Patents Regulations (Amendment) 1998 No. 141
EXPLANATORY STATEMENT
STATUTORY RULES 1998 NO. 141
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:
* implement the amendments made to the Regulations under the Patent Cooperation Treaty (PCT Rules) which were adopted by the Assembly of the Patent Cooperation Treaty on 1 October 1997;
* amend regulation 22.15 to enable the Australian Patent Office, in its role as a receiving Office, to receive international applications filed in any language; and
* amend subclause 7(1) of Schedule 3 to the Patents Regulations to clarify the form in which the Patent Office will accept filed documents.
By virtue of subsection 228(5) of the Act, it is necessary to keep the English text of the Patent Cooperation Treaty 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 PCT Rules take effect, that is 1 July 1998.
Details of the amendments made by these Statutory Rules are as follows:
Regulation 1 sets 1 July 1998 as the commencement date for regulations 3, 4 and 5. Regulations 1, 2 and 6 commenced on gazettal.
Regulation 2 identifies the Patents Regulations as those amended.
Regulations 3 and 5 implements the amendments made to the Regulations under the PCT which were adopted by the Assembly of the PCT on 1 October 1997. The changes to the PCT Rules that are to commence on 1 July 1998 are summarised as follows:
* Languages-receiving Offices will be able to accept international applications filed in any language. If the application is filed in a language which is not accepted by the competent International Searching (ISA) or International Preliminary Examination Authority (IPEA) the applicant will be required to file a translation of the application into a language which is accepted by the competent Authority and is also a language of publication.
* Priority-the making, correcting and addition of priority claims has been liberalised. The PCT Rules will permit applicants to add or correct any priority claim until 16 months from the date of priority.
* Biological materials-the scope of the Rules concerning micro-organisms has been broadened to cover other biological material.
* Sequence listings-the Rules concerning applications relating to nucleotide and amino acid sequences have been revised to require the listing to be in a language neutral format as a separate part of the description. This change will have the effect of eliminating a variety of standards with which applicants currently have to comply.
* Preliminary examination-the rules will provide that a demand for preliminary examination filed with any ISA, IPEA, Receiving office or the International Bureau will retain that date of filing and will be forwarded to the correct Authority. Currently, when a demand is not filed with the competent IPEA the applicant will invariably lose all rights. This is because Chapter 2 of the PCT (International Preliminary Examination) is not evoked and when that error is discovered it is too late to enter the national phase at 20 months. Access to the preliminary examination flies will be liberalised by explicitly allowing access to the elected office file.
Regulation 4 omits and substitutes regulation 22.15 of the Regulations . This amendment enables the Australian Patent Office, in its role as a receiving Office, to receive international applications filed in any language. This change will only affect a small number of applicants as a majority of applications will continue to be filed in English. However, by enabling the receiving Office to receive applications in all languages the change removes a barrier which may prevent non-English speaking applicants from gaining priority from the original filing date. For example, if an applicant files a non-English application with the receiving Office under the previous arrangements that application would have been rejected because it was not in English. This would have resulted in the applicant losing his or her entitlement to a patent because another applicant could have filed an application for a similar invention in the period before the translated application was filed.
Regulation 6 amends subclause 7(1) of Schedule 3 to the Regulations to clarify the form in which the Patent Office will accept a patent request, specification or abstract. The amendment provides that patent requests, specifications or abstracts filed with the Office should be in some form of typescript and that the Office will not accept handwritten documents in any form other than allowed by subclause 7(2).