IP/N/1/AUS/I/14  
 
18 June 2013  
(13-3152)  Page: 1/21  
Council for Trade-Related Aspects 
of Intellectual Property Rights  Original: English/anglais/inglés  
 
 MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
 
AUSTRALIA  
This document reproduces the text1 of the Intellectual Property Legislation Amendment 
Regulations 2008 (No. 1), as notified by Australia on 22 May 2013 under Article 63.2 of the Agreement (see document IP/N/1/AUS/5). 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
AUSTRALIE  
Le présent document contient le texte1 du Règlement de 2008 portant modification de la législation 
relative à la propriété intellectuelle (n° 1), notifié par l'Australie le 22 mai 2013 au titre de 
l'article 63:2 de l'Accord (voir le document IP/N/1/AUS/5). 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
A
USTRALIA  
En el presente documento se reproduce el texto1 del Reglamento de 2008 que modifica la 
legislación relativa a la propiedad intelectual (Nº 1), notificado por Australia el 22 de mayo de 2013 en virtud de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento 
IP/N/1/AUS/5). 
                                               
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/AUS/I/14 
 
- 2 - 
 
  PP 3-21 - Offset (Pdf file attached) 
PP 3 à 21 - Offset (fichier Pdf joint) PP 3-21 - Offset (fichero Pdf adjunto)   
 
0823380A-081125EV.doc 
 
Intellectual Property Legislation 
Amendment Regulations 2008 
(No. 1)1 
Select Legislative In strument 2008 No. 279 
I, QUENTIN BRYCE, Governor-G eneral of the Commonwealth 
of Australia, acting with the advice of the Federal Executive 
Council, make the following Regulations under the Patents 
Act 1990 , the Trade Marks Act 1995  and the Designs Act 2003 . 
Dated 12 December 2008 
QUENTIN BRYCE 
Governor-General 
By Her Excellency’s Command 
KIM CARR  
Minister for Innovation, Indus try, Science and Research 
Federal Register of Legislative Instruments F2008L04588
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         - 3 -Contents  
  
 
Page 
 
2 Intellectual Property Legislation Amendment Regulations 
2008 (No. 1) 2008, 279 
 
 Contents 
 1  Name of Regulations 3 
 2  Commencement 3  
 3  Amendment of Patents Regulations 1991 — 
Schedule 1 3  
 4  Amendment of Patents Regulations 1991 — 
Schedule 2 3  
 5  Amendment of Trade Marks Regulations 1995  — 
Schedule 3 3  
 6  Amendment of Designs Regulations 2004  — 
Schedule 4 3  
Schedule 1  Amendments of Patents Regulations 1991 
relating to the Patent Cooperation Treaty 4 
Schedule 2  Other amendments of Patents Regulations 1991  14 
Schedule 3  Amendments of Trade Marks Regulations 1995  18 
Schedule 4  Amendments of Designs Regulations 2004  19 
 
 
 
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Regulation 6 
 
 
2008, 279 Intellectual Property Legislation Amendment Regulations 
2008 (No. 1) 3 
 
  
1 Name of Regulations 
  These Regulations are the Intellectual Prope rty Legislation 
Amendment Regulations 2008 (No. 1). 
2 Commencement 
  These Regulations commence on 1 January 2009. 
3 Amendment of Patents Regulations 1991  — 
Schedule 1 
 (1) Schedule 1 amends the Patents Regulations 1991 . 
 (2) The amendments made by Schedule 1 apply in relation to an 
international application whose inte rnational filing date is on or 
after 1 January 2009. 
 (3) The amendments made by items [1] to [5] and [7] to [17] of 
Schedule 1 also apply in relation to an international application 
if: 
 (a) the international filing date of the application is earlier 
than 1 January 2009; and 
 (b) the time limit for making a supplementary search request 
in relation to the application under Rule 45 bis.1(a) of 
Schedule 2A to the Patents Regulations 1991 , as 
amended by Schedule 1 to th ese Regulations, expires on 
or after 1 January 2009. 
4 Amendment of Patents Regulations 1991  — 
Schedule 2 
  Schedule 2 amends the Patents Regulations 1991 . 
5 Amendment of Trade Marks Regulations 1995 — 
Schedule 3 
  Schedule 3 amends the Trade Marks Regulations 1995 . 
6 Amendment of Designs Regulations 2004  — 
Schedule 4 
  Schedule 4 amends the Designs Regulations 2004 . 
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Cooperation Treaty 
  
 
 
 
4 Intellectual Property Legislation Amendment Regulations 
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Schedule 1 Amendments of Patents 
Regulations 1991 relating to 
the Patent Cooperation Treaty 
(regulation 3) 
   
[1] Subregulation 1.4 (2) 
omit 
1 April 2007 
insert 
1 January 2009 
[2] Schedule 2A, before Table of Provisions 
omit 
and on 1 July 2008. 
insert 
on 1 July 2008, and on 1 January 2009. 
[3] Schedule 2A, Table of Provisions, after Rule 45.1 
insert 
Rule 45 bis Supplementary International Searches  
 45bis.1 Supplementary Search Request 
 45bis.2 Supplementary Search Handling Fee 
 45 bis.3 Supplementary Search Fee 
 45 bis.4 Checking of Supplementary  Search Request; Correction 
of Defects; Late Payment of Fees; Transmittal to 
International Searching Authority 
 45 bis.5 Start, Basis and Scope of  Supplementary International 
Search 
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  45 bis.6 Unity of Invention 
 45 bis.7 Supplementary International Search Report 
 45 bis.8 Transmittal and Effect of the Supplementary 
International Search Report 
 45 bis.9 International Searching Au thorities Competent to Carry 
Out Supplementary International Search 
[4] Schedule 2A, Table of Provisions, after Rule 90 bis.3 
insert 
 90 bis.3bis Withdrawal of Supplementary Search Request 
[5] Schedule 2A, after Rule 45.1 
insert 
Rule 45bis 
 Supplementary International Searches 
45bis.1 Supplementary Search Request  
 ( a) The applicant may, at any time prior to  the expiration of 19 months from the 
priority date, request that a supplementary international search be carried out in respect 
of the international application by an Intern ational Searching Authority that is competent 
to do so under Rule 45bis.9. Such requests may be made in respect of more than one 
such Authority.  
 ( b) A request under paragraph (a) (“supplementary search request”) shall be 
submitted to the International Bureau and shall indicate:  
 (i)  the name and address of the applicant and of the agent (if any), the title of 
the invention, the international filing date and the international application 
number;  
 (ii)  the International Searching Authority that is requested to carry out the 
supplementary international search (“A uthority specified for supplementary 
search”); and  
 (iii)  where the international applicati on was filed in a language which is not 
accepted by that Authority, whether any translation furnished to the 
receiving Office under Rule 12.3 or 12.4 is to form the basis of the 
supplementary international search.  
 ( c) The supplementary search request shall, where applicable, be accompanied by:  
 (i)  where neither the language in which the international application was filed 
nor that in which a translation (if any) has been furnished under Rule 12.3 or 12.4 is accepted by the Authority specified for supplementary search, a 
translation of the international appl ication into a language which is 
accepted by that Authority;  
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  (ii)  preferably, a copy of a sequence listing in electronic form complying with 
the standard provided for in the Administ rative Instructions, if required by 
the Authority specified fo r supplementary search.  
 ( d) Where the International Searching Authority has found that the international 
application does not comply with the requirement  of unity of invention, the supplementary 
search request may contain an indication of the wish of the applicant to limit the 
supplementary international search to one of the inventions as identified by the 
International Searching Authority other than the main invention referred to in Article 
17(3)(a).  
 ( e) The supplementary search request shall be considered not to have been 
submitted, and the International Bureau shall so declare:  
 (i)  if it is received after the expirati on of the time limit referred to in paragraph 
(a); or  
 (ii)  if the Authority specified for supplementary search has not stated, in the 
applicable agreement under Article 16(3)(b), its preparedness to carry out 
such searches or is not competent to do so under Rule 45bis.9(b).  
45bis.2 Supplementary Search Handling Fee  
 ( a) The supplementary search request shall be subject to the payment of a fee for 
the benefit of the International Bureau (“sup plementary search handling fee”) as set out 
in the Schedule of Fees.  
 ( b) The supplementary search handling fee shall be paid in the currency in which 
the fee is set out in the Schedule of Fees  or in any other currency prescribed by the 
International Bureau. The amount in such other currency shall be the equivalent, in 
round figures, as established by the Internati onal Bureau, of the amount as set out in the 
Schedule of Fees, and shall be published in the Gazette.  
 ( c) The supplementary search handling fee shall be paid to the International 
Bureau within one month from the date of re ceipt of the supplementary search request. 
The amount payable shall be the amount a pplicable on the date of payment.  
 ( d) The International Bureau shall refund t he supplementary search handling fee to 
the applicant if, before the documents referred to in Rule 45bis.4(e)(i) to (iv) are 
transmitted to the Authority specif ied for supplementary search, the  international 
application is withdrawn or considered withdr awn, or the supplementary search request 
is withdrawn or considered not to have been submitted.  
45bis.3 Supplementary Search Fee  
 ( a) Each International Searching Authorit y carrying out supplementary international 
searches may require that the applicant pay a fee (“supplementary search fee”) for its 
own benefit for carrying out such a search.  
 ( b) The supplementary search fee shall be collected by the International Bureau. 
Rules 16.1(b) to (e) shall apply mutatis mutandis.  
 ( c) As to the time limit for payment of  the supplementary search fee and the 
amount payable, the pr ovisions of Rule 45bis.2(c) shall apply mutatis mutandis .  
 ( d) The International Bureau shall refund the supplementary search fee to the 
applicant if, before the documents referred to in Rule 45bis.4(e)(i) to (iv) are transmitted to 
the Authority specified for supplementary search, the  international application is 
withdrawn or considered withdrawn, or the supplementary search request is withdrawn 
or considered not to have been submitted.  
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  ( e) The Authority specified for supplementary search shall, to the extent and under 
the conditions provided for in the applicable agreement under Article 16(3)(b), refund the 
supplementary search fee if, before it has st arted the supplementary international search 
in accordance with Rule 45bis.5(a), the supplementary search  request is considered not 
to have been submitted.   
45bis.4 Checking of Supplementary Search Request; Correction of Defects; Late 
Payment of Fees; Transmittal to International Searching Authority  
 ( a) Promptly after receipt of a supplement ary search request, the International 
Bureau shall check whether it complies with the requirements of Rule 45bis.1(b) and (c)(i) 
and shall invite the applicant to correct any defe cts within a time limit of one month from 
the date of the invitation.  
 ( b) Where, by the time they are due under Rules 45bis.2(c) and 45bis.3(c), the 
International Bureau finds that the s upplementary search handling fee and the 
supplementary search fee have not been paid in fu ll, it shall invite the applicant to pay to 
it the amount required to cover those fees, together with the late payment fee under 
paragraph (c), within a time limit of one month from the date of the invitation.  
 ( c) The payment of fees in response to an invitation under paragraph (b) shall be 
subject to the payment to the International Bu reau, for its own benefit, of a late payment 
fee whose amount shall be 50% of the supplementary search handling fee.  
 ( d) If the applicant does not furnish the required correction or does not pay the 
amount in full of the fees due, including the late payment fee, before the expiration of the 
time limit applicable under paragraph (a) or (b), respectively, the supplementary search 
request shall be considered not to have been submitted and the International Bureau 
shall so declare and shall inform the applicant accordingly.  
 ( e) On finding that the requirements of Rule 45bis.1(b) and (c)(i), 45bis.2(c) and 
45bis.3(c) have been complied with, the Intern ational Bureau shall promptly, but not 
before the date of receipt by it of the international search report or the expiration of 17 
months from the priority date, whichever occu rs first, transmit to the Authority specified 
for supplementary search a copy of each of the following:  
 (i)  the supplementary search request;  
 (ii)  the international application;  
 (iii)  any sequence listing furnished under Rule 45bis.1(c)(ii); and  
 (iv)  any translation furnished under Rule 12.3, 12.4 or 45bis.1(c)(i) which is to 
be used as the basis of the suppl ementary international search;  
and, at the same time, or promptly after thei r later receipt by the International Bureau:  
 (v) the international search report and the written opinion established under 
Rule 43bis.1;  
 (vi) any invitation by the International Searching Authority to pay additional 
fees referred to in Article 17(3)(a); and  
 (vii) any protest by the applicant under  Rule 40.2(c) and the decision thereon 
by the review body constituted in the framework of the International 
Searching Authority.   
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  ( f) Upon request of the Authority specifie d for supplementary search, the written 
opinion referred to in paragraph (e)(v) shall, when not in English or in a language 
accepted by that Authority, be translated into English by or under the responsibility of the 
International Bureau. The International Bureau  shall transmit a copy of the translation to 
that Authority within two months from the dat e of receipt of the request for translation, 
and shall at the same time transmit a copy to the applicant.   
45bis.5 Start, Basis and Scope of Supplementary International Search  
 ( a) The Authority specified for supplementar y search shall start the supplementary 
international search promptly after rece ipt of the documents specified in Rule 45bis.4(e)(i) 
to (iv), provided that the Authority may, at it s option, delay the start of the search until it 
has also received the documents specified in Rule 45bis.4(e)(v) or until the expiration of 
22 months from the priority da te, whichever occurs first.  
 ( b) The supplementary international search shall be carried out on the basis of the 
international application as filed or of a translation referred to in Rule 45bis.1(b)(iii) or 
45bis.1(c)(i), taking due account of the international search report and the written opinion 
established under Rule 43bis.1 where they are available to the Authority specified for 
supplementary search before it starts t he search. Where the supplementary search 
request contains an indication under Rule 45bis.1(d), the supplementary international 
search may be limited to the invention sp ecified by the applicant under Rule 45bis.1(d) 
and those parts of the international applicat ion which relate to that invention.  
 ( c) For the purposes of the s upplementary international search, Article 17(2) and 
Rules 13ter.1, 33 and 39 shall apply mutatis mutandis .  
 ( d) Where the international search report is available to the Authority specified for 
supplementary search before it starts the search under paragra ph (a), that Authority may 
exclude from the supplementary search any claims which were not the subject of the 
international search.  
 ( e) Where the International Searching Authority has made the declaration referred 
to in Article 17(2)(a) and that declaration is available to the Authority specified for 
supplementary search before it starts the search under paragra ph (a), that Authority may 
decide not to establish a supplementary international search report, in which case it shall 
so declare and promptly notify the applicant and the International Bureau accordingly.  
 ( f) The supplementary international search shall cover at least the documentation 
indicated for that purpose in the applicab le agreement under Article 16(3)(b).  
 ( g) If the Authority specified for supplementar y search finds that carrying out the 
search is excluded by a limitation or condition referred to in Rule 45bis.9(a), the 
supplementary search request shall be consi dered not to have been submitted, and the 
Authority shall so declare and shall prompt ly notify the applicant and the International 
Bureau accordingly.   
45bis.6 Unity of Invention   
 ( a) If the Authority specified for supplementar y search finds that the international 
application does not comply with the requirem ent of unity of invention, it shall:  
 (i)  establish the supplementary inter national search report on those parts of 
the international application which relate  to the invention first mentioned in 
the claims (“main invention”);  
 (ii)  notify the applicant of  its opinion that the inter national application does not 
comply with the requirement of unity  of invention and specify the reasons 
for that opinion; and  
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  (iii)  inform the applicant of the possibility of requesting, within the time limit 
referred to in paragraph (c), a review of the opinion.  
 ( b) In considering whether the international application complies with the 
requirement of unity of invention, the Aut hority shall take due account of any documents 
received by it under Rule 45bis.4(e)(vi) and (vii) before it starts the supplementary 
international search.  
 ( c) The applicant may, within one month fr om the date of the notification under 
paragraph (a)(ii), request the Authority to revi ew the opinion referred to in paragraph (a). 
The request for review may be subjected by the Authority to the payment to it, for its own 
benefit, of a review fee whose amount shall be fixed by it.  
 ( d) If the applicant, within the time limit under paragraph (c), requests a review of 
the opinion by the Authority and pays any r equired review fee, the opinion shall be 
reviewed by the Authority. The review shall not be carried out only by the person who 
made the decision which is the subject of the review. Where the Authority:   
 (i)  finds that the opinion was entirely justified, it shall notify the applicant 
accordingly;  
 (ii)  finds that the opinion was partia lly unjustified but st ill considers that the 
international application does not comply  with the requirement of unity of 
invention, it shall notify the applic ant accordingly and, where necessary, 
proceed as provided for in paragraph (a)(i);  
 (iii)  finds that the opinion was entirely  unjustified, it shall notify the applicant 
accordingly, establish the supplementar y international search report on all 
parts of the international application and refund the review fee to the applicant.  
 ( e) On the request of the applicant, the text  of both the request for review and the 
decision thereon shal l be communicated to the desig nated Offices together with the 
supplementary international search report. The applicant shall submit any translation 
thereof with the furnishing of the translation of the international application required under Article 22. 
 ( f) Paragraphs (a) to (e) shall apply mutatis mutandis  where the Authority specified 
for supplementary search decides to limit t he supplementary international search in 
accordance with the second sentence of Rule 45
bis.5(b), provided that any reference in 
the said paragraphs to the “international application” shall be construed as a reference to 
those parts of the internationa l application which relate to the invention specified by the 
applicant under Rule 45bis.1(d). 
45bis.7 Supplementary International Search Report  
 ( a) The Authority specified for supplementar y search shall, within 28 months from 
the priority date, establish the supplementar y international search report, or make the 
declaration referred to in Article 17(2)(a ) as applicable by virtue of Rule 45bis.5(c) that no 
supplementary international search report will be established.  
 ( b) Every supplementary international search report, any declaration referred to in 
Article 17(2)(a) as applicable by virtue of Rule 45bis.5(c) and any declaration under Rule 
45bis.5(e) shall be in a language of publication.  
 ( c) For the purposes of establishing the su pplementary international search report, 
Rules 43.1, 43.2, 43.5, 43.6, 43.6bis, 43.8 and 43.10 shall, subject to paragraphs (d) and 
(e), apply mutatis mutandis. Rule 43.9 shall apply mutatis mutandis , except that the 
references therein to Rules 43.3, 43.7 and 44.2 shall be considered non-existent. Article 
20(3) and Rule 44.3 shall apply mutatis mutandis.  
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  ( d) The supplementary international search report need not contain the citation of 
any document cited in the international search report, except where the document needs 
to be cited in conjunction with other documents  that were not cited in the international 
search report.  
 ( e) The supplementary international search report may contain explanations:  
 (i)  with regard to the citations of the documents considered to be relevant;  
 (ii)  with regard to the scope of the supplementary international search.   
45bis.8 Transmittal and Effect of the Supplem entary International Search Report  
 ( a) The Authority specified for supplem entary search shall, on the same day, 
transmit one copy of the supplementary internat ional search report or the declaration that 
no supplementary international search report shall be established, as applicable, to the 
International Bureau and one copy to the applicant.  
 ( b) Subject to paragraph (c), Article 20(1) and Rules 45.1, 47.1(d) and 70.7(a) shall 
apply as if the supplementary international search report were part of the international 
search report.  
 ( c) A supplementary international search report need not be taken into account by 
the International Preliminary Examining Authorit y for the purposes of a written opinion or 
the international preliminary exam ination report if it is receiv ed by that Authority after it 
has begun to draw up that opinion or report.  
45bis.9 International Searching Authorities Competent to Carry Out Supplementary 
International Search  
 ( a) An International Searching Authority shall be competent to carry out 
supplementary international searches if its preparedness to do so is stated in the 
applicable agreement under Article 16(3)(b), subject to any limitations and conditions set 
out in that agreement.  
 ( b) The International Searching Authority carrying out the international search 
under Article 16(1) in respect of an internat ional application shall not be competent to 
carry out a supplementary international s earch in respect of that application.  
 ( c) The limitations referred to in paragraph (a) may, for example, include limitations 
as to the subject matter for which supplementary international searches will be carried 
out, beyond those which would apply under Article 17(2) to the international search, and 
limitations as to the total number of supple mentary international searches which will be 
carried out in a given period. 
[6] Schedule 2A, Rule 48.3(a) 
after 
Japanese, 
insert 
Korean, Portuguese, 
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 [7] Schedule 2A, Rule 90.1(a) 
after 
the International Searching Authority 
insert 
, any Authority specified for supplementary search 
[8] Schedule 2A, after Rule 90.1(b) 
insert 
 (b-bis ) A person having the right to prac tice before the national Office or 
intergovernmental organization which acts as the Authority spec ified for supplementary 
search may be appointed by the applicant as his agent to represent him specifically 
before that Authority. 
[9] Schedule 2A, Rule 90.1(d)(i) 
after 
the International Searching Authority 
insert 
, any Authority specified for supplementary search 
[10] Schedule 2A, Rule 90.1(d)(ii) 
substitute 
 (ii) specifically before the International Searching Authority, any Authority 
specified for supplementary search or the International Preliminary 
Examining Authority, provided that any person so appointed as sub-agent 
has the right to practice  before the national Office  or intergovernmental 
organization which acts as the International Searching Authority, the Authority specified for supplementary s earch or International Preliminary 
Examining Authority, as the case may be. 
[11] Schedule 2A, Rule 90.4(b) 
substitute 
 ( b) Subject to Rule 90.5, a separate power of attorney shall be submitted to either 
the receiving Office or the International Bureau, provided that, where a power of attorney appoints an agent under Rule 90.1(b), (b- bis), (c) or (d)(ii), it shall be submitted to the 
International Searching Authority, the Authorit y specified for supplementary search or the 
International Preliminary Examining Authority, as the case may be. 
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 [12] Schedule 2A, Rule 90.4(d) 
after 
any International Searching Authority, 
insert 
any Authority competent to carry out supplementary searches, 
[13] Schedule 2A, Rule  90.5(b), (c) and (d) 
substitute 
 ( b) The general power of attorney shall be deposited with the receiving Office, 
provided that, where it appoints an agent under Rule 90.1(b), (b- bis), (c) or (d)(ii), it shall 
be deposited with the International Searching Authority, the Authority specified for 
supplementary search or the International Pr eliminary Examining Authority, as the case 
may be. 
 ( c) Any receiving Office, any International Sear ching Authority,  any Authority 
competent to carry out supplementary searches and any International Preliminary 
Examining Authority may waive the requirement  under paragraph (a)(ii) that a copy of 
the general power of attorney is attached to the request, the demand or the separate 
notice, as the case may be. 
 ( d) Notwithstanding paragraph (c), wher e the agent submits any notice of 
withdrawal referred to in Rules 90bis.1 to 90bis.4 to the receiving Offi ce, the International 
Searching Authority, the Authority specified fo r supplementary search or the International 
Preliminary Examining Authority, as the case  may be, a copy of the general power of 
attorney shall be submitted to that Office or Authority. 
[14] Schedule 2A, after Rule 90 bis.3 
insert 
90bis.3bis Withdrawal of Supplementary Search Request 
 ( a) The applicant may withdraw a supplementary search request at any time prior 
to the date of transmittal to the applicant and to the International Bureau, under Rule 
45bis.8(a), of the supplementary international search report or the declaration that no 
such report will be established. 
 ( b) Withdrawal shall be effective on receipt, within the time limit under 
paragraph (a), of a notice addressed by t he applicant, at his option, to the Authority 
specified for supplementary search or to the International Bureau, provided that, where 
the notice does not reach the Authority specified for supplementary search in sufficient 
time to prevent the transmittal of the report or declaration referred to in paragraph (a), 
the communication of that report or declara tion under Article 20(1), as applicable by 
virtue of Rule 45bis.8(b), shall nevertheless be effected. 
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 [15] Schedule 2A, Rule 90 bis.5(b)(i) 
after 
the International Bureau 
insert 
, the Authority carrying out the s upplementary international search 
[16] Schedule 2A, Rule 90 bis.5(b)(ii) 
omit 
90bis.2 (d) or 90bis.3 (c), 
insert 
90bis.2 (d), 90bis.3 (c) or 90bis.3bis (b) 
[17] Schedule 2A, after Rule 90 bis.6(b) 
insert 
 (b-bis ) Where a supplementary search request is withdrawn under Rule 90bis.3bis, the 
supplementary international search by t he Authority concerned shall be discontinued. 
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14 Intellectual Property Legislation Amendment Regulations 
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Schedule 2 Other amendments of Patents 
Regulations 1991  
(regulation 4) 
[1] Subregulation 1.3 (1), after definition of certificate of 
verification  
insert 
competent authority , in relation to a Convention country, 
means a person who, under the laws of the country or the 
arrangements in place in the c ountry, is authoris ed to certify 
copies of specifications of patents for the country. 
[2] Subregulations 1.6 (1), (1A) and (1B) 
substitute 
 (1) For section 8 of the Act: 
 (a) the prescribed period for documents to which 
paragraph 8 (a) of the Act applies is 3 months from the 
date on which the Commissioner requests the document; 
and 
 (b) the prescribed period for documents to which 
paragraph 8 (b) of the Act a pplies is 3 months from the 
date on which the Commissioner requests the translation 
of a document. 
Note    A translation of a document into English that is filed must have with 
it a related certificate of verification (see regulation 22.15).  
[3] Subparagraph 3.5A (3) (b) (iii) 
substitute 
 (iii) if the earlier application is not in English — a 
translation of the application into English together 
with a related certifi cate of verification. 
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 [4] Subregulation 3.18 (3) (b) 
omit everything before subparagraph (i), insert 
 (b) whether the specification under modified examination is 
the same as the specification (the foreign specification ) 
relating to the patent granted in the prescribed foreign 
country, apart from: 
[5] Subregulation 3.20 (6) 
after 
The applicant must 
insert 
, on request by the Commissioner, 
[6] Paragraph 3.20 (6) (a) 
omit 
official chief or head of the Patent Office 
insert 
competent authority 
[7] After regulation 3.21 
insert 
3.22 Disclosure of patent doc uments and information to 
International Bureau etc 
 (1) The Commissioner may, before a patent application becomes 
open to public inspection, disclose  any or all of the following 
to the International Bureau or a foreign patent office: 
 (a) the patent application; 
 (b) a document given by the applicant to the Commissioner in 
connection with the application; 
 (c) information in the possession of the Commissioner 
relating to the applican t or the application. 
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  (2) However, the Commissioner must  not disclose the application, 
document or information without the consent of the applicant. 
Note   Section 194 of the Act also authorises the Commissioner to give a 
person certain information about patents, patent applications and other 
documents in certain circumstances. 
[8] Paragraph 8.6 (1) (c) 
omit 
official chief or head of the Patent Office 
insert 
foreign patent office 
[9] Subregulation 8.6 (2) 
substitute 
 (2) For subsection 95 (3) of the Act, the Commissioner may 
request a copy of the specifi cation relating to the basic 
application that has been certified by the competent authority 
of the Convention country in which the basic application was 
made. 
 (3) The certified copy must be filed within 3 months from the date 
on which the Commissioner requests it. 
[10] Paragraph 9A.4 (d) 
substitute 
 (d) if the Commissioner requests: 
 (i) a translation of a specification or other document 
under subregulation 1.6 (1); or 
 (ii) a certified copy of a specification under 
subregulation 8.6 (2); 
the period of 5 months from the date on which the request 
is made; 
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 [11] Paragraph 13.4 (1) (k) 
omit 
subparagraph 1.6 (1) (b) (ii) or paragraph 1.6 (1A) (b) 
insert 
subregulation 1.6 (1) or  subregulation 8.6 (2) 
[12] Subregulation 20.52 (3), note 
omit 
opf 
insert 
of 
[13] Schedule 4 
omit 
Bosnia and Herzogovina 
insert 
Bosnia and Herzegovina 
[14] Schedule 4 
after 
Canada 
insert 
Cape Verde 
[15] Schedule 6 
omit 
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         - 19 -Schedule 3 Amendments of Trade Marks Regulations 1995 
  
 
 
 
18 Intellectual Property Legislation Amendment Regulations 
2008 (No. 1) 2008, 279 
 
  
Schedule 3 Amendments of Trade Marks 
Regulations 1995 
(regulation 5) 
[1] Schedule 10 
omit 
Bosnia and Herzogovina 
insert 
Bosnia and Herzegovina 
[2] Schedule 10 
after 
Canada 
insert 
Cape Verde 
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2008 (No. 1) 19 
 
  
Schedule 4 Amendments of Designs 
Regulations 2004 
(regulation 6) 
[1] Schedule 1 
omit 
Bosnia and Herzogovina 
insert 
Bosnia and Herzegovina 
[2] Schedule 1 
after 
Canada 
insert 
Cape Verde 
Note 
1. All legislative instruments and comp ilations are registered on the Federal 
Register of Legislative Instruments kept under the Legislative 
Instruments Act 2003 . See http://www.frli.gov.au . 
 
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