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For more information, please contact Lisa Treverrow at the PCT Unit, on 02 6283 2955. OFFICIAL NOTICE
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| Lisa Treverrow | 02 6283 2955 |
| Karyn Dunne | 02 6283 2006 |
WIPO
| pctsafe.help@wipo.int | |
| telephone | (+41-22) 338 9523 |
On 1 January 2004 extensive changes to the PCT Rules enter into force. Most of these changes were previously advised in an Official Notice dated 24 October 2002, and what follows is largely a reiteration of the relevant parts of that Notice. 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.
Attached is a practical summary of the changes that have been made, including some implications for applicants that may not be self-evident from the rule changes. The summary has been prepared in the context of IP Australia as a PCT Authority. Of course, for definitive information about the rule changes applicants should refer to the Rules themselves - which may be obtained from the WIPO web site.
| Text of the Rules (WIPO): | http://www.wipo.int/pct/en/texts/index.htm | ||||
| More info on PCT reform (WIPO): | http://www.wipo.int/pct/reform/en/index.html | ||||
| Summary of the changes |
|
Enquiries:
| For legal matters: | Dave Herald Deputy Commissioner Phone: 02 6283 2324 |
| For PCT operational matters: | Lisa Treverrow Manager Australian Receiving Office Phone: 02 6283 2955 |
In consequence of the changes to PCT Rules entering into force on 1 January 2004, it has been necessary to amend certain of the fees applying to international applications. Those fee changes are as follows:
| International Filing Fee* (Rule 15.2 of the PCT) | 1,400 Swiss francs plus 15 Swiss francs for each sheet of the international application in excess of 30 sheets |
| Handling fee (Rule 57.2 of the PCT) | 200 Swiss francs |
| Search fee under Rule 16 of PCT | $1,200 |
| Additional fee for search under Article 17(3)(a) of the PCT |
$1,200 |
| * The international fee is reduced by 100 Swiss francs if the international application is, in accordance with and to the extent provided for in the Administrative Instructions under the PCT, filed on paper together with a copy in electronic form. |
In addition to the above changes, IP Australia has amended its agreement with WIPO to now provide refunds of 25% and 50% where IP Australia benefits from an earlier search which it conducted.
Enquiries: Leo O'Keeffe, Deputy Commissioner 02 6283 2036
IP Australia's Certified Agreement provides for a Christmas close down period between Christmas Day and New Year's Day. This means that the majority of IP Australia's staff will be on leave for the period 25 December 2003 until 1 January 2004 inclusive. Please note that Friday 2 January 2004 has not been declared a public holiday and is not covered by the Christmas 'Close Down' provisions and will be business as usual.
However 30 and 31 December are not public holidays for the purposes of the Patents, Trade Marks or Designs Acts. This means that all deadlines that fall due on the 30 and 31 December will still need to be met by customers.
In order to provide essential services to our customers on the days of 30 and 31 December, minimum staffing will be maintained. State Offices will remain open during this period to receive applications, payments and other documents and to provide searching facilities. Our Customer Service Number 02 6283 2999, will also be available to answer enquiries.
However all processing and examination work will occur outside of this period.
To assist us to deal with urgent matters, customers are requested to send all non-urgent work outside of the Christmas close down period.
Where critical deadlines fall due on a day during the Christmas close down (25th December 2003 to
1st January 2004), customers are requested to undertake necessary action prior to the
Christmas close down. Some examples of these critical deadlines include:
If this is not possible and customers need to take action on 30 or 31 December, our Customer Service staff will be available to assist on 02 6283 2999.
If you have any specific enquiries regarding the close down period please contact:
| 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 |
Customers are also reminded of IP Australia's contact details. All business correspondence should be via these means. It is especially important to use these numbers over the Christmas close down period, as other numbers may not be staffed.
| Telephone enquiries | 1300 651 010 or (02) 6283 2999 |
| Facsimile | 02 6283 7999 |
| assist@ipaustralia.gov.au | |
| Correspondence | PO Box 200 Woden ACT 2606 |
Schedules 4, 10 and 2A to the Patents, Trade Marks and Designs Regulations, respectively, currently list the Convention countries by name. These Schedules require updating every time a country joins the World Trade Organization (WTO) or accedes to the Paris Convention, which imposes unnecessary costs on government.
In order to remove this need for frequent regulatory change we propose to delete these Schedules and amend the relevant provisions in the Patents, Trade Marks and Designs Regulations. Rather than referring to the list of countries in the relevant Schedule, the new provisions would define the Convention countries by reference to Members of the WTO and countries that are parties to the Paris Convention. Related provisions in the Trade Marks and Designs Regulations dealing with the Bangui treaty, the Benelux Convention, the European Community treaty and the Hague Agreement will not be changed.
To provide easy access to the list of Convention countries and ensure its currency we have made a list of the Convention countries available on the IP Australia website at:
http://www.ipaustralia.gov.au/resources/international_convention.shtml
This list will be regularly updated to reflect new memberships of the WTO and accessions to the Paris Convention.
We seek your comments on this proposal.
Please send written comments to Ms Kerry Sillcock by fax on (02) 6281 7247 or by email at Kerry.Sillcock@ipaustralia.gov.au by Friday 17 October 2003.
Enquiries: Kerry Sillcock (02) 6283 2291
As previously advised, IP Australia commenced a trial 'Reminder to Renew'
service
on 11 July 2003 for participating customers involved with the payment of patent
renewal fees for applications filed in the New Patent Solutions (NPS) system.
IP Australia would like to advise customers that the Reminder to Renew trial has now reached the evaluation phase. During this next phase, IP Australia will collate and analyse the results of the trial using feedback gathered from trial participants and staff.
The resulting findings will determine whether or not IP Australia will continue to provide this service to customers.
Please note IP Australia ceased producing Reminder to Renew notices to customers on Tuesday, 26th August 2003.
If you have any questions about the Reminder to Renew system please contact:
Ray Hallett on 02 6283 2186 or ray.hallett@ipaustralia.gov.au
IP Australia wishes to inform customers that PCT applications designating Australia which have lapsed because they have not entered the national phase within 31 months of their priority dates will be listed in a Lapsed PCT Applications Listing on the Resources > Patents > NPS News area of IP Australia's web site.
The Lapsed PCT Applications Listing will be updated monthly to provide information for customers on the status of these applications. This listing is provided as an interim service until the relevant functionality is developed within the New Patent Solution (NPS) system. Consequently, Patsearch (the online NPS patent search engine) will not indicate the status of these applications as "lapsed". Users should therefore access the Lapsed PCT Applications Listing to identify if a relevant PCT application has lapsed.
While IP Australia is working on developing the relevant capability to automatically lapse relevant PCT applications in the NPS system, this is not expected to be available for a number of months. In the meantime, the Lapsed PCT Applications Listing will provide users with more certainty as to whether a relevant PCT application has lapsed or not.
For further details, please contact Ray Hallett on 02 6283 2186.
Due to the increase in PCT applications, the PCT Application numbering system was revised in 2001, with the changes taking effect on 1 Jan 2004. The revised Administrative Instructions were published in PCT Gazette No. 47/2001 on November 22, 2001. They are reproduced here for information.
MODIFICATIONS OF THE ADMINISTRATIVE INSTRUCTIONS
(with effect from January 1, 2004)
Section 307
System of Numbering International Applications
(a) Papers purporting to be an international application under Rule 20.1(a) shall be marked with the international application number, consisting of the letters “PCT,” a slant, the two-letter code referred to in Section 115, indicating the receiving Office, a four-digit indication of the year in which such papers were first received, a slant and a six-digit number, allotted in sequential order corresponding to the order in which the international applications are received (e.g., “PCT/SE2004/000001”). Where the International Bureau acts as receiving Office, the two-letter code “IB” shall be used.
(b) [No change]
Section 404
International Publication Number of International Application
The International Bureau shall assign to each published international application an international publication number which shall be different from the international application number. The international publication number shall be used on the pamphlet and in the Gazette entry. It shall consist of the two-letter code “WO” followed by a four-digit indication of the year of publication, a slant, and a serial number consisting of six digits (e.g., “WO 2004/123456”).
Amendments to the Patents Act and Regulations come into effect on 26 August 2003. This notice summarises the effect of those amendments.
1. Disclosure of search results – s.45(3) and 101D
The requirements of s.45(3) and 101D for disclosing search results have been completely replaced. The new scheme has replaced the old scheme in its entirety – there is no ongoing requirement to meet obligations under the old scheme that do not exist under the new scheme.
The new requirements for applications for standard patents are:
IMPORTANT NOTE: The responsibility for seeking the correct length of extension lies with the applicant, as generally the Commissioner will have no direct knowledge of when the search was completed, and therefore of the date the results were due to be filed.
The regime for Innovation Patents is similar except that:
2. PCT applications in the national phase – Art. 34 amendments
Where a PCT application enters the national phase, s.89(5) of the Patents Act ensures that various amendments made in the International phase are treated as part of the Australian specification.
Under s.89(5), the incorporation of amendments made under Art. 34 of the PCT is conditioned on the Demand having been filed within the time limit specified under Art. 39 of the PCT. While the time limit under Art. 20 was recently changed from 19 months to 30 months, the time limit under Art. 39 remains as 19 months.
While in the past Demands were almost always filed before the end of the 19th month, this will not be the case in the future, particularly having regard to the PCT Rule changes that come into effect on 1 January 2004. To allow for this, new regulation 8.1B provides that where a Demand is filed after the 19th month, Art. 34 amendments form part of the Australian specification provided the International Preliminary Examination Report has been established before national phase entry occurs.
3. Other amendments
Inquiries
General:
Dave Herald (02) 6283 2324
S.45(3) matters:
Janet Werner (02) 6283 2348
As previously advised, IP Australia is introducing a 'Reminder to Renew' service for customers involved with the payment of patent renewal fees for applications filed in the New Patent Solutions (NPS) system.
The 'Reminder to Renew' service will commence on 11 July 2003 for applications filed in the new system unless you have advised us that you do not wish to receive this service.
Please note that the service will apply only to applications filed in the new system, that is Innovation Patent applications filed since 25 May 2001 or standard Patent applications either filed since 5 July 2002 or entered the national phase since 8 August 2002.
IP Australia will issue 'Reminder to Renew' (RTR) notices to the agent listed for each patent. RTR notices will contain the renewal details for all patents for which an agent is responsible on which renewal fees are due for a particular calendar month or quarter. The RTR will include the actual fees required for each renewal listed. RTR notices will be issued two months before the due date of the first renewal on the RTR notice. RTR notices will help to reduce the frequency of incorrect payments, reducing the amount of extra work undertaken by both IP Australia and our customers to correct payments. In order to achieve these benefits, customers will be requested to return the RTR notice with the corresponding renewal payments.
The Reminder to Renew service is not an invoice. It is advice to agents only of renewal/continuation dates and amounts for patents/applications. It is the responsibility of the agent to ensure that the amounts due are complete and correct at the time the payment is made.
To allow individual customers to access the RTR system, RTR notices will automatically be sent to all agents listed for each patent unless the option of not receiving them has been requested.
However IP Australia appreciates that some customers may not wish to use this service. You may withdraw from the service at any time by notifying us on:
Email to assist@ipaustralia.gov.au;
Facsimile to +61 2 6283 7999; or
Mail to IP Australia PO Box 200,Woden ACT 2606, Australia.
Please mark your correspondence to the attention of Customer Technology Solutions.
If you do wish to use this service you do not need to notify us, however you may wish to elect whether you receive RTR notices monthly or quarterly. The default option will be quarterly. You can contact us, as above, if you prefer to receive RTR notices monthly.
If you have any questions about the Reminder to Renew system please contact:
Ray Hallett on 02 6283 2186 or ray.hallett@ipaustralia.gov.au.
The Professional Standards Board will be conducting examinations in 2003 in the following Topic Groups:
Bridging Subjects
The syllabi for each topic group are attached and are also available on the PSB website at http://www.psb.gov.au/exam/subjects/syllabus.htm
Enquiries about the Board's examinations should be addressed to:
Mr John Swift
Secretary (PSB)
PO BOX 200
WODEN ACT 2606
PH: 02 6283 2345
Data anomaly advice - Complete Patent Applications Filed - Name Index
Due to a data transfer problem from WIPO the title of some PCT applications contain data anomalies. The applications affected display INID (54) Title with punctuation that is presented in textual form, eg 'comma' in lieu of ','. Titles with data anomalies have appeared in the AOJP from 13 March to 10 April 2003.
The data anomalies also appear in the New Patent Solution (NPS) database (Patsearch) on IP Australia's web site. To lessen the impact, searchers would be advised to search titles using individual words rather than strings.
IP Australia is negotiating with WIPO to determine the solution to this problem.
If you have any questions regarding this matter, please contact IP Australia's Customer Services Network.
Phone: (02) 6283 2999
Fax: (02) 6283 7999
E-mail: assist@ipaustralia.gov.au
This notice is to request practitioners not to file ‘confirmation’ copies of faxes sent to IPAustralia.
When facsimile technology first became common, there were many concerns about the longevity of the facsimile copy having regard to the limitations of the various printing technologies then used. This lead to the practice of always supplying the paper original of any document faxed to the Office (often referred to as the ‘confirmation copy’).
The longevity of paper copies of faxes has long ceased to be a cause of any concern. Furthermore, as record management systems become electronic, the longevity of the fax record is no longer dependant upon the paper copy of the fax (if indeed one is actually produced.) Accordingly, the need for a confirmation copy has long ceased.
Furthermore, where a document is faxed to IPAustralia with a confirmation copy being filed in the usual way, some significant difficulties can arise. In particular, because the document will enter the processing systems at different times and locations, there is a real possibility that the confirmation copy will be acted upon as an action in its own right – with obvious duplication of effort and resulting confusion about what is happening. This situation has been growing in frequency over several years.
Accordingly, practitioners are requested NOT to file confirmation copies of any documents faxed to the Office – unless IPAustralia asks for the original to be filed.
If for some reason the faxed copy of a document is deficient in some manner, IPAustralia will ask for the original document to be filed. Situations where IPAustralia might ask for the original to be filed are:
A common practice is for a practitioner to file an urgent office action by fax, and to file the original at a State Office as a vehicle for any associated fee payment. This practice gives rise to considerable confusion with the processing of the application. Practitioners are requested to either:
Queries
Jodi Lawler (02) 6283 2681
Under the current regime for provision of search results in respect of applications for standard patents, the earliest date that subsection 45(3) of the Patents Act must be complied with is 1 June 2003 - see paragraph 3.17A(2)(c) of the Patents Regulations.
On 27 June 2002, the Intellectual Property Laws Amendment Bill 2002 was introduced into Parliament. The Bill limits the types of searches for which search results must be disclosed, to searches conducted by, or on behalf of, foreign patent offices.
On the basis that the Bill passes through Parliament and becomes law, it is intended that the more onerous requirements of the present subsection 45(3) will be, in effect, completely superseded by the new disclosure requirements set out in the Bill. To that end, the date set under paragraph 3.17A(1)(c) of the Patents Regulations needs to be later than the date of commencement of the new provisions. As the Bill has not yet been passed by Parliament, the new disclosure requirements will not commence before 1 June 2003.
This notice is to advise users that paragraph 3.17A(2)(c) has been amended to specify 1 February 2004 as the earliest date by which the current subsection 45(3) provisions must be complied with [Patents Amendment Regulations 2003 (No. 1)]. These regulations commenced on gazettal, Monday 28 April 2003.
Inquiries
Dave Herald (02) 6283 2324
Since 5 July 2002, new filings of patent applications have been processed through our new electronic filing systems. Requests to enter the national phase have been processed through our new electronic filing systems since 8 August 2002. Recent upgrades to this system have now introduced the ability to issue Directions to Request Examination for applications processed through the new electronic filing system. Directions to Request Examination from this system will begin to issue shortly for those applications either filed since 5 July 2002 or entered the national phase since 8 August 2002.
Consultation with our users during the development of the system showed that most users do not require the "Request for Examination of Patent Request and Complete Specification" form. The Directions to Request Examination issued from the new system will therefore not include this form.
The "Request for Examination of Patent Request and Complete Specification" form can be downloaded from our web site. Alternatively you may contact our Customer Service Network for assistance.
Please note that Directions to Request Examination for applications which either entered the national phase before 8 August 2002 or were filed before 5 July 2002 will continue to be issued in the old format including an attached "Request for Examination of Patent Request and Complete Specification" form.
If you have any specific enquiries regarding Directions to Request Examination please contact:
Leo O'Keeffe, Phone 02 6283 2036
General enquiries or requests for assistance may be made through the Customer Service Network.
In February 2003 amendments were made to the Manual of Practice and Procedure Volume 2 - National
The principal changes relate to:
Other changes relate to minor clarifications, elaborations, updates and corrections of typographical errors, etc.
The amendment action required is shown at the following page and in Part 32 at 32.Amend.Action.29
The resulting composition will be as shown in Part 32 at 32.Amend.Status
IP Australia has recently reviewed its policy with respect to refunds and waivers. The full policy is available at the IP Australia website, at
A summary of the policy follows. This policy is broadly aligned with IP Australia's previous practices. Most notably, however, refund practices with respect to Extension of Time requests, and to trade marks series filed for multiple classes, will change. To the extent that the policy is materially different to the practice previously applied, the policy will apply with respect to any fee payments made on or after 15 Feb. 2003.
Enquiries
General enquiries regarding the policy: Jodi Lawler 02 6283 2681
Enquiries regarding specific matters:
Patents: Leo O'Keeffe, Deputy Commissioner (A) 02 6283 2036
Trade Marks: Penny Bailey, Director (Administration) 02 6283
2940
Designs: Victor Portelli, Deputy Registrar of Designs 02 6283
2093
* * * * *
Summary - Refunds
IP Australia will apply these principles consistently in respect of all of its customers.
Summary - Waivers/Exemptions
IP Australia will apply these principles consistently in respect of all of its customers.
IP Australia wishes to advise its customers that filing receipts for all national phase applications will be issued as soon as possible after lodgment of the applications. However, IP Australia acknowledges that some filing receipts may not be issued for some weeks due to issues with the NPS system and apologises for any inconvenience that this may cause for its customers.
However, to assist with the efficient processing of these patent applications, it would greatly assist IP Australia if customers would refrain from sending in reminder letters concerning delays in receiving filing receipts unless it is absolutely vital. The processing of these letters is very time consuming and may delay other more important administrative tasks. In light of the above situation, IP Australia regrets that unless there are exceptional circumstances, it is unable to respond to those reminder letters that are received.
IP Australia asks for continued patience from its customers during this time and wishes to assure its customers that these processing delays will not place their IP rights in jeopardy.
For further information please contact the Customer Services Network.
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