Patents Regulations (Amendment) 1995 No. 427
EXPLANATORY STATEMENT
STATUTORY RULES 1995 No. 427
Issued by the Authority of the Minister for Small Business, Customs and Construction
Patent Act 1990
Patents Regulations (Amendment)
The Statutory Rules amend the Patents Regulations (the Regulations) to:
• update the English text of the Patent Cooperation Treaty (PCT) set out in Schedules 2 and 2A to the Regulations consequential to the amendments made by the Governing bodies of the World Intellectual Property Organization (WIPO) to the Schedule of Fees annexed to the Regulations under the PCT, effective from 1 January 1996;
• amend the fees for international applications payable for the benefit of the International Bureau of WIPO set out in Pan 4 of Schedule 7 to the Regulations to reflect the changes made to the Schedule of Fees annexed to the Regulations under the PCT; and
• update the fist of Convention countries in Part 1 of Schedule 4 to the Regulations declared by virtue of subregulation 8.5(1) of the Regulations for the purposes of the definition of "Convention country' in the Act.
By virtue of subsection 228(5) of 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. Consequently, the necessary amendments proposed to be made to the English text will be taken to commence on the date on which the relevant amendments to the Regulations under the PCT take effect, that is 1 January 1996.
Details of the amendments made by these Statutory Rules are as follows:
Regulation 1 sets 1 January 1996 as the commencement day for these Regulations.
Regulation 2 identifies the Patents Regulations as those to be amended.
Regulation 3 amends subregulation 1.4(2) of the Regulations to replace 1 January 1994 with 1 January 1996 as the date of effect of the English text of the PCT, set out in Schedule 2 and 2A to the Regulations, as in force for Australia.
Regulation 4 amends regulation 22.4 of the Regulations to include a provision to reduce all fees payable for the benefit of the International Bureau of WIPO by 75% for international applications filed by any applicant who is a natural person and who is a national of, and resides in, a State whose per-capita national income is below US$3,000. Also included into regulation 22.4 is a provision which defines 'per capita national income'.
Regulation 5 amends Schedule 2A to the Regulations to modify the Schedule of Fees annexed to the Regulations under the PCT to increase the maximum number of designation fees payable under PCT Rule 4.9(a) from 10 to 11 and to reduce all fees payable for the benefit of the International Bureau of WIPO by 75% for international applications filed by any applicant who is a natural person and who is a national of, and resides in, a State whose per-capita national income is below US$3,000.
Regulation 6 inserts into in Schedule 4 to the Regulations Albania, Peru, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, Turkmenistan and Venezuela with the effect that, under subregulation 8.5(1) of the Regulations, each of these countries is declared to be a "Convention country" for the purposes of the definition of "Convention country" in the Act.
Regulation 7 amends Item 2 of Part 4 of Schedule 7 to the Regulations to increase the maximum number of designation fees payable under PCT Rule 4.9(a) from 10 to 11.
Overview
The Patents Regulations (Amendment) 1995 No. 427, issued under the authority of the Minister for Small Business, Customs and Construction, amends the Patents Regulations 1991 to address the need for updating the English text of the Patent Cooperation Treaty (PCT) schedules, adjusting the fees for international applications, and modifying the list of Convention countries. The amendments respond to changes in the Schedule of Fees by the World Intellectual Property Organization (WIPO), ensuring that the Australian regulations remain aligned with international standards and requirements. The policy objective, as stated in the explanatory statement, is to maintain the English text of the PCT in an up-to-date form, reflecting changes effective from 1 January 1996, and to adjust the fees and list of Convention countries accordingly.
Scope and Application
The Patents Regulations (Amendment) 1995 No. 427 pertains to the amendments made to the Patents Regulations under the Patent Act 1990. These amendments primarily concern the updating of the English text of the Patent Cooperation Treaty (PCT) set out in Schedules 2 and 2A of the Regulations, reflecting changes made by the Governing bodies of the World Intellectual Property Organization (WIPO). This update is necessitated by subsection 228(5) of the Act, ensuring that the English text of the PCT remains current. Furthermore, the amendments adjust the fees payable to the International Bureau of WIPO for international applications, particularly reducing fees by 75% for natural persons who are nationals of, and reside in, a state with a per-capita national income below US$3,000. The Regulations also modify the list of Convention countries in Schedule 4 to include Albania, Peru, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, Turkmenistan, and Venezuela. These amendments apply across Australia and are designed to align with the international standards set by WIPO, ensuring that the Australian regulatory framework remains compatible with global patent practices.
Key Provisions
The Patents Regulations (Amendment) 1995 No. 427 Statutory Rules primarily update the English text of the Patent Cooperation Treaty (PCT) set out in Schedules 2 and 2A of the Regulations, aligning it with amendments made by the World Intellectual Property Organization (WIPO) effective from 1 January 1996 (Reg. 3). These amendments are necessary to comply with subsection 228(5) of the Patent Act 1990, ensuring the English text of the PCT is kept current. Additionally, the Regulations amend the fees for international applications payable to WIPO to reflect updated fee schedules (Reg. 4 and 5). The amendments also update the list of Convention countries in Schedule 4 of the Regulations (Reg. 6) and adjust the maximum number of designation fees payable under PCT Rule 4.9(a) from 10 to 11 (Reg. 5 and 7).
Under the amended Regulations, various obligations and requirements are imposed on parties involved in patent applications. These include the requirement to pay fees according to the updated fee schedule, which now includes a 75% reduction for international applications filed by natural persons from countries with a per-capita national income below US$3,000 (Reg. 4). Applicants must also ensure that the English text of the PCT in their applications is consistent with the updated version set out in Schedules 2 and 2A. The Regulations further mandate that the updated list of Convention countries be referenced for determining eligibility under certain provisions of the Patent Act 1990.
The Statutory Rules impose specific penalties and consequences for non-compliance with the amended Regulations. While the explanatory statement does not explicitly outline penalties for breaches, it is reasonable to infer that failure to adhere to the updated fee schedule, incorrect referencing of the PCT English text, or improper declaration of Convention countries could lead to administrative penalties or other legal consequences as prescribed under the Patent Act 1990. These might include fines, refusal to process applications, or other administrative actions deemed necessary to enforce compliance with the Regulations.