1.1
Name of Regulations
1.1 Name of Regulations
These Regulations are the Patents Regulations 1991.
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Commonwealth legislation
The Patents Regulations 1991 set out the procedural rules that make Australia’s Patents Act work in practice, governing how patent applications are filed, examined, opposed, amended, and maintained, plus special rules for micro‑organisms and professional standards for patent attorneys.
They affect inventors, businesses, patent attorneys, competitors and researchers; missing formalities, fees or deadlines under these detailed rules can cost patent rights or professional standing.
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Direct links to the current provisions in Patents Regulations 1991.
These Regulations are the Patents Regulations 1991.
(1) In these Regulations, unless the contrary intention appears:
abstract means abstract of a complete specification.
acceptance means:
(a) in relation to a patent request and complete specification relating to an application for a standard patent—acceptance of the patent request and complete specification under section 49 of the Act; and
(b) in relation to a patent request and complete specification relating to an application for an innovation patent—acceptance of the patent request and complete specification under section 52 of the Act.
approved digital library means a library or other facility that the Commissioner specifies as a digital library, for this definition, in the Official Journal.
Note: Example: The library administered by the International Bureau of the World Intellectual Property Organization, known as the “Digital Access Service for Priority Documents” or “DAS”.
ART means the Administrative Review Tribunal.
basic documents means documents filed in a Convention country in respect of a basic application.
certificate of verification means a statement:
(a) that a document to which the statement relates is a true and complete translation of the relevant document to the best of the knowledge of the person who signs the statement; and
(b) that is dated and signed.
Code of Conduct means the standard of practice titled “Code of Conduct for Patent and Trade Marks Attorneys” that is established by the Board from time to time.
competent authority, in relation to a Convention country, means a person who, under the laws of the country or the arrangements in place in the country, is authorised to certify copies of specifications of patents for the country.
Council for TRIPS means the Council for Trade‑Related Aspects of Intellectual Property Rights established under Article IV of the WTO Agreement.
Disciplinary Tribunal means the Trans‑Tasman IP Attorneys Disciplinary Tribunal established by regulation 20.61.
eligible importing country: see regulation 1.4A.
expedited dispatch means a means of supplying documents that can reasonably be expected usually to be faster than ordinary post.
first examination report date, in relation to an application for a standard patent, means the day that the Commissioner first reports, under section 45 of the Act, in relation to an examination of a patent request and complete specification relating to the application.
former attorneys Regulations means the Patent Attorneys Regulations as in force under the 1952 Act immediately before 30 April 1991.
International Bureau means the International Bureau of the World Intellectual Property Organization.
least developed country means a country included in the list of least developed countries maintained by the United Nations, as in force from time to time.
Note: The list of least developed countries could in 2015 be viewed on the United Nations’ website (http://www.un.org).
New Zealand has the meaning given by section 29 of the Interpretation Act 1999 of New Zealand, as in force at the commencement of this definition.
ordinarily resident: a person is taken to be ordinarily resident in a country if:
(a) the person has his or her home in that country; or
(b) that country is the country of his or her permanent abode even though he or she is temporarily absent from that country.
However, the person is taken not to be so resident if he or she resides in that country for a special or temporary purpose only.
Panel Chair, in relation to a Panel of the Disciplinary Tribunal, means:
(a) the President; or
(b) if the President is unable to perform his or her functions in proceedings of the Panel because of a conflict of interest—the person appointed under subregulation 20.64(2) to be the Panel Chair for the proceedings.
Panel of the Disciplinary Tribunal means a Panel constituted under regulation 20.36 or 20A.11.
potential claim, in relation to an application for a standard patent, means:
(a) unless paragraph (b) applies—a claim in the complete specification to which the application relates; or
(b) if there are any requests made by the applicant for leave to amend the complete specification to which the application relates that the Commissioner has neither granted nor refused—a claim that would be in the complete specification if those requests were granted (including a claim that would be in the complete specification regardless).
President means the President of the Disciplinary Tribunal.
Register of Patent Attorneys means the register mentioned in section 198 of the Act.
the Act means the Patents Act 1990.
Tribunal member means a member of the Disciplinary Tribunal and includes the President.
WTO Agreement means the Marrakesh Agreement establishing the World Trade Organization, done at Marrakesh on 15 April 1994.
WTO member means a country that is a full member of the World Trade Organization.
Note: The list of members of the World Trade Organization could in 2015 be viewed on the World Trade Organization’s website (http://www.wto.org).
(2) A reference in these Regulations to: (a) the giving of a notice or other document; or (b) the making of a request or an application; to the Commissioner or the Patent Office includes a reference to the filing of the document. (3) A reference in these Regulations to a document that is open to public inspection is a reference to a document that may be inspected by the public at the Patent Office. (4) If the Commissioner gives a document to a person, the document is taken to have been given to the person on the day the document is dated by the Commissioner. (5) The Commissioner may give a document to a person by: (a) making the document available to the person in an electronic form; and (b) notifying the person that the document is available. (6) A requirement in these Regulations to give information to the Commissioner or to another person (whether the expression ‘give’, ‘tell’, ‘inform’ or another expression is used) is a requirement to give the information in writing, unless the contrary intention appears. (7) For these Regulations, a period expressed in months is to be worked out in the way described in Rule 80.2 of the PCT.
For these regulations:
A search is completed on the earliest of:
(a) the date, if any, specified in the report as the date that the report was issued; and
(b) the date, if any, specified in the report as the date that the search was completed; and
(c) the date that the search results were issued to the applicant or patentee by the foreign patent office.
For the definition of Convention country in subsection 29B(5) of the Act, the following countries are prescribed: (a) a foreign country that is a signatory to the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force from time to time; (b) a foreign country that is a full member of the World Trade Organization.
Note 1: For signatories to the Paris Convention for the Protection of Industrial Property, see www.wipo.int.
Note 2: For full members of the World Trade Organization, see www.wto.org.
For the definition of eligible importing country in Schedule 1 to the Act, the following kinds of foreign countries are prescribed: (a) a WTO member that notifies the Council for TRIPS, in accordance with the Annex to the TRIPS Agreement, of the member’s intention to use the system set out in Article 31bis of the TRIPS Agreement and the Annex to that Agreement as an importer; (b) a least developed country.
(1) For paragraph 6(c) of the Act, the prescribed period is: (a) if the Commissioner makes a declaration under subsection 42(1) of the Act in relation to the specification concerned—the period mentioned in subregulation (2); or (b) in any other case: (i) for a complete specification in respect of a standard patent application—the period mentioned in subregulation (3); or (ii) for a complete specification in respect of an innovation patent application—the period mentioned in subregulation (4). (2) For paragraph (1)(a), the period begins on the filing date of the application to which the specification relates and ends 3 months from the date taken to be the date of filing of the specification under paragraph 42(2)(b) of the Act. (3) For subparagraph (1)(b)(i), the period begins on the filing date of the application to which the specification relates and ends: (a) at the end of the day immediately before the day on which the application becomes open to public inspection; or (b) if the application is accepted before the end of the day first mentioned in paragraph (a)—immediately before acceptance. (4) For subparagraph (1)(b)(ii), the period begins on the filing date of the application to which the specification relates to and ends immediately before acceptance. (5) If a matter mentioned in paragraph 6(c) of the Act has been included in the specification, the applicant or patentee is taken to consent to a micro‑organism being obtained by a person to whom the Commissioner has granted the certification under regulation 3.25 in respect of the deposit: (a) after the period mentioned in subregulation (1) for the specification to which the application relates; and (b) from the prescribed depositary institution with which the micro‑organism is deposited.
For paragraph 9(e) of the Act, the period is 12 months after the first use of the invention that would, but for the application of paragraph 9(e), have constituted secret use.
(1) A person who makes an application or request using an application form must: (a) comply with any directions given on the form; and (b) provide information for each part of the form that describes the information as being mandatory. (2) A person who makes an application or request using an application procedure other than a form must: (a) comply with any directions given as part of the procedure; and (b) provide information for each part of the procedure that describes the information as being mandatory.
Note: Example: An online application facility.
Chapter 2—Patent rights, ownership and validity
(1) An application under section 17 of the Act must be in the approved form. (2) A person making an application under that section must file with the application a notice stating the facts on which the application is based.
(1) This regulation sets out: (a) for paragraph 24(1)(a) of the Act—a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and (b) for subsection 24(1) of the Act—a period for making a complete application for an invention if the circumstance applies. Circumstance—invention shown, used or published at recognised exhibition (2) The circumstance is that the information has been made publicly available because the invention was: (a) shown or used at a recognised exhibition; or (b) published during a recognised exhibition at which the invention was shown or used. Period (3) The period for making a complete application for the invention is: (a) if the complete application claims priority from a basic application made within 6 months of the day of the showing, use or publication—12 months from the day the basic application was made; or (b) if the complete application is associated with a provisional application made within 6 months of the day of the showing, use or publication—12 months from the day the provisional application was made; or (c) otherwise—12 months from the day of the showing, use or publication. (4) In this regulation:
Paris Convention means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force for Australia on the commencing day.
recognised exhibition means:
(a) an official or officially recognised international exhibition within the meaning of Article 11 of the Paris Convention or Article 1 of the Convention relating to International Exhibitions done at Paris on 22 November 1928, as in force for Australia on the commencing day; or
(b) an international exhibition recognised by the Commissioner by a notice published in the Official Journal before the beginning of the exhibition.
(1) This regulation sets out: (a) for paragraph 24(1)(a) of the Act—a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and (b) for subsection 24(1) of the Act—a period for making a complete application for an invention if the circumstance applies. Circumstance—information read before learned society or published by or on behalf of learned society (2) The circumstance is that the information has been made publicly available in a paper: (a) read before a learned society; or (b) published by or on behalf of a learned society. Period (3) The period for making a complete application for the invention is: (a) if the complete application claims priority from a basic application made within 6 months of the day of the reading or publication—12 months from the day the basic application was made; or (b) if the complete application is associated with a provisional application made within 6 months of the day of the reading or publication—12 months from the day the provisional application was made; or (c) otherwise—12 months from the day of the reading or publication.
(1) This regulation sets out: (a) for paragraph 24(1)(a) of the Act—a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and (b) for subsection 24(1) of the Act—a period for making a complete application for an invention if the circumstance applies. Circumstance—working of invention for reasonable trial (2) The circumstance is that: (a) the information has been made publicly available because the invention was worked in public; and (b) the working of the invention was for the purposes of a reasonable trial of the invention; and (c) because of the nature of the invention, it was reasonably necessary for the working to be in public. Period (3) The period for making a complete application for the invention is: (a) if the complete application claims priority from a basic application made within 12 months of the start of the public working of the invention—12 months from the day the basic application was made; or (b) if the complete application is associated with a provisional application made within 12 months of the start of the public working of the invention—12 months from the day the provisional application was made; or (c) otherwise—12 months from the start of the public working of the invention.
(1) This regulation sets out: (a) for paragraph 24(1)(a) of the Act—a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and (b) for subsection 24(1) of the Act—a period for making a complete application for an invention if the circumstance applies. Circumstance (2) The circumstance is that the information has been made publicly available in circumstances other than the circumstances described in regulations 2.2, 2.2A and 2.2B. Period (3) The period for making a complete application for the invention is 12 months from the day the information was made publicly available.
For subsection 24(1) of the Act, for information made publicly available in the circumstances mentioned in paragraph 24(1)(b) of the Act, the prescribed period for making a complete application for an invention is 12 months from the day the information was made publicly available.
(1) For subsection 24(1) of the Act, this regulation applies to an invention if: (a) the specification containing the claim in which the invention is defined was filed for a divisional application under section 79B or 79C of the Act; and (b) the claim is entitled under regulation 3.13D or 3.13E to the priority date that it would have if the claim was in the specification filed with a previous application (the original application); and (c) a circumstance mentioned in regulations 2.2 to 2.2D applies; and (d) the original application was filed in the period prescribed in the circumstance under regulations 2.2 to 2.2D. (2) The prescribed period for making the divisional application is: (a) if the divisional application was filed in the period mentioned in paragraph (1)(d)—that period; or (b) otherwise—the period ending on the day the divisional application was made.
(1) For the purposes of section 25 of the Act, the prescribed period is the period that commences on the priority date of the claim of the specification of the main invention and ends immediately before the priority date of the relevant claim of the specification of the patent of addition. (2) In subregulation (1), a reference to the claim of the specification of the main invention is a reference to: (a) the claim defining that main invention; or (b) if there are 2 or more claims defining the main invention—the claim that has the earlier or earliest priority date.
For subsection 27(1) of the Act, the prescribed period is the period: (a) beginning immediately after the complete specification filed in relation to the application for a standard patent becomes open to public inspection; and (b) ending 3 months after the date of publication in the Official Journal of the notice of acceptance under paragraph 49(5)(b) of the Act.
For subsection 28(2) of the Act, the prescribed period for an innovation patent is the period from the date that the complete specification for the patent becomes open to public inspection to immediately before the Commissioner decides to certify the patent.
Notice of an assertion under subsection 27(1) or 28(1) of the Act must, if the assertion is based on a document, have with it: (a) a copy of the document; and (b) if the document is not in English, a copy of a translation of the document into English; and (c) evidence of the date and place of publication of the document.
Chapter 3—From application to acceptance
Sourced from the Federal Register of Legislation (legislation.gov.au), CC BY 4.0.
These Regulations are the Patents Regulations 1991.
(1) In these Regulations, unless the contrary intention appears:
abstract means abstract of a complete specification.
acceptance means:
(a) in relation to a patent request and complete specification relating to an application for a standard patent—acceptance of the patent request and complete specification under section 49 of the Act; and
(b) in relation to a patent request and complete specification relating to an application for an innovation patent—acceptance of the patent request and complete specification under section 52 of the Act.
approved digital library means a library or other facility that the Commissioner specifies as a digital library, for this definition, in the Official Journal.
Note: Example: The library administered by the International Bureau of the World Intellectual Property Organization, known as the “Digital Access Service for Priority Documents” or “DAS”.
ART means the Administrative Review Tribunal.
basic documents means documents filed in a Convention country in respect of a basic application.
certificate of verification means a statement:
(a) that a document to which the statement relates is a true and complete translation of the relevant document to the best of the knowledge of the person who signs the statement; and
(b) that is dated and signed.
Code of Conduct means the standard of practice titled “Code of Conduct for Patent and Trade Marks Attorneys” that is established by the Board from time to time.
competent authority, in relation to a Convention country, means a person who, under the laws of the country or the arrangements in place in the country, is authorised to certify copies of specifications of patents for the country.
Council for TRIPS means the Council for Trade‑Related Aspects of Intellectual Property Rights established under Article IV of the WTO Agreement.
Disciplinary Tribunal means the Trans‑Tasman IP Attorneys Disciplinary Tribunal established by regulation 20.61.
eligible importing country: see regulation 1.4A.
expedited dispatch means a means of supplying documents that can reasonably be expected usually to be faster than ordinary post.
first examination report date, in relation to an application for a standard patent, means the day that the Commissioner first reports, under section 45 of the Act, in relation to an examination of a patent request and complete specification relating to the application.
former attorneys Regulations means the Patent Attorneys Regulations as in force under the 1952 Act immediately before 30 April 1991.
International Bureau means the International Bureau of the World Intellectual Property Organization.
least developed country means a country included in the list of least developed countries maintained by the United Nations, as in force from time to time.
Note: The list of least developed countries could in 2015 be viewed on the United Nations’ website (http://www.un.org).
New Zealand has the meaning given by section 29 of the Interpretation Act 1999 of New Zealand, as in force at the commencement of this definition.
ordinarily resident: a person is taken to be ordinarily resident in a country if:
(a) the person has his or her home in that country; or
(b) that country is the country of his or her permanent abode even though he or she is temporarily absent from that country.
However, the person is taken not to be so resident if he or she resides in that country for a special or temporary purpose only.
Panel Chair, in relation to a Panel of the Disciplinary Tribunal, means:
(a) the President; or
(b) if the President is unable to perform his or her functions in proceedings of the Panel because of a conflict of interest—the person appointed under subregulation 20.64(2) to be the Panel Chair for the proceedings.
Panel of the Disciplinary Tribunal means a Panel constituted under regulation 20.36 or 20A.11.
potential claim, in relation to an application for a standard patent, means:
(a) unless paragraph (b) applies—a claim in the complete specification to which the application relates; or
(b) if there are any requests made by the applicant for leave to amend the complete specification to which the application relates that the Commissioner has neither granted nor refused—a claim that would be in the complete specification if those requests were granted (including a claim that would be in the complete specification regardless).
President means the President of the Disciplinary Tribunal.
Register of Patent Attorneys means the register mentioned in section 198 of the Act.
the Act means the Patents Act 1990.
Tribunal member means a member of the Disciplinary Tribunal and includes the President.
WTO Agreement means the Marrakesh Agreement establishing the World Trade Organization, done at Marrakesh on 15 April 1994.
WTO member means a country that is a full member of the World Trade Organization.
Note: The list of members of the World Trade Organization could in 2015 be viewed on the World Trade Organization’s website (http://www.wto.org).
(2) A reference in these Regulations to: (a) the giving of a notice or other document; or (b) the making of a request or an application; to the Commissioner or the Patent Office includes a reference to the filing of the document. (3) A reference in these Regulations to a document that is open to public inspection is a reference to a document that may be inspected by the public at the Patent Office. (4) If the Commissioner gives a document to a person, the document is taken to have been given to the person on the day the document is dated by the Commissioner. (5) The Commissioner may give a document to a person by: (a) making the document available to the person in an electronic form; and (b) notifying the person that the document is available. (6) A requirement in these Regulations to give information to the Commissioner or to another person (whether the expression ‘give’, ‘tell’, ‘inform’ or another expression is used) is a requirement to give the information in writing, unless the contrary intention appears. (7) For these Regulations, a period expressed in months is to be worked out in the way described in Rule 80.2 of the PCT.
For these regulations:
A search is completed on the earliest of:
(a) the date, if any, specified in the report as the date that the report was issued; and
(b) the date, if any, specified in the report as the date that the search was completed; and
(c) the date that the search results were issued to the applicant or patentee by the foreign patent office.
For the definition of Convention country in subsection 29B(5) of the Act, the following countries are prescribed: (a) a foreign country that is a signatory to the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force from time to time; (b) a foreign country that is a full member of the World Trade Organization.
Note 1: For signatories to the Paris Convention for the Protection of Industrial Property, see www.wipo.int.
Note 2: For full members of the World Trade Organization, see www.wto.org.
For the definition of eligible importing country in Schedule 1 to the Act, the following kinds of foreign countries are prescribed: (a) a WTO member that notifies the Council for TRIPS, in accordance with the Annex to the TRIPS Agreement, of the member’s intention to use the system set out in Article 31bis of the TRIPS Agreement and the Annex to that Agreement as an importer; (b) a least developed country.
(1) For paragraph 6(c) of the Act, the prescribed period is: (a) if the Commissioner makes a declaration under subsection 42(1) of the Act in relation to the specification concerned—the period mentioned in subregulation (2); or (b) in any other case: (i) for a complete specification in respect of a standard patent application—the period mentioned in subregulation (3); or (ii) for a complete specification in respect of an innovation patent application—the period mentioned in subregulation (4). (2) For paragraph (1)(a), the period begins on the filing date of the application to which the specification relates and ends 3 months from the date taken to be the date of filing of the specification under paragraph 42(2)(b) of the Act. (3) For subparagraph (1)(b)(i), the period begins on the filing date of the application to which the specification relates and ends: (a) at the end of the day immediately before the day on which the application becomes open to public inspection; or (b) if the application is accepted before the end of the day first mentioned in paragraph (a)—immediately before acceptance. (4) For subparagraph (1)(b)(ii), the period begins on the filing date of the application to which the specification relates to and ends immediately before acceptance. (5) If a matter mentioned in paragraph 6(c) of the Act has been included in the specification, the applicant or patentee is taken to consent to a micro‑organism being obtained by a person to whom the Commissioner has granted the certification under regulation 3.25 in respect of the deposit: (a) after the period mentioned in subregulation (1) for the specification to which the application relates; and (b) from the prescribed depositary institution with which the micro‑organism is deposited.
For paragraph 9(e) of the Act, the period is 12 months after the first use of the invention that would, but for the application of paragraph 9(e), have constituted secret use.
(1) A person who makes an application or request using an application form must: (a) comply with any directions given on the form; and (b) provide information for each part of the form that describes the information as being mandatory. (2) A person who makes an application or request using an application procedure other than a form must: (a) comply with any directions given as part of the procedure; and (b) provide information for each part of the procedure that describes the information as being mandatory.
Note: Example: An online application facility.
Chapter 2—Patent rights, ownership and validity
(1) An application under section 17 of the Act must be in the approved form. (2) A person making an application under that section must file with the application a notice stating the facts on which the application is based.
(1) This regulation sets out: (a) for paragraph 24(1)(a) of the Act—a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and (b) for subsection 24(1) of the Act—a period for making a complete application for an invention if the circumstance applies. Circumstance—invention shown, used or published at recognised exhibition (2) The circumstance is that the information has been made publicly available because the invention was: (a) shown or used at a recognised exhibition; or (b) published during a recognised exhibition at which the invention was shown or used. Period (3) The period for making a complete application for the invention is: (a) if the complete application claims priority from a basic application made within 6 months of the day of the showing, use or publication—12 months from the day the basic application was made; or (b) if the complete application is associated with a provisional application made within 6 months of the day of the showing, use or publication—12 months from the day the provisional application was made; or (c) otherwise—12 months from the day of the showing, use or publication. (4) In this regulation:
Paris Convention means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force for Australia on the commencing day.
recognised exhibition means:
(a) an official or officially recognised international exhibition within the meaning of Article 11 of the Paris Convention or Article 1 of the Convention relating to International Exhibitions done at Paris on 22 November 1928, as in force for Australia on the commencing day; or
(b) an international exhibition recognised by the Commissioner by a notice published in the Official Journal before the beginning of the exhibition.
(1) This regulation sets out: (a) for paragraph 24(1)(a) of the Act—a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and (b) for subsection 24(1) of the Act—a period for making a complete application for an invention if the circumstance applies. Circumstance—information read before learned society or published by or on behalf of learned society (2) The circumstance is that the information has been made publicly available in a paper: (a) read before a learned society; or (b) published by or on behalf of a learned society. Period (3) The period for making a complete application for the invention is: (a) if the complete application claims priority from a basic application made within 6 months of the day of the reading or publication—12 months from the day the basic application was made; or (b) if the complete application is associated with a provisional application made within 6 months of the day of the reading or publication—12 months from the day the provisional application was made; or (c) otherwise—12 months from the day of the reading or publication.
(1) This regulation sets out: (a) for paragraph 24(1)(a) of the Act—a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and (b) for subsection 24(1) of the Act—a period for making a complete application for an invention if the circumstance applies. Circumstance—working of invention for reasonable trial (2) The circumstance is that: (a) the information has been made publicly available because the invention was worked in public; and (b) the working of the invention was for the purposes of a reasonable trial of the invention; and (c) because of the nature of the invention, it was reasonably necessary for the working to be in public. Period (3) The period for making a complete application for the invention is: (a) if the complete application claims
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