The Intellectual Property Laws Amendment (PCT Translations and Other Measures) Regulations 2019 (“the Regulations”) were registered on the Federal Register of Legislation on 25 March 2019.
The Regulations will simplify the filing of translations of patents documents with IP Australia, and make other technical improvements to the Patents Regulations 1991 (“Patents Regulations”) and Designs Regulations 2004 (“Designs Regulations”).
With effect from 25 September 2019, Schedule 1 to the Regulations amends provisions of the Patents Regulations governing the filing of translations of patents documents into English. These amendments:
- clarify the translation requirements for international patent applications made under the Patent Cooperation Treaty (“PCT applications”) to enter the national phase in Australia. They also provide some additional flexibility for applicants when filing translated documents
- remove requirements for anyone who files a document translated into English to always provide a certificate of verification of the translation (“certificate of verification”)
- allow the Commissioner of Patents to require someone who files a translation of a document to either file a certificate of verification of the translation, or else file a corrected translation with its own certificate of verification. This applies if the Commissioner has reasonable doubts about the accuracy of a translation.
These amendments will apply to PCT applications that enter the national phase from 25 September 2019. They will also apply to translations of other documents that are filed from that date.
With effect from 26 March 2019, Schedule 2 to the Regulations amends provisions of the Patents Regulations and of the Designs Regulations to:
- enable the Commissioner of Patents and the Registrar of Designs to delegate to suitably qualified employees their powers to summon witnesses or to require someone to produce documents or articles (Schedule 2, Part 1)
- ensure the schedule of fees in the Patents Regulations complies with the schedule of fees under the Patent Cooperation Treaty (Schedule 2, Part 2)
- provide greater certainty about the acceptance period of a patent application, if there is a dispute about the applicant’s entitlement to make the application (Schedule 2, Parts 3 and 6)
- make the operation of the definition of the expression “certificate of verification” clearer (Schedule 2, Part 4)
- repeal a spent transitional provision for the formalities checking of PCT applications filed before 15 April 2013 (Schedule 2, Part 5).
For further information on the Regulations, please see the Explanatory Statement.
Consultation on exposure draft regulations
From 16 November to 21 December 2018, IP Australia sought public comment on the exposure draft of the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Regulations 2018 (“the exposure draft regulations”). The exposure draft regulations included the amendments made in the Regulations, along with other proposed regulation amendments depending on proposed changes to the Patents Act 1990. Six non-confidential submissions were received. Minor changes were made to the PCT translation amendments in Schedule 1 to the Regulations to address unintended consequences identified in a submission.
Further information is available on the consultation on the exposure draft regulations and when the other amendments could be made.
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