The Patents Regulations, 1909 (Amendment)

Overview

The Statutory Rules 1910, No. 85, Regulations Under the Patents Act 1903-1909, were enacted to revise and update the existing regulations under the Patents Act 1903-1909. These regulations were made by the Governor-General in accordance with the advice of the Federal Executive Council. The overarching objective of these regulations is to streamline and formalise the process of patent applications and extensions, ensuring clarity and consistency in the administrative procedures related to patents. This includes the requirement for multiple copies of specifications and drawings to be submitted with applications, as well as the formal public notification process required for patent term extensions. These measures aim to enhance the efficiency and transparency of the patent system in Australia.

Scope and Application

The Patents Regulations 1910, made under the Patents Act 1903-1909, apply to all entities and individuals involved in patent applications within the Commonwealth of Australia. These regulations govern the procedural aspects of patent applications, including the submission of complete specifications and drawings, as well as the requirements for extensions of patent terms. Specifically, the regulations mandate that one copy of every complete specification and a facsimile of original drawings must be lodged at the Patent Office. Furthermore, they detail the public notice requirements for patentees seeking extensions of their patent terms, including advertising in various official publications and newspapers. The regulations also outline the procedure for lodging caveats against patent extensions and specify the officer to whom such caveats should be addressed. The regulations extend their application nationally across Australia, ensuring consistency in patent application processes. Notably, these regulations replace earlier provisional regulations, emphasising their comprehensive nature in governing patent-related procedures within the country.

Key Provisions

The main operative sections of these Regulations, made under the Patents Act 1903-1909, include significant amendments to the lodging of patent applications and specifications, as well as procedures for extending the term of a patent. Section 1 of the Regulations repeals and substitutes a new paragraph in Regulation 38, requiring that one copy of every complete specification must be lodged at the Patent Office at the same time as the original (subs. (2)). Additionally, the Commissioner may require five additional copies of the complete specification to be lodged before an application is accepted (sub. (2a)). Section 2 repeals and substitutes a new paragraph in Regulation 48, allowing the Commissioner to require a facsimile of the original drawings, prepared on tracing cloth, to be lodged before an application is accepted (sub. (2)). Section 3 introduces a new Regulation 133a, detailing the public notice requirements for a patentee seeking an extension of the term of their patent. This includes advertising three times in the Australian Official Journal of Patents, once in the Commonwealth of Australia Gazette, and at least once in a daily newspaper in the capital city of each State (sub. (1)). The advertisement must specify an address for service within the Commonwealth, a time frame for filing the petition, and the court in which the petition will be filed (sub. (2)). Regulation 133b specifies the officer to whom a caveat against the extension of the term of a patent may be addressed, depending on whether the petition is to be filed in the High Court or the Supreme Court. Regulation 133c states that the proceedings in relation to the petition shall be conducted as directed by Rules of Court or as the Court, or a Justice thereof, directs. Section 4 amends several forms in the Second Schedule to the Patents Regulations, 1909, by changing the requirement from a copy of Form C and six copies of Form C1 to a copy each of Forms C and C1. The Regulations impose several obligations on parties involved in patent applications and extensions. Patentees and applicants must ensure that one copy of the complete specification is lodged at the Patent Office simultaneously with the original (Regulation 38(2)). Additionally, applicants may be required to submit five additional copies of the complete specification and a facsimile of the original drawings on tracing cloth before their application is accepted (Regulations 38(2a) and 48(2)). For those seeking to extend the term of their patent, the Regulations mandate that public notice be given by advertising in specific publications and locations, providing certain details in the advertisement (Regulation 133a). This public notice is essential for allowing interested parties to potentially oppose the extension. The forms required for patent applications are also updated to reflect the new specifications (Regulation 133c). Breaches of these Regulations could lead to various consequences, though specific offences, penalties, or civil/criminal consequences are not detailed within the text of these Regulations. Generally, failure to comply with the requirements for lodging patent applications or specifications could result in the application not being accepted or processed. For the extension of patent terms, failure to properly advertise as required could lead to the petition being contested or deemed invalid. However, the precise penalties for such breaches are not explicitly stated in the Regulations themselves but would likely be governed by the overarching Patents Act 1903-1909 and any related case law or subsequent legislative amendments.