PATENTS REGULATIONS (AMENDMENT) 1993 NO. 113 PATENTS REGULATIONS (AMENDMENT) 1993 NO. 113 - TABLE OF PROVISIONS 1. Commencement 2. Amendment 3. Regulation 5.4 (Filing of statement) 4. Regulation 5.10 (Conduct of proceedings to which this Chapter applies) 5. Regulation 22.2 (General fees) 6. Regulation 22.11 (Extension of time) 7. Schedule 7 (Fees) 8. Schedule 8 (Costs, expenses and allowances) 9. Application and transitional 1993 No. 113 PATENTS REGULATIONS (AMENDMENT) - REG 1 1. Commencement 1.1 These Regulations commence on 1 July 1993. 1993 No. 113 PATENTS REGULATIONS (AMENDMENT) - REG 2 2. Amendment 2.1 The Patents Regulations are amended as set out in these Regulations. 1993 No. 113 PATENTS REGULATIONS (AMENDMENT) - REG 3 3. Regulation 5.4 (Filing of statement) 3.1 Paragraph 5.4 (1) (a): Omit "1 month", substitute "3 months". 1993 No. 113 PATENTS REGULATIONS (AMENDMENT) - REG 4 4. Regulation 5.10 (Conduct of proceedings to which this Chapter applies) 4.1 Paragraph 5.10 (1) (b): After "Chapter", insert "(except in regulation 5.3 ('filing of opposition') or paragraph 5.4 (1) (a) ('filing of statement')),". 4.2 Subregulation 5.10 (2): Omit "('filing of opposition')", substitute "or paragraph 5.4 (1) (a);". 4.3 Paragraph 5.10 (4) (b): Omit "may specify", substitute "specifies". 1993 No. 113 PATENTS REGULATIONS (AMENDMENT) - REG 5 5. Regulation 22.2 (General fees) 5.1 Subregulation 22.2 (2): Omit "item 29", substitute "item 28". 5.2 Subregulation 22.2 (4): Omit "Item 22", substitute "Item 21". 1993 No. 113 PATENTS REGULATIONS (AMENDMENT) - REG 6 6. Regulation 22.11 (Extension of time) 6.1 Paragraph 22.11 (3) (a): Add at the end "or paragraph 5.4 (1) (a) ('filing of statement');". 1993 No. 113 PATENTS REGULATIONS (AMENDMENT) - REG 7 7. Schedule 7 (Fees) 7.1 Omit Parts 1, 2 and 3, substitute: PART 1-PATENT ATTORNEYS Column 1 Column 2 Column 3 Item Matter Fee $ 1 On making an application for admission to sit for an examination-per subject 50 2 On making an application for grant of a supplementary examination-per subject 55 3 On making an application for a report of reasons for failure-per subject 45 4 On making an application for a certificate of the Board under regulation 20.16 40 5 On making an application for registration as a patent attorney 200 6 Annual registration fee payable by a patent attorney 320 7 On making an application under regulation 20.19 160 PART 2-GENERAL FEES 1 On filing a request for a patent accompanied by a provisional specification $80 2 On filing a request for a petty patent accompanied by a complete specification $165 3 On filing a request for a standard patent accompanied by a complete specification: (a) filing; and $195 (b) if the number of sheets comprising the specification, including any drawings contained in the specification, exceeds 30-for each sheet in excess of 30; and $14 (c) if the number of claims exceeds 10-for each claim in excess of 10 $8 4 On filing a request for an examination of a patent request and complete specification: (a) if the request was not preceded by a direction of the Commissioner under subsection 44 (2) or (4) of the Act: (i) in the case of a request for an examination to be made in accordance with section 45 of the Act $390 (ii) in the case of a request for a modified examination $325 (b) if the request was preceded by a direction of the Commissioner under subsection 44 (2) or (4) of the Act (whether or not the applicant had, before the request was made, requested deferment of the examination under section 46 of the Act): (i) in the case of a request for an examination to be made in accordance with section 45 of the Act $335 (ii) in the case of a request for a modified examination $280 5 On filing a request under subsection 44 (3) of the Act requiring the Commissioner to direct an applicant to request examination $90 6 On filing a copy of the specification referred to in subregulation 3.20 (6): (a) if filed between 1 month and 2 months after filing of the request for modified examination $50 (b) if filed after 2 months after filing of the request for modified examination $160 7 On filing a request under subsection 97 (2) of the Act for re-examination of a complete specification $1050 8 Continuation fee under paragraph 142 (2) (d) of the Act, or renewal fee under paragraph 143 (a) of the Act, for: (a) the third anniversary $115 (b) the fourth anniversary $140 (c) the fifth anniversary $165 (d) the sixth anniversary $200 (e) the seventh anniversary $235 (f) the eighth anniversary $270 (g) the ninth anniversary $305 (h) the tenth anniversary $345 (i) the eleventh anniversary $385 (j) the twelfth anniversary $430 (k) the thirteenth anniversary $475 (l) the fourteenth anniversary $525 (m) the fifteenth anniversary $575 plus: if paid within 6 months after the anniversary $55 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid 9 Renewal fee under paragraph 143 (a) of the Act, if an extension of the term of a standard patent has been granted under subsection 75 (2) or (4) of the Act, for: (a) the sixteenth anniversary $630 (b) the seventeenth anniversary $680 (c) the eighteenth anniversary $730 (d) the nineteenth anniversary $790 plus: if paid within 6 months after the anniversary $55 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid 10 On filing a notice of opposition under regulation 5.3 $100 11 On filing a request under subregulation 5.5 (1) for dismissal of opposition $50 12 On filing an application under subregulation 5.10 (2) for an extension of time, for each month, or part of a month, for which the extension is sought $55 13 On filing an application under subregulation 5.10 (4) to lodge further evidence in opposition proceedings $75 14 On making a representation to the Commissioner under regulation 5.9 or 5.10 $100 15 For sealing a standard patent under section 61 of the Act $260 16 On filing an application for the grant of an extension of the term of a petty patent under section 69 of the Act $350 17 On filing an application under section 70 of the Act for the extension of the term of a patent relating to a pharmaceutical substance $685 18 On filing an application under section 66 of the Act for a duplicate of a patent to be sealed $50 19 On filing a request for leave to amend: (a) a complete specification under section 104 of the Act, before a request for examination has been filed or after the complete specification has been accepted; or $100 (b) a patent request for a petty patent to make it a patent request for a standard patent $100 20 On filing a request for leave to amend a patent request or another filed document under section 104 of the Act (other than a request for change of address or a request to which the fee under paragraph (b) of item 19 applies) before a request for examination has been filed or after the patent request has been accepted $50 21 On filing: (a) a request to amend a patent or an entry in the Register under subregulation 10.7 (1), other than: $55 (i) a request for a change of address; or (ii) a request to which the fee under paragraph (b) applies (b) simultaneously, 2 or more requests under subregulation 10.7 (1), each of which is to make the same amendment to the name entered in the Register $55, plus $25 for each request after the first 22 On filing: (a) a request under subregulation 19.1 (2) for registration of particulars referred to in paragraph 19.1 (1) (a) or (b) other than a request to which the fee under paragraph (b) applies $50 (b) simultaneously, 2 or more requests under subregulation 19.1 (2), if the devolution of title or interest is the same in respect of all the patents to which the requests relate $50, plus $25 for each request after the first 23 On filing a request under subsection 17 (1) or (2), section 46, subsection 49 (3), 54 (1), 82 (1), 92 (1) or 113 (1) or section 215 of the Act $50 24 On filing a document or documents referred to in subregulation 8.6 (2), more than 3 months after filing the application: (a) if filed before or at the time of filing a request for examination $50 (b) if filed after filing a request for examination $160 25 On filing any translation or translations referred to in paragraph 3.1 (3) (b), more than 3 months after complying with the requirements of subsection 89 (3) of the Act: (a) if filed before or at the time of filing a request for examination $50 (b) if filed after filing a request for examination $160 26 On filing a request under subsection 150 (1) of the Act to restore a lapsed application $90 27 On filing an application under subsection 223 (2) of the Act for an extension of time on a ground specified in paragraph 223 (2) (a) of the Act: (a) for each month, or part of a month, for which the application is made; and $55 (b) if the application is filed after the end of the time to be extended $85 28 For granting an extension of time greater than that applied for by the applicant-for each month, or part of a month of extension granted $55 less any amount paid under paragraph (a) of item 27 29 On filing an application under subsection 223 (2) of the Act for an extension of time on the ground specified in paragraph 223 (2) (b) of the Act $55 30 On filing: (a) a request under regulation 22.22 for the exercise of discretionary power; or $100 (b) a request for a hearing $100 31 On appearing at a hearing $100 less any amount paid under item 30 in relation to the hearing 32 On filing a response to the Commissioner's report under section 45 or 48 of the Act, if filed more than 12 months, but within 21 months, after the date of the first report on the examination-for each month, or part of a month, after the 12 months, other than a month in respect of which a fee has been paid under this item in relation to that examination $55 33 For supply of an uncertified copy of: (a) a patent specification; or $15 (b) a document other than a patent specification; or $10 (c) if more than 6 documents of the kind mentioned in paragraph (b) are sought from a single source and supplied at the same time $60 plus 30 cents per page for each document in excess of 6 documents 34 For supply of: (a) a certificate by the Commissioner; and $75 (b) for each additional certificate that is the same, and supplied at the same time, as the first certificate $55 35 On filing a request for information under subregulation 19.2 (1), other than a request referred to in item 36 or 37-for each application, patent or document $50 36 On filing a request for a computer print- out of information under subregulation 19.2 (1) about a patent or a patent application $10 37 On filing a request under subregulation 19.2 (2) for information that requires an international-type search $750 38 On filing a request under section 58 of the Act for the result of a search made under section 45 or 48 of the Act $50 39 On filing a substitute page or pages in compliance with a direction under subregulation 3.2 (4): (a) within 3 months after the day when the direction was given $50 (b) after the time specified in paragraph (a) but before the application becomes open to public inspection $95 40 For filing an abstract after the day when a direction was given under subregulation 3.4 (5) $50 41 For taxing costs under subregulation 22.8 (3) $50 PART 3-GENERAL FEES FOR INTERNATIONAL APPLICATIONS 1 Transmittal fee under Rule 14 of the PCT $55 2 Search fee under Rule 16 of the PCT $750 3 Additional fee for search under Article 17 (3) (a) of the PCT $750 4 Preliminary examination fee under Rule 58 of the PCT $400 5 Additional fee for international preliminary examination under Article 34 (3) (a) of the PCT $400 6 For copy of a document in accordance with Rules 44.3 (b) or 71.2 (b) of the PCT $15 7 Confirmation fee under Rule 15.5 (a) of the PCT 50% of the sum of the designation fees payable under item 2 (b) of Part 4 in this Schedule (NOTE: The text of the PCT is set out in Schedule 2.) 1993 No. 113 PATENTS REGULATIONS (AMENDMENT) - REG 8 8. Schedule 8 (Costs, expenses and allowances) 8.1 Omit the Schedule, substitute: SCHEDULE 8 Regulation 22.8 COSTS, EXPENSES AND ALLOWANCES PART 1-COSTS Column 1 Column 2 Column 3 Item Matter Amount 1 Notice of opposition $170 2 Evidence in support $460 3 Receiving and perusing notice of opposition $85 4 Receiving and perusing evidence in support $200 5 Evidence in answer $460 6 Receiving and perusing evidence in answer $135 7 Evidence in reply $230 8 Receiving and perusing evidence in reply $85 9 Preparation of case for hearing $345 10 Attendance at hearing by patent attorney or solicitor without counsel $170 per hour or $765 per day 11 Attendance at hearing by patent attorney or solicitor instructing counsel $135 per hour or $610 per day 12 Counsel fees $230 per hour or $1,035 per day PART 2-EXPENSES AND ALLOWANCES Division 1-Expenses 1. A person who has paid a fee prescribed in these Regulations in relation to proceedings before the Registrar may be paid the amount of the fee. 2. A person attending proceedings before the Registrar must be paid: (a) a reasonable amount for allowances for transport between the usual place of residence of the person and the place that he or she attends for that purpose; and (b) if the person is required to be absent overnight from his or her usual place of residence-a reasonable amount for allowances up to a daily maximum of $390 for meals and accommodation. Division 2-Allowances 3. A person who, because of his or her professional, scientific or other special skill or knowledge, is summoned to appear before the Registrar as a witness must be paid: (a) if the person is remunerated in his or her occupation by wages, salary or fees-an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or (b) in any other case-an amount of not less than $95, or more than $475, for each day on which he or she so attends. 4. A person summoned to appear before the Registrar as a witness, other than a witness referred to in clause 3, must be paid: (a) if the person is remunerated in his or her occupation by wages, salary or fees-an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or (b) in any other case-an amount of not less than $54, or more than $89, for each day on which he or she so attends. 1993 No. 113 PATENTS REGULATIONS (AMENDMENT) - REG 9 9. Application and transitional 9.1 Despite the amendments of Schedule 7 to the Patents Regulations made by regulation 7 of these Regulations, if: (a) an application for: (i) the grant of an extension of the term of a petty patent under section 69 of the Act; or (ii) the extension of the term of a patent relating to a pharmaceutical substance; was filed before 1 July 1993; and (b) on or after 1 July 1993, the Commissioner grants the extension sought; the fee payable under item 16 or 18 of Part 2 of that Schedule, as in force on 30 June 1993, is payable in respect of the granting of the extension sought. 9.2 The amendments of Schedule 7 to the Patents Regulations made by regulation 7 of these Regulations do not apply in respect of: (a) a continuation fee in respect of a year; or (b) a renewal fee in respect of a year of a patent; being a year or year of a patent ending on or after the commencement of regulation 7, if that continuation fee or renewal fee became due and payable, and has been paid, before that commencement. 9.3 In this regulation: "continuation fee" means a continuation fee for the purposes of paragraph 142 (2) (d) of the Act; "renewal fee" means a renewal fee for the purposes of paragraph 143 (a) of the Act. - NOTES 1993 No. 113*1* PATENTS REGULATIONS*2* (AMENDMENT) *1* Notified in the Commonwealth of Australia Gazette on 3 June 1993. *2* Statutory Rules 1991 No. 71 as amended by 1991 No. 456; 1992 No. 148.