Patents Amendment Regulations 1998 (No. 5) 1998 No. 257
EXPLANATORY STATEMENT
STATUTORY RULES 1998 NO. 257
Issued by the Authority of the Minister for Industry, Science and Tourism
Patents Act 1990
Patents Amendment Regulations 1998
The Statutory Rules amend the Patents Regulations (the Regulations) to
* in line with current drafting conventions adopt a new name for the Regulations and substitute a new regulation 21.2 to clarify the current wording;
* substitute Schedule 6A to the Regulations to update the list of prescribed employees ;and
* amend Schedule 4 to the Regulations to update the list of Convention countries.
Details of the amendments made by these Statutory Rules are as follows:
Regulation 1 identifies the Statutory Rules as the Patents Amendment Regulations 1998.
Regulation 2 specifies that the Statutory Rules are to commence on gazettal.
Regulation 3 identifies the Patents Regulations as those being amended.
Regulation 4 substitutes regulation 1.1 of the Regulations with a revised regulation to adopt a new naming convention for regulations.
Regulation 5 substitutes regulation 21.2 of the Regulations with a revised regulation clarifying the wording of this regulation. Regulation 21.2 determines the employees to whom the Commissioner of Patents may delegate powers and functions.
Regulation 6 amends Schedule 4 to the Regulations to include the Democratic Republic of Sao Tome and Principe in the list of Convention countries. This reflects the fact that the Democratic Republic of Sao Tome and Principe acceded to the Paris Convention for the Protection of Industrial Property (Paris Convention),
The Paris Convention, inter alia, enables nationals of member states to claim the actual date they originally filed their application for a trade mark as the effective date of filing in other Convention countries (Article 4). However, the applications must be filed within a certain time after the initial filing in order to obtain priority (12 months for patents). One of the advantages of the right of priority is that when an applicant desires protection in several countries, the applications are not required to be filed at the same time. The applicant has 12 months to decide in what countries to file applications and to organise, with due care, the steps to take to ensure protection. As Australia is a member of the Paris Convention this right also applies to Australian nationals.
Regulation 7 substitutes a new Schedule 6A to the Regulations to reflect changes made to IP Australia's employee classification made under IP Australia's certified agreement. This change is required to permit the Commissioner of Patents to delegate certain powers and functions to prescribed employees under subsection 209 (1) of the Patents Act 1990.
The regulations are to commence on gazettal.
Overview
The Patents Amendment Regulations 1998 (No. 5) were enacted to amend the Patents Regulations under the authority of the Minister for Industry, Science and Tourism. The purpose of these amendments is to align the Regulations with current drafting conventions, update lists of prescribed employees and Convention countries, and clarify specific regulatory wording to enhance the effectiveness and administration of the Patents Act 1990. These Statutory Rules reflect the need to maintain up-to-date regulatory frameworks in line with international treaties, such as the Paris Convention for the Protection of Industrial Property, and to address changes in organisational structures within IP Australia. The amendments ensure that the Regulations continue to support the policy objective of facilitating efficient and effective patent administration in Australia.
Scope and Application
The Patents Amendment Regulations 1998 (No. 5) made under the Patents Act 1990 serve to update and refine the Patents Regulations, ensuring they align with current drafting conventions and reflect recent changes in international and domestic policy. These regulations apply to the Commissioner of Patents and the employees of IP Australia, who are the entities authorised to handle patent-related matters. They have a national jurisdictional reach within Australia, impacting all patent applications and processes governed by the Patents Act 1990. The amendments include a new naming convention for regulations, clarification of the wording of regulation 21.2 to delineate the delegation of powers and functions more precisely, and the updating of Schedule 4 to incorporate the Democratic Republic of Sao Tome and Principe as a Convention country, thereby extending the benefit of priority rights to applicants from this nation. Schedule 6A is also revised to align with updated employee classifications at IP Australia. These regulations commence on gazettal, and their effect is to streamline the administration of patents and ensure compliance with international conventions like the Paris Convention.
Key Provisions
The Patents Amendment Regulations 1998 (No. 5) primarily make amendments to the Patents Regulations (the Regulations) to align with current drafting conventions and update certain lists within the schedule. Regulation 1 renames the Statutory Rules as the Patents Amendment Regulations 1998, while Regulation 2 specifies that these Regulations will commence on the date of gazette. Regulation 3 identifies the Patents Regulations as the document being amended.
Regulation 4 updates the naming convention for regulations by substituting regulation 1.1 of the Regulations. Regulation 5 revises regulation 21.2, clarifying the wording to better define the employees to whom the Commissioner of Patents may delegate powers and functions. This regulation is significant because it determines the scope of delegation, allowing the Commissioner to assign specific powers and functions to prescribed employees as outlined in subsection 209(1) of the Patents Act 1990.
Additionally, Regulation 6 amends Schedule 4 of the Regulations to include the Democratic Republic of Sao Tome and Principe in the list of Convention countries. This amendment reflects the country's accession to the Paris Convention for the Protection of Industrial Property (Paris Convention). This change is important for applicants who wish to claim the actual date of their original application filing as the effective date of filing in other Convention countries, provided they file within 12 months for patents.
Regulation 7 substitutes a new Schedule 6A to the Regulations, reflecting changes made to IP Australia's employee classification under its certified agreement. This change is essential for permitting the Commissioner of Patents to delegate certain powers and functions to prescribed employees as stipulated in the Patents Act 1990.
The obligations imposed by these Regulations include ensuring that the updated lists of Convention countries and prescribed employees are adhered to when filing applications or delegating powers. Failure to comply with these provisions may result in delays or complications in the patent application process. Any breaches of these regulations, such as incorrectly identifying employees or countries, may lead to administrative penalties or other consequences as defined by the Patents Act 1990.