Official notices: Patents 2002

Patents	Dave Herald	Phone 02 6283 2324
Designs	Victor Portelli	Phone 02 6283 2093
Trade marks	Joanne Rush	Phone 02 6283 2972
General	Jodi Lawler	Phone 02 6283 2681

Telephone enquiries	Phone 1300 651 010 or (02) 6283 2999
Facsimile	Phone 02 6283 7999
E-mail	assist@ipaustralia.gov.au
Correspondence	PO Box 200 Woden ACT 2606

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Official Notice
Amendment to the form for requesting an Extension of Term of a Patent (s.70)

17 November 2002

The Commissioner has become aware of a number of instances where:

• a request for an extension of term of one patent is received, based on a particular ARTG registration. Prima facie the substance of the ARTG registration is covered by the patent, and the extension accepted.
• subsequently (a couple of months later) a request is received from the same agent, for the extension of term of a different (narrower) patent based on the same ARTG registration. In this second application arguments/evidence are presented that the substance actually registered on the ARTG is not exactly what is shown on the ARTG, but some particular form of the substance.

It is highly desirable for all concerned that the Commissioner processes requests for the extension of term of a patent in full knowledge of all relevant circumstances. To that end, the form for requesting an extension of term has been modified to require the patentee to identify any other patents known to them where an extension will be sought on the basis of the same registration in the Australian Register of Therapeutic Goods. The form now includes the following – one of which will always need to be checked:

• The best of the patentee's knowledge, the ARTG registration will not be relied upon to support the extension of term of another patent; or
• The ARTG registration relied upon in support of this extension of term will also be relied on to support the extension of term of patent no. _____________

The Commissioner is particularly mindful that if the relevant patents are all owned by the same company, the information should be readily available. On the other hand, the Commissioner does not expect patentees to ascertain what competitor companies might be planning. Accordingly, the first option is 'to the best of the patentee's knowledge....'

Enquiries

D Herald 02 6283 2324
Deputy Commissioner
(Oppositions Hearings & Legislation)

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Official Notice
Provision of search results – s.45(3) of the Patents Act 1990
Time for providing the search results
Amendment of Regulation 3.17A(2)(c)

7 November 2002

Under the current regime for provision of search results in respect of applications for standard patents, the earliest date that s.45(3) must be complied with is 1 January 2003. [See s.45(3) and Reg 3.17A(1)(c)]

On 27 June 2002, the Intellectual Property Laws Amendment Bill 2002 was introduced into Parliament. Inter alia, the Bill limits the types of searches for which search results must be disclosed, to searches conducted by foreign patent offices.

On the basis that the Bill passes through Parliament and becomes law, it is the Government's desire that the more onerous requirements of the present s.45(3) provision are, in effect, completely superseded by the provisions in the Bill. To that end, the date set under current reg 3.17A(1)(c) needs to be a date after the date of commencement of the new provisions (should they come into law.)

This notice is to advise users that Regulation 3.17A(2)(c) has now been amended to specify 1 June 2003 as the earliest date by which the current s.45(3) provisions must be complied with. [Patents Amendment Regulations 2002 (No. 3) – Statutory Rules 2002 No. 263]. The regulations are expected to be gazetted on 6 November 2002.

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Official Notice
PCT Preliminary Examination before the
Australian Patent Office
Time to Respond to Opinions

7 November 2002

The past practice of the Australian Patent Office has been to set the time for responding to the first International Preliminary Examination Opinion at two months after the date of the Opinion. Importantly, if a response is not filed in that time, the Office will proceed to establish the Report - unless the applicant requests an extension of time to respond to the Opinion.

The practice of the Patent Office with regard to when the Report is established has now changed. While the Office will continue to set a two-month period to respond to the first Opinion, it will not proceed to establish the Report before the earlier of:

• Filing a response to the opinion
• One month before the 'Final Date' set under the PCT for establishing the report.

Opinions issued by IPEA/AU now include, in the part providing advice on the time for responding to the Opinion, text consistent with the above practice.

Consequences of the change in practice

As a consequence of this change in practice, applicants will no longer need to seek an extension of time to respond to the first Opinion. In the absence of a response, the Report will not be established until one month before the 'Final Date'. Any response and/or amendments received before the Report is established will be taken into account when establishing the Report.

However, practitioners should note that if the applicant wishes to receive a further opinion (in the event that the Report will be a negative report), they will need to ensure the response to the first opinion is filed at least 3 months before the 'Final Date' for establishing the Report. Otherwise a further Opinion might not issue on the basis that inadequate time remains to consider the application.

Practitioners should also note that whilst an extension of time under R66.2(d) could in principle be sought to a date later than one month before the Final Date for establishing the report, such an extension would only be granted in extraordinary circumstances.

Application to Pending Opinions

This change of practice will also apply to all existing instances where IPEA/AU has issued a Preliminary Examination Opinion, but the Report has not yet been established. As a result, applicants need not request an extension of time under Rule 66.2(d) to respond to any pending Opinion - noting that the Office will not (in the absence of a response) proceed to establish the Report until one month before the Final Date for establishing that Report.

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Official Notice
PCT Rule Change

24 October 2002

The recent meeting of the PCT Assembly agreed to extensive changes to the PCT Rules. These changes have come about as part of a process of reforming the PCT. One of the first changes in the reform process was to change the time for national phase entry to 30 months for all applications - whether or not a Demand was filed. One of the most significant changes now made - that of establishing an Opinion at the time of issuing the ISR - arises as a consequence of that earlier change.

What follows is a practical summary of the changes that have been made, including some implications for practitioners that may not be self-evident from the rule changes. The summary has been prepared in the context of IPAustralia as a PCT Authority. Of course, for definitive information about the rule changes practitioners should refer to the Rules themselves - which may be obtained from the WIPO web site.

The rule changes fall into two categories, differing in their date of commencement:

Changes commencing on 1 Jan 2003

National Phase Entry - Extension of Time

The PCT will include a provision requiring designated offices to extend the time for national phase entry. The extension can be for a period of up to 12 months. The grounds for the extension are:

• Delay in meeting the time limit was unintentional; OR (at the option of the designated Office)
• The failure to meet the time limit occurred in spite of due care required by the circumstances having been taken.

This change will come into effect for any PCT application where the due date for national phase entry (ie the date that was missed) occurs on or after 1 Jan 2003. However there is a 'transitional reservation' provision to deal with the situation where the national law is incompatible with the new rule.

The requirements of the new rules are fully met in Australian practice by s.223 of the Patents Act, and no change in practice before IPAustralia will arise as a result of these changes. With regard to other Offices, it may be anticipated that a small number of offices will take advantage of the transitional reservation. Also it is apparent that many Offices will apply the stricter requirement of "in spite of due care", and practitioners need to be aware that this requirement may be more akin to "circumstances beyond control" than "error or omission". [Rule 49.6]

Translations of the application for Searching Authorities

A practical difficulty arises before certain PCT Searching Authorities with the language of the application. Where an application is filed in a language other than a language of publication, that application must be translated. This happens most frequently before the patent offices of Sweden and the Republic of Korea - as well as the EPO with respect to applications from the Netherlands.

Under the current rules, the International Searching Authority is responsible for establishing the translation. This has created a great burden for the affected offices. The rules are being changed to require that the applicant must provide the translation, and to include appropriate sanctions (penalty fees, and deemed withdrawal) if the applicant fails to do so.

This issue is not expected to be relevant to practitioners before IP Australia. However, if the situation did arise, the applicant will need to file a translation into English.

This issue is of great importance to the Searching Authorities concerned, and the new provisions will come into effect for new applications filed on or after 1 Jan 2003.
[Rule 12]

Changes commencing on 1 Jan 2004

Designation of All countries
A PCT application will be deemed to have been designated all countries that are party to the PCT on the date of filing the application. The Request form will not allow for the designation of selected countries. This will apply to all applications filed on or after 1 Jan.2004
[Rule 4.9(a)(i)]

A direct corollary of this is that every PCT application filed after 1 Jan. 2004 will be an Australian application. Accordingly there will be no need to allocate an Australian application number to identify those PCT applications that have designated Australia.

The application will be taken as being for every type of application (including regional patents) that are available under the PCT for each of the Designated countries. The choice of which type of protection (including more than one type of protection) will be made at the time of national phase entry. In the absence of any indication, the application will be taken as being for the grant of a standard patent. [Note. These changes do not restrict the applicant's ability to change the type of application that would otherwise be available after national phase entry.]
[Rules 4.9(a)(ii) and (iii); 49bis]

Four countries have been identified where, if :

• The priority application is made in that country; and
• The PCT application designates that country

the priority application is deemed withdrawn. Those countries are Germany, Japan, Republic of Korea, and the Russian Federation. The automatic designation of all states creates a potential problem in these countries, in that the priority application would necessarily be deemed withdrawn in that country if a PCT application were filed claiming priority from it.

The Rules include a transitional reservation mechanism that (if invoked by the country concerned) will allow applicants in such circumstances to not designate that country. In that event, the Request form will include a location to indicate the non-designation of that country.

• Germany and the Russian Federation have indicated an intention to amend their legislation to remove this problem before the PCT Rule changes come into effect. Accordingly, it is expected that the Request form will only refer to Germany, or the Russian Federation, if their legislation has not been amended in time.
• Japan, and the Republic of Korea, have indicated that they do not intend changing their legislation - at least for the foreseeable future. It is not expected that they will make the transitional reservation, and the Request form will not allow for non-designation of those countries. Accordingly PCT applicants whose application claims priority from a JP or KR application will need to decide whether to allow the priority application to lapse, or withdraw the designation of that country under Rule 90bis.2. Any withdrawal of designation will need to be effected before the date at which the priority application is deemed withdrawn.

NOTE that this issue only arises in the context of applications claiming priority from DE, JP, KR or RU applications. Accordingly, it should not be a practical issue for PCT applications filed with IP Australia.
[Rule 4.9(b)]

There will be no 'Designation fees'. Rather, the current Basic fee and Designation fee will be replaced with a single International filing fee. The whole fee will be due within 1 month of filing. If it is not paid in that time, the Receiving Office will issue an invitation to pay the fee - including a late payment fee. [Note that the option presently available in certain circumstances, to pay Designation fees at a later date, will not exist.]
[Rule 15.1; 15.4; 16bis.

It is expected that pamphlets will cease to individually identify all designated states. Rather, in the box identifying designated states, a phrase such as "all States bound by the Treaty on the international filing date of this application" is likely.

Election of All countries

A Demand for Preliminary Examination will be deemed to have been elected all designated countries. The Demand form will not allow for the election of selected countries. The possibility of 'later elections' (Rule 56) is removed. This will apply to all Demands filed on or after 1 January 2004.
[Rule 53.7]

The requirements of the Demand, vis-ŕ-vis applicant details and signature, are the same as for the Request.
[Rule 60.1(a-bis)]

Applicant details

Under Rule 4.5, the names of each of the applicants must be identified. In the case of applications that are intended to proceed in the USA, it is essential that ALL inventors be named as inventor/applicants.
[NOTES re US National phase

• The US patent system requires the applicants be the actual inventors.
• As a general matter, a US application cannot be made by an Assignee applicant (eg. a company.) If the only applicants listed are assignee applicants, the application will be unable to enter the national phase in the US.
• For the purposes of the US national phase, the inventors should at least be identified on the request form as "applicant/inventor (US only)" - although naming them merely as "inventor" may be sufficient.
• Failing to name (or misnaming) the inventors will invalidate the US patent application, unless it was done in error and without deceptive intent.
• Accordingly, applicants should ensure that the names of ALL inventors are included on the PCT Request form. Any decision to deliberately not name inventors should only be taken after obtaining professional advice.]

A range of details has to be provided for each applicant - see rule 4.5. In the past, if those details were not provided, an Art.14 defect notice would be issued. Under the new rules, an Art.14 defect notice will not issue if the details are provided for at least ONE applicant. [However, the obligation to provide those details in the national phase - if required - remains.] [Rule 26.2bis(b); 51bis.1(vi) and (vii)]

Where the applicants want the application to proceed using a 'Common Representative', that Common Representative may only be an applicant for which all the details under Rule 4.5(a) to (c) have been provided. Similarly, where there is no appointment of Agent or Common Representative, the first applicant with those detail provided will be taken to be the Common Representative.
[Rule 90.2]

Signature requirements; Power of Attorney; Withdrawals; Assignments

The request will only need to be signed by one of the named applicants.
[Rule 26.2bis(a)]

RO's, ISA's, and IPEA's may waive the requirement for a power of attorney to be submitted to it. It may be anticipated that IPAustralia will make that waiver. This will mean that for PCT applications filed by an attorney before IPAustralia, the only signature required will be that of the attorney on the request form.
[Rule 90.4(d)]

Important
Offices are unable to waive the requirement for a Power of Attorney in respect of any withdrawals under Rule 90bis - that is, withdrawals of the application, designations, priority claim, Demands or elections. Either all applicants must sign the notice of withdrawal, or the attorney effecting the withdrawal must also provide a power of attorney signed by all applicants. Note that as all applications will necessarily designate the US, and the US will treat any named inventors as being applicants for the purpose of the US, it will be necessary to have the signatures of all named applicants AND inventors in order to effect any of these withdrawals. [For this reason (only), if at the time of filing the applicant has absolutely no intention of proceeding in the national phase in the US, it may be advisable not to list the inventors on the Request Form. However, any decision to deliberately not name the inventors should only be taken after obtaining professional advice - as that decision will prevent the application from proceeding in the US if the applicant changes their mind.]
[Rule 90bis.5]

Rule 92bis changes (such as assignments) are not per se affected by the changes to the rules - and in particular, a power of attorney will not be required as a precondition to recording a 92bis change.. However, the current practice of the International Bureau - of advising the 'old' parties of any changes, and reversing the change if they receive an objection, will be formalised in the Administrative Instructions.

It should be noted that the Rule 92bis process is designed to record 'consensual' changes. It is not designed to deal with resolution of disputes, or enforcement of equitable rights. Where the change is clearly unlikely to be consensual, IP Australia will not record changes without the clear agreement of any adversely affected party. Examples of this include: ·

• Removing the name of one or more applicants (or inventors, who are applicants because the US is designated). This is irrespective of allegations of they having been included because of a mistake. Agreement of the person being excluded is required.
• Adding another applicant (especially if requested by a different attorney). Agreement of the applicants of record is required.

Expanded International Search Report

For applications filed on or after 1 Jan 2004, the International Search Report will include an "International Search Opinion".
[Rule 43bis.1(a)]

The opinion will cover all issues that are covered under Preliminary Examination.
[Rule 43bis.1(b)].

Following the establishment of the International Search Report, the applicant will have the following options:

1. Take no further action.
The International Search Opinion will be re-issued by the International Bureau, as an "International Preliminary Examination Report on Patentability (Chapter I)" This will occur at 30 months from the priority date. Prior to that date, the opinion will be confidential.
[Rule 44bis.1]

2. Provide written comments to the International Bureau
The rules will not provide any formal mechanism for this. But the applicant may provide written comments to the IB, which will be included with the "International Preliminary Examination Report on Patentability (Chapter I)" when the International Bureau issues it. It should be noted that the applicant would bear the responsibility for ensuring that the submissions are translated as required in the national phase.

3. File a Demand for Preliminary Examination
The time for filing the Demand will be 22 months from the Priority date, or three months from the date of the ISR - whichever is the later. Demands filed after this date will be deemed not filed. [Rule 54bis]
[Note that for those countries that have not yet changed to 30 months for national phase entry, the requirement to file a Demand by the end of the 19th month in order to defer national phase entry to 30 months remains.]

The International Search Opinion is taken to be the first opinion under Preliminary Examination - irrespective of which Authority established that Opinion. While there is a reservation mechanism for this, it is not expected that any Authority will make that reservation.
[Rule 66.1bis]

As the Demand will be, in effect, a response to the first written opinion, it will be important for practitioners to ensure that amendments (or at least persuasive arguments) are filed - either with the Demand, or before the end of the time limit for filing the Demand. In the absence of amendments or arguments, the Report will be established on the basis of the International Search Opinion - without any correspondence being entered into - on the assumption that the Demand has been filed solely to obtain the benefit of 30 months national phase entry date in certain countries.

One issue that arises is the obligation of the Examining Authority to issue a further written opinion in the event that the Report will be negative. Under Rule 66.2(a) the Examining Authority must provide a first written opinion if the Report would be negative in any respect. There is no obligation to provide a further written opinion following a response [compare rule 66.4] - although the Preliminary Examination Guidelines indicate that a further opinion should be issued subject to certain matters. However, under this new regime the International Search Opinion is the first opinion under Preliminary Examination, and the obligation under Rule 66.2(a) is exhausted by way of that opinion. It would seem that some Examining Authorities may, under pressures of workload, minimise the number of opinions that are issued to the extent that there is generally no further opinion issued after the Demand is filed (i.e. the Report is established). However, IP Australia will continue to issue further opinions if the report will be adverse, so long as (i) there is time remaining and (ii) progress is occurring, or is likely.

The time limit for completing Preliminary Examination will be the later of 28 months, or 6 months from when Preliminary Examination is started. It may be expected that the 28 month date will apply generally except for offices with severe backlog problems. [Rule 69.2, 69.1]

Following completion of the preliminary examination, the Report will be communicated to elected offices after 30 months. The International Search Opinion will not be published as such, as is the case for opinions under Preliminary Examination. [Rule 73, 44ter]

Availability of the Search Opinion

• The Expanded International Search Opinion is not publicly available from the IB or the ISA before the end of 30 months.
  [Rule 44ter]
• It will be automatically communicated to Offices after 30 months, after having been converted by the International Bureau into an International Preliminary Report on Patentability (Chapter I of the PCT). However, if Preliminary Examination has occurred the opinion will not be converted to a Report. Rather the report under Preliminary Examination will be communicated to Offices after 30 months, as an International Preliminary Report on Patentability (Chapter II of the PCT).
  [Rule 44bis]
• If the applicant enters national phase early, those Offices can request a copy of the Expanded International Search Opinion following national phase entry. Public access to the Opinion is governed by the national law of the country; in Australia, it would be OPI when the application was OPI following national phase entry.

An issue here is that while the ISR and the Search File generally is publicly available following Art. 21 publication, the EISO is confidential until after 30 months. This means that the ISR and EISO must prepared and stored in such a manner that the EISO can be withheld from public availability even though the remainder of the Search file is publicly available.
[Rule 44ter, 44bis.2(b)]

Under the current regime, Demands for Preliminary Examination are almost always filed before the end of the 19th month, in order to obtain the 30-month national phase entry date - although there is in fact no limitation on when the Demand can be filed. Under the new regime, Demands will be filed well after the 19month date specified in Art.39 of the PCT. The time period mentioned in Art.39 has not been changed. Nevertheless, the incorporation of Art.34 amendments made during Preliminary examination is currently dependent upon the Demand having been filed before the period mentioned in Art 39. [see s.89(5)(b)]. Legislative amendments will be required to ensure that Art. 34 amendments are included in the Australian specification whenever Preliminary Examination has occurred - irrespective of when the Demand was filed. Until that has occurred, practitioners will need to be mindful of when the Demand was filed - so as to be able to determine whether or not any Art. 34 amendments are included in the specification.

Communication on Request

The great increase in PCT filings over the last decade has resulted in some fundamental changes in the way PCT applications are communicated to Offices. Whereas in the early days of the PCT, a paper copy of each specification was sent to each designated office, that is not now the case.

The International Bureau is currently developing a computer system that will enable Offices to selectively obtain all the documents necessary to process the application in the national phase. A number of rule changes are being made to formalise this process, and to provide the applicant with certainty in this environment about whether or not the communication under Art 20 has occurred (an issue that is important for a small number of designated offices, including the USPTO - but not IP Australia)
[Rules 47 {esp. 47.1(e)}, 61.2, 93bis]

Enquiries

For legal matters
Dave Herald, Deputy Commissioner 02 6283 2324

For PCT operational matters
Lisa Treverrow, Manager, Australian Receiving Office 02 6283 2955

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Official Notice

Patent Information in the New Patent Information in the New Supplement of the Australian Official Journal of Patents (AOJP)

12 September 2002

12 September 2002 IP Australia wishes to advise that the NEW AOJP Supplement will be published on 12 September 2002.

The first issue of this NEW Supplement will contain information on new filings from 5 July 2002. There will also be information about applications which have been withdrawn, innovation patents which have been granted, and applications which have become open for public inspection.

Other notifications will be progressively advertised in later issues of this NEW AOJP Supplement.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Changes to IP Australia's Scheduled System Maintenance Windows

12 September 2002

This Notice advises customers about changes to times for scheduled maintenance on IP Australia's computer systems. These maintenance windows apply to following systems at the following times:

Mainframe Systems

• Wednesday 7pm to 10.30pm; and
• Friday 9pm to Saturday 9am.

On-Line Services and the IP Australia website

• Thursday 6pm to 10pm; and
• Sunday 2pm to 6pm.

General System Maintenance Window

This general maintenance window may impact on any of the listed computer systems, and customers are advised to check availability of a service if access will occur immediately before the scheduled window.

• Saturday 12pm (noon) to 9pm

All maintenance windows are based in Australia Eastern Standard Time/Australian Eastern Daylight Savings Time.

Customers are advised that services may not be available during these periods. Where On-Line Services transactions are being undertaken at the time that the window commences, customers will lose their connection to the site and therefore be unable to complete the transactions.

However, these windows may not always be utilised by IP Australia, and customers are advised to check access to the site at the time of the window.

Where system maintenance is required outside of those windows, IP Australia will inform its customers as far in advance as is possible through its internet site, on the "What's New" page.

Customers may also subscribe to an e-mail notification service to be notified about unscheduled downtimes. Please contact assist@ipaustralia.gov.au to subscribe.

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Official Notice

National Phase Entry - Processing Delays

5 September 2002

12 September 2002 IP Australia wishes to advise that the NEW AOJP Supplement will be published on 12 September 2002.

The first issue of this NEW Supplement will contain information on new filings from 5 July 2002. There will also be information about applications which have been withdrawn, innovation patents which have been granted, and applications which have become open for public inspection.

Other notifications will be progressively advertised in later issues of this NEW AOJP Supplement.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

National Phase Entry - Processing Delays

5 September 2002

IP Australia wishes to inform customers that processing of requests for PCT applications designating Australia to enter the national phase will be delayed for up to six weeks from 8 August 2002.

After the introduction of the latest release of the New Patent Solution system on 5 July 2002, IP Australia has migrated records of all PCT applications which have designated Australia but which had not entered the national phase at the time of migration from the Patadmin system into the NPS system. This occurred on 8 August 2002. However, as a result, there is a large backlog of requests to enter the national phase. It is estimated that IP Australia will not be in a position to reduce this backlog until towards the end of September 2002. Therefore, customers should not expect to receive a notification of successful national phase entry until after this period.

IP Australia wishes to assure its customers that, provided all requirements have been met, this delay in processing requests will not affect the date of national phase entry of relevant applications.

IP Australia apologises for this inconvenience and is working to reduce the relevant backlog as soon as possible.

For further details, please contact Ray Hallett on 02 6283 2186.

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Official Notice

Payment of Continuation and Renewal Fees

5 September 2002

On 1 September 2002 a new schedule of fees was introduced. To clarify how the new fees will be applied to renewal fees please note the following (which applies equivalently to continuation fees):

• For a patent to be renewed, the full renewal fee for the anniversary due must be paid. For payments made after the anniversary date but within 6 months, the renewal fee includes an additional amount for each month or part thereof that the fee is paid after the anniversary. That is, if payment occurs after the anniversary, the date of payment determines the amount of the renewal fee due.
• If a renewal payment is attempted after the anniversary date, but does not include the additional amount determined by the date of payment, renewal cannot be effected. Renewal can only be effected when the full amount due is paid. When determining the amount that must subsequently be paid to effect the renewal, allowance must be made for any further months that expire between the initial attempt to pay, and the actual payment.
• If an attempt to pay a renewal fee occurs before 1 September 2002, but was not effective because of an underpayment, the balance due to effect payment after 1 September 2002 is determined by reference to the new fee schedule. Part payment before 1 September does not establish any entitlement to complete the payment under the old fee schedule.

Example

Assuming a 7th year anniversary falls due on 30 August 02:

1. The fee due on 30 August 2002 is $235

2. A payment of $200 on 30 August 2002, would not renew the patent

3. The new 7th Anniversary fee due on 2 September 02 would be $250 , plus $100 as the new additional fee for each month ((or part thereof of a six month period allowable for the fee to be paid) making a total of $350

4. Therefore the balance required to effect payment on 2 September 02 and renew the patent would be $350 - $200 = $150.

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Official Notice

Filing fees for Standard Patents and Innovation Patents

29 August 2002

Under the new fee schedule that comes into effect on 1 September 2002, the fee for filing a request accompanied by a complete specification for either an innovation patent, or a standard patent, is a reduced fee if it is filed:

"by an electronic means approved by the Commissioner for this paragraph"

- see fee items 202(a) and 203(a)

This notice is to advise that the electronic means approved by the Commissioner for the purpose of these two paragraphs is:

Filing a complete application in its entirety by the use of the on-line filing system available on the IPAustralia web site at http://www.ipaustralia.gov.au, using the file formats permitted by that system.

The file formats that are presently permitted by the system are .txt, .jpg, TIFF and pdf. For full details, see IPAustralia's Business Rules for Electronic Communication with IP Australia at:

http://www.ipaustralia.gov.au/pdfs/general/eta.pdf

Note that the system includes an option for filing part of the application on a physical medium - such as paper, or a CD-ROM. If advantage is taken of that option, the application will not have been filed in its entirety by the use of the system, and the fee reduction will not apply.

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Official Notice

Disruption of IP Australia's Services

8 August 2002

IP Australia wishes to advise its customers that access to the Patent Administration system (Patadmin) & the Patent Indexing system (Patindex) will be suspended from Thursday 8 August 2002 and over the weekend. This suspension of services is necessary to ensure data integrity when the data is copied from Patadmin to the NPS system.

While Patadmin access is suspended, no bibliographic information will be available from Patadmin. As highlighted in the previous Official Notice, other avenues for obtaining data include the Australian Official Journal of Patents (AOJP) and the CD-ROM products in the State Offices, although these may not necessarily contain the most up-to-date information in relation to particular patent applications.

From Thursday 8 August 2002 and over the weekend, when Patadmin is suspended, extensive use of the mainframe computer will occur to retrieve data to migrate into the NPS system. Users may experience a noticeable decline in response times of other IP Australia mainframe systems including TMARK, ATMOSS & DESADMIN.

IP Australia apologises for this disruption to its services.

Please refer to the IP Australia website (see 'NPS News and Updates' within the 'What's New' section) for further updates about the NPS Project. For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Patent Information in the Australian Official Journal of Patents

26 July 2002

IP Australia wishes to advise its customers that information about patent applications filed after 5 July 2002 is currently not available in the Australian Official Journal of Patents (AOJP).

The Innovation Supplement to the AOJP will contain information about these applications. Unfortunately publication of this Supplement will be delayed for some weeks due to the continuing implementation phase of Release 2.1 of the New Patent Solution.

However information about existing patent applications is available from IP Australia's website, the AOJP and the CDROM products that are available in our State Offices.

Details about when this Supplement will be published will be provided in the Official Notices of the AOJP.

IP Australia apologises for any inconvenience caused for its customers and asks for continued patience during this time.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Fee Regulations Under the Patent, Trade Marks and Designs Acts Made 4 July 2002

18 July 2002

The Intellectual Property Legislation (Fees) Amendment Regulations 2002 were made by the Governor-General on Thursday 4 July 2002.

The Regulations amend the Patents, Trade Marks and Designs Regulations to provide for changes to the amounts and structures of fees for various transactions with the Patent, Trade Marks and Designs Offices.

Preliminary information about these fees was provided to customers in Official Notices during June 2002.

The Fee Amendment Regulations will commence on 1 September 2002, and their final form is attached to this Notice

Information about transitional arrangements has been published in an additional Notice in this Journal.

Please contact assist@ipaustralia.gov.au with any inquiries.

You can download the original document in PDF format below:

Intellectual Property Legislation Amendment Regulations 2002

Official Notice

Transitional Arrangements for the Intellectual Property Legislation (Fees) Amendment Regulations 2002 (Patents)

18 July 2002

The Intellectual Property Legislation (Fees) Amendment Regulations 2002 were made by the Governor-General on Thursday 4 July 2002. The Regulations amend the Patents Regulations to provide for changes to the amounts and structures of fees for various transactions. This Notice provides customers with information about the transitional arrangements that will apply on their commencement on 1 September 2002.

As a general rule, customers are advised that the fee payable for an action will be the fee applicable on the day the action is done. If the fee is not paid or is partly paid, an Invitation to Pay will be issued based on the fee applicable on the day the action is done.

IP Australia reminds our customers that some IP rights require full payment before an action is deemed to have been done. Customers wishing to discuss individual fees or transactions should contact IP Australia to ensure that their IP rights are protected.

Continuation fees, renewal fees and national phase entry fees

Customers are reminded that actions for continuations, renewals and national phase entry are not legally done until the entire fee has been paid.

The following transitional arrangements will apply for continuation fees, renewal fees and national phase entry fees. A fee in these categories due on or after September 1 2002 but paid in full before 1 September 2002 will attract the old fee.

A fee for continuation, renewals and/or national phase entry due but only partially paid before 1 September will attract an outstanding balance up to the new fee if the balance is paid on or after 1 September. Late payment penalties may also be incurred.

Filing Fees

For standard patent applications filed on or after 1 September 2002, a flat filing fee of $320 will apply, replacing the current 'basic plus excess page' filing fee. A discounted filing fee of $290 will apply for web based electronic filing.

Acceptance Fees

The Regulations create a new acceptance fee of $140, and an additional component of $20 for each accepted claim in excess of 20 claims.

This new acceptance fee structure is only applicable to new applications filed and national phase entries made on or after 1 September 2002.

Hearings

Hearing fees remain at $500. However, any hearing that lasts more than one day will attract an additional fee of $500 for each day or part thereof in excess of the first day.

If any hearing should start before 1 September 2002 and finish afterwards no additional fee will be payable. The fees for any such hearing will be payable under the old regulations.

Please contact assist@ipaustralia.gov.au with any inquiries about the regulations or the transitional arrangements.

Customers wishing to discuss fees payable for individual transactions should contact the IP Australia Customer Support Centre on (+61) 2 6282 2999 or your nearest State Office on 1300 65 10 10.

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Official Notice

IP Australia is reviewing its Customer Service Charter

12 July 2002

IP Australia's Customer Service Charter has been in place since 1999 and is being reviewed.

To ensure the Charter is useful and relevant to our customers and stakeholders, we are undertaking an e-mail survey to find out what elements of service are most important to our customers and how we can improve our services.

Anyone interested in participating in the survey can do so by providing their e-mail address to Colleen Page, the Customer Charter Manager by Monday 22 July 2002. The survey will take place in early August, should only take about 10 minutes to complete and will help us improve our services to you. All responses will be treated confidentially.

The results of the survey and other feedback we have received from customer groups will be used to design a new Customer Service Charter, which is expected to be launched in October 2002.

To register your interest in participating in the survey please call Colleen Page, on (02) 6283 2394 or simply provide your e-mail details to colleen.page@ipaustralia.gov.au.

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Official Notice

New Patent Solution (NPS) Release 2.1 - Migration of Innovation Patent Data

11 July 2002

Migration of bibliographic data on existing innovation patents into the NPS system will begin on Friday 12 July 2002.

Data associated with PCT applications which have designated Australia will be migrated from the Patent Administration System (Patadmin) to NPS in the coming weeks.

Thereafter all requests on these applications to enter the national phase will be processed in the new NPS system and not in Patadmin.

As highlighted in previous Official Notices, access to Patadmin and NPS will need to be suspended. This suspension of services is necessary to ensure data integrity when the data is copied from Patadmin to the NPS system. Further details will be provided closer to this stage of data migration.

IP Australia apologises for any inconvenience caused for its customers and asks for continued assistance and patience during this implementation period.

IP Australia's website (see 'NPS News and Updates' within the 'What's New' section) will continue to be updated with the latest information on this implementation phase of NPS Release 2.1.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Implementatation of Release 2.1 of the New Patent Solution (NPS) Project

4 July 2002

Implementation of Release 2.1 will occur on Friday 5 July 2002.

As a result of the implementation of NPS Release 2.1 on 5 July 2002 and the subsequent migration of relevant data into the new system, a number of IP Australia's services will be disrupted over the coming weeks.

These disruptions will mainly be related to systems dealing with patent applications such as the patents e-forms, Patadmin and Patindex. However, other IP Australia systems, such as TMark, may experience reduced response times in the coming weeks.

Due to the implementation of NPS Release 2.1, there may be delays in processing customers' transactions. This delay in processing will be kept to a minimum. IP Australia wishes to assure its customers that their IP rights will not be placed in jeopardy by the delays in processing of transactions.

IP Australia's website (see 'NPS News and Updates' within the 'What's New' section) will continue to be updated with the latest information on this implementation phase of NPS Release 2.1.

IP Australia apologises for this disruption to its services.

For further information please contact the Customer Support Centre on 02 6283 2999.

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Official Notice

Correction:

Changes to Statutory Fees Under the Patent, Trade Marks and Designs Acts

21 June 2002

An Official Notice regarding changes to statutory fees under the Patents, Trade Marks and Designs Acts was published in the Journal of 20 June 2002.

Due to an administrative oversight, the table of fee changes appended to the Notice showed increased fees for innovation patents when no change is proposed. The specific references are in Schedule 7 to the Patents Regulations, and should have read

Part 2, item 4A current $290, proposed $290

Part 2, items 4B(a) and (b) current $145, proposed $145

Part 2, item 7A(d) current $165, proposed $165

Part 2, item 7A(f) current $235, proposed $235.

IP Australia apologises for any inconvenience caused by this error. Corrected tables are appended to this Notice.

Regulations for the changes are currently being drafted, and the proposed changes are expected to come into force on 1 September 2002.

Please contact assist@ipaustralia.gov.au with any inquiries.

Customers are reminded that this Notice provides information about IP Australia's proposals for fee changes purely to assist customers identify the types of changes they may need to make to their fee management systems. The information should not be relied upon for any other purpose. Information about transitional arrangements will be provided in a subsequent Notice. The final form of the fee schedules will be made available to customers once the regulations have been made.

Item	Matter	Current Fee	Proposed Fee
1	On lodging an application for the registration of a design	$90	$90
2	On lodging a request for expedited consideration of an application for the registration of a design	$90	$90
3	On lodging an application under subsection 27B (2) of the Act for an extension of time on the ground specified in paragraph 27B (2) (a) of the Act — for each month, or part of a month, for which the application is made		$100
	(a) Omit paragraph
	(b) Omit paragraph
4	Omit item
5	On lodging an application under subsection 27B (2) of the Act for an extension of time on the ground specified in paragraph 27B (2) (b) of the Act	$65	$100
6	On lodging a request for extension of the period of registration:
	(a) under subsection 27A (2) of the Act — for the first extension	$55	$55
	(b) under subsection 27A (12) of the Act — for the second extension	$90	$90
	(c) under subsection 27A (13) of the Act — for the third extension	$135	$135
7	On lodging a notice of opposition under subregulation 27 (1) or 29A (1)	$500	$550
8	On lodging an application under subregulation 29 (2) or 29AA (2) for the grant of a licence	$65	$65
9	On lodging:
	(a) a request for the exercise of the Registrar’s discretionary powers; or	$500	$500
	(b) a request for a hearing	$500	$500
10	On appearing at a hearing	$500, less any amount paid under item 9 in relation to the hearing	$500 per day, or part of a day, less any amount paid under item 9 in relation to the hearing
11	For supply of a certificate by the Registrar	$15	$25
12	For supply of a duplicate certificate of registration	$65	$250
13	For supply of a copy of an extract from the register or another document	$10	$25
14	Omit item

Part 1 Patent Attorneys

Item	Matter	Current Fee	Proposed Fee
1	Applying for admission to sit for an examination conducted by the Board	$400	$400
2	Applying for grant of a supplementary examination conducted by the Board	$200	$200
3	Applying for a report of reasons for failure of an examination conducted by the Board	$200	$200
4	Applying for registration as a patent attorney	$200	$200
5	Annual registration fee payable by a patent attorney	$250	$350
6	Annual registration fee payable for combined registration as a patent attorney and trade marks attorney	$320	$450
7	Applying under regulation 20.19 or 20.19A	$160	$160

Part 2 General fees

Item	Matter	Current Fee	Proposed Fee
1	On filing a request for a patent accompanied by a provisional specification	$80	$80
2	On filing a request for an innovation patent accompanied by a complete specification:
	(a) by an electronic means approved by the Commissioner for this paragraph; or	$150	$150
	(b) for filing by another means	$180	$180
3	On filing a request for a standard patent accompanied by a complete specification:
	(a) Omit paragraph
	(b) Omit paragraph
	(c) Omit paragraph
	(a) by an electronic means approved by the Commissioner for this paragraph; or		$290
	(b) for filing by another means		$320
4.	Omit item
4	On filing a request for an examination, under section 45 of the Act, of a standard patent request and complete specification:
	(a) in the case of a PCT application — where the Patent Office has issued an international preliminary examination report in respect of that application; or		$240
	(b) in all other cases		$340
4AA	On filing a request for modified examination, under section 48 of the Act, of a standard patent request and complete specification		$240
4A	On filing a request under paragraph 101A (b) of the Act, by the patentee of an innovation patent, for examination of the complete specification relating to the innovation patent	$290	$290
4B	On filing a request under paragraph 101A (b) of the Act, by a person other than the patentee of the innovation patent, for examination of the complete specification relating to the innovation patent:
	(a) payable by the person making the request; and	$145	$145
	(b) payable by the patentee	$145	$145
5	On filing a request under subsection 44 (3) of the Act requiring the Commissioner to direct an applicant to request examination	$65	$100
6	On filing a request under subsection 97 (2) or paragraph 101G (1) (b) of the Act for re-examination of a complete specification	$1,200	$1,300
7	Continuation fee under paragraph 142 (2) (d) of the Act, or renewal fee under paragraph 143 (a) of the Act for:
	(c) the fifth anniversary	$165	$180
	(d) the sixth anniversary	$200	$200
	(e) the seventh anniversary	$235	$250
	(f) the eighth anniversary	$270	$300
	(g) the ninth anniversary	$305	$350
	(h) the tenth anniversary	$345	$400
	(i) the eleventh anniversary	$385	$450
	(j) the twelfth anniversary	$430	$500
	(k) the thirteenth anniversary	$475	$550
	(l) the fourteenth anniversary	$525	$600
	(m) the fifteenth anniversary	$575	$650
	(n) the sixteenth anniversary	$630	$700
	(o) the seventeenth anniversary	$680	$800
	(p) the eighteenth anniversary	$730	$900
	(q) the nineteenth anniversary	$790	$1000
	(r) If an extension of the term of a standard patent is granted under section 76 of the Act:	$790	$1200
	(i) the twentieth anniversary for the patent; and
	(ii) each subsequent anniversary for the patent happening during the period of extension
	plus:
	if paid within 6 months after the anniversary	in addition to any other fee payable in relation to this item — $65 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid	in addition to any other fee payable in relation to this item — $100 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid
7A	Renewal fee under paragraph 143A (d) of the Act for:
	(a) the second anniversary	$100	$100
	(b) the third anniversary	$100	$100
	(c) the fourth anniversary	$100	$100
	(d) the fifth anniversary	$165	$165
	(e) the sixth anniversary	$200	$200
	(f) the seventh anniversary	$235	$235
	plus:
	if paid within 6 months after the anniversary	in addition to any other fee payable in relation to this item — $65 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid	in addition to any other fee payable in relation to this item — $100 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid
7B	On acceptance of a patent request and complete specification under Section 49 of the Act:
	(a) acceptance; and		$140
	(b) if the number of claims contained in the specification at acceptance, exceeds 20 — for each claim in excess of 20		$20
7C	On filing an application or request under sections 17, 32 or 36 of the Act		$550
7D	On filing a request under subregulation 3.25 (1) for the certification referred to in Rule 11.3(a) of the Budapest Treaty		$550
8	On filing a notice of opposition under regulation 5.3 or 5.3AA	$500	$550
9	On filing a request under subregulation 5.5 (1) for dismissal of opposition	$65	$550
10	On filing an application under subregulation 5.10 (2) for an extension of time, for each month, or part of a month, for which the extension is sought	$65	$150
11	On making a representation to the Commissioner:
	(a) under regulation 5.3A or 5.3B or subregulation 5.9 (3) objecting to a proposed amendment; or	$500	$500
	(b) under subparagraph 5.10 (5) (c) (i) objecting to an application or proposed action	$500	$500
14	On filing an application under section 66 of the Act for a duplicate of a patent to be sealed	$65	$250
15	On filing a request for leave to amend:
	(a) a complete specification relating to an application for a standard patent before a request for examination is filed or after the complete specification is accepted; or	$105	$200
	(b) a patent request for an innovation patent to make it a patent request for a standard patent; or	$105	$140
	(c) an innovation patent: (i) after the patent is granted but before a request for examination is filed; or (ii) after the patent is certified	$105	$200
16	On filing a request under subsection 150 (1) of the Act to restore a lapsed application	$90	$100
17	Omit item
17	On filing an application for an extension of time under subsection 223 (2), on a ground specified in paragraph 223 (2) (a) of the Act, or for an extension of time under subsection 223(2A) of the Act — for each month, or part of a month, for which the application is made		$100
19	On filing an application under subsection 223 (2) of the Act for an extension of time on the ground specified in paragraph 223 (2) (b) of the Act	$65	$100
19A	Omit item
20	On filing:
	(a) a request under regulation 22.22 for the exercise of discretionary power; or	$500	$500
	(b) a request for a hearing	$500	$500
21	On appearing at a hearing	omitted
	(a) appearing; and		$500 less any amount paid under item 9, 11 or 20 in relation to the hearing
	(b) if the hearing runs for more than a day — for each day, or part of a day, after the first day		$500
22	On filing a response to the Commissioner’s report under section 45 or 48 of the Act, if filed more than 12 months, but within 21 months, after the date of the first report on the examination — for each month, or part of a month, after the 12 months, other than a month in respect of which a fee was paid under this item in relation to that examination	$65	$100
23	On requesting the supply of a copy of:
	(a) a patent specification; or	$15	$25
	(b) a document other than a patent specification; or	$10	$25
	(c) if more than 6 documents of the kind mentioned in paragraph (b) are sought from a single source and supplied at the same time	$60 plus 30 cents per page for each document in excess of 6 documents	$150 plus 30 cents per page for each document in excess of 6 documents
24	On requesting the supply of a certificate by the Commissioner	$15	$25
25	Omit item
26	Omit item
27	On filing a request under subregulation 19.2 (2) for information that requires an international-type search	$800	$1000
28	Omit item
29	On filing a substitute page or pages in compliance with a direction under subregulation 3.2A (2), if filed more than 3 months after the day when the direction was given, but before the application becomes open to public inspection		$200
	(a) Omit paragraph
	(b) Omit paragraph
30	Omit item
31	Omit item
32	On filing an application under subsection 70 (1) of the Act for the grant of an extension of the term of a standard patent	$400	$1000

Part 3 General fees for international applications

Item	Matter	Current Fee	Proposed Fee
1	Transmittal fee under Rule 14 of the PCT	$100	$100
2	Search fee under Rule 16 of the PCT	$800	$1000
3	Additional fee for search under Article 17 (3) (a) of the PCT	$800	$1000
4	Preliminary examination fee under Rule 58 of the PCT	omitted
	(a) where the international search report was issued by the Patent Office in respect of the international application; or		$550
	(b) in other cases		$1000
5	Additional fee for international preliminary examination under Article 34 (3) (a) of the PCT	$450	$550
6	For copy of a document in accordance with Rules 44.3 (b) or 71.2 (b) of the PCT	$15	$25
7	Confirmation fee under Rule 15.5 (a) of the PCT	50% of the sum of the designation fees payable under item 3 of Part 4 in this Schedule for the relevant international application	50% of the sum of the designation fees payable under item 3 of Part 4 in this Schedule for the relevant international application
8	late payment fee under Rule 16bis.2 of the PCT	the greater of: (a) 50% of the amount of the unpaid fees specified in the invitation; and (b) the amount of the transmittal fee; but not more than the amount of the basic fee	the greater of: (a) 50% of the amount of the unpaid fees specified in the invitation; and (b) the amount of the transmittal fee; but not more than the amount of the basic fee

 

Item	Matter	Current Fee	Proposed Fee
1	Filing an application to register a trade mark under subsection 27 (5) of the Act in respect of goods or services in 1 or more of the prescribed classes	omitted
	(a) by an electronic means approved by the Registrar for this paragraph; or		$120 for each class
	(b) for filing by another means		$150 for each class
2	Filing a divisional application under subsection 45 (1)	omitted
	(a) by an electronic means approved by the Registrar for this paragraph; or		$120 for each class
	(b) for filing by another means		$150 for each class
3	Filing an application to register 2 or more trade marks as a series under section 51 of the Act	omitted
	(a) by an electronic means approved by the Registrar for this paragraph; or		$170
	(b) for filing by another means		$200
4	Request for amendment under section 64 or 65 of the Act to include an additional prescribed class of goods or services in an application	$150 for each class	$150 for each class
5	Filing an application for an extension of period or time under subregulation 4.12 (3) or regulation 5.2, 5.15, 17A.20, 17A.30 or 21.25 or regulation 5.15 as applied by regulation 17A.33 — for each month or part of a month for which the extension is sought		$100
	(a) Omit paragraph
Omit item	(b) Omit paragraph