EXPLANATORY STATEMENT
STATUTORY RULES 1982 NO. 211
Issued by the Authority of the Minister for Science and Technology
Australia is a member State of the International Patent Cooperation Union, a Union constituted by the Patent Cooperation Treaty (PCT). Australia acceded to the PCT (and thus became a member of the International Patent Cooperation Union) following approval for such accession being given by section 3 of the Patents Amendment (Patent Cooperation Treaty) Act 1979.
The PCT provides that applications for the protection of inventions in any of the Contracting States may be filed as international applications under the Treaty. An international application must be filed with a “receiving Office”, which checks and processes the application as provided in the PCT and in the Regulations annexed to the PCT (“the PCT Regulations”). Each international application is the subject of an “international search” by an International Searching Authority to discover relevant prior art. International applications may additionally, on the election of the applicant, be subjected to international preliminary examination by an International Preliminary Examining Authority. The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. The Australian Patent Office
functions as a Receiving Office, as an International Searching Authority and as an International Preliminary Examining Authority, and in the course of these functions administers provisions of the PCT and of the PCT Regulations. Similarly, the Australian law applicable to the processing within the Australian Patent Office in its operation as a national patent office (in contrast to its operation as an International Searching Authority or International Preliminary Examining Authority) of international applications which are being treated as applications for the grant of Australian patents must conform to the requirements of the PCT and of the PCT Regulations.
To enable Australia to treat international applications lodged under the PCT as applications for the grant of Australian patents, section 5 of the Patents Amendment (Patent Cooperation Treaty) Act 1979 inserted a new Part IVA, (headed “INTERNATIONAL APPLICATIONS”) into the Patents Act 1952. The definition of “Treaty” in sub-section 58A(1) of that Part, as amended by Schedule 1 to the Statute Law (Miscellaneous Amendments) Act 1981 reads
“‘Treaty’ means the Patent Cooperation Treaty done at Washington on 19 June 1970 (a copy of the English text of which is set out in Schedule 2), together with the Regulations annexed to that Treaty -
(a) as amended under Article 58 of that Treaty by the Assembly of the International Patent Cooperation Union on 14 April 1978, 3 October 1978 and 1 May 1979 (a copy of the English text of which Regulations, as so amended, is also set out in Schedule 2); and
(b) as affected by any other amendements made under Article 58 of that Treaty by the Assembly of the International Patent Cooperation Union, being amendments in respect of which a declaration has been made by the regulations made by virtue of sub-section (3)”.
Sub-section 58(3) of the Patents Act 1952, inserted by Schedule 1 to the Statute Law (Miscellaneous Amendments) Act 1981 reads
“(3) Regulations made under section 177 may declare -
(a) that amendments of the Regulations under the Patent Cooperation Treaty done at Washington on 19 June 1970 were adopted under Article 58 of that Treaty by the Assembly of the International Patent Cooperation Union on a specified date;
(b) that the amendments set out in the regulations are the amendments so adopted by the Assembly; and
(c) that the amendments were adopted with effect on and from a specified date or specified dates.
The PCT Regulations were amended under Article 58 of the PCT on 16 June 1980, 26 September 1980 and 3 July 1981 as set out in column 3 of the Schedule to the attached regulations with effect on and from the dates specified in column 5 of the Schedule. The effect of these amendments is as set out below.
Item 1 - Check List
The new Rule 3.3(a)(ii) substituted by Item 1 changes the items appearing in the check list which forms part of the request that an application be treated as an international application under the PCT. The new Rule
3.3(a)(ii) additionally requires the check list to contain an item indicating whether the international application is accompanied by a copy of a general power of attorney. The new Rule also deletes the check list item “a receipt for the fees paid or a check for the payment of the fees” and inserts the check list item “a document relating to the payment of fees”.
Item 2 - The Request (contents)
The amendment made by Item 2 is to Rule 4(1)(b)(ii), to require that the request contain a reference to any “other search”, in addition to the existing requirement that the request contain “a reference to any earlier international search or to any earlier international-type search”.
Item 3 - Mandatory and Optional Contents; Signature
Item 3 amends Rule 4(1)(c) to enable the applicant to include in the request a request to the Receiving Office to transmit the “priority document” to the “International Bureau” where the application whose priority is claimed was filed with the national Patent Office or intergovernmental authority which is the receiving Office. (The “priority document” is a copy of an earlier national patent application from which the applicant in the international application claims priority under Article 4 of the Paris Convention for the Protection of Industrial Property. The “International Bureau” is the International Bureau of the World Intellectual Property Organization, and is responsible for the administration of the PCT).
Item 4 - Names and Addresses
The new Rule 4.4(c) appearing in Item 4 makes it clear that the telegraphic and teleprinter address and telephone number are those of the agent or common representative; and in the absence of the designation of an agent or common representative in the request, makes it clear that they are the address or telephone number of the applicant first named in the request. The new Rule 4.4(d) makes it clear that, although an applicant may indicate only one address in a request, if no agent has been appointed, then
• if there is only one applicant, that applicant may additionally indicate an address to which notifications may be sent, and
• if there is more than one applicant, the applicant who is common representative may additionally indicate an address to which notifications may be sent.
Item 5 - The Inventor
The change made to Rule 4.6(b) by Item 5 requires the request to contain a statement that the applicant is the inventor, where that is the case; rather than, as formerly, allowing either the applicant to include such a statement in the request or to repeat the applicant’s name in the space reserved for indicating the inventor.
Item 6 - Representation of Several Applicants Not Having a Common Agent
Item 6 changes Rule 4.8(b) to make it clear that in certain circumstances the common representative shall be the applicant first named in the request who is entitled to file
an international application with the receiving Office with which the international application was filed; under the former Rule 4.8(b) in the same circumstances the common representative was simply the applicant first named in the request who is entitled to file an international application.
Item 7 - Priority Claim
The Rule 4.10(b) substituted by Item 7, like the former Rule 4.10(b), provides that in certain circumstances the priority claim shall be considered not to have been made; but unlike the former rule provides that certain obvious errors of transcription shall not have this result. The substituted Rule also additionally provides that certain errors shall be considered as obvious errors.
Item 8 - Reference to Earlier Search
The Rule 4.11 substituted by Item 8 additionally allows for the search report of an International Searching Authority to be based, in whole or in part, on the results of a search other than an international or an international-type search.
Item 9 - Terminology and Signs
Item 9 changes the reference in Rule 10.1(b) to “degrees centigrade” to a reference to ‘‘degrees Celcius”; and omits Rule 10.1(c) (which required density to be expressed in metric units and which was redundant over Rule 10.1(a), which requires units of weights and measures to be expressed in terms of the metric system or also to be expressed in such terms if first expressed in terms of a different system).
Items 10 and 11 - Fitness for Reproduction - Drawings, Formalities, and Tables, in Text Matter
The new Rule 11.2(d) substituted by Item 10 includes an additional reference to new Rule 11.10(d) inserted by Item 11. The new Rule 11.10(d) allows for tables and chemical or mathematical formulae which appear in the description or claims of an international application to be placed sideways on the sheets of paper.
Item 12 - Alterations, Etc.
The new Rule 11.12 substituted by Item 12 removes the qualification to the former Rule 11.12 that the non-compliance with the Rule could be authorised only “in exceptional cases”.
Item 13 - Special Requirements for Drawings
The change made to Rule 11.13(j) by Item 13 is to the effect that where the figures (appearing in the drawings of an international application) are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left hand side of the sheet.
Item 14 - Claims of Different Categories
The Rule 13.2 substituted by Item 14 introduces new alternative (iii); and changes the references in alternatives (i) and (ii) to “one independent claim”, “one process”, “one use of the said product”, and “one apparatus” into references to “an independent claim”, “a process”, “a use of the said product” and “an apparatus”.
Item 15 - Microbiological Inventions
Item 15 inserts a new Rule 13bis, dealing with microbiological inventions.
Items 16 and 17 - Partial Payment - Advancing Fees by the International Bureau
Item 16 deletes Rule 15.5, which deals with the situation where the fee lodged by the applicant in an international application is insufficient. The situation is now covered by new Rule 16bis, inserted by Item 17. The approach taken by the former Rule was to allocate the payment to the sub-heads of fees according to a table of priority. The approach taken by the new Rule is to excuse the insufficient payment of fees so long as the additional amount is paid to the International Bureau within a limited time.
Item 18 - Obligation to Submit Copy of Earlier National Application
In the new Rule 17.1 inserted by Item 18, paragraph (a) additionally allows the late filing of the priority document with the receiving Office where that document was not filed with the international application; new paragraph (b) provides for the transmittal of the priority document to the International Bureau by the receiving Office, where the priority document is issued by the receiving Office; the provision in paragraph (c) formerly appeared as paragraph (b), and paragraph (d) is new.
Item 19 - Change in the Person or Name of the Applicant
Item 19 deletes Rule 18.5. The substance of this rule is now incorporated in Rule 92bis.
Item 20 - Several Applicants
Item 20 deletes the existing Rule 19.2 (which rule is redundant over Rule 4.8(b)) and inserts a new Rule 19.2. This new rule makes it clear that the requirements of Rule 19.1 (in particular the requirement of Rule 19.1(a) that the
Office with which an international application must be lodged is the national Office of or acting for the Contracting State of which the applicant is a resident or national) shall, in the case where there are several applicants, be considered to be met if the application is filed in a national Office of or acting for a Contracting State of which at least one of the applicants is a resident or national.
Item 21 - Manner of Carrying Out Corrections
Item 21 inserts a new Rule 20.3bis, which prescribes the manner in which an applicant may correct certain formal defects in an international application.
Items 22 and 23 - Alternative Procedure - Time Limit under Article 12(3)
The new Rule 22.2(e) inserted by Item 22 changes from 14 months to 15 months the time limit within which the receiving Office must provide a substitute record copy. The new Rule 22.3 inserted by Item 23 also increases time limits by one month; the time limits in this Rule being the time by which the record copy of the international application must have been received by the International Bureau.
Item 24 - Documents Filed with the International Application
The effect of the amendment made to Rule 22.5 by Item 24 is to remove the former requirement that copies of certain documents lodged with the international application must be sent to the International Bureau with the record copy; it will only be mandatory for a copy of any power of attorney and of any priority document to be sent to the International Bureau with the record copy, a copy of any other document will be sent only at the specific request of the International Bureau.
Item 25 - Time Limit
Item 25 changes the time limit prescribed for the purpose of Article 14(4) (i.e. the time limit within which an applicant may correct certain formal defects in an international application) from 6 months to 4 months, both reckoned from the international filing date.
Item 26 - Obligation to Use Results : refund of Fee
Item 26 amends Rule 41.1 to require an International Searching Authority to additionally utilize the results of searches other than the international and international-type searches which they must currently utilize.
Item 27 - Dating of Amendments
Item 27 amends Rule 46.2 to additionally require the International Bureau to notify the applicant of the date of filing an amendment under Article 19. (Article 19 allows the applicant, after receiving the international search report on an application, to amend the claims by filing amendments with the International Bureau).
Item 28 - Procedure
Item 28 adds to Rule 47.1(c) to require the International Bureau to inform each designated Office of the sending and of the date of mailing of the notice referred to in the Rule; and to require each designated Office to accept the notice as conclusive evidence that the communication has taken place on the date specified in the notice.
Item 29 - Statements under Article 19; Indications under Rule 13bis.4
Item 29 amends Rule 49.3 to add the requirement that any indication furnished under Rule 13bis4 (i.e.
indications relating to a microorganism deposited with a depository institution) shall be considered part of the international application.
Item 30 - Change in the Person or Name of the Applicant
Item 30 omits Rule 54.4. The substance of this Rule is incorporated in new Rule 92bis, inserted by Item 45.
Item 31 - The Demand
Item 31 changes Rule 55.1 so as to allow the International Preliminary Examining Authority to relax the requirement that the demand for international preliminary examination be either in the language of the international application or in the language into which the international application is translated under Rule 55.2; permitting the demand to be in any language specified in the agreement between the International Bureau and the International Preliminary Examining Authority.
Item 32 - Failure to Pay (Handling Fee)
Rule 57.4(b) relates to the late payment of handling fees; which are the fees payable for the benefit of the International Bureau in respect of each demand for international preliminary examination. Under the present Rule 57.4(b), late payment of a handling fee results in the demand being considered as if it had been received on the date on which the International Preliminary Examining authority receives the handling fee. Under the new Rule 57.4(b), substituted by Item 32, the handling fee, if paid no more than one month late, shall be considered as if it had been paid on the due date.
Item 33 - Failure to Pay (Supplement to the Handling Fee)
Rule 57.5(b) relates to the supplement to the handling fee, which is a fee payable to the International Bureau when, after a certain deadline, an applicant indicates (i.e. “elects”) additional Contracting States in which the results of international preliminary examination are to be utilized. The fee is for translation of the international preliminary examination report into the additional languages made necessary by the late election, the translations being made by the International Bureau. Under the present Rule 57.5(b), late payment of the supplement to the handling fee results in the later election being considered as if it had been received on the date on which the International Bureau receives the supplement to the handling fee. Under the new Rule 57.5(b), substituted by Item 33, the handling fee, if paid no more than one month late, shall be considered as if it had been paid on the due date.
Item 34 - Defects in the Demand
Rule 60.1(b) relates to the correction of formal defects in the demand for international preliminary examination. Under the present Rule 60.1(b), if the defect is corrected within the prescribed time limit the demand shall be considered as if it had been received on the date on which the International Preliminary Examining Authority receives the correction. Under the new Rule 60.1(b) substituted by Item 34, if the correction is received within the prescribed time limit and if the demand as submitted contained at least one election and permitted the international application to be identified (i.e. if it contained the minimum information to allow it to be effective
as an election), then the correction of the defects results in the demand being treated as if it had been received on its actual filing date. In any other case, under the substituted rule, correction of the formal defects within the prescribed time limits results in the demand being considered as if it was filed on the date on which the International Preliminary Examining Authority receives the correction.
Item 35 - Defects in Later Elections
Rule 60.2(b) relates to correction of formal defects in any later election of Contracting States in which the applicant intends to use the results of international preliminary examination. Under the existing Rule 60.2(b), if the applicant complies within the prescribed time limits with an invitation to correct formal defects in the later election, then the later election shall be considered as if it had been received on the date on which the International Bureau received the correction or, where the supplement to the handling fee required under the existing Rule 57.5(b) is received on a date later than the correction, on that date. Under the new Rule 60.2(b) substituted by Item 35, if the correction is received within the prescribed time limit and if the later election as submitted contained at least the election of one country and permitted the international application to be identified (i.e. if it contained the minimum information to allow it to be effective as an election) then the correction of the defects results in the later election being treated as if it had been received on its actual filing date. In any case, under the substituted rule, correction of the formal defects within the prescribed time limit results in the later election being considered as
if it was filed on the date on which the International Bureau receives the correction.
Item 36 - Statements Under Article 19; Indications under Rule 13bis.4
Item 36 changes Rule 76.3 to incorporate a reference to the new Rule 13bis.4 (inserted by Item 15). Items 37, 38 and 39 - Date of Documents - Delay or Loss in Mail - Interruption in the Mail Service
The change to Rule 80.6(a) by Item 37 adds the second sentence, which has the effect of extending time limits where the time runs from the date of a document emanating from a national Office or intergovernmental organisation and the document was delivered through the mail more than 7 days after the date it bears. New Rule 80.6(b) allows the receiving Office to exclude the operation of this change, subject to notification of the exclusion in the PCT Gazette. The changes to Rules 82.1(a) and 82.2(a) effected by Items 38 and 39 remove the exclusion of Rule 22.3 (which Rule prescribes the time limit by which the record copy of the international application must have been received by the International Bureau) from the operation of Rules 82.1(a) and 82.2(a).
Items 40 and 41 - Appointment
Rule 90.3(a) deleted by Item 40 required the appointment of an agent or of a common representative by all the applicants signing the request or by all the applicants signing a separate power of attorney. The new Rule 90.3(a) allows the appointment of an agent or of a common representative by each applicant, at his option, signing either the request or a separate power of attorney. New
Rule 90.3(d) inserted by Item 41 allows the filing of a general power of attorney, i.e. a power of attorney not limited in its operation to a specific international application.
Item 42 - Manner of Carrying out Rectification
The new Rule 91.2, inserted by Item 42, prescribes by reference to the Administrative Instructions the manner in which obvious errors of transcription in the international application or in other papers submitted by the applicant may be rectified.
Item 43 - Need for Letter and for Signature
The new Rules 92.1(b) and (c) inserted by Item 43 relate to non-compliance with Rule 92.1(a). Rule 92.1(a) requires that where any paper submitted by the applicant in the course of the international procedure (other than the international application itself) is not in the form of a letter, then that paper is to be accompanied by a letter signed by the applicant and identifying the application to which it relates. The omitted Rule 92.1(b) rendered ineffective any paper submitted without such a letter. The substituted Rule 92.1(b) enables the applicant to lodge such a letter within one month of being invited to do so; and if the applicant does so the original omission to supply the letter is disregarded. If the applicant does not supply the letter within the one month time limit then the applicant shall be informed that the paper has been disregarded. The new Rule 92.1(c) provides that where the non-compliance with the requirement provided for in paragraph (a) (i.e. the
requirement for the letter) has been overlooked and the paper taken into account in the international procedure, then the non-compliance with Rule 92.1(a) shall be disregarded.
Item 44 - Use of Telegraph, Teleprinter, Etc.
New Rule 92.4 inserted by Item 44 allows the sending of any document subsequent to the international application by “telegraph or teleprinter or other like means” provided that, within 14 days of having been so sent, the contents of the document are furnished in a form complying with the requirements of the other rules. Rule 92.4 also requires each national Office or intergovernmental organisation to notify the International Bureau of the means (i.e. telegraph, teleprinter, or the like) by which it is prepared to receive documents and requires the International Bureau to publish both this information and the same information in relation to itself.
Item 45 - Change in Certain Indications in the Request or the Demand
Item 45 inserts a new Rule 92bis which requires the International Bureau to record changes in the person, name, residence, nationality or address of the applicant and in the person, name or address of the agent, or of the common representative or of the inventor on request made by the applicant or the receiving Office. (This part of Rule 92bis incorporates the effect of Rule 18.5 repealed by Item 19). Rule 92bis also requires the International Bureau to notify the relevant receiving Office, International Searching Authority, International Preliminary Examining Authority and designated Office of the change and to supply a copy of each such notification to the applicant.
Item 46 - Schedule of Fees
Item 46 inserts a new schedule of fees payable for the benefit of the International Bureau, increasing fee items 1 to 4 and inserting a new item 5 as required by the new Rule 16bis.2(a) inserted by Item 17.