Patents Regulations 1991
`Statutory Rules 1991 No. 71 as amended
`
`made under the
`
`Patents Act 1990
`
`This compilation was prepared on 1 January 2002
`taking into account amendments up to SR 2001 No. 345
`
`Prepared by the Office of Legislative Drafting,
`Attorney-General’s Department, Canberra
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`HP 1011
`Page 1 of 16
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`Statutory Rules 1991 No. 71 as amended
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`made under the
`
`Patents Act 1990
`
`This compilation was prepared on 1 January 2002
`taking into account amendments up to SR 2001 No. 345
`
`Prepared by the Office of Legislative Drafting,
`Attorney-General’s Department, Canberra
`
`HP 1011
`Page 1 of 16
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`Contents
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`Contents
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`Introductory
`Chapter 1
`1.1 Name of Regulations [see Note 1]
`1.2 Commencement
`1.3 Interpretation
`1.4 English text of treaties
`1.5 Deposit requirements: prescribed period
`1.6 Disclosure
`1.7 Verification of translations of international
`applications
`Patent rights, ownership and validity
`Chapter 2
`2.1 Applications by co-owners for directions
`2.2 Publication or use: prescribed circumstances and
`periods
`2.3 Prescribed period: publication or use affecting
`validity
`2.4 Prescribed period: patents of addition
`2.5 Prescribed period: assertion that invention is not
`patentable
`2.6 Prescribed period: notification of assertion of
`invalidity of innovation patent
`2.7 Documents to accompany notice of assertion of
`invalidity
`From application to acceptance
`Chapter 3
`Part 1
`Inventions generally
`3.1 Prescribed documents: patent applications
`3.1A Applicant taken to be nominated person
`3.2 Provisional specifications
`3.2A Specifications: standard patents
`3.2B Specifications: formalities check for innovation
`patents
`3.3 Abstracts
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`3.4 Substitute abstracts
`3.5 Filing date
`3.5A Filing date: incomplete specifications
`3.5B Filing of documents outside business hours
`3.6 Requests to make determinations between
`interested parties
`3.7 Form of certain applications
`3.8 Time within which applications are to be made
`following certain decisions and declarations
`3.9 Prescribed period: treatment of complete application
`as provisional
`3.10 Prescribed period: making of complete applications
`3.12 Priority dates generally
`3.13 Priority dates: certain persons and applications
`3.14 Priority dates: certain amended claims
`3.15 Prescribed period and form of request for
`examination
`3.16 Prescribed grounds and period for examination
`3.17 Requirement for Commissioner to direct or expedite
`examination
`3.18 Report of Commissioner: examination
`3.19 Conduct of examination: standard patents
`3.20 Requests for deferment of examination or modified
`examination
`3.21 Prescribed foreign countries: requests for deferment
`of examination and modified examination
`
`Inventions that are micro-organisms
`3.23 Documents in accepted applications and patents
`involving micro-organisms
`3.24 Commissioner may request samples and viability
`statement
`3.25 Request for Commissioner’s certificate authorising
`release of sample of a micro-organism
`3.26 Breach of undertakings given in respect of
`micro-organisms
`3.27 Procedure in proceedings for breach of an
`undertaking
`3.28 Relief in proceedings for breach of undertakings
`3.29 Notification that a deposit requirement has ceased to
`be satisfied
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`3.30 Prescribed period: deposit requirements taken to be
`satisfied
`3.31 Application for declaration that deposit requirements
`are not satisfied
`Publication
`Chapter 4
`4.1 Prescribed information: applicants and applications
`4.2 Notice that specification is open to public inspection
`4.3 Prescribed documents: public inspection
`Chapter 5 Opposition
`5.1 Application of this Chapter
`5.2 Interpretation
`5.3 Filing of opposition (except under section 101M of
`the Act)
`5.3AA Filing of opposition under section 101M of Act
`5.3A Amendment of notice of opposition: correction of
`error or mistake
`5.3B Amendment of notice of opposition: change of
`opponent
`5.4 Filing of statement
`5.5 Dismissal of opposition
`5.6 Determination of opposition
`5.7 Opponent to serve copy of substitute statement
`5.8 Time for giving of evidence
`5.9 Amendment of statement
`5.10 Conduct of proceedings to which this Chapter
`applies
`5.11 Commissioner may inform himself or herself
`5.12 Hearing of opposition
`5.13 Representations to Commissioner
`5.14 Commissioner not required to hold hearing
`5.15 Withdrawal of opposition
`Chapter 6 Grant and term of patents
`Part 1
`Patents generally
`6.1 Publication of notice of grant of standard patent
`6.2 Prescribed period: grant of standard patent
`6.3 Date of patent
`6.4 Form of application for sealing of duplicate of patent
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`4
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`Part 2
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`Extension of pharmaceutical patents
`6.7 Definitions
`6.8 Information to accompany application
`6.9 Application without pre-TGA marketing approval
`6.10 Application with pre-TGA marketing approval
`6.11 Further information
`Chapter 6A Divisional applications
`6A.1 Divisional applications: standard patents
`6A.2 Divisional applications: innovation patents
`Chapter 7
`Patents of addition
`7.1 Form of application for grant of patent of addition etc
`7.2 Form of application for revocation of patent and
`grant of patent of addition instead
`PCT applications and Convention
`applications
`PCT applications
`8.1 International applications taken to be applications
`under the Act
`8.1A Title of an invention
`8.2 Prescribed documents: PCT application
`8.3 Modification of Act to apply to PCT applications
`8.4 Form of request and prescribed documents: PCT
`applications
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`Chapter 8
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`Part 1
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`Part 2
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`Convention applications
`8.5 Convention countries
`8.6 Particulars required for Convention application
`8.7 Form of request in relation to withdrawn, abandoned
`or refused applications
`Re-examination
`Chapter 9
`9.1 Commissioner may re-examine complete
`specification when grant opposed
`9.2 Request for re-examination of complete specification
`9.3 Copy of report on re-examination
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`99
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`9.4 Prescribed period: statement disputing report by
`Commissioner
`9.5 Completion of re-examination
`Chapter 9A Examination of innovation patents
`9A.1 Request for examination
`9A.2 Examination of complete specification
`9A.3 Conduct of examination
`9A.4 Period for examination
`9A.5 Validity of innovation patent
`Chapter 10 Amendments
`10.1 Form of amendments
`10.2 Commissioner to consider and deal with requests for
`leave to amend
`10.3 Amendments not allowable
`10.4 Commissioner to refuse request for leave to amend
`10.5 Commissioner to grant leave to amend
`10.6 Time for allowance of amendments
`10.7 Correction of Register or patent
`10.8 Prescribed decisions: appeal to Federal Court
`10.10 Prescribed period: filing of court order
`10.11 Form of direction by Commissioner: patents
`10.12 Form of direction by Commissioner: applications
`10.14 Form of request: claim under assignment or
`agreement
`Chapter 11 Infringement
`11.1 Infringement exemptions: prescribed foreign
`100
`countries
`Chapter 12 Compulsory licences and revocation of
`patents
`101
`12.1 Lodgment of applications for compulsory licences
`102
`12.2 Prescribed period: revocation of patent
`102
`12.3 Form of notice: offer to surrender patent
`102
`12.4 Applications to revoke patents
`Chapter 13 Withdrawal and lapsing of applications
`and ceasing of patents
`13.1 Publication of notice of withdrawal of application
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`13.1A Period in which standard patent applications may not
`be withdrawn
`13.2 Prescribed period: request for examination of
`applications
`13.3 Prescribed period: continuation fees
`13.4 Prescribed period: acceptance of request and
`specification
`13.5 If applications lapse
`13.6 Time for payment of renewal fee for patent
`Chapter 15 Special provisions relating to
`associated technology
`15.1 Time for restoration of application for patent
`15.2 Requirements for reinstatement of international
`applications
`15.3 Prescribed period: order relating to standard patent
`Chapter 17 The Crown
`17.1 Application for declaration: exploitation of innovation
`patent
`17.1A Prescribed period: order relating to standard patent
`17.2 Prescribed period, document and fee: filing of
`international applications
`Chapter 19 The register and official documents
`19.1 Particulars to be registered
`19.2 Request for information from Commissioner
`Chapter 20 Patent attorneys
`Part 1
`Introductory
`20.1 Interpretation
`20.2 How to apply under Chapter 20
`20.2A Accreditation of courses of study
`20.2B Provisional accreditation
`
`Part 2
`
`Obtaining registration for the first time
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`Division 1
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`Generally
`20.3 Requirements for registration
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`Division 2
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`Division 3
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`20.3A Currency of pass or exemption
`20.4 Procedure for registration
`20.5 Certificate of registration
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`Prescribed subjects and academic qualifications
`20.6 Board examinations
`20.7 Time for holding Board examinations
`20.8 Examinable subject matter
`20.9 Admission to sit for a Board examination
`20.10 Notification of Board examination results
`20.11 Reasons for failure of Board examination
`20.12 Supplementary Board examination
`20.13 Exemption from examination
`20.14 Approval of courses and examinations
`20.15 Approval of academic qualifications
`20.16 Advice of completion of examinable subjects and of
`academic qualifications
`Rights of registered patent attorneys
`20.17 Lien
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`Part 3
`
`Renewal of registration: payment of annual
`fee
`20.18 Annual registration fee
`20.19 Restoration of patent attorney’s name to the Register
`20.19A Voluntary removal of name from register
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`Part 4
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`Discipline
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`Division 1
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`Complaints, decisions of the Disciplinary
`Tribunal and consequential action
`20.20 Complaints
`20.21 Authorisation to bring proceedings against a
`registered patent attorney
`20.22 Bringing of proceedings
`20.23 Decision of Disciplinary Tribunal
`20.24 Publication of decision
`20.25 Completion of outstanding business
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`Division 2
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`Procedure etc relating to the Disciplinary
`Tribunal
`20.26 Procedure of Disciplinary Tribunal
`20.27 Hearings to be public except in special
`circumstances
`20.28 Representation before Disciplinary Tribunal
`20.29 Summoning of witnesses
`20.30 Offences by persons appearing before Disciplinary
`Tribunal
`20.31 Protection of person constituting Disciplinary
`Tribunal, witnesses etc
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`Part 5
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`Administration
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`Division 1
`
`The Professional Standards Board for Patent and
`Trade Marks Attorneys
`20.32 Constitution of Board (Act, s 227A)
`20.34 Term of office of Board members
`20.35 Resignation and removal of members from Board
`20.37 Meetings of the Board
`20.38 Member presiding at meetings of the Board
`20.39 Quorum for Board meetings
`20.40 Absence of Chairperson from meeting — leave from
`Board
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`Division 2
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`Patent and Trade Marks Attorneys Disciplinary
`Tribunal
`20.41 Establishment of Disciplinary Tribunal
`20.42 Disciplinary Tribunal: substantive appointments
`20.43 Disciplinary Tribunal: acting appointments
`20.44 Qualifications for holding, or acting as, Disciplinary
`Tribunal
`20.45 Disclosure of interest
`Chapter 21 Administration
`21.1 Patent Office and sub-offices
`21.2 Employees to whom Commissioner may delegate
`(Act s 209 (1))
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`Chapter 22 Miscellaneous
`Part 1
`Fees and costs
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`Division 1
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`Fees
`22.1 Fees generally
`22.2 General fees
`22.2A Failure to pay: patent attorneys fees
`22.2B Failure to pay: filing fees for patent requests
`22.2C Failure to pay: certain other filing fees etc
`22.2D Failure to pay: fees payable by patentee for requests
`under s 101A (b) of the Act
`22.2E Failure to pay: response fee
`22.2F Consequence if Commissioner does not invite
`payment
`22.2G Failure to pay: hearing fees
`22.2H Failure to pay: certain fees for actions by
`Commissioner
`22.3 General fees for international applications
`22.4 Fees for international applications payable for the
`benefit of the International Bureau
`22.5 PCT Fund
`22.6 Exemption from fees
`22.7 Refund of certain fees
`
`Division 2
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`Costs
`22.7A Proceedings to which this Division applies
`22.8 Costs
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`Part 2
`
`Other matters
`22.8A Filing of documents
`22.9 Death of applicant or nominated person
`22.10 Address for service
`22.10A Address for correspondence
`22.11 Extension of time
`22.12 Evidence
`22.13 Declarations
`22.14 Directions not otherwise prescribed
`22.15 Documents to be in English
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`22.16 Documents other than specifications and abstracts
`22.17 Incapacity of certain persons
`22.18 Destruction of documents
`22.19 Copies of certain documents to be supplied
`22.20 International applications and the Patent Office
`22.21 Protection or compensation of certain persons
`22.22 Exercise by Commissioner of certain powers
`22.23 Hearings
`22.24 Practice and procedure other than for opposition
`proceedings
`22.25 Requirements cannot be complied with for
`reasonable cause
`22.26 Review of decisions
`Chapter 23 Transitional and savings provisions
`23.1 Saving: prohibition orders
`23.2 Delegation: certain matters referred to in this
`Chapter
`23.3 Opposition to grant: practice and procedure
`23.4 Certain opposition: practice and procedure
`23.5 Fees payable for certain matters relating to
`opposition
`23.6 Certain delegations: opposition
`23.7 Certain undertakings
`23.8 Restoration of lapsed applications or ceased patents
`23.9 Certain continuation and renewal fees
`23.10 Fee taken to have been paid
`23.11 Supply of product referred to in section 117 of the
`Act
`23.12 Certain withdrawn, abandoned or refused
`applications
`23.13 Certain certificates of validity
`23.14 Certain action under the 1952 Act
`23.15 Amendment of petty patents
`23.16 Certain applications under 1952 Act: time for
`acceptance
`23.17 PCT applications to which subsection 89 (5) of the
`Act does not apply
`23.18 Certain priority dates: saving
`23.19 Appointment of certain examiners
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`23.20 Patent attorneys: continued application of certain
`provisions
`23.21 Patent Attorneys Professional Standards Board:
`continuation of appointments
`23.22 Secretary to Patent Attorneys Professional
`Standards Board: continuation of appointment
`23.23 Patent Attorneys Disciplinary Tribunal: continuation
`23.24 Matters begun under the former attorneys
`Regulations not finally dealt with before the
`commencing day
`23.25 Fees
`23.26 Certain actions and proceedings
`23.27 Professional Standards Board for Patent and Trade
`Marks Attorneys
`23.28 Continuing effect of certain complaints
`23.29 Patent attorney registration
`23.30 Patent attorney qualifications and employment
`requirements
`23.31 Patent attorney examination requirements
`23.32 Transitional: priority date and date of patent for
`innovation patent application that is a divisional
`application of a petty patent or petty patent
`application
`23.33 Transitional: examination of innovation patents
`converted from petty patent applications
`23.34 Transitional: certain PCT applications
`23.35 Transitional: payment of fees for petty patents
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`Schedule 1
`
`Budapest Treaty on the International
`Recognition of the Deposit of
`Microorganisms for the Purposes of
`Patent Procedure
`
`Schedule 1A Regulations under the Budapest Treaty
`on the International Recognition of the
`Deposit of Microorganisms for the
`Purposes of Patent Procedure
`
`Schedule 2
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`Patent Cooperation Treaty
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`Page
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`Schedule 2A Regulations under the Patent Cooperation
`Treaty
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`Schedule 3
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`Formal requirements for documents to be
`filed
`6 Numbering of lines or paragraphs
`13 Electronic documents
`14 Scandalous matter
`
`Schedule 4
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`Convention countries
`
`Schedule 5
`Group A
`Group B
`Group C
`Group D
`Group E
`Group F
`Group G
`Group H
`Group I
`
`Prescribed topics
`Legal process and overview of intellectual property
`Professional conduct
`Trade mark law
`Trade mark practice
`Patent law
`Patent system
`Drafting patent specifications
`Interpretation and validity of patent specifications
`Designs
`
`Schedule 6
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`Prescribed qualifications
`
`Schedule 7
`Part 1
`Part 2
`Part 3
`Part 4
`
`Fees
`Patent attorneys
`General fees
`General fees for international applications
`Fees payable for the benefit of the International
`Bureau
`
`Schedule 8
`Part 1
`Part 2
`
`Costs, expenses and allowances
`Costs
`Expenses and allowances
`
`Notes
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`Chapter 3
`Part 1
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`From application to acceptance
`Inventions generally
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`Regulation 3.1
`
`Chapter 3
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`From application to
`acceptance
`
`Part 1
`
`Inventions generally
`
`3.1
`
`(b)
`
`(c)
`
`Prescribed documents: patent applications
`(1) For the purposes of subsection 29 (1) of the Act, an abstract,
`and a copy of the abstract are required to be filed with a patent
`request made in relation to a complete application.
`(2) For the purposes of subsection 29 (1) of the Act, if a complete
`application for a standard patent
`is made,
`the following
`documents are required to be filed before acceptance:
`(a)
`a notice by the applicant stating the entitlement of the
`nominated person to the grant of the patent; and
`if the applicant claims priority from another application —
`a notice by the applicant stating the entitlement of the
`nominated person to claim that priority; and
`if a micro-organism is deposited with a prescribed
`depositary institution:
`is an original deposit within the
`(i)
`if the deposit
`meaning of Rule 7.3 of the Budapest Treaty or a new
`deposit within the meaning of Rule 7.4 of that
`Treaty — a copy of a receipt issued by the institution
`under Rule 7 of the Treaty; and
`if samples of the micro-organism were transferred to
`that institution under Rule 5.1 (a) (i) of the Treaty —
`a copy of a receipt issued by the institution under
`Rule 7 of the Treaty; and
`if a receipt referred to in subparagraph (i) or (ii) is
`not in English — a translation of the receipt into
`English and a related certificate of verification; and
`
`(ii)
`
`(iii)
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`From application to acceptance
`Inventions generally
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`Chapter 3
`Part 1
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`Regulation 3.2A
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`(d)
`
`(e)
`
`(f)
`
`(g)
`
`if the application relies on section 6 of the Act — a notice
`by the applicant stating the entitlement of the nominated
`person to rely on the deposit for the purposes of the Act;
`and
`if the application is an application to which subsection
`34 (2) of the Act applies — a copy of the court order
`declaring the applicant to be an eligible person in relation
`to the invention so far as claimed in a claim of the
`specification; and
`if the application is an application to which subsection
`36 (4) of the Act applies — a copy of the declaration of the
`Commissioner that the applicant is an eligible person in
`relation to the invention as disclosed in the specification;
`and
`if the request is for a patent of addition and is made by a
`person authorised by the applicant or patentee — a
`statement authorising the person that
`is signed by the
`applicant or patentee.
`
`Applicant taken to be nominated person
`For an application for a standard patent or an innovation patent,
`the applicant is taken to be the nominated person.
`
`Provisional specifications
`A provisional specification must be in the approved form.
`
`Specifications: standard patents
`(1) A complete specification for a standard patent must:
`(a) be in the approved form; and
`(b) be in English; and
`(c)
`comply substantially with the requirements of Schedule 3.
`If the Commissioner treats a complete specification for a
`standard patent as having been filed, the Commissioner may,
`within 1 month from the date of filing of the specification,
`direct the applicant to do anything necessary to ensure that the
`
`(2)
`
`3.1A
`
`3.2
`
`3.2A
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`HP 1011
`Page 16 of 16
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