Commonwealth Numbered Regulations - Explanatory Statements

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PATENTS AMENDMENT REGULATIONS 2003 (NO. 3) 2003 NO. 316

Section 228 of the Patents Act 1990 (the Act) provides that the Governor-General may make regulations for the purposes of the Act, to prescribe matters necessary or convenient to be prescribed for carrying out or giving effect to the Act and for the conduct of any business relating to the Patent Office.

Paragraphs 228(1)(e) and 228(2)(t) of the Act provide that the Governor-General may make regulations for the purposes of carrying out or giving effect to the Patent Cooperation Treaty (PCT), whether in relation to PCT applications or otherwise, and that those regulations can modify the operation of the Act in relation to PCT applications by excluding, varying, or substituting different provisions for, specified provisions of this Act.

The PCT is an international agreement that provides a system for the international filing of patent applications. Under the PCT, an applicant may seek patent protection for an invention simultaneously in each of a large number of countries by filing an 'international' patent application with the national patent office of the contracting State of which the applicant is a national or resident, or with the International Bureau of the World Intellectual Property Organization (the International Bureau) in Geneva, Switzerland.

Subsection 228(5) of the Act requires the Governor-General to make regulations setting out the English text of the PCT as in force for Australia on the commencing day of the Act, and afterwards such regulations as are necessary to keep that text in an up-to-date form.

The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application with the national patent office of the contracting State of which the applicant is a national or resident, or with the International Bureau of the World Intellectual Property Organization (the International Bureau) in Geneva, Switzerland.

On 1 October 2002 and 1 October 2003, the Assembly of the International Patent Cooperation Union (the PCT Assembly) made substantial amendments to the Regulations under the PCT (the PCT Rules) to provide for enhanced international search and preliminary examination systems; to replace several of the fees for filing an international application with a single international filing fee; to change the operation of the designation system and to allow the making available of priority documents from a digital library to be established by the International Bureau. Those changes will take effect from 1 January 2004.

The main purpose of the Regulations is to amend the Patents Regulations 1991 to implement the amendments made to the PCT Rules at those meetings by updating the English text of the PCT Rules set out in Schedule 2A to the Patents Regulations (items 1 and 7 to 171 of Schedule 2), and by making some minor consequential amendments to regulations 22.2 and 22.4 and Schedule 7 to the Patents Regulations (items 3 to 6 and 174 to 177 of Schedule 2). As a result of changes made to the international search processes under the PCT, the cost to the Patent Office of conducting an international search will increase. Consequently, the proposed Regulations would also increase the fees payable to the Patent Office for conducting international searches (item 173 of Schedule 2).

The Regulations also modify the application of section 53 of the Act - which requires publication of the details of each patent application (including an international application under the PCT) - so that the requirement to publish details of a PCT application will be taken to be met when the International Bureau publishes the PCT application internationally (item 2 of Schedule 2).

Additionally the Regulations make some minor amendments to:

•       remove the now unnecessary requirement for an applicant to file a duplicate copy of an abstract (item 1 of Schedule 1);

•       ensure that a statement of proposed amendments of an application or other document cannot itself be amended after the requested amendments have been approved (item 2 of Schedule 1); and

•       clarify that the current fee reduction for requesting national examination continues to apply in the same circumstances, despite the changes to the international searching and examination regime under the PCT (item 172 of Schedule 2).

Details of the Regulations are in the Attachment.

Regulations 1 to 4 and Schedule 1 to the Regulations commence on gazettal, and Schedule 2 commences on 1 January 2004.

Attachment

Details of the Regulations are as follows:

Regulation 1 identifies the Regulations as the Patents Amendment Regulations 2003 (No. 3).

Regulation 2 provides that regulations 1 to 4 and Schedule 1 to the Regulations commence on gazettal, while Schedule 2 commences on 1 January 2004.

Regulation 3 specifies that Schedules 1 and 2 amend the Patents Regulations 1991.

Regulation 4 provides for transitional arrangements in relation to the amendments that are made by Schedule 2. These are to ensure that the amendments to the text of the Regulations under the Patent Cooperation Treaty (the PCT Rules) provided for in items 7 to 171 of Schedule 2 will apply in line with the transitional arrangements approved by the Assembly of the International Patent Cooperation Union (the PCT Assembly) at meetings in 2002 and 2003.

Schedule 1 - Amendments commencing on gazettal

Item 1 removes the requirement in subregulation 3.1(1) of the Patents Regulations for a duplicate copy of the abstract to be filed with a patent application. With IP Australia's move to an electronic records management system, this requirement is no longer necessary.

Item 2 amends subregulation 10.1(5) of the Patents Regulations to address an unintended consequence of wording in that provision. Prior to this amendment, that provision allowed a statement of proposed amendments of a patent application or other filed document to be amended after leave has been granted to make the proposed amendment -- with the effect that the further amendments could escape consideration of their compliance with the patents legislation. This item amends subregulation 10.1(5) of the Patents Regulations to allow a statement of proposed amendments to be amended only up to the time that leave is granted to amend the patent application or other filed document.

Schedule 2 - Amendments commencing on 1 January 2004

Item 1 amends subregulation 1.4(2) of the Patents Regulations to specify that the English text of the PCT in force for Australia as at 1 January 2004 is the text set out in Schedules 2 and 2A to the Patents Regulations.

Item 2 amends subregulation 8.3(1) of the Patents Regulations, with the effect that the obligation to publish details of PCT applications (i.e. international applications that designate Australia) provided in section 53 of the Patents Act 1990 (the Act) is taken to be met when the PCT application is published by the International Bureau of the World Intellectual Property Organization (the International Bureau). From 1 January 2004, the International Bureau will no longer be supplying information to the Patent Office about each PCT application before its international publication by the International Bureau. This regulation is made under paragraph 228(2)(t) of the Act, which allows regulations to be made that modify the provisions in the Act in relation to PCT applications by excluding, varying, or substituting different provisions for, specified provisions of the Act.

Item 3 amends subparagraph 22.2(4)(a)(ii) of the Patents Regulations to change the references to the fee items in Part 4 of Schedule 7 to the Patents Regulations, as a consequence of the changes to these fee items provided for in item 177 of this Schedule.

Items 4 and 6 amend regulation 22.4 of the Patents Regulations by omitting subregulations 22.4(1A) to (1C), and consequentially deleting a reference to subregulation 22.4(1A) from subregulation 22.2(1A). Subregulations 22.4(1A) to (1C) provide for the reduction of several fees for filing an international application or requesting international preliminary examination. These reductions continue to be available - provisions for those fee reductions, amended in line with changes made to the PCT Rules, are included in the new Part 4 of Schedule 7 to the Patents Regulations provided for in item 177 of this Schedule.

Item 5 amends subregulation 22.4(1) of the Patents Regulations to replace a reference to the basic and designation fees with reference to the international filing fee. This amendment is required as a consequence of the amendment provided for in item 177 of this Schedule.

Items 7 to 171 amends Schedule 2A to the Patents Regulations to update the text of the PCT Rules to accord with the changes made to the PCT Rules by the PCT Assembly at meetings in 2002 and 2003, with effect on 1 January 2004. Those changes provide for enhanced international search and preliminary examination systems; to replace several of the fees for filing an international application with a single international filing fee; to change the operation of the . designation system; and to allow the making available of priority documents from a digital library to be established by the International Bureau.

Item 172 amends fee item 204 of Schedule 7 to the Patents Regulations to put beyond doubt the continuance of its current application, in light of changes to the international searching and examination regime under the PCT. Item 204 of Schedule 7 prescribes a reduced fee for requesting national examination of a PCT application where the Patent Office has previously issued an international preliminary examination report. From 1 January 2004, the PCT Rules provide for two classes of international preliminary reports - only one of which is directly comparable to the international preliminary examination report that enjoyed the reduced fee prior to that date. The directly comparable report continues to give rise to the fee reduction, but the other report, issued under Rule 44^bis.1 of the PCT Rules, does not.

Item 173 amends fee items 302 and 303 of Schedule 7 to the Patents Regulations to increase the search fee under Rule 16 of the PCT Rules and the additional fee under Article 17(3)(b) of the PCT. These increases are to cover the increased costs borne by the Patent Office when conducting international searches, resulting from changes to the requirements in the PCT Rules for such searches. From 1 January 2004, the Patent Office, as an International Searching Authority under the PCT, is required to produce an international preliminary report under Rule 44^bis.1 of the PCT Rules on every PCT application on which it conducts an international search.

Items 174 and 176 omits the confirmation fee in item 307 of Schedule 7 to the Patents Regulations, and renumbers item 308 consequentially. This fee is omitted as part of the simplification of the fees for filing an international application under the PCT.

Item 175 amends the late payment fee in item 308 of Schedule 7 to the Patents Regulations, which provides for the late payment fee that may be levied under Rule 16^bis.2 of the PCT Rules. The late payment fee is levied where a person who files an international application with the Patent Office does not pay the whole of the transmittal fee, international filing fee and search fee within one month of filing the international application. Prior to this amendment, the maximal amount of the late fee was set at the amount of the basic fee (i.e. the Australian dollar equivalent of 650 Swiss francs). Under the changes to the PCT Rules, the basic fee is replaced by the international filing fee, and the maximal amount of the late payment fee is changed to 50% of the amount of the international filing fee, but not taking into account any fee for each sheet of the international application in excess of 30 sheets (i.e. a maximum of the Australian dollar equivalent of 700 Swiss francs).

Item 177 amends Part 4 of Schedule 7 to the Patents Regulations, which prescribes the fees payable to the Patent Office for the benefit of the International Bureau in relation to international applications. Those fees are expressed in Swiss francs, but are payable in the Australian dollar equivalents determined by the Commissioner of Patents under subregulation 22.4(2) of the Patents Regulations. This item replaces the current Part 4 of Schedule 7 to the Patents Regulations with the new Schedule of Fees agreed to by the PCT Assembly, with an exception discussed below.

New fee item 401 of Schedule 7 to the Patents Regulations provides for a new international filing fee to replace the basic fee, the designation fees and the confirmation fee that existed prior to this amendment. The international filing fee is set to 1,400 Swiss francs plus 15 Swiss francs for each sheet in excess of 30.

New fee item 402 reduces the amount of the handling fee payable when requesting international preliminary examination to 200 Swiss francs.

New fee items 403 and 404 provide for the fee reductions previously set out in subregulations 22.4(1A) to (1C) of the Patents Regulations, which are deleted by items 4 and 6 above. To accord with the new Schedule of Fees approved by the PCT Assembly, new fee item 403 reduces to 100 Swiss francs the amount of the reduction to the international filing fee for filing an international application on paper with a copy in electronic form. Two further fee reductions for modes of electronic filing listed in the new Schedule of Fees approved by the PCT Assembly have not been included in these new items, as the Patent Office does not currently accept electronic filing of international applications.