Patents Regulations (Amendment)

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Legislation au F1997B02834 Regulations Not in force Legislative Instrument

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Patents Regulations (Amendment) 1997 No. 345

EXPLANATORY STATEMENT

STATUTORY RULES 1997 No. 345

Issued by the Authority of the Minister for Industry, Science and Tourism

Patents 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 Assembly of the PCT to Rule 86 and to the Schedule of Fees annexed to the Regulations under the PCT effective from 1 January 1998;

*       amend regulation 11.1 of the Regulations by omitting "in Part 1". The reference is unnecessary consequential upon the deletion of Part 2 of Schedule 4 to the Regulations;

*       amend minor grammatical and typographical errors in regulations 10.3 and 20.43 of the Regulations;

*       make consequential amendments to regulations 22.2 and 23.10 of the Regulations to reflect the correct fee items in the replacement fee schedule;

*       update the list of Convention countries in Part 1 of Schedule 4 to the Regulations declared by virtue of subregulation 83(1) of the Regulations for the purposes of the Act,

*       update the list of prescribed employees in Schedule 6A for the purposes of subsection 209(1) of the Patents Act 1990 (the Act), and

*       amend the fees payable as set out in Part 2 of Schedule 7 to the Regulations to reflect the revised fees to he charged by the Australian Industrial Property Organisation (AIPO) from 1 January 1999.

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 1998.

Details of the amendments made by these Statutory Rules are as follows:

Regulation 1 sets 1 January 1998 as the commencement date for regulations 3, 4, 8, 9, 10, 13 and 14. Regulations 5, 6, 7, 11 and 12 commenced on gazettal.

Regulation 2 identifies the Patents Regulations as those amended.

Regulation 3 provides that the amendments to Part 4 of Schedule 7 to the Patents Regulations only apply to international applications filed on or after 1 January 1998.

Regulation 4 amends subregulation 1.4(2) of the Regulation.. to replace 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 5 amends paragraph 103(2)(b) of the Regulations to correct a grammatical error.

Regulation amends regulation 11.1 of the Regulations by omitting "in Part P'. The reference is unnecessary consequential upon the deletion of Part 2 of Schedule 4 to the Regulations and the substitution of Schedule 4 with a revised Schedule.

Regulation 7 amends paragraph 20.43(3)(b) of the Regulations by correcting the placement of an inverted comma.

Subregulation 8.1 amends the reference to the fee item in subregulation 22.2(2) to reflect the renumbered and replaced Part 2 of Schedule 7 to the Regulations.

Subregulation 8.2 amends regulation 22.2 by omitting subregulation 22.2(4) consequential upon the deletion of previous item 20 from Part 2 of Schedule 7 to the Regulations.

Regulation 9 amends regulation 23.10 of the Regulations by changing both references to fee item 29 to reflect the substituted Part 2 of Schedule 7 to the Regulations.

Subregulation 10.1 amends Rules 86.1 and 86.2 of Schedule 2A to the Regulations to allow the International Bureau to make the Gazette available in paper form or in electronic form, both in English and French.

Subregulations 10.2 and 10.3 amend Schedule 2A to the Regulations to modify the Schedule of Fees annexed to the Regulations under the PCT to reduce the basic and filing fees for PCT applications.

Regulation 11 substitutes Schedule 4 to the Regulations with a revised schedule which:

*       inserts Angola, Antigua and Barbuda, Bahrain, Belize, Botswana, Brunei Darussalam, Djibouti, Dominica, Ecuador, Equatorial Guinea, Fiji, Grenada, Guatemala, Hong Kong, China, India, Jamaica, Kuwait, Macau, Maldives, Mozambique, Myanmar, Namibia, Pakistan, Papua, New Guinea, Qatar, Sierra Leone, Solomon Islands, Tanzania, Thailand. The effect is 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 Act-.

*       deletes the reference to Hong Kong from the United Kingdom entry, and

*       replaces the reference to Zaire with its new name the Democratic Republic of the Congo

Regulation 12 amends Schedule 6A to the Regulations to insert two additional prescribed employees for the purposes of subsection 209(1) of the Act.

Regulation 13 substitutes Part 2 of Schedule 7 to the Regulations with a revised Part which:

*       reduces the level of fees payable for.

- filing a request for examination from $405 to $350 and from $335 to $290 for modified examination,

- filing a request for modified examination from $335 to $290;

- scaling a standard patent under section 61 of the Act from $295 to $200;

- supply of a certificate of the Commissioner from $95 to $15, and

- supply of an additional certificate of the Commissioner from $75 to $15.

-       deletes fees payable for:

-       filing a request for leave to amend a patent request or other document under section 104 of the Act before the request for examination has been received or after the patent request has been accepted;

-       filing a request to amend a patent or wary in the register under subregulation 10.7(1) of the Regulations,

-       filing a request under subregulation 19.1(2) of the Regulations for registration of particulars referred to in paragraph 19.1 (1)(a) or (b) of the Regulations, and

-       filing a request under subsection 17(1) or (2), sections 46 or 215, subsection 49(3), 54(1), 82(1), 92(1) or 113(1) of the Act.

Regulation 14 substitutes Part 4 of Schedule 7 to the Regulations with a revised schedule to decrease the level of basic fee payable under PCT Rule 15.2(a) from 762 Swiss francs to 650 Swiss francs in item 1, and decrease the designation fee payable under Rule 4-9(a) from 185 Swiss francs to 150 Swiss francs in item 2.

 

Overview

The Patents Regulations (Amendment) 1997 No. 345, issued under the authority of the Minister for Industry, Science and Tourism, amend the Patents Regulations 1991 to update and correct various elements in response to changes in international standards and to correct administrative errors. This amendment was enacted to ensure the continued alignment of Australian patent regulations with international practices and to rectify inconsistencies within the domestic regulatory framework. The amendments encompass updates to the English text of the Patent Cooperation Treaty (PCT) to reflect changes made by the PCT Assembly, corrections to grammatical and typographical errors, updates to fee schedules, and modifications to the lists of Convention countries and prescribed employees. The policy objective is to maintain an efficient, accurate, and internationally compliant patent registration process. These amendments were necessary to address discrepancies identified in the original regulations and to reflect the changes in international standards, particularly concerning the PCT and the associated fees. By ensuring the English text of the PCT and related schedules are current, the amendments support the administration of international patent applications and maintain the integrity of the patent system. Additionally, the adjustments to fees and the correction of typographical errors improve the clarity and effectiveness of the regulatory framework, facilitating smoother processing of patent applications and reducing administrative burdens.

Scope and Application

The Patents Regulations (Amendment) 1997 No. 345, issued under the authority of the Minister for Industry, Science and Tourism, serves to amend the existing Patents Regulations 1991 in relation to the Patents Act 1990. The amendments encompass a range of updates to the English text of the Patent Cooperation Treaty (PCT) set out in Schedules 2 and 2A, reflecting changes made by the Assembly of the PCT effective from 1 January 1998. Additionally, the amendments adjust various fees, correct grammatical errors, and update the list of Convention countries and prescribed employees. These changes are designed to ensure that the Regulations remain compliant with international standards and to streamline administrative processes. The amendments to the Regulations are applicable to international patent applications filed on or after 1 January 1998, and fees were adjusted to align with those charged by the Australian Industrial Property Office from 1 January 1999. The scope of the amendments includes international applications and domestic applications where international elements are involved, thereby affecting entities involved in patent filings and those who administer the patent process in Australia.

Key Provisions

The Patents Regulations (Amendment) 1997 No. 345 primarily updates the English text of the Patent Cooperation Treaty (PCT) set out in Schedules 2 and 2A of the Patents Regulations, effective from 1 January 1998, aligning with amendments made by the Assembly of the PCT to Rule 86 and the Schedule of Fees (Regulation 3). This update ensures that the regulatory framework remains current and compliant with international standards. Additionally, the amendment removes an unnecessary reference in regulation 11.1 (Regulation 6), corrects grammatical errors in regulations 10.3 and 20.43 (Regulations 5 and 7), and adjusts fee items in regulations 22.2 and 23.10 to reflect the new fee schedule (Regulations 8 and 9). It also updates the list of Convention countries and prescribed employees (Regulations 11 and 12) and modifies the fees payable as per the revised fees charged by the Australian Industrial Property Organisation (AIPO) from 1 January 1999 (Regulation 13). The amendments impose several obligations on the entities governed by the Act. Firstly, they require the maintenance of the English text of the PCT in an up-to-date form as per subsection 228(5) of the Patents Act 1990 (Regulation 4). Additionally, the changes necessitate the implementation of new fee structures for various patent-related applications and services (Regulation 13). Parties must also adapt to the new list of Convention countries (Regulation 11) and prescribed employees (Regulation 12), which impacts the scope and eligibility criteria for patent filings and processing. The amendments to the Schedule of Fees (Regulation 14) require adherence to the revised fee schedule set by the AIPO. For breaches of the amended regulations, the Patents Act 1990 stipulates various penalties and consequences. The specifics of these penalties are not detailed within the explanatory statement of the Statutory Rules 1997 No. 345, but under the broader Patents Act, penalties can include fines and other civil or administrative actions for non-compliance. The exact penalties for violations of the amended regulations would depend on the nature and severity of the breach, in line with the provisions of the Act.

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