IP Regulations - schedule 6
On this page:
- Period for directions to request examination
- Acceptance period
- Statement of entitlement at filing
- Rectification of patent register - name changes
- Hearings on written submissions
- Other changes
Period for directions to request examination
Item [28] - Patents regulation 3.16(2)
Australia operates a system of deferred examination. Usually, applicants only request examination after the Commissioner has directed them to do so.
The new regulations tighten the time frame for applicants to respond to a direction to request examination. Applicants currently have six months to respond to a direction. The new time frame will be two months. This aims to accelerate the application process. It is one of a number of changes that reduce the period of uncertainty for the public.
Some stakeholders considered that two months was too short, particularly when dealing with foreign applicants over holiday periods.
Outcome
Applicants will have two months to respond to a direction by the Commissioner to request examination. IP Australia considers that applicants will have had significant time to assess the commercial prospects of their invention before IP Australia issues a direction. The decision whether or not to proceed should not require extended consideration at this point.
Acceptance period
Item [58] - Patent regulation 13.4(1)(b)
After an examiner examines a patent application and issues a first report, an applicant currently has 21 months to resolve any issues and get the application in order for acceptance. The draft regulations reduce this period to 12 months.
Some stakeholders indicated they would prefer a longer period. Alternatively, some said they would prefer a shorter, fixed deadline, rather than having a longer period to resolve all issues.
Outcome
The acceptance period will be 12 months as proposed in the draft regulations. A year is a significant period of time to consider and deal with any issues that arise. Any longer period would increase the uncertainty for competitors trying to determine their freedom to operate.
Statement of entitlement at filing
Existing patents regulation 1.8 (application to be in the 'approved form')
Item [14] - Patent regulation 3.2C
The Patents Act requires the Commissioner to examine and report on whether an applicant is entitled to the grant of a patent. Broadly speaking, this is to report on whether they are the legitimate owner of the patent. Currently, a notice of entitlement must be provided by acceptance. In the absence of any evidence to the contrary, a positive statement of entitlement by the applicant gives the Commissioner grounds to be satisfied that the applicant is entitled to the grant of a patent.
IP Australia proposed changing the requirement for a statement of entitlement so that it is required at filing.
Several stakeholders indicated they sometimes do not have sufficient details of entitlement at the time of filing. This was particularly the case with late instructions from overseas or due to administrative delays within the PCT system. Some also questioned the value of having a statement of entitlement at all. Some attorneys suggested the notice of entitlement should be required at the time of requesting examination.
Outcome
IP Australia will not require a statement of entitlement at filing for standard patents (or at national phase entry for PCT applications). Instead, the statement will be required when the applicant requests examination, as part of the approved form. An applicant would not be able to use IP Australia's eServices portal or printable forms to request examination without agreeing to the entitlement statement. IP Australia is working to make systems changes in time for commencement.
Note the retention of existing provisions requiring a statement of entitlement at filing for innovation patents. Innovation patents are granted almost immediately. Accordingly, there should be some positive statement of entitlement by grant.
Rectification of patent register - name changes
Item [53] - Patents regulation 10.7(2)(d)
Sometimes the name of a company or person recorded on the Register as the patent owner may change. Under current law, name changes are advertised and may be opposed.
The draft regulations would require advertising name changes. This would allow interested parties to request a hearing before the Register is rectified.
Some stakeholders considered it unnecessary to require a simple name change, as opposed to a change in identity, to be advertised and possibly the subject of a hearing before the Commissioner.
Outcome
IP Australia proposes changing the regulations so that name changes do not have to be advertised. Note this will apply to a simple name change only it will not apply to any change involving a change of identity.
Hearings on written submissions
Item [3] - Designs regulation 11.22
Item [72] - Patents regulation 22.22
Item [86] - Trade Marks regulation 21.15
Sometimes disputes before the Commissioner or Registrar are sufficiently simple that a full oral hearing is unnecessary. The matter can be considered adequately based on written submission by the parties.
The draft regulations clarify that the Commissioner or Registrar has the discretion to decide whether an oral hearing is required. Where the issue is simple enough to deal with based on written submissions, this avoids the unnecessary expense and wasted time for both IP Australia and the parties.
Some stakeholders suggested that the Commissioner or Registrar might not be well placed to make this decision. They felt that this should be up to the opposing parties.
Outcome
IP Australia does not propose to change the draft regulations. The Commissioner or Registrar will exercise the power carefully and with regard to natural justice. Where the matter is substantial and oral submissions are likely to aid the hearing officer, the Commissioner or Registrar will continue to hold oral hearings.
Other changes
Various provisions in schedule 6
Stakeholders also raised a number of issues where they considered the draft did not correctly give effect to the intended policy, or where the draft contained other errors.
One of these issues relates to Designs Regulation 11.23, Patents Regulation 22.23 and Trade Marks Regulation 21.16. These regulations refer to setting a hearing in at least '10 days' time, instead of '10 business days' or '10 working days'. The latter two terms would account for holidays.
Outcome
IP Australia proposes to correct these issues and other technical errors identified by stakeholders in the final draft.
Last Updated: 18/1/2013
