The Glad Products Company

[2006] APO 26

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No.  2004232791 in the name of The Glad Products Company

Title:          Ventable Storage Bag

Action:          Request to the Commissioner to issue a notice under Regulation 3.5A(2) of the Patents Regulations in respect of missing drawings

Decision:          Issued        12 July 2006    .

Abstract

The applicant of a PCT application which entered the national phase in Australia filed a request to the Commissioner to issue a notification under Regulation 3.5A(2) of the Patents Regulations in respect of missing drawings. This request had been initially rejected by the Office on the basis that the provisions of regulation 3.5A(2) do not apply to a PCT application. The applicant questioned the statutory basis for the Office’s decision and filed a number of submissions with arguments in support of its request, culminating in a hearing before a delegate of the Commissioner.

It was found that in the event of the Commissioner having omitted to notice when according a filing date to an application for a patent that a part of the specification was missing, any subsequent drawing of the Commissioner’s attention to missing parts of the specification by the applicant could not undo the earlier omission by the Commissioner such as to require her to issue a notice under subregulation 3.5A(2). This was accentuated in the case of the present application by the fact that it is a PCT application and has therefore already been accorded an international filing date in accordance with the purpose and operation of the PCT. This international filing date of the PCT application is taken to be its national filing date by operation of subsection 88(4) of the (Australian) Patents Act, and thus takes the question of the filing date outside the reach of regulations 3.5 and 3.5A dealing with filing dates accorded by the Commissioner.

Consequently, the applicant’s request for notice under regulation 3.5A(2) was refused.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 2004232791 by The Glad Products Company and a request by the applicant to the Commissioner to issue a notice under Regulation 3.5A(2) of the Patents Regulations in respect of missing drawings.           

BACKGROUND

The patent application

1.     The Glad Products Company (“the applicant”) filed an international application PCT/US2004/008919 on 24 March 2004, claiming priority from US provisional application 10/404,251 filed on 31 March 2003.  PCT/US2004/008919 designates, inter alia, Australia, and it entered the national phase in Australia on 16 September 2005. The international application has been subjected to an international search by ISA/US and to international preliminary examination by IPEA/US.  As yet, no request for the national examination has been filed by the applicant.

The request under Regulation 3.5A(2) and submissions in respect of the matter

2.     On 16 November 2005 the patent attorney for the applicant, Kelly Bloomfield of Pizzeys, Brisbane, wrote to the Commissioner requesting her to issue a notice under Regulation 3.5A(2) of the Patents Regulations in respect of missing drawings. The grounds on which the request was made were as follows:

“We wish to draw the Commissioner’s attention to the fact that a part of the specification of the above referenced Australian patent application is missing. Upon reading the ‘Brief Description of the Drawings’ and ‘Detailed Description of the Preferred Embodiments’ sections of the description it is clear that the specification should include drawings. However, there were no drawings published with the PCT pamphlet. We kindly request that the Commissioner issues a notification under Regulation 3.5A(2) in respect of these missing parts.”

3.     IP Australia responded to this request on 25 November 2005, stating that:

“We are unable to ascertain whether the drawings were actually filed or not filed by the US receiving Office. The specification we hold in the case file is that which was published by WIPO on 4 November 2004. This specification does not indicate any drawings. In the circumstances, you can request an amendment to include drawings if they are required.”

4.     The applicant’s reply, on 30 November 2005, was:

“Under Regulation 3.5A of the Patents Regulations where an application has been filed ‘but a part of the specification is missing’, the Commissioner MUST give the applicant notice in writing telling them that a part of the specification is missing and asking for the missing parts.

Our request for issue of such a notice is not based on drawings being filed by the Applicant and not published with the PCT pamphlet, but rather on the basis that the drawings constitute ‘missing parts’ of the specification. It is quite clear that the drawings are missing from the complete specification as paragraphs 11 to 19 provide a ‘brief description’ of the figures, while paragraphs 20 to 46 of the specification describe the current invention while referring to the drawings. Thus, contrary to the statement that the ‘specification does not indicate any drawings’, we strongly submit that it is clear that the specification is indeed missing drawings and as such the drawings constitute ‘missing parts’ for the purpose of Regulation 3.5A.”

5.     While in the above the applicant has emphasised the word “must” used in subregulation 3.5A(2),  it needs to be mentioned that the requirement it relates to is conditioned upon the precondition of “if the Commissioner notices that a part of the specification is missing”.

6.     The office thereafter advised the applicant that

“this application comes under the Rules and Regulations of the PCT and should have already gone through a formalities process when filed with the US receiving Office. As such Regulation 3.5A(2) does not apply.”

7.     In response, the applicant requested a clarification of the Office practice in regard to PCT applications submitting that

“an application filed under Section 88 will, by the virtue of Subsection 88(1) be subjected to Section 29 and thus regulation 3.5A should apply to this application”.

To support this statement, the applicant presented the following argument:

“Subsection 88(1) states the following:

‘Subject to this section, a PCT application must, for the purposes of this Act other than this Part, be treated as a complete application under this Act for a standard patent.’

Subsections 88(2) to 88(6) do not disqualify the current application from s88(1).

Subsection 29(1) states that a person may apply for a patent by filing certain documents in accordance with the regulations, in particular regulation 3.1 specifies the prescribed documents which must be filed before acceptance. In the case of the current application a patent request and abstract were filed with the International Bureau. It should be noted that the Act or the Regulations do not specify the body with which these documents should be filed.  In accordance with regulation 3.1(2) a Notice of Entitlement will be filed before acceptance (3.1(2)(a) and (b)); regulations 3.1(2)(c) to (g) do not apply to this application.
Subsection 29(2) states that the application may be “a provisional application or a complete application”. Furthermore, as the application is clearly now considered a “complete application” under the Australian Patents Act, Section 30 applies and allows determination of the filing date. As the Commissioner would be aware the filing date is determined with reference to both regulations 3.5 and 3.5A. Thus, allowing an Applicant filing an Australian complete application via the PCT to avail themselves of the provisions of regulation 3.5A.

Consequently, it is submitted that as the Act specifies that the current application MUST be treated as a complete application in accordance with the Act, and as there is no specific exclusion from regulation 3.5A of the AU complete applications filed via the PCT, this regulation must apply to the current application. We reiterate our request for the Commissioner to issue a notification under regulation 3.5A.”

8.     The Office responded stating that its previous advice was correct, and that

“a PCT application is treated as a complete application subject to the provisions of Chapter 8, Part 1 and the modified application of the Act as set out by regulations 8.1 to 8.4. None of these enables the application of the provisions of regulation 3.5A to a PCT application. Accordingly, there is no statutory basis for your request that the Commissioner issue a notification under regulation 3.5A, as we have previously advised. If you wish to further pursue this matter you will need to request a hearing.”

The hearing

9.     The applicant requested a hearing on 24 April 2006. The hearing was held via telephone in Canberra on 7 June 2006.  The applicant was represented by Christopher Goodhew and Nick Finnie, patent attorneys of Pizzeys, Brisbane.  Ms Bloomfield filed written submissions for the hearing on 5 June 2006.  However, she was unable to take part in the hearing due to unforeseen circumstances.

10.     Prior to the hearing the Office advised the attorneys for the applicant of the issues which it felt should be addressed at the hearing.  These were put as follows:

1.Having regard to the intention behind of regulation 3.5A, can it operate to change a filing date which has already been established (by operation of reg 3.5), and, in particular, in the absence of the Commissioner having noticed the missing part in establishing the filing date or the missing part being filed in the time limit provided by regulation 3.5A(4)?  

2.Is the Commissioner obliged to issue a notice under regulation 3.5A(2) at any time if the circumstances of a missing part are drawn to her attention even though this has the effect of circumventing the time limits specified in 3.5A(4)(b)?

3.Does Section 88(1) in any event exclude the operation of Regulation 3.5 and 3.5A since the application has been accorded an international filing date under the PCT(and therefore, by operation of section 88(4), a filing date under the Australian Patents Act) by operation of Part 1 of Chapter 8 of the Patents Act? If not this would appear to involve the Commissioner in overturning a decision (as to the filing date) by another entity (the RO) in ignorance of the relevant facts and contrary to the purpose and operation of the PCT.

11.     At the hearing, Mr Goodhew commenced by presenting the main arguments contained in the applicant’s written submissions filed on 5 June 2006. These arguments, quoting from the written submissions, were as follows:

“A. Australia’s obligations under the PCT and the Paris Convention require that we are to afford foreign Applicants the same treatment as Australian national Applicants. In light of this, how can an application entering Australia via PCT be denied the right to utilise regulation 3.5A while this is available to locally originating direct applications?

B. Similarly, if regulation 3.5A only applies to applications directly filed in Australia, it follows that there will automatically be a disadvantage to an Australian national applicant filing a PCT application and entering the national phase in Australia via same, rather that filing a direct AU application. Certainly this inequity in Applicant treatment can not be justified by these regulations.

C. The two points above obviously also invoke a natural justice argument.

D. Section 88 merely facilitates the processing of entry of Australian national phase PCT applications into the Australian patent process. It does not exclude the operation of any other section or regulation but instead it allows for a modified application where necessary. The section clearly does not exclude the operation of any other section or regulation. For example, s88(1) facilitates the entry of the application and the treatment of same as a ‘complete application’ under the Act. It in no way excludes other sections or regulations from applying to the application. Similarly, Section 88 (4) merely allows for a filing date under Section 30 to be accorded to a national phase PCT application which has already had matters of form and general content (reg. 3.5 matters) considered.

E. The APO has previously stated that none of the provisions of Chapter 8, Part 1, or the regulations relevant thereto, enable the application of regulation 3.5A to a PCT application. We submit that rather than various regulations requiring ‘enablement’ to allow them to apply to PCT applications, that all sections and regulations should apply unless specifically excluded. If the alternative position it to be taken and applied to the Act then no section or regulation should apply to PCT applications other than those specifically referred to. The result of this would be that PCT applications would not for example, be examined, accepted or subject to opposition as the relevant sections and regulations are not specifically ‘enabled’ by the provisions of Chapter 8, Part 1 or regulations 8.1 to 8.4.

F. Regulation 3.5A is a stand-alone regulation that is not reliant upon any other section or regulation to allow it to be invoked. In particular we point out that regulation 3.5A(1) states that this regulation applies if ‘the information mentioned in regulation 3.5(1) has been filed in respect of the application...’ It does not require that regulation 3.5(1) applies, nor does it require that specifically section 30 or section 88 must apply. It simply provides a way for an Applicant to introduce matter which was obviously ‘missing’ from the complete application, with the ability to retain their filing date if the ‘missing parts’ were present in a priority document.”

12.     On the question of whether it was open to national Offices to vary a decision made by a receiving Office as to filing date, Mr Goodhew drew my attention to Article 25 of the PCT (Review by Designated Offices) as sanctioning the reviewing by designated Offices of decisions taken by receiving Offices.  I note however, that Article 25 is confined to the situation where the receiving Office has refused to accord an international filing date or a declaration has been made that an international application has been withdrawn, and does not relate to the situation at hand where an international filing date has been accorded the application.

APPLICABLE LAW

13.     The legislation central to this matter is regulations 3.5 and, even more so, 3.5A of the Patent Regulations 1991.  These state as follows:

3.5 Filing date


(1) Subject to this regulation, the filing date of a patent application is the date on which the following information is filed:

(a)information in English that indicates that what is filed is intended to be an application for a patent;

(b)information that allows the identity of the applicant to be established or allows the applicant to be contacted by the Patent Office;

(c)information that appears to be a description.

(2) For paragraph (1) (c), a description:

(a)does not have to be in English; and

(b)may be a drawing; and

(c)may be a reference, in English, to an earlier patent application filed in Australia or in a Convention country.

(3) For paragraph (2) (c), the earlier patent application does not have to be in English.

(4) If all of the information mentioned in subregulation (1) is not filed in respect of an application, the Commissioner must give the applicant notice in writing:

(a)telling the applicant that all of the information mentioned in subregulation (1) was not filed in respect of the application; and

(b)      asking the applicant to file the additional information required.

(5) If an applicant to whom a notice under subregulation (4) has been given does not file the additional information within 2 months from the date of the notice, the application is taken not to have been filed.

(6) Subregulation (7) applies if an applicant to whom a notice under subregulation (4) has been given files the additional information within 2 months from the date of the notice.

(7) For section 30 of the Act, the filing date of the patent application is the date on which the additional information is filed.

3.5A Filing date: incomplete specifications

(1) This regulation applies if the information mentioned in subregulation 3.5 (1) has been filed in respect of a patent application but a part of the patent specification is missing.

(2) If the Commissioner notices that a part of the specification is missing, the Commissioner must give the applicant notice in writing:
(a)       telling the applicant that a part of the specification is missing; and
(b)       asking the applicant to file the missing part.

(3) The missing part must be incorporated into the specification if, within the period applying under subregulation (4), the applicant:

(a)files the missing part; or

(b)if the applicant claims priority from an earlier basic application or associated provisional application — files:

(i)        the missing part; and

(ii)a copy of the earlier application that contains, and indicates the location of, the missing part; and

(iii)      a translation of the earlier application if it is not in English.

(4) For subregulation (3), the period is:
(a)       if a notice is given under subregulation (2) — 2 months from the date of the notice; or
(b)       in any other case — 2 months from the filing date.

(5) For section 30 of the Act, the filing date of the application is:

(a)if paragraph (3) (a) applies — the date on which the missing part is filed; and

(b)if paragraph (3) (b) applies — the date that would have been the filing date if the missing part had not been incorporated.

(6)       If paragraph (5) (a) applies, the Commissioner must tell the applicant of the new filing date.

(7) Despite paragraph (5) (a), if within 1 month after being told of the new filing date, the applicant withdraws the missing part from the specification, the filing date of the application, for section 30 of the Act, is the date that would have been the filing date if the missing part had not been incorporated.

14.     At present, there is no case law specific to the provisions of regulation 3.5 or regulation 3.5A to provide any guidance on how these provisions should be applied. Regulation 3.5 was substantially amended, and regulation 3.5A was introduced, in 2001 in order to make the Australian patent legislation compliant with the Patent Law Treaty, even though Australia has not yet ratified that treaty.  The Official Notice advising of the changed filing date requirements adequately conveys the effect of the changes to regulations 3.3 and 3.5A.  It states:

“Filing date requirements
The regulations have been expanded to cover the PLT requirements and considerations relevant to according a filing date. [It may be noted that these provisions essentially protect the interests of filers - whether that be by way of ignorance of the requirements, or by way of difficulties/errors/omissions that adversely impact the filing. It would not be expected that regular users of the system would routinely rely on the new provisions.]
To obtain a filing date [Reg 3.5], the following is required:

·Name and address of applicant;

·An indication that a patent is being sought; and

·Something which, on the face of it, appears to be a description. For this purpose, a drawing will suffice.

The specification need not be in English in order to get a filing date - although a formality objection will arise. The application can be filed by way of cross-reference (Atlas Copco), but replacement text must be filed. [Reg 3.5(2)]
Regulation 3.5A includes provisions to deal with 'missing parts' of the description. Generally:

·incorporation of a missing part will result in a later filing date;

·a missing part that has been added can be removed, with reversion of the filing date to the original date; and

·the initial filing date can be maintained if the missing part was fully contained in the priority document. ”

15.     It is the latter provision which the applicant wants to exploit in the present case in order to file the missing drawings and, at the same time, to maintain the initial filing date because the missing drawings were contained in the priority document. Therefore, a key issue in this case is to determine whether the provisions of Regulation 3.5A can be invoked in the way the applicant seeks to do.

16.     In regard to international applications under the PCT, such applications are filed with a prescribed receiving Office (which in the present case is the US Patent Office) which performs a formalities check as provided in Articles 10 & 11 of the PCT.  In particular, an international filing date is accorded by the receiving Office under Article 11 of the PCT (Filing Date and Effects of the International Application), provided the requirements of Article 11(1) are met.  In particular,  Articles 11(1)(iii)(d) and (e) require that the international application contain the following :

●   a part which on the face of it appears to be a description;
●   a part which on the face of it appears to be a claim or claims.

17.     Article 11 does not require a drawing or drawings to be contained in an international application. However, the PCT does provide provisions for filing “missing drawings” under Article 14 (Certain defects in the International Application).  According to Article 14(2):

If the international application refers to drawings which, in fact, are not included in that application, the receiving Office shall notify the applicant accordingly and he may furnish them within the prescribed time limit and, if he does, the international filing date shall be the date on which the drawings are received by the receiving Office. Otherwise, any reference to the said drawings shall be considered non-existent.

18.     Subject to Article 64(4), any international application fulfilling the requirements listed in Article 11(1)(i)-(iii) is accorded an international filing date which is subsequently considered to be the filing date in each designated State when the PCT application enters the national phase in this State [see Article 11(3)]. Thus, a PCT application entering the national phase in Australia has already been accorded a filing date.

DECISION

19.     The very first steps along the path to the granting of a patent for an invention are, firstly, for the applicant-to-be to file their application and then, secondly, for the Commissioner to establish a filing date for the application.

20. The sections of the Patents Act which deal with the filing date of an application are sections 30 and 88(4). Section 30 deals with filing dates on a general level, and simply directs one to the regulations to ascertain how a filing date is determined. The relevant regulations are 3.5 and 3.5A. Section 88(4) deals with the special case of national phase PCT applications which have already had a filing date accorded to them in the international phase.

21.     Regulation 3.5 is the principle regulation dealing with filing dates.  Unsurprisingly, the filing date is defined as the date by which certain minimal essential information is filed.  Subregulation 3.5(1) (supra) sets out what that essential information is.

22.     Ordinarily, the filing date of an application will be its original date of filing.  However, regulation 3.5 recognises that mishaps will occur, and takes into account the possibility that the application will not include all the essential information required by subregulation 3.5(1), and allows the applicant the possibility of repairing its application by filing the missing information.  However, it is not a case of “getting something for nothing”, as the trade-off for the applicant being allowed to repair its application in this way is that it forfeits its original date of filing as its filing date and is instead accorded the filing date of the missing information as its filing date (subregulation 3.5(7) (supra)).  This strict approach is consistent with the crucial role played by the filing date in the patents system.

23.     While it is not explicit in regulation 3.5, it is glaringly implicit that it is the Commissioner who is to determine the filing date of an application, and it is also implicit that it is therefore incumbent upon the Commissioner to investigate whether the application includes all the information referred to in subregulation 3.5(1).  It is standard operating procedure, because of administrative efficiency and the pivotal role played by the filing date in the patents system, to carry out this investigation and accord a filing date as soon as possible after filing of the application.

24.     In similar vein, regulation 3.5A recognises that another form of mishap can occur in filing an application which, while not preventing a filing date being established for the application, it would be beneficial to the overall operation of the patent system to remedy.  That mishap is for the “description” referred to in paragraph 3.5(1)(c) (supra)(which in regulation 3.5A has been elevated to “patent specification”) to have a part missing from it.  The applicant is allowed to file the missing part within tight time limits, and in ordinary circumstances an appropriate variation is made to the filing date of the application to take into account the belated filing of the missing part.  However, no variation is made if the missing part (that is, missing from the complete specification) is present in a priority document.  This, in effect, is a small extension to the priority period, although if the applicant’s take on the legislation were to be adopted, then effectively a much larger extension would be available.

25.     Whether or not to accede to the applicant’s request to give the notice referred to in subregulation 3.5A(2) in my view turns upon what is entailed by the verb “notices” in that subregulation.  On my reading of regulation 3.5A, it is implicit that “notices” in subregulation 3.5A(2) is to be understood as being confined to whatever the Commissioner happens to notice in the course of conducting her investigation that is impliedly required under regulation 3.5, namely, of whether all the information referred to in subregulation 3.5(1) is present in the application.

26.     As indicators in support of this view, I observe the following:

• There is a specific reference to subregulation 3.5(1) in subregulation 3.5A(1).  While Mr Goodhew is undoubtedly correct in his assertion that 3.5 and 3.5A are separate regulations having separate functions, the regulations are linked by that specific reference.  Thus once a filing date has been established in accordance with regulation 3.5 (albeit, perhaps, tentatively, pending any actions taken by the applicant under regulations 3.5(5), 3.5(6), 3.5A(3) and 3.5A(7)), the circumstances available for the Commissioner to notice missing documents in accordance with subregulation 3.5A(2) would appear to no longer prevail.

• The interpretation of regulation 3.5A expressed in the previous dotpoint is reinforced by paragraph 5 of Article 5 of the Patent Law Treaty, which states:

“(5) [Notification Concerning Missing Part of Description or Drawing] Where, in establishing the filing date, the Office finds that a part of the description appears to be missing from the application, or that the application refers to a drawing which appears to be missing from the application, the Office shall promptly notify the applicant accordingly. [underlined emphasis added]

As already mentioned, the purpose of regulation 3.5A is to implement paragraphs 5 and 6 of Article 5 of the Patent Law Treaty.  While there is no doubt that it is open to a contracting state to enact provisions more generous than the Patent Law Treaty requirements, the fact that Australia hitherto had no missing part provisions in its legislation points towards this not being the case in the present situation.

• If the applicant’s view of what is encompassed by the term “notices” in subregulation 3.5A(2) was accepted, this would render paragraph 3.5A(4)(b) otiose, since an applicant could always circumvent the time limit set down by it by taking the route which the applicant has taken in the present matter. Also, as mentioned above, it would have the effect of extending the time limit upon which an applicant can have recourse to relying upon what is disclosed in a priority document for filing a missing part from two months to a much greater period.

• The term “notices”, itself, has the connotation of the noticer becoming aware of something of which they were hitherto unaware.  It also has connotations of the noticer becoming aware of by direct observation.  This suggests that the act of noticing by the Commissioner of the missing part in accordance with subregulation 3.5A(2) must be in the course of vetting the application for compliance with regulation 3.5.  For the Commissioner to be, for example, subsequently informed of a missing part (as in the present case) rather than becoming aware of it directly would appear to preclude her from thereupon “noticing” the fact of that missing part.

• It is, as I have previously noted, important to the efficient overall operation of the patent system that the filing date for an application be established early in the piece.  While in the present case this is not a factor, since the filing date would be determined by paragraph 3.5A(5)(b) and would be unchanged from that originally accorded, the possibility that large adjustments to the filing date would be permitted were the applicant’s view of the legislation to be valid, points to the interpretation I have placed upon “notices” in subregulation 3.5A(2) as being the appropriate one.

27. Even if I am wrong as to the proper interpretation of regulation 3.5A, the circumstance appertaining to the present application of it being a PCT application would in any case appear to remove it from the reach of regulation 3.5A. Subsection 88(1) of the Patents Act states:

“Subject to this section, a PCT application must, for the purposes this Act other than this Part, be treated as a complete application under this Act for a standard patent.” [emphasis added]

28.     Subsection 88(4) states that:

“The filing date of a PCT application is to be taken to be its international filing date.”

29. Due to the use of the words “subject to this section” in subsection 88(1), it seems beyond question that subsection 88(4), being a subsection of section 88, must prevail, that is, the applicant’s contention that subsection 88(1) draws in sections 29 and 30, and the latter in turn draws in the regulations (specifically, regulations 3.5 and 3.5A) appears to ignore the seemingly clear-cut meaning of subsection 88(4). But in any case, apart from this I note that subsection 29(1) refers to “filing…….a patent request and such other documents as prescribed” and regulations 3.5 and 3.5A refer to “filed” information. “File” in these contexts appears to refer to the physical act of filing. I note that the dictionary to the Patents Act defines “file” as “file with the Patent Office”. The fact that subsection 88(3) requires that

“The description, drawings and claims contained in a PCT application must be treated as a complete specification filed in respect of the application”

cannot alter the fact that the description, drawings and claims of a PCT application are not an actual filing in the Australian Patent Office, but merely provides that they should be treated as such.

30.     In the present case, the PCT application was filed with the US Patent and Trademark Office as receiving Office and not with the Australian Patent Office.

31.     While Rule 82ter of the Regulations under the PCT permits a national Office to correct under national law an error made by a receiving Office in relation to an international filing date if the applicant proves that such an error has been made, no error has been proven, or even claimed, by the applicant in the present case.

32.     In her written submissions to the hearing, Ms Bloomfield listed six items – labelled A to F – responding to the letter from the Commissioner of Patents dated 31 May 2006.  Items A to C were concerned with the inequitable treatment afforded foreign applicants compared with Australian national applicants.  I fail to see the basis for this.  Under the Australian patent system both Australian nationals and overseas applicants have equal rights to file applications in Australia via the national route, which is the one Ms Bloomfield alleges is favoured.  It is true that the formality requirements under national law and the PCT are different, and in the case of missing parts this is obviously undesirable.  However, this situation has been addressed, and on 1 April 2007 the PCT regulations will be aligned with the PLT in respect of missing part requirements.

33.     I believe that I have already dealt with items D and E, except to say that by its very nature subsection 88(4) appears to displace section 30 and regulations 3.5 and 3.5A.  However, many other sections and regulations remain applicable.

34.     I agree with item F, except to the extent that I have indicated earlier in my decision.  Regulations 3.5 and 3.5A are interrelated in that unless subregulation 3.5(1) is met the filing date referred to in regulation 3.5A will be non-existent.

CONCLUSION

35.     I find that it is not open to the Commissioner of Patents to issue a notice under subregulation 3.5A(2) in the circumstances of the present matter. I therefore refuse the request by the applicant to issue a notice under subregulation 3.5A(2) in respect of application 20042327891.

E. J. Knock

Delegate of the Commissioner of Patents

Patent attorneys for the applicant :  Pizzeys, Brisbane