47b requiring the Commissioner to direct an applicant to request examination	40.00
8	Continuation fee for purposes of section 47d, on the expiration of the year from the date of lodgment of the complete specification specified hereunder—
(a) the second year...................................................................................................	8.00
(b) the third year......................................................................................................	10.00

Second Schedule—continued

Item No.	Matter	Fee
$
(c) each succeeding year.................................................................................................................................	The amount equal to the fee specified in item 23 in respect of the corresponding year of the patent.
9	On lodging application to restore an application that has lapsed.................................................................................................................................	10.00
10	For restoring lapsed application.................................................................................................................................	30.00
11	On lodging request under regulation 19d.................................................................................................................................	12.00
12	On appearing at a hearing.................................................................................................................................	12.00
13	For an extension of the period within which an application and complete specification may be accepted—for each month or part of a month for which the extension is granted..............................................................................................................................	8.00
14	On lodging request under sub-section (3.) of section 52 for postponement of acceptance..............................................................................................................................	8.00
15	For acceptance of application and complete specification where a copy of the first report of the Examiner on the complete specification was sent to the applicant before the date fixed under sub-section (2.) of section 2 of the Patents Act 1969 and acceptance takes place after the expiration of a period of eighteen months after that report was made—for each month or part of a month after the expiration of the period of eighteen months, and before the expiration of the period of twenty-one months, after the report was made and before acceptance takes place..............................................................................................................................	12.00
16	On lodging request under sub-section (1.) of section 54a for publication of a notification that a complete specification is open to public inspection..................................	8.00
17	On lodging notice of opposition under sub-section (5.) of section 47b, section 59, 82, 95, 97 or 160 or regulation 16f, 43, 51, 77 or 81a..............................................................................................................................	20.00
18	On application to lodge further evidence in opposition proceedings..............................................................................................................................	10.00
19	On lodging an agreement under section 64 in respect of an application..............................................................................................................................	8.00
and, where the agreement relates to more than one application, for each additional application..............................................................................................................................	2.00
20	For sealing a patent.................................................................................................................................	30.00
and, if the complete specification in respect of the application for the patent was lodged on or after the date fixed under sub-section (2.) of section 2 of the Patents Act 1969—
(a) where the number of pages of the complete specification at the time of that sealing exceeds ten, for each page in excess of—
(i) ten; or.................................................................................................
(ii) the number of pages of the complete specification at the time of its lodgment,..........................................................................................
whichever is the greater..........................................................................	1.00
(b) where the number of claims of the complete specification at the time of that sealing exceeds ten, for each claim in excess of—
(i) ten; or..................................................................................................
(ii) the number of claims of the complete specification at the time of its lodgment,..........................................................................................
whichever is the greater...............................................................................	2.00
21	On lodging application for amendment of a patent under sub-section (2.) of section 65	5.00

Second Schedule—continued

Item No.	Matter	Fee
$
22	On lodging application for extension of the period for sealing under subsection (5.) or (6.) of section 66—for each month or part of a month for which an extension is applied for.........................................................................................	10.00
23	Renewal fee on the expiration of the year of the patent specified hereunder—
(a) the fourth year..............................................................................................	12.00
(b) the fifth year.................................................................................................	15.00
(c) the sixth year................................................................................................	18.00
(d) the seventh year............................................................................................	21.00
(e) the eighth year..............................................................................................	24.00
(f) the ninth year................................................................................................	27.00
(g) the tenth year................................................................................................	30.00
(h) the eleventh year..........................................................................................	34.00
(i) the twelfth year.............................................................................................	38.00
(j) the thirteenth year.........................................................................................	42.00
(k) the fourteenth year........................................................................................	46.00
(l) the fifteenth year...........................................................................................	50.00
24	On lodging an application under section 71 for a duplicate of a patent..................	10.00
25	On lodging application under section 74.................................................................	12.00
26	On lodging request to amend a complete specification under section 77—
(a) if lodged before the complete specification becomes open to public inspection...................................................................................................	10.00
(b) if lodged after the complete specification becomes open to public inspection...................................................................................................	20.00
27	On lodging application (other than an application to which item 28 applies) under section 21, 22 or 23 for entry in the Register......................................................	8.00
28	On simultaneously lodging two or more applications under section 21, 22 or 23 for entries in the Register where the devolution of title or interest is the same in respect of all the patents to which the applications relate—
(a) for one of the applications...........................................................................	8.00
(b) for each other application............................................................................	2.00
29	On lodging application to Commissioner for extension of term of patent under section 95.............................................................................................................	20.00
30	On lodging application under section 97 for restoration of a ceased patent	12.00
31	For restoring a ceased patent..................................................................................	40.00
32	On presentation of a petition under section 108 or 109.........................................	12.00
33	On lodging application for directions under sub-section (1.) or sub-section (2.) of section 154...........................................................................................................	10.00
34	On lodging request under regulation 76, in respect of each application or patent to which the request relates—
(a) in the case of a request for a correction of a clerical error or obvious mistake.......................................................................................................	5.00
(b) in the case of a request for the changing of a name or address or of both a name and address.......................................................................................	2.00
(c) in the case of a request in relation to any other matter...............................	10.00
35	On lodging an application under sub-section (2.) of section 160 for an extension of time on a ground specified in paragraph (a) of that sub-section—
(a) if lodged before the expiration of the time to be extended—for each month or part of a month for which the extension of time is applied for.............	12.00
(b) if lodged after the expiration of the time to be extended—the amount payable under the last preceding paragraph plus an amount of.................	25.00

Second Schedule—continued

Item No.	Matter	Fee
$
36	On lodging an application under sub-section (2.) of section 160 for an extension of time on the ground specified in paragraph (b) of that subsection—for each month or part of a month for which the extension of time is applied for	5.00
37	For an extension of time under sub-section (2.) of section 160 on a ground specified in paragraph (a) of that sub-section, if the extension is granted after the expiration of the period for which the extension is applied for—for each month or part of a month for which the time is extended	12.00
less the amount paid under paragraph (a) of item 35
38	For an extension of time under sub-section (2.) of section 160 on the ground specified in paragraph (b) of that sub-section, if the extension is granted after the expiration of the period for which the extension of time is applied for—for each month or part of a month for which the time is extended	5.00
less the amount paid under item 36.
39	For the supply of photographic copies of the Register, of extracts from the Register or of other documents—
(a) for the first sheet	1.25
(b) for every other sheet	0.25
40	For the supply of photographic copies of out-of-print specifications—
(a) if less than 4 sheets	0.75
(b) if 4 sheets or more than 4 sheets—per sheet	0.25
41	For a certificate of the Commissioner	5.00
42	On lodging request for the furnishing of information under section 30—
(a) in respect of each application, patent or document; or	2.00
(b) in respect of a special search	5.00
43	On request under section 56 for the result of a search made under subsection (3.) of section 48	2.00
44	For taxing costs	2.00
45	On lodging application for an extension of time where a fee for lodging the application is not otherwise provided for by this Schedule—for each month or part of a month for which the extension of time is applied for	5.00
461	On allowance of an amendment under Part VIII. of the Act	The amount estimated by the Commissioner to be the cost of reprinting the specification or of printing a corrigendum.

“THIRD SCHEDULE

Regulations 6 and 7.

PART I.—REQUIREMENTS IN RELATION TO DOCUMENTS OTHER THAN SPECIFICATIONS AND DRAWINGS.

1. Documents shall be written in the English language.

2. The contents of a document shall be written on one side only of the paper in a carbonaceous or other permanent ink on which bleaching agents do not have any effect.

3. If the contents of a document are in handwriting, the writing shall be large and legible.

4. The signature of the person signing a document and the date of signature shall be placed on the last sheet of the document.

THIRD SCHEDULE—continued

5. An interlineation, alteration, erasure or amendment made in a document before it is lodged at the Patent Office shall be initialled by the person who signs the document in the margin of the document opposite to the interlineation, alteration, erasure or amendment.

PART II.—REQUIREMENTS IN RELATION TO SPECIFICATIONS.

1. The specification shall be typewritten in the English language on tough white paper of good quality.
2. The specification shall not contain any interlineations, alterations or erasures,
3. The sheets of the paper shall be foolscap folio size (thirteen inches by eight inches) or International Standards Organization size A4 (two hundred and ninety-seven millimetres by two hundred and ten millimetres).
4. The contents of the specification shall be typewritten in an area not exceeding nine and seven-eighths inches in depth by six and one-quarter inches in width.
5. The margins shall be—

(a) in the case of the head margin—not less than one inch;

(b) la the case of the bottom margin—not less than three-quarters of an inch; and

(c) to the case of the left-hand margin—not less than one and one-half inches.

6. The description of the invention shall commence at the head of the second sheet of the specification.
7. The typewriting shall be—

(a) on one side of the paper only;

(b) in sharp black characters suitable for reproduction by photographic means; and

(c) either in letters not smaller than pica type face, with double spacing between lines, or in some other form approved by the Commissioner.
8. The pages shall be numbered consecutively.
9. At least each tenth line of each sheet shall be numbered in the left-hand margin.
10. The claims shall commence on a sheet separate from the remainder of the specification and shall be numbered consecutively.
11. Reference may be made in the specification and claims to formulae or tables marked on the drawings by reference numbers or letters.
12. If practicable, technical terms, abbreviations and symbols used shall conform to the standards approved and published by the British Standards Institute or the Standards Association of Australia.
13. A book, specification or other work shall not be referred to unless it is available to the public in Australia and is fully identified in the specification.
14. A trade mark shall not be used as the means of identifying a substance or article in a specification unless it is not practicable to identify the substance or article by other means.
15. If reference is made in a specification to a registered trade mark, the fact that it is a registered trade mark shall be stated,

PART III.—REQUIREMENTS IN RELATION TO DRAWINGS.

1. Drawings shall be made on white paper, being hot-pressed, rolled or calendered strong paper of good quality, or on other paper approved by the Commissioner.
2. Drawings shall be so made as to permit them to be clearly reproduced on a reduced scale by photographic means.

3. Drawings shall not be creased or folded

4. Washes or colours shall not be used.

5.Drawings shall not be mounted.

6. The sheets of paper may be foolscap folio size (thirteen inches by eight inches) or International Standards Organization size A4 (two hundred and ninety-seven millimetres by two hundred and ten millimetres) but shall be the same size as the paper used in the specification to which the drawings relate.
7. Drawings shall be contained in an area not exceeding nine and seven-eighths inches in depth by six and one-quarter inches in wrath.
8. The margins shall be—

(a) in the case of the head margin—not less than one inch;

(b) in the case of the bottom margin—not less than three-quarters of an inch; and

(c) in the case of the left-band margin—not less than one and one-half inches.

Third Schedule—continued

9. Where the drawings on a number of sheets form a complete figure, the drawings shall be to made that the complementary parts or lines on the several sheets show, when placed side by side, the complete figure.
10. Lines shall be drawn in black ink and shall be uniform in thickness or gradation.
11. Section lines shall not be closer than thirty to the inch.
12. Shading lines shall not be used.
13. The figures in the drawings shall be numbered consecutively without regard to the number of sheets used and shall, so far as practicable, be arranged in numerical order
14. Reference letters in figures in drawings shall fee—

(a) in bold type;

(b) not less than one-eighth of an inch in height;

(c) placed in an upright position;

(d) in the case of large parts—placed upon the parts; and

(e) in the case of small parts—placed on one side of the drawings and connected by a fine line to the parts to which they refer.
15. If the drawings contain different views of the same part, the same reference letters and figures shall be used on those views.
16. 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 the words “True Copy”, as the case requires, and the name of the applicant.
17. 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-hand corner on the back of each sheet.
18. An advertisement or address of a person shall not be marked on the drawings.
19. Except as provided in this Part of this Schedule, descriptive matter shall not be marked on the drawings.
20. Drawings that are in the nature of flow-sheets may have marked on them such descriptive matter as is necessary to show the materials and the chemical or other reactions or treatments used in carrying out the invention.
21. Drawings that show symbolically a number of instruments or units of apparatus and their interconnexions may be marked with such descriptive matter as is necessary to identify the instruments or units or their interconnexions.”.

Printed for the Government of the Commonwealth by W. G. Murray at the Government Printing Office, Canberra.

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