Patents Regulations (Amendment) (Cth)

Statutory Rules 1981 No. 2021

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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 15 July 1981.

ZELMAN COWEN

Governor-General

By His Excellency’s Command,

DAVID THOMSON

Minister of State for Science and Technology

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Commencement

1. These Regulations shall be deemed to have come into operation on 1 April 1980.

Fees

2. Regulation 5 of the Patents Regulations is amended by omitting from sub-regulation (1) “regulations 5a” and substituting “regulation 5a and, where the Commissioner or the Patent Office is a receiving Office, the fees referred to in regulations”.

Fees payable in relation to international applications

3. Regulation 5a of the Patents Regulations is amended—

(a) by omitting from sub-regulation (1) “together with a fee specified in Item 4 of that Part that is appropriate in the circumstances of the case”;

(b) by omitting from sub-regulation (1) “, on lodging the statement referred to in regulation 15a in respect of that application”; and

(c) by omitting sub-regulation (2) and substituting the following sub-regulations:

“(2) Where, in relation to an international application—

(a) an international preliminary examination has been demanded in accordance with Article 31 of the Treaty; and

 

(b) Australia was, within the meaning of Article 31 (4) (a) of the Treaty, indicated as an elected State for the purposes of that demand within the period of 19 months from the priority date accorded to that application under the Treaty,

no extension fee under Item 27 of Part I of the Second Schedule shall be payable in respect of an application for an extension of time for payment of the amount specified in paragraph (a) of Item 6 of that Part.

“(3) No fee under Item 22 of Part I of the Second Schedule is payable in respect of the lodging, in relation to an international application, of documents referred to in sub-section 143 (3) or (4) of the Act at the Patent Office—

(a) where an international preliminary examination of that application has been demanded under Article 31 of the Treaty and Australia was, within the meaning of Article 31 ( 4) (a)of the Treaty, indicated as an elected State for the purposes of that demand within the period of 19 months from the priority date accorded to that application under the Treaty—within the period of 29 months from the priority date accorded to that application under the Treaty; or

(b) in any other case—within the period of 24 months from the priority date accorded to that application under the Treaty.”.

Form of application for patents

4. Regulation 9 of the Patents Regulations is amended by omitting sub-regulation (3).

5. Regulation 15a of the Patents Regulations is repealed and the following regulations substituted:

Initiation of national phase of international application

“15a. (1) Subject to sub-regulation (2), an applicant making an international application shall—

(a) where that applicant has demanded an international preliminary examination of his application under Article 31 of the Treaty and Australia was, within the meaning of Article 31 (4) (a) of the Treaty, indicated as an elected State for the purposes of that demand within the period of 19 months from the priority date accorded to that application under the Treaty—within the period of 26 months from the priority date accorded to that application under the Treaty; or

 

(b) in any other case—within the period of 21 months from the priority date accorded to that application under the Treaty,

or within such further period as the Commissioner allows under section 160 of the Act—

(c) where he intends the international application to proceed as an application under the Act for a standard patent, a standard patent of addition or a petty patent—pay the appropriate fees in accordance with regulation 5a;

(d) give the Commissioner an address for service of documents in Australia; and

(e) where it is necessary so to do, lodge in the Patent Office a translation referred to in sub-paragraph 58C (10) (a) (ii) of the Act.

“(2) Where, in relation to an international application, a translation lodged under paragraph 15a (1) (e) in the Patent Office is incomplete, the applicant may provide a complete translation, or a partial translation to complete the translation lodged under that paragraph, before the expiry of the period referred to in section 54 of the Act within which that application may be accepted.

Procedure on declaration under Article 17 (2) (a) of the Treaty

“15b. Where the International Searching Authority makes a declaration under Article 17 (2) (a)of the Treaty in relation to an international application, the applicant shall, subject to sub-regulation 15a (2), for the purposes of Article 22 of the Treaty, comply with the requirements of sub-regulation 15a (1) within the period referred to in paragraph 15a ( 1) (b).”.

Fees payable to Commissioner for international applications

6. Regulation 19h of the Patents Regulations is amended by omitting from sub-regulation (2) “28 days” and substituting “1 month”.

Variation of section 131 of the Act

7. Regulation 19M of the Patents Regulations is amended by omitting from paragraph (a) “was” and substituting “were”.

Variation of section 143 of the Act

8. Regulation 19m of the Patents Regulations is amended—

(a) by omitting “sub-regulation” and substituting “sub-section”;

(b) by omitting “was” and substituting “were”; and

(c) by omitting all the words and figures after “inserted:” and substituting—

“‘(aa) where the application to which the copies or documents relate is an international application—

(i) in respect of which an international preliminary examination has been demanded under Article 31 of the Treaty and where Australia was, within the meaning of Article 31 (4) (a) of the Treaty, indicated as an elected State for the purposes of that demand

 

within the period of 19 months from the priority date accorded to that application under the Treaty— within the period of 26 months from the priority date accorded to that application under the Treaty; or

(ii) in any other case—within the period of 21 months from the priority date accorded to that application under the Treaty;’ “.

Second Schedule

9. The Second Schedule to the Patents Regulations is amended by omitting from Column 2 of Item 22 “On lodging documents referred to in sub-sections 143 (3) and” and substituting “Subject to sub-regulation 5a (3), on lodging documents referred to in sub-section 143 (3) or”.

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NOTES

1. Notified in the Commonwealth of Australia Gazette on 21 July 1981.

2. Statutory Rules 1962 No. 2 as amended to date. For previous amendments see Note 2 to Statutory Rules 1981 No. 1 and see also