Patents Regulations (Amendment) 1994 No. 317
EXPLANATORY STATEMENT
STATUTORY RULES 1994 No. 317
Issued by the Authority of the Minister for Small Business, Customs and Construction
Patents Act 1990
Patents Regulations (Amendment)
The Statutory Rules amend the Patents Regulations (the Regulations) to revise certain fees payable under the Regulations; to revise the costs and an allowance that may be awarded in proceedings before the Commissioner; to provide transitional arrangements for certain actions; and to make a number of minor consequential and drafting changes. Details of the amendments are as follows:
Regulation 1 sets 1 October 1994 as the commencement day for these Regulations.
Regulation 2 identifies the Patents Regulations as those to be amended.
Regulations 3, 4, 5, 6 and 7 amend references to various fee items in regulations 13.3, 13.6, 22.2, 23.9, and 23. 10, consequent on the renumbering of fee items in Part 2 of Schedule 7.
Regulation 8 revises Parts 2 and 3 of Schedule 7 to the Regulations, to better align the amounts of the fee items in those Parts with the costs of the actions for which the fees are prescribed. Parts 1 and 4 of Schedule 7 are unchanged. Paragraph 3(c) and items 6, 24 and 25 in Part 2, as it was prior to amendment, have been omitted; the amounts of paragraph 3(b) and item 5 in Part 2 have been reduced. Consequent on the omission of those items, the fee items have been renumbered to ensure consecutive numbering and consequential changes to references to fee items made.
The Australian Industrial Property Organisation (AIPO), which incorporates the Patent, Trade Marks and Designs Offices, operates on a Group 2 Trust Account arrangement. AIPO is required to recover all of its costs from fees charged by the Patent, Trade Marks and Designs Offices. AIPO is committed to containing cost increases for normal operations within inflation and to achieve productivity gains at least equal to the efficiency dividend required of the Australian Public Service.
Fees for certain services performed by the Patent, Trade Marks and Designs Offices are increased with effect from 1 October 1994. The aggregate effect of these fee increases will be to raise an additional $2.6 million revenue in the period to the end of 1995, given the predicted composition of demand. Cost increases over this period, flowing from AIPO's move to accrualbased pricing, expected changes in accommodation costs, and inflation, are expected to amount to approximately $4 million. The shortfall will be absorbed through productivity increases in AIPO. The aggregate increase in fees since commencing full cost recovery in 1984 remains less than CPI.
To achieve the additional revenue required to the end of 1995, the fee levels of 34 of the 41 fee items prescribed in Part 2 of Schedule 7 to the Regulations, prior to amendment, have been increased, along with the fee levels of 5 of the 7 fee items prescribed in Part 3 of that Schedule.
Regulation 9 amends Schedule 8 to the Regulations, which sets out items and amounts of costs, expenses and allowances that may be awarded against parties to proceedings before the Commissioner. The amounts of the cost items (in Part 1 of Schedule 8) and the daily maximum amount that may be paid for meals and accommodation to a person attending proceedings before the Commissioner (specified in paragraph 2(b) in Part 2 in Schedule 8) are set to retain parity with the amounts of costs that may be awarded in the Supreme Court of the Australian Capital Territory. The amounts of items 2 to 12 in Part 1, prior to amendment, and the amount specified in paragraph 2(b) in Part 2, have been increased to reflect increases in the amounts of costs that may be awarded in that Court. Also, the wording in some of the amounts of costs has been amended to reflect the latest drafting style.
In addition, the Patents Regulations (Amendment) (the amending Regulations) inserted two new cost items (items 2 and 3), and reduced the amount of item 1, to reflect better the work involved in preparing and considering documents filed in proceedings to oppose the grant of a patent.
Regulation 10 is a transitional provision which provides that continuation or renewal fees due and paid before 1 October 1994 are not affected. Also, where an application for a standard patent has been accepted before 1 October 1994, the amending Regulations provide that the fee for sealing the patent is not affected.
Overview
The Patents Regulations (Amendment) 1994 No. 317 was enacted to update and revise certain fees under the Patents Regulations, which are governed by the Patents Act 1990. This statutory amendment aimed to better align the fees with the operational costs and productivity goals of the Australian Industrial Property Organisation (AIPO), which oversees the Patent, Trade Marks and Designs Offices. The regulation also addressed the costs and allowances in proceedings before the Commissioner and introduced transitional arrangements for specific actions. Issued by the authority of the Minister for Small Business, Customs and Construction, the policy objective was to ensure the AIPO could recover its costs and achieve productivity gains, while maintaining reasonable fee increases for patent applicants and holders.
The amendments, which commenced on 1 October 1994, revised fee items to reflect changes in operational costs and inflationary adjustments. This involved increasing the fee levels for various services, ensuring the AIPO could meet its financial targets without overburdening the applicants. Additionally, the amendments updated the costs and allowances in proceedings to retain parity with those in the Supreme Court of the Australian Capital Territory, ensuring fairness in legal proceedings. The amendments also included minor consequential and drafting changes to ensure the regulations remained coherent and effective.
Scope and Application
The Patents Regulations (Amendment) 1994 No. 317 amends the Patents Regulations to revise certain fees and costs associated with patent-related proceedings in Australia. The Regulations apply to the Australian Industrial Property Organisation, which includes the Patent, Trade Marks and Designs Offices, and the various entities and individuals that interact with these offices in relation to patents. The amendments are intended to ensure that the fees charged for patent services remain aligned with the costs of providing these services, as well as with the costs that may be awarded in legal proceedings related to patents. The amendments also include minor consequential changes and drafting adjustments to improve the clarity and effectiveness of the Regulations. The Regulations have a national jurisdictional reach, applying across Australia as they pertain to the federal Patents Act 1990. There are no specific exclusions or thresholds outlined in the Explanatory Statement, but it is implied that the amendments apply to all entities and individuals subject to the Patents Act and its associated Regulations.
Key Provisions
The Patents Regulations (Amendment) 1994 (No. 317) primarily revises certain fees payable under the Patents Regulations, the costs and allowances that may be awarded in proceedings before the Commissioner, and includes transitional provisions for certain actions (Regulations 2-10). Regulation 1 sets 1 October 1994 as the commencement date for these amendments. Regulation 2 identifies the Patents Regulations as the ones subject to amendment. Regulations 3 to 7 revise references to various fee items to align with the renumbering of fee items in Part 2 of Schedule 7. Regulation 8 revises Parts 2 and 3 of Schedule 7 to better align the amounts of the fee items with the costs of the actions for which the fees are prescribed, while omitting certain items and renumbering the fee items. Regulation 9 amends Schedule 8 to retain parity with the amounts of costs that may be awarded in the Supreme Court of the Australian Capital Territory and introduces two new cost items and reduces the amount of item 1. Regulation 10 provides a transitional arrangement where continuation or renewal fees due and paid before 1 October 1994 are not affected and where an application for a standard patent has been accepted before 1 October 1994, the fee for sealing the patent is not affected.
The obligations imposed by the amending Regulations on the parties or entities it governs primarily revolve around the payment of revised fees and costs as per the updated Schedule 7 and Schedule 8 of the Patents Regulations. The Australian Industrial Property Organisation (AIPO), which incorporates the Patent, Trade Marks and Designs Offices, is required to recover all its costs from the fees charged. This means that applicants and patent holders must adhere to the new fee structures set out in the amended regulations for patent applications, renewals, and other related services. Additionally, the amendments to Schedule 8 mean that parties involved in proceedings before the Commissioner must be aware of the updated costs and allowances that may be awarded. These obligations are crucial for maintaining the financial sustainability of the AIPO and ensuring that the costs of administering the patent system are adequately covered.
The amending Regulations do not explicitly state any new offences or penalties for breach. However, non-compliance with the updated fees and costs could potentially lead to legal and administrative consequences, such as delays in the processing of patent applications or disputes over the awarded costs in proceedings before the Commissioner. The penalties for such breaches would likely be determined by the specific circumstances and the relevant provisions of the Patents Act 1990 and other applicable legislation. It is important for stakeholders to be aware of these updated obligations to avoid any potential complications in their dealings with the Patent, Trade Marks and Designs Offices.