EXPLANATORY STATEMENT
STATUTORY RULES 1983 NO. 49
Issued by the Authority of the Minister for Science and Technology
The purpose of the attached Regulations made under the Patents Act 1952 (“the Act”) and the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982 is to:
(a) make the provisions for protection or compensation which are required by sub-section 191(11) of the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982; and to
(b) prescribe fees for the purposes of sub-section 176(1) of the Act in relation to an application or a hearing under the proposed regulations. Section 49A of the Act
allowed one type of divisional application for a patent. This section was repealed by the Patents Amendment Act 1979, which inserted a new section 49A relating to petty patents. Sub-sections 191(2) to 191(12) of the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982 contain transitional provisions to reinstate the operation of repealed section 49A of the Act in a limited range of cases. In effect, if a person had a right to make a divisional application by virtue of the former paragraph 49A(1)(a) but had not in fact made such an application by 1 July 1979, then, by virtue of sub-section 191(3), that person once again has a right, for a limited period of time, to make such an application.
Sub-section 191(11) provides that where an application for a patent for an invention is made by virtue of sub-section 191(3) of that Act, such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention by reason of the repeal effected by section 17 of the Patents Amendment Act 1979. The proposed Regulations prescribe the provisions for protection or compensation required by sub-section 191(11) and set related fees.
Details of the proposed Regulations are set out below:
Regulation 1 states that the proposed Regulations may be cited as the Statute Law (Miscellaneous Amendments) (Patents) Regulations.
Regulation 2 defines the term “the Act” as meaning the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982 and the term “the Commissioner” as having the same meaning as in the Act.
Regulation 3 provides that a person who avails himself, or takes definite steps by contract or otherwise to avail himself, of an invention, by reason of the repeal of old section 49A of the Act, may apply to the Commissioner on the form in Schedule 1 to these Regulations for a licence to make, use, exercise, and vend that invention (sub-regulations (1) and (2)). A copy of any such application for a licence must be served on the person who applied for a patent for the invention under sub-section 191(3) of the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982, and on any other such person as the Commissioner directs (sub-regulation (3)).
Any person upon whom such a copy is served may, within certain time limits, give notice of opposition in accordance with Form 12 in the First Schedule to the Patents Regulations to the application for a licence (sub-regulation (4)). A copy of the notice must be served on the applicant for the licence (sub-regulation (5)). The Commissioner shall hear the application for the licence and may grant the licence on such terms as he thinks are reasonable (sub-regulation (6)). Various of the Patents Regulations are to apply in relation to an application or a hearing under this Regulation (sub-regulation (7)).
Regulation 4 allows a person to apply to the Administrative Appeals Tribunal for a review of a decision made by the Commissioner in a hearing under sub-regulation 3(6). A written notice of a decision in a hearing is to contain a statement to the effect that persons whose interests are affected by the decision may apply for review by the Administrative Appeals Tribunal.
Regulation 5 sets out the requirements for an Address for Service where such is required on a form, and specifies the requirements in connection with a change of an Address for Service, and defines how a document may be served for the purposes of these Regulations.
Regulation 6 provides that strict compliance with the form in Schedule 1 is not required.
Regulation 7 prescribes the fees shown in Schedule 2 to these Regulations as being payable to the Commissioner in relation to an application or hearing under these Regulations.
The fees set out in Schedule 2 are identical to the fees imposed in relation to the same matters in the Second
Schedule to the Patents Regulations. The corresponding item numbers in the Second Schedule to the Patents Regulations are 9, 10, 11, 18, and 33.
The proposed Regulations are to be made under s.177 of the Act and sub-section 191(12) of the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982. Sub-section 191(12) of the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982 has not yet come into operation. However section 4 of the Acts Interpretation Act 1901 provides, inter alia, that where an Act which has not yet come into operation is expressed to confer power to make regulations, those regulations may be made before the Act concerned comes into operation and will take effect
(a) on the day on which the Act concerned comes into operation; or
(b) on the day on which the regulations would have taken effect if the Act concerned had been in operation when the regulations were made,
whichever is the later.
In the present case the proposed Regulations will take effect on the day on which sub-section 191(12) of the Statute Law (Miscellaneous Amendments) Act (No. 1) 1982 comes into operation.