PATENTS ACT 1990 - SECT 228 Regulations
PATENTS ACT 1990 - SECT 228
Regulations(1) The Governor - General may make regulations, not inconsistent with this Act:
(a) prescribing matters required or permitted by this Act to be prescribed; and
(b) prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to this Act; and
(c) prescribing matters necessary or convenient to be prescribed for the conduct of any business relating to the Patent Office; and
(d) for the purpose of carrying out or giving effect to the Budapest Treaty; and
(e) for the purpose of carrying out or giving effect to the PCT, whether in relation to PCT applications or otherwise; and
(f) for the purpose of carrying out or giving effect to the TRIPS Agreement.
(2) Without limiting subsection (1), that subsection includes the power to make regulations:
(aa) making provision for and in relation to:
(i) the procedures for conducting a preliminary search and opinion in relation to a patent request and complete specification; and
(ii) the reports to be made in relation to the preliminary search and opinion; and
(a) making provision for and in relation to the procedures for the examination of a patent request and complete specification and the re - examination of a complete specification; and
(b) making provision for and in relation to the reports to be made in relation to an examination and a re - examination; and
(ba) making provision for and in relation to the following:
(i) the requirements for filing a document under this Act (including the requirement that the document must be in the form (if any) specified in a direction under section 214B);
(ii) the consequences of a document not being in accordance with an approved form or not complying with the requirements referred to in subparagraph (i); and
(bb) making provision for and in relation to the consequences of not complying with a direction under section 214C; and
(c) making provision for and in relation to the amendment of patent requests, provisional and complete specifications, and other filed documents:
(i) to correct a clerical error or obvious mistake; or
(ii) to remove a lawful ground of objection, whether the objection is raised in the course of examination or re - examination or otherwise; or
(iii) for any other purpose; and
(e) making provision for and in relation to the amendment of an entry in the Register to correct a clerical error or an obvious mistake, or for any other purpose; and
(g) making provision for and in relation to the preparation, filing and publication of abstracts of complete specifications; and
(h) making provision for and in relation to opposition proceedings; and
(ha) setting out the formalities checking process for innovation patents including, in particular, the following matters:
(i) specifying the formalities requirements (including compliance with the requirements of subsections 18(2) and (3) and 29(4A) and (4B)) that must be met in respect of an application for an innovation patent; and
(ii) empowering the Commissioner to direct an applicant for an innovation patent to do such things as are necessary to ensure that those formalities requirements are met; and
(iii) providing for the lapsing of the application if such a direction is not complied with within a time specified in the regulations; and
(iv) providing for the restoration of an application that has so lapsed; and
(i) setting out the checking process for PCT applications including, in particular, the following matters:
(i) specifying the requirements that must be met in respect of a PCT application, once the applicant has complied with subsection 29A(5);
(ii) empowering the Commissioner to direct an applicant to do such things as are necessary to ensure that those requirements are met;
(iii) providing for the lapsing of the PCT application if such a direction is not complied with within a time specified in the regulations;
(ia) making provision for and in relation to:
(i) empowering the Commissioner, in relation to a provisional patent application, to direct the applicant to do such things as are necessary to ensure that the provisional specification complies with the requirements of subsection 29(4); and
(ii) the provisional specification being taken not to have been filed if such a direction is not complied with within a time specified in the regulations; and
(j) empowering the Commissioner to direct an applicant for a standard patent to do such things as are necessary to ensure that the patent request or complete specification is in accordance with the requirements of subsection 29(4A) or (4B) and:
(i) providing for the lapsing of the application if such a direction is not complied with within a time specified in the regulations; and
(ii) providing for the restoration of an application that has so lapsed; and
(k) empowering the Commissioner to hear and determine the question whether a person is an interested person for the purpose of doing any act permitted to be done under this Act by an interested person; and
(m) providing for appeals against decisions of the Commissioner made under the regulations; and
(n) making provision for and in relation to the practice and procedure of prescribed courts in proceedings under this Act, including provision prescribing the time within which any proceeding may be started or anything else may be done, and providing for the extension of any such time; and
(p) requiring persons to make statutory declarations in relation to patent applications or patents or in proceedings under this Act (not being court proceedings); and
(q) making provision for and in relation to the making of a declaration, or the doing of an act, under this Act on behalf of a person who, because of infancy or physical or mental disability, is unable to make the declaration or do the act; and
(r) for the control of the professional conduct of registered patent attorneys and the practice of the profession and, for that purpose, making provision for and in relation to all or any of the following:
(i) making complaints, and hearing charges, against registered patent attorneys about their professional conduct;
(ia) assessing the professional conduct of registered patent attorneys by reference to standards of practice established by the Board from time to time;
(ii) imposing penalties on registered patent attorneys, including issuing a reprimand and suspending or cancelling registration;
(iv) requiring persons to give evidence on oath (whether orally or otherwise);
(v) administering oaths to persons giving evidence (whether orally or otherwise);
(vi) requiring persons to produce documents or articles; and
(s) making provision for and in relation to:
(i) the deposit for the purposes of this Act, the Budapest Treaty, or both, of micro - organisms with prescribed depositary institutions and the storage and testing of, and furnishing of samples of, micro - organisms by those institutions; and
(ii) the charging of fees by prescribed depositary institutions situated in Australia in relation to the matters described in subparagraph (i); and
(iii) the making of reports by prescribed depositary institutions situated in Australia in relation to those matters; and
(iv) the powers and functions of the Commissioner in relation to prescribed depositary institutions with respect to those matters; and
(t) modifying the operation of this Act in relation to PCT applications that are treated as patent applications under this Act by excluding, varying, or substituting different provisions for, specified provisions of this Act; and
(w) making provision for and in relation to the refund, in specified circumstances, of the whole or part of a fee paid in respect of the filing of a document; and
(y) making provision for and in relation to the remission of, or the exemption of specified classes of persons from the payment of, the whole or part of a fee; and
(z) prescribing penalties for offences against the regulations not exceeding a fine of 10 penalty units; and
(za) making such transitional and savings provisions as are necessary or convenient as a result of the repeal of the 1952 Act and the enactment of this Act.
(3) The regulations may make provision for matters referred to in paragraph (2)(s) by empowering the Commissioner, on behalf of the Commonwealth, to enter into agreements with prescribed depositary institutions with respect to those matters.
(4) Regulations made under paragraph (2)(s) and subsection (3) may make different provision with respect to different matters dealt with by or under those regulations, but this subsection shall not be taken to limit a power to make regulations conferred by any other provision of this Act.
(4A) If the regulations confer a function on a person or body, the regulations may provide that the function may be performed in Australia or New Zealand.
(4B) If the regulations confer a power on a person or body, the regulations may provide that the power may be exercised in Australia or New Zealand.
(4C) If the regulations provide that application may be made to the Administrative Appeals Tribunal for review of a decision, the regulations may provide that it is immaterial whether the decision was made in New Zealand.
(4D) The regulations may provide that it is immaterial whether an act or omission mentioned in the regulations took place in New Zealand.
(4E) The regulations may provide that it is immaterial whether a matter mentioned in the regulations concerns something that took place in New Zealand.
(5) Despite subsection 14(2) of the Legislation Act 2003 , regulations made for the purposes of the definition of eligible importing country in Schedule 1 may make provision in relation to a matter by applying, adopting or incorporating, with or without modification, any matter contained in any other instrument or other writing as in force or existing from time to time.
(7) Despite the repeal of the 1952 Act by this Act, regulations
made under paragraph (2)(za) may provide for the continued operation of
specified provisions of the 1952 Act in relation to prescribed persons or
matters, or in prescribed circumstances.