PATENTS REGULATIONS (AMENDMENT) 1997 NO. 345 PATENTS REGULATIONS (AMENDMENT) 1997 NO. 345 - TABLE OF PROVISIONS 1. Commencement 2. Amendment 3. Application to certain applications 4. Regulation 1.4 (English text of treaties) 5. Regulation 10.3 (Amendments not allowable) 6. Regulation 11.1 (Infringement exemptions: prescribed foreign countries) 7. Regulation 20.43 (Disciplinary Tribunal: acting appointments) 8. Regulation 22.2 (General fees) 9. Regulation 23.10 (Fee taken to have been paid) 10. Schedule 2A (Regulations under the Patent Cooperation Treaty) 11. Schedule 4 (Convention countries) 12. Schedule 6A (Prescribed employee-subsection 209 (1) of the Act) 13. Schedule 7, Part 2 (General fees) 14. Schedule 7, Part 4 (Fees for international applications payable for the benefit of the International Bureau) PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 1 1. Commencement 1.1 Regulations 3, 4, 8, 9, 10, 13 and 14 commence on 1 January 1998. [NOTE: The remainder of these Regulations commence on gazettal: see Acts Interpretation Act 1901, s 48.] PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 2 2. Amendment 2.1 The Patents Regulations are amended as set out in these Regulations. PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 3 3. Application to certain applications 3.1 The amendment of Part 4 of Schedule 7 of the Patents Regulations by regulation 14 of these Regulations applies only to an international application filed on or after 1 January 1998. PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 4 4. Regulation 1.4 (English text of treaties) 4.1 Subregulation 1.4 (2): Omit "1 January 1996", substitute "1 January 1998". PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 5 5. Regulation 10.3 (Amendments not allowable) 5.1 Paragraph 10.3 (2) (b): Omit "were", substitute "was". PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 6 6. Regulation 11.1 (Infringement exemptions: prescribed foreign countries) 6.1 Omit "in Part 1". PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 7 7. Regulation 20.43 (Disciplinary Tribunal: acting appointments) 7.1 Paragraph 20.43 (3) (b): Omit the paragraph, substitute: "(b) is to terminate the appointment if the person appointed fails, without reasonable excuse, to disclose a conflict of interest in accordance with regulation 20.45 ('disclosure of interest').". PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 8 8. Regulation 22.2 (General fees) 8.1 Subregulation 22.2 (2): Omit "item 25", substitute "item 18". 8.2 Subregulation 22.2 (4): Omit the subregulation. PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 9 9. Regulation 23.10 (Fee taken to have been paid) 9.1 Paragraph 23.10 (c): Omit "item 29", substitute "item 22". 9.2 Omit "item 29", substitute "item 22". PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 10 10. Schedule 2A (Regulations under the Patent Cooperation Treaty) 10.1 Rules 86.1 and 86.2: Omit the rules, substitute: "86.1 Contents and Form (a) The Gazette referred to in Article 55 (4) shall contain: (i) for each published international application, the data specified by the Administrative Instructions taken from the front page of the pamphlet published under Rule 48, the drawing (if any) appearing on the said front page, and the abstract, (ii) the schedule of all fees payable to the receiving Offices, the International Bureau, and the International Searching and Preliminary Examining Authorities, (iii) notices the publication of which is required under the Treaty or these Regulations, (iv) information, if and to the extent furnished to the International Bureau by the designated or elected Offices, on the question whether the requirements provided for in Articles 22 or 39 have been complied with in respect of the international applications designating or electing the Office concerned, (v) any other useful information prescribed by the Administrative Instructions, provided access to such information is not prohibited under the Treaty or these Regulations. (b) The information referred to in paragraph (a) shall be made available in two forms: (i) as a Gazette in paper form, which shall contain the data specified by the Administrative Instructions taken from the front page of the pamphlet published under Rule 48 ('bibliographic data') and the matters referred to in paragraph (a) (ii) to (v); (ii) as a Gazette in electronic form, which shall contain the bibliographic data, the drawing (if any) appearing on the said front page, and the abstract. "86.2 Languages; Access to the Gazette (a) The Gazette in paper form shall be published in a bilingual (English and French) edition. It shall also be published in editions in any other language, provided the cost of publication is assured through sales or subventions. (b) The Assembly may order the publication of the Gazette in languages other than those referred to in paragraph (a). (c) The Gazette in electronic form referred to in Rule 86.1 (b) (ii) shall be made accessible, in English and French at the same time, by any electronic ways and means specified in the Administrative Instructions. The translations shall be ensured by the International Bureau in English and French. The International Bureau shall ensure that the making accessible of the Gazette in electronic form shall be effected on, or as soon as possible after, the date of publication of the pamphlet containing the international application.". 10.2 Item 1 of the Schedule of Fees: Omit "762 Swiss francs" (twice occurring), substitute "650 Swiss francs". 10.3 Item 2 of the Schedule of Fees: Omit "185 Swiss francs" (twice occurring), substitute "150 Swiss francs". PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 11 11. Schedule 4 (Convention countries) 11.1 Omit the Schedule, substitute: SCHEDULE 4 Subregulation 8.5 (1) and regulation 11.1 CONVENTION COUNTRIES Albania Algeria Angola Antigua and Barbuda Argentina Armenia Austria Azerbaijan Bahamas Bahrain Bangladesh Barbados Belarus Belgium Belize Benin Bolivia Bosnia and Herzogovina Botswana Brazil Brunei Darussalam Bulgaria Burkina Faso Burundi Cameroon Canada Central African Republic Chad Chile China Colombia Congo Costa Rica C™te d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic Republic of the Congo Denmark (including Faroe Islands) Djibouti Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Fiji Finland France (including all Overseas Departments and Territories) Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Guinea-Bissau Guyana Haiti Holy See Honduras Hong Kong, China Hungary Iceland India Indonesia Iran, Islamic Republic of Iraq Ireland Israel Italy Jamaica Japan Jordan Kazakhstan Kenya Korea, Democratic People's Republic of Korea, Republic of Kuwait Kyrgyzstan Latvia Lebanon Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg Macau Madagascar Malawi Malaysia Maldives Mali Malta Mauritania Mauritius Mexico Moldova Monaco Mongolia Morocco Mozambique Myanmar Namibia Netherlands (including the Netherlands Antilles and Aruba) New Zealand (excluding the Cook Islands, Niue and Tokelau) Nicaragua Niger Nigeria Norway Pakistan Panama Papua New Guinea Paraguay Peru Philippines Poland Portugal Qatar Romania Russian Federation Rwanda Saint Kitts and Nevis Saint Lucia Saint Vincent and the Grenadines San Marino Senegal Sierra Leone Singapore Slovak Republic Slovenia Solomon Islands South Africa Spain Sri Lanka Sudan Surinam Swaziland Sweden Switzerland Syrian Arab Republic Taiwan Tajikistan Tanzania Thailand The former Yugoslav Republic of Macedonia Togo Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom (including the Isle of Man) United Republic of Tanzania United States of America (including all territories and possessions, including the Commonwealth of Puerto Rico) Uruguay Uzbekistan Venezuela Viet Nam Yugoslavia Zambia Zimbabwe PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 12 12. Schedule 6A (Prescribed employee-subsection 209 (1) of the Act) 12.1 After subparagraph (a) (iii), insert: "(iiia) Class 6-Manager, Examination Support and Sales;". 12.2 After subparagraph (a) (xv), insert: "(xvi) Class 4-Team Leader, Examination Support and Sales;". PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 13 13. Schedule 7, Part 2 (General fees) 13.1 Omit the Part, substitute: PART 2-GENERAL FEES Column 1 Column 2 Column 3 Item Matter Fee 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 $280 3 On filing a request for a standard patent accompanied by a complete specification: (a) filing; and $280 (b) if the number of sheets comprising the specification, including any drawings contained in the specification, exceeds 30Ðfor each sheet in excess of 30 $12 4 On filing a request for an examination of a patent request and complete specification: (a) in the case of a request for an examination to be made in accordance with section 45 of the Act $350 (b) in the case of a request for a modified examination $290 5 On filing a request under subsection 44 (3) of the Act requiring the Commissioner to direct an applicant to request examination $65 6 On filing a request under subsection 97 (2) of the Act for re-examination of a complete specification $1,200 7 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 (n) the sixteenth anniversary $630 (o) the seventeenth anniversary $680 (p) the eighteenth anniversary $730 (q) the nineteenth anniversary $790 plus: if paid within 6 months after the anniversary $65 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid 8 On filing a notice of opposition under regulation 5.3 $500 9 On filing a request under subregulation 5.5 (1) for dismissal of opposition $65 10 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 $65 11 On making a representation to the Commissioner: (a) under regulation 5.3A or subregulation 5.9 (3) objecting to a proposed amendment; or $500 (b) under subparagraph 5.10 (5) (c) (i) objecting to an application or proposed action $500 12 For sealing a standard patent under section 61 of the Act $200 13 On filing an application for the grant of an extension of the term of a petty patent under section 69 of the Act $350 14 On filing an application under section 66 of the Act for a duplicate of a patent to be sealed $65 15 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 $105 (b) a patent request for a petty patent to make it a patent request for a standard patent $105 16 On filing a request under subsection 150 (1) of the Act to restore a lapsed application $90 17 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 $65 (b) if the application is filed after the end of the time to be extended $90 18 For granting an extension of time, on a ground specified in paragraph 223 (2) (a) of the Act, greater than that applied for by the applicantÐfor each month, or part of a month, of extension granted $65 less any amount paid under paragraph (a) of item 17 19 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 $65 20 On filing: (a) a request under regulation 22.22 for the exercise of discretionary power; or $500 (b) a request for a hearing $500 21 On appearing at a hearing $500 less any amount paid under item 11 or 20 in relation to the hearing 22 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 examinationÐfor each month, or part of a month, after the 12 months, other than a month in respect of which a fee was paid under this item in relation to that examination $65 23 For supply of a 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 24 For supply of a certificate by the Commissioner $15 25 On filing a request for information under subregulation 19.2 (1), other than a request referred to in item 26 or 27Ðfor each application, patent or document $65 26 On filing a request for a computer printout of information under subregulation 19.2 (1) about a patent or a patent application $10 27 On filing a request under subregulation 19.2 (2) for information that requires an international-type search $800 28 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 $65 29 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 $65 (b) after the time specified in paragraph (a) but before the application becomes open to public inspection $100 30 For filing an abstract after the day when a direction was given under subregulation 3.4 (5) $65 31 For taxing costs under subregulation 22.8 (3) $65 PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - REG 14 14. Schedule 7, Part 4 (Fees for international applications payable for the benefit of the International Bureau) 14.1 Omit the Part, substitute: PART 4-FEES FOR INTERNATIONAL APPLICATIONS PAYABLE FOR THE BENEFIT OF THE INTERNATIONAL BUREAU Column 1 Column 2 Column 3 Item Matter Fee 1 Basic fee under Rule 15.2 (a) of the PCT: (a) if the international application contains not more than 30 sheets 650 Swiss francs (b) if the international application contains more than 30 sheets 650 Swiss francs, plus 15 Swiss francs for each sheet in excess of 30 sheets 2 Designation fee under Rule 15.2 (a) of the PCT: (a) for designations made under Rule 4.9 (a) 150 Swiss francs per designation, provided that any designation made under Rule 4.9 (a) in excess of 11 shall not require the payment of a designation fee (b) for designations made under Rule 4.9 (b) and confirmed under Rule 4.9 (c) 150 Swiss francs per designation 3 Handling fee under Rule 57.2 (a) of the PCT 233 Swiss francs PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - NOTE 1 NOTES *1* Notified in the Commonwealth of Australia Gazette on 9 December 1997. PATENTS REGULATIONS (AMENDMENT) 1997 No. 345 - NOTE 2 *2* Statutory Rules 1991 No. 71 as amended by 1991 No. 456; 1992 No. 148; 1993 Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 No. 192. - NOTES PATENTS REGULATIONS*2* (AMENDMENT) 1997 No. 345*1* - Dated 8 December 1997.