Patents Amendment Regulations 2004 (No. 3) 2004 No. 250

Subsection 228(1) of the Patents Act 1990 (the Act) provides, in part, that the Governor-General may make regulations, not inconsistent with the Act, prescribing matters required or permitted to be prescribed, or necessary or convenient to be prescribed for carrying out or giving effect to the Act and for the conduct of any business relating to the Patent Office.

Schedule 8 to the US Free Trade Agreement Implementation Act 2004 (the USFTA Act), which commenced on Royal Assent, made several amendments to the Act to provide a new ground of opposition to the grant of a standard patent-namely, that the invention is not useful or has been secretly used. Item 3 in Schedule 8 to the USFTA Act provides that the new ground of opposition applies to patent applications made before the commencement of Schedule 8 to the USFTA Act, including, by necessary implication, patent applications which are the subject of an opposition proceeding under Chapter 5 of the Act begun before the commencement of that Schedule.

The Regulations amend the Patents Regulations 1991 (Principal Regulations) to provide the procedural framework by which a person opposing the grant of a standard patent may rely on the new ground of opposition introduced under the USFTA Act. In the course of opposing the grant of a patent, a person must file a statement setting out the grounds of opposition on which they intend to rely, and the particulars relating to each ground. The Principal Regulations do not allow such statements to be amended to add a new ground of opposition. The Regulations amend the Principal Regulations to provide a mechanism for amending statements of grounds and particulars to include the new ground of opposition.

The Regulations apply only to opposition proceedings which are in train at the time Schedule 8 to the USFTA Act commenced, and only allow the addition of the new ground of opposition. To ensure that those opposition proceedings are not delayed unduly by the inclusion of the new ground, the Regulations provide that any application to add the new ground must be filed no later than three months from the commencement of Schedule 8 to the USFTA Act, and would require that the application be accompanied by an application for permission to serve further evidence in support of the new ground or a statement that the opponent does not intend to rely on any further evidence. The Regulations also provide that the period for filing the request for amendment can only be extended under the general extension of time provisions in section 223 of the Act, rather than the more permissive provisions in regulation 5.10 of the Principal Regulations.

Details of the Regulations are in the Attachment.

The Regulations commence on the date of their notification in the Gazette.

ATTACHMENT

Regulation 1 identifies the Regulations as the Patents Amendment Regulations 2004 (No. 3).

Regulation 2 provides that the Regulations commences on the date of their notification in the Gazette.

Regulation 3 specifies that Schedule 1 to the Regulations amends the Patents Regulations 1991 (the Principal Regulations).

Item 1 of Schedule 1 inserts new regulation 5.9A into the Principal Regulations to provide the administrative framework for a person who had begun proceedings to oppose the grant of a standard patent before the end of the period ending 3 months after the commencement of Schedule 8 to the US Free Trade Agreement Implementation Act 2004 (the USFTA Act), to rely on the new ground of opposition that has been introduced under the USFTA Act.

New regulation 5.9A requires the Commissioner of Patents (the Commissioner), on the written request of an opponent, to amend the statement of grounds and particulars to add the ground that the invention is not a patentable invention because it does not comply with paragraphs 18(1)(c) or (d) of the Patents Act Act 1990, and to add the particulars relating to the ground. The new regulation also requires that the written request be filed by the earlier of three months after the commencement of Schedule 8 to the USFTA Act, or the date that a patent is sealed on the opposed application.

The request to add the new ground to a statement of grounds and particulars must be accompanied by an indication of the opponent's proposed course of action for filing evidence in support of the new ground. This can be an application under subregulation 5.10(4) of the Regulations for permission to serve further evidence in support of the new ground -i.e. evidence additional to that already served in support of the original statement of grounds and particulars. Alternatively, the opponent can file a statement that the opponent does not intend to rely on any further evidence-this will be used where the opponent still has time to serve the evidence in support of the existing grounds, and proposes to serve the evidence in support of the new ground with the main body of evidence.

The new regulation requires the Commissioner to give to the applicant for the grant of a patent a copy of the statement of grounds and particulars, as amended by the inclusion of the new ground and its particulars.

Items 2 to 4 of Schedule 1 amends paragraph 5.10(1)(b), subregulation 5.10(2) and paragraph 22.1(4)(a) of the Principal Regulations so that the time limits set out in new regulation 5.9A can only be extended under the general extension of time provisions in section 223 of the Act-which require an error or omission, circumstances beyond the control of the person concerned, or the extension being required despite the person concerned taking due care-and not under the more permissive provisions of subregulations 5.10(1) or (2) of the Principal Regulations.