Commonwealth Consolidated Regulations

PATENTS REGULATIONS 1991

- made under the Patents Act 1990

TABLE OF PROVISIONS

            

CHAPTER 1--Introductory
            

   1.1.    Name of Regulations [see Note 1]  
   1.2.    Commencement  
   1.3.    Interpretation  
   1.3A.   Meaning of completed in relation to a search  
   1.4.    English text of treaties  
   1.5.    Deposit requirements: prescribed period  
   1.6.    Disclosure in basic applications -- general  
   1.6A.   Disclosure in basic applications -- use of approved digital library  
   1.7.    Verification of translations of international applications  
   1.8.    Completion of applications  
            

CHAPTER 2--Patent rights, ownership and validity
            

   2.1.    Applications by co-owners for directions  
   2.2.    Publication or use: prescribed circumstances  
   2.3.    Publication or use: prescribed periods  
   2.4.    Prescribed period: patents of addition  
   2.5.    Prescribed period: assertion that invention is not a patentable invention  
   2.6.    Prescribed period: notification of assertion of invalidity of innovation patent  
   2.7.    Documents to accompany notice of assertion of invalidity  
            

CHAPTER 3--From application to acceptance
            

   PART 1--INVENTIONS GENERALLY

   3.1.    Prescribed documents: patent applications  
   3.1A.   Applicant taken to be nominated person  
   3.2.    Provisional specifications  
   3.2A.   Specifications -- standard patents  
   3.2B.   Specifications: formalities check for innovation patents  
   3.3.    Abstracts  
   3.4.    Substitute abstracts  
   3.5.    Filing date  
   3.5A.   Filing date: incomplete specifications  
   3.5B.   Filing of documents outside business hours  
   3.6.    Requests to make determinations between interested parties  
   3.7.    Form of certain applications  
   3.8.    Time within which applications are to be made following certain decisions and declarations  
   3.9.    Prescribed period: treatment of complete application as provisional  
   3.10.   Prescribed period: making of complete applications  
   3.12.   Priority dates generally  
   3.13.   Priority dates: certain persons and applications  
   3.14.   Priority dates: certain amended claims  
   3.15.   Prescribed period and form of request for examination  
   3.16.   Prescribed grounds and period for examination  
   3.17.   Requirement for Commissioner to direct or expedite examination  
   3.17A.  Results of documentary searches -- foreign patent office  
   3.17B.  Prescribed documentary searches by or on behalf of a foreign patent office  
   3.18.   Report of Commissioner: examination  
   3.19.   Conduct of examination: standard patents  
   3.20.   Requests for deferment of examination or modified examination  
   3.21.   Prescribed foreign countries: requests for deferment of examination and modified examination  
   3.22.   Disclosure of patent documents and information to International Bureau etc  

   PART 2--INVENTIONS THAT ARE MICRO-ORGANISMS

   3.23.   Documents in accepted applications and patents involving micro-organisms  
   3.24.   Commissioner may request samples and viability statement  
   3.25.   Request for Commissioner's certificate authorising release of sample of a micro-organism  
   3.26.   Breach of undertakings given in respect of micro-organisms  
   3.27.   Procedure in proceedings for breach of an undertaking  
   3.28.   Relief in proceedings for breach of undertakings  
   3.29.   Notification that a deposit requirement has ceased to be satisfied  
   3.30.   Prescribed period: deposit requirements taken to be satisfied  
   3.31.   Application for declaration that deposit requirements are not satisfied  
            

CHAPTER 4--Publication
            

   4.1.    Prescribed information: applicants and applications  
   4.2.    Notice that specification is open to public inspection  
   4.3.    Prescribed documents: public inspection  
            

CHAPTER 5--Opposition
            

   5.1.    Application of this Chapter  
   5.2.    Interpretation  
   5.3.    Filing of opposition (except under section 101M of the Act)  
   5.3AA.  Filing of opposition under section 101M of Act  
   5.3A.   Amendment of notice of opposition: correction of error or mistake  
   5.3B.   Amendment of notice of opposition: change of opponent  
   5.4.    Filing of statement  
   5.5.    Dismissal of opposition  
   5.6.    Determination of opposition  
   5.7.    Opponent to serve copy of substitute statement  
   5.8.    Time for giving of evidence  
   5.9.    Amendment of statement  
   5.9A.   Amendment of statement: additional ground as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004  
   5.10.   Conduct of proceedings to which this Chapter applies  
   5.11.   Commissioner may inform himself or herself  
   5.12.   Hearing of opposition  
   5.13.   Representations to Commissioner  
   5.14.   Commissioner not required to hold hearing  
   5.15.   Withdrawal of opposition  
            

CHAPTER 6--Grant and term of patents
            

   PART 1--PATENTS GENERALLY

   6.1.    Publication of notice of grant of standard patent  
   6.2.    Prescribed period: grant of standard patent  
   6.3.    Date of patent  
   6.4.    Form of application for sealing of duplicate of patent  

   PART 2--EXTENSION OF PHARMACEUTICAL PATENTS

   6.7.    Definitions  
   6.8.    Information to accompany application  
   6.9.    Application without pre-TGA marketing approval  
   6.10.   Application with pre-TGA marketing approval  
   6.11.   Further information  
            

CHAPTER 6A--Divisional applications
            

   6A.1.   Divisional applications: standard patents  
   6A.2.   Divisional applications: innovation patents  
            

CHAPTER 7--Patents of addition
            

   7.1.    Form of application for grant of patent of addition etc  
   7.2.    Form of application for revocation of patent and grant of patent of addition instead  
            

CHAPTER 8--PCT applications and Convention applications
            

   PART 1--PCT--APPLICATIONS

   8.1.    International applications taken to be applications under the Act  
   8.1A.   Title of an invention  
   8.2.    Prescribed documents: PCT application  
   8.3.    Modification of Act to apply to PCT applications  
   8.4.    Form of request and prescribed documents: PCT applications  

   PART 2--CONVENTION APPLICATIONS

   8.5.    Convention countries  
   8.6.    Particulars required for Convention application -- general  
   8.6A.   Particulars required for Convention application -- use of approved digital library  
   8.7.    Form of request in relation to withdrawn, abandoned or refused applications  
            

CHAPTER 9--Re-examination
            

   9.1.    Notice of Commissioner's decision to re-examine complete specification  
   9.2.    Request for re-examination of complete specification  
   9.3.    Copy of report on re-examination  
   9.4.    Prescribed period: statement disputing report by Commissioner  
   9.5.    Completion of re-examination  
            

CHAPTER 9A--Examination of innovation patents
            

   9A.1.   Request for examination  
   9A.2.   Examination of complete specification  
   9A.2A.  Results of documentary searches -- innovation patent  
   9A.2B.  Prescribed documentary searches by or on behalf of a foreign patent office  
   9A.3.   Conduct of examination  
   9A.4.   Period for examination  
   9A.5.   Validity of innovation patent  
            

CHAPTER 10--Amendments
            

   10.1.   Form of amendments  
   10.2.   Commissioner to consider and deal with requests for leave to amend  
   10.3.   Amendments not allowable  
   10.4.   Commissioner to refuse request for leave to amend  
   10.5.   Commissioner to grant leave to amend  
   10.6.   Time for allowance of amendments  
   10.6A.  Deferred consideration of request for amendment  
   10.7.   Correction of Register or patent  
   10.8.   Prescribed decisions: appeal to Federal Court  
   10.10.  Prescribed period: filing of court order  
   10.11.  Form of direction by Commissioner: patents  
   10.12.  Form of direction by Commissioner: applications  
   10.14.  Form of request: claim under assignment or agreement  
            

CHAPTER 11--Infringement
            

   11.1.   Infringement exemptions: prescribed foreign countries  
            

CHAPTER 12--Compulsory licences and revocation of patents
            

   12.1.   Lodgment of applications for compulsory licences  
   12.2.   Prescribed period: revocation of patent  
   12.3.   Form of notice: offer to surrender patent  
   12.4.   Applications to revoke patents  
            

CHAPTER 13--Withdrawal and lapsing of applications and ceasing of patents
            

   13.1.   Publication of notice of withdrawal of application  
   13.1A.  Period in which standard patent applications may not be withdrawn  
   13.1B.  Period in which innovation patent applications may not be withdrawn  
   13.2.   Prescribed period: request for examination of applications  
   13.3.   Prescribed period: continuation fees  
   13.4.   Prescribed period: acceptance of request and specification  
   13.5.   If applications lapse  
   13.6.   Time for payment of renewal fee for patent  
   13.7.   Prescribed period: ceasing of innovation patents  
            

CHAPTER 15--Special provisions relating to associated technology
            

   15.1.   Time for restoration of application for patent  
   15.2.   Requirements for reinstatement of international applications  
   15.3.   Prescribed period: order relating to standard patent  
            

CHAPTER 17--The Crown
            

   17.1.   Application for declaration: exploitation of innovation patent  
   17.1A.  Prescribed period: order relating to standard patent  
   17.2.   Prescribed period, document and fee: filing of international applications  
            

CHAPTER 19--The register and official documents
            

   19.1.   Particulars to be registered  
   19.2.   Request for information from Commissioner  
            

CHAPTER 20--Patent attorneys
            

   PART 1--INTRODUCTION

   20.1.   Interpretation  

   PART 2--OBTAINING REGISTRATION FOR FIRST TIME

   20.2.   Form of application  
   20.3.   Evidence that applicant meets registration requirements  
   20.4.   Certificate of registration  
   20.5.   Evidence of academic qualifications  
   20.6.   Academic qualifications  
   20.7.   Evidence of knowledge requirements  
   20.8.   Knowledge requirements  
   20.9.   Exemption from a requirement in Schedule 5  
   20.10.  Employment requirements  
   20.11.  Statements of skill  
   20.12.  Prescribed offences  

   PART 3--ACCREDITATION OF COURSES OF STUDY

   20.13.  Accreditation of courses of study  
   20.14.  Provisional accreditation  

   PART 4--BOARD EXAMINATIONS

   20.15.  Board examinations  
   20.16.  Time for holding Board examinations  
   20.17.  Examinable subject matter  
   20.18.  Admission to sit for a Board examination  
   20.19.  Notification of Board examination results  
   20.20.  Reasons for failure of Board examination  
   20.21.  Supplementary Board examination  

   PART 5--MAINTAINING REGISTRATION

   20.22.  Requirements for remaining on Register  
   20.23.  Payment of annual registration fee  
   20.24.  Continuing professional education -- number of hours  
   20.25.  Method of demonstrating that continuing professional education has been undertaken  

   PART 6--REMOVAL FROM REGISTER

   20.26.  Voluntary removal of name from Register  
   20.27.  Failure to pay annual registration fee  
   20.28.  Failure to comply with continuing professional education requirements  

   PART 7--RETURNING TO REGISTER

   20.29.  Restoring attorney's name to Register  
   20.30.  Restoring attorney's name to Register following payment of unpaid fee  
   20.31.  Returning to Register in other circumstances  

   PART 8--DISCIPLINE

           Division 1--General

   20.32.  Definitions  
   20.33.  Role of Board in disciplinary proceedings  
   20.34.  Board may require attorney to cooperate with investigation  
   20.35.  Commencing disciplinary proceedings  

           Division 2--Proceedings in Disciplinary Tribunal

   20.36.  Procedure of Disciplinary Tribunal  
   20.37.  Notification of hearing of disciplinary proceedings  
   20.38.  Hearings to be public except in special circumstances  
   20.39.  Representation before Disciplinary Tribunal  
   20.40.  Summoning of witnesses  
   20.41.  Offences by persons appearing before Disciplinary Tribunal  
   20.42.  Protection of person constituting Disciplinary Tribunal, witnesses etc  
   20.43.  Decision of Disciplinary Tribunal  
   20.44.  Penalties -- professional misconduct  
   20.45.  Penalties -- unsatisfactory professional conduct  
   20.46.  Finding that attorney was unqualified at time of registration  
   20.47.  Finding that registration obtained by fraud  
   20.48.  Matters that may be considered in determining penalties  
   20.49.  Findings of Disciplinary Tribunal  
   20.50.  Notification and publication of decisions of Disciplinary Tribunal  
   20.51.  Completion of outstanding business  
   20.52.  Former attorney may be required to provide assistance  

   PART 9--RIGHTS OF REGISTERED PATENT ATTORNEYS

   20.53.  Lien  

   PART 10--ADMINISTRATION

           Division 1--Professional Standards Board for Patent and Trade Marks Attorneys

   20.54.  Constitution of Board (Act s 227A)  
   20.55.  Term of office of Board members  
   20.56.  Resignation and removal of members from Board  
   20.57.  Meetings of Board  
   20.58.  Member presiding at meetings of Board  
   20.59.  Quorum for Board meetings  
   20.60.  Absence of Chairperson from meeting -- leave from Board  

           Division 2--Patent and Trade Marks Attorneys Disciplinary Tribunal

   20.61.  Establishment of Disciplinary Tribunal  
   20.62.  Disciplinary Tribunal -- substantive appointments  
   20.63.  Disciplinary Tribunal -- acting appointments  
   20.64.  Disclosure of interest  
   20.65.  Qualifications for appointment to, or acting as, Disciplinary Tribunal  
            

CHAPTER 21--Administration
            

   21.1.   Patent Office and sub-offices  
   21.2.   Employees to whom Commissioner may delegate (Act s 209 (1))  
            

CHAPTER 22--Miscellaneous
            

   PART 1--FEES AND COSTS

           Division 1--Fees

   22.1.   Fees generally  
   22.2.   General fees  
   22.2A.  Failure to pay: patent attorneys fees  
   22.2B.  Failure to pay: filing fees for patent requests  
   22.2C.  Failure to pay: certain other filing fees etc  
   22.2D.  Failure to pay: fees payable by patentee for requests under s 101A (b) of the Act  
   22.2E.  Failure to pay: response fee  
   22.2EA. Failure to pay: fee for grant of leave to amend specification (person invited to pay)  
   22.2F.  Consequence if Commissioner does not invite payment  
   22.2G.  Failure to pay: hearing fees  
   22.2H.  Failure to pay: certain fees for actions by Commissioner  
   22.2I.  Failure to pay: acceptance fee  
   22.3.   General fees for international applications  
   22.4.   Fees for international applications payable for the benefit of the International Bureau  
   22.5.   PCT Fund  
   22.6.   Exemption from fees  
   22.7.   Refund of certain fees  

           Division 2--Costs

   22.7A.  Proceedings to which this Division applies  
   22.8.   Costs  

   PART 2--OTHER MATTERS

   22.9.   Death of applicant or nominated person  
   22.10.  Address for service  
   22.10A. Address for correspondence  
   22.10AA.Period for doing certain acts -- office not open for business  
   22.10AB.Days when office not open for business  
   22.10AC.Period for doing certain acts -- acts to which section 222A does not apply  
   22.11.  Extension of time  
   22.12.  Evidence  
   22.13.  Declarations  
   22.14.  Directions not otherwise prescribed  
   22.15.  Documents to be in English  
   22.16.  Documents other than specifications and abstracts  
   22.17.  Incapacity of certain persons  
   22.18.  Destruction of documents  
   22.19.  Copies of certain documents to be supplied  
   22.20.  International applications and the Patent Office  
   22.21.  Protection or compensation of certain persons  
   22.22.  Exercise by Commissioner of certain powers  
   22.23.  Hearings  
   22.24.  Practice and procedure other than for opposition proceedings  
   22.25.  Requirements cannot be complied with for reasonable cause  
   22.26.  Review of decisions  
            

CHAPTER 23--Transitional and savings provisions
            

   23.1.   Saving: prohibition orders  
   23.2.   Delegation: certain matters referred to in this Chapter  
   23.3.   Opposition to grant: practice and procedure  
   23.4.   Certain opposition: practice and procedure  
   23.5.   Fees payable for certain matters relating to opposition  
   23.6.   Certain delegations: opposition  
   23.7.   Certain undertakings  
   23.8.   Restoration of lapsed applications or ceased patents  
   23.9.   Certain continuation and renewal fees  
   23.10.  Fee taken to have been paid  
   23.11.  Supply of product referred to in section 117 of the Act  
   23.12.  Certain withdrawn, abandoned or refused applications  
   23.13.  Certain certificates of validity  
   23.14.  Certain action under the 1952 Act  
   23.15.  Amendment of petty patents  
   23.16.  Certain applications under 1952 Act: time for acceptance  
   23.17.  PCT applications to which subsection 89 (5) of the Act does not apply  
   23.18.  Certain priority dates: saving  
   23.25.  Fees  
   23.26.  Certain actions and proceedings  
   23.32.  Transitional: priority date and date of patent for innovation patent application that is a divisional application of a petty patent or petty patent application  
   23.33.  Transitional: examination of innovation patents converted from petty patent applications  
   23.34.  Transitional: certain PCT applications  
   23.35.  Transitional: payment of fees for petty patents  
           SCHEDULE 1 Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
           SCHEDULE 1A Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
           SCHEDULE 2 Patent Cooperation Treaty
           SCHEDULE 2A Regulations under the Patent Cooperation Treaty
           SCHEDULE 3 Formal requirements for documents to be filed
           SCHEDULE 4 Convention countries
           SCHEDULE 5 Knowledge requirements
           SCHEDULE 7 Fees
           SCHEDULE 8 Costs, expenses and allowances