Patents Amendment Regulations 1998 (No. 9) 1998 No. 342
EXPLANATORY STATEMENT
STATUTORY RULES 1998 NO. 342
Issued by the Authority of the Minister for Industry, Science and Resources
Patents Act 1990
Patents Amendment Regulations 1998 (No. 9)
The Statutory Rules amend the Patents Regulations 1991 (the Regulations) to:
* amend subregulation 22.1(1) to remove the requirement that fees payable to the Commissioner of Patents be paid at the Patent Office or a sub-office of the Patent Office;
* implement amendments made to the Rules under the Patent Cooperation Treaty (PCT Rules) that were adopted by the Assembly of the PCT at its 26th session in Geneva from 7 to 15 September 1998. These amendments lower some fees payable under the PCT;
* update Schedule 2A to the Regulations to insert into the PCT Rules two new sub-rules that were agreed by the Assembly of the PCT at its 24th Session at Geneva on September 16 to October 1 1997. The sub-rules allow for electronic filing of international applications and other documents relating to international applications and for transmittals to be carried out by electronic means between one national Office or intergovernmental organisation and another; and
* update the list of Convention countries in Schedule 4 to the Regulations.
By virtue of subsection 228(5) of the Act, it is necessary to keep the English text of the Patent Cooperation Treaty, set out in Schedules 2 and 2A to the Regulations, in an up-to-date form. The necessary amendments to the English text commence on 1 January 1999.
Details of the amendments made by these Statutory Rules are as follows:
Regulation 1 identifies these amending regulations as the Patents Amendment Regulations 1998 (No. 1).
Regulation 2 sets 1 January 1999 as the commencement date for these Statutory Rules.
Regulation 3 specifies that Schedule 1 amends the Regulations.
Item 1 of Schedule 1 specifies that the English text of the PCT as in force for Australia as at 1 January 1999 is the text set out in Schedules 2 (the PCT) and 2A (the PCT Rules) to the Regulations.
Item 2 of Schedule 1 amends subregulation 22.1(1) of the Regulations to remove the requirement that fees payable to the Commissioner of Patents be paid at the Patent Office or a sub-office of the Patent Office. Removal of this requirement will enable the Office to implement modem methods of fee payment.
Item 3 of Schedule 1 amends subregulation 22.1(1) to reflect the new style of Part 4 of Schedule 7 to the Regulations.
Item 4 of Schedule 1 inserts new subregulation 22.4(1B). This subregulation provides that the total international fee payable for the benefit of the International Bureau is reduced by 200 Swiss francs if the application is prepared electronically in accordance with the Administrative Instructions, and a paper and electronic copy are filed in accordance with the appropriate Administrative Instructions.
Item 5 of Schedule 1 updates Schedule 2A to the Regulations to insert into the PCT Rules new sub-rules 89bis and 89ter.
Item 6 of Schedule 1 amends the Schedule of Fees in Schedule 2A to the Regulations.
Items 7 and 8 of Schedule 1 amend Schedule 4 to the Regulations to include the Kingdom of Cambodia and the Lao People's Democratic Republic in the list of Convention countries.
Item 9 of Schedule 1 amends the reference made in item 7 of Part 3 of Schedule 7 to Part 4 of Schedule 7 to accord with the new structure of Part 4 of Schedule 7.
Item 10 of Schedule 1 amends Part 4 of Schedule 7 to reduce the maximum number of designations for which a fee is payable for an international application from 11 to 10.
Overview
The Patents Amendment Regulations 1998 (No. 9), issued under the authority of the Minister for Industry, Science and Resources, serve to amend the Patents Regulations 1991 in response to recent international changes and the need for modernisation within the Australian patent system. These regulations aim to streamline the patent application process by allowing fee payments to be made outside the traditional confines of the Patent Office or its sub-offices, thereby facilitating the adoption of modern payment methods. Furthermore, the regulations incorporate amendments to the Rules under the Patent Cooperation Treaty (PCT), which were agreed upon by the Assembly of the PCT, to reflect changes in international fees and the allowance for electronic filing of international applications and related documents. The policy objective is to ensure that the Australian patent system remains aligned with international standards, facilitating smoother international patent applications and reducing administrative burdens.
Scope and Application
The Patents Amendment Regulations 1998 (No. 9) amend the Patents Regulations 1991 to implement changes in the Patent Cooperation Treaty (PCT) and to update the English text of the PCT in Schedules 2 and 2A to the Regulations. These changes were adopted by the Assembly of the PCT at its 26th session in Geneva from 7 to 15 September 1998. The regulations apply to the Commissioner of Patents and to entities and individuals dealing with patent applications under the Patents Act 1990. The changes include removing the requirement for fees to be paid at the Patent Office or a sub-office, lowering some fees payable under the PCT, and allowing for electronic filing of international applications and other documents. These amendments commence on 1 January 1999 and are necessary to keep the English text of the PCT up-to-date as per subsection 228(5) of the Act. The amendments also include updates to Schedule 4 to include new Convention countries and modifications to the number of designations for which fees are payable for an international application.
Key Provisions
The Patents Amendment Regulations 1998 (No. 9) bring significant changes to the Patents Regulations 1991, primarily by amending subregulation 22.1(1) to eliminate the need for fees to be paid at the Patent Office or a sub-office of the Patent Office, instead allowing for modern methods of fee payment (Item 2). This change aims to facilitate easier and more flexible payment processes for applicants and patent holders. Furthermore, the Regulations implement amendments to the Rules under the Patent Cooperation Treaty (PCT Rules) adopted by the PCT Assembly in 1998, which include reductions in some PCT fees (Item 5). These updates ensure that the PCT Rules remain aligned with international standards and practices.
These Regulations impose specific obligations on parties involved in the patent application and maintenance process. For instance, applicants must now adhere to the updated fee structures and payment methods as outlined in the amended Regulations (Item 4). Additionally, they must comply with the new sub-rules 89bis and 89ter inserted into the PCT Rules, which allow for electronic filing of international applications and documents, as well as the transmittal of these documents electronically between national offices or intergovernmental organisations (Item 5). Furthermore, the Regulations require that applicants who prepare their applications electronically must file both a paper and an electronic copy, in accordance with the Administrative Instructions (Item 4).
Breach of the provisions within these Regulations may lead to civil or criminal consequences, although specific penalties are not detailed within the explanatory statement. Generally, failure to comply with the payment methods or procedural requirements stipulated in the Regulations could result in administrative actions or legal proceedings. For example, if an applicant does not adhere to the updated fee payment methods, the Patent Office may refuse to process the application or consider it invalid. Similarly, non-compliance with the electronic filing requirements could lead to the application being rejected or deemed incomplete. While the Regulations themselves do not specify maximum penalties for such breaches, the broader legislative framework under the Patents Act 1990 may impose various penalties, including fines and other administrative sanctions.
Overall, these Regulations aim to streamline the patent application process by introducing modern payment methods, updating fee structures, and incorporating new international standards for electronic filings. Compliance with these provisions is essential for applicants to ensure their applications are processed efficiently and in accordance with current legal requirements.