Patents Amendment Regulations 2006 (No. 1)1
Select Legislative Instrument 2006 No. 55
I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following Regulations under the Patents Act 1990.
Dated 17 March 2006
P. M. JEFFERY
Governor-General
By His Excellency’s Command
IAN MACFARLANE
Minister for Industry, Tourism and Resources
1 Name of Regulations
These Regulations are the Patents Amendment Regulations 2006 (No. 1).
2 Commencement
These Regulations commence on 1 April 2006.
3 Amendment of Patents Regulations 1991
Schedule 1 amends the Patents Regulations 1991.
4 Transitional
(1) The amendments made by Part 2 of Schedule 1 apply in relation to:
(a) an international application:
(i) the filing date of which occurred before 1 April 2006; and
(ii) that is published under Article 21 of the Patent Cooperation Treaty on or after 1 April 2006; and
(b) an international application the filing date of which occurs on or after 1 April 2006.
(2) The amendments made by Part 3 of Schedule 1 apply in relation to:
(a) an international application:
(i) the filing date of which occurred before 1 April 2006; and
(ii) that is communicated under Article 20 of the Patent Cooperation Treaty on or after 1 April 2006; and
(b) an international application the filing date of which occurs on or after 1 April 2006.
(3) The amendments made by Part 4 of Schedule 1 apply in relation to the issue, on or after 1 April 2006, of a Gazette in relation to an international application the filing date of which occurred at any time.
(4) The amendments made by Part 5 of Schedule 1 apply in relation to:
(a) the communication, on or after 1 April 2006, of an international application the filing date of which occurred at any time; and
(b) the communication, on or after 1 April 2006, of a Gazette in relation to an international application the filing date of which occurred at any time; and
(c) the communication, on or after 1 April 2006, of another publication in relation to an international application the filing date of which occurred at any time.
Schedule 1 Amendments
(regulation 3)
Part 1 General amendments
[1] Subregulation 1.4 (2), except the note
substitute
(2) The English text of the PCT as in force for Australia on 1 April 2006 is the text set out in Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty).
[2] Schedule 2A, before Table of Provisions
omit
and on October 5, 2004.
insert
, on October 5, 2004, and on 1 April 2006.
[3] Schedule 2A, Table of Provisions, Rule 48.1
substitute
48.1 Form and Means
[4] Schedule 2A, Table of Provisions, Rule 86.1
substitute
86.1 Contents
[5] Schedule 2A, Table of Provisions, Rule 86.2
substitute
86.2 Languages; Form and Means of Publication; Timing
[6] Schedule 2A, Table of Provisions, Rule 87
substitute
Rule 87 Communication of Publications
[7] Schedule 2A, Table of Provisions, Rule 87.1
substitute
87.1 Communication of Publications on Request
[8] Schedule 2A, Table of Provisions, Rule 87.2
omit
[9] Schedule 2A, paragraph 4.9 (b)
substitute
(b) Notwithstanding paragraph (a) (i), if, on October 5, 2005, the national law of a Contracting State provides that the filing of an international application which contains the designation of that State and claims the priority of an earlier national application having effect in that State shall have the result that the earlier national application ceases to have effect with the same consequences as the withdrawal of the earlier national application, any request in which the priority of an earlier national application filed in that State is claimed may contain an indication that the designation of that State is not made, provided that the designated Office notifies the International Bureau by January 5, 2006, that this paragraph shall apply in respect of designations of that State and that the notification is still in force on the international filing date. The information received shall be promptly published by the International Bureau in the Gazette.
Part 2 Amendments relating to international applications
[10] Schedule 2A, subparagraph 13bis.4 (d) (i)
substitute
(i) if the indication was received before the technical preparations for international publication have been completed, publish the indication furnished under paragraph (a), and an indication of the date of receipt, together with the international application;
[11] Schedule 2A, paragraph 47.1 (ater)
omit
[12] Schedule 2A, Rule 48
substitute
Rule 48
International Publication
48.1 Form and Means
The form in which and the means by which international applications are published shall be governed by the Administrative Instructions.
48.2 Contents
(a) The publication of the international application shall contain:
(i) a standardized front page;
(ii) the description;
(iii) the claims;
(iv) the drawings, if any;
(v) subject to paragraph (g), the international search report or the declaration under Article 17 (2) (a);
(vi) any statement filed under Article 19 (1), unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4;
(vii) any request for rectification referred to in the third sentence of Rule 91.1 (f);
(viii) the indications in relation to deposited biological material furnished under Rule 13bis separately from the description, together with an indication of the date on which the International Bureau received such indications;
(ix) any information concerning a priority claim considered not to have been made under Rule 26bis.2 (b), the publication of which is requested under Rule 26bis.2 (c);
(x) any declaration referred to in Rule 4.17, and any correction thereof under Rule 26ter.1, which was received by the International Bureau before the expiration of the time limit under Rule 26ter.1.
(b) Subject to paragraph (c), the front page shall include:
(i) data taken from the request sheet and such other data as are prescribed by the Administrative Instructions;
(ii) a figure or figures where the international application contains drawings, unless Rule 8.2 (b) applies;
(iii) the abstract; if the abstract is both in English and in another language, the English text shall appear first;
(iv) an indication that the request contains any declaration referred to in Rule 4.17 which was received by the International Bureau before the expiration of the time limit under Rule 26ter.1.
(c) Where a declaration under Article 17 (2) (i) has issued, the front page shall conspicuously refer to that fact and need include neither a drawing nor an abstract.
(d) The figure or figures referred to in paragraph (b) (ii) shall be selected as provided in Rule 8.2. Reproduction of such figure or figures on the front page may be in a reduced form.
(e) If there is not enough room on the front page for the totality of the abstract referred to in paragraph (b) (iii), the said abstract shall appear on the back of the front page. The same shall apply to the translation of the abstract when such translation is required to be published under Rule 48.3 (c).
(f) If the claims have been amended under Article 19, the publication of the international application shall contain the full text of the claims both as filed and as amended. Any statement referred to in Article 19 (1) shall be included as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4. The date of receipt of the amended claims by the International Bureau shall be indicated.
(g) If, at the time of the completion of the technical preparations for international publication, the international search report is not yet available, the front page shall contain an indication to the effect that that report was not available and that the international search report (when it becomes available) will be separately published together with a revised front page.
(h) If, at the time of the completion of the technical preparations for international publication, the time limit for amending the claims under Article 19 has not expired, the front page shall refer to that fact and indicate that, should the claims be amended under Article 19, then, promptly after receipt by the International Bureau of such amendments within the time limit under Rule 46.1, the full text of the claims as amended will be published together with a revised front page. If a statement under Article 19 (1) has been filed, that statement shall be published as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4.
48.3 Languages of Publication
(a) If the international application is filed in Arabic, Chinese, English, French, German, Japanese, Russian or Spanish (“languages of publication”), that application shall be published in the language in which it was filed.
(abis) If the international application is not filed in a language of publication and a translation into a language of publication has been furnished under Rule 12.3 or 12.4, that application shall be published in the language of that translation.
(c) If the international application is published in a language other than English, the international search report to the extent that it is published under Rule 48.2 (a) (v), or the declaration referred to in Article 17 (2) (a), the title of the invention, the abstract and any text matter pertaining to the figure or figures accompanying the abstract shall be published both in that language and in English. The translations shall be prepared under the responsibility of the International Bureau.
48.4 Earlier Publication on the Applicant’s Request
(a) Where the applicant asks for publication under Articles 21 (2) (b) and 64 (3) (c) (i) and the international search report, or the declaration referred to in Article 17 (2) (a), is not yet available for publication together with the international application, the International Bureau shall collect a special publication fee whose amount shall be fixed in the Administrative Instructions.
(b) Publication under Articles 21 (2) (b) and 64 (3) (c) (i) shall be effected by the International Bureau promptly after the applicant has asked for it and, where a special fee is due under paragraph (a), after receipt of such fee.
48.5 Notification of National Publication
Where the publication of the international application by the International Bureau is governed by Article 64 (3) (c) (ii), the national Office concerned shall, promptly after effecting the national publication referred to in the said provision, notify the International Bureau of the fact of such national publication.
48.6 Announcing of Certain Facts
(a) If any notification under Rule 29.1 (ii) reaches the International Bureau at a time later than that at which it was able to prevent the international publication of the international application, the International Bureau shall promptly publish a notice in the Gazette reproducing the essence of such notification.
(c) If the international application, the designation of any designated State or the priority claim is withdrawn under Rule 90bis after the technical preparations for international publication have been completed, notice of the withdrawal shall be published in the Gazette.
Part 3 Further amendments relating to international applications
[13] Schedule 2A, paragraph 26bis.2 (c)
substitute
(c) Where the receiving Office or the International Bureau has made a declaration under paragraph (b), the International Bureau shall, upon request made by the applicant and received by the International Bureau prior to the completion of the technical preparations for international publication, and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish, together with the international application, information concerning the priority claim which was considered not to have been made. A copy of that request shall be included in the communication under Article 20 where the international application is not published by virtue of Article 64 (3).
[14] Schedule 2A, paragraph 91.1 (f)
substitute
(f) Any authority which authorizes or refuses any rectification shall promptly notify the applicant of the authorization or refusal and, in the case of refusal, of the reasons therefor. The authority which authorizes a rectification shall promptly notify the International Bureau accordingly. Where the authorization of the rectification was refused, the International Bureau shall, upon request made by the applicant prior to the time relevant under paragraph (g-bis), (g-ter) or (g-quater) and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish the request for rectification together with the international application. A copy of the request for rectification shall be included in the communication under Article 20 where the international application is not published by virtue of Article 64 (3).
Part 4 Amendment relating to the Gazette
[15] Schedule 2A, Rule 86
substitute
Rule 86
The Gazette
86.1 Contents
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 publication of the international application, 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.
86.2 Languages; Form and Means of Publication; Timing
(a) The Gazette shall be published in English and French at the same time. The translations shall be ensured by the International Bureau in English and French.
(b) The Assembly may order the publication of the Gazette in languages other than those referred to in paragraph (a).
(c) The form in which and the means by which the Gazette is published shall be governed by the Administrative Instructions.
(d) The International Bureau shall ensure that, for each published international application, the information referred to in Rule 86.1 (i) is published in the Gazette on, or as soon as possible after, the date of publication of the international application.
86.3 Frequency
The frequency of publication of the Gazette shall be determined by the Director General.
86.4 Sale
The subscription and other sale prices of the Gazette shall be determined by the Director General.
86.5 Title
The title of the Gazette shall be determined by the Director General.
86.6 Further Details
Further details concerning the Gazette may be provided for in the Administrative Instructions.
Part 5 Amendment relating to the communication of publications
[16] Schedule 2A, Rule 87
substitute
Rule 87
Communication of Publications
87.1 Communication of Publications on Request
The International Bureau shall communicate, free of charge, every published international application, the Gazette and any other publication of general interest published by the International Bureau in connection with the Treaty or these Regulations, to International Searching Authorities, International Preliminary Examining Authorities and national Offices upon request by the Authority or Office concerned. Further details concerning the form in which and the means by which publications are communicated shall be governed by the Administrative Instructions.
Note
1. All legislative instruments and compilations are registered on the Federal Register of Legislative Instruments kept under the Legislative Instruments Act 2003. See www.frli.gov.au.
