Patents Amendment Regulations 2003 (No. 1) 2003 No. 71
EXPLANATORY STATEMENT
STATUTORY RULES 2003 No. 71
Issued by the Authority of the Minister for Industry, Tourism and Resources
Patents Act 1990
Patents Amendment Regulations 2003 (No. 1)
Section 228 of the Patents Act 1990 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.
Subsection 45(3) of the Patents Act requires applicants to provide the Commissioner of Patents with the results of any documentary searches that have been carried out in respect of the invention claimed in the application, or in any corresponding application filed overseas.
The purpose of the Regulations is to amend the Patents Regulations 1991 to extend the transitional period for complying with the current search results regime under subsection 45(3) of the Patents Act from 1 June 2003 to 1 February 2004.
On 1 April 2002 amendments to the Patents Act and Regulations came into effect changing the requirements relating to the filing of search results under subsection 45(3). A transitional arrangement was included under subsection 45(3) whereby 1 January 2003 was set as the earliest date for mandatory compliance for applicants to file search results, irrespective of other time limits (paragraph 3.17A(2)(c) of the Patents Regulations).
There have been a number of implementation problems with the current search results regime. The Intellectual Property Laws Amendment Bill 2002 (the Bill) has been introduced into Parliament to rectify these problems. The amendments in this Bill will completely replace the current search results regime such that compliance with the current regime will not be required by anyone.
Due to delays with the passage of the Bill, the transitional period was extended from 1 January 2003 to 1 June 2003 in November 2002. However, the Bill was not passed by Parliament in the Autumn 2003 sittings, therefore the new search results regime will not be in place before 1 June 2003. To give users of the patent system certainty, the proposed Regulations would extend the current transitional deadline of 1 June 2003 to 1 February 2004.
The details of the Regulations are as follows:
Regulation 1 identifies the Regulations as the Patents Amendment Regulations 2003 (No. 1).
Regulation 2 specifies that the Regulations commence on gazettal.
Regulation 3 provides that Schedule 1 amends the Patents Regulations.
Item 1 of Schedule 1 amends paragraph 3.17A(2)(c) of the Patents Regulations to replace 1 June 2003 with 1 February 2004.
Overview
The Patents Amendment Regulations 2003 (No. 1) were enacted to address implementation issues with the existing search results regime under the Patents Act 1990. These regulations were issued under the authority of the Minister for Industry, Tourism and Resources, and aim to provide certainty for users of the patent system by extending the transitional period for complying with the search results regime. Initially set for 1 June 2003, the compliance deadline was extended to 1 February 2004 due to delays in the passage of the Intellectual Property Laws Amendment Bill 2002, which aimed to completely replace the current regime. The Regulations amend the Patents Regulations 1991 to adjust the compliance date, ensuring a smoother transition until the new regime is fully enacted.
Scope and Application
The Patents Amendment Regulations 2003 (No. 1) applies to applicants for patents under the Patents Act 1990, extending the transitional period for complying with the current search results regime from 1 June 2003 to 1 February 2004. This adjustment is necessary due to delays in the passage of the Intellectual Property Laws Amendment Bill 2002, which was intended to replace the current search results regime entirely. The Regulations aim to provide certainty to users of the patent system by extending the compliance deadline, thereby allowing more time for applicants to adjust to the new requirements. The jurisdictional reach of these Regulations is governed by the Commonwealth of Australia, as they are made under the authority of the Minister for Industry, Tourism and Resources. These Regulations do not specify exclusions or exemptions, applying broadly to all applicants within the transitional period. Subordinate instruments may further extend or restrict the application of these Regulations as needed.
Key Provisions
The main operative sections of the Patents Amendment Regulations 2003 (No. 1) are Regulation 1, which identifies the Regulations, and Regulation 3, which specifies that Schedule 1 amends the Patents Regulations. Regulation 1 states that these Regulations are the Patents Amendment Regulations 2003 (No. 1). Regulation 3 provides that Schedule 1, which amends the Patents Regulations, is part of these Regulations. Item 1 of Schedule 1 specifically amends paragraph 3.17A(2)(c) of the Patents Regulations by extending the transitional period for complying with the current search results regime under subsection 45(3) of the Patents Act from 1 June 2003 to 1 February 2004.
The Regulations impose obligations on patent applicants to comply with the extended transitional period for filing search results. Under the amended provisions, applicants must provide the Commissioner of Patents with the results of any documentary searches that have been carried out in respect of the invention claimed in the application, or in any corresponding application filed overseas. This requirement is specified in subsection 45(3) of the Patents Act, and the Regulations extend the period within which applicants must comply with this requirement from 1 June 2003 to 1 February 2004.
The Regulations do not impose any direct offences, penalties, or civil or criminal consequences for breach of the extended transitional period. However, failure to comply with the search results regime after 1 February 2004 may lead to consequences under the Patents Act and the Patents Regulations 1991, including the potential refusal of patent applications or revocation of granted patents. It is important for applicants to ensure compliance with the extended period to avoid any negative consequences associated with non-compliance after the specified deadline.