EXPLANATORY STATEMENT
Select Legislative Instrument 2006 No. 55
Issued by the Authority of the Minister for Industry, Tourism and Resources
Patents Act 1990
Patents Amendment Regulations 2006 (No. 1)
Subsection 228(1) of the Patents Act 1990 (the Act) provides, in part, that the Governor-General may make regulations, not inconsistent with the Act, prescribing matters required or permitted to be prescribed, or 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 228(5) of the Act requires the Governor-General to make regulations setting out the English text of the Patent Cooperation Treaty (the PCT) as in force for Australia on the commencing day of the Act, and afterwards such regulations as are necessary to keep that English text up-to-date.
The PCT is an international agreement that simplifies the procedure for the filing of applications for patents internationally. The international application is governed by the PCT until it ‘enters the national phase’, which is when the applicant requests that the application proceed under the domestic law of each member country selected by the applicant.
The 34th Session of the PCT Union Assembly in Geneva from 26 September to 5 October 2005 made amendments to the Regulations made under the PCT (the PCT Rules) which relate to the publication of PCT applications and the PCT Gazette in electronic form, the addition of Arabic as a language of publication, and exceptions to the all-inclusive designation system. These amendments will be in force from 1 April 2006.
The Regulations amend the Patent Regulations 1991 (the Principal Regulations) to implement these amendments to the PCT Rules by updating the English text of the PCT Rules set out in Schedule 2A. These amendments do not affect national law — they simply update the text of the PCT Rules, in accordance with subsection 228(5) of the Act.
No consultation was undertaken prior to making these Regulations. This is because the Regulations are of a minor or machinery nature only, and do not substantially change the law. The amendments made by Schedule 1 reflect changes to an international treaty and do not change Australian law.
Details of the Regulations are in the Attachment.
Regulations 1 to 4 and Schedule 1 commence on 1 April 2006.
ATTACHMENT
Patents Amendment Regulations 2006 (No. 1)
Regulation 1 identifies the Regulations as the Patents Amendment Regulations 2006 (No. 1).
Regulation 2 provides that the Regulations commence on 1 April 2006.
Regulation 3 specifies that Schedule 1 amends the Patents Regulations 1991 (the Principal Regulations).
Regulation 4 provides for transitional arrangements in relation to the amendments made by Schedule 2A. The amendments apply to any application filed under the Patent Cooperation Treaty (PCT) on or after 1 April 2006. The amendments also apply to PCT applications whose filing date is before 1 April 2006 but only when these applications are published under Article 21 of the PCT on or after 1 April 2006.
Schedule 1 – Amendments
Item 1 amends subregulation 1.4(2) of the Principal Regulations to specify that the English text of the PCT in force for Australia as at 1 April 2006 is the text set out in Schedules 2 and 2A to the Principal Regulations.
Items 2 to 16 amend Schedule 2A to the Principal Regulations to update the text of the PCT Rules to accord with the changes made to the PCT Rules by the Assembly of the International Patent Cooperation Union at the meeting from 26 September to 5 October 2005. The changes relate to publication of PCT applications and the PCT Gazette in electronic form, the addition of Arabic as a language of publication, and correcting a drafting error in Rule 4.9(b) of the PCT Rules relating to exceptions to the all-inclusive designation system.
Overview
The Patents Amendment Regulations 2006 (No. 1) were enacted to address updates to the international Patent Cooperation Treaty (PCT) as required by the Patents Act 1990. This legislative instrument, issued by the Minister for Industry, Tourism and Resources, ensures that the English text of the PCT and its associated rules are kept current, thereby facilitating the administration of international patent applications in accordance with the latest international standards. The regulations reflect amendments made during the 34th Session of the PCT Union Assembly, which introduced changes such as the publication of PCT applications and the PCT Gazette in electronic form, the addition of Arabic as a language of publication, and corrections to the all-inclusive designation system. These amendments do not alter existing Australian law but instead align Australian regulations with the updated PCT Rules, ensuring that the Patent Office can effectively manage international patent applications filed after the commencement of these regulations on 1 April 2006.
Scope and Application
The Patents Amendment Regulations 2006 (No. 1) apply to any person or entity that files an application under the Patent Cooperation Treaty (PCT) on or after 1 April 2006, as well as to PCT applications filed prior to this date but which are published under Article 21 of the PCT on or after 1 April 2006. These regulations update the English text of the PCT Rules to reflect amendments made by the 34th Session of the PCT Union Assembly in Geneva, which took place from 26 September to 5 October 2005. The amendments pertain to the publication of PCT applications and the PCT Gazette in electronic form, the addition of Arabic as a language of publication, and the correction of a drafting error in Rule 4.9(b) of the PCT Rules relating to exceptions to the all-inclusive designation system. Importantly, these changes do not alter existing national law but are necessary to ensure the English text of the PCT Rules remains current and consistent with international standards. The regulations are made under the authority of the Minister for Industry, Tourism and Resources and come into effect on 1 April 2006.
Key Provisions
The main operative sections of the Patents Amendment Regulations 2006 (No. 1) are contained in Regulations 1 to 4 and Schedule 1. Regulation 1 identifies these Regulations as the Patents Amendment Regulations 2006 (No. 1). Regulation 2 specifies that these Regulations commence on 1 April 2006. Regulation 3 states that Schedule 1 amends the Patents Regulations 1991 (the Principal Regulations). Regulation 4 provides for transitional arrangements in relation to the amendments made by Schedule 2A. Schedule 1 updates the English text of the Patent Cooperation Treaty (PCT) Rules to reflect amendments made by the 34th Session of the PCT Union Assembly in Geneva from 26 September to 5 October 2005. These amendments concern the publication of PCT applications and the PCT Gazette in electronic form, the addition of Arabic as a language of publication, and exceptions to the all-inclusive designation system.
The obligations and requirements imposed by these Regulations on the parties governed by them primarily relate to the updated English text of the PCT Rules. Specifically, Schedule 1 requires that the English text of the PCT Rules set out in Schedules 2 and 2A to the Principal Regulations be used for any application filed under the PCT on or after 1 April 2006. For PCT applications filed before 1 April 2006 but published on or after this date, the updated English text must also be applied. The Regulations ensure that the text of the PCT Rules is kept up-to-date in accordance with subsection 228(5) of the Patents Act 1990.
The Regulations do not explicitly outline offences or penalties for breaches. However, failure to comply with the updated PCT Rules could potentially lead to issues in the processing of patent applications, particularly in relation to international filings and the publication of PCT applications. Such non-compliance may result in administrative penalties or delays in the patent application process. The maximum penalties are not specified within these Regulations, but any legal consequences would likely stem from the broader provisions of the Patents Act 1990 or associated administrative actions taken by the Patent Office.