EXPLANATORY STATEMENT
STATUTORY RULES 1989 NO. 311
Issued by the Authority of the Minister for Science, Customs and Small Business
The Statutory Rules revoke existing Proclamations under subsections 123(2), 140(1) and 140(3) of the Patents Act 1952 (the Act) and declare Convention countries under subsection 140(1) of the Act. Declarations for the purposes of subsection 123(2) and 140(3) of the Act will also be made by the proposed amendment. Details of the amendment are as follows:
Regulation 1 Subregulation 1(1) defines “the Act”; subregulation 1(2) revokes the existing Proclamation made under subsection, 123(2) of the Act; and subregulation 1(3) revokes the two existing Proclamations made under subsection 140(1) of the Act and the four existing Proclamations made under subsection 140(3) of the Act.
Regulation 2 inserts new regulation 10B. New subregulation 10B(1) declares, under subsection 140(1) of the Act, each of the countries specified in Schedule 4 to the Regulations to be a Convention country for the purposes of the Act. New subregulations 10B(2), (3) and (4) make declarations for the purposes of paragraph 140(3)(a) of the Act, with the effect that an application for a patent or similar protection in respect of an invention that:
• in the case of subregulation 10B(2), is made under the Agreement Relating to the Creation of an African Intellectual Property Organization, Constituting a Revision of the Agreement Relating to the Creation of an African and Malagasy Office of Industrial Property;
• in the case of subregulation 10B(3), is made under the Convention on the Grant of European Patents; and
• in the case of subregulation 10B(4), is an international application within the meaning of the Treaty (which is defined in Part IVA of the Act as being the Patent Cooperation Treaty);
is, in accordance with the terms of the treaty, to be treated as having been made in a Convention country.
Regulation 3 inserts new regulation 80A which declares, for the purposes of the definitions of “foreign vessel” and “foreign aircraft” in subsection 123(2) of the Act, that the laws of each country specified in Part I of Schedule 4 confer corresponding rights within the meaning of that subsection with respect to vessels, aircraft and land vehicles of Australia.
Regulation 4 inserts new Schedule 4 to the Regulations which lists the countries which are Convention countries. The countries listed in Part I of Schedule 4 are also countries whose laws confer corresponding rights with respect to vessels, aircraft and land vehicles of Australia under section 123 of the Act.
Overview
The Statutory Rules 1989 No. 311, issued under the authority of the Minister for Science, Customs and Small Business, revokes existing proclamations and declares Convention countries for the purposes of the Patents Act 1952. This legislative action was taken to ensure that the Australian patent system aligns with international treaties and conventions, facilitating smoother processes for international patent applications. The policy objective is to streamline the treatment of patent applications under various international agreements, thereby enhancing Australia's participation in the global intellectual property framework. The rules also update the list of countries that are recognised as Convention countries, ensuring that patent applications filed in these countries are treated in accordance with the relevant international treaties.
Scope and Application
The Statutory Rules 1989 No. 311, issued under the authority of the Minister for Science, Customs, and Small Business, revoke existing Proclamations and declare Convention countries under specific subsections of the Patents Act 1952. The Act applies to the declaration of Convention countries for patent applications and the recognition of corresponding rights in relation to inventions and intellectual property. The geographic reach of this legislation extends to the countries listed in Schedule 4, which includes various nations under international treaties such as the Agreement Relating to the Creation of an African Intellectual Property Organization, the Convention on the Grant of European Patents, and the Patent Cooperation Treaty. The application of the Act is further specified by the new regulations which declare certain countries as Convention countries for patent applications and recognise corresponding rights in relation to vessels, aircraft, and land vehicles of Australia. The stated exclusions and thresholds are defined within the Schedule 4 to the Regulations, which lists the specific countries subject to these declarations and recognitions. Any further application or restrictions of the Act are to be determined through subordinate instruments as specified in the new regulations.
Key Provisions
The statutory rules, issued under the authority of the Minister for Science, Customs and Small Business, contain several key provisions aimed at updating the list of Convention countries under the Patents Act 1990 (the Act) and clarifying the application of international treaties in the context of patent applications. Regulation 1(1) identifies the Act and revokes existing Proclamations made under subsections 123(2), 140(1), and 140(3). Regulation 1(2) and 1(3) revoke specific Proclamations that were previously in place. Regulation 2 introduces new subregulation 10B, which declares certain countries as Convention countries under subsection 140(1) of the Act, and further specifies how patent applications under different treaties are to be treated as having been made in a Convention country.
These provisions impose specific obligations on applicants for patents, requiring them to ensure that their applications comply with the terms of relevant international treaties. Under subregulation 10B(2), applicants must align with the Agreement Relating to the Creation of an African Intellectual Property Organization, while subregulation 10B(3) necessitates compliance with the Convention on the Grant of European Patents. Subregulation 10B(4) addresses applications under the Patent Cooperation Treaty. These obligations ensure that applicants are aware of the procedural and substantive requirements of each treaty when filing their applications in Australia.
Failure to comply with the provisions outlined in these regulations may lead to various consequences. For instance, if an application does not meet the criteria set out in subregulation 10B, it may not be treated as having been made in a Convention country, potentially affecting the priority date and the overall validity of the patent application. While specific penalties are not detailed in the text, non-compliance with the requirements for patent applications could result in administrative or legal challenges, including the possibility of the patent application being rejected. This could have significant implications for the applicant, potentially leading to loss of rights or the inability to secure patent protection for their invention.