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Official notices: Trade marks 2003 notices

• Trade Marks Office Manual of Practice and Procedure - Reissue of Parts 9 and 22
• IP Australia Christmas Holiday Close Down, 25 December 2003 - 1 January 2004
• Consultation on proposed amendments to the Patents, Trade Marks and Designs Regulations - Convention countries
• Trade Marks Office Manual of Practice and Procedure - Reissue of Part 55
• Trade Marks Office Manual of Practice and Procedure Corrections
• Professional Standards Board for Patent and Trade Marks Attorneys - 2003 Examinations
• Professional Standards Board for Patent and Trade Marks Attorneys - 2003 Board Examinations Syllabi
• Faxes - No Confirmation Copies
• Policy with respect to refunds and waivers

OFFICIAL NOTICE
TRADE MARKS OFFICE MANUAL OF PRACTICE AND PROCEDURE

28 November 2003

Reissue of Part 9 - Amendments, and Changes to Name and Address

Reissue of Part 22 - Trade Marks Capable of Distinguishing

Part 9 - Reissue of Part 9 Amendments, and Changes to Name and Address

Part 22 - Trade Marks Capable of Distinguishing

Please contact the Manual Co-ordinator, Arminel Ryan, on 02 6283 2185, with any questions.

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OFFICIAL NOTICE
IP Australia Christmas Holiday Close Down
25 December 2003 - 1 January 2004

27 November 2003

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:

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.

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OFFICIAL NOTICE
Consultation on proposed amendments to the Patents, Trade Marks and Designs Regulations - Convention countries

18 September 2003

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

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OFFICIAL NOTICE
TRADE MARKS OFFICE MANUAL OF PRACTICE AND PROCEDURE

10 July 2003

Reissue of Part 55 - Costs

Part 55 has been revised and amended in the light of Aussie Red Equipment Pty Ltd v Antsent Pty Ltd [2001] FCA 1641, and is now reissued.

• The principal changes are to paragraphs 2.5, 3.2, 3.3, 5.1 and 5.2.
• There is a minor change to paragraph 2.3
• Minor typographical and stylistic corrections have been made throughout
• Part pagination has been added.

The new version is identified by the footer July 2003 and replaces the previous version, identified by the footer Nov 2001.

PLEASE NOTE:

The updated version of the TMO Manual of Practice and Procedure is available electronically.

Please contact Arminel Ryan, Trade Marks Manual Coordinator, on 02 6283 2185, with any questions.

OFFICIAL NOTICE
TRADE MARKS OFFICE MANUAL OF PRACTICE AND PROCEDURE

10 July 2003

Corrections to Part 10, Part 20 and Part 22

A recent comparison of the electronic and print publications revealed the existence of some discrepancies. The printed parts, 10, 20 and 22 have been updated to bring them into conformity with the equivalent Parts in the electronic publication.

These corrected versions are identified by the footer June 2003.

Part 10 - Details of Formality Requirements

This update consists of a single double sided page, in which paragraph 5.2.4 has been corrected.

Part 20 - Definition of a Trade Mark and Presumption of Registrability

This update consists of two double sided pages.

• The list of Relevant Legislation has been corrected to include all relevant sections of the Act.
• The first sentence of paragraph 4.1 has been corrected.

Part 22 - Trade Marks Capable of Distinguishing

This update consists of a single double-sided page, in which the SFAS value in paragraph 16 has been corrected to read 750.

Please contact Arminel Ryan, Trade Marks Manual Coordinator on 02 6283 2185, with any questions.

OFFICIAL NOTICE
Professional Standards Board for Patent and Trade Marks Attorneys
2003 Examinations

19 June 2003

The examinations for registration as patent and trade marks attorneys will be held in Canberra and the capital cities of each State, if required, between 30 September and 10 October 2003.

As previously advertised, the Board will be conducting examinations in Topic Groups F–Patent System, G – Drafting Patent Specifications and H – Interpretation and Validity of Patent Specifications and the bridging subjects Patent Attorneys' Practice Part 1 & 2.

Where candidates have not completed topic groups A-E & I with the Board they should provide, at the time of enrolment, evidence of having met those prerequisites.

Application for admission as a candidate at the examinations must be lodged in writing, together with the prescribed fee of $400.00 per subject. Applications should be sent to John Swift, Secretary, Professional Standards Board for Patent and Trade Marks Attorneys, IP Australia, PO Box 200, Woden ACT 2606. The closing date for receipt of applications is 31 July 2003. Cheques should be made payable to ‘IP Australia’.

Candidates should include, on the application, their full names, signature, postal address and the subject/s for which they intend to sit. Preferably use the annexed enrolment form.

The Syllabi and Guidelines for the subjects the Board is examining are available on the Board’s web site www.psb.gov.au. Inquiries should be directed to 02 6283 2275.

Candidates with disabilities should apply for special consideration in accordance with the provision of the Board's Disability Policy, which can be accessed at www.psb.gov.au/new/index.htm.

Previous years’ examination question papers and examiners’ comments on the papers may be downloaded from the Board’s web site or obtained directly from the Professional Standards Board Secretariat and IP Australia State Offices.

Following enrolment, candidates will be sent a copy of “Notes for candidates sitting examinations conducted by the Board”. This guide is also available on the Board's website. When all enrolments are completed, the examination timetable and candidates’ distinguishing numbers will be issued. This will take place around 15 August 2003.

The Board has appointed the following examiners for the 2003 examinations.

OFFICIAL NOTICE
Professional Standards Board for Patent and Trade Marks Attorneys
2003 Board Examinations Syllabi

15 May 2003

The Professional Standards Board will be conducting examinations in 2003 in the following Topic Groups:

• GROUP F — Patent System
• GROUP G — Drafting Patent Specifications
• GROUP H — Interpretation and Validity of Patent Specifications

Bridging Subjects

• Patent Attorneys' Practice, Part 1
• Patent Attorneys' Practice, Part 2

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

OFFICIAL NOTICE
Faxes - No Confirmation Copies

17 April 2003

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:

• the faxed copy of the document fails to meet the usual formality requirements; or
• there is some special reason why the original document is required on the file (e.g. in certain circumstances, statutory declarations; copies of Design representations)

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:

• create a separate document as the vehicle for the fee payment, with that document simply referring to the faxed correspondence;
• pay any required fees by credit card payment as part of the faxed correspondence; or
• (in the case of most patent matters) wait for an “Invitation to Pay” to be issued, and pay against that invitation.

Queries
Jodi Lawler (02) 6283 2681

OFFICIAL NOTICE
Policy with respect to refunds and waivers

12 February 2003

IP Australia has recently reviewed its policy with respect to refunds and waivers. The full policy is available at the IP Australia website, at

http://www.ipaustralia.gov.au/resources/forms_finance.shtml

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 automatically refund money when
  • The customer has submitted a payment and request for something IP Australia does not do (e.g. car registrations), or
  • The customer has submitted a payment and request for something that is not legally or practically capable of being done. (e.g. opposing a newly filed application), or
  • The fee is overpaid.
  • A fee has been incurred as a result of an office error. Where IP Australia has made an error, given incorrect advice or failed to provide a notification, in such a way as will make the customer liable for a fee that they would not otherwise have needed to pay then, if the fee has been paid we will refund it.
• In other circumstances, IP Australia will only consider giving a refund if the customer lodges a request for one.
• Where a fee has been paid for lodging a document, and the document has been lodged with IP Australia, then the fee cannot and may not be refunded.
• Where a fee has been paid for IP Australia to perform a particular action, and that action has been performed, then the fee cannot and may not be refunded.
• Where a fee has been paid and
  • the accompanying document is not considered to have been lodged, or
  • the required action has not been performed,
  • then the fee may be refunded, on the customer's request.
• Refunds on fee items will be paid in full, or not at all. There will be no administrative charges levied.
• Refunds on cost recovery activities (such as providing data extracts from IP Australia's information systems) may be partial refunds. The cost of any effort in servicing the original requested activity will be deducted from the refunded sum.

IP Australia will apply these principles consistently in respect of all of its customers.

Summary - Waivers/Exemptions

• IP Australia will waive fees in part or in full only in rare circumstances
• Due to differences between the Trade Marks Act and the Patents and Designs Acts, the rules for waivers are slightly narrower in Trade Marks than in the rest of IP Australia.
• IP Australia may waive part or all of a fee for a patents or designs transaction when:
  • IP Australia has made an error, given incorrect advice or failed to provide a notification, in such a way as will make the customer liable for a fee that they would not otherwise have needed to pay.
  • IP Australia has made an error or given incorrect advice that has given the customer a clear expectation that they need to pay an amount that is less than the prescribed fee
  • It would otherwise be in the public interest, or ensure fair and equitable treatment of IP Australia's customers
• Otherwise, intellectual property fee items will not be waived
• For other financial transactions, IP Australia may waive some or all of the money due to be paid if:
• The sum involved is so small as not to be economically worthwhile to be pursued
• It would otherwise be in the public interest, or ensure fair and equitable treatment of IP Australia's customers

IP Australia will apply these principles consistently in respect of all of its customers.

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