EXPLANATORY STATEMENT
Statutory Rules 1987 No. 138
Issued by the Authority of the Minister for Science
This amendment of the Patents Regulations corrects an omission in the regulations made by Statutory Rules 1987 No. 78 in relation to international applications lodged under the Patent Cooperation Treaty that are treated, by virtue of section 58B of the Patents Act 1952, as applications under the Act. Broadly speaking, the amendment:
(a) confines the operation of the provisions of regulation 19ZC, inserted by Statutory Rules 1987 No. 78, to patent applications that are not international applications to which section 58B of the Act applies; and
(b) adds new provisions to regulation 19ZC to prescribe periods for lodgment of the documents prescribed in regulation 19ZB in respect of a deposit of a micro-organism in relation to an international application to which section 58B of the Act applies.
The periods prescribed in these new provisions meet the requirements of Article 27 of the Treaty under which the lodgment of documents prescribed by regulation 19ZB ought not to be required until after the processing of the international patent application has commenced in Australia. Regulation 15A of the Patents Regulations specifies the periods within which that processing shall commence. In effect, the periods prescribed in these new provisions incorporate the periods presently prescribed in regulation 19ZC, for compliance with the requirements of regulation 19ZB, and the periods specified in regulation 15A.
Details of the regulations are as follows:
Regulation 1 provides that the amending regulations come into operation on 7 July 1987, which is the date on which the amendment of the Patents Regulations made by Statutory Rules 1987 No. 78 comes into operation.
Regulation 2 amends regulation 19ZC which was inserted by Statutory Rules 1987 No. 78. The amendment made by paragraph (a) confines the operation of the provisions of regulation 19ZC made by Statutory Rules 1987 No. 78 to patent applications that are not international applications. Regulation 4 of the Patents Regulations defines “international application” for the purposes of the Patents Regulations to mean an application filed under the Treaty, to which section 58B of the Act applies. The amendment made by paragraph (b) adds new subregulations (2) and (3) to regulation 19ZC. The effect of the new subregulations is to prescribe periods for lodgment of the documents prescribed in regulation 19ZB in respect of a deposit of a micro-organism in relation to an international application. The periods prescribed in the new subregulations are, in the case of an original deposit: where the applicant has requested international preliminary examination under Article 31 of the Treaty - 34 months from the application’s priority date; and, in any other case - 24 months from the priority date. In the case of a new or transferred deposit of a micro-organism, the period is that just specified or 3 months from the date of the new or transferred deposit, whichever is the later.
Overview
The Patents Regulations 1987 were amended by Statutory Rules 1987 No. 138 to correct an omission in the regulations concerning international applications under the Patent Cooperation Treaty, as defined by section 58B of the Patents Act 1952. This amendment was necessitated by the previous omission identified in Statutory Rules 1987 No. 78, which did not adequately address the specific requirements for international patent applications. The enacting body, pursuant to the authority of the Minister for Science, introduced these regulations to align the requirements for international applications with the standards set by the Treaty, ensuring that the lodgment of necessary documents is appropriately timed in accordance with international protocols.
The primary objective of this amendment is to ensure compliance with Article 27 of the Treaty, which mandates that certain documents should only be lodged after the commencement of processing of the international patent application in Australia. The regulations refine the existing provisions by specifying periods for the lodgment of documents related to the deposit of micro-organisms in international applications, thereby facilitating smoother processing and adherence to international standards. These new provisions effectively integrate the periods for compliance with the existing requirements, thus addressing the identified gap and ensuring the integrity of the patent application process under Australian law.
Scope and Application
The Patents Regulations 1987, as amended by Statutory Rules 1987 No. 138, apply to international patent applications filed under the Patent Cooperation Treaty that are treated as applications under the Patents Act 1990 by virtue of section 58B of the Act. These regulations primarily address the specific requirements for the lodgment of documents related to the deposit of micro-organisms in relation to international applications, ensuring compliance with Article 27 of the Treaty. The amendments made by Statutory Rules 1987 No. 138 confine the operation of certain provisions to non-international applications, while adding new subregulations that prescribe precise periods for the lodgment of required documents, which vary depending on whether the applicant has requested international preliminary examination under Article 31 of the Treaty. These amendments and additions are designed to align with the timelines stipulated in other regulations, such as regulation 15A, which specifies the periods within which processing of international patent applications must commence in Australia.
Key Provisions
The main operative sections of these amending regulations, as referenced in the explanatory statement, are Regulation 2 and the new subregulations (2) and (3) of Regulation 19ZC. Regulation 2 clarifies that the provisions of Regulation 19ZC, which were introduced by Statutory Rules 1987 No. 78, apply only to patent applications that are not international applications under the Patent Cooperation Treaty. This means that Regulation 19ZC does not cover international applications that are treated as applications under the Patents Act 1952 by virtue of section 58B of the Act. The new subregulations (2) and (3) of Regulation 19ZC specify the periods for the lodgment of documents prescribed in Regulation 19ZB for international applications, ensuring compliance with the requirements of Article 27 of the Treaty. These periods vary depending on whether the applicant has requested international preliminary examination under Article 31 of the Treaty and whether the deposit of a micro-organism is original or new/transferred.
The obligations and requirements imposed by these regulations on the parties or entities they govern are primarily concerned with the timely lodgment of specific documents related to international applications involving the deposit of micro-organisms. For international applications where the applicant has requested international preliminary examination, the regulations require that the relevant documents be lodged within 34 months from the application’s priority date. For other international applications, the documents must be lodged within 24 months from the priority date. In the case of new or transferred deposits of a micro-organism, the period is either the specified period above or 3 months from the date of the new or transferred deposit, whichever is later. This ensures that the processing of international patent applications in Australia can commence within the specified timeframes, as outlined in Regulation 15A of the Patents Regulations.
The amending regulations do not explicitly outline specific offences, penalties, or consequences for breach. However, failure to comply with the prescribed periods for lodgment of documents could potentially result in the international application not meeting the necessary requirements under the Patents Act 1952 and the Patent Cooperation Treaty. Such non-compliance might lead to the application being deemed invalid or incomplete, which could have significant implications for the applicant, including the potential loss of patent protection in Australia and other countries. It is important for applicants to adhere to these timelines to ensure the successful processing and protection of their international patent applications.