PATENTS REGULATIONS (AMENDMENT) 1994 NO. 317

PATENTS REGULATIONS (AMENDMENT) 1994 NO. 317

STATUTORY RULES 1994 No. 317

Issued by the Authority of the Minister for Small Business, Customs and Construction

Patents Act 1990

Patents Regulations (Amendment)

The Statutory Rules amend the Patents Regulations (the Regulations) to revise certain fees payable under the Regulations; to revise the costs and an allowance that may be awarded in proceedings before the Commissioner; to provide transitional arrangements for certain actions; and to make a number of minor consequential and drafting changes. Details of the amendments are as follows:

Regulation 1 sets 1 October 1994 as the commencement day for these Regulations.

Regulation 2 identifies the Patents Regulations as those to be amended.

Regulations 3, 4, 5, 6 and 7 amend references to various fee items in regulations 13.3, 13.6, 22.2, 23.9, and 23. 10, consequent on the renumbering of fee items in Part 2 of Schedule 7.

Regulation 8 revises Parts 2 and 3 of Schedule 7 to the Regulations, to better align the amounts of the fee items in those Parts with the costs of the actions for which the fees are prescribed. Parts 1 and 4 of Schedule 7 are unchanged. Paragraph 3(c) and items 6, 24 and 25 in Part 2, as it was prior to amendment, have been omitted; the amounts of paragraph 3(b) and item 5 in Part 2 have been reduced. Consequent on the omission of those items, the fee items have been renumbered to ensure consecutive numbering and consequential changes to references to fee items made.

The Australian Industrial Property Organisation (AIPO), which incorporates the Patent, Trade Marks and Designs Offices, operates on a Group 2 Trust Account arrangement. AIPO is required to recover all of its costs from fees charged by the Patent, Trade Marks and Designs Offices. AIPO is committed to containing cost increases for normal operations within inflation and to achieve productivity gains at least equal to the efficiency dividend required of the Australian Public Service.

Fees for certain services performed by the Patent, Trade Marks and Designs Offices are increased with effect from 1 October 1994. The aggregate effect of these fee increases will be to raise an additional $2.6 million revenue in the period to the end of 1995, given the predicted composition of demand. Cost increases over this period, flowing from AIPO's move to accrualbased pricing, expected changes in accommodation costs, and inflation, are expected to amount to approximately $4 million. The shortfall will be absorbed through productivity increases in AIPO. The aggregate increase in fees since commencing full cost recovery in 1984 remains less than CPI.

To achieve the additional revenue required to the end of 1995, the fee levels of 34 of the 41 fee items prescribed in Part 2 of Schedule 7 to the Regulations, prior to amendment, have been increased, along with the fee levels of 5 of the 7 fee items prescribed in Part 3 of that Schedule.

Regulation 9 amends Schedule 8 to the Regulations, which sets out items and amounts of costs, expenses and allowances that may be awarded against parties to proceedings before the Commissioner. The amounts of the cost items (in Part 1 of Schedule 8) and the daily maximum amount that may be paid for meals and accommodation to a person attending proceedings before the Commissioner (specified in paragraph 2(b) in Part 2 in Schedule 8) are set to retain parity with the amounts of costs that may be awarded in the Supreme Court of the Australian Capital Territory. The amounts of items 2 to 12 in Part 1, prior to amendment, and the amount specified in paragraph 2(b) in Part 2, have been increased to reflect increases in the amounts of costs that may be awarded in that Court. Also, the wording in some of the amounts of costs has been amended to reflect the latest drafting style.

In addition, the Patents Regulations (Amendment) (the amending Regulations) inserted two new cost items (items 2 and 3), and reduced the amount of item 1, to reflect better the work involved in preparing and considering documents filed in proceedings to oppose the grant of a patent.

Regulation 10 is a transitional provision which provides that continuation or renewal fees due and paid before 1 October 1994 are not affected. Also, where an application for a standard patent has been accepted before 1 October 1994, the amending Regulations provide that the fee for sealing the patent is not affected.