Patents Amendment Regulations 1999 (No. 3) 1999 No. 261
EXPLANATORY STATEMENT
STATUTORY RULES 1999 NO. 261
Issued by the Authority of the Minister for Industry, Science and Resources
Patents Act 1990
Patents Amendment Regulations 1999 (No. 3)
The regulations amend the Patents Regulations 1991 (the Regulations) to:
* clarify that if the Commissioner of Patents (the Commissioner) determines that a produced document should not be published, the information in that document is also protected from publication;
* provide that if an extension of time is granted in which to file a complete patent application, the date of any subsequent patent is not also extended;
* clarify the effect of paragraph 228(2)(t) of the Act;
* introduce a new fee item to apply if a request for withdrawal or conversion of a patent application is made within 3 weeks of the due date for publication; and
* provide certainty as to the date of a divisional patent.
Details of the amendments made by these regulations are as follows:
Regulation 1 identifies the regulations as the Patents Amendment Regulations 1999 (No. 3).
Regulation 2 specifies that regulations 1, 2, 3, 4 and Schedule 1 are to commence on gazettal and Schedule 2 is to commence on 1 January 2000.
Regulation 3 specifies that Schedules 1 and 2 amend the Regulations.
Regulation 4 specifies that new paragraphs 6.3(ea) and (eb) of the regulations (Item 2 of Schedule 1) are transitional.
Item 1 of Schedule 1 inserts a new paragraph in subregulation 4.3(2) to clarify that if the Commissioner prescribes a document from being open to public inspection, the sensitive information contained in that document is also protected from publication.
Item 2 of Schedule 1 inserts two new paragraphs in subregulation 6.3. These amendments will provide that if the Commissioner has extended the time for associating a complete application with a provisional application or for making a Convention application, that the date of any subsequent patent will be the date that would have been the date of the patent, had the extension of time not been granted. The amendments prevent the patent holder obtaining a de facto extension of the term of their patent.
Item 3 of Schedule 1 amends subregulation 8.3(1) of the Regulations to include an explanation of the effect of paragraph 228(2)(t) of the Act. The explanation removes the need to refer to the Act to determine the wording of paragraph 228(2)(t).
Item 4 of Schedule 1 inserts two new fee items in Schedule 7 to the Regulations. The fee is to be paid if an applicant requests that a complete application be treated as a provisional application or be withdrawn within 3 weeks of the due date for publication of the application. Abstracts of published applications are distributed on CD-ROM. If a request to convert an application to a provisional application or withdraw an application is made within 3 weeks of the publication date, to prevent publication of the application, the Patent Office must re-create the entire CD-ROM. The proposed fee items represent a partial-cost recovery of the expenses incurred in removing the application abstract from the CD-ROM at this late stage.
Item 1 of Schedule 2 amends regulation 6.3 of the Regulations by substituting the wording "For the purposes of' with "For" to simplify the regulation.
Item 2 of Schedule 2 substitutes existing paragraph 6.3(f) with new paragraph 6.3(f) to provide that the date of a divisional patent will be the date of filing of the first application in a chain of divisional applications. The existing regulation uses an evidentiary test, which has led to some uncertainty. The new regulation removes the uncertainty by replacing the evidentiary test with an objective means of determining the date of the divisional patent.
Item 3 of Schedule 2 inserts a new subregulation to provide certainty as to the date of a patent for existing divisional patents.
Overview
The Patents Amendment Regulations 1999 (No. 3) were enacted to amend the Patents Regulations 1991, providing clarification and adjustments to the existing framework of patent law in Australia. These regulations were issued under the authority of the Minister for Industry, Science and Resources to address several issues within the current legislative environment. The primary objective of these amendments is to ensure that sensitive information is protected from publication, to prevent the de facto extension of patent terms, to clarify the effect of specific legislative provisions, to introduce a new fee structure for late requests for withdrawal or conversion of patent applications, and to provide certainty regarding the dating of divisional patents. The regulations aim to streamline and clarify various procedural aspects of patent applications and their administration while ensuring that the interests of patent holders and the public are adequately protected.
Scope and Application
The Patents Amendment Regulations 1999 (No. 3) serve to refine and clarify certain provisions within the Patents Regulations 1991, applying to all entities and persons involved in patent applications under the Patents Act 1990. These regulations are applicable on a Commonwealth level and are intended to ensure consistency and clarity in the administration of patent law. Specifically, they address several key areas: the protection of sensitive information within documents that are not to be published, the limitation on extensions of patent terms, the clarification of certain legal provisions, the introduction of fees for late withdrawal or conversion requests, and the specification of the date for divisional patents. These amendments are designed to provide greater certainty and to streamline the process of patent application and administration, ensuring that the rights and obligations of patent holders and applicants are clearly defined and enforced. The regulations also highlight the importance of timely submissions and the financial implications of late requests, while ensuring that the Commissioner of Patents retains the authority to protect sensitive information from unwarranted disclosure.
Key Provisions
The Patents Amendment Regulations 1999 (No. 3) amend the Patents Regulations 1991 to introduce several key changes. Regulation 1 identifies these as the Patents Amendment Regulations 1999 (No. 3), and regulations 1, 2, 3, 4, and Schedule 1 are set to commence upon gazettal, with Schedule 2 commencing on 1 January 2000. Regulation 3 specifies that Schedules 1 and 2 amend the existing Regulations. Regulation 4 indicates that the new paragraphs 6.3(ea) and (eb) in subregulation 6.3 of the regulations (Item 2 of Schedule 1) are transitional provisions.
The key amendments introduced by these regulations include clarifying that if the Commissioner of Patents determines that a produced document should not be published, the sensitive information contained in that document is also protected from publication (Item 1 of Schedule 1). This means that the confidentiality of information deemed inappropriate for public disclosure is maintained. Another significant change is that if an extension of time is granted to file a complete patent application, the date of any subsequent patent will not be extended (Item 2 of Schedule 1). This prevents patent holders from obtaining a de facto extension of the term of their patent by merely extending the time for filing a complete application.
Furthermore, these regulations provide clarity on the effect of paragraph 228(2)(t) of the Patents Act 1990 (Item 3 of Schedule 1). By including an explanation of this paragraph in the Regulations, the need to refer to the Act for determining its wording is eliminated. Additionally, new fee items are introduced for requests to withdraw or convert a patent application within three weeks of the due date for publication (Item 4 of Schedule 1). These fees aim to partially recover the costs incurred by the Patent Office in removing the application abstract from published CD-ROMs.
In terms of obligations and requirements imposed by the regulations, applicants must now pay the specified fees if they request the withdrawal or conversion of a patent application within the stipulated timeframe. The regulations also impose a requirement on the Commissioner to ensure that sensitive information in documents deemed not fit for public inspection is protected from publication. These amendments provide certainty and clarity in the application and enforcement of the Patents Act 1990, ensuring that the administration of patent applications is conducted in a fair and consistent manner.
The regulations also establish consequences for non-compliance. While specific offences are not outlined, breaches of the regulations, such as failure to pay the prescribed fees or improper publication of sensitive information, could lead to administrative actions, including fines or other penalties as prescribed by the Patents Act 1990. The precise penalties are not detailed in the Explanatory Statement but are typically aligned with the severity of the breach and the discretion of the Commissioner. The regulations are designed to uphold the integrity of the patent system by ensuring that sensitive information is protected and that the terms of patents are accurately determined.