EXPLANATORY STATEMENT
STATUTORY RULES 1982 NO. 232
Issued by the Authority of the Minister for Science and Technology
The purpose of the amendments is to -
(a) correct some typographical errors in the Patents Regulations;
(b) make regulations for the purpose of new sub-section 176(5) of the Patents Act 1952 (inserted by section 188 of the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982 (Act No. 26 of 1982)); and
(c) increase fees prescribed by the Patents Regulations with effect from 1 October 1982.
Details of the proposed amendments are set out below.
Regulation 1 sets a date of commencement of 1 October 1982.
Regulations 2, 4, and 7 correct typographical errors in the existing regulations.
Regulation 3 inserts a new regulation 84A for the purposes of the new sub-section 176(5), empowering the Commissioner, where he is satisfied that such action is justified, having regard to all the circumstances of the case, to remit, or exempt a person from the payment of, the whole or any part of the fee. New sub-section 176(5) reads:
“(5) The regulations may make provision for the remission of, or for exempting persons from the payment of, the whole or any part of a fee”.
Regulation 5 increases the fee prescribed for an international-type search under Article 15(5) of the Patent Cooperation Treaty from $300 to $350. This fee is set in the body of the Regulations rather than in a Schedule.
Regulation 6 inserts new Parts I and II into the Second Schedule to the Patents Regulations, increasing the fees prescribed by most items in those Parts. The fees set by the current Parts I and II and by the proposed Parts I and II are compared in the attached table.
Regulation 8 makes transitional provisions.
In arriving at a new scale of fees (Regulations 5 and 6), the Patent Office has given full and proper consideration to all factors relevant to the fixation of fees. Patent Office fees were last reviewed in 1981 and the existing scales have had effect since 1 October 1981. Current Government policy requires the Office to cover expenditure by receipt. Estimates for 1982/83 indicate that the proposed increase in fees will have this result.
Consultations have taken place on the question of fees with the main interest groups, namely the Institute of Patent Attorneys of Australia and the Australian Manufacturers’ Patents, Industrial Designs, Copyright and Trade Mark Association.
PART I - GENERAL FEES
ITEM/MATTER | PROPOSED FEE | CURRENT FEE | |
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| $ | $ |
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1 | On lodging an application for a patent accompanied by a provisional specification. | 20 | 10 |
2 | On lodging an application for a petty patent.......... | 55 | 45 |
3 | On lodging a complete specification (with or after the lodgment of an application) | 55 | 45 |
| together with- |
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| (a) if the number of sheets comprising the specification, including any drawings contained in the specification, exceeds 10 - for each sheet in excess of 10 | (No change) | 2 |
| (b) if the number of claims exceeds 10 - for each claim in excess of 10 | (No change) | 4 |
4 | On lodging a request for examination of an application- |
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| (a) where the request was not preceded by a direction of the Commissioner under section 47A or 47B of the Act- (i) in the case of a request for an examination to be made in accordance with section 48 of the Act | 160 | 150 |
| (ii) in the case of a request for a modified examination | 130 | 120 |
| (b) where the request was preceded by a direction of the Commissioner under section 47A or 47B of the Act (whether or not the applicant had, before the request was made, requested the deferment of the examination under section 52B of the Act)- |
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| (i) in the case of a request for an examination to be made in accordance with section 48 of the Act | 130 | 120 |
| (ii) in the case of a request for a modified examination | 100 | 90 |
|
| $ | $ |
5 | On lodging a notice under section 47B of the Act requiring the Commissioner to direct an applicant to request examination | (No change) | 60 |
6 | Continuation fee for the purposes of section 47D of the Act, calculated by reference to year after the lodgment of the complete specification in respect of the application to which the fee relates- |
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| (a) the second year......................... | 50 | 40 |
| (b) the third year.......................... | 60 | 50 |
| (c) the fourth year......................... | 70 | 60 |
| (d) the fifth year.......................... | 80 | 70 |
| (e) the sixth year.......................... | 90 | 80 |
| (f) the seventh year........................ | 100 | 90 |
| (g) the eighth year......................... | 110 | 100 |
| (h) the ninth year.......................... | 120 | 110 |
| (i) the tenth year.......................... | 130 | 120 |
| (j) the eleventh year........................ | 140 | 130 |
| (k) the twelfth year......................... | 150 | 140 |
| (l) the thirteenth year....................... | 160 | 150 |
| (m) the fourteenth year....................... | 170 | 160 |
| (n) the fifteenth year........................ | 180 | 170 |
7 | On lodging an application to restore an application that has lapsed or a patent that has ceased | 60 | 50 |
8 | For restoring a lapsed application or ceased parents....... | 130 | 120 |
9 | On lodging a notice of opposition under section 47E, 59, 82, 95, 97 or 160 of the Act or regulation 16F, 43, 51, 77 or 81A | 45 | 40 |
10 | On lodging an application to lodge further evidence in opposition proceedings | (No change) | 50 |
11 | On appearing at a hearing or lodging a request for the exercise of discretionary power under regulation 19D | 55 | 50 |
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| $ | $ |
12 | For sealing a standard patent.................. | 90 | 80 |
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13 | On lodging an application for the grant of an extension of the term of a petty patent | 30 | 20 |
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14 | For granting an extension of the term of a | 200 | 150 |
15 | Renewal fee on the expiration of a year of the patent specified in this item- |
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| (a) the second year.............................. | 50 | 40 |
| (b) the third year................................ | 60 | 50 |
| (c) the fourth year............................... | 70 | 60 |
| (d) the fifth year................................ | 80 | 70 |
| (d) the six year................................. | 90 | 80 |
| (f) the seventh year.............................. | 100 | 90 |
| (g) the eighth year............................... | 110 | 100 |
| (h) the ninth year............................... | 120 | 110 |
| (i) the tenth year............................... | 130 | 120 |
| (j) the eleventh year............................. | 140 | 130 |
| (k) the twelfth year.............................. | 150 | 140 |
| (l) the thirteenth year............................ | 160 | 150 |
| (m) the fourteenth year............................ | 170 | 160 |
| (n) the fifteenth year............................. | 180 | 170 |
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16 | On lodging an application under section 71 of the Act for a duplicate of a patent to be sealed | (No change) | 20 |
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17 | On lodging a request to amend a specification under section 77 of the Act | 70 | 60 |
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18 | On lodging a request under regulation 76, not being a request for change of address, in respect of each application or patent to which the request relates | (No change) | 20 |
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19 | On making an application under section 21, 22, 23, 74 or 95 or sub-section 65(2) or 154(1) or (2) of the Act | 20 | 15 |
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20 | On making a request under section 52B or sub-section 34(4), 52(3) or 54A(1) of the Act | 20 | 15 |
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21 | On filing an agreement under section 64 of the Act | 20 | 15 |
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| $ | $ |
22 | Subject to sub-regulation 5A(3), on the lodgement of any document or documents referred to in sub-section 143(3) and (4) of the Act, 3 months after lodgement of the application and - |
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| (a) before or at the time of lodgment of a request for examination | 30 | 20 |
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| (b) after lodgment of a request for examination...... | 110 | 100 |
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23 | On lodging an application under sub-section 160(2) of the Act for an extension of time on the ground specified in paragraph 160(2)(a) - |
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| (a) if lodged before the expiration of the time to be extended - for each month or part of a month for which the application is made | 25 | 20 |
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| (b) if lodged after the expiration of the time to be extended - the amount payable under paragraph (a) plus an amount of | 50 | 40 |
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24 | For an extension of time under sub-section 160(2) of the Act on the grounds specified in paragraph 160(2)(a) of the Act, if the extension is granted after the expiration of the period for which the application is made - for each month or part of a month for which the time is extended | 25 | 20 |
|
| less any amount paid under paragraph (a) of item 23 | less any amount paid under paragraph (a) of item 23 |
25 | On lodging an application under sub-section 160(2) of the Act for an extension of time on the grounds specified in paragraph 160(2)(b) of the Act | 30 | 20 |
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| $ | $ |
26 | On lodging an application to which paragraph 82(b) applies other than an application under sub-section 54(3) or 66(4) of the Act | (No change) | 40 |
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| together with $20 for each month or part of a month for which the application is made. |
27 | On lodging any other application for an extension of time other than an application under sub-section 54(3) or 66(4) of the Act - for each month or part of a month for which the application is made | 25 | 20 |
28 | For the supply of photographic copies- |
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| (a) of patent specifications................... | (No change) | 5 per specification |
| (b) of any other document................... | (No change) | 3 per document |
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29 | For a certificate by the Commissioner............ | 25 | 20 |
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30 | On lodging a request for the furnishing of information under section 30 of the Act, where the provision of that information does not entail an international-type search or a special search referred to in sub-regulation 87(2) or (3) respectively - in respect of each application, patent or other document | 10 | 5 |
31 | On lodging a request under section 56 of the Act for the result of a search made under sub-section 48(3) of the Act | (No change) | 10 |
32 | For lodgment of substitute pages in compliance with a direction under regulation 7B - |
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| (a) within 3 months after the date on which the direction was given | 20 | 10 |
| (b) after the time specified in paragraph (a) but before the application becomes open to public inspection | 60 | 50 |
33 | For taxing costs........................... | 25 | 20 |
PART II - GENERAL FEES FOR INTERNATIONAL APPLICATIONS
| ITEM/MATTER | PROPOSED FEE | CURRENT FEE |
|
| $ | $ |
1 | Transmittal fee under Rule 14 of the Treaty | 30 | 25 |
2 | Search fee under Rule 16 of the Treaty............ | 350 | 300 |
3 | Additional fee for search under Article 17(3)(a) of the Treaty | 300 | 250 |
4 | Preliminary Examination fee under Rule 58 of the Treaty | 150 | 100 |
5 | Additional fee for international preliminary examination under Article 34(3)(a) of the Treaty | 150 | 100 |
6 | For copies of documents in accordance with Rules 44.3(b) and 71.2(b) of the Treaty-per document | (No change) | 5 |