PATENTS REGULATIONS (AMENDMENTS) 1980 NO. 68 PATENTS REGULATIONS (AMENDMENTS) 1980 NO. 68 - TABLE OF PROVISIONS 1. Commencement 2. Interpretation 3. Fees 4. 5. Form of application for patents 6. Copies of specifications 7. 8. Form of request for examination 9. 10. Heading to Part VIA 11. 12. Renewal fees 13. Amendments of documents on request 14. Request for information under section 30 15. Second Schedule 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 1 Commencement 1. These Regulations shall come into operation on 31 March 1980. 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 2 Interpretation 2. Regulation 4 of the Patents Regulations is amended- (a) by inserting after the definition of "basic documents" in sub-regulation (1) the following definition: " 'international application' means an application, filed under the Treaty, to which section 58B of the Act applies;"; and (b) by omitting sub-regulation (2) and substituting the following sub-regulation: "(2) In these Regulations, unless the contrary intention appears, a reference to 'priority date', 'receiving Office' or 'Treaty' has the same meaning as in Part IVA of the Act.". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 3 Fees 3. Regulation 5 of the Patents Regulations is amended- (a) by omitting sub-regulation (1) and substituting the following sub-regulation: "(1) The fees specified or referred to in Column 3 of Part I of the Second Schedule in an item in that Part are, in respect of the matters specified in Column 2 of that Part in that item, the prescribed fees for the purposes of section 176 of the Act and the fees referred to in regulations 5A, 19G and 19H are the prescribed fees for the purposes of sub-section 58C (10) of the Act."; (b) by inserting in sub-regulation (5) "Part I of" before "the Second Schedule"; (c) by inserting in sub-regulation (5A) "Part I of" before "the Second Schedule"; and (d) by inserting in sub-regulation (7) "Part I of" before "the Second Schedule". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 4 4. The heading to Part III of the Patents Regulations is omitted and the following regulations and heading are substituted: Fees payable on lodging international application "5A. (1) Where an international application is treated as an application- (a) for a petty patent-the fee specified in Item 2 of Part I of the Second Schedule; or (b) for a standard patent-the fees specified in Item 3 of Part I of the Second Schedule together with a fee specified in Item 4 of that Part that is appropriate in the circumstances of the case, is or are payable, in respect of that application, on lodging the statement referred to in regulation 15A in respect of that application. "(2) Where an international preliminary examination has been demanded in accordance with Article 31 of the Treaty, no extension fee under Item 28 of Part I of the Second Schedule shall be payable in respect of an application for an extension of time for payment of the amount specified in paragraph (a) of Item 6 of that Part. Fees payable under section 176 of the Act "5B. (1) Subject to the Treaty and to sub-regulation (2), for the purposes of section 176 of the Act the following fees are prescribed in respect of international applications to which section 58B of the Act does not apply: (a) the fees specified in Part II of the Second Schedule; and (b) the fees set out in the Schedule of Fees at the end of Schedule 2 to the Act. "(2) Subject to sub-regulation (3), the provisions of regulation 19G, sub-regulation 19H (1), (2), (3) and (4) and regulations 19I and 19J apply in relation to international applications to which sub-section 58B of the Act does not apply. "(3) In the application of regulation 19J to an international application to which section 58B of the Act does not apply the reference to regulation 19G shall be read as a reference to regulation 5B (1). Application "5C. This Part does not apply to international applications.". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 5 Form of application for patents "PART III-PREPARATION AND LODGING OF DOCUMENTS 5. Regulation 9 of the Patents Regulations is amended- (a) by inserting in sub-regulation (1) ", not being an international application," after "application"; (b) by inserting in sub-regulation (2) ", not being an international application," after "application"; and (c) by adding at the end thereof the following sub-regulations: "(3) An international application shall be in accordance with Article 3 of the Treaty and, in addition, shall indicate whether the application is an application for a standard patent, a standard patent of addition or a petty patent. "(4) A copy or translation of an international application referred to in sub-section 58C (10) of the Act shall comply with Rule 11 of the Treaty. "(5) Subject to sub-regulation (6), for the purposes of the Act other than Part IVA, documents lodged in respect of international applications, or in respect of patents granted on such applications, shall be in the English language. "(6) The Commissioner may, where an applicant will not be prejudiced by his so doing, exempt all or part of a document or all or part of a document included in a class of documents from compliance with the provisions of sub-regulation (4) or (5).". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 6 Copies of specifications 6. Regulation 14 of the Patents Regulations is amended- (a) by omitting "the next succeeding sub-regulation" and substituting "sub-regulation (2) and regulation 15"; and (b) by adding at the end thereof the following sub-regulation: "(2) This regulation does not apply to international applications.". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 7 7. The Patents Regulations are amended by inserting after regulation 15 the following regulation: Initiation of national phase of an international application "15A. (1) An applicant making an international application shall within the period of 20 months from the priority date accorded to that application under the Treaty or such further period as the Commissioner allows under section 160 of the Act- (a) lodge in the Patent Office a statement- (i) confirming his intention that the international application proceed as an application under the Act for a standard patent, a standard patent of addition or a petty patent; and (ii) giving an address for service of documents in Australia; and (b) where it is necessary so to do, lodge a translation referred to in sub-paragraph 58C (10) (a) (ii) of the Act in the Patent Office. "(2) Where a communication referred to in Article 20 of the Treaty has not been received by the Commissioner or the Patent Office before the expiration of 20 months from the priority date accorded under the Treaty to an international application in relation to which a statement has been lodged in the Patent Office in accordance with paragraph (1) (a), the Commissioner shall notify the applicant in writing of that fact. "(3) Subject to sub-regulation (4), where an applicant referred to in sub-regulation (1) is notified under sub-regulation (2) that a communication in relation to an application has not been received, he shall lodge a copy of that international application within a period of 1 month or such further period as the Commissioner allows unless, before the expiration of that period, the Commissioner notifies that applicant that the communication has been received. "(4) A copy of an international application lodged under sub-regulation (3) shall be certified by the applicant to be a true and correct copy.". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 8 Form of request for examination 8. Regulation 16A of the Patents Regulations is amended by inserting in sub-regulation (1) "Part I of" before "the Second Schedule". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 9 9. After Part IV of the Patents Regulations the following Part is inserted: "PART IVA-INTERNATIONAL APPLICATIONS UNDER THE PATENT CO-OPERATION TREATY Interpretation "19E. In this Part, unless the contrary intention appears, 'International Bureau', 'International Preliminary Examining Authority' and 'International Searching Authority' have the same meanings as in the Treaty. Functions of Commissioner and Patent Office "19F. Where, for the purposes of the Treaty, the Commissioner or the Patent Office is- (a) a receiving Office; (b) an International Searching Authority; or (c) an International Preliminary Examining Authority, the Commissioner and the Patent Office shall, subject to the Act and to these Regulations, perform, in relation to an international application, the functions under the Treaty of a receiving Office, an International Searching Authority or an International Preliminary Examining Authority, as the case requires. Fees prescribed in Treaty for international applications "19G. (1) Where, for the purposes of the Treaty, the Commissioner or the Patent Office is- (a) a receiving Office; (b) an International Searching Authority; or (c) an International Preliminary Examining Authority, in relation to an international application, the fees set out in the Schedule of Fees at the end of Schedule 2 to the Act, other than the Supplement to the Handling Fee, are payable to the Commissioner in accordance with the provisions of the Treaty. "(2) The Commissioner shall, in accordance with the Treaty, determine the currency in which the fees payable under sub-regulation (1) are payable and the exchange rate between Swiss currency and the currency so determined. "(3) A determination made by the Commissioner under sub-regulation (2) shall be notified by him in the Official Journal and shall come into effect on the date specified in the determination for that purpose or on the date of notification in the Official Journal, whichever is the later. Fees payable to Commissioner for international applications "19H. (1) Where- (a) for the purposes of the Treaty, the Commissioner or the Patent Office is- (i) a receiving Office; (ii) an International Searching Authority; or (iii) an International Preliminary Examining Authority; and (b) the Commissioner or the Patent Office is empowered by the terms of the Treaty to charge a fee other than a fee for the benefit of the International Bureau, the amount of the fee payable to the Commissioner in respect of a matter specified in Column 2 of Part II of the Second Schedule in an item in that Schedule is the amount specified in Column 3 of that Part in that item. "(2) The fees specified in Items 1 and 2 of Part II of the Second Schedule are payable to the Commissioner within 28 days of lodging an international application with him. "(3) The fee specified in Item 4 of Part II of the Second Schedule is payable to the Commissioner upon lodging a demand for a preliminary examination under Article 31 of the Treaty with him. "(4) For the purposes of this regulation, an international application or a demand for a preliminary examination under Article 31 of the Treaty, as the case may be, is deemed to be lodged with the Commissioner when it is lodged with the Commissioner or in the Patent Office as a receiving Office or as an International Preliminary Examining Authority, as the case requires. "(5) The fees specified in Part I of the Second Schedule are payable, subject to the Treaty and to these Regulations, in relation to an international application as if that application were an application for- (a) a standard patent; (b) a standard patent of addition; or (c) a petty patent, as the case requires. Refund of fees "19I. (1) Where, in relation to a fee paid to the Commissioner, the Treaty requires the fee to be refunded in whole or in part to an applicant, that fee or that part of that fee, as the case requires, shall be refunded in accordance with these Regulations. "(2) Where, in relation to a search fee or a preliminary examination fee that is payable to an International Searching Authority or an International Preliminary Examining Authority, the Treaty provides for the refunding of that fee to an applicant in whole or in part, and such fee has been paid to the Commissioner, the Commissioner shall determine in accordance with the Treaty to what extent that fee shall be refunded to the applicant. Trust Fund "19J. Moneys paid as fees to the Commissioner under regulation 19G shall be paid into the Trust Fund kept under section 60 of the Audit Act 1901 and may be expended from the Trust Fund for the purposes of the Treaty including the making of refunds and the remission of fees to the International Bureau. Documents to be in English language "19K. Where, for the purposes of the Treaty, the Commissioner or the Patent Office is- (a) a receiving Office; (b) an International Searching Authority; or (c) an International Preliminary Examining Authority, an international application or a demand for an international preliminary examination under Article 31 of the Treaty lodged with the Commissioner or in the Patent office shall, subject to the Treaty, be in the English language. Variation of section 131 of the Act "19L. The operation of section 131 of the Act in relation to international applications that are treated as applications under the Act by virtue of section 58B of the Act is varied as if- (a) there was added at the end of sub-section (1) 'and that application shall not be sent to the International Bureau'; and (b) sub-sections (3) and (3A) were omitted and the following sub-section substituted: '(3) Where- (a) an order is in force under this section in respect of an international application to which section 58B applies; and (b) the applicant so requests, the application shall be treated as an application for a standard patent or an application for a petty patent, as the case requires, and may proceed up to the acceptance of the application and specification, but the specification shall not be open to public inspection, the acceptance shall not be advertised and a patent shall not be granted on the application.'. Variation of section 143 of the Act "19M. The operation of section 143 of the Act in relation to international applications that are treated as applications under the Act by virtue of section 58B of the Act is varied as if after paragraph (a) of sub-regulation (3) the following paragraph was inserted: '(aa) where the application to which the copies or documents relate is an international application, within 20 months after the priority date under the Treaty in relation to that application;'.". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 10 Heading to Part VIA 10. The heading to Part VIA of the Patents Regulations is amended by omitting "COMPLETE SPECIFICATION" and substituting "DOCUMENTS". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 11 11. After regulation 22A of the Patents Regulations the following regulation is inserted: Prescribed documents-international applications "22B. For the purposes of section 58G (4) of the Act, the prescribed documents are- (a) in relation to an international application, whether or not that application is an application to which section 58B of the Act applies- (i) where the international search report in accordance with Rule 43 of the Treaty is not available at the date of publication of the application under Article 21 of the Treaty-that report; and (ii) amendments made under Article 19 of the Treaty and published under Rule 48 of the Treaty; and (b) in relation to an international application to which section 58B of the Act applies- (i) the translation referred to in sub-section 58C (10) of the Act; (ii) the declaration lodged under sub-section 35 (3) of the Act in respect of the application; (iii) where the application is a Convention application-the copies or translations referred to in sub-section 143 (3) or (4) of the Act; (iv) a document, other than a document referred to in paragraph (a) or sub-paragraph (i), (ii) or (iii) relating to the application, being a document that has been lodged with the Commissioner or in the Patent Office by or on behalf of the applicant, and not being an international preliminary examination report; and (v) a document, other than a document referred to in paragraph (a) or sub-paragraph (i), (ii) or (iii), relating to the application, being a document that has been delivered to the applicant by or on behalf of the Commissioner.". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 12 Renewal fees 12. Regulation 29 of the Patents Regulations is amended by inserting in sub-regulation (1) "Part 1 of" before "the Second Schedule". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 13 Amendments of documents on request 13. Regulation 76 of the Patents Regulations is amended by inserting in sub-section (3) "and, where the relevant application is an international application, subject to the Treaty" after "(7)". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 14 Request for information under section 30 14. Regulation 87 of the Patents Regulations is amended by adding at the end thereof the following sub-regulations: "(2) Where the Commissioner provides information under section 30 of the Act to an applicant for a patent and where the provision of that information entails an international-type search referred to in Article 15 (5) of the Treaty, the fee payable in respect of the furnishing of that information is $300. "(3) Where the Commissioner provides information to a person, other than an applicant for a patent referred to in sub-regulation (2) and the provision of that information entails the conduct of a special search, the fee payable in respect of the furnishing of that information is- (a) $10; or (b) such amount as the Commissioner, having regard to the cost of furnishing that information, determines, whichever is the greater. "(4) In this regulation 'an applicant for a patent' means a person who- (a) after the commencement of these Regulations, makes an application for a patent other than an international application; and (b) requests, within 3 months of making his application for a patent, that information be provided to him by the Commissioner under section 30 of the Act.". 1980 No. 68 PATENTS REGULATIONS (AMENDMENTS) - REG 15 Second Schedule 15. The Second Schedule to the Patents Regulations is amended- (a) by omitting from the heading "Regulations" and substituting "Part IVA and regulations"; (b) by inserting in the heading "PART I-GENERAL" before "FEES"; (c) by omitting Item 31 from Part I and substituting the following item: "31 On lodging a request for the furnishing of information under section 30 of the Act, where the provision of that information does not entail an international-type search or a special search referred to in sub-regulation 87 (2) or (3) respectively-in respect of each application patent or other document . . . . . . . . . . . . . . . . . 5.00"; and (d) by adding at the end thereof the following Part: "PART II-FEES FOR INTERNATIONAL APPLICATIONS ----------------------------------------------------------------------- Column 1 Column 2 Column 3 Item Matter Fee ----------------------------------------------------------------------- $ 1 Transmittal fee under Rule 14 of the Treaty . . . 25.00 2 Search fee under Rule 16 of the Treaty . . . . . 300.00 3 Additional fee for search under Article 17 (3) (a) of the Treaty . . . . . . . . . . . . . . . . 250.00 4 Preliminary examination fee under Rule 58 of the Treaty . . . . . . . . . . . . . . . . . . . . . 100.00 5 Additional fee for international preliminary examination under Article 34 (3) (a) of the Treaty . . . . . . . . . . . . . . . . . . . . . 100.00 6 For copies of documents in accordance with Rules 44.3 (b) and 71.2 (b) of the Treaty-per document 5.00". ----------------------------------------------------------------------- - NOTES 1980 No. 68 PATENTS REGULATIONS*1* *2* (AMENDMENTS) *1* Notified in the Commonwealth of Australia Gazette on 28 March 1980. *2* Statutory Rules 1962 No. 2 as amended by Statutory Rules 1963 No. 52; 1965 No. 102; 1969 No. 151 (as amended by Statutory Rules 1969 No. 212); 1974 Nos. 38 and 262; 1975 No. 201; 1976 No. 236; 1977 No. 177; 1979 No. 93.