Last updated: 
20 April 2020

The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Regulations 2020 (“the Regulations”) were registered on the Federal Register of Legislation on 3 April 2020.

The Regulations amend the Patents Regulations 1991 (“Patents Regulations”) in line with changes that Schedules 1, 2, 4 and 8 to the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 (“the Act”) make to the Patents Act 1990 (“Patents Act”). Further information on the Act is available here.

With effect from 4 April 2020, Parts 2 and 3 of Schedule 1 to the Regulations make minor amendments to the Patents Regulations for consistency with the amended provisions of the Patents Act for Crown use and for compulsory licensing.

With effect from 26 August 2020, Part 4 of Schedule 1 to the Regulations repeals regulation 1.7 of the Patents Regulations. The repeal completes the removal of requirements to file certificates of verification with translated patent documents, which was substantially done by Schedule 1 to the Intellectual Property Laws Amendment (PCT Translations and Other Measures) Regulations 2019.

With effect from 26 August 2021, Part 2 of Schedule 1 to the Act will amend the Patents Act to commence the phasing out of the innovation patent system. To support this, Part 1 of Schedule 1 to the Regulations will amend the Patents Regulations to:

  • prevent an innovation patent being granted — if any of the following apply:
  1. the date of the patent would be on or after 26 August 2021. The date of the patent is the filing date of the application for its grant, or the earlier date determined under regulation 6.3 of the Patents Regulations
  2. a standard patent application is amended to convert it into an innovation patent application, after the term of the innovation patent (if granted) would already have expired
  3. a divisional application for an innovation patent is filed after the term of the innovation patent (if granted) would already have expired
  • prevent a standard patent application being amended to convert it into an innovation patent application — if the date of the patent (if granted) would be on or after 26 August 202
  • prevent extensions of time for converting a standard patent application into an innovation patent application, or for filing a divisional application for an innovation patent — if the term of the innovation patent would already have expired.

For further information on the Regulations, please see the Explanatory Statement linked here.

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 amendments made in the Intellectual Property Laws Amendment (PCT Translations and Other Measures) Regulations 2019. Six non-confidential submissions were received. No substantive comments were received on the amendments in the Regulations, but submitters discussed the overall policy intent of changes proposed to be made by the Act.

Further information is available on the consultation on the exposure draft regulations.

Contact officer

Paul Gardner
Ph: (02) 6283 2145
Email: paul.gardner@ipaustralia.gov.au.