The Patents Regulations, 1908 (Cth)
STATUTORY RULES.
PROVISIONAL REGULATIONS UNDER THE PATENTS ACT 1903 AND THE PATENTS ACT 1906.
I,
THE Governor-General in and over the Commonwealth of Australia, acting with the
advice of the Federal Executive Council, hereby certify that, on account of
urgency, the following Regulations under the
Dated this 8th day of January, One thousand nine hundred and nine.
DUDLEY,
Governor-General,
By His Excellency’s Command,
FRANK G. TUDOR,
Minister of State for Trade and Customs.
SHORT TITLE
1. These Regulations may be cited as “The Patents Regulations, 1908.”
INTERPRETATION.
2. In these Regulations—
“The Act” means the
Patents Act 1903.“Justice of the Peace” means a Justice of the Peace of the Commonwealth, or part of the Commonwealth, or of a State or part of a State.
“The Official Journal” means the
Australian Official Journal of Patents. “Foreign application” means an application by a person for the protection of his invention in the United Kingdom, or the Isle of Man, or in any British Possession or Foreign State to which all or any of the provisions of section 121 with or without variations or additions are for the time being applicable.
C.275.—Price 1s. 6d.
FEES.
3.—(1.) The fees to be paid under the Act and these Regulations shall be those specified in the First Schedule, and shall be paid in cash at the Patent Office. All remittances sent by post shall be by money order, postal note, or bank draft, and shall be made payable to the Commissioner of Patents.
(2.) Where any fee is payable in respect of any act or document, the Commissioner may refuse to permit or perform the act, or to receive or issue the document, as the case requires, until the fee payable is paid.
(3.) The prescribed fee for preparation of the patent for sealing shall be paid within the time allowed for the sealing of the patent, and if such fee be not paid no patent shall be sealed.
FORMS.
4. The forms contained in the Second Schedule may, as far as they are applicable, be used in any proceeding under the Act or these Regulations to which they are appropriate.
HOURS OF BUSINESS.
5. Except in the case of holidays
observed under the
APPLICATIONS.
6. Every application for a patent must be left at or sent to the Patent Office, and may be sent by prepaid letter through the post, and must in every case be accompanied by the prescribed fee.
7.—(1.) Every application for a patent left at the Patent Office shall be numbered in the order of its receipt.
(2.) Every application for a patent sent by prepaid letter through the post shall, as far as practicable, be opened and numbered in the order in which the letter containing it was delivered at the Patent Office.
8. Every application for a patent shall be accompanied by a statement of an address for service to which all notices, requisitions, and communications of every kind may be sent by the Commissioner. The address for service shall be within the Commonwealth, and, if the Commissioner so requires, in or near to the city in which the Patent Office is situate.
9. Every application for a patent must be signed by all the applicants, each of whose signatures must be attested by a witness.
10. An application for a patent by a body corporate shall be signed or executed in such a manner as to bind the corporation, and shall be signed by some person who shall be personally responsible for the truth of the statements therein contained.
11.—(1.) Where the applicant for a patent includes in his specification more than one invention, he may, before acceptance of the application, or after refusal to accept the application on the ground that the specification includes more than one invention, amend his complete specification so as to include one invention only, and make application for a separate patent for each of the other inventions.
(2.) Every such new application shall, if the applicant notify his desire to that effect to the Commissioner, bear the date of the original application, and shall, together therewith, be proceeded with in the manner prescribed as if it had been originally made on that date.
12. Every application for an extension of time for lodging a complete specification shall be made in the Form C2 in the Second Schedule, and shall state in detail the circumstances in and grounds upon which the extension is applied for, and the Commissioner may require the applicant to substantiate his statements by such proof as the Commissioner thinks necessary.
13. The statement of the invention claimed, with which a complete specification must end, shall be clear and succinct as well as separate and distinct from the body of the specification.
14. Every complete specification must be accepted within twelve months from the date of application, or within such extended period, not exceeding three months, as the Commissioner, on application and on payment of the prescribed fee, allows.
15.—(1.) When a complete specification is ready for acceptance, the Commissioner shall notify the applicant accordingly, and require him to pay the acceptance fee.
(2.) Upon the payment of the acceptance fee the Commissioner shall advertise the acceptance in the Official Journal.
(3.) If the acceptance fee be not paid within the time limited for the acceptance of the specification, the application shall be deemed to have been abandoned.
16. After the advertisement of acceptance, the application and specification, with the drawings (if any), may be inspected at the Patent Office upon payment of the prescribed fee.
17. When the Commissioner refuses to accept an application accompanied by either a provisional or a complete specification, he shall notify the refusal to the applicant, and such notification may be in the Form F in the Second Schedule.
18. All advertisements, notices, or documents, which by the Act or by these Regulations are required to be published, shall be advertised in the Official Journal.
19. Where the Commissioner has allowed an extension of time for the acceptance of a complete specification, he may allow an extension, for the same period, of the time for the sealing of the patent.
APPLICATIONS UNDER SECTION 7 OF THE ACT.
20. An application made under section 7 of the Act may be in the Form A8 or A9 in the Second Schedule.
21. The Commissioner may, if he thinks fit, direct that the State patent be produced for his inspection.
22. The application must be signed by the applicant and attested by a witness, and, in addition to the specifications left therewith, be accompanied by a copy of the complete specification and drawings upon which the State patent was granted.
23. The applicant must state whether any amendment has been made in any document subsequent to the grant of the patent in the State, and the reason for, and the nature of, the amendment.
a 2
24. If a patent for the invention has been refused in any State or States, the applicant, when lodging his application, must state in writing the ground of the refusal. If any objection has been raised to the acceptance of his application in any State or States, he shall, when lodging his application, state in writing the nature of the objections, and the grounds upon which they were overcome.
25. The time for payment of the prescribed renewal fee on an application under section 7 of the Act shall be reckoned as from the date of the application.
26. Save as aforesaid, all proceedings in connexion with an application under section 7 shall be taken within the times and in the manner prescribed for ordinary applications.
APPLICATION FOR ADDITIONAL PATENT.
27. An application for an additional patent in respect of an improvement on an invention may be in the Form A7.
28. The application shall be signed by the applicant in the presence of a witness.
29. The time for payment of the prescribed renewal fee on an additional patent shall be reckoned as from the date of the additional patent.
30. Save as aforesaid, all proceedings in connexion with an application for an additional patent shall be taken within the times and in the manner prescribed for ordinary applications.
APPLICATIONS UNDER INTERNATIONAL AND INTERCOLONIAL ARRANGEMENTS.
31. An application for a patent under International or Intercolonial arrangements may be in the Form A6 in the Second Schedule, and must be made within twelve months from the date of the first foreign application, and must be accompanied by a complete specification, and be signed by the person or persons by whom the first foreign applications was made. If that person, or any of those persons, be dead, the application must be signed by his or their legal representative, as well as by the other applicants, if any.
32.—(1.) In addition to the specification left with the application, a copy or copies of the specification or specifications and drawings, or documents corresponding thereto, filed or deposited by the applicant in the Patent Office of the Foreign State or British Possession in respect of the first foreign application, duly certified by the official chief or head of the Patent Office of the Foreign State or British Possession as aforesaid, or otherwise verified to the satisfaction of the Commissioner, must be left at the Patent Office at the same time as the application, or within such further time thereafter, not exceeding three months, as the Commissioner may allow. If any specification or other document is in a foreign language, a translation thereof shall be annexed thereto, and verified by declaration or otherwise to the satisfaction of the Commissioner.
(2.) An application for extension of time for leaving the copy or copies of the foreign specification or specifications, drawings or documents, may be made in the Form C4, and shall be accompanied by the prescribed fee.
33. If the complete specification left with the application be not accepted within twelve months from the date of the first foreign application, it shall be open to public inspection at the expiration of that period.
34. Save as aforesaid and as provided by Regulation 110, all proceedings in connexion with an application under International or Intercolonial arrangements shall be taken within the times and in the manner prescribed by the Act or these Regulations for ordinary applications.
SIZE, ETC., OF DOCUMENTS.
35. Subject to any directions given by the Commissioner, all documents and copies of documents sent to or left at the Patent Office, or furnished to the Commissioner or to the Court or the Law Officer, shall be written or printed in the English language on tough white paper of good quality, not thinner than 300 sheets to the inch. The sheets shall be 13 inches by 8 inches, with a margin of not less than 2 inches at the left side, and one-half inch elsewhere.
35. The top half of the first sheet of specifications shall be left blank, and the writing or printing shall be on one side only. The contents shall be written or printed in carbonaceous or other permanent ink, not liable to be affected by bleaching agents. If written, the writing shall be large and legible, not more than ten letters per inch, and with not more than two line spaces per inch. If printed, the type shall not be less than pica, and there shall not be more than three line spaces per inch. The date and the signature shall be on the last sheet, which shall, in the case of the complete specification, also contain the conclusion of the claims, and, in the case of the provisional specification, the conclusion of the description of the nature of the invention.
37. The signatures to all documents must be written in full in a large and legible hand.
38.—(1.) A copy of every provisional specification shall be lodged at the Patent Office at the same time as the original.
(2.) Six copies of every complete specification shall be lodged at the Patent Office at the same time as the original.
(3.) Copies of every provisional or complete specification shall be marked “True Copy,” and shall be signed by the applicant or his agent.
39. Copies of all other documents required by the Commissioner shall be left as directed by him.
SIZES AND METHODS OF PREPARING DRAWINGS ACCOMPANYING PROVISIONAL OR COMPLETE SPECIFICATIONS.
40.—(1.) The provisional or complete specification need not be accompanied by drawings if the specification sufficiently describes the invention without them; but if drawings are furnished they should accompany the provisional or complete specification to which they refer, unless the applicant desires to adopt the drawings lodged with the provisional specification as the drawings for the complete specification, when they must be referred to as those “left with the provisional specification.”
(2.) The drawings must show every feature of the invention covered by the specification.
(3.) When the invention consists of an improvement upon an old machine, the drawing must exhibit the invention disconnected from the old structure, and also, in another view, the specific improvement and such parts of the old structure as necessarily co-operate with it. When the drawings illustrate an invention for which an additional patent is sought under section 85 of the Act, the improved or varied portions shall be drawn in full black lines, and so much of the original invention as may be necessary to show the connexion or action shall be repeated and shown in dotted outlines in proper relation to the improved part.
(4.) Drawings must be delivered at the Patent Office either flat or on rollers, so as to be free from creases, folds, or breaks.
41. Drawings must be made on pure white tough drawing paper, not thinner than 100 sheets to the inch, of smooth surface and good quality, and without colour or Indian ink washes.
42. Drawings must be on sheets 13 inches at the sides by 8 inches at the top and bottom. The illustrations shall be inside a border rectangle 12 inches by 7 inches, leaving a margin half-an-inch wide. When an exceptionally large drawing is essential, it may be drawn in sections on several detached sheets. There is no limit to the number of sheets. The figures should be numbered consecutively throughout.
43.—(1.) To insure their satisfactory reproduction on a reduced scale, all lines shall be in absolutely black Indian ink, and shall be uniform in thickness or gradation.
(2.) Section and shade lines shall not be closer than 30 per inch, and shading lines shall preferably be avoided.
(3.) Sections of plates and small pieces may be in solid black.
(4.) Reference letters and figures must be bold, distinct, not less than one-eighth of an inch in height, and should be placed in an upright position, and the same letters and figures must be used in different views of the same parts. Reference letter or figures shall in case of the larger parts be placed upon the parts, and in the case of smaller parts be placed to one side of the drawing and connected by a fine line to the parts to which they refer.
(5.) When the character of the drawings permits, such words as “plan,” “elevation,” and brief descriptive names of parts, such as “generator,” “dipping tank,” “high pressure cylinder,” may be added; but no connected description, phrase, or sentence, shall appear on the drawings.
44.—(1.) The scale adopted shall be large enough to show clearly wherein the invention consists, and only so much of the apparatus, machine, &c., need be shown as effects this purpose.
(2.) When the scale is shown on the drawing, it should be denoted, not by words, but by a divided line. Related drawings, such as “plan” and “elevation,” shall be drawn to the same scale, and be arranged in proper relative positions, where practicable.
45. Each sheet of the drawings shall be signed by the applicant or his agent, as near the lower right-hand corner inside the border line as is convenient.
46.—(1.) In the case of drawings left with a complete specification after a provisional specification, the number and date of the application shall be given in the lower left-hand corner, outside the border line.
(2.) In the case of all drawings, the total number of sheets, and the number of each sheet, shall be stated on each sheet in the top right-hand corner, outside the border line.
47. No professional designation, or advertisements, or addresses, will be permitted upon the face of the drawings or anywhere upon the tracings.
48.—(1.) A
(2.) A
49. The words “Original” or “True Copy,” as the case requires, must, in each case, be placed in the centre at the top of each sheet, outside the border line.
DECLARATIONS AND AFFIDAVITS.
50. The declarations and the affidavits required by these Regulations, or used in any proceeding thereunder, shall be headed in the matter or matters to which they relate, and shall be in the first person, and shall be divided into paragraphs consecutively numbered, and each paragraph shall, as nearly as possible, be confined to one subject. Every declaration or affidavit shall state the description and true place of abode of the person making it, and shall be written or printed bookwise, and shall bear the name and address of the person leaving it, and the name of the person on whose behalf it is left.
51.—(1) Declarations for the purposes of these Regulations may be taken or made before any of the following persons:—
(
a ) In Australia—A Notary Public, a Justice of the Peace, a Commissioner for Affidavits, or any person authorized by any Act or State Act to administer oaths or take declarations;(
b ) In British Dominions other than Australia—Any Judge, Magistrate, Justice of the Peace, Notary Public, or Commissioner for Oaths or Affidavits, or any person authorized by law to administer oaths or take declarations;(
c ) In Foreign Countries—Any Judge of a Superior Court, British Consul or Consular Officer, or Notary Public.
(2.) The Commissioner may take notice of the signature to any declaration, and of the signature of the person before whom it purports to have been declared, without proof of those signatures or of the official character of the person before whom the declaration purports to have been made.
52. Unless any particular form of declaration is prescribed, any declaration for the purposes of these Regulations may be in accordance with the Form El in the Second Schedule. A statutory declaration in accordance with the law of the place in which the declaration is made may, however, be accepted as a declaration in lieu of a declaration in accordance with that Form.
53. Nothing in these Regulations as regards declarations shall necessitate any further signature or attestation to the declaration contained in the form of application for a patent than that directed by section 33 of the Act.
EXERCISE OF DISCRETIONARY POWERS BY THE COMMISSIONER.
54. The Commissioner, before exercising any discretionary power given to him by the Act adversely to an applicant for a patent or for amendment of a specification, shall give him ten days’ notice at least of the time when he may be heard personally, or by his patent attorney, solicitor, or person authorized on his behalf, before the Commissioner.
55. Within five days from the date when such notice would be delivered in the ordinary course of post, or such longer time as the Commissioner appoints in the notice, the applicant shall notify to the Commissioner whether he desires to be heard in the matter.
56. The Commissioner shall, after hearing the applicant (or without hearing him if he does not attend the Patent Office at the time fixed for the hearing, or notifies the Commissioner that he does not desire to be heard, or fails to notify him that he desires to be heard), notify his decision or determination, together with any reasons therefor, to the applicant and any other person known to the Commissioner to be affected thereby.
OPPOSITION TO GRANT OF PATENTS.
57. A notice of opposition to the grant of a patent may be in the Form G in the Second Schedule, and shall state the grounds on which the person giving the notice (hereinafter called the opponent) intends to oppose the grant. Such notice must be signed by him or his patent attorney, solicitor, or agent, and must contain an address for service in the Commonwealth, and, if the Commissioner so requires, in or near to the city in which the Patent Office is situate, and shall be accompanied by a true copy.
58. Forthwith after the receipt of the notice of opposition the copy shall be transmitted by the Commissioner to the applicant.
59. The Commissioner may require any opponent who does not reside in Australia to give security for costs to his satisfaction within such time as he allows, and if the security is not so given the opposition shall be dismissed.
60. Where the ground or one of the grounds of opposition is that the invention has been patented in the Commonwealth or in a State on an application of prior date, the number, date, and title of the prior patent shall be specified in the notice.
61. Within fourteen days after the lodging of the notice of opposition, or within such further time, not exceeding one month, as the Commissioner allows, the opponent shall leave at the Patent Office declarations and copies thereof in support of his opposition, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the applicant.
62. Within fourteen days after the receipt from the Commissioner of such copies, or such further time as the Commissioner allows, the applicant shall leave at the Patent Office declarations and copies thereof in answer, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the opponent.
63. Within fourteen days after the receipt from the Commissioner of such copies, or such further time as the Commissioner allows, the opponent shall leave at the Patent Office declarations and copies thereof in reply, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the applicant. Such last-mentioned declarations shall be confined to matters strictly in reply.
64. Any party desiring an extension of time under the provisions of any of the three preceding Regulations must make application therefor before the expiration of the time sought to be extended, and the powers of the Commissioner thereunder may only be exercised at or after a hearing for the purpose, or on proof of the consent of the parties engaged.
65.—(1.) No further evidence shall be left on either side, except by leave of the Commissioner upon the written consent of the parties duly notified to him, or by special leave of the Commissioner on an application made to him for that purpose.
(2.) Either party making such application shall give three days’ notice thereof to the opposite party, who shall be entitled to oppose the application.
(3.) An application for the special leave of the Commissioner under this Regulation shall be accompanied by a declaration setting forth the grounds of the application and the nature of the evidence which it is desired to lodge, and by the prescribed fee.
(4.) A copy of the application and declaration shall be served on the opposite party by the party making the application.
66. On the completion of the evidence, or at such other time as he sees fit, the Commissioner shall appoint a time for the hearing of the case, and shall give the parties at least seven days’ notice of such appointment.
67. If either party desires to be heard, he shall, prior to the day fixed for the hearing, leave at the Patent Office a notice in the Form I in the Second Schedule, together with the prescribed fee. Any party who has given the required notice shall be entitled to be heard, and any party who has not given that notice shall not be entitled to be heard.
68. If the opponent fails to leave, within the time allowed, declarations and copies thereof in support of his opposition, or declarations and copies thereof in reply to the declarations in answer lodged by the applicant, or, in the latter case, to state, within the time allowed, that he intends to rely upon the declarations already filed, the opposition shall be deemed to have been abandoned.
69. If the applicant fails to leave, within the time allowed, declarations and copies thereof in answer to the opponent’s declarations in support of the opposition, or to state, within the time allowed, that he intends to rely upon the documents lodged with his application, the application shall be deemed to have been abandoned.
70. If the opponent fails to appear at the time fixed for the hearing, the opposition shall be deemed to have been abandoned.
71. If the applicant fails to appear at the time fixed for the hearing, the opposition shall be decided in his absence.
72. On the hearing of the case, no opposition shall be allowed in respect of any ground not stated in the notice of opposition, and where the ground or one of the grounds is that the invention has been patented in the Commonwealth or a State on an application of a prior date, the opposition shall not be allowed upon such ground, unless the number, title, and date of such prior application have been duly specified in the notice of opposition.
73. The decision of the Commissioner in the case shall be notified to the parties in writing.
74.—(1.) Where the sealing is delayed by opposition and no appeal is instituted from the decision of the Commissioner, the patent may be sealed at any time within two months after the determination of the opposition.
(2.) Where an appeal is instituted, the patent may, in the absence of any order of the Court, be sealed at any time within two months from the date of the determination of the appeal.
ENLARGEMENT OF TIME FOR SEALING.
75.—(1.) The Commissioner may, in accordance with this regulation, enlarge the time for sealing a patent for any period not exceeding three months beyond the period of sixteen months specified in section 67 of the Act.
(2.) An application for the enlargement may be lodged at the Patent Office, and must specify the grounds upon which it is made, and be accompanied by the prescribed fee.
(3.) If on hearing the application the Commissioner is satisfied that the failure to seal the patent within the sixteen months was not due to any neglect or wilful default on the part of the applicant or his agent, he may enlarge the time for sealing for such period as is required, but not exceeding three months in any event.
(4.) If any extension applied for under this Regulation be not granted, the fee paid on application therefor may be refunded by the Commissioner.
76. Nothing in these Regulations shall affect the power of the High Court or the Supreme Court to allow such extension of time as it thinks proper for the sealing of any patent.
APPEAL TO THE LAW OFFICER.
77. When any person intends to
appeal to the law officer from a direction of the Commissioner under section 43
of the Act, or a decision of the Commissioner under the
78. Such notice shall state the grounds of appeal, and whether the appeal is from the whole of the direction or decision, or part only, and, if so, what part of the direction or decision, and shall be accompanied by a statement (in duplicate) of the appellant’s case.
79. Upon notice of appeal being filed, the Commissioner shall forthwith transmit to the law officer all the matters relating to the application in respect of which the appeal is made.
80. Seven clear days’ notice at least of the time and place appointed for the hearing of the appeal shall be given to the appellant and the Commissioner by the law officer.
81. The evidence used on appeal to the law officer shall be the same as that used at the hearing before the Commissioner, and no further evidence shall be given, save as to matters which have occurred or come to the knowledge of the appellant or the Commissioner after the date of the direction or decision appealed against.
82. At the time and place appointed, the law officer shall hear the appellant and the Commissioner, and may adjourn or postpone the hearing, and shall at the hearing, or at some adjournment or postponement thereof, decide whether, and subject to what conditions, if any, the application and specification shall be accepted, and shall notify his decision in writing to the appellant and the Commissioner.
APPEAL TO THE HIGH COURT OR TO THE SUPREME COURT.
83.—(1.) When any person intends to appeal to the High Court or to the Supreme Court from a decision of the Commissioner, he shall, within thirty days from the date of the decision, or such further time as the Court, by special leave on application made within such thirty days, allows, leave at the Patent Office, and with the opposite party, if any, a notice in the Form Z in the Second Schedule, and file a copy of the notice in the Court.
(2.) Notice of intention to apply to the Court under this Regulation for special leave shall in each case be served on the Commissioner.
84. The Commissioner shall forward to the proper officer of the Court all documents and evidence used on the hearing before him.
85. The procedure of the Court in relation to an appeal shall be as directed by Rules of Court, or as the Court or a Justice or Judge thereof in each case directs.
AMENDMENT OF DOCUMENTS IN ACCORDANCE WITH OFFICIAL REQUIREMENTS.
86. The deletion of any matter in the application or specification shall be made by a fine-ruled red line. Insertions shall be made in red ink in the margin on the left-hand side, and their places in the body of the documents indicated by a letter or figure. If the amendments are, in the opinion of the Commissioner, of sufficient extent to warrant the lodging of fresh pages or the complete documents, the applicant shall, within a time to be fixed by the Commissioner, supply them. All amendments must be initialled and dated by the person authorized so to do.
87. The deletion of a figure or portion thereof shall be effected by the placing thereon of a red cross embracing the whole or the portion to be so deleted, and the word “cancelled” shall be written across the figure or the portion thereof, at the intersection of the cross lines, and near thereto shall be placed the initials of the applicant or the person authorized to act for him, together with the date.
88. If an applicant fails to amend the application or complete specification or the drawings within the time (not being less than one month) fixed by the Commissioner by the notice requiring the amendment, or within such further time as the Commissioner on application made within the time specified in the notice allows, then, save in the case of an appeal being lodged in the prescribed manner from the Commissioner’s direction or decision, the application shall be deemed to have been abandoned.
AMENDMENT OF SPECIFICATION BY REQUEST.
89.—(1.) The request for leave to amend a complete specification shall be prepared and signed in the manner prescribed by section 71 of the Act, and must be accompanied by the prescribed fee.
(2.) It must also be accompanied by a certified copy of the original specification and drawings (if any), showing in red ink the proposed amendment; and, if the complete specification has been accepted, shall be advertised, by publication of the request and the nature of the proposed amendment, in the Official Journal.
(3.) When not made in pursuance of an order of a Court, or a Justice or Judge thereof, the request must, where a patent has been sealed, contain a statement that no action for infringement, or proceeding for revocation, of the patent, is pending.
(4.) Where a request for leave to amend is made in pursuance of an order of a Court, or a Justice or Judge thereof, an official copy of the order shall be left, with the request, at the Patent Office.
90.—(1.) A notice of opposition to the amendment may be in the Form K in the Second Schedule, and shall state the ground or grounds on which the person giving the notice (hereinafter called the opponent) intends to oppose the amendment, and shall be signed by him or his patent attorney, solicitor, or agent, and be accompanied by the prescribed fee and by a true copy of the notice.
(2.) Such notice shall state an address for service in the Commonwealth, and if the Commissioner requires, in or near the city in which the Patent Office is situate, and shall be accompanied by a true copy.
91. Forthwith after the receipt of such notice, the true copy shall be sent by the Commissioner to the applicant or patentee, as the case may be (hereinafter called the applicant).
92. Within fourteen days after the expiration of one month from the date of the advertisement of the request for leave to amend, the opponent shall leave at the Patent Office declarations and copies thereof in support of his opposition, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the applicant.
93. Within fourteen days after the receipt from the Commissioner of such copies, or such further time as the Commissioner allows, the applicant shall leave at the Patent Office declarations and copies thereof in answer, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the opponent.
94. Within fourteen days after the receipt from the Commissioner of such copies, or such further time as the Commissioner allows, the opponent shall leave at the Patent Office declarations and copies thereof in reply, and forthwith after the receipt thereof the copies shall be transmitted by the Commissioner to the applicant. Such last-mentioned declarations shall be confined to matters strictly in reply.
95. Any party desiring an extension of time under the provisions of either of the two preceding Regulations must make application therefor before the expiration of the time sought to be extended, and the powers of the Commissioner thereunder may only be exercised at or after a hearing; for the purpose, or on proof of the consent of the parties engaged.
96.—(1.) No further evidence shall be left on either side, except by leave of the Commissioner upon the written consent of the parties duly notified to him, or by special leave of the Commissioner on an application made to him for that purpose.
(2.) Either party making such application shall give three days’ notice thereof to the opposite party, who shall be entitled to oppose the application.
(3.) An application for the special leave of the Commissioner under this Regulation shall be accompanied by a declaration setting forth the grounds of the application and the nature of the evidence which it is desired to lodge, and by the prescribed fee.
(4.) A copy of the application and declaration shall be served on the opposite party by the party making the application.
97. On the completion of the evidence, or at such other time as he sees fit, the Commissioner shall appoint a time for the hearing of the case, and shall give the parties at least seven days’ notice of such appointment.
98.—(1.) If either party desires to be heard, he shall, prior to the day fixed for the hearing, leave at the Patent Office a notice in the Form I in the Second Schedule, together with the prescribed fee.
(2.) Any party who has given the required notice shall be entitled to be heard, and any party who has not given that notice shall not be entitled to be heard.
99. If the opponent fails to leave, within the time allowed, declarations and copies thereof in support of his opposition, or declarations and copies thereof in reply to the declarations in answer lodged by the applicant, or, in the latter case, to state, within the time allowed, that he intends to rely upon the declarations already filed, the opposition shall be deemed to have been abandoned.
100. If the applicant fails to leave, within the time allowed, declarations and copies thereof in answer to the opponent’s declarations in support of the opposition, or to state, within the time allowed, that he intends to rely upon the specification as proposed to be amended, the application for leave to amend the specification shall be deemed to have been abandoned.
101. If the opponent fails to appear at the time fixed for the hearing, the opposition shall be deemed to have been abandoned.
102. If the applicant fails to appear at the time fixed tor the hearing, the opposition shall be decided in his absence.
103. On the hearing of the case, no opposition shall be allowed on any ground other than the ground that the amendment, if allowed, would make the specification as amended claim an invention substantially larger than or substantially different from the invention claimed by the specification before amendment.
104. Where a request for leave to amend is granted, the applicant shall, if the Commissioner so requires, and within a time to be fixed by him, leave at the Patent Office such new documents, prepared in accordance with the Regulations, as the Commissioner thinks necessary, and in the event of non-compliance with such requirement the Commissioner may revoke the leave to amend.
105. Every amendment of a complete specification made under Division 4 of Part IV. of the Act shall be advertised by the Commissioner in the Official Journal.
APPLICATIONS UNDER SECTION 3 OF THE PATENTS ACT 1906.
106. An application under section 3
of the
107.—(1.) Opposition against the granting of the application must be in writing, and must set out clearly the grounds on which the opponent relies to support his opposition, and must be lodged at the Patent Office within one month after the notification of the application in the Official Journal, and must be accompanied by a declaration verifying the facts stated therein.
(2.) The grounds of opposition shall be confined to the following:—
(
a ) That it was not owing to any error or omission on the part of an officer of the Patent Office that the application for a patent or proceeding in relation thereto lapsed, or the act or step in relation thereto was not done or taken; or(
b ) that the invention referred to in the application for a patent has already been patented in Australia; or(
c ) that another application for a patent for the same invention has been lodged in the Patent Office, and will be unfairly prejudiced If the application (the subject of the opposition) is granted.
(3.) The opponent shall, on the same day as he lodges the notice of opposition at the Patent Office, or so soon thereafter as is practicable, serve on the applicant a copy of the notice of opposition, and of the declaration filed in support thereof.
108. The applicant may, within thirty days after the lodgment of the notice of opposition, lodge at the Patent Office a declaration in answer and serve on the opponent a copy thereof.
109.—(1.) After the expiration of thirty days from the lodgment of the notice of opposition, and declaration in support, the Commissioner shall fix a day for the hearing of the application and opposition, and shall giev notice thereof to the parties.
(2.) If either party desires to be heard he shall, prior to the day fixed for the hearing, leave at the Patent Office a notice in the Form I in the Second Schedule, together with the prescribed fee.
110. On the day so fixed or at any adjournment thereof, the Commissioner shall hear such of the parties as are present, and shall decide the matter.
REGISTER OF PATENTS.
111. Upon the sealing of every patent, or additional patent, the Commissioner shall cause to be entered in the Register of Patents the name, address, and description of the patentee as the grantee thereof, and the title of the invention.
112. There shall also be entered in the Register, in the case of an additional patent, the number and date of the original patent, and the title of the original invention.
113. The patent granted on any application made under International or Intercolonial arrangements shall be entered in the register as dated of the date on which the first foreign application was made, and the payment of renewal fees, and the expiration of the patent, shall be reckoned as from the date of the first foreign application. The date of the application in Australia shall also be entered in the register.
114. Where a person becomes entitled to a patent, or to any share or interest therein, or licence thereunder, by assignment, transmission, or other operation of law, either throughout the Commonwealth, or a State or States, or for any place or places therein, a request for the entry of his name in the Register, as such complete or partial proprietor or licensee of the patent, or of such share or interest therein, as the case may be, shall be addressed to the Commissioner, and left at the Patent Office.
115. Such request may be in the Form Q or in the Form R, in the Second Schedule, as the case requires, and shall be made and signed the person requiring to be registered as proprietor or licensee, or by his agent.
116. Every such request shall state the name, address, and description of the person claiming to be entitled to the patent, or to any share or interest therein or licence thereunder, and the particulars of the assignment, transmission, or other operation of law, by virtue of which he claims to be entered in the Register as proprietor or licensee, so as to show the manner in which, and the person or persons to whom, the patent, or licence thereunder, or the share or interest therein, has been assigned or transmitted.
117. Every assignment of a patent, or of any share or interest therein, or of any licence thereunder, shall be by deed, and shall be under the hand and seal of the transferror and transferee, and be attested; provided that any assignment of a patent may be indorsed on the back of the patent in the Form T in the Second Schedule, under the hand and seal of the proprietor of the patent and the transferee.
118.—(1.) Every assignment and every other deed and document containing, giving effect to, or being evidence of, the transmission of a patent, or affecting the proprietorship thereof, including every patent indorsed as provided by section 21 of the Act, but excepting such documents as are matters of record, shall, before any entry is made pursuant to a request, unless the Commissioner in his discretion otherwise directs, be produced to him, together with the request, and such other proof of title as he requires for his satisfaction.
(2) As to a document which is a matter of record, an official or certified copy thereof shall be produced to the Commissioner.
119. An attested copy of every deed and document affecting the proprietorship of any patent, or of any share or interest therein, or licence thereunder, shall be left with the request.
120. When an order has been made by the High Court, or the Supreme Court, or a Justice or Judge thereof, for the extension of a patent or part of a patent for a further term, or for the grant of a new patent, or for the revocation of a patent, or for the rectification of the Register, or otherwise affecting the validity or proprietorship of a patent, the person in whose favour such order has been made shall forthwith leave at the Patent Office an office copy of the order. The Register shall thereupon be rectified, or the purport of the order shall be entered in the Register, as the case requires.
121. Upon the issue of a certificate of payment of any renewal fee, the Commissioner shall cause to be entered in the Register a record of the amount and date of payment of the fee.
122. If a patentee fails to make any prescribed payment within the prescribed time, a notification of the fact shall be entered in the Register.
123. A copy of every licence granted under a patent, or of any other document purporting to affect the proprietorship of a patent, shall be left at the Patent Office, with a request in the Form R in the Second Schedule that a notification thereof may be entered in the Register. The accuracy of such copy shall be certified in such manner as the Commissioner directs, and the original document shall, at the same time, be produced and left at the Patent Office, if required, for further verification.
124. Any person interested in a particular patent may leave at the Patent Office a request to be informed of any application to register an assignment or other similar document in connexion with the patent.
125. The request must state the number of the patent and the name of the patentee, and be accompanied by the prescribed fee.
126. The person making the request shall produce evidence of his interest in the patent, and if the Commissioner considers that the interest of the person is not sufficient to warrant the grant of the request, he may refuse to entertain it.
127. If the request is granted, the Commissioner shall, upon receipt of any subsequent application for the registration of an assignment or other similar document, furnish to the person leaving the request a notice of the lodgment of the application, and suspend registration for fourteen days from the date of the notice.
128. Every such request shall remain in force for a period of six months from the date of lodgment.
129. The Register of Patents shall be open to the inspection of the public during office hours on every day during which the Patent Office is open, except on the days and at the times following:—
(
a ) Days which are from time to time notified by a placard posted in a conspicuous place at the Patent Office.(
b ) Times when the Register is required for any purpose of official use.
130. Certified copies of any entry in the Register, or certified copies of, or extracts from, patents, specifications, disclaimers, affidavits, declarations, and other public documents in the Patent Office, or of or from Registers and other books kept there, may be furnished by the Commissioner, on payment of the prescribed fee.
PAYMENT OF RENEWAL FEE FOR CONTINUANCE OF PATENT
131. If a patentee intends to keep his patent in force after the expiration of the seventh year from the date thereof, he shall, before the expiration of that year, pay the renewal fee.
132. An application for enlargement of the time for making the prescribed payment may be in the Form P in the Second Schedule, and shall be accompanied by the prescribed fee for such enlargement. The application shall state in detail the circumstances in which the patentee by accident, mistake, or inadvertence, failed to make such payment, and the Commissioner may require the patentee to substantiate, by such proof as he thinks necessary, the statements contained in the application for enlargement.
133. The Commissioner shall give to the patentee paying the renewal fee a certificate that it has been paid.
ATTORNEY-GENERAL’S FIAT AUTHORIZING PRESENTATION OF PETITION FOR REVOCATION OF A PATENT.
134.—(1.) Any person who desires to obtain the authority of the Attorney-General to present a petition to the High Court or the Supreme Court for the revocation of a patent under section 86 of the Act may lodge with the Secretary to the Attorney-General’s Department—
(
a )A memorial to the Attorney-General asking for his authority and stating all the circumstances;(
b ) A declaration verifying the statements in the memorial and stating that there are no pending proceedings in the Commonwealth wherein the issues proposed to be raised in the petition or particulars of objection could be determined;(
c ) Two copies of the proposed petition and of the particulars proposed to be delivered with it, and copies of specifications and documents referred to in the memorial petition or particulars;(
d ) A certificate of a barrister that the petition is proper to be authorized by the Attorney-General; and(
e )A certificate of a solicitor that the proposed petitioner is a proper person to be a petitioner, and that he is competent to answer the costs of all proceedings in connexion with the petition if unsuccessful.
(2.) The Attorney-General will hear
the memorial, either
(3.) If the Attorney-General’s fiat is granted, one of the copies of the petition, with the fiat thereon, will be returned to the petitioner.
COMPULSORY LICENCES AND REVOCATION OF PATENTS.
135. A petition to the Commissioner for an order under section 87 of the Act may be in Form L in the Second Schedule, and shall clearly show the nature of the petitioner’s interest, and the grounds upon which he claims to be entitled to relief; and shall state in detail the circumstances of the case, the terms upon which he asks that an order be made, and the purport of the order asked for, and the name and address of the patentee, and of every other person against whom the order is sought.
136. The petition, and an examined copy thereof, shall be left at the Patent Office, accompanied by affidavits or declarations in proof of the statements contained in the petition, together with any other documentary evidence in support; and the petitioner shall deliver copies of the petition and documents accompanying it to each respondent.
137. The persons to whom such copies are delivered by the petitioner may, within fourteen days after being invited to do so by the Commissioner, leave at the Patent Office affidavits or declarations in answer to the petition, and, if they do so, shall on the same day or as soon thereafter as practicable deliver copies thereof to the petitioner.
138. The petitioner may, within fourteen days after the leaving of the respondent’s affidavits or declarations, leave at the Patent Office his affidavits or declarations in reply, and deliver copies thereof to the respondents. Such last-mentioned affidavits or declarations shall be confined to matters strictly in reply.
139. No further evidence shall be left on either side, except by leave of the Commissioner upon the written consent of the parties duly notified to him, or by special leave of the Commissioner, on application made to him for that purpose. Either party making such application shall give three days’ notice thereof to the opposite party, who shall be entitled to oppose the application. Applications for leave to lodge further evidence shall be accompanied by the prescribed fee.
140. The Commissioner shall, if the petition is not abandoned, hear the parties and deal with the petition as directed by section 87 (2) of the Act.
GENERAL.
141. Any application, statement, notice, or other document, authorized or required to be left, made, or given at the Patent Office, or to the Commissioner, or to any other person, under these Regulations, may be sent by a prepaid letter through the post, and, if so sent, shall be deemed to have been left, made, or given, at the time when the letter containing it would be delivered in the ordinary course of post.
142. Any document, for the amending of which no special provision is made by the Act, may be amended, and any irregularity in procedure, which in the opinion of the Commissioner may be obviated without detriment to the interests of any person, may be corrected, if, and on such terms as, the Commissioner thinks fit. An application to amend shall be accompanied bythe prescribed fee.
143. An application for enlargement of the time for leaving or accepting a complete specification shall state in detail the circumstances and grounds in and upon which the enlargement is applied for; and the Commissioner may require the applicant to substantiate such statements by such proof as the Commissioner thinks necessary.
144. The time prescribed by these Regulations for doing any act, or taking any proceeding thereunder, may be enlarged by the Commissioner if he thinks fit, and upon such notice to parties and proceedings thereon, and upon such terms, as he directs.
145. Four clear days’ notice of every application to the Supreme Court for rectification of the Register of Patents shall be given to the Commissioner.
146. Where under these Regulations any person is required to do any act or thing, or to sign any document, or to make any declaration, or produce to or leave with the Commissioner, or at the Patent Office, any document or evidence, and it is shown to the satisfaction of the Commissioner that from any reasonable cause that person is unable to comply with the requirement, the Commissioner may, upon the production of such other evidence, and subject to such terms as he thinks fit, dispense with the requirement.
147. All documents, with the exception of the documents required by the Act or Regulations to be signed by the applicant, may be signed by, and all attendances upon the Commissioner may be made by or through, a patent attorney, solicitor, or other person duly authorized to the satisfaction of the Commissioner and resident in the Commonwealth, and, if the Commissioner so requires, in or near to the city in which the Patent Office is situate.
148. The Commissioner shall not be bound to recognise as an agent any person whose name has been removed from the Register of Patent Attorneys kept under the provisions of the Act and has not been restored. The Commissioner may in his discretion refuse to recognise any patent attorney or solicitor whose conduct, in the Commissioner’s opinion, is calculated to prejudice the applicant’s interest, and may call on the applicant to appoint some other patent attorney or solicitor, or to communicate directly with the Commissioner. In any particular case the Commissioner may, if he thinks fit, require the personal signature or presence of an applicant, opponent, or other person.
149. Any notice of address for service or appointment of agent left at or sent to the Patent Office shall be binding on the person giving the notice until notice of revocation or of the appointment of some other address for service or of some other agent has been furnished by him to the Commissioner.
REGISTRATION OF PATENT ATTORNEYS.
150. A Register shall be kept by the Commissioner for the registration of patent attorneys.
151. Patent attorneys shall be entitled to prepare all documents and deeds and transact all business and proceedings for the purposes of the Act and these Regulations, and the State Patents Acts, and communications between patent attorneys and their clients shall be privileged to the same extent as communications between solicitor and client.
152. The Register shall contain the names of all the patent attorneys who are registered under the Act and these Regulations, and shall be made out alphabetically according to the surnames of the registered persons, and shall contain the full name of each registered person, together with his designation, address, and the date of his registration.
153. The Commissioner shall publish in the Official Journal of the Patent Office in the month of January in each year a list of all patent attorneys whose names are on the Register. The list so published shall be admissible as evidence.
154.—(1.) Any person entitled to be registered as a patent attorney may lodge at the Patent Office a declaration in the Form AA or BB in the Second Schedule, as the case requires, and such further or other proof of the allegations as the Commissioner requires.
Place—
Date—
I,/We, (1)
hereby transmit an office copy of an Order of (2)
with reference to (3)
and request you to rectify the Register of Patents accordingly.
To the Commissioner of Patents,
Commonwealth of Australia.
C.275. c
Form Y.
[Patents.]
£3.
Commonwealth of Australia.
The
NOTICE OF APPEAL TO LAW OFFICER.
Place—
Date—
I/We, (1)
hereby give notice of my/our intention to appeal to the Law Officer from the direction of the Commissioner of Patents of the day of A. D. 19 , whereby he (2)
Application No. dated the day of A. D. 19 ,
To the Commissioner of Patents,
Commonwealth of Australia.
Form Z.
[Patents.] Commonwealth of Australia.
The
NOTICE OF APPEAL TO THE HIGH COURT OR TO THE SUPREME COURT.
Place—
Date—
In the matter of Application/Patent No. dated the day of A. D. 19
I,/We, (1)
hereby give notice of my/our intention to appeal to the High/Supreme Court from the decision of the Commissioner of Patents of the day of A. D. 19 whereby he (2)
The grounds of this appeal are as follow :— (3)
Note.—This notice must be left at the Patent Office and with the opposite Party (if any), and a copy must be filed in the Court to which the appeal is made.
Form AA.
[Patents.] Commonwealth of Australia.
£5.
The
DECLARATION TO BE MADE BY A PERSON APPLYING FOR REGISTRATION AS A PATENT ATTORNEY.
I, (1)
of (2)
(3)
do
solemnly and sincerely declare that I was at the commencement of the
following matters, namely :—(5)
in the Patent Office of the State of , and that I desire to have
my
name registered as a Patent Attorney, in pursuance of the
And I make this solemn declaration, conscientiously believing it to be true.
Declared by the said Declarant at
this day of A. D. 19
Before me—
To the Commissioner of Patents,
Commonwealth of Australia.
Form BB.
[Patents.] Commonwealth of Australia.
£5. The
DECLARATION TO BE MADE BY A PERSON FORMERLY EMPLOYED AS AN OFFICER IN THE PATENT OFFICE OF A STATE APPLYING FOR REGISTRATION AS A PATENT ATTORNEY.
I, (1)
of (2)
(3)
do
solemnly and sincerely declare that I was an officer in the Patent Office of
the State of for the period of , and was employed in the capacity of
(4) , and that during the period in which I was so employed I
gained a sufficient knowledge of patent law and practice to enable me to
practise the profession of a Patent Attorney, and that I desire to have my name
registered as a Patent Attorney in pursuance of the provisions of the
And I make this solemn declaration, conscientiously believing it to be true.
Declared by the said Declarant at
this day of A. D. 19
Before me—
To the Commissioner of Patents,
Commonwealth of Australia.
Form CC.
[Patents.] Commonwealth of Australia.
£2.
The
NOTICE BY A CANDIDATE FOR THE PATENT ATTORNEY’S EXAMINATION.
Place—
Date—
To the Secretary to the Board of Examiners for Patent Attorneys.
Sir,
I hereby give you notice that I intend to present myself as a Candidate at the Patent Attorney’s Examination, to be held at on
The above address is that to which I desire that all notices or communications to me may be sent.
(
Form DD.
[Patents.] Commonwealth of Australia.
The
DECLARATION BY CANDIDATE FOR THE PATENT ATTORNEY’S EXAMINATION.
I. (1)
of (2)
(3)
do solemnly
and sincerely declare as follows :—
I am years of age.
I was educated at (4)
I (5)
I (6)
And I further declare that I am of good fame and character, and that I have not done or committed any act or thing which would make me an improper person to be registered as a Patent Attorney; and I further declare that the Certificate annexed hereto is true and correct in every particular, and that I was well known to the persons who subscribed it for the period therein stated.
And I make this solemn declaration, conscientiously believing it to be true.
Declared at in the State of this day of A. D. 19
Before me—
Form EE.
[Patents.] Commonwealth of Australia.
The
CERTIFICATE TO BE LODGED BY CANDIDATE FOR PATENT ATTORNEY’S EXAMINATION.
To the Secretary of the Board of Examiners
for Patent Attorneys.
We, the undersigned, hereby certify that we have known and have been acquainted with for the period of twelve months at least immediately before the date of this certificate, and that we believe him to be a person of good fame and character, and fitted to be admitted to practise as a Patent Attorney in the Commonwealth of Australia.
Dated this day of A. D. 19 .
Signed by the said
in my presence—
J. P.
N.B.—This certificate is to be signed by three adult persons in the presence of and be attested by a Justice of the Peace. It is not necessary that the same Justice should attest each signature.
Form FF.
[Patents.] Commonwealth of Australia.
The
BOARD OF EXAMINERS’ CERTIFICATE THAT CANDIDATE HAS PASSED THE PATENT ATTORNEY’S EXAMINATION.
The Board of Examiners hereby certifies that
, of , having been duly examined by it, has passed the Patent Attorney’s examination as prescribed by the Patents Regulations 1908, and is qualified for registration as a Patent Attorney.
Given under hand at this day of
A. D. 19
Signature of Chairman of Board or the Authorized Member or Members thereof.
Form GG.
[Patents.] Commonwealth of Australia.
The
CERTIFICATE OF REGISTRATION OF A PATENT ATTORNEY.
I, Commissioner of Patents, hereby
certify that
of in the State of , Commonwealth of Australia, was on the day of
A.D. 190 registered as a Patent Attorney, and that he is authorized to practise as a Patent Attorney in any part of the Commonwealth of Australia, so long as his name remains on the Register of Patent Attorneys.
Given under my hand and the seal of the Patent Office at
this day of A. D. 19 .
(l. s.) Commissioner of Patents
Printed and Published for the Government of the Commonwealth of Australia by J. Kemp, Government Printer for the State of Victoria.
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