Patents Regulations (Amendment) 1993 No. 340
EXPLANATORY STATEMENT
STATUTORY RULES 1993 No. 340
Issued by the Authority of the Minister for Science and Small Business
Patents Act 1990
Patents Regulations (Amendment)
The Statutory Rules amend the Patents Regulations (the Regulations) to update the list of Convention countries and make minor technical and drafting amendments.
Details of the regulations made by these Statutory Rules are as follows:
Regulation 1 identifies the Patents Regulations as those to be amended.
Regulation 2 corrects a typographical error in subregulation 5.10(2).
Regulation 3 includes new regulation 22.7A in Division 2 of Part 1 of Chapter 22 of the Regulations to make it clear that costs, expenses and allowances may only be awarded under this Division in proceedings before the Commissioner of Patents.
Regulation 4 amends subregulation 22.80) of the Regulations to make it clear that the Commissioner may only award costs in proceedings to which Division 2 of Part 1 of Chapter 22 of the Regulations applies.
Regulation 5 substitutes a revised Schedule 4 to the Regulations that includes Belarus, Bolivia, Croatia, the Czech Republic, Kazakhstan, Latvia, Moldova, the Russian Federation, the Slovak Republic, Slovenia, Ukraine and Uzbekistan in the list of Convention countries in Part 1 in Schedule 4, declared for the purposes of the definition of "Convention country" in the Patents Act 1990 (the Act). Revised Schedule 4 also omits Czechoslovakia and the Soviet Union from Part 1, as they ceased to be declared Convention countries.
Regulation 6 substitutes revised fee items 14 and 28 of Part 2 in Schedule 7 to the Regulations to clarify their intent. There has been no change to the amount of fees payable under those items.
Subregulation 6.1 substitutes a revised fee item 14 which makes it clear that that fee item only applies when a party makes a representation to the Commissioner under subregulation 5.9(3) objecting to a proposed amendment or under subparagraph 5.10(5)(c)(i) objecting to an application or proposed action. No fee is payable if a party makes a representation agreeing to an application or a proposed amendment or action.
Subregulation 6.2 substitutes revised fee item 28 which makes it clear that that fee item applies only when an extension of time is granted on the ground specified in paragraph 223(2)(a) of the Act.
Regulation 7 amends the heading of Schedule 8 to the Regulations to include a reference to subregulation 20.30(2) of the Regulations, as it is under this provision that expenses and allowances are awarded in proceedings before the Patent Attorneys Disciplinary Tribunal.
This regulation also amends Part 2 in Schedule 8, to correct an error introduced by Statutory Rules 1993 No. 113. This regulation omits all references to the "Registrar" and substitutes "Commissioner or the Patent Attorneys Disciplinary Tribunal".
Regulation 8 is a validating provision, ensuring that an award of expenses or allowances made by the Patent Attorneys Disciplinary Tribunal under subregulation 20.30(2) or made by the Commissioner of Patents under paragraph 22.8(2)(b) on or after 1 July 1993 and before the commencement of the Regulations, has effect on and from that commencement, as if, at the time the award was made, Part 2 in Schedule 8 had been amended.
Overview
The Patents Regulations (Amendment) 1993 No. 340 were issued under the authority of the Minister for Science and Small Business and are amendments to the Patents Regulations 1991, which themselves were made under the Patents Act 1990. These regulations were introduced to update the list of Convention countries and to make minor technical and drafting amendments to the existing regulations, thereby ensuring that the administration of patent law aligns with current international standards and practices. The policy objective of these amendments is to streamline and modernise the regulatory framework governing patents in Australia, facilitating a more efficient process for patent applicants and the Commissioner of Patents. The changes include correcting typographical errors, clarifying the scope of costs and expenses awards, updating the list of Convention countries, and correcting a referencing error introduced in a previous set of regulations.
Scope and Application
The Patents Regulations (Amendment) 1993 No. 340 applies to the amendments of the Patents Regulations under the Patents Act 1990. These amendments are designed to update the list of Convention countries, correct typographical errors, clarify the awarding of costs and expenses in specific proceedings, and make minor technical and drafting amendments to the Regulations. The Regulations affect all parties involved in patent applications and proceedings in Australia, including applicants, patent attorneys, and the Commissioner of Patents. The jurisdictional reach of these amendments is confined to Australia, as they pertain to the national administration of patent law. Exclusions and exemptions are not explicitly stated in the Explanatory Statement, but the amendments are likely to apply to all relevant proceedings and transactions under the Patents Act 1990 unless otherwise specified. The amendments are to be administered and enforced by the Commissioner of Patents and the Patent Attorneys Disciplinary Tribunal, and their application may be further detailed or extended through subordinate instruments issued under the authority of the Minister for Science and Small Business.
Key Provisions
The Patents Regulations (Amendment) 1993 No. 340 amends the Patents Regulations to update the list of Convention countries and make minor technical and drafting amendments. Regulation 1 identifies the Patents Regulations as those to be amended. Regulation 2 corrects a typographical error in subregulation 5.10(2). Regulation 3 includes new regulation 22.7A in Division 2 of Part 1 of Chapter 22 of the Regulations to make it clear that costs, expenses, and allowances may only be awarded under this Division in proceedings before the Commissioner of Patents. Regulation 4 amends subregulation 22.8(2) of the Regulations to make it clear that the Commissioner may only award costs in proceedings to which Division 2 of Part 1 of Chapter 22 of the Regulations applies. Regulation 5 substitutes a revised Schedule 4 to the Regulations that includes Belarus, Bolivia, Croatia, the Czech Republic, Kazakhstan, Latvia, Moldova, the Russian Federation, the Slovak Republic, Slovenia, Ukraine, and Uzbekistan in the list of Convention countries in Part 1 in Schedule 4, declared for the purposes of the definition of "Convention country" in the Patents Act 1990 (the Act). Revised Schedule 4 also omits Czechoslovakia and the Soviet Union from Part 1, as they ceased to be declared Convention countries.
The obligations and requirements imposed by these regulations are primarily technical and administrative in nature. They clarify and correct existing provisions to ensure that costs, expenses, and allowances are awarded only in proceedings before the Commissioner of Patents or the Patent Attorneys Disciplinary Tribunal. The amendments to Schedule 4 update the list of Convention countries to reflect current international agreements. The changes to fee items 14 and 28 clarify their application, ensuring that fees are only payable under specific circumstances. Regulation 7 amends the heading of Schedule 8 to include a reference to subregulation 20.30(2) of the Regulations, ensuring that expenses and allowances are awarded correctly in proceedings before the Patent Attorneys Disciplinary Tribunal.
There are no specific offences, penalties, or consequences for breach outlined in the Explanatory Statement. However, the regulations ensure that the correct procedures are followed for awarding costs, expenses, and allowances in patent-related proceedings. The regulations also ensure that the list of Convention countries is up-to-date, which is crucial for international patent applications. Any failure to comply with these regulations could potentially lead to disputes or challenges in patent proceedings, but the Statement does not detail specific penalties or consequences for non-compliance.