(7) Where a request under subregulation (1) is for amendment of a
specification that is open to public inspection, the Commissioner shall, as
soon as practicable after the request has been lodged at the Patent Office,
advertise particulars of the request in the Official Journal.
(8) Where a request under subregulation (1) for amendment of a specification
that is open to public inspection is for the purpose of including in the
specification a matter in respect of which a notification has been lodged at
the Patent Office by a person under subregulation 19ZK (1), the Commissioner
shall, as soon as practicable after the request has been lodged at the Patent
Office, serve a copy of the request on that person.
(9) Where a request under subregulation (1) is for amendment of the
specification lodged in respect of a patent application or patent and the
specification is open to public inspection, the Commissioner shall, before
making a decision under subregulation (11), give the following persons an
opportunity to be heard:
(a) any person to whom paragraph (6) (a) or subregulation (8) applies in
respect of that request;
(b) any person who has notified the Commissioner within the period referred
to in subregulation (12) that the person has an interest in the request; and
(c) where there is a person referred to in paragraph (a) or (b) or where
there is no such person but the Commissioner proposes not to comply with the
request-the applicant or patentee, as the case requires.
(10) The Commissioner shall not comply with a request under subregulation
(1) to amend a specification unless it would, after amendment in accordance
with the request, include a matter referred to in paragraph 40 (5) (c) of the
Act.
(11) Subject to subregulation (12) and regulation 19ZM, as soon as
practicable after receiving a request under subregulation (1) and, if required
to do so, complying with subregulation (6), (7), (8) or (9), the Commissioner
shall decide whether to comply with or refuse the request.
(12) Where a request under subregulation (1) is for amendment of a
specification that is open to public inspection, a decision under
subregulation (11) shall not be made until after a period of 3 months after
the date on which particulars of the request are advertised in the Official
Journal under subregulation (7).
(13) Upon a decision under subregulation (11) to comply with a request for
an amendment of a specification, the amendment shall be deemed to have been
made.
(14) Where a decision under subregulation (11) to comply with a request for
amendment of a specification is made after the specification has become open
to public inspection, the Commissioner shall advertise particulars of the
amendment in the Official Journal.
(15) Where the Commissioner decides to comply with, or to refuse, a request
under subregulation (1), the Commissioner shall inform the applicant or
patentee concerned, and the persons referred to in subregulation (9), of the
decision, and of the reasons for the decision, by notice in writing given as
soon as practicable after the date of decision.
PATENTS REGULATIONS - REG 19ZM
No amendment under regulation 19ZL where certain actions or proceedings are
pending
19ZM. Subregulation 19ZL (11) does not apply in respect of a specification
lodged in respect of a patent while there is pending:
(a) an action for an infringement of the patent;
(b) a proceeding for revocation of the patent; or
(c) a proceeding in which:
(i) in the case of a standard patent-the validity of the patent or of a
claim of the complete specification is disputed; or
(ii) in the case of a petty patent-the validity of the petty patent or
of the claim of the petty patent specification is disputed; whether commenced
before or after the lodging under subregulation 19ZL (1) of a request for
leave to amend the specification.
PATENTS REGULATIONS - REG 19ZN
Court may direct amendment
19ZN. (1) In:
(a) an action in a court for an infringement of a patent;
(b) a proceeding in a court for revocation of a patent; or
(c) a proceeding in a court:
(i) in which the validity of a standard patent, or of a claim of the
complete specification of a standard patent, is disputed; or
(ii) in which the validity of a petty patent or of the claim of the
specification of a petty patent is disputed;
the court or a Judge of that court may, at any time, for the purpose of
including a matter referred to in paragraph 40 (5) (c) of the Act, by order
made on the application of the patentee, subject to any terms as to costs,
advertisements or otherwise that the court or Judge imposes, direct the
amendment of the specification in the manner specified in the order.
(2) The patentee shall give notice of an application for an order under
subregulation (1) to the Commissioner who shall be entitled to appear and be
heard and shall appear if the court or Judge referred to in that subregulation
so directs.
(3) A copy of an order made under subregulation (1) shall be lodged by the
patentee at the Patent Office within 14 days after the sealing of the order
and upon lodgment the specification shall be deemed to have been amended in
the manner specified in the order.
PATENTS REGULATIONS - REG 19ZO
Appropriate prescribed period: paragraph 40 (7) (b) of the Act
19ZO. For the purposes of paragraph 40 (7) (b) of the Act, where a
micro-organism is deposited with a prescribed depositary institution, being an
international depositary authority whether in or outside Australia, for the
purposes of section 40 of the Act in relation to a patent application or
patent and a requirement of paragraph 40 (5) (c) or (e) of the Act ceases to
be satisfied in relation to the micro-organism, the appropriate prescribed
period is:
(a) where the step referred to in paragraph 40 (7) (b) of the Act is the
making of a new deposit of a sample of that micro-organism:
(i) where the Commissioner has given under subregulation 19ZK (2) the
applicant or patentee a copy of a notification of that requirement-the period
that ends 3 months after that copy was so given;
(ii) where the Commissioner has given under subregulation 19ZK (3) to
the applicant or patentee a notification of that requirement-the period that
ends 3 months after that notification was so given;
(iii) where under Article 4 (1) of the Budapest Treaty the international
depositary authority has notified the depositor of its inability to furnish
samples of that micro-organism and the Commissioner has not, before that
notification by that authority, given under subregulation 19ZK (2) or (3) to
the applicant or patentee a copy of a notification or a notification, as the
case may be, of that requirement-the period of 3 months referred to in Article
4 (1) (d) of that Treaty; or
(iv) in any other case-the period that ends when that new deposit is so
made; or
(b) where the step referred to in paragraph 40 (7) (b) of the Act is an
amendment of the specification lodged in respect of that patent application or
patent:
(i) where the Commissioner has given under subregulation 19ZK (2) to
the applicant or patentee a copy of a notification of that requirement-the
period that ends when the Commissioner decides under subregulation 19ZL (11)
to comply with a request under subregulation 19ZL (1) for the amendment, being
a request lodged under that subregulation within 3 months after that copy was
so given;
(ii) where the Commissioner has given under subregulation 19ZK (3) the
applicant or patentee a notification of that requirement-the period that ends
when the Commissioner decides under subregulation 19ZL (11) to comply with a
request under subregulation 19ZL (1) for that amendment, being a request
lodged under that subregulation within 3 months after that notification was so
given; or
(iii) in any other case-the period that ends when the Commissioner
decides under subregulation 19ZL (11) to comply with a request under
subregulation 19ZL (1) for that amendment of that specification.
PATENTS REGULATIONS - REG 19ZP
Protection or compensation of certain persons: subsection 40 (7) of the Act
19ZP. (1) For the purposes of subsection 40 (7) of the Act, a person who
availed himself or herself, or took definite steps by contract or otherwise to
avail himself or herself, of:
(a) an invention to the extent that the invention is a micro-organism; or
(b) an invention that involves the use, modification or cultivation of a
micro-organism;
being an invention that is the subject-matter of patent application or patent,
during a period between the times referred to in paragraphs 40 (7) (a) and (b)
of the Act when a requirement of paragraph 40 (5) (c) or (e) of the Act was
not satisfied in respect of that application or patent, may, during the period
that commences on the date of publication in the Official Journal of the
notice referred to in subregulation 19ZK (4) that that requirement ceased to
be satisfied and ends at the time referred to in paragraph 40 (7) (b) of the
Act, apply to the Commissioner in accordance with Form 27 for a licence to
make, use, exercise or vend that subject-matter to the extent that the person
so availed himself or herself, or took definite steps by contract to avail
himself or herself, of that subject-matter during that first-mentioned period.
(2) A person who applies under subregulation (1) for a licence to make, use,
exercise or vend the subject-matter of a patent application or patent shall
serve a copy of the application for the licence on the applicant in respect of
that patent application or the patentee of that patent, as the case requires,
and on such other persons as the Commissioner directs.
(3) A person on whom a copy of an application for a licence has been served
under subregulation (2) may, within a period of one month after that service
or within such further time as the Commissioner allows on an application made
in accordance with Form 11 within that period, give in accordance with Form 12
notice of opposition to the application for that licence.
(4) A person who gives under subregulation (3) a notice of opposition to an
application for a licence to make, use, exercise or vend the subject-matter of
a patent application or patent shall serve a copy of that notice on the
applicant for the licence and on such other person as the Commissioner
directs.
(5) The Commissioner shall hear an application under subregulation (1) for a
licence and if satisfied that it is proper to do so may:
(a) grant the licence on such terms as are reasonable; or
(b) dismiss the application.
PATENTS REGULATIONS - REG 19ZQ
Applications under subsection 154A (1) of the Act
19ZQ. (1) An application under subsection 154A (1) of the Act for a
declaration that the specification lodged in respect of a patent application
or patent, being a complete specification or a petty patent specification,
does not comply with the requirements of section 40 of the Act unless the
requirements of subsection 40 (5) of the Act are satisfied in relation to a
micro-organism, shall:
(a) be made in writing to a prescribed court or to the Commissioner;
(b) be lodged at that court or the Patent Office, as the case requires;
(c) state the name and business, or residential, address of the applicant
for the declaration:
(d) state an address for service on the applicant for the declaration of
documents relating to the application for the declaration;
(e) identify the patent application or patent, as the case requires;
(f) state that the invention that is the subject-matter of that patent
application or patent, as the case requires, involves the use, modification or
cultivation of a micro-organism other than a micro-organism referred to in
subsection 40 (4) of the Act;
(g) state that that micro-organism was, at the date of lodgment of that
specification, reasonably available to a person skilled in the art;
(h) state that, but for the fact referred to in paragraph (g), subsection
40 (3) of the Act would have applied in relation to the invention referred to
in paragraph (f);
(i) state that that micro-organism has since ceased to be reasonably
available to a person skilled in the art; and
(j) set out details of any facts relied upon to justify any of the
statements referred to in paragraph (f), (g), (h) or (i).
(2) A person who applies under subregulation (1) to a prescribed court or
the Commissioner for a declaration concerning a specification lodged in
respect of a patent application or patent shall serve a copy of the
application for the declaration on the applicant or patentee, as the case
requires, and on such other person as the court or Commissioner directs.
(3) Where the Commissioner of his or her own motion proposes to declare
under subsection 154A (1) of the Act that the specification lodged in respect
of a patent application or patent does not comply with the requirements of
section 40 of the Act unless the requirements of subsection 40 (5) of the Act
are satisfied in relation to a micro-organism, the Commissioner shall cause to
be served on the applicant or patentee, as the case requires, a statement of
the facts relied upon to justify the making of that declaration.
(4) A person on whom a copy of an application under subregulation (1) has
been served, or on whom a statement under subregulation (3) has been served,
may, within 3 months after that service, give to the prescribed court to which
the application is made or to the Commissioner, as the case requires, a reply
to that application or statement.
(5) A person who gives under subregulation (4) to a prescribed court or the
Commissioner a reply to an application under subregulation (1) for a
declaration concerning the specification lodged in respect of a patent
application or patent shall serve a copy of that notice on the applicant or
patentee, as the case requires, and on such other persons as the court or
Commissioner directs.
(6) As soon as practicable after a copy of a declaration by a court under
subsection 154A (1) of the Act is served on the Commissioner under subsection
154A (5), a notice of the making of that declaration shall be published in the
Official Journal.
(7) As soon as practicable after the making of a decision of the
Commissioner under subsection 154A (1) of the Act, a notice of the making of
the decision shall be published in the Official Journal.
(8) The terms of a declaration referred to in subregulation (6) or of a
decision referred to in subregulation (7) need not be published in the
Official Journal, but the declaration or decision shall be open to public
inspection at the Patent Office.
PATENTS REGULATIONS - PART V
PART V-OPPOSITION TO GRANT
PATENTS REGULATIONS - REG 20
Notice of opposition
20. A notice of opposition to the grant of a standard patent shall be in
accordance with Form 12.
PATENTS REGULATIONS - REG 21
Extension of time for lodging notice
21. An application for an extension of time for lodging a notice of
opposition to the grant of a standard patent shall be in accordance with Form
11.
PATENTS REGULATIONS - PART VI
PART VI-ACCEPTANCE
PATENTS REGULATIONS - REG 22
Request for postponement of acceptance
22. A request under sub-section (3) of section 52 of the Act shall be in
accordance with Form 13.
PATENTS REGULATIONS - REG 22AA
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.
PATENTS REGULATIONS - PART VIA
PART VIA-PUBLIC INSPECTION OF DOCUMENTS
PATENTS REGULATIONS - REG 22A
Request that complete specification be opened to public inspection
22A. A request under sub-section (1) of section 54A of the Act shall be in
accordance with Form 13A.
PATENTS REGULATIONS - REG 22B
Prescribed documents-international applications
22B. For the purposes of section 58G (4) of the Act, the prescribed
documents are-
(a) in relation to an international application, whether or not that
application is an application to which section 58B of the Act applies-
(i) where the international search report in accordance with Rule 43 of
the Treaty is not available at the date of publication of the application
under Article 21 of the Treaty-that report; and
(ii) amendments made under Article 19 of the Treaty and published under
Rule 48 of the Treaty; and
(b) in relation to an international application to which section 58B of the
Act applies-
(i) the translation referred to in sub-section 58C (10) of the Act;
(ii) the declaration lodged under sub-section 35 (3) of the Act in
respect of the application;
(iii) where the application is a Convention application-the copies or
translations referred to in sub-section 143 (3) or (4) of the Act;
(iv) a document, other than a document referred to in paragraph (a) or
sub-paragraph (i), (ii) or (iii) relating to the application, being a document
that has been lodged with the Commissioner or in the Patent Office by or on
behalf of the applicant, and not being an international preliminary
examination report; and
(v) a document, other than a document referred to in paragraph (a) or
sub-paragraph (i), (ii) or (iii), relating to the application, being a
document that has been delivered to the applicant by or on behalf of the
Commissioner.
PATENTS REGULATIONS - PART VII
PART VII-PATENTS AND PATENTEES
PATENTS REGULATIONS - REG 23
Form of patent
23. (1) A standard patent shall be in accordance with Form 14.
(2) The Commissioner shall publish in the Official Journal a notification of
the sealing of a standard patent.
(3) A petty patent shall be in accordance with Form 14A.
PATENTS REGULATIONS - REG 24
Determination under section 63
24. (1) A request for a determination under sub-section (1) or (2) of
section 63 of the Act shall be in accordance with Form 15.
(2) The person making the request shall-
(a) serve a copy of the request on the person refusing to proceed with the
application for the patent or the other parties to the dispute, as the case
requires; and
(b) if an agreement in writing has been entered into, lodge the agreement
and a certified copy of the agreement at the Patent Office.
(3) Paragraph (b) of the last preceding sub-regulation does not apply if the
agreement has already been filed in the Patent Office.
(4) The Commissioner shall cause notice of the request to be published in
the Official Journal.
(5) A person interested in the application in respect of which a request has
been made under this regulation who desires to be heard by the Commissioner
shall give notice of the fact to the Commissioner within six weeks after the
publication of the notice of the request.
PATENTS REGULATIONS - REG 25
Application under section 65 (2)
25. (1) An application under sub-section (2) of section 65 of the Act shall
be in accordance with Form 16.
(2) The person making the application shall lodge with his application the
patent and such documents as are necessary to support the application.
PATENTS REGULATIONS - REG 26
Extension of time under section 66 (5)
26. An application under sub-section (5) of section 66 of the Act shall be
in accordance with Form 11.
PATENTS REGULATIONS - REG 27
Extension of time under section 66 (6)
27. (1) An application under sub-section (6) of section 66 of the Act shall
be in accordance with Form 11.
(2) An application under that sub-section shall be lodged at the Patent
Office before the expiration of the period allowed by or under section 66 of
the Act for the sealing of the patent.
(3) An extension under sub-section (6) of section 66 of the Act of the time
for sealing of a patent shall not exceed six months.
PATENTS REGULATIONS - REG 28
Notification if patent not sealed
28. Where a standard patent is not sealed within the time allowed by or
under the Act, the Commissioner shall publish a notification of the fact in
the Official Journal.
PATENTS REGULATIONS - REG 29
Renewal fees
29. (1) For the purposes of sub-section 68 (2) of the Act, the fee specified
in column 3 of item 15 of Part I of Schedule 2 in relation to a year of patent
is the renewal fee in respect of that year of patent.
(2) For the purposes of sub-section 68 (2) of the Act, the prescribed time
in respect of the payment of a renewal fee in relation to a year of patent is
that year of patent.
(3) An application for an extension of time for payment under sub-section 68
(3) of the Act shall be in accordance with Form 11.
PATENTS REGULATIONS - REG 30
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.
PATENTS REGULATIONS - REG 31
Sealing of duplicate patent
31. An application for the sealing, under section 71 of the Act, of a
duplicate patent shall be in accordance with Form 17.
PATENTS REGULATIONS - REG 32
Assignments, licences etc.
32. An application for the registration of the title of a person becoming
entitled by assignment, transmission or other operation of law to a patent, or
to share in a patent or becoming entitled to an interest in a patent by virtue
of a mortgage, licence or other instrument, shall-
(a) in the case of an application under section 21 or 22 of the Act-be in
accordance with Form 18;
(b) in the case of an application under section 23 of the Act-be in
accordance with Form 19; and
(c) in the case of an application for registration of any other document
affecting the proprietorship of a patent or licence under a patent-be in
accordance with Form 18 or Form 19, as the case requires.
PATENTS REGULATIONS - REG 33
Applications under section 154
33. (1) An application for directions under sub-section (1) or (2) of
section 154 of the Act shall be in accordance with Form 20 or Form 21, as the
case requires.
(2) The applicant shall lodge with his application a statement of the facts
on which the application is based.
(3) A copy of the application and of the statement shall be served by the
applicant on each other person registered as a patentee.
PATENTS REGULATIONS - PART VIII
PART VIII-AMENDMENT OF SPECIFICATIONS
PATENTS REGULATIONS - REG 34
Request for leave to amend specification
34. (1) A request under section 77 of the Act for leave to amend a complete
specification or petty patent specification shall be in accordance with Form
22.
(2) The person making the request shall furnish to the Commissioner a
statement setting out each proposed amendment and the place at which the
amendment is proposed to be made.
(3) The proposed amendments shall be numbered consecutively.
(4) A proposed amendment that is or includes an alteration of a drawing
shall contain a sketch of the part of the drawing that is to be altered
showing the proposed alterations in red ink.
(5) A proposed amendment may, and shall if the Commissioner so requires,
propose the substitution of a new sheet for an existing sheet.
PATENTS REGULATIONS - REG 35
Amendment of request
35. An amendment under section 80 of the Act of a request as a result of the
Examiner's adverse report shall be made by lodging at the Patent Office a
statement setting out each amendment of the request.
PATENTS REGULATIONS - REG 36
Opposition to the request
36. (1) A notice of opposition under section 82 of the Act to a request for
amendment shall be in accordance with Form 12.
(2) An application for extension of time to lodge a notice of opposition
under section 82 of the Act shall be in accordance with Form 11.
PATENTS REGULATIONS - PART IX
PART IX-EXTENSION OF PATENTS
PATENTS REGULATIONS - REG 36A
Extension of term of petty patents
36A. An application under section 68B of the Act for the grant of an
extension of the term of a petty patent shall be in accordance with Form 23A.
PATENTS REGULATIONS - REG 37
Mode of advertisement
37. (1) A patentee who intends to present a petition to a prescribed court
under section 90 of the Act or to apply to a prescribed court or to the
Commissioner under section 95 of the Act shall advertise his intention to do
so in the Official Journal.
(2) The advertisement shall include an address for service in Australia and
shall state a time, being not less than one month and not more than three
months after the advertisement is published in the Official Journal, within
which the petition or application is to be lodged and, where he intends to
present the petition to a prescribed court, shall identify the prescribed
court.
PATENTS REGULATIONS - REG 38
Application to Commissioner for extension
38. (1) An application to the Commissioner under section 95 of the Act shall
be in accordance with Form 23 and shall be lodged at the Patent Office.
(2) The Commissioner shall cause a notification that the application has
been lodged to be published in the Official Journal.
(3) Where the address for service specified by a person who makes an
application to the Commissioner under section 95 of the Act is a different
address from the address for service specified in the advertisement published
by the person in the Official Journal, the Commissioner shall, in the
notification published under the last preceding sub-regulation, include a
statement that the address for service has been varied to the address
specified in the application.
(4) The person making the application shall lodge the declarations and other
evidence on which he relies in support of his application at the Patent Office
within three months after the date on which the application is made or within
such further time as the Commissioner on application in accordance with Form
11 allows.
PATENTS REGULATIONS - REG 39
Notice of opposition
39. (1) A notice of opposition to an application to the Commissioner under
section 95 of the Act shall be in accordance with Form 12.
(2) The notice shall be given within three months after the notification
referred to in sub-regulation (2) of the last preceding regulation is
published in the Official Journal or within such further period, not exceeding
one month, as the Commissioner, on an application in accordance with Form 11,
allows.
(3) A copy of the notice of opposition-
(a) shall be served on the applicant within fourteen days after the date
upon which it is lodged at the Patent Office; and
(b) may be so served at the address for service specified in the
advertisement or, if a different address for service is specified in the
application, at the address for service specified in the application.
PATENTS REGULATIONS - PART X
PART X-RESTORATION OF STANDARD PATENTS
PATENTS REGULATIONS - REG 40
Application for restoration
40. An application under section 97 of the Act for restoration of a standard
patent which has ceased shall be in accordance with Form 24.
PATENTS REGULATIONS - REG 41
Opposition to restoration
41. (1) A person interested may, within three months after the date of
advertisement of the application or within such further time, not exceeding
three months, as the Commissioner on application in accordance with Form 11
allows, give notice of opposition to the application.
(2) A notice of opposition to an application for restoration shall be in
accordance with Form 12.
PATENTS REGULATIONS - REG 42
Protection of persons who avail themselves of a ceased patent
42. (1) A person who claims that, after a patent which has been restored
under section 98 of the Act was notified in the Official Journal as having
ceased and before the date of the first advertisement of the application for
the restoration of the patent, he availed himself, or took definite steps by
contract or otherwise to avail himself, of the subject matter of the patent,
may apply to the Commissioner for the grant of a licence to make, use,
exercise and vend the subject matter of the patent.
(2) An application under the last preceding sub-regulation shall be in
accordance with Form 25 and shall be lodged at the Patent Office.
(3) A copy of the application shall be served on the patentee.
PATENTS REGULATIONS - REG 43
Opposition to claim
43. (1) The patentee may, within twenty-one days after the day on which the
copy of the application was served on him or within such further time as the
Commissioner on application made in accordance with Form 11 allows, give
notice of opposition to the application in accordance with Form 12.
(2) The patentee shall serve a copy of the notice on the person who has made
the application.
PATENTS REGULATIONS - REG 44
Determination of claim
44. The Commissioner shall hear the application and, if satisfied that the
application should be granted, the Commissioner may grant to the applicant a
licence on such terms as the Commissioner thinks just, but, if not so
satisfied, the Commissioner shall dismiss the application.
PATENTS REGULATIONS - PART XI
PART XI-SURRENDER OF PATENTS
PATENTS REGULATIONS - REG 45
Offer to surrender
45. (1) Notice of an offer to surrender a patent under section 106 of the
Act shall be in accordance with Form 26.
(2) The Commissioner shall give notice of the offer by advertisement in the
Official Journal.
(3) A person who desires to be heard shall, within one month after the
advertisement, lodge with the Commissioner a request to be heard.
PATENTS REGULATIONS - PART XII
PART XII-WORKING OF PATENTS AND COMPULSORY LICENCES
PATENTS REGULATIONS - REG 46
Petitions under section 108 or 109
46. (1) A person who presents a petition to the Commissioner under section
108 or 109 of the Act shall lodge with the petition-
(a) a copy of the petition; and
(b) declarations verifying the facts stated in the petition.
(2) The petitioner shall-
(a) serve a copy of the petition and the declarations verifying the facts
stated in the petition on the patentee; and
(b) lodge with the Commissioner a statement setting out the date and place
of the service of those documents on the patentee.
(3) The patentee may, within three months after the service of those
documents, furnish to the Commissioner and the petitioner declarations in
answer to the petition.
(4) The petitioner may, within three months after the date on which the
declarations in answer are served on him, lodge declarations in reply to the
first-mentioned declarations.
PATENTS REGULATIONS - PART XIII
PART XIII-EXTENSION OF TIMES UNDER SECTION 160
PATENTS REGULATIONS - REG 47
Application for extension of time under section 160 (2)
47. (1) An application under sub-section (2) of section 160 of the Act shall
be in accordance with Form 11.
(2) The person making the application shall furnish with the application a
declaration setting out the grounds upon which the application is made.
PATENTS REGULATIONS - REG 48
Opposition to application
48. Where the Commissioner, in pursuance of sub-section (4) of section 160
of the Act, advertises in the Official Journal an application under
sub-section (2) of that section, a person may, within one month after the date
of the publication of the advertisement or within such further time not
exceeding one month as the Commissioner, on an application in accordance with
Form 11 made within the period of one month after the date of the publication
of the advertisement, allows, gives notice of opposition in accordance with
Form 12 to the grant of the application.
PATENTS REGULATIONS - REG 49
Notification of decision under sub-section 160 (2) of the Act, or of result
of
appeal in relation to such a decision, in Official Journal
49. (1) Where the Commissioner has, upon an application made under
sub-section 160 (2) of the Act, granted an extension of time, he shall publish
in the Official Journal a notification of his decision.
(2) Where, under section 151 of the Act, the Administrative Appeals Tribunal
reviews a decision of the Commissioner under sub-section 160 (2) of the Act
and decides to vary the decision under review or set aside the decision under
review and make a decision in substitution for the decision so set aside, the
Commissioner shall cause to be published in the Official Journal a
notification of that decision of the Tribunal.
PATENTS REGULATIONS - REG 50
Protection or compensation of persons
50. (1) This regulation applies in a case where an extension of time has
been granted under sub-section (2) of section 160 of the Act.
(2) A person who availed himself, or took definite steps by way of contract
or otherwise to avail himself, of the invention the subject of the application
for the patent concerned by reason of the act or step in relation to which the
extension was granted not having been done or taken within the time allowed
may, within one month after the notification referred to in the last preceding
regulation is published or within such further time as the Commissioner, on an
application made in accordance with Form 11 within that period of one month,
allows, apply in accordance with Form 27 to the Commissioner for the grant of
a licence to make, use, exercise and vend the invention the subject of the
application for the patent.
(3) A copy of an application made under the last preceding sub-regulation
shall be served by the applicant on the person to whom the extension of time
was granted and on such other persons as the Commissioner directs.
PATENTS REGULATIONS - REG 51
Opposition to claim
51. (1) A person on whom the copy of an application under sub-regulation (2)
of the last preceding regulation has been served 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.
(2) A copy of the notice of opposition shall be served by the person giving
it on the person who has made the application for the licence.
PATENTS REGULATIONS - REG 52
Determination of claim
52. The Commissioner shall hear the application for the licence, and, if
satisfied that the application should be granted, the Commissioner may grant
to the applicant a licence on such terms as the Commissioner thinks just, but,
if not so satisfied, the Commissioner shall dismiss the application.
PATENTS REGULATIONS - PART XIV
PART XIV-PRACTICE AND PROCEDURE
PATENTS REGULATIONS - DIVISION 1
Division 1-Proceedings in Opposition Cases other than Cases under Section 95
of
the Act.
PATENTS REGULATIONS - REG 53
Interpretation
53. In this Division-
"applicant" means a person who has made the request or application in
respect of which a person has given a notice of opposition;
"opponent" means a person who has lodged a notice of opposition.
PATENTS REGULATIONS - REG 54
Application of Division
54. This Division applies where a notice of opposition has been given under
section 59, 82 or 97 of the Act or under regulation 16D, 16F, 43, 48, 51, 77
or 81A of these Regulations.
PATENTS REGULATIONS - REG 55
Opponent's evidence in support
55. An opponent-
(a) may serve on the applicant, within 3 months after the notice of
opposition has been lodged at the Patent Office or within such further time as
the Commissioner on application in accordance with Form 11 allows, a copy of
each of the declarations on which he relies in support of his opposition; and
(b) shall, as soon as practicable after the copies of the declarations have
been so served, lodge the declarations at the Patent Office with a written
statement indicating the place at which, and the date on which, the copies of
the declarations were so served.
PATENTS REGULATIONS - REG 56
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 3 months 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 3 months after the expiration of that time; or
(b) within 3 months 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.
PATENTS REGULATIONS - REG 57
Opponent's evidence in reply
57. Where copies of declarations are served by an applicant under the last
preceding regulation, the opponent-
(a) may serve on the applicant, within 3 months after the date on which the
copies of the declarations of the applicant were served on him or within such
further time as the Commissioner on application in accordance with Form 11
allows, a copy of each of the declarations on which he relies in reply to the
declarations of the applicant; and
(b) shall, as soon as practicable after the copies of the declarations are
so served, lodge the declarations at the Patent Office with a written
statement indicating the place at which, and the date on which, the copies of
the declarations were so served.
PATENTS REGULATIONS - REG 57A
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.
PATENTS REGULATIONS - REG 58
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) to make 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.
PATENTS REGULATIONS - REG 59
Further evidence to be by leave or special leave
59. (1) An opponent or applicant may not adduce further evidence except-
(a) by leave of the Commissioner, if the parties agree in writing to
further evidence being adduced; or
(b) by special leave of the Commissioner granted on an application made for
that purpose.
(2) An application for special leave under paragraph (b) of the last
preceding sub-regulation shall, unless it is made at the hearing, be in
accordance with Form 28.
(3) The person making the application shall lodge with the application a
declaration setting out the grounds on which the application is made and the
nature of the further evidence which it is desired to lodge.
(4) The person making the application shall-
(a) serve a copy of the application and a copy of the declaration on the
other party to the proceedings; and
(b) lodge at the Patent Office a written statement indicating the place at
which, and the day on which, the copies of the application and the declaration
were served on the other party.
(5) The other party shall, if he intends to oppose the application, give, to
the Commissioner and to the person making the application, notice of his
intention to do so within fourteen days after the date on which the copies of
the application and the declaration were served on him.
(6) Where special leave to adduce further evidence is granted, the other
party shall be entitled to lodge declarations in reply to the further
evidence.
(7) The Commissioner shall notify the parties of his decision on the
application for special leave.
(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.
PATENTS REGULATIONS - REG 60
Procedure where special leave granted
60. (1) Where the Commissioner grants special leave to a party to adduce
further evidence, that party shall-
(a) serve on the other party, within one month after the date on which he
receives notification that special leave has been granted, a copy of a
declaration containing the further evidence; and
(b) as soon as practicable after the copy of the declaration is so served,
lodge the declaration at the Patent Office with a written statement indicating
the place at which, and the date on which, the copy of the declaration was so
served.
(2) If the other party desires to adduce evidence in reply to the further
evidence, that party shall-
(a) serve, within one month after the date on which the copy of the
declaration referred to in paragraph (a) of the last preceding sub-regulation
was served on him, a copy of the declaration on which he proposes to rely in
reply to the further evidence on the party who obtained special leave to
appeal; and
(b) as soon as practicable after the copy of the declaration is so served,
lodge the declaration at the Patent Office with a written statement indicating
the place at which, and the date on which, a copy of the declaration was so
served.
PATENTS REGULATIONS - REG 61
Fixing of time and place for hearing
61. (1) Where-
(a) an applicant has not, within the time specified in paragraph (a) of
regulation 56 of these Regulations, served copies of the declarations referred
to in that paragraph on the opponent;
(b) an opponent has served on the applicant copies of the declarations
referred to in paragraph (b) of regulation 57 of these Regulations;
(ba) an applicant has served the written notice referred to in regulation
57A of these Regulations; or
(c) an opponent has lodged the written notice referred to in regulation 58
of these Regulations,
the opponent may lodge at the Patent Office an application in accordance with
Form 29 for the time and place for the hearing of the opposition of which he
has given notice to be fixed.
(2) Where-
(a) an opponent has not, within the time referred to in paragraph (a) of
regulation 55 of these Regulations, served on the applicant copies of the
document referred to in that paragraph;
(b) an opponent has not, within the time referred to in paragraph (a) of
regulation 57 of these Regulations, served on the applicant copies of the
declarations referred to in that paragraph;
(ba) an opponent has served the written notice referred to in regulation 57A
of these Regulations; or
(c) an opponent has not, within one month after service of-
(i) the copies of the declarations referred to in paragraph (b) of
regulation 57;
(iA) the copy of the written notice served by the applicant under
regulation 57A of these Regulations; or
(ii) the copy of the written notice referred to in regulation 58,
lodged an application under the last preceding sub-regulation,
the applicant may lodge at the Patent Office an application in accordance with
Form 29 for the time and place for the hearing of the opposition of which
notice has been given to be fixed.
(3) Upon receipt of an application under either of the last two preceding
sub-regulations, the Commissioner shall fix a time and place for the hearing
of the opposition and shall notify the applicant and opponent accordingly.
(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.
PATENTS REGULATIONS - REG 61A
Withdrawal of opposition
61A. (1) An opponent may withdraw his 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.
PATENTS REGULATIONS - REG 62
Hearing
62. (1) The Commissioner shall hear the applicant and the opponent, if they
desire to be heard, at the time and place so fixed.
(2) The Commissioner may, if he thinks fit, adjourn the hearing from time to
time and from place to place.
PATENTS REGULATIONS - REG 63
Notification of Commissioner's decision
63. The Commissioner shall forward a copy of his decision to each of the
parties to the opposition.
PATENTS REGULATIONS - REG 64
Costs
64. (1) Where, in proceedings in relation to which this Division applies,
the Commissioner awards costs against a party to the proceedings, the costs
shall be taxed, allowed and certified to by an officer of the Patent Office
appointed by the Commissioner for that purpose.
(2) A taxation of costs is subject to review by the Commissioner.
PATENTS REGULATIONS - DIVISION 2
Division 2-Proceedings in Opposition Cases under Section 95 of the Act
PATENTS REGULATIONS - REG 65
Interpretation
65. In this Division-
"applicant" means a person who has made an application to the Commissioner
under section 95 of the Act;
"opponent", in relation to an application under section 95 of the Act, means
a person who has lodged a notice of opposition to that application.
PATENTS REGULATIONS - REG 66
Applicant's evidence in support
66. An applicant shall-
(a) serve on the opponent, within fourteen days after the notice of
opposition has been served on him or within fourteen days after the
declarations and other evidence in support of his application are lodged at
the Patent Office, whichever is the later, or within such further time as the
Commissioner on application in accordance with Form 11 allows, a copy of each
of the declarations and other evidence which he has lodged in support of his
application; and
(b) as soon as practicable after the copies of the declarations and the
other evidence have been so served, lodge at the Patent Office a written
statement indicating the place at which, and the date on which, the copies of
the declarations and other evidence were so served.
PATENTS REGULATIONS - REG 67
Opponent's evidence in answer
67. An opponent shall-
(a) serve on the applicant, within three months after the date on which the
declarations of the applicant were served or within such further time as the
Commissioner on application in accordance with Form 11 allows, a copy of each
of the declarations on which he relies in support of the opposition and in
answer to the application; and
(b) as soon as practicable after the copies of the declarations are so
served, lodge the declarations at the Patent Office with a written statement
indicating-
(i) the place at which, and the date on which, the copies of the
declarations of the applicant were served on him; and
(ii) the place at which, and the date on which, the copies of his
declarations were served on the applicant.
PATENTS REGULATIONS - REG 68
Applicant's evidence in reply
68. An applicant-
(a) may serve on the opponent, within three months after the date on which
the copies of the declarations of the opponent were served on him or within
such further time as the Commissioner on application in accordance with Form
11 allows, a copy of each of the declarations on which he relies in reply to
the declarations of the opponents; and
(b) shall, as soon as practicable after the copies of the declarations are
so served, lodge the declarations at the Patent Office with a written
statement indicating the place at which, and the date on which, the copies of
the declarations were so served.
PATENTS REGULATIONS - REG 69
Statement if declarations in reply not to be lodged
69. Where an applicant does not intend to lodge declarations in reply to the
opponent's declarations within the time specified in the last preceding
regulation or to make an application for an extension of time under that
regulation, the applicant may lodge at the Patent Office a written notice to
that effect and shall, if a notice is so lodged, serve a copy on the opponent.
PATENTS REGULATIONS - REG 70
Request to fix time and place for hearing
70. (1) Where-
(a) an opponent has not, within the time specified in paragraph (a) of
regulation 67 of these Regulations, served copies of the declarations referred
to in that paragraph on the applicant;
(b) an applicant has served on the opponent copies of the declarations
referred to in paragraph (b) of regulation 68 of these Regulations; or
(c) an applicant has lodged the written notice referred to in regulation 69
of these Regulations,
the applicant may lodge at the Patent Office an application in accordance with
Form 29 for the time and place for the hearing of the opposition of which
notice has been given to be fixed.
(2) Where-
(a) an applicant has not, within the time referred to in paragraph (a) of
regulation 66 of these Regulations, served on the opponent copies of the
declarations referred to in that paragraph;
(b) an applicant has not, within the time referred to in paragraph (a) of
regulation 68 of these Regulations, served on the opponent copies of the
declarations referred to in that paragraph; or
(c) an applicant has not, within one month after service of-
(i) the copies of the declarations referred to in paragraph (b) of
regulation 68 of these Regulations; or
(ii) the copy of the written notice referred to in regulation 69 of
these Regulations,
lodged an application under the last preceding sub-regulation,
the opponent may lodge at the Patent Office an application in accordance with
Form 29 for the time and place for the hearing of the opposition of which
notice has been given to be fixed.
PATENTS REGULATIONS - REG 71
Application of general provisions of Division 1 of this Part
71. The provisions of regulations 59, 60, 62, 63 and 64 of these Regulations
apply to, and in relation to, proceedings in opposition cases under section 95
of the Act.
PATENTS REGULATIONS - DIVISION 3
Division 3-Proceedings other than Opposition Proceedings
PATENTS REGULATIONS - REG 72
Procedure
72. Where the Act or these Regulations authorize the Commissioner to hear
and decide an application or matter not being an opposition, the practice and
procedure to be followed for the purposes of enabling the application or
matter to be decided shall be the practice and procedure which the
Commissioner, on an application made to him for that purpose, directs to be
followed.
PATENTS REGULATIONS - DIVISION 4
Division 4-Evidence
PATENTS REGULATIONS - REG 73
Evidence
73. Notwithstanding anything contained in Division 1 of this Part, the
Commissioner may require a person who has made a declaration to attend before
him to give evidence orally on oath in lieu of, or in addition to, the
evidence contained in the declaration and may allow the person to be
cross-examined on his declaration.
PATENTS REGULATIONS - REG 74
Copies of documents
74. (1) Copies of documents (other than specifications available in the
Patent Office or in the library of the Patent Office) referred to in
proceedings or evidence before the Commissioner shall be lodged in duplicate
for the Commissioner's use.
(2) Where a document is in a foreign language, a translation of the
document, verified by declaration or otherwise to the satisfaction of the
Commissioner, shall be furnished for the Commissioner's use.
PATENTS REGULATIONS - REG 75
Declarations and affidavits
75. (1) A declaration required by the Act or these Regulations to be lodged
at the Patent Office or furnished to the Commissioner shall-
(a) be entitled in the matter in respect of which the declaration is made;
(b) be drawn in the first person;
(c) state the description and true place of business or abode of the
declarant;
(d) be divided into paragraphs, each of which shall be numbered
consecutively and shall, as far as practicable, be confined to one subject;
and
(e) have endorsed on it the name and address of the person who lodges it
and the name of the person on whose behalf it is lodged.
(2) A declaration, other than a declaration in accordance with Form 7 or 8,
may be made-
(a) in Australia-before a Notary Public, a Justice of the Peace, a
Commissioner for Affidavits, a Commissioner for Declarations or a person
authorized to administer oaths or to take declarations under the law of the
State or Territory of the Commonwealth where the declaration is made;
(b) in a part of Her Majesty's dominions other than Australia-before a
Judge, a Magistrate, a Justice of the Peace, a Notary Public, a Commissioner
for Oaths, a Commissioner for Affidavits, an Australian Consular Officer or a
person authorized by the law of that part to administer oaths or take
declarations; and (c) in any other place-before a Judge of a court the
jurisdiction of which is unlimited, one of Her Majesty's Consuls or
Vice-Consuls, a Notary Public, or an Australian Consular Officer.
(3) The title of the person before whom the declaration is made and the date
when and the place where it was taken or made shall be stated on the
declaration.
(4) The Commissioner may take notice of the signature to a declaration and
of the signature of the person before whom it is made without proof of the
signatures or the fact that the person before whom the declaration is made
holds the office stated on the declaration.
(5) In this regulation, "Australian Consular Officer" means a person
appointed to hold or act in any of the following offices (being an office of
the Commonwealth) in a country or place outside Australia:
(a) ambassador;
(b) high commissioner;
(c) minister;
(d) head of mission;
(e) commissioner;
(f) charge d'affaires;
(g) counsellor or secretary at an embassy, high commissioner's office,
legation or other post;
(h) consul general;
(i) consul;
(j) vice-consul;
(k) trade commissioner; and
(l) consular agent.
PATENTS REGULATIONS - PART XV
PART XV-MISCELLANEOUS
PATENTS REGULATIONS - REG 76
Amendments of documents on request
76. (1) Subject to sub-regulation (6), the Commissioner may, on a request
being made in accordance with Form 30, amend a patent for the purposes of
correcting a clerical error or an obvious mistake.
(2) Subject to sub-regulation (6), the Commissioner may, on a request being
made in accordance with Form 31, amend an entry in the Register for the
purpose of-
(a) correcting a clerical error or an obvious mistake; or
(b) where a name, or an address, entered in the Register has been
changed-changing the name or the address so entered.
(3) Subject to sub-regulations (6) and (7) and, where the relevant
application is an international application, subject to the Treaty, the
Commissioner may, on a request being made in accordance with Form 32, amend,
for the purpose of correcting a clerical error or an obvious mistake or
otherwise, an application, a provisional specification or any other document
or instrument (not being a complete specification) lodged at the Patent
Office.
(4) A request for an amendment under the last preceding sub-regulation shall
be accompanied-
(a) in the case of a request for an amendment of an application for a
patent-by an amended copy of the application made as required by the Act and
these Regulations; or
(b) in any other case-by a certified copy of the document or part of a
document previously lodged on which the amendments that the person making the
request desires to make are shown-
(i) by drawing a line through the matter which it is desired to omit;
and (ii) by underlining the matter which it is desired to add.
(5) Subject to sub-regulation (7), where-
(a) a request for an amendment has been made under this regulation; and
(b) the Commissioner considers that the amendment, if made, will not
materially affect the meaning or scope of the document or instrument, the
Commissioner may make the amendment forthwith.
(6) Subject to sub-regulation (7), where-
(a) a request for an amendment has been made under this regulation; and
(b) the Commissioner considers that the proposed amendment may, if made,
materially alter the meaning or scope of the document or instrument, the
Commissioner-
(c) shall not make the amendment until after-
(i) the expiration of the period during which a person interested may
give notice of opposition to the request in accordance with regulation 77;
(ii) any such notice of opposition has been determined; and
(iii) the document or instrument in relation to which the request is
made is open for public inspection; and
(d) shall, when the documents in relation to which the request is made are
open for public inspection, cause notice of the nature of the proposed
amendment to be published in the Official Journal.
(7) The Commissioner shall not make an amendment-
(a) to a petty patent application-where the amendment would so operate as
to convert the petty patent application to a standard patent application; or
(b) to a standard patent application-where the amendment would so operate
as to convert the standard patent application to a petty patent application.
PATENTS REGULATIONS - REG 77
Opposition to amendment
77. (1) Where the nature of the proposed amendment has been published in
accordance with sub-regulation (6) of the last preceding regulation, a person
interested may, within three months after the advertisement or such further
period not exceeding three months as the Commissioner on application in
accordance with Form 11 allows, give notice of opposition to the request in
accordance with Form 12.
(2) The person giving the notice of opposition shall serve a copy of the
notice on the person who has made the request for the amendment.
PATENTS REGULATIONS - REG 78
Determination of request for amendment
78. (1) The Commissioner shall, after hearing the person who has made the
request, if desirous of being heard, and, where a notice of opposition has
been given, the person who has given notice of opposition, if desirous of
being heard, determine whether the amendment ought to be made.
(2) Proceedings may be instituted in a prescribed court by way of appeal
against a decision of the Commissioner under sub-regulation (1).
PATENTS REGULATIONS - REG 79
Amendment of a patent or entry in the Register by the Commissioner
79. (1) The Commissioner may, on his own motion-
(a) amend a patent or an entry in the Register for the purpose of
correcting a clerical error or an obvious mistake; or
(b) amend an entry in the Register where a correction is necessary by
reason of an increase in renewal fees.
(2) The Commissioner may, if he proposes to amend a patent or an entry in
the Register under the last preceding sub-regulation, give notice to any
person appearing on the Register to have an interest in the patent of his
intention so to do.
(3) Where a person to whom notice is given under the last preceding
sub-regulation wishes to be heard, the Commissioner shall give the person an
opportunity to be heard before the amendment is made.
PATENTS REGULATIONS - REG 80
Hours of business
80. The Patent Office and each sub-office of the Patent Office shall be open
to the public from 10 o'clock in the morning to 4 o'clock in the afternoon of
each day of the week other than-
(a) a Saturday or a Sunday; or
(b) a day observed in the place in which the Patent Office or sub-office of
the Patent Office is situated as a holiday under section 76 of the Public
Service Act 1922.
PATENTS REGULATIONS - REG 81
Notice of exhibition of invention
81. (1) A notice of intention under sub-section (2) of section 158 of the
Act shall be in accordance with Form 33.
(2) The person giving the notice shall furnish with the notice a brief
description, sketch, drawing or model of the invention and such other
information as the Commissioner may require.
(3) The notice, sketch, drawing, model or other information shall not be
published or open to public inspection.
PATENTS REGULATIONS - REG 81A
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.
PATENTS REGULATIONS - REG 81B
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 $65 shall, on
written application made to the Commissioner, be refunded.
PATENTS REGULATIONS - REG 82
Time within which applications for extensions of time are to be lodged
82. An application for an extension of time under these Regulations shall be
lodged at the Patent Office-
(a) before the expiration of the time sought to be extended; or
(b) if the Commissioner is satisfied that special circumstances existed
which prevented the application being made before that time, within such time
as the Commissioner allows.
PATENTS REGULATIONS - REG 83
Directions not otherwise prescribed
83. Where, in the opinion of the Commissioner, it is necessary, for the
proper prosecution or completion of any proceedings, for a person to perform
an act, lodge a document, or produce evidence, which is not provided for by
the Act or these Regulations, the Commissioner may give notice to the person
requiring him to perform the act, lodge the document, or produce the evidence,
specified in the notice.
PATENTS REGULATIONS - REG 83A
Criteria for granting extensions 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 to grant 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.
PATENTS REGULATIONS - REG 84
Where requirements cannot be complied with for reasonable cause
84. Where, under these Regulations, a person is required to do an act or
thing, to sign a document, to make a declaration, to produce to or leave with
the Commissioner or at the Patent Office any document or evidence and the
Commissioner is satisfied that that person is, for reasonable cause, unable to
comply with the requirement, the Commissioner may, subject to such terms as
the Commissioner directs, dispense with the requirement.
PATENTS REGULATIONS - REG 84A
Remission of fees or exemption from payment
84A. Where the Commissioner is satisfied that such action is justified,
having regard to all the circumstances of the case, he may remit, or exempt a
person from the payment of, the whole or any part of the fee.
PATENTS REGULATIONS - REG 85
Exercise of discretionary power by Commissioner
85. (1) The Commissioner shall, before exercising a discretionary power
given to him by the Act or these Regulations adversely to any person, give
that person at least ten days notice of the time and place at which that
person may be heard.
(2) Within ten days after the date when the notice would be delivered in the
ordinary course of post or such longer time as the Commissioner appoints in
the notice, the person notified shall inform the Commissioner whether he
desires to be heard in the matter.
(3) The Commissioner shall, after hearing the person, notify him of the
decision.
PATENTS REGULATIONS - REG 86
Certification of copies
86. Where a person is required by these Regulations to lodge a copy of a
document, the person shall certify as to the truth and correctness of the
document so lodged in such manner as the Commissioner directs.
PATENTS REGULATIONS - REG 87
Request for information under section 30 of the Act
87. (1) A person who desires to be furnished with information as to a matter
referred to in section 30 of the Act may lodge at the Patent Office a request
in accordance with Form 34.
(2) Where the Commissioner provides information under section 30 of the Act
to an applicant for a patent and where the provision of that information
entails an international-type search referred to in Article 15 (5) of the
Treaty, the fee payable in respect of the furnishing of that information is
$490.
(3) Where the Commissioner provides information to a person, other than an
applicant for a patent referred to in sub-regulation (2) and the provision of
that information entails the conduct of a special search, the fee payable in
respect of the furnishing of that information is-
(a) $40; or
(b) such amount as the Commissioner, having regard to the cost of
furnishing that information, determines,
whichever is the greater.
(4) In this regulation "an applicant for a patent" means a person who-
(a) after the commencement of these Regulations, makes an application for a
patent other than an international application; and
(b) requests, within 3 months of making his application for a patent, that
information be provided to him by the Commissioner under section 30 of the
Act.
PATENTS REGULATIONS - REG 88
Address for service
88. (1) Where, in a form in the First Schedule to these Regulations,
provision is made for a statement of an address for service, the person
completing the form shall state an address in Australia at which documents
under the Act or these Regulations may be served on him personally or on a
person specified in the form on his behalf.
(2) A person may, by notice in writing lodged at the Patent Office, change
his address for service to an address specified in the notice.
(3) Where proceedings in relation to which Division 1 of Part XIV of these
Regulations applies are pending, a person who has given notice under the last
preceding sub-regulation shall serve a copy of the notice on all persons
interested in the proceedings.
(4) Service of a document under the Act or these Regulations may be effected
on a person by delivering the document to, or serving the document by post to,
the address for service notified by that person.
PATENTS REGULATIONS - REG 89
Notification of service
89. Where a person is required by the Act or these Regulations to serve on
another person a copy of a notice, the first-mentioned person shall, as soon
as practicable after service of the notice has been effected, notify the
service of the copy of the notice by lodging at the Patent Office a
notification in accordance with Form 35 together with a copy of the notice so
served.
PATENTS REGULATIONS - REG 90
Compliance with forms
90. Strict compliance with the forms in the First Schedule to these
Regulations is not required and substantial compliance is sufficient.
PATENTS REGULATIONS - REG 91
Destruction of documents
91. (1) The Commissioner may order the destruction of documents relating to
applications for patents lodged in the Patent Office not less than twenty-five
years before the date of the order.
(2) The last preceding sub-regulation does not authorize the destruction
of-
(a) the Register of Patents;
(b) documents relating to patents in force; or
(c) documents considered by the Commissioner, or by any Commonwealth
authority concerned with the preservation of archives, to be of legal or
historical interest.
PATENTS REGULATIONS - REG 92
Review of certain decisions by Administrative Appeals Tribunal
92. (1) Applications may be made to the Administrative Appeals Tribunal for
review of decisions made by the Commissioner in exercise of the powers
conferred on him by subregulation 7B (8) or (12), 16F (6) (including its
application to and in relation to the restoration of a lapsed application
under regulation 7B), paragraph 19ZD (1) (b) or 19ZE (1) (b), subregulation
19ZF (2), 19ZL (4), 19ZL (11) or 19ZP (5), or by regulation 44 or 52.
(2) A notice of a decision referred to in subregulation (1) that the
Commissioner is required by the Act or these Regulations to give to a person
whose interests are affected by that decision shall include a statement to the
effect that, subject to the Administrative Appeals Tribunal Act 1975,
application may be made to the Administrative Appeals Tribunal for review of
the decision to which the notice relates by or on behalf of a person whose
interests are affected by the decision.
(3) Failure to comply with the requirements of subregulation (2) in relation
to a decision shall not be taken to affect the validity of the decision.
(4) A notice referred to in subregulation (2) may be sent by pre-paid
ordinary post to the person concerned at the person's address last known to
the Commissioner.
PATENTS REGULATIONS - SCHEDULE 1
SCH
THE SCHEDULES
FIRST SCHEDULE
FORM 1
Regulation
9
COMMONWEALTH OF AUSTRALIA
Patents Act 1952
APPLICATION FOR A STANDARD PATENT OR A STANDARD PATENT OF ADDITION
I, of
a standard patent
hereby apply for the grant of
patent of addition
for an invention entitled
provisional
which is described in the accompanying specification.
complete
(To be included in the case of a Convention application)
Details of basic application(s)-
Number of basic application
Name of Convention country in which basic application was filed
Date of basic application
(To be included in the case of an application made by virtue of section 51)
Number of original application
Person by whom made
(To be included in the case of an application for a patent of addition)
I request that the patent may be granted as a patent of addition to the
patent applied for on Application No. Patent No.
in the name of
I request that the term of the patent of addition be the same as that for
the main invention or so much of the term of the patent for the main invention
as is unexpired.
My address for service is
Dated this day of 19 .
(Signature)
(To be included where application is made by a person other than the
applicant
for, or the patentee under, the patent for the main invention)
I,
applicant for Application No.
the hereby consent to this application.
patentee of Patent No.
Dated this day of 19 .
(Signature)
To:
The Commissioner of Patents
--------
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
my name
is to proceed in
my name and 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 .
(Signature) To:
The Commissioner of Patents
--------
FORM 1AA
Sub-regulation 9
(1A) COMMONWEALTH OF AUSTRALIA
Patents Act 1952
APPLICATION FOR A STANDARD PATENT IN RESPECT OF EXCLUDED INVENTION
I, of,
apply, by virtue of sub-section 191 (3) of the Statute Law (Miscellaneous
Amendments) Act (No. 1) 1982, for the grant of a standard patent for an
invention entitled which is described in the accompanying complete
specification.
is
The application for the grant of a patent of addition.
is not
The application is made in respect of an invention disclosed in the
complete specification lodged in respect of Application No. in
the name of but excluded
section 49
before 1 July 1979, by an amendment under of the Patents
section 52D
Act 1952, from that complete specification.
(To be included in the case of an application for a patent of addition)
I request that the patent be granted as a patent of addition to
the patent applied for in Application
Patent
No. in the name of .
I request that the term of the patent of addition be the same as that for
the
main invention or so much of the term of the patent for the main invention as
is unexpired.
My address for service is.
Dated this day of 19 .
(Signature)
(To be included in the case of an application for a patent of addition-where
the applicant is not the patentee under, or the applicant for, the patent for
the
invention in respect of which the complete specification from which the
invention the subject of this application was excluded was lodged)
applicant for the patent applied for in Application No.
I, , the
patentee of Patent No.
hereby consent to this application.
Dated this day of 19 .
(Signature)
To:
The Commissioner of Patents
--------
FORM 2
Sub-regulation 9
(2) COMMONWEALTH OF AUSTRALIA
Patents Act 1952
APPLICATION FOR A PETTY PATENT
I, of
hereby apply for the grant of a petty patent for an invention entitled
which is described in the accompanying petty patent specification
(To be included in the case of a Convention application)
Details of basic application(s)-
Number of basic application
Name of Convention country in which basic application was filed
Date of basic application
(To be included in the case of an application made by virtue of section 51)
Number of original application
Person by whom made
My address for service is
Dated this day of 19 .
(Signature) To:
The Commissioner of Patents
--------
FORM 3
Regulation 10
(2) COMMONWEALTH OF AUSTRALIA
Patents Act 1952
APPLICATION FOR THE GRANT OF A STANDARD PATENT OF ADDITION IN LIEU OF AN
INDEPENDENT STANDARD PATENT
I,, hereby request that Patent No.of which I am the patentee be revoked and
that in lieu thereof a patent of addition to Patent No. of which I am also
the
patentee be granted to me.
Dated this day of , 19 .
(Signature) To:
The Commissioner of Patents
--------
FORM 5A
Regulation
16 COMMONWEALTH OF AUSTRALIA
Patents Act 1952-19
REQUEST FOR EXAMINATION
I, , of,
a modified examination
hereby request the making of of Application
an examination
and of the complete specification lodged in respect of that application.
(The following paragraph is to be completed only if 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
--------
FORM 6
Regulation 11
(2) COMMONWEALTH OF AUSTRALIA
Patents Act 1952-19
REQUEST UNDER SECTION 142AA
In pursuance of section 142AA of the Patents Act 1952-19 , I hereby request
you to disregard, for the purposes of sections 141 and 142 of that Act, an
earlier application made for a patent or similar protection in respect of the
invention the subject of the Convention application lodged on
, and, in support of my request, state-
(Here insert statements that show that section 142AA is applicable)
Dated this day of , 19 .
(Signature) To:
The Commissioner of Patents
--------
FORM 7
Regulation 12
(1) COMMONWEALTH OF AUSTRALIA
Patents Act 1952-19
DECLARATION IN SUPPORT OF AN APPLICATION FOR A PATENT
In support of the Application made by
for a patent for an invention entitled
I, , of , do solemnly and sincerely declare as follows:
1. I am the applicant for the patent.
(or, in the case of an application by a body corporate)
1. I am authorized by, the applicant for the patent to make this
declaration
on its behalf.
2. I am the actual inventor of the invention.
(or, where a person other than the inventor is the applicant)
2. A.B., of, is the actual inventor of the invention and
I am entitled
the facts upon which is entitled
the
to make the application are as follows:
Declared at this day of , 19 .
(Signature of
Declarant) To:
The Commissioner of Patents
--------
FORM 8
Regulation 12
(2) COMMONWEALTH OF AUSTRALIA
Patents Act 1952-19
DECLARATION IN SUPPORT OF A CONVENTION APPLICATION FOR A PATENT
In support of the Convention application made for a patent for an invention
entitled
I, , of , do solemnly and sincerely declare as follows:
1. I am the applicant for the patent.
(or, in the case of an application by a body corporate)
1. I am authorized by , the applicant for the patent to make this
declaration on its behalf.
2. The basic application as defined by section 141 of the Act was made in
on the day of , 19 ,
by
3. I am the actual inventor of the invention referred to in the basic
application.
(or, where a person other than the inventor is the applicant)
3. A.B. of , is the actual inventor of the
I am entitled
invention and the facts upon which is entitled
the
to make the application are as follows:
4. The basic application referred to in paragraph 2 of this Declaration was
the first application made in a Convention country in respect of the
invention
the subject of the application.
(or, where a request is made under section 142AA of the Patents Act 1952-19 ,
for an earlier application made in a Convention country to be disregarded)
4. (1) The basic application referred to in paragraph 2 of this Declaration
was not the first application made in a Convention country in respect of the
invention the subject of the application.
(2) An earlier application in respect of the invention the subject of the
application was made in on
(3) A request has been made to you under section 142AA of the Patents Act
1952-19 to disregard that earlier application.
(Here set out in succeeding sub-paragraphs the facts that show that section
142AA is applicable)
(4) Except as stated in this paragraph, the basic application referred to
in
paragraph 2 of this Declaration was the first application made in a
Convention
country in respect of the invention the subject of the application.
Declared at this day of , 19 .
(Signature of
Declarant) To:
The Commissioner of Patents
--------
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 is
Dated this day of , 19 .
(Signature) To:
The Commissioner of Patents
--------
FORM 9
Regulation 13
(1) COMMONWEALTH OF AUSTRALIA
Patents Act 1952-19
PROVISIONAL SPECIFICATION FOR THE INVENTION ENTITLED
This invention is described in the following statement:
Dated this day of , 19 .
(Name of
Applicant) --------
FORM 10
Regulation 13
(2) COMMONWEALTH OF AUSTRALIA
Patents Act 1952-19
COMPLETE SPECIFICATION FOR THE INVENTION ENTITLED
The following statement is a full description of this invention, including
the best method of performing it known to me:
The claims defining the invention are as follows:
Dated this day of , 19 .
(Name of
Applicant) ---------------------------------
FORM 10A
Sub-regulation 13
(3) COMMONWEALTH OF AUSTRALIA
Patents Act 1952
PETTY PATENT SPECIFICATION FOR THE INVENTION ENTITLED
The following statement is a full description of this invention, including
the best method of performing it known to me:
The claim defining the invention is as follows:
Dated this day of 19 .
(Name of
applicant) To:
The Commissioner of Patents
--------
FORM 11
Regulations 7B (14),
16B,
16F, 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
section of the Patents Act 1952-19 time
under for an extension the period of
regulation of the Patents Regulations acceptance
of months from to
Application
in respect of
Patent No.
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