Patents Amendment Regulations 1999 (No. 2) 1999 No. 184
EXPLANATORY STATEMENT
STATUTORY RULES 1999 No. 184
Issued by the Authority of the Minister for Industry, Science and Resources
Patents Act 1990
Patents Amendment Regulations 1999 (No. 2)
The regulations amend the Patents Regulations 1991 (the Regulations) to:
* clarify the invention title for Patent Cooperation Treaty (PCT) patent applications;
* correct an error in the Regulations that allows the restoration of a patent attorney's name to the Register;
* clarify that the fee specified in item 14 of Schedule 8 to the Regulations only applies to counsel's attendance at a hearing;
* alter the hours of business of the Patent Office prescribed in the Regulations; and
* remove the local designations from the positions of employees specified in Schedule 6A to the Regulations.
Details of the amendments made by these regulations are as follows:
Regulation 1 identifies the regulations as the Patents Amendment Regulations 1999 (No. 2).
Regulation 2 specifies that regulations 1, 2, 3 and Schedule 1 are to commence on gazettal; and Schedule 2 is to commence on 6 September 1999.
Regulation 3 specifies that Schedules 1 and 2 amend the Regulations.
Item 1 of Schedule 1 inserts new subregulation 8. 1 A to provide that a title established by the International Searching Authority under rule 37.2 of the PCT for an international application is taken to be the title of the patent application. The new regulation further provides that if the established title is not in English, the title is taken to be the English translation of the established title.
Item 2 of Schedule 1 amends subparagraph 20.19(a)(ii) of the Regulations, by substituting the reference to 'item 5 or 6' of Part 1 of Schedule 7 with a reference to 'item 7' of Part 1 of Schedule 7 to correct an obvious error.
Item 3 of Schedule 1 amends item 14 of Part 1 of Schedule 8 to the Regulations to clarify that the fee specified in this item only applies to counsel's attendance at a hearing.
Item 1 of Schedule 2 amends regulation 21.1 to extend the hours of business of the Patent Office, from 10 am to 4 pm, to 9 am to 5 pm.
Item 2 of Schedule 2 substitutes subregulation 21.2 with new subregulation 21.2 to provide that the Commissioner of Patents (the Commissioner) may delegate any or all of his or her powers and functions under the Act to an employee of the Patent Office, who holds or performs the duties of the position of Examiner of Patents, or who is employed at the level of Executive level 1 or 2, or APS levels 2 to 6. This amendment will obviate the need to amend the Regulations following every administrative reorganisation in the Patent Office. However, the removal of local designations will not have any substantive effect on the way in which the power of delegation is exercised by the Commissioner. The same careful and rigorous process to determine the specific powers and functions that can be delegated to particular employees or classes of employees in the Patent Office will continued to be employed by the Commissioner.
Item 3 of Schedule 2 omits Schedule 6A to the Regulations, consequent to the proposed amendment to subregulation 21.2.
Overview
The Patents Amendment Regulations 1999 (No. 2) were enacted to refine and correct the existing framework under the Patents Regulations 1991, addressing issues that had arisen in the application and administration of patent laws. These regulations were introduced by the Minister for Industry, Science and Resources under the authority of the Patents Act 1990, aiming to ensure clarity and accuracy in the patent application process, particularly in relation to international applications under the Patent Cooperation Treaty (PCT). The overarching policy objective of these amendments is to streamline administrative processes, enhance the efficiency of the Patent Office, and ensure that patent law remains aligned with international standards and practices.
These regulations specifically target several areas for amendment, including the clarification of patent titles for PCT applications, correction of an error in the restoration of patent attorney names on the Register, specification of fees related to counsel's attendance at hearings, extension of the Patent Office's business hours, and the removal of local designations from certain employee positions to simplify the delegation of powers and functions within the office. By addressing these issues, the regulations aim to reduce ambiguity and administrative burdens, thereby facilitating smoother operations within the patent system.
Scope and Application
The Patents Amendment Regulations 1999 (No. 2) apply to the amendments of the Patents Regulations 1991, impacting the administration and procedural aspects of patent applications in Australia. These regulations are applicable to the Commissioner of Patents and all personnel within the Patent Office who are responsible for the administration of patent applications, including the processing of international applications under the Patent Cooperation Treaty (PCT). The regulations clarify certain procedural elements such as the establishment of patent titles for PCT applications, correct a clerical error concerning the restoration of patent attorneys' names to the Register, specify the application of fees for counsel's attendance at hearings, and adjust the operational hours of the Patent Office. The amendments extend the operational hours from 10 am to 4 pm to 9 am to 5 pm and also provide for the delegation of certain powers and functions to specific categories of Patent Office employees, while removing local designations from certain positions. These regulations operate nationally within Australia, impacting patent applicants, patent attorneys, and the Patent Office itself.
Key Provisions
The Patents Amendment Regulations 1999 (No. 2) primarily amend the Patents Regulations 1991, addressing several aspects of patent applications and office operations. Firstly, Regulation 1 identifies these regulations as the Patents Amendment Regulations 1999 (No. 2). Regulation 2 sets the commencement dates for different parts of the regulations, with regulations 1, 2, 3, and Schedule 1 commencing on gazettal, and Schedule 2 commencing on 6 September 1999. Regulation 3 specifies that Schedules 1 and 2 amend the existing Regulations.
Under the amendments, the title of a patent application for international applications under the Patent Cooperation Treaty (PCT) is clarified. Specifically, Item 1 of Schedule 1 inserts a new subregulation 8.1A, which states that the title established by the International Searching Authority under rule 37.2 of the PCT for an international application is considered the title of the patent application. If the established title is not in English, the title is taken to be the English translation of the established title. This amendment ensures clarity and consistency in the titles of patent applications. Additionally, Item 2 corrects an error in the existing Regulations by amending subparagraph 20.19(a)(ii) to reference the correct item in Schedule 7, thereby rectifying an oversight.
The Regulations also address operational aspects of the Patent Office. Item 3 of Schedule 1 clarifies that the fee specified in item 14 of Schedule 8 only applies to counsel's attendance at a hearing, thereby providing a clearer understanding of fee applicability. Furthermore, Item 1 of Schedule 2 extends the hours of business of the Patent Office from 10 am to 4 pm to 9 am to 5 pm. This extension is aimed at accommodating the needs of applicants and other stakeholders more effectively.
The obligations imposed by these regulations on parties or entities include ensuring that patent titles for PCT applications are established and translated as per the new subregulation 8.1A. Additionally, parties must be aware of the corrected reference in subparagraph 20.19(a)(ii) and the clarified fee applicability in item 14. The extended office hours require adjustments in scheduling and resource allocation to accommodate the longer operating period.
Offences and penalties for non-compliance with these regulations are not explicitly stated in the explanatory statement. However, general provisions of the Patents Act 1990 would apply, which may include fines and other civil or criminal consequences for breaches. The maximum penalties would depend on the specific nature and severity of the breach, as outlined in the principal Act.