Patents Amendment Regulations 1999 (No. 4) 1999 No. 349
EXPLANATORY STATEMENT
STATUTORY RULES 1999 No. 349
Issued by the Authority of the Minister for Industry, Science and Resources
Patents Act 1990
Patents Amendment Regulations 1999 (No. 4)
Section 228 of the Patents Act 1990 (the Act) allows the Governor-General to make regulations for the purposes of the Act, to prescribe matters necessary or convenient to be prescribed for carrying out or giving effect to the Act and for the conduct of any business relating to the Patent Office.
The regulations amend the Patents Regulations 1991 (the Regulations) to:
* implement decisions made at the Patent Cooperation Treaty (PCT) Union Assembly at its 27th session in Geneva from 20 to 29 September 1999;
* clarify the intention of Regulations 20.19 and 20.19A; and
* update the list of Convention countries in Schedule 4 to the Regulations.
By virtue of subsection 228(5) of the Patents Act 1990 (the Act), it is necessary to keep the English text of the PCT, 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 2000.
Details of the amendments made by these regulations are as follows:
Regulation 1 identifies these amending regulations as the Patents Amendment Regulations 1999 (No. 4).
Regulation 2 specifies that regulations 1, 2, 3 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.
Items 1 and 2 of Schedule 1 amend regulations 20,19 and 20.19A to make it clear that these provisions are mandatory, not discretionary. That is, if the specified preconditions are met the Designated Manager must restore a person's name to, or remove a person's name from, the Register of Patent Attorneys.
Item 3 of Schedule 1 amends Schedule 4 to the Regulations to include Oman in the list of Convention countries.
Item 1 of Schedule 2 amends regulation 1.4(2) to specify that the English text of the PCT in force for Australia as at 1 January 2000 is the text set out in Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty) to the Regulations.
Item 2 of Schedule 2 amends Schedule 2A to the Regulations to update the adoption and amendment dates of the Regulations under the PCT.
Items 3 and 5 of Schedule 2 amend the Schedule of Fees in Schedule 2A to the Regulations. Items 2(a) and 2(b) of the Schedule of Fees are amended to reduce the amount of the designation fee from 150 Swiss francs to 140.
Item 4 of Schedule 2 amends the Schedule of Fees in Schedule 2A to the Regulations. Item 2 of the Schedule of Fees is amended to reduce the total number of designations for which a fee is payable under Rule 4.9(a) of the PCT from 10 to 8.
Item 6 of Schedule 2 amends item 2(i) of Part 4 of Schedule 7 to the Regulations to reduce the maximum number of designations for which a fee is payable from 10 to 8.
Items 7 and 10 of Schedule 2 amend Part 4 of Schedule 7 to the Regulations. Items 2(i) and 3 of Part 4 are amended to reduce the amount of the designation fee from 150 Swiss francs to 140.
Item 8 of Schedule 2 amends Part 4 of Schedule 7 to the Regulations. Item 2(ii) of Part 4 is amended to reduce, from 11 to 9, the number of designations required before the flat fee of 1120 Swiss francs is payable.
Item 9 of Schedule 2 amends Part 4 of Schedule 7 to the Regulations. Item 2(ii) of Part 4 is amended to reduce the maximum total which is payable for designation fees from 1500 Swiss francs to 1120.
Overview
The Patents Amendment Regulations 1999 (No. 4) were enacted to address various issues and updates required in the administration of patents in Australia, particularly in alignment with international obligations and to streamline domestic processes. These regulations were issued under the authority of the Minister for Industry, Science and Resources and are an amendment to the Patents Regulations 1991. The primary objective is to implement decisions made at the 27th session of the Patent Cooperation Treaty (PCT) Union Assembly held in Geneva, clarify certain regulations related to the restoration and removal of names from the Register of Patent Attorneys, and update the list of Convention countries. This ensures that Australian patent laws remain current and effective in a rapidly evolving international patent landscape.
Scope and Application
The Patents Amendment Regulations 1999 (No. 4) implement changes to the Patents Regulations 1991, primarily in response to decisions made at the Patent Cooperation Treaty (PCT) Union Assembly in Geneva. These regulations apply to entities and individuals engaged in patent-related activities in Australia, particularly those who are involved in the registration and management of patent attorneys. The regulations mandate that the Designated Manager must restore a person's name to, or remove a person's name from, the Register of Patent Attorneys if certain conditions are satisfied, thereby clarifying and enforcing the provisions of regulations 20.19 and 20.19A. Additionally, the regulations update the list of Convention countries to include Oman, thereby extending the geographic scope of the Convention's application. The amendments also encompass updates to the English text of the PCT and modifications to the fees associated with patent designations, reflecting the decisions made at the PCT Union Assembly and aimed at ensuring compliance with international standards. The changes take effect from various dates, with the majority commencing on gazettal and some specific amendments effective from 1 January 2000.
Key Provisions
The Patents Amendment Regulations 1999 (No. 4) (the Regulations) amend the Patents Regulations 1991 (the original Regulations) to incorporate decisions from the Patent Cooperation Treaty (PCT) Union Assembly and to clarify certain provisions. Regulation 1 identifies these as the Patents Amendment Regulations 1999 (No. 4). Regulation 2 sets the commencement dates for the Regulations, with the majority effective upon gazettal and Schedule 2 effective from 1 January 2000. Regulation 3 specifies which parts of the original Regulations are amended by Schedules 1 and 2.
The Regulations impose specific obligations on parties involved in patent applications and registrations. For instance, Regulation 1, Item 3 of Schedule 1, mandates that if certain preconditions are met, the Designated Manager must restore a person’s name to, or remove a person’s name from, the Register of Patent Attorneys. This provision is no longer discretionary but mandatory. Regulation 1, Item 2 of Schedule 2, ensures the English text of the PCT is kept current, with the text in force as of 1 January 2000 set out in Schedules 2 and 2A. Furthermore, Regulation 1, Item 3 of Schedule 2, updates the list of Convention countries by including Oman in Schedule 4.
Breaching the provisions of these Regulations could result in various consequences. Although the explanatory statement does not detail specific offences or penalties, non-compliance with mandatory obligations could lead to administrative actions, such as the removal of a patent attorney’s name from the Register or invalidation of patent applications due to incorrect fees. The statement, however, does indicate amendments to the Schedule of Fees in Schedule 2A, which might indirectly affect penalties for non-compliance by altering the financial implications of breaches. For instance, the reduction in the designation fee from 150 Swiss francs to 140 Swiss francs could reflect an adjustment in the fines for incorrect filings or other administrative errors.
Additionally, the Regulations streamline the number of designations for which fees are payable, reducing it from 10 to 8 in multiple instances. This change not only updates the administrative framework but might also influence the financial penalties associated with exceeding the allowable number of designations, potentially resulting in fines or other administrative actions if not adhered to. Despite the lack of explicit mention of penalties, the precision and formality with which these changes are implemented suggest a structured approach to compliance and enforcement.