Non-legislative instruments for patents

The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (IP Amendment Act) amends the Patents Act to allow the Commissioner, by way of non-legislative instruments, to:

  • determine the means for filing a document with the Patent Office,
  • give a direction specifying the form in which a document is to be filed,
  • give a direction in relation to the filing of evidence in connection with a matter arising under the Patents Act,
  • determine the means for paying a fee, and
  • determine the formalities requirements in relation to a complete application.

Moving the requirements to non-legislative instruments provides flexibility to adopt more efficient processes as they become available.

IP Australia has published four instruments in the Official Journal of Patents in preparation for their commencement. They set out the requirements in relation to:

The instruments do not substantially change the requirements that presently apply in relation to these matters.

These instruments will commence at the same time as the corresponding parts in the IP Amendment Act, which will be on 24 February 2019, unless proclaimed to commence earlier.

The Manual of Practice and Procedure and the Objective Connect User Guide are being updated to reflect these changes.  Users are encouraged to consult the Manual and the Guide if they are uncertain what requirements apply to their situation.

For more information, please contact Steven Barker in Patent Oppositions and Exam Practice.